Piano roll blues

Last updated

The Piano Roll Blues or Old Piano Roll Blues is a figure of speech designating a legal argument (or the response to that argument) made in US patent law relating to computer software. The argument is that a newly programmed general-purpose digital computer is a "new" machine and, accordingly, properly the subject of a US patent. [1]

Detail of player piano roll being operated by player piano, turning player piano into a "new and different machine" Enlarged Detail of automatic piano roll.gif
Detail of player piano roll being operated by player piano, turning player piano into a "new and different machine"

This legal argument was made in Gottschalk v. Benson in Benson's brief. The government then responded in its brief that this amounted to asserting that inserting a new piano roll into an existing player piano converted the old player piano into a new player piano. [2] After Benson, the Court of Customs and Patent Appeals took the position that the reasoning of Benson did not apply to "machine" claims, such as a claim to a conventional digital computer programmed to carry out a new algorithm or computer program. [3] In dissenting from that judgment on the grounds that the Supreme Court in Benson did not limit the principle to method claims, Judge Rich spoke of "the legal doctrine that a new program makes an old general purpose digital computer into a new and different machine." Id. at 773. He observed that the doctrine "partakes of the nature of a legal fiction when it comes to drafting claims." Id.

The argument appeared again two decades later in the majority opinion in In re Alappat , [4] and in his dissenting opinion in that case Chief Judge Archer discussed the figure of speech extensively, concluding:

Yet a player piano playing Chopin's scales does not become a "new machine" when it spins a roll to play Brahms' lullaby. The distinction between the piano before and after different rolls are inserted resides not in the piano's changing quality as a "machine" but only in the changing melodies being played by the one machine. The only invention by the creator of a roll that is new because of its music is the new music. [5]

Despite a strong indication in the Supreme Court's Gottschalk v. Benson opinion that computer implementation of an otherwise patent-ineligible abstract idea (in that case a mathematical algorithm) was insufficient to transform the idea into patent-eligible subject matter, the Federal Circuit continued sporadically to assert the piano roll blues argument. [6] A very recent example was in a dissenting opinion of Chief Judge Rader in 2013. [7]

The Supreme Court's opinion in the Alice case [8] may have finally put a stop to the piano roll blues argument, since it states that simply saying "apply it with a computer" will not transform a patent-ineligible claim to an idea into a patent-eligible claim. [9]

The expression apparently derives from a song popular in the 1950s—"The Old Piano Roll Blues" by Cy Coben [10]  — in the style of a Scott Joplin rag. As Judge Archer points out in his Alappat dissent, there is also an allusion to the decision of the Supreme Court in White-Smith v. Apollo , concerning copyright protection for piano rolls.

Related Research Articles

Neither software nor computer programs are explicitly mentioned in statutory United States patent law. Patent law has changed to address new technologies, and decisions of the United States Supreme Court and United States Court of Appeals for the Federal Circuit (CAFC) beginning in the latter part of the 20th century have sought to clarify the boundary between patent-eligible and patent-ineligible subject matter for a number of new technologies including computers and software. The first computer software case in the Supreme Court was Gottschalk v. Benson in 1972. Since then, the Supreme Court has decided about a half dozen cases touching on the patent eligibility of software-related inventions.

<i>State Street Bank & Trust Co. v. Signature Financial Group, Inc.</i>

State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368, also referred to as State Street or State Street Bank, was a 1998 decision of the United States Court of Appeals for the Federal Circuit concerning the patentability of business methods. State Street for a time established the principle that a claimed invention was eligible for protection by a patent in the United States if it involved some practical application and, in the words of the State Street opinion, "it produces a useful, concrete and tangible result."

Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking and tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations.

White-Smith Music Publishing Company v. Apollo Company, 209 U.S. 1 (1908), was a decision by the Supreme Court of the United States which ruled that manufacturers of music rolls for player pianos did not have to pay royalties to the composers. The ruling was based on a holding that the piano rolls were not copies of the plaintiffs' copyrighted sheet music, but were instead parts of the machine that reproduced the music.

Diamond v. Diehr, 450 U.S. 175 (1981), was a United States Supreme Court decision which held that controlling the execution of a physical process, by running a computer program did not preclude patentability of the invention as a whole. The high court reiterated its earlier holdings that mathematical formulas in the abstract could not be patented, but it held that the mere presence of a software element did not make an otherwise patent-eligible machine or process patent ineligible. Diehr was the third member of a trilogy of Supreme Court decisions on the patent-eligibility of computer software related inventions.

Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the invention is novel and non-obvious. Together with criteria such as novelty, inventive step or nonobviousness, utility, and industrial applicability, which differ from country to country, the question of whether a particular subject matter is patentable is one of the substantive requirements for patentability.

Parker v. Flook, 437 U.S. 584 (1978), was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent eligible only if there is some other "inventive concept in its application." The algorithm itself must be considered as if it were part of the prior art, and the claim must be considered as a whole. The case was argued on April 25, 1978 and was decided June 22, 1978. This case is the second member of the Supreme Court's patent-eligibility trilogy.

Gottschalk v. Benson, 409 U.S. 63 (1972), was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." That would be tantamount to allowing a patent on an abstract idea, contrary to precedent dating back to the middle of the 19th century. The ruling stated "Direct attempts to patent programs have been rejected [and] indirect attempts to obtain patents and avoid the rejection ... have confused the issue further and should not be permitted." The case was argued on October 16, 1972 and was decided November 20, 1972.

Freeman-Walter-Abele is a now outdated judicial test in United States patent law. It came from three decisions of the United States Court of Customs and Patent Appeals—In re Freeman, 573 F.2d 1237, In re Walter, 618 F.2d 758 ; and In re Abele, 684 F.2d 902 —which attempted to comply with then-recent decisions of the Supreme Court concerning software-related patent claims.

<i>In re Bilski</i>

In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385, was an en banc decision of the United States Court of Appeals for the Federal Circuit (CAFC) on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of hedging risks in commodities trading. The court also reiterated the machine-or-transformation test as the applicable test for patent-eligible subject matter, and stated that the test in State Street Bank v. Signature Financial Group should no longer be relied upon.

Dann v. Johnston, 425 U.S. 219 (1976), is a decision of the United States Supreme Court on the patentability of a claim for a business method patent.

The exhausted combination doctrine, also referred to as the doctrine of theLincoln Engineeringcase, is the doctrine of U.S. patent law that when an inventor invents a new, unobvious device and seeks to patent not merely the new device but also the combination of the new device with a known, conventional device with which the new device cooperates in the conventional and predictable way in which devices of those types have previously cooperated, the combination is unpatentable as an "exhausted combination" or "old combination". The doctrine is also termed the doctrine of the Lincoln Engineering case because the United States Supreme Court explained the doctrine in its decision in Lincoln Engineering Co. v. Stewart-Warner Corp.

In United States patent law, the machine-or-transformation test is a test of patent eligibility under which a claim to a process qualifies for consideration if it (1) is implemented by a particular machine in a non-conventional and non-trivial manner or (2) transforms an article from one state to another.

<i>AT&T Corp. v. Excel Communications, Inc.</i>

AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 was a case in which the United States Court of Appeals for the Federal Circuit reversed the decision of the United States District Court for the District of Delaware, which had granted summary judgment to Excel Communications, Inc. and decided that AT&T Corp. had failed to claim statutory subject matter with U.S. Patent No. 5,333,184 under 35 U.S.C. § 101. The United States Court of Appeals for the Federal Circuit remanded the case for further proceedings.

Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), was a 2014 decision of the United States Supreme Court about patent eligibility. The issue in the case was whether certain claims about a computer-implemented, electronic escrow service for facilitating financial transactions covered abstract ideas ineligible for patent protection. The patents were held to be invalid because the claims were drawn to an abstract idea, and implementing those claims on a computer was not enough to transform that idea into patentable subject matter.

<i>DDR Holdings v. Hotels.com</i>

DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, is the first United States Court of Appeals for the Federal Circuit decision to uphold the validity of computer-implemented patent claims since the Supreme Court's decision in Alice Corp. v. CLS Bank International. Both Alice and DDR Holdings are legal decisions relevant to the debate about whether software and business methods are patentable subject matter under Title 35 of the United States Code §101. The Federal Circuit applied the framework articulated in Alice to uphold the validity of the patents on webpage display technology at issue in DDR Holdings.

<i>In re Lowry</i>

In re Lowry, 32 F.3d 1579 was a 1994 decision of the United States Court of Appeals for the Federal Circuit on the patent eligibility of data structures. The decision, which reversed a PTO rejection of data structure claims, was followed by a significant change in PTO policy as to granting software related patents, a cessation of PTO appeals to the Supreme Court from reversals of PTO rejections of software patent applications, an increasing lenity at the Federal Circuit toward such patents and patent applications, and a great increase in the number of software patents issued by the PTO.

<i>In re Alappat</i>

In re Alappat, 33 F.3d 1526, along with In re Lowry and the State Street Bank case, form an important mid-to-late-1990s trilogy of Federal Circuit opinions because in these cases, that court changed course by abandoning the Freeman-Walter-Abele Test that it had previously used to determine patent eligibility of software patents and patent applications. The result was to open a floodgate of software and business-method patent applications, many or most of which later became invalid patents as a result of Supreme Court opinions in the early part of the following century in Bilski v. Kappos and Alice v. CLS Bank.

<i>Amdocs (Israel) Ltd. v. Openet Telecom, Inc.</i>

Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, is a court case in the United States Federal Court System that ended with a panel decision by the Federal Circuit to uphold the patent eligibility of four patents on a system designed to solve an accounting and billing problem faced by network service providers. The district court had held the patents invalid because they were directed to an abstract idea. In the Federal Circuit panel's view the patents were eligible because they contained an "inventive concept"—a combination of elements that was sufficient to ensure that the patents amounted to significantly more than a patent on the ineligible concept itself.

References

  1. ↑ The case most often cited for the argument is In re Bernhart, 417 F.2d 1395, 1400 (CCPA 1969), but a slightly earlier formulation of the argument occurs in In re Prater, 415 F.2d 1393, 1403 n.29 (CCPA 1969).
  2. ↑ For a discussion of the use of the Old Piano Roll Blues in Benson and subsequent cases, see, for example, Chapter 8: Patent Protection of Software: Statutory Subject Matter in the Supreme Court and the Federal Circuit; A. The Supreme Court Trilogy on Statutory Subject Matter, George Washington Law School. A discussion of the history and current status of the piano roll blues is found in Richard H. Stern, Alice v CLS Bank: US Business Method and Software Patents Marching towards Oblivion?, [2014] Eur. Intell. Prop. Rev. 619, 620.
  3. ↑ In re Johnston, 502 F.2d 765 (CCPA 1974), reversed on obviousness grounds sub. nom. Dann v. Johnston , 450 U.S. 175 (1976).
  4. ↑ In re Alappat , 33 F.3d 1526, 1545 (Fed. Cir. 1994) ("We have held that [] programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.").
  5. ↑ Judge Archer also said that in making this argument the majority opinion "resurrects long-dead precedent of the Court of Customs and Patent Appeals in direct conflict with Supreme Court precedent and subsequent precedent of that court."
  6. ↑ See, e.g., In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc).
  7. ↑ CLS Bank Int'l v. Alice Corp., 717 F.3d 1269, 1302 (Fed. Cir. 2013) (opinion of Rader, J., concurring).
  8. ↑ Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. __ (2014).
  9. ↑ Alice, slip opinion. at 10 ("We conclude that the method claims, which merely require generic computer implementation, fail to transform that abstract idea into a patent-eligible invention."), 13 ("These cases demonstrate that the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.").
  10. ↑ Music, Words, Sung (by Al Jolson).
This page is based on this Wikipedia article
Text is available under the CC BY-SA 4.0 license; additional terms may apply.
Images, videos and audio are available under their respective licenses.