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March 30, 2014



As you suggest, Feldman's op-ed piece in the NYT is intellectually dishonest in the extreme. And it's not a surprise given what clearly appears to be someone with no undergraduate background or work experience showing any knowledge of science or technology: “Professor Robin Feldman received a bachelor’s degree from Stanford University and a J.D. from Stanford Law School.” There is no reference to any undergraduate degree in science or engineering in the cv on her web site http://robinfeldman.com/cv.htm , which lists a BA undergraduate degree. That doesn’t necessarily mean a non-science degree as I’ve got a BA degree in chemistry, but if you look at the articles she’s written, I would presume she has none, given her obvious disdain for science (something she shares in common with Justice Breyer amongst others). In other words, an IP law professor with no suitable undergraduate or work background to be teaching IP law, especially be teaching patent law. As others have said, I frankly pity the students who learn IP law, in particular patent law, from this charlatan.


Thanks. There are valid points to be made on both sides in the software patent debate, but articles like this aren't making any. Even worse, given the weight that a New York Times op-ed holds in some circles, it does a gross disservice to the public to scope the issues so incorrectly.


All is fair in love and war, Mike.

Make no mistake, there is a revolution underway, and not all battles are fought in blood. Many modern day battles are fought in ink.

I partially agree and disagree with this post. Professor Robin Feldman makes important points about the software patent debate. She is hardly the only one. As you may know, Judge Richard Posner is very skeptical of software patenting too. So are many other academics, judges, attorneys and scientists.

To be fair, it is a NYT Op-Ed piece, which is not expected to go into details, and nuts & bolts of software patenting. And it is a legitimate exercise of academic criticism to look at the entire system as a whole and make generalizations about it. There is no conflict between making generalized statements and the notion that software patenting is decided on a case by case basis.

Nor is there a conflict between saying, that "patent system purposefully encourages the existence of non-practicing entities by making patent property rights freely assignable and eschewing a 'working' requirement," and that the system may be malfunctioning due to so many lawsuits being filed and litigated over software patents, most of which are commenced by NPE's.

A system may be designed to encourage a particular behavior, but it may very well result in encouraging a whole array of other behaviors, which may be harmful. Although the analogy to financial securitizations (and other financial instruments) may not be apt on many levels, in a broad way it demonstrates my above point, as the financial crash of 2008 showed.

In my opinion, a Supreme Court opinion, unless sweeping in scope, will not accomplish much in terms of allocating incentives differently as to effect behavior on the market that may produce more positive results (however it is defined). It seems to me that providing better training to PTO examiners, hiring more talented individuals and generally providing more resources to the PTO will likely accomplish more in the way of repairing the damage to the system than any new legal tests, either from CAFC or the Supreme Court.

Lastly, I agree that it is debatable whether NPE's are really harming the system or not, since it hinges on how one designs empirical studies in this area. And it may very well be too early to tell.

Michael: "She immediately starts off on the wrong foot by stating that "[s]ince the mid-1990s the software patent system has operated by its own rules . . . compared with patents for other innovations, those for software are granted using a very broad and lax standard of invention." This is untrue,"

No, it's not untrue at all. In other fields, you aren't allowed to distinguish the prior art from your invention solely on functional terms. The so-called "antibody exception" is the only other area where this is permitted, and I doubt the Supreme Court would approve of that exception if it were ever put to the test (I'm not even sure en banc Federal Circuit would approve).

"If Professor Feldman can cite to an issued patent that claims software for a flying car but does not disclosed how the invention works, I will happily join her in condemning that specific patent for being vague and overly broad. But even if such a patent comes to light, Professor Feldman's statement is yet another example of the hyperbole"

Seems you're the one engaging in the "hyperbole", Michael. Professor Feldman was making an argument by analogy. You didn't realize that? The point is that computer-implementers need not describe in detail a single working embodiment of their alleged "innovation." They can (and do) get away with simply describing the desired function for a computer which, in nearly every case, has never been reduced to practice, constructively or otherwise. The fiction is that the mere description of an information-processing functionality is sufficient to justify ownership of all computing devices that are subsequently programmed to carry out those functions, regardless of the operating system and regardless of any practical hurdles that are encountered.

Conviently for those invested in the status quo, however, this fiction operates as a one-way street. Although the usefulness of computers for carrying out any and every information processing function has been well-known for decades, the prior art is invariably read narrowly such that a reference teaching the delivery of information about a movie upon a request (or in response to some "user action") is frequently deemed irrelevant to a claim describing the delivery of information about a heart condition. Everybody knows the technology is identical. All that has changed is the information going in and out.

"The issues of patent-eligible subject matter and patent "trolls" are neither simple nor black-and-white. There is a need for a rich, informed public discourse regarding both."

Agreed. As you can imagine, it's very difficult to have the discussions with folks who are deeply invested in the status quo.


I suspect that "TBP" is Malcolm Mooney (aka "MM") in disguise. Again, "guilty" until proven otherwise.

"The point is that computer-implementers need not describe in detail a single working embodiment of their alleged innovation.'"

If this were the case, the patent would be invalid under section 112.

"They can (and do) get away with simply describing the desired function for a computer which, in nearly every case, has never been reduced to practice, constructively or otherwise."

Constructive reduction to practice of an invention is, by definition, filing a patent application for the invention. But in order for the constructive reduction to practice to be successful, the application must meet the requirements of section 112.

Neither of these points invoke section 101, and as many of us have been saying for quite some time, issues of written description and vagueness should be determined under the proper provision of 35 U.S.C. Hint: it isn't 101.

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