2. The word "algorithm" is defined, for example in the Random House Dictionary as "a set of rules for solving a problem in a finite number of steps".
3. 447 U.S.303, 206 U.S.P.Q. 193 (1980). The court also commented that:
The Patent Act of 1793, authored by Thomas Jefferson, defined statutory subject matter as "any new and useful art, machine, manufacture, or composition of matter, or any new or useful improvement [thereof]." Act of Feb. 21, 1793, § 1, 1 Stat. 319. The Act embodied Jefferson's philosophy that "ingenuity should receive a liberal encouragement." 5 Writings of Thomas Jefferson 75-76 (Washington ed. 1871). See Graham v. John Deere Co., 383 U.S. 1, 7-10 (1966). Subsequent patent statutes in 1836, 1870, and 1874 employed this same broad language. In 1952, when the patent laws were recodified, Congress replaced the word "art" with "process," but otherwise left Jefferson's language intact. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to "include anything under the sun that is made by man." S. Rep. No. 1979, 82d Cong., 2d Sess. 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess. 6 (1952).
5. This decision was distinguished in Dolbear v. American Bell Telephone Company 126 U.S. 1 (S. Ct. 1888) where the claim in question was to:
- A method ... of transmitting sounds telegraphically ... by causing electrical undulations, similar in form to the vibrations of the air accompanying said vocal or other sounds ...
The Court noted that in Morse's case, the claim had been to the use of magnetism as motive power without regard to the particular process with which it was connected in the patent whereas in Bell's case the claim was restricted to a defined process.
6. 146 F.2d 817, 64 U.S.P.Q.2d 278 (9th Cir 1944) reversed on other grounds 329 U.S. 1, 71 U.S.P.Q. 175 (1946). The Ninth Circuit characterized the claimed method as consisting "in setting down three knowns (obtained from observation of seismographic echoes) in a simple equation and from them determining or computing an unknown (the depth of an oil well). ... We think these mental steps, even if novel, are not patentable..."
7. 409 U.S. 63, 175 U.S.P.Q. 673. The Court held that a method for converting numerals expressed as binary coded decimal numerals into pure binary numbers did not fall within the statutory definition of a "process".
8. The Court commented that "Phenomena of nature, though just discovered, mental processes, abstract intellectual concepts are not patentable as they are the basic tools of scientific and technological work".
9. As expressed, for example, in decisions such as Gottschalk v. Benson 409 US 63, 175 U.S.P.Q. 673 (S Ct 1972) (holding that a computer program whose sole object is to generate numerical values according to an algorithm is unpatentable) and Parker v. Flook 437 US 584, 198 (a computer program is unpatentable if all it does is generate numerical values even if the values bring about a physical result).
10. 600 F.2d 807, 202 U.S.P.Q. 480 aff'd by an equally divided Supreme Court 450 US 381 (1981), 209 U.S.P.Q. 97.
11. Reported in the Supreme Court as Diamond v. Diehr 450 US 175, 209 U.S.P.Q. 97 (1981).
12. 684 F.2d 902, 214 U.S.P.Q. 682 (CCPA 1982). The CCPA has also upheld claims to, for example, computer programs for translating languages (e.g. Persian into English) 197 U.S.P.Q. 852, and for preparing architectural specifications (203 U.S.P.Q. 971).
13. In re Abele 214 U.S.P.Q. 682 (CCPA 1982), In re Walter 205 U.S.P.Q. 397 (CCPA 1980) and In re Freeman 197 U.S.P.Q. 464 (CCPA 1978). ). In 1989 the Patent Office issued guidelines based on the holdings of these cases to aid in determining what was patentable in this field. It adopted a two-part test: a) is a mathematical algorithm present in the claim? b) if so, is it applied in any manner to physical elements or process steps? As long as the answer to the second question is "yes", the invention is, in principle, patentable. These guidelines are now to be replaced by the recently published new guidelines which are discussed later in this paper.
14. 22 U.S.P.Q. 2d 1033 (Fed Cir 1992).
15. 12 U.S.P.Q. 2d 1824 (CAFC 1989).
16. Arrythmia - see note 14 above. In this case process claims for analyzing electrocardiac signals to determine specific heart activity which included use of an algorithm (defined in the specification by way of a formula) were upheld on the ground that the algorithm was applied to physical process steps. The mere fact that the output was a number also did not preclude patentability since the number was a measure expressed in millivolts of a specified heart activity.
17. In re Taner 214 U.S.P.Q. 678 (CCPA 1982), Application of Sherwood 204 U.S.P.Q. 537 (CCPA 1980) cert. denied 450 US 994 (1981).
18. Etak Inc. v. Zexel USA Corp. 50 PTCJ 177 (DC NCalif 1995)
19. Ex parte Luthi 38 USPQ.2d 1863 (Bd of Apps 1992).
20. Paine, Webber, Jackson and Curtis v. Merrill Lynch, Pierce, Fenner and Smith 564 F. Supp 1358, 218 U.S.P.Q. 212 (D. Del 1983). The invention could only be used practically with the aid of a computer and the court construed the claims in this way holding that it was not necessary to determine whether the claim was to an apparatus or a process.
21. Ex parte Akamatsu 22 U.S.P.Q. 2d 1915 (BD of Apps 1992).
22. 31 U.S.P.Q. 2d 1754 (CAFC 1994)
23. 30 U.S.P.Q. 2d 1455 (CAFC 1994)
24. 22 U.S.P.Q. 2d 1033 (CAFC 1992)
25. 214 U.S.P.Q. 678 (CCPA 1982)
26. Paine, Webber, Jackson and Curtis v. Merrill Lynch, Pierce, Fenner and Smith 564 F. Supp 1358, 218 U.S.P.Q. 212 (D. Delaware 1983).
27. The decision also has to be considered in the light of the subsequent decision in State Street Bank which is discussed below.
28. 31 U.S.P.Q. 2d 1545 (CAFC 1994)
29. 29 U.S.P.Q. 2d 1845 (CAFC 1994). This case emphasized that the wording of the sixth paragraph of 35 USC 112 was of equal importance to PTO determinations of novelty and obviousness as to questions of determining the scope of protection afforded by a claim using "means plus function " language. The relevant paragraph reads as follows:
- An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure material or acts described in the specification and equivalents thereof.
30. 31 USPQ.2d bridging pages 1557 and 1558.
33. 32 U.S.P.Q.2d 1031 (Fed Cir 1994).
34. See, for example, In re Gulack 217 U.S.P.Q. 401 (Fed Cir 1983).
35. U.S. Patent 4,346,442 assigned to Merrill Lynch, Pierce, Fenner and Smith.
36. Paine, Webber, Jackson and Curtis v. Merrill Lynch, Pierce, Fenner and Smith 564 F. Supp 1358, 218 U.S.P.Q. 212 (D. Delaware 1983).
37 149 F.3d 1368, 47 U.S.P.Q.2d 1596 (CAFC 1998)
38. 38 U.S.P.Q.2d 1530 (D C Mass 1996).
39. AT&T Corp. v. Excel Communications Inc. 50 U.S.P.Q.2d 1447 (Fed Cir 1999).
40. 53 U.S.P.Q.2d 1115 (W. D. Wash 1999).
41. 35 USC 273 added by Public Law 106-113 sections 4302 - 4303.
42. The guidelines recognize that there is a difference between the situations in Trovato and Alappat since they point out patentability of a computer-related "machine" invention depends solely on the patentability of the process features of the program or its application depends upon the degree of information given as to the hardware aspects of the computer used.
43. See, for example U.S. Patents 6078360 (claim 5), 6076092 (claim 35) and 5995921 (claims 20 - 29).
44. 35 U.S.P.Q.2d 1383. The PTO had rejected claims to software contained on a floppy disk under the printed matter doctrine. However as part of the review process leading to the new guidelines, the Commissioner concluded that this doctrine was not applicable to this type of claim. 45. Ex parte Donaldson 26 U.S.P.Q. 2d 1250, Ex parte Strijland 26 U.S.P.Q. 2d 1259, Ex parte Donoghue 26 U.S.P.Q. 2d 1266 and Ex parte Donoghue 26 U.S.P.Q. 2d 1271.
47. The Copyright Act, 17 U.S.C. §102.
48. Distribution of clip art over the Internet has been found to be an act of distribution falling within this provision. Marobie-FL Inc. v National Association of Fire Equipment Distributors, 45 USPQ.2d 1236(D.C. N Ill 1997).
49. The Copyright Act, 17 U.S.C. §109(b).
50. The Copyright Act, 17 U.S.C. §302.
51. Ferguson v. National Broadcasting Company 584 F.2d 111, 200 U.S.P.Q. 65 (5th Circuit 1978). Recent decisions have criticized the use of the word "substantially" in this context as being confusing since another part of the test for copyright infringement is whether the alleged copy copies a substantial" part of the work which is the subject of copyright. The modern trend is to talk of "probative" similarity. Repp v. Webber 132 F.3d 882, 45 USPQ.2d 1285 (Second Circuit, 1997). Whatever it is called, the essence of the test is whether the alleged copy contains "similarities that, in the normal course of events, would not be expected to arise independently in the two works" Nimmer on Copyright 13.03[B].
52. Procter & Gamble Co. v. Colgate-Palmolive Co., 53 USPQ2d 1149.
53. 464 U.S. 417 (1984) 220 USPQ 665.
54. In Alcatel v. DGI Technologies 49 USPQ.2d 1641 (5th Cir 1999) contributory infringement was found where the defendants sold cards that could be used to expand the capacity of telephone switching equipment which resulted in the creation of a program that infringed the plaintiff's copyright.
55. Decision of July 26, 2000 by Chief Judge Patel of Northern District of California in A&M Records Inc. v. Napster Inc.
56. 2000 U.S. App LEXIS 18688.
57. Baker v. Selden 101 US 99 (1879).
58. The law was neatly paraphrased in Fisher-Price Inc. v. Well-Made Toy Mfg Corp. 25 F.3d 119 30 USPQ2d 1954 (2d. Cir 1994) as "the plaintiff must show that the defendant appropriated the plaintiff's particular means of expressing an idea, not merely that he expressed the same idea." In the computer software area, this provision has been used, for example, to hold that the Menu command structure of Lotus 1-2-3 was an unprotectable "method of operation", Lotus Development Corp. v. Borland International Inc. 34 USPQ.2d 1014 aff'd by an equally divided Supreme Court 116 S.Ct 804 (1996) and the menu and submenu command tree structure of a wood truss layout program was not protectable because all that was involved was an idea closely correlating long hand steps used by a draftsman. MiTek Holdings v. Arce Engineering 39 USPQ 2d 1609 (11th Cir. 1996).
59. 17 USC § 101. The classification of software as literary works is consistent with the requirements of Article 10 of TRIPS and Article 4 of the WIPO Copyright Treaty.
61. The right is, however, a limited one and is confined to use of a computer internally and the making of an archival copy. Apple Computer Inc. v. Formula International Inc. 594 F. Supp 617 224 USPQ 560 (C.D. Cal, 1984).
62. See, for example, Apple Computer, Inc. v. Franklin Computer Corp. 714 F.2d 1240 (3rd Circuit 1983) cert. denied 464 U.S. 1033 (1984).
63. Williams Electronics, Inc. v. Artic International Inc. 685 F.2d 870, 215 U.S.P.Q. 405 (3rd Circuit 1982).
64. Midway Manufacturing Company v. Strohon 26 PTCJ 165 (ND Ill. 1983).
65. 228 U.S.P.Q. 554 (SDNY 1985).
66. SAS Institute, Inc. v. S&H Computer Systems, Inc. 225 U.S.P.Q. 916 (MD Tenn. 1985) and Whelan Associates Inc. v. Jaslow Dental Laboratory, Inc. 225 U.S.P.Q. 156 ED Penn 1985) Aff'd 230 U.S.P.Q. 481 (3d Circuit 1986); E.F. Johnson Co. v. Uniden of America 31 PTCJ 181 (D Minn 1985).
67. 230 U.S.P.Q. 481 (3rd Circuit 1986).
68. Broderbund Software Inc. v. Unison World Inc. The possible protectability of a screen display as an audio visual work or compilation was noted in MiTek v. Arce Engineering Inc. 39 USPQ 2d 1609 (11th Cir. 1996). The Court pointed out, however, the need for originality and for the screen to be "expressive" for such protection to exist.
69. Williams v. Arndt 227 U.S.P.Q. 615 (D Mass 1985).
70. NEL Corp. v. Intel Corp. 1 U.S.P.Q. 2d 1492 (ND Cal. 1986).
71. See, for example, Brown Bag Software v. Symantec Corp. 22 U.S.P.Q. 2d 1429 (9th Circuit Court of Appeals 1992).
72. Johnson Controls v. Phoenix Control System Inc 12 U.S.P.Q. 2d 1566 (9th Cir 1989).
73. 15 U.S.P.Q. 1577 (D. Mass 1990)
74. 24 U.S.P.Q. 2d 1107 (D. New Mexico 1992).
75. 23 U.S.P.Q. 2d 1241 (1992).
76. In this context the court referred to the Supreme Court decision in Feist Publications Inc. v. Rural Telephone Service 18 U.S.P.Q. 2d 1275 (1991) which had held that there was no copyright protection for a telephone directory on the grounds that there was insufficient originality in merely arranging a series of names in alphabetical order. In reaching its decision the Court disapproved of earlier cases that had indicated that one might be entitled to copyright protection simply by virtue of the labor that had been expended in creating the work, the "sweat of the brow" test. The degree of originality need not be all that high, however. For example in CDN Inc. v. Kapes 53 U.S.P.Q.2d 1032, it was found that a compilation of wholesale prices for collectible coins met the standard since in order to come to the stated valuations, the compilers carried out a number of different steps and then extrapolated their stated values from the results of their analysis and calculations.
77. The analysis need not be carried out where direct actual copying is clear. Mitel Inc. v. Iqtel Inc. 44 USPQ.2d 1172 (10th Cir), MAI Systems Corp. v. Peak Computer Inc. 26 USPQ.2d 1458 (9th Cir).
78. Autoskill Inc v. National Education Support System 26 U.S.P.Q. 2d 1828 (1993).
79. The Gates Rubber Company v. Bando Chemical industries Ltd. 28 U.S.P.Q. 2d 1503. The court identified six levels of abstraction: (I) main purpose,(ii) program structure or architecture, (iii) modules, (iv) algorithms and data structures, (v) source code and (vi) object code.
80. Mitek Holdings Inc. v. Arce Engineering Inc. 39 USPQ.2d 1609 (1996).
81. Atari Games Corp v. Nintendo of America 24 U.S.P.Q. 2d 1015.
82. In Apple Computer Inc. v. Microsoft Corp. 32 U.S.P.Q. 2d 1086 (1994) the ninth circuit court of appeals continued to follow its Brown Bag approach but regarded the dissection of the issues involved carried out under that test as being essentially the same analysis as required under "abstraction-filtration-comparison test" although articulated differently".
84. MiTek Holdings v Arce Engineering 39 USPQ.2d 1609.
85. 26 U.S.P.Q.2d 1001 (MD Georgia 1992).
86. Plains Cotton Co-Op v. Goodpasture Computer Service 1 U.S.P.Q.2d 1635 (1987). In fact the case can also be looked at as a case where the Court simply refused to give protection to features that it regarded as having been dictated by externalities of the situation.
87. Kepner-Tregoe Inc. v. Leadership Software Inc. 29 U.S.P.Q.2d 1747 (1994)
88. Engineering Dynamics Inc. v. Structural Software Inc. 31 U.S.P.Q.2d 1641 (1994). Input formats were also found to be protectable in Lotus Dev Co. v. Paperback Software Int'l. 15 USPQ 2d 1577 (D. Mass 1990).
89. 39 U.S.P.Q.2d 1651 (S.D. NY 1996).
90. 50 U.S.P.Q.2d (S.D. NY, 1999).
91. 38 U.S.P.Q.2d 1225 (11th Circuit) 1996).
92. 49 PTCJ 496 (N.D. Cal 1995).
93. See, for example, Landsberg v. Scrabble Crossword Game Players, Inc. 221 U.S.P.Q. 1140 (9th Cir 1984).
94. 18 U.S.P.Q.2d 1275 (1991) see note 45 above.
95. 32 U.S.P.Q.2d 1086 (9th Cir 1994).
96. 45 U.S.P.Q.2d 1827 (N.D. Cal, 1998).
97. The Copyright Act at 17 USC 101 defines a compilation as " a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, os arranged in such a way that the resulting work as a whole constitutes an original work of authorship."
98. Triangle Publications, Inc. v. New England Newspaper Publishing Co. 46 F Supp 198 54 U.S.P.Q. 171 (D. Mass 1942).
99. Continental Casualty Co. v. Beardsley 253 F.2d 702, 107 U.S.P.Q. 1 (2d Cir 1957) cert. denied 358 US 816 (1958).
101. 937 F.2d 700 19 USPQ.2d 1161 (2d Cir 1991).
102. 35 U.S.P.Q.2d 1019 (DC E. Pa 1995).
103. 44 U.S.P.Q.2d 1173 (Tenth Circuit, 1997).
104. 43 U.S.P.Q.2d 1385 (Second Circuit, 1997).
105. See, for example, Harper & Row Publishers v. Nation Enterprises 105 S.Ct 2218 225 U.S.P.Q. 1073 (1985) where the infringement was a matter of about three hundred words taken from President Ford's memoirs.
106. Williams v. Crichton 84 F.3d 581, 38 U.S.P.Q.2d 1810 (2d Cir 1996).
107. 26 U.S.P.Q.2d 1458 (1993).
108. A similar result was reached in Stenograph L.L.C. v. Bossard Associates Inc. 46 U.S.P.Q.2d 1936 (C.A. D.C.) where it was held that loading software into a computer infringed the copyright in it where the software had been licensed for use only on a single computer in situations in which a "key" supplied by the owner of the copyright was plugged into one of the ports of a computer. Use of the key was subject to a license also. The licenses provided that the keys should not be supplied to third parties without permission. The defendants had obtained the software and keys by an illicit purchase from one of the copyright owners sales representatives. The court had no difficulty in finding that the unlicenced use of the genuine products of the copyright owner constituted copyright infringement as a result of the loading of that software on to a computer's RAM since this involved an act of copying. Another example of use of software outside the scope of a license that had been granted for its use being found to be an infringement is Sun Micorsystems Inc. v. Microsoft Corp. (49 USPQ2d 1245 N.D. Cal 1998) where Sun had licensed its Java software to Microsoft for the purpose of creating an interface and Microsoft had allegedly used the software beyond the terms of that license.
109. 30 U.S.P.Q.2d 1921 (N.D. Cal 1994).
110. Ticketmaster Corp. v. Tickets.Com Inc. 54 U.S.P.Q.2d 1344 (D.C. C. Cal 2000). A claim of trespass tp chattels, which has been pleaded in other cases where electronic intrusion into someone else's computer has caused harm, does not seem to have been pleaded in this case.
111. The Copyright Act at 17 USC 107.
112. This statutory change was made to overrule two specific cases Salinger v. Hamilton and New Era Publications International v. Henry Holt & Co.
113. The Copyright Act, 17 USC §117. In the case of Aymes v. Bonelli 33 U.S.P.Q.2d 1768 (2nd Cir. 1995), it was held that modification of a program purchased from the copyright owner to enable the purchaser to continue internal use of the program in the purchaser's business was permitted under this provision.
114. 24 U.S.P.Q. 2d 1561 (9th Cir 1992).
115. This case related to the printing of about 300 words from President Ford's memoirs by a magazine prior to publication of the book itself. The defendants claimed that this publication was simply a quote from the work and was therefore permissible as a fair use. The Supreme Court disagreed and affirmed that "a use that supplants any part of the normal market for a copyrighted work would ordinarily be considered an infringement". In the case the plaintiffs case was in part that the words used in the magazine article were among the most interesting in the book and so their publication prejudiced sales of the book.
116. 24 U.S.P.Q. 2d 1015 (CAFC 1992). This case is also of interest in that the defendants argued that the copyright owners had bee guilty of copyright misuse as a result of their licensing policies. This defense failed on the basis that it was an equitable one and that the defendants had unclean hands in that they had lied to the Copyright Office in order to obtain a copy of the plaintiffs copyrighted code.
117. 53 U.S.P.Q.2d 1705 (2000).
118. 510 U.S. 569 29 USPQ2d 1961 (1994). The case related to a rap song parody of the song "Pretty Woman".
119. 37 U.S.P.Q.2d 1496 (D.C. N,D Texas 1995).
120. 50 PTCJ 557 (9th Cir 1995).
121. 53 U.S.P.Q.2d 1361 (CD Cal 1999).
122. If registration has been applied for and seems likely to be effected, it may be possible to obtain a preliminary injunction before registration has actually occurred ( see for example Creative Labs Inc. v. Cyrix Corp. 42 U.S.P.Q. 1872 (N.D. Cal 1997) where the owner of copyright in sound production software was able to obtain a preliminary injunction against a defendant who was making the software available on the Internet.
123. The actual receipt of the registration has been held to be necessary in M.G.B. Homes v. Ameron Homes 903 F.2d 1486, 15 U.S.P.Q.2d 1282 (11th Cir 1990), Demetriades v. Kaufmann 680 F.Supp 658, 6 U.S.P.Q.2d 1737 (S.D.N.Y. 1988) and Noble v. Town Sports 46 U.S.P.Q.2d 1382 (S.D.N.Y. 1998). Mere filing of the application has been held to suffice in Apple Barrel Productions v. Beard 730 F.2d 384, 222 U.S.P.Q. 956 (5th Cir 1984) and International Kitchen Exhaust Cleaning Association v. Power Washers of North America 53 U.S.P.Q.2d 1505 (D.C.D.C. 2000).
124. It may sometimes be difficult to determine who is the "author' of a computer program. For example in Napoli v. Sears Roebuck 34 USPQ.2d 1132 (DC N Il 1995) the designer of a screen display was held to be one of the authors of a program even though he had not participated in preparation of the source code. The court regarded this as a concomitant of the fact that copyright protection was not confined to the source code.
125. The Copyright Act, 17 USC § 201.
126. The Copyright Act, 17 USC § 101.
127. 10 U.S.P.Q.2d 1985 (S. Ct. 1989).
128. 21 U.S.P.Q.2d 1345 (3rd Cir. 1991).
129. Kirk v. Harter 51 U.S.P.Q.2d 1853 (8th Cir, 1999).
130. Avtec Systems Inc. v. Peiffer 30 U.S.P.Q.2d 1365 (4th Cir 1994).
131. Itar-Tass Russian News Agency v. Russian Kurrier Inc. 47 U.S.P.Q.2d 1810 (2d Cir 1998). The case is of interest in specifically pointing out that the Berne Convention itself contains no provision relating to choice of law for determination of ownership, only provisions relating to the law governing the scope of protection and available remedies. It may be of interest to note that the opposite conclusion seems to have been reached in Australia in Enzed Holdings Ltd v. Wynthea Pty Ltd [1985] 4 EIPR D-77.
132. See New York Chinese TV Programs Inc. v U. E. Enterprises Inc 21 U.S.P.Q. 2d 1673 (2nd Cir. 1992).
133. The penalties for copyright infringement were revised and strengthened by the No Electronic Theft Act 1997 which amended 18 USC § 2319 to set out a new scale of penalties.
135. Under 17 USC § 411 the right of the copyright owner to claim attorney fees is confined to infringements effected after the date of registration of the copyright in question.
137. 17 USC § 1201(a)(2) and 17 USC 1202(b),
143. 54 U.S.P.Q.2d 1401 (N.D. Cal 2000).
145. 17 USC § 512(k) defines a "service provider" as meaning either, (a) in the context of provisions relating to transitory digital network communications an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user's choosing, without modification to the content of the material as sent or received or (b) in all other situations, any provider of online services or network access, or the operator of facilities therefor, irrespective of whether the additional conditions relating to transitory digital network communications are met.
147. The full set of conditions is set out at 17 USC § 512 (b)(2) 148. 17 USC § 512(c).
152. 54 U.S.P.Q.2d 1746 (N.D. Cal 2000).
155. 17 USC § 901 (a) (1) (A).
159. 17 USC § 906(a). In Brooktree Corp v. Advanced Micro Devices, Inc. 24 U.S.P.Q.2d 1401 (Fed. Cir. 1992) the defendant claimed that its reverse engineering of the plaintiffs chip was permitted under this section. The Court disagreed and upheld a jury verdict against the defendant. The defendant had used reverse engineering to identify only a key element in the plaintiff's chip and had reproduced only that element in its own product. It thus first claimed that because it had not copied the whole of the plaintiff's chip there was no "substantial similarity" between its product and the plaintiff's chip. The court disagreed and held that the test for considering substantial similarity under the Semiconductor Chip Act was essentially the same as under the Copyright Act and qualitative as well as quantitative considerations had to be applied. The defendant's then claimed that there could be no infringement because they fell within the protection of the reverse engineering provisions. the Court again disagreed pointing out that these provisions only protected those who used the results of their reverse engineering to produce their own original design.
