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 Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...

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 Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...

This legal argument was made in ''

Gottschalk v. Benson ''Gottschalk v. Benson'', 409 U.S. 63 (1972), was a Supreme Court of the United States, 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 pate ...

'' 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. After ''Benson'', the

Court of Customs and Patent Appeals The United States Court of Customs and Patent Appeals (CCPA) was a United States federal court which existed from 1909 to 1982 and had jurisdiction over certain types of civil disputes. History The CCPA began as the United States Court of Customs ...

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. 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 ''In re Alappat'', 33 F.3d 1526 (Fed. Cir. 1994), 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 abandonin ...

'', 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.

Despite a strong indication in the Supreme Court's ''

'' 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. A very recent example was in a dissenting opinion of Chief Judge Rader in 2013. The Supreme Court's opinion in the ''Alice'' case 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. The expression apparently derives from a song popular in the 1950s—"The Old Piano Roll Blues" by

Cy Coben Seymour "Cy" Coben (4 April 1919 – 26 May 2006) was an American songwriter, whose hits were recorded by bandleaders, country singers, and other artists such as The Beatles, Tommy Cooper and Leonard Nimoy. Biography Early life Coben was born ...

MusicWordsSung
(by

Al Jolson Al Jolson (born Eizer Yoelson; June 9, 1886 – October 23, 1950) was a Lithuanian-American Jews, Jewish singer, comedian, actor, and vaudevillian. He was one of the United States' most famous and highest-paid stars of the 1920s, and was self-bi ...

). — in the style of a

Scott Joplin Scott Joplin ( 1868 – April 1, 1917) was an American composer and pianist. Because of the fame achieved for his ragtime compositions, he was dubbed the "King of Ragtime." During his career, he wrote over 40 original ragtime pieces, one ra ...

rag Rag, rags, RAG or The Rag may refer to: Common uses * Rag, a piece of old cloth * Rags, tattered clothes * Rag (newspaper), a publication engaging in tabloid journalism * Rag paper, or cotton paper Arts and entertainment Film * ''Rags'' (1915 ...

. 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.

References

{{intellectual property activism United States patent law