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Final Bilski Briefs Filed - Microsoft, Google, FFII, ABA, etc.
Tuesday, October 13 2009 @ 01:16 PM EDT

More intriguing Bilski briefs filed. The door is shut now, so there will be no more, I gather. Both the ABA and Patently O have them all listed, and the latter includes a helpful brief blurb giving an outline of the theme of each. So read them all if you wish.

But I picked a few briefs I thought you'd find particularly fascinating:

Of course, you are interested in what Microsoft wants the US Supreme Court to do.

Microsoft asks that the lower court's rejection of Bilski's patent be upheld, but they also believe the "machine-or-transformation" test the lower court set forth should be disapproved. Instead, they think the standard should be "new and useful":
While electronic computers have become ubiquitous and almost infinitely varied in form and function, virtually all of them rely for their operation on the same physical activity--the routing and rerouting of electrical signals by means of on-off switches such as transistors. A "hardware" device, such as a laptop computer, contains millions of tiny transistor switches; "software" is the set of instructions that determines the configuration of and directs electrical signals through these switches so that the device will do something useful. While both hardware and software have become increasingly complex, the underlying activity--the sequential operation of switches--has been the basis of patent-eligible processes since at least the Industrial Revolution.

II. Although the Court should be chary of "lin[king] patent eligibility to the age of iron and steel at a time of subatomic particles and terabytes" (Pet. App. 134a (Rader, J., dissenting)), we respectfully submit that the eligibility framework that this Court developed during the Industrial Revolution-- an era of tremendous advances in electronic and communications technology--retains its vitality, and relevance, today. While modern digital and computer technologies are vastly more complex and efficient than their precursors, they are built upon the same physical activity as Industrial Age analogues such as Morse's telegraph and Bell's telephone. Interpreting the same constitutional and statutory language that controls today, the Nineteenth Century precedents established that a patent-eligible process must involve one or more disclosed physical things--that is, it must describe a series of steps that use physical means to produce a result or effect in the physical world.

Ah, but what do they mean by "physical"? They don't mean physical as in cotton gins. They mean things like electromagnetic signals and electric current. They define "physical" like this:
"Physical" means anything discernible or measurable, including (for example) electromagnetic signals propagated through the air, electric current transmitted by wire, electrostatic or magnetic charges on appropriate media, or photonic impulses through a fiber optic cable.
So if you can discern it or measure it, it's "physical". So what is a computer, after all, Microsoft asks? How do they work?
The fantastic variety in which computers are now found can obscure the remarkable fact that every single one is, at its heart, a collection of tiny on-off switches--usually in the form of transistors.
Why that's pretty much the same as gears and switches, as in Charles Babbage's machine:
Just as the configuration of gears and shafts determined the functionality of Babbage's computers, it is the careful configuration of these on-off switches that produces the complex and varied functionality of modern computers....

Today, these on-off switches are usually found in pre-designed packages of transistors commonly known as "chips." Thin wafers of silicon, chips can contain many millions of transistors, connected to one another by conductive materials etched onto the chip like a web of telephone lines. They are organ- ized such that they can be turned on or off in pat- terned fashion, and by this method, perform simple operations, such as turning on every transistor whose corresponding transistor is off in the neighboring group. From these building blocks, mathematical and logical operations are carried out. Patterson & Hennessy, supra, at 44-47 & App. C.

The challenge for the inventor is how to use these transistors (and applying the principles of logic, physics, electromagnetism, photonics, etc.) in a way that produces the desired functionality in a useful manner. Computer programming is an exercise in reductionism, as every feature, decision, and analysis must be broken down to the level of the rudimentary operations captured by transistors turning on and off. This reductionism is matched by the detail with which transistors must be configured and instructed to carry out the thousands or millions of operations required by the process.

No difference, really, Microsoft argues, except things are a lot faster now. And after all, in Microsoft Corp. v. AT&T Corp., the ruling found that "Windows software renders a general-purpose computer "capable of performing as the patented speech processor". See? Patentable! Today, computer languages plus semiconductor chips replicate what human operators used to do on ENIAC, they continue:
Using these languages, the inventor can create "software" that defines the operations of semiconductor chips and other hardware. These operations are the steps of a computer-implemented process. The role of software is simply to automate the reconfiguration of the electronic pathways that was once done manually by the human operators of ENIAC.

As with any patentable process, it is the real-world implementation--the actual acting out, or physical execution--of the process that makes it new and useful. In a computer-implemented process, the acting out consists primarily of the rapid activation and deactivation of millions of transistors to perform some useful function, such as displaying images and solving problems. Such functions, implemented and made real, physical, and useful by the activity of transistors, are the inventor's actual process.

Ah, but could you patent what the human operators of ENIAC did? They manually manipulated the cables and switches, Microsoft says on page 11, a task taken over by software today. That's a serious question. Could you patent the human activity of manipulating the cables and switches? (See xkcd's bunch of rocks computer cartoon.)

Microsoft's conclusion:

While the popular conception of "software" as something that is functionally distinct from "hardware" can be useful, it tends to obscure our understanding of the physical processes taking place within the computers all around us. This is reflected in the commonly used term "software patent," employed by petitioners. So-called "software patents" generally do not actually describe software at all, but rather the process performed by a programmed computer. It is such a computer-implemented process-- not software itself--that is potentially eligible for patent protection.
So software is a process that humans used to do, but a lot faster? Isn't this essentially the same argument we already heard from Lee Hollaar? Patent the computer-implemented process, Microsoft argues:
The role of software is simply to automate the reconfiguration of the electronic pathways that was once done manually by the human operators of ENIAC....

Purporting to analyze the patent-eligibility of software, as opposed to that of hardware, relies on an illusory distinction. The functionality of any digital device is the product of the same transistor activity, and it is the configuration of the pathways between those transistors that dictates their functionality. Like all patent-eligible processes, computer-implemented processes combine physical activity with human-directed logic. Irrespective of whether a particular configuration of transistors is accomplished using a soldering iron or by means of software, the processes conducted by these transistors are ultimately physical processes.

Uh huh. So, can we patent a human soldering something? Isn't that what software is in this analogy? Plus they don't address the fundamental issue: if software is math, and it is, it should not be patentable, no matter what it does. Wait. At the very end, they indeed address that sort of, like this:
These cases teach that physical implementation of a principle in a useful manner addresses (and, in most if not all cases, resolves) the prohibition against patenting principles, which inheres in Section 101. The added complexity of the court of appeals’ “machine-or-transformation” formulation does not improve on this Court’s clearer understanding: a process that makes use of a disclosed physical thing, and produces a measurable result in the physical world, does something more than describe an unpatentable principle—it is an application of that principle. To be patent-eligible, therefore, a claimed method must involve one or more disclosed physical things—that is, it must describe a series of steps that use physical means to produce a result or effect in the physical world.
So, you can use this workaround to let software be patentable even if it is math, because you don't patent the math; you patent the process that uses it in a new and useful way. Sigh. Microsoft spent a lot of money on patents. They want their money's worth.

Still, this analogy to older methods of doing the same things, as they describe them, could take root in a judge's mind, particularly if he doesn't know what software actually is. They might reason that if you could patent a telegraph machine, why not the computer equivalent. They might not realize that while they can do the same thing -- send messages -- how they do it is quite different. And no one let you patent electricity, even though it was a necessary piece of the process. If you patent processes, you'd have to patent the electrical current too. That's if I understood the brief, and since my lip was curled as I read it, it's possible I have missed something. If so, no doubt you will notice and clarify.

Here's the Microsoft brief, as text, then, so you can analyze it for yourself:

***********************************

No. 08-964

__________________________

IN THE

Supreme Court of the United States

_______

BERNARD L. BILSKI AND RAND A. WARSAW,
Petitioners,

v.

DAVID J. KAPPOS, UNDER SECRETARY OF COMMERCE
FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT
AND TRADEMARK OFFICE,
Respondent.

__________________________

On Writ Of Certiorari
To The United States Court Of Appeals
For The Federal Circuit

_____________________

BRIEF FOR MICROSOFT CORPORATION,
KONINKLIJKE PHILIPS ELECTRONICS N.V.,
AND SYMANTEC CORPORATION
AS AMICI CURIAE
IN SUPPORT OF RESPONDENT

MARK A. PERRY

Counsel of Record

HORACIO E. GUTIERREZ
T. ANDREW CULBERT
MICROSOFT CORPORATION
INTELLECTUAL PROPERTY
& LICENSING
[address, phone]

MATTHEW D. MCGILL
JASON B. STAVERS
GIBSON, DUNN &
CRUTCHER LLP
[address, phone]

Counsel for Microsoft Corporation

ADDITIONAL COUNSEL LISTED ON INSIDE COVER

JACK E. HAKEN
KEVIN C. ECKER
LAURIE GATHMAN
TODD HOLMBO
PHILIPS INTELLECTUAL
PROPERTY & STANDARDS
[address, phone]
Counsel for Koninklijke Philips Electronics N.V.

JOSEPH T. FITZGERALD
SYMANTEC CORPORATION
LEGAL & PUBLIC AFFAIRS
[address, phone]
Counsel for Symantec Corporation

i

QUESTION ADDRESSED BY AMICI CURIAE

Whether affirming the rejection of petitioners' application, under the appropriate standard of patent-eligibility, would "exclude[] forms of information-based and software-implemented inventions arising from new technological capabilities." Pet. App. 64a (Newman, J., dissenting).

ii

TABLE OF CONTENTS

Page

INTEREST OF AMICI CURIAE..........................1

SUMMARY OF ARGUMENT ..............................2

ARGUMENT .........................................................4

I. From The Twenty-First Century To
The Nineteenth: Innovation
Through The Sequential Operation
Of Switches................................................6

II. From The Nineteenth Century To
The Twenty-First: Processes That
Involve Disclosed Physical Things
Are Patent-Eligible .................................17

CONCLUSION ....................................................29

iii

TABLE OF AUTHORITIES

Page(s)

CASES

In re Alappat,
33 F.3d 1526 (Fed. Cir. 1994) ..............................21

Bonito Boats Inc. v. Thunder Craft Boats
Inc
., 489 U.S. 141 (1989)......................................28

Brenner v. Manson,
383 U.S. 519 (1966) ..............................................20

Brown v. Duchesne,
60 U.S. 183 (1857)................................................27

Cochrane v. Deener,
94 U.S. 780 (1876)............................................7, 21

Diamond v. Chakrabarty,
447 U.S. 303 (1980) ..............................................18

Diamond v. Diehr,
450 U.S. 175 (1981) ..............................................18

Eibel Process Co. v. Minnesota & Ontario
Paper Co.
, 261 U.S. 45 (1923) ..............................21

Funk Bros. Seed Co. v. Kalo Inoculant
Co.
, 333 U.S. 127 (1948).................................18, 19

Gottschalk v. Benson,
409 U.S. 63 (1972)................................................18

Graham v. John Deere Co.,
383 U.S. 1 (1966)............................................20, 21

Holland Furniture Co. v. Perkins Glue
Co.
, 277 U.S. 245 (1928).........................................8

Househill Co. v. Neilson,
151 ER 1266 (1841) ..............................................25

KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398 (2007) ................................................7

Lab Corp. of Am. Holdings v. Metabolite
Labs., Inc.
, 548 U.S. 124 (2006)...........................20

iv

Page(s)

Le Roy v. Tatham,
55 U.S. 156 (1853)......................................4, 18, 25

Le Roy v. Tatham,
63 U.S. 132 (1859)..........................................26, 29

Leeds & Catlin Co. v. Victor Talking
Mach. Co.
, 213 U.S. 301 (1909) ...........................21

Microsoft Corp. v. AT&T Corp.,
550 U.S. 437 (2007) ........................................11, 27

O'Reilly v. Morse,
56 U.S. 62 (1854)................................15, 19, 24, 25

Parker v. Flook,
437 U.S. 584 (1978) ..............................................18

Pennock v. Dialogue,
2 Pet. 1 (1829) ......................................................28

Pensacola Tel. Co. v. W. Union Tel. Co.,
96 U.S. 1 (1877)..............................................23, 28

Pfaff v. Wells Elecs., Inc.,
525 U.S. 55 (1998)................................................27

Quanta Computer Inc. v. LG Elecs., Inc.,
128 S. Ct. 2109 (2008)..........................................13

The Telephone Cases,
126 U.S. 1 (1888)............................................24, 25

Tilghman v. Proctor,
102 U.S. 707 (1881) ..........................................4, 26

Waxham v. Smith,
294 U.S. 20 (1935)..................................................8

CONSTITUTIONAL PROVISIONS

Art. I, § 8, cl. 8 ...........................................................20

STATUTES

7 U.S.C. § § 2321-2582 ..............................................21

35 U.S.C. § 101 ..........................................................18

35 U.S.C. § 100(b)......................................................14

v

Page(s)

REGULATIONS

Examination Guidelines for Computer-
Related Inventions,
61 Fed. Reg. 7,478 (Feb. 28, 1996) ......................13

OTHER AUTHORITIES

Alderson B. Webster's Patent Cases ........................26

John B. Anderson,
Digital Transmission Engineering (2d
ed. 2005) .................................................................5

William R. Aul,
"Herman Hollerith: Data Processing
Pioneer," Think (Nov. 1972) ................................16

George Ticknor Curtis,
A Treatise on the Law of Patents for
Useful Inventions as Enacted and
Administered in the United States of
America
(4th ed. 1873).........................................27

Nell Dale et al.,
Programming and Problem Solving
with C++
(1997)....................................................16

Edward Highton,
The Electric Telegraph: Its History and
Progress
(1852) .....................................................22

Daniel Walker Howe,
What Hath God Wrought: The
Transformation of America
, 1815-1848
(2007) ...............................................................22

Anthony Hyman,
Charles Babbage: Pioneer of the
Computer
(1982).........................................9, 15, 16

vi

Page(s)

David A. Patterson & John L. Hennessy,
Computer Organization and Design
(4th ed. 2009)......................................10, 11, 12, 15

Ron White,
How Computers Work (8th ed. 2005)...................10

Brian Winston,
Media Technology & Society: A History (1998) ................................................................17

BRIEF OF MICROSOFT CORPORATION,
KONINKLIJKE PHILIPS ELECTRONICS N.V.,
AND SYMANTEC CORPORATION AS AMICI
CURIAE IN SUPPORT OF RESPONDENTS

_____________________

Microsoft Corporation, Koninklijke Philips Electronics N.V., and Symantec Corporation, as amici curiae, respectfully submit that the judgment of the court of appeals should be affirmed.1

INTEREST OF AMICI CURIAE

Microsoft's mission is to enable individuals and businesses throughout the world to realize their full potential by creating technology that transforms the way people work, play, and communicate. Microsoft develops, manufactures, licenses, and supports a wide range of software programs and services for many different types of computing devices, including the flagship Windows operating system and the Office suite of productivity applications.

Koninklijke Philips Electronics N.V. (aka Royal Philips Electronics N.V.) is the parent corporation of a worldwide family of companies ("Philips"). Philips has been inventing and manufacturing electronic and electrical products for over 115 years and is one of the largest users of the patent system in the

2

United States. Philips began operation as a Nineteenth Century electric lamp manufacturer and its history is rooted in the classic patent battles of the industrial age. Scientists and engineers at Philips' American laboratories have made pioneering advances in the fields of medical diagnosis and imaging, high definition television, optical CD and DVD recording, and digital rights management.

Symantec is a global leader in providing security, storage, and systems management solutions to help its customers--from consumers and small businesses to the largest global organizations--secure and manage their information against risk. Symantec operates in more than 40 countries, and maintains research and development facilities, 24x7 Security Operations Centers, and Security Response Labs around the world. The company holds more than 700 patents in its global patent portfolio, addressing security, systems management, and storage needs for consumers, small business and enterprises.

Individually and collectively, amici hold a large number of patents, including patents that claim computer-implemented methods, and they are also frequently sued for infringement by others who hold such patents. Amici thus have a profound interest in the patent-eligibility of process patents in general and computer-implemented process claims in particular, as part of their substantial stake in the efficient and fair functioning of the patent system as a whole.

SUMMARY OF ARGUMENT

Because principles are not patentable, petitioners' claimed method of hedging commodities transactions is not patent-eligible and the judgment of the court of appeals should be affirmed, although its ex-

3

clusive reliance on the "machine-or-transformation" test should be disapproved. That test, as articulated by the Federal Circuit, is not consistent with this Court's cases, and it is already proving unwieldy and confusing to implement. Contrary to the suggestions of petitioners and others, however, affirming the rejection of the application in issue need not--and, under the appropriate standard of patent-eligibility, would not--imperil properly drawn claims describing computer-implemented processes.

I. Some have expressed concern that affirming the rejection of petitioners' application would "exclude[] forms of information-based and software-implemented inventions arising from new technological capabilities." Pet. App. 64a (Newman, J., dissenting). Dispelling that concern requires a basic understanding of how computer-implemented processes work in the real world. While electronic computers have become ubiquitous and almost infinitely varied in form and function, virtually all of them rely for their operation on the same physical activity--the routing and rerouting of electrical signals by means of on-off switches such as transistors. A "hardware" device, such as a laptop computer, contains millions of tiny transistor switches; "software" is the set of instructions that determines the configuration of and directs electrical signals through these switches so that the device will do something useful. While both hardware and software have become increasingly complex, the underlying activity--the sequential operation of switches--has been the basis of patent-eligible processes since at least the Industrial Revolu- tion.

II. Although the Court should be chary of "lin[king] patent eligibility to the age of iron and

4

steel at a time of subatomic particles and terabytes" (Pet. App. 134a (Rader, J., dissenting)), we respectfully submit that the eligibility framework that this Court developed during the Industrial Revolution-- an era of tremendous advances in electronic and communications technology--retains its vitality, and relevance, today. While modern digital and computer technologies are vastly more complex and efficient than their precursors, they are built upon the same physical activity as Industrial Age analogues such as Morse's telegraph and Bell's telephone. Interpreting the same constitutional and statutory language that controls today, the Nineteenth Century precedents established that a patent-eligible process must involve one or more disclosed physical things--that is, it must describe a series of steps that use physical means to produce a result or effect in the physical world. See, e.g., Tilghman v. Proctor, 102 U.S. 707, 727 (1881) ("Whoever discovers that a certain useful result will be produced, in any art [i.e., process] ..., by the use of certain means, is entitled to a patent for it") (emphasis added). This standard is fatal to petitioners' application, but should not imperil the patent-eligibility of properly drawn claims describing computer-implemented processes.

ARGUMENT

Everyone agrees that "a principle is not patentable." Le Roy v. Tatham, 55 U.S. 156, 174-75 (1853). Petitioners' patent application, which claims a method of hedging commodities transactions, runs smack into this unchallenged prohibition. See U.S. Br. 53-54; see also Yahoo Br. 34-35; Business Software Alliance Br. 16-18. Indeed, not one of the seventeen amicus briefs filed in support of petitioners offers a credible defense of the actual application at

5

issue in this case. The judgment of the court of appeals, affirming the rejection of petitioners' application, should be affirmed--although, as explained below, its adoption of the "machine-or-transformation" rubric as the exclusive test for patent-eligibility should be disapproved.

Contrary to the suggestions of petitioners and others, affirming the rejection of the application in issue need not, and under the appropriate standard would not, imperil the patent-eligibility of properly drawn claims describing computer-implemented processes. To demonstrate this, we first outline the practical and technological contours of computer-related inventions, and then explain how the patent-eligibility of such inventions can comfortably be resolved within the traditional eligibility framework developed by this Court in response to great advances in electronic and communication technologies during the Nineteenth Century. Under that framework, a patentable process must involve one or more disclosed physical things--that is, it must describe a series of steps that use physical means to produce a result or effect in the physical world.2

6

I. From The Twenty-First Century To The
Nineteenth: Innovation Through The
Sequential Operation Of Switches

Some knowledgeable observers of our patent system have expressed concern that affirming the rejection of petitioners' application, particularly under the "machine-or-transformation" framework adopted as exclusive by the Federal Circuit majority, could "exclude[] forms of information-based and software-implemented inventions arising from new technological capabilities." Pet. App. 64a (Newman, J., dissenting); see also Dolby Br. 10; IBM Br. 17-19; Medtronic Br. 5-11.

Petitioners previously echoed this concern, arguing in their petition that "the Federal Circuit's decision threatens many of the nation's fundamental industries, including software" because it "casts doubt" on "tens of thousands of software patents," leaving them "vulnerable to attack." Pet. 30. Petitioners' merits brief, which concedes that the method claimed in their application "does not necessarily have to be performed on a particular machine or computer" (Pet. Br. 7), fails to make good on this threat; indeed, "software" makes only a brief and non-substantive appearance. See Pet. Br. 40.

As the Solicitor General explains, "this case does not present any question as to the application of the machine-or-transformation test to software or yet more novel future forms of industrial or technological processes." U.S. Br. 37. Nevertheless, since the patent-eligibility of computer-implemented processes could obviously be impacted by the Court's resolution of this dispute, this Court should be mindful of this potential impact in articulating any general standard or test for patent eligibility.

7

Clearly, specific interpretations of the test articulated below have proven problematic. See, e.g., Yahoo Br. 9-13; Borland Br. 19-28; AIPPI Br. 28-32; Awaken IP Br. 13-23; Entrepreneurial Software Companies Br. 16-22. Although the judgment of the court of appeals is correct, the majority erred in opining that the non-statutory "machine-or-transformation" test is the exclusive measure of patent-eligibility. That test has proven overly difficult to implement in practice. See Yahoo Br. 9-17; Dolby Br. 10-11; Regulatory Datacorp Br. 23-26. Moreover, even when that test is useful, it is descriptive rather than prescriptive: A process that meets the test is likely to be patent-eligible, but the test itself is not a prerequisite to patentability.

As explained further below, the eligibility standard that has traditionally been applied by this Court requires that a patent-eligible process must involve one or more disclosed physical things--that is, it must describe a series of steps that use physical means to produce a result or effect in the physical world. The inventor must disclose an embodiment of a process that is susceptible to practical application using physical means and disclose those physical means with sufficient particularity to enable others to use the invention. But no particular "machine" is required. Cochrane v. Deener, 94 U.S. 780, 787-88 (1876) ("A process is a mode of treatment of certain materials to produce a given result. . . . [B]ut the tools to be used in doing this may be of secondary consequence."). In this respect, the error in the majority opinion lies not in its conclusion that the claims in petitioners' application are not patentable (they are not), but in its annunciation of the machine-or-transformation test as the alpha-and-omega of patent-eligibility. Cf. KSR Int'l Co. v. Teleflex Inc.,

8

550 U.S. 398, 418 (2007) ("Helpful insights ... need not become rigid and mandatory formulas").3

Computer-implemented inventions are fundamentally and easily distinguishable from the hedging method claimed in petitioners' application using the patent-eligibility framework developed by this Court in precedents dating to the Nineteenth Century. To demonstrate that this Court's Industrial Age precedents are both appropriate and easily applicable to these modern technologies requires a brief discussion of the underlying architecture of digital machines and the real-world implementation of computer processes.

Despite the popular conception of the computer as a quintessentially modern technology, computers predate inventions such as the telephone and tele-

9

graph, and date back to the age of steam power and brass gears. Charles Babbage's mechanical computers--the Difference Engine and the Analytical Engine--designed in the Nineteenth Century, were the forerunners of modern computing devices. Anthony Hyman, Charles Babbage: Pioneer of the Computer 164-66 (1982) (by 1836, Babbage "had sketched out many of the salient features of the modern computer"). Obviously, there have been enormous advances since the days of Babbage, with mechanical gears giving way initially to electromechanical relays and vacuum tubes, and more recently to semiconductor chips.

Today, the term "computer" often denotes the laptop or desktop device that many people use for word processing, e-mail, surfing the Internet, and other applications. While this usage of the term is of course correct, it captures only a little slice of the broad spectrum of computers in common use today. At the high-end, corporations, governments, and educational institutions employ supercomputers-- either huge custom-built devices or specialized networks of smaller machines--to perform calculations of a complexity, and at a speed, nearly incomprehensible to the layperson. And at the low-end, small computers are built into (or comprise) a vast array of consumer devices, including digital televisions, cellular telephones, music players and other entertainment devices, videogame consoles, kitchen appliances, thermostats, and so forth. A current-generation automobile includes several computers, which control everything from the fuel-injection system to the antilock brakes; a modern "fly-by-wire" airplane is a highly sophisticated computing system; and the means of controlling traffic, both on land and in the air, depend on complicated computer networks. The

10

list could go on and on. See IBM Br. 7, 19-21 (providing numerous examples of the expanding and essential contributions of computers).

The fantastic variety in which computers are now found can obscure the remarkable fact that every single one is, at its heart, a collection of tiny on-off switches--usually in the form of transistors. See generally David A. Patterson & John L. Hennessy, Computer Organization and Design (4th ed. 2009); Ron White, How Computers Work (8th ed. 2005). Just as the configuration of gears and shafts determined the functionality of Babbage's computers, it is the careful configuration of these on-off switches that produces the complex and varied functionality of modern computers. Today, these on-off switches are usually found in pre-designed packages of transistors commonly known as "chips." Thin wafers of silicon, chips can contain many millions of transistors, connected to one another by conductive materials etched onto the chip like a web of telephone lines. They are organized such that they can be turned on or off in patterned fashion, and by this method, perform simple operations, such as turning on every transistor whose corresponding transistor is off in the neighboring group. From these building blocks, mathematical and logical operations are carried out. Patterson & Hennessy, supra, at 44-47 & App. C.

The challenge for the inventor is how to use these transistors (and applying the principles of logic, physics, electromagnetism, photonics, etc.) in a way that produces the desired functionality in a useful manner. Computer programming is an exercise in reductionism, as every feature, decision, and analysis must be broken down to the level of the ru-

11

dimentary operations captured by transistors turning on and off. This reductionism is matched by the detail with which transistors must be configured and instructed to carry out the thousands or millions of operations required by the process.

Early electronic computers were "programmed" by laboriously rewiring their electrical pathways so that the computer would perform a desired function. ENIAC--the first general-purpose electronic digital computer, functioning at the mid-point of the Twentieth Century-- could take days to program, with operators physically manipulating the switches and cables. Patterson & Hennessy, supra, at 1.10. [ed: graphic of ENIAC]

Fortunately, this is no longer the case. Transistors, packaged onto silicon chips, permit electronic manipulation of the pathways between them, allowing those pathways to be altered to implement different processes without direct physical manipulation. The instructions for this electronic reconfiguration are typically expressed in computer software. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 445-46 (2007) (noting that, inter alia, Windows software renders a general-purpose computer "capable of performing as the patented speech processor"). To allow more sophisticated control over the millions of transistors on a chip, inventors rely on a multi-layered scheme of pre-designed software "lan-

12

guages" that help bridge the gap between the on-off language of the transistor and the words and gram- mar of human understanding. These allow control of the transistors on a chip at various levels of specificity, ranging from "machine language," which allows transistor-level control, to "programming languages," which allow operations to be defined through formal syntax and semantics that are more easily understood by humans. Each language pre-packages the mathematical and logical operations that are most useful for the users of that particular language. See Patterson & Hennessy, supra, at 11-13, 20-21, 76-80.

Using these languages, the inventor can create "software" that defines the operations of semiconductor chips and other hardware. These operations are the steps of a computer-implemented process. The role of software is simply to automate the reconfiguration of the electronic pathways that was once done manually by the human operators of ENIAC.4

As with any patentable process, it is the real-world implementation--the actual acting out, or physical execution--of the process that makes it new and useful. In a computer-implemented process, the acting out consists primarily of the rapid activation and deactivation of millions of transistors to perform

13

some useful function, such as displaying images and solving problems. Such functions, implemented and made real, physical, and useful by the activity of transistors, are the inventor's actual process.

While the popular conception of "software" as something that is functionally distinct from "hardware" can be useful, it tends to obscure our understanding of the physical processes taking place within the computers all around us. This is reflected in the commonly used term "software patent," employed by petitioners. So-called "software patents" generally do not actually describe software at all, but rather the process performed by a programmed computer. It is such a computer-implemented process-- not software itself--that is potentially eligible for patent protection. See generally Examination Guidelines for Computer-Related Inventions, 61 Fed. Reg. 7,478 (Feb. 28, 1996). For this reason, the notion of "software patents" as a category that is distinct from digital hardware patents lacks any coherent technological or legal basis.

Purporting to analyze the patent-eligibility of software, as opposed to that of hardware, relies on an illusory distinction. The functionality of any digital device is the product of the same transistor activity, and it is the configuration of the pathways between those transistors that dictates their functionality. Like all patent-eligible processes, computer-implemented processes combine physical activity with human-directed logic. Irrespective of whether a particular configuration of transistors is accomplished using a soldering iron or by means of software, the processes conducted by these transistors are ultimately physical processes. Cf. Quanta Computer Inc. v. LG Elecs., Inc., 128 S. Ct. 2109, 2118 (2008).

14

It follows naturally from this understanding that the innovation that employs a computer to do new and useful things is not necessarily encompassed by the innovations of the transistor (or computer) itself--that is, a new way to use an existing computer may itself be patent-eligible. See 35 U.S.C. § 100(b) ("The term 'process' ... includes a new use of a known process, machine, manufacture, composition of matter, or material"). Although the court below dismissed this statutory text as "unhelpful" (Pet. App. 7a n.3), it confirms that, among other things, each new application of computer technology (at heart, each new use of transistors) which permits computers to perform a useful function is the product of human innovation, the application of principles to the functions of human needs.

In this respect, modern computer-related inventions are no different from other patent-eligible innovations that have produced a new and useful result by employing physical structures and phenomena to record, manipulate, or disseminate information.

Perhaps the most celebrated example of such technological innovation is Samuel Morse's invention of the electric telegraph, which (like modern computers) employed binary encoding in conjunction with the sequential operation of switches. [ed: graphic of telegraph operator sending a message] Although petitioners focus almost exclusively on the Court's rejection of his eighth claim (on which more below), the

15

Court allowed a number of other claims, including the fifth. O'Reilly v. Morse, 56 U.S. 62, 112 (1854). That claim was for "the system of signs, consisting of dots and spaces, and of dots, spaces and horizontal lines." Id. at 86. This system, an early version of Morse Code, was nothing other than a system for manipulating an on-off switch--the telegraph key-- in a prescribed manner to produce the useful result of intelligible communications between two parties. Indeed, although much less complex, the telegraph system--a web of interconnected switches spreading around the globe, enabling binary-encoded communication--was comparable to the modern Internet.

The Industrial Age also knew software and hardware in a literal sense; the core concepts in computer design and programming were developed in this period. The principle of encoded instructions controlling a device found application at the opening of the Nineteenth Century, with the famous Jacquard loom, a device (still in use today) that adjusts the warp and weft of a textile in response to "programming" contained on punch cards. The loom's control apparatus consists of a series of on-off switches which are controlled by the pattern of holes punched in the cards, just as the pattern of microscopic pits and lands on the surface of a CD can be used to control the transistor switches inside a computer. Hyman, supra, at 166; Patterson & Hennessy, supra, at 24.

Inventors soon seized on the "programming" principle applied in the Jacquard loom. A defining characteristic of Babbage's Analytical Engine, for example, was the use of punch cards, adopted from the Jacquard loom, to store the programs run by the machine. "Following the introduction of punched

16

cards early in 1836 four functional units familiar in the modern computer could soon be clearly distinguished: input/output system, mill, store, and control." Hyman, supra, at 166. Babbage's close friend, Ada Lovelace (the daughter of Lord Byron), is now recognized as "the first computer programmer" for her work developing software programs for the Analytical Engine. Nell Dale et al., Programming and Problem Solving with C++ 406-407 (1997).

Later in the Nineteenth Century, Herman Hollerith, a U.S. Census Office employee, developed a means of tabulating census results using punch cards and mechanical calculation. His method allowed the country to complete the 1890 census two years sooner and for five million dollars less than manual tabulation. William R. Aul, "Herman Hollerith: Data Processing Pioneer," Think 22-23 (Nov. 1972). The company he founded became the International Business Machines Corp., and the once-prevalent IBM punch-cards were both the direct descendent of the means used to program a Jacquard loom and the immediate predecessor to today's CDs and other media, which contain digitized instructions

17

for modern computers to open and close millions of switches.

As has been often noted by historians of technological development, our perceptions of innovation and modernity are often misguided--the roots of technological change are deep, and run farther back in our history than we perceive. See Brian Winston, Media Technology & Society: A History 1 (1998) (arguing that current innovations in communications technology are "hyperbolised as a revolutionary train of events [but] can be seen as a far more evolutionary and less transforming process"). That is certainly true with respect to computer-related inventions. While the hardware and software implemented by a modern e-mail program may be orders of magnitude more complex than the dot-dash-dot of a telegraph key, the underlying physical activity that makes communication possible--the sequential operation of switches--is fundamentally the same.

II. From The Nineteenth Century To The
Twenty-First: Processes That Involve
Disclosed Physical Things Are Patent-
Eligible

In a series of cases decided over the course of the Industrial Revolution, this Court gave content to the prohibition against patenting principles by allowing the patentability only of methods that involve disclosed physical things. Although we agree that that the Court should be hesitant to "link[] patent eligibility to the age of iron and steel at a time of sub-atomic particles and terabytes" (Pet. App. 134a (Rader, J., dissenting)), we submit that those historical precedents retain their vitality, and relevance, today. Indeed, the doctrines laid down by the Court in the Nineteenth Century can resolve most if not all

18

modern questions of patent-eligibility, including those involving computer-implemented process claims.5

The Court originally framed the core proscription thusly: "A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right." Le Roy, 55 U.S. at 174-75. In the intervening century-and-a-half, the Court has articulated the proposition in varying ways, but the song remains the same: Such ephemera are "free to all men and reserved exclusively to none." Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948).

This prohibition against the patentability of principles is rooted in the plain text of the Patent Act, which (as pertinent here) authorizes patents only for inventions that are both "new" and "useful." 35 U.S.C. § 101 ("Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the

19

conditions and requirements of this title") (emphasis added).6

Absent their novel application in the real world, principles are not "new" inventions. They, "like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men.... He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes." Funk Bros., 333 U.S. at 130. This inventiveness element is distinct from (and a prerequisite to) the novelty requirement imposed by Section 102, which is concerned with who first disclosed an invention that is otherwise patent-eligible.

20

Disembodied principles in themselves also are not "useful" in the sense of Section 101.
The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility. Unless and until a process is refined and developed to this point--where specific benefit exists in currently available form-- there is insufficient justification for permitting an applicant to engross what may prove to be a broad field.
Brenner v. Manson, 383 U.S. 519, 534 (1966). Like the inventiveness element, the prerequisite of usefulness is separate from, and precedes, the "use" requirement imposed by Section 112 (first paragraph), which is concerned with the adequacy of disclosure of an invention that is otherwise patent-eligible.

This prohibition on patenting principles is of constitutional dimension. "Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available." Graham v. John Deere Co., 383 U.S. 1, 6 (1966). Such a patent would not "promote the Progress of ... useful Arts." Art. I, § 8, cl. 8; see also Lab Corp. of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124, 126-27 (2006) (Breyer, J., dissenting from dismissal of certiorari).

Physical things (devices, engines, etc.) often depend on principles, such as the laws of physics and thermodynamics, for their successful or efficient operation; but they are embodiments or instantiations of such principles rather than the principles them-

21

selves. See, e.g., Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923) (patented paper-making machine applied the principle of gravity to improve efficiency). In contrast, a process (or method) claims a series of steps for doing something, rather than the thing itself. Such a claim may well be patent-eligible (see, e.g., Cochrane, 94 U.S. 780 at 787), but requires scrutiny to ensure that what is claimed is not merely an unpatentable abstract principle.7

The statutory and constitutional bases of patent-eligibility have been in place since the Founding. See Graham, 383 U.S. at 5-12. To be sure, Congress has enacted intellectual-property legislation in response to specific technological advances. See, e.g., Plant Variety Protection Act of 1970, 7 U.S.C. §§ 2321-2582. But the Patent Act does not differentiate among the useful arts, and it certainly does not single out computer-related inventions for special treatment. Accordingly, the continued relevance of these basic precepts to patents claiming technologi-

22

cal advances is best understood by reference to an earlier period of transformational innovation.

At the dawn of the Industrial Age, this Court recognized both the patentability of processes and the challenge of distinguishing unpatentable "principles" from patent-eligible processes in a celebrated series of cases arising from that era's remarkable innovations in communication technology.

While the telegraph and wire-line telephone may seem commonplace, even archaic, in the light of modern computer and telecommunications innovations, the parallels, and continuity, between these historical innovations and those of our own age should not be underestimated. Nineteenth Century assessments certainly had a familiar ring of hyperbole. See, e.g., Edward Highton, The Electric Telegraph: Its History and Progress 1-2 (1852) ("What an age of wonders is this! When one considers the state of Science a century ago, and compares the light of the past with that of the present day--how great is the change! how marvellous the advance! . . . Few inventions have created so great surprise and delight as that of the Electric Telegraph."); id. at 178 ("Time and space are all but annihilated. Years are converted into days, days into seconds, and miles have become mere fractions of an inch."). And modern scholars have often recognized the similarity, and continuity, between these Nineteenth Century innovations and those of the modern era. See, e.g., Daniel Walker Howe, What Hath God Wrought: The Transformation of America, 1815-1848 1-2 (2007) (arguing that the telegraph "was destined to change the world," and that, together with the railroad, its "consequences certainly rivaled, and probably exceeded

23

in importance, those of the revolutionary 'information highway' of our own lifetimes").

And, notably, the contemporaneous observations of this Court demonstrate that while inventions are always new, invention itself decidedly is not.

The electric telegraph marks an epoch in the progress of time. In a little more than a quarter of a century it has changed the habits of business, and become one of the necessities of commerce. It is indispensable as a means of inter-communication, but especially is it so in commercial transactions.
Pensacola Tel. Co. v. W. Union Tel. Co., 96 U.S. 1, 9-10 (1877). Today, "the Internet" could be substituted for "electric telegraph" and the Court's observations hold true in the Twenty-First Century.

Asked during this prior period of technological change to resolve the patent-eligibility of its pivotal inventions, this Court relied upon and refined the bedrock notion that principles are not patentable, but their useful applications may be. And it found that physical implementation--the use of disclosed physical means--defined the line separating principle from a practical application.

In one of the most famous cases defining this distinction between an unpatentable "principle" and a patent-eligible process, the Court limited its approval of Samuel Morse's patent to the physical method he had developed for telegraphy, described in the fifth claim and elsewhere, and excluded the underlying principle (as described in the eighth claim)--which, by itself, was not useful. "[Morse] has [discovered] a method by which intelligible

24

marks or signs may be printed at a distance. And for the method or process thus discovered, he is entitled to a patent. But he has not discovered that the electro-magnetic current, used as motive power, in any other method, and with any other combination, will do as well." 56 U.S. at 117.

A generation later, considering Alexander Graham Bell's telephone patent, the Court repeated this distinction between principle and useful process. "[E]lectricity, left to itself, will not do what is wanted. The art consists in so controlling the force as to make it accomplish the purpose." The Telephone Cases, 126 U.S. 1, 532 (1888). And it drew the line even more finely than in Morse, approving Bell's patent not for a method tied to a working apparatus (indeed, Bell's actual device did not yet work when he applied for the patent (id. at 535)), but on the physical manner of manipulating electricity to render it capable of transmitting voice. "[Bell] found out that, by changing the intensity of a continuous current so as to make it correspond exactly with the changes in the density of air caused by sonorous vibrations, vocal and other sounds could be transmitted and heard at a distance. This was the thing to be done, and Bell discovered the way of doing it." Id. at 538-39. "Bell's patent is not alone for the particular apparatus he describes, but for the process that apparatus was designed to bring into use." Id. at 540.

The telling difference between the claims before the Court in these seminal cases was that Bell's eligible claimed process described the manipulation of a physical thing, an electrical current, which made it useful, while Morse's ineligible eighth claim stopped short of that essential inventive contribution. Bell's claim specifically described a method for using elec-

25

tric current for transmitting speech that operated on a physical thing, the electric current: "by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds." 126 U.S. at 531. This was a substantial step forward in the art, as the Court explained, an innovation that had not occurred to Bell's many competitors. Id. at 540-41. Morse's ineligible claim, by contrast, provided no such physical implementation, and merely described the abstract principle of using electrical current to write at a distance: "[T]he essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances." 56 U.S. at 112. Bell's claim consisted of an operative, physical process, while Morse's described only the objective of an unspecified process.

Indeed, this theme runs throughout the Court's leading precedents.

In Le Roy, the Court did not ultimately rule on the eligibility of the patent claim, but its language clearly indicated that it expected that a physically implemented process would satisfy Section 101. See 55 U.S. at 175-76. And the critical issue in the English case that so interested this Court in Le Roy (and for years thereafter) was that the inventor had designed a physical manner of injecting hot air into a furnace, and was not merely seeking to patent the principle that so doing would increase a furnace's power. Id. (discussing Househill Co. v. Neilson, 151 ER 1266 (1841)). Seven years later, when the lawsuit in Le Roy returned to the Court on a related question, the Court was even more express about the

26

role that physical embodiment could play in patent eligibility.
However brilliant the discovery of the new principle may be, to make it useful it must be applied to some practical purpose. . . . "There can be no patent for a principle; but for a principle so far embodied and connected with corporeal substances as to be in a condition to act and to produce effects in any trade, mystery, or manual occupation, there may be a patent."
Le Roy v. Tatham, 63 U.S. 132, 137 (1859) (quoting Alderson B. Webster's Patent Cases, 683) ("Le Roy II").

These cases teach that physical implementation of a principle in a useful manner addresses (and, in most if not all cases, resolves) the prohibition against patenting principles, which inheres in Section 101. The added complexity of the court of appeals' "machine-or-transformation" formulation does not improve on this Court's clearer understanding: a process that makes use of a disclosed physical thing, and produces a measurable result in the physical world, does something more than describe an unpatentable principle--it is an application of that principle.

To be patent-eligible, therefore, a claimed method must involve one or more disclosed physical things--that is, it must describe a series of steps that use physical means to produce a result or effect in the physical world.

Indeed, this standard (and not "machine-or-transformation") has been the law for more than a century. See Tilghman, 102 U.S. at 727 ("Whoever

27

discovers that a certain useful result will be produced, in any art [i.e., process], machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it") (emphasis added). As explained in a Nineteenth Century treatise, the patentee must describe "a practical application to some useful purpose . . . and his specification must show the application of the principle to such a special purpose, by its incorporation with matter in such a way as to be in a condition to produce a practical result." George Ticknor Curtis, A Treatise on the Law of Patents for Useful Inventions as Enacted and Administered in the United States of America § 242 (4th ed. 1873) (emphasis added). The author explains that "wherever a claim does in truth sever the use of a motive-power or other elemental agency from all conditions of its application in the arts, and presents it only as a causa causans of a result, it is void; because some practical means of producing the result is the necessary link between cause and ef- fect." Id. at § 160 (emphasis in original). Thus, while a disembodied principle is unpatentable, "a principle or function embodied in a particular organization of matter for a particular purpose . . . is patentable." Id. at § 242 (emphasis added).

This standard should suffice for the next 100 years as well. This Court has consistently grounded its patent jurisprudence in historical context, properly declining invitations to abandon long-standing doctrines even in the face of technological change. Microsoft, 550 U.S. at 444 (relying on Brown v. Duchesne, 60 U.S. 183 (1857)); see also, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 62 (1998) (applying "the reasoning of The Telephone Cases to the facts of the case before us today," which involved the application of the on-sale bar in a case involving computer

28

chip socket design); Bonito Boats Inc. v. Thunder Craft Boats Inc., 489 U.S. 141, 149-152 (1989) (relying on Pennock v. Dialogue, 2 Pet. 1 (1829), and other early cases).

Technological innovation has been transforming the Nation since the Founding, and continued advances today (and in the future) only confirm the relevance of this Court's historical case law. As this Court observed over 130 years ago, the powers granted by the Constitution "extend from the horse with its rider to the stage-coach, from the sailing- vessel to the steamboat, from the coach and the steamboat to the railroad, and from the railroad to the telegraph." Pensacola Tel., 96 U.S. at 9. The parallel chains of continuity that connect both technology and law across the eras of our history teach that the Court's observation can and should be updated: "and from the telegraph through the telephone, to the Internet, and beyond."

To reiterate (and conclude), this Court has long recognized that a patent-eligible method must involve one or more disclosed physical things--that is, it must describe a series of steps that use physical means to produce a result or effect in the physical world. This test for patent-eligibility has withstood the test of time, and it is sufficiently flexible to accommodate technological advances. The inflexible machine-or-transformation test, in contrast, is not compelled by this Court's historical precedents. Indeed, the older cases cited by the government (see U.S. Br. 29-30) are far more consistent with the standard proposed by this brief than the government's alternative formulation.

Computer-implemented process claims, in general, will meet the standard historically employed by

29

this Court, which should be retained and reaffirmed. In contrast, because the hedging method described in petitioners' application is not sufficiently "embodied and connected with corporeal substances" (Le Roy II, 63 U.S. at 137), it is not patent-eligible under Section 101.

CONCLUSION

The judgment of the court of appeals should be affirmed.

Respectfully submitted.

HORACIO E. GUTIERREZ
T. ANDREW CULBERT
MICROSOFT CORPORATION
INTELLECTUAL PROPERTY
& LICENSING
[address, phone]

MARK A. PERRY
Counsel of Record
MATTHEW D. MCGILL
JASON B. STAVERS
GIBSON, DUNN &
CRUTCHER LLP
[address, phone]

Counsel for Microsoft Corporation

JACK E. HAKEN
KEVIN C. ECKER
LAURIE GATHMAN
TODD HOLMBO
PHILIPS INTELLECTUAL
PROPERTY & STANDARDS
[address, phone]

JOSEPH T. FITZGERALD
SYMANTEC CORPORATION
LEGAL & PUBLIC AFFAIRS
[address, phone]

Counsel for Koninklijke
Philips Electronics N.V.

October 2, 2009

1 Pursuant to this Court's Rule 37.6, amici state that no party's counsel authored this brief in whole or in part, and no person or entity, other than amici and their counsel, made a monetary contribution to the preparation or submission of this brief. Counsel of record for both petitioners and respondent have consented to the filing of amicus briefs in letters that have been lodged with the Clerk.

2 "Physical" means anything discernible or measurable, including (for example) electromagnetic signals propagated through the air, electric current transmitted by wire, electrostatic or magnetic charges on appropriate media, or photonic impulses through a fiber optic cable. See John B. Anderson, Digital Transmission Engineering 1-5 (2 ed. 2005).

3 The historical cases focus on achieving a particular outcome or result. See, e.g., Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 255 (1928) ("A patentable process is a method of treatment of certain materials to produce a particular result or product"); Waxham v. Smith, 294 U.S. 20, 22 (1935) ("By the use of materials in a particular manner he secured the performance of the function by a means which had never occurred in nature, and had not been anticipated by the prior art; this is a patentable method or process"). A useful result in the "real world" will necessarily involve a physical alteration or manipulation of matter, and (contrary to a suggestion made below, see Pet. App. 29a-30a) machines and processes that work with or communicate physically embodied information or data (such as clocks, compasses, thermometers, telephones, and so forth) have historically been considered patentable. That is entirely consistent with the historical standard, which revolves around whether the applicant has described a physical embodiment or implementation that is capable of producing a practical outcome or result.

4 As an aid to comprehension, the reconfiguration is often conceptualized as the computer "running" the software or "executing" the software instructions. In reality, however, when stored as electrical charges, the ones and zeros of the binary code produce electrical currents that literally (but temporarily) reconfigure the electronic pathways running between transistors in the same way that human operators reconfigured the wiring of ENIAC by hand.

5 In contrast, most of the briefs in this case focus on a bare handful of relatively recent opinions in which the Court considered patent-eligibility. Diamond v. Diehr, 450 U.S. 175 (1981); Diamond v. Chakrabarty, 447 U.S. 303 (1980); Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63 (1972). Since the Court already has been deluged with dozens of duplicative discussions of these decisions, we will not further address them, except to say that they did not overrule, nor do they require departure from, this Court's earlier precedents considering patent-eligibility.

6 In addition to subject-matter eligibility, the Patent Act imposes an array of other limitations on putative patent claims, which can serve as effective checks on attempts to evade the requirements of Section 101 through abusive claim drafting. See Novartis Br. 11-13. Section 102, which requires novelty, and Section 103, which requires non-obviousness over the prior art, buttress Section 101's prerequisite that the claimed invention be "new and useful." Sections 111 through 115 place requirements on the application, ensuring that any claims that survive the earlier analysis are fairly drawn against the actual invention. In addition to ensuring the proper disclosure of the innovation, these requirements buttress the requirements of the earlier sections. They--and the claim-drafting directives of Section 112, in particular--provide additional means by which courts can test assertions made in the claims and specification about the aspects of the invention that establish its patent- eligibility, novelty and non-obviousness. See Morse, 56 U.S. at 117-18 (noting that the claimant in Le Roy "was entitled to a patent for the new process or method in the art of making lead pipe, which this discovery enabled him to invent and employ; and was bound to describe such process or method, fully, in his specification") (emphasis added).

7 Three of the statutory categories of patent-eligible subject-matter (machines, manufactures, and compositions of matter) are not before the Court in this case. This is important, because many computer-related inventions are comprised of, or include, product (machine or system) claims--and a programmed computer is itself a patent-eligible machine if it meets the other requirements for patentability. In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc). This dynamic is neither novel nor computer-specific. See Leeds & Catlin Co. v. Victor Talking Mach. Co., 213 U.S. 301, 318 (1909) ("A process and an apparatus by which it is performed are distinct things. They may be found in one patent; they may be made the subject of different patents.").


  


Final Bilski Briefs Filed - Microsoft, Google, FFII, ABA, etc. | 421 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections here
Authored by: SpaceLifeForm on Tuesday, October 13 2009 @ 01:58 PM EDT


---

You are being MICROattacked, from various angles, in a SOFT manner.

[ Reply to This | # ]

OT here
Authored by: SpaceLifeForm on Tuesday, October 13 2009 @ 01:59 PM EDT
Please make any links clickable.


---

You are being MICROattacked, from various angles, in a SOFT manner.

[ Reply to This | # ]

News Picks commentary here
Authored by: SpaceLifeForm on Tuesday, October 13 2009 @ 02:01 PM EDT
Please note which article you are referencing
in the subject line.

---

You are being MICROattacked, from various angles, in a SOFT manner.

[ Reply to This | # ]

a device, vs. an activity using that device
Authored by: Anonymous on Tuesday, October 13 2009 @ 02:04 PM EDT
It's one thing to patent a circuit breaker. It's quite another to patent
flipping circuit breakers in the basement of the Empire State Building to create
designs or letters in the windows.

The former is a device. The latter is a completely external side-effect of using
that device.

I have no problem with the former being patentable. I don't see how any
configuration of switches, producing any external side-effects, can be
patentable.

A hardware MP3 encoder? Patentable. A WAV-to-MP3 conversion program? No way.

The rest is legalistic sophistry.

[ Reply to This | # ]

New and useful
Authored by: Anonymous on Tuesday, October 13 2009 @ 02:13 PM EDT
Now those are really solid legal terms to base a patent decision upon.

[ Reply to This | # ]

google's brief
Authored by: designerfx on Tuesday, October 13 2009 @ 02:49 PM EDT
google is against, which is good. I'm trying to read through it but my lack of
legal expertise may cause me to miss some stuff. I see they cite Diehr and
O'Reilly v. Morse and mention that basically we're patenting abstract. sounds
like a good explanation to me.

I wonder why did the Nevada bar submit an Amici? Is Nevada favorable to
software patents or is this just a BAR submitting their thoughts?

[ Reply to This | # ]

  • google's brief - Authored by: Anonymous on Tuesday, October 13 2009 @ 03:19 PM EDT
Philips Electronics has problems competing, that is why they joined N/T
Authored by: Winter on Tuesday, October 13 2009 @ 02:51 PM EDT
Philips Electronics has problems competing, that is why they joined N/T

---
Some say the sun rises in the east, some say it rises in the west; the truth
lies probably somewhere in between.

[ Reply to This | # ]

Nevada state bar - link not working
Authored by: Anonymous on Tuesday, October 13 2009 @ 02:53 PM EDT
Can you fix this?

[ Reply to This | # ]

Final Bilski Briefs Filed - Microsoft, Google, FFII, ABA, etc.
Authored by: Anonymous on Tuesday, October 13 2009 @ 03:00 PM EDT
Doesn't our brain work a lot like a computer? Couldn't you replace
"transistors" with "neurons" (after all a neuron is like an
on/off switch right?). Wouldn't our "thought" process be the
"program" that causes the neurons to switch in a specific way? So
ergo, you can patent thought. Or am I missing something?

[ Reply to This | # ]

The Player Piano Analogy
Authored by: Anonymous on Tuesday, October 13 2009 @ 03:41 PM EDT
MS' arguments truly prove only that the computer itself is patentable, something
I doubt anyone would argue against. Trying to extend that to the software is
wrong for many reasons.

A good analogy to demonstrate this is the Player Piano. The PP is similar to a
programmable computer at many levels and is also clearly patentable: it uses
valves and tubes instead of switches and wires and it's "software" is
the Piano Roll, which uses a system of holes on rolled paper to control the
opening of valves at the correct time and in the correct order (essentially
substituting for a human pianist). But under MS' argument, the Piano Rolls
would be patentable too. I doubt many folks would agree with that.

~ray

[ Reply to This | # ]

typically, Microsoft obscures, conflates and reframes
Authored by: grouch on Tuesday, October 13 2009 @ 03:58 PM EDT
Microsoft conflates the computer with the software. All their smoke about switches, transistors and gears is intended to make the justices think about machinery rather than mathematics. They want to patent algorithms and mathematical concepts, but that's not allowed, so they divert attention from the software and concentrate on these wonderful machines.

It's a familiar tactic. If you look at Rob Weir's recent article, The Final OOXML Update: Part I, you will see that it's all about Microsoft stacking the committee. Yet, the very first comment is by Doug Mahugh and completely ignores the subject, but instead attempts to divert attention to "standardizing Open Formula". Typical Microsoft.

---
-- grouch

GNU/Linux obeys you.

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Final Bilski Briefs Filed - Microsoft, Google, FFII, ABA, etc.
Authored by: Ian Al on Tuesday, October 13 2009 @ 04:06 PM EDT
I have never read such an incompetent technical description of a computer. Their description fits a Field Programmable Gate Array fairly well, but is as completely wrong about digital computers as it could be.

They get Morse's invention of the telegraph. They point out that the operator has to transform the characters of the message in his head to the serial transmission of groups of long and short signals that represent the message. The receiving operator has, in his head, to transform those groups back to characters. So, are they saying that people carrying out the mental algorithm to encode and decode characters should be patentable? Why? If they are saying that a mind-based process should not be patentable, then why should software that does the same transformation process suddenly make the achievement patentable?

The legal argument appears to be 'computers are very fast and completely amazing. We should be allowed to patent software. If patents awarded in the US or Europe over 100 years ago are contrary to the current Supremes decisions about patents then the current decisions should be overturned'.

Although the judgment of the court of appeals is correct, the majority erred in opining that the non-statutory "machine-or-transformation" test is the exclusive measure of patent-eligibility. That test has proven overly difficult to implement in practice.
What that means is that Microsoft is not able to patent what it wants to patent if the Supremes do not change their mind in Diehr, Benson and Flook. The Supremes should ignore
The President's Commission on the Patent System (1966). "Indirect attempts to obtain patents and avoid the rejection, by drafting claims as a process, or a machine or components thereof programmed in a given manner, rather than as a program itself, have confused the issue further and should not be permitted."
Babbage's difference engine was created to calculate a series of values automatically. By using the method of finite differences, it was possible to avoid the need for multiplication and division. Soon after the attempt at making the difference engine crumbled, Babbage started designing a different, more complex machine called the Analytical Engine. The main difference between the two engines is that the Analytical Engine could be programmed using punch cards. He realized that programs could be put on these cards so the person had only to create the program initially, and then put the cards in the machine and let it run. The analytical engine would have used loops of Jacquard's punched cards to control a mechanical calculator, which could formulate results based on the results of preceding computations. (Wikipedia)

Babbage was carrying out maths using cogs and gears. Flook tells us that "the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity." for the machine to be patentable. The Supremes in Benson, said 'It runs directly counter to the objective of fostering innovation to allow patents that impede scientific and technological progress. A patent on an algorithm or other abstract idea, as opposed to a specific tangible process, blocks innovation.'

The principle of encoded instructions controlling a device found application at the opening of the Nineteenth Century, with the famous Jacquard loom, a device (still in use today) that adjusts the warp and weft of a textile in response to "programming" contained on punch cards. The loom's control apparatus consists of a series of on-off switches which are controlled by the pattern of holes punched in the cards, just as the pattern of microscopic pits and lands on the surface of a CD can be used to control the transistor switches inside a computer.
An interesting case. The loom was standard. The patentable device was the mechanical punched card reader and associated actuator. The software punched into the cards generated the patterns in the fabric, is creative expression and can only be protected by copyright. The modern Jacquard loom keeps the patterns in data files in a computer. The actuators are controlled by the computer. That is all prior art. The patterns are only protectable by copyright.

Microsoft have listed a range of inventions that may or may not have been patentable under the current Supreme decisions. They have not said whether they would or would not be patentable and why that is contrary to the constitution or the law. Further, they have not argued that any of the examples they list provides a parallel to the patentability of software.

---
Regards
Ian Al

Linux: Viri can't hear you in free space.

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Microsoft admits
Authored by: Anonymous on Tuesday, October 13 2009 @ 04:28 PM EDT
It is such a computer-implemented process-- not software itself--that is potentially eligible for patent protection.
So Microsoft admits: software is not patentable.

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Avoiding two mistakes
Authored by: Anonymous on Tuesday, October 13 2009 @ 05:50 PM EDT
Mistake #1: "It's not patentable, because it involves a computer."
For example, this mistake would make anti-lock brakes patentable if they were
implemented by clever hydraulics, analog electronics, or even discrete digital
electronics, but if you use a programmable chip in it, then the anti-lock brakes
become unpatentable. This is clearly The Wrong Thing(TM).

Mistake #2: "Software, in and of itself, is patentable." This is
also clearly The Wrong Thing, for a whole host of reasons that have been
enumerated here. It's math, it can be carried out (at least in principle) by a
human with pencil and paper, etc.

So to be patentable, the software can't just be software - just an algorithm.
It must Do Something In The Real World. Again, anti-lock brakes are a good
example. The software is part of a system that *does* something - it stops your
car better.

And here's where I think Microsoft is going. It's trying to define Do Something
In The Real World so loosely that the net effect is that software, by itself, is
patentable. In particular, it's trying to define Do Something In The Real World
to include "run on a physical computer". This renders meaningless the
distinction between "just software" and Does Something In The Real
World.

MSS2

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Patent the soldered device, not the process of soldering itself.
Authored by: Anonymous on Tuesday, October 13 2009 @ 06:20 PM EDT
Uh huh. So, can we patent a human soldering something?
Not quite. They are saying that a physical device that someone creates by soldering electronic components together in a new, unique, non-obvious way to produce something that does something new and unique is patentable.

They are likening the programming of the switches in a multi-purpose computer to the soldering of the connections in a single purpose device, in that while that program is running, that computer is producing the same useful output as the soldered single-purpose device, so the combination of a multi-purpose computer and new, unique, non-obvious software should be patentable as well, because it can produce the same new, unique non-obvious results.

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Useful?
Authored by: billyskank on Tuesday, October 13 2009 @ 06:24 PM EDT
All software should be useful. I wouldn't care one bit about people patenting
useless things since we wouldn't need them.

---
It's not the software that's free; it's you.

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First Fruit and Patenting Opperation
Authored by: BitOBear on Tuesday, October 13 2009 @ 06:56 PM EDT
The example I usually use is the sewing machine. When each feature of the
machine was added (treadle replace by motor, automatic self-threading, automatic
embroidery, etc) someone got the patent for that innovation.

Once made and patented, however, that feature was part of the machine. Invoking
that feature isn't patentable, no matter if there is a "new" reason
for the invocation. That is, if the sewing machine can automatically embroider a
flower, having the operator do that on a tee shirt "to create a shirt that
makes people happy" isnt patentable.

Now if we step back to automation, a la the Jaquard Loomb (spelling?), If I
invented a machine that operated the sewing machine, I could maybe patent that
machine. If, on the other hand, I just gave a bunch of instructions to an
operator to operate the machine, I would not be able to patent that.

In computer terms, the inventor of the CPU (ore serial uart, or GPU, etc) got
his first fruit patent. After that, the instructions that are run on those
target devices operate those devices entirely within the realm of their design.
The novelty (e.g. "new"-ness) of the instructions and their
implementation was evaluated and rewarded with the patent issued to the inventor
of the device the instruction operates.

Software patents are always "for the purpose of" patents. That is the
thing described uses entirely existing (and probably patented, or already deemed
unpatentable) devices within their invented scope.

That is, the "client server solution" is using the network cards and
cables and adapters and computers in ways entirely envisioned by their
respective inventors. They just have "the purpose" of distributing
effort between a client and server machine, which is again not patentable, and
if it were, the first client/server application would have gotten that patent.
So now it is to divide the labor for, say, a database task (again already
existing as a concept) for a particular kind of data.... etc... until someone is
claiming "one click shopping" or "LDAP database replication"
or something else. That is, by recursive specificity the every day becomes
"novel".

By the same logic, I should be able to patent each separate trip across the
stream, because as we all know you can never step into the same stream twice.
But you know what? the courts have already said that the first fruit patent went
to the guy who invented the thermal hip-waders I am wearing. Trudging through
cold water was implicit in that invention.

In scope, the machine that operates the sewing machine might be a compiler or
whatever, as a concept. But since that isnt' really a separate machine, since
the compiler is running on a computer, again the first fruit test says that the
instructions that compose the compiler are just running on the computer. This
would be the man trying to patent telling an operator what to do by saying
"I ahve this other guy use a sewing machine to embroider the instructions
onto this other piece of cloth, so the process of following the instructions is
new."

At no point does the _length_ of the instruction stream, nor any oddity of the
manner of its delivery, change the fundamental fact that the patent was issued
to the guy who invented the device that actually does the work.

In speech most plain: We invented the hammer, and the nails, and even the roof.
We cannot genuinely claim that using the roof to keep my sofa dry during a
rainstorm is a distinct invention from using my roof to keep the sun from fading
my credenza.

Similarly, while not running puppies over with your car is a laudable goal, you
don't get to claim a royalty every time someone uses the existing brakes to
avoid an accident involving an animal.

Purpose is not patentable.

Mere combination of existing inventions without changing their nature is not
patentable.

Replace "switches" with "valves" (coincidentally the
original English name for vacuum tubes) and then try to explain that "not
flushing the toilet while someone is in the shower", and "making sure
nobody is watering the front yard when you turn on the sprinklers out back"
is "novel and useful".

Dude, you are operating valves, as designed, in a complex system, to do myriad
thing. With scheduling and conflict resolution and so on...

But the guy who invented the individual valve(s) got the patent(s).

Same still for switches and instructions. Its been covered. Its been invented.
You cannot synthesize novelty by just adding more and more of the same
"then I use it to" on the end of the sheet till someone says
"okay".

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Plain and Simple - Final Bilski Briefs Filed - Microsoft, Google, FFII, ABA, etc.
Authored by: Anonymous on Tuesday, October 13 2009 @ 07:07 PM EDT
Microsoft wants software patents because it's their best weapon against Linux.
There is no way they can compete against software contributed by hundreds of
thousands unpaid volunteers. Microsoft is a software company, plain and simple.
They've dabbled in other markets, but maintaining their software monopoly is
their only hope of survival going forward, and software patents are the only way
they can do that.

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Let's get Physical
Authored by: jbb on Tuesday, October 13 2009 @ 07:10 PM EDT
Microsoft said:
"Physical" means anything discernible or measurable, ...
Well that is the entire physical world, which is pretty much everything, thus limiting patents to devices that are physical in the sense given here is totally meaningless. Even a thought in my head can be discerned and measured.


---
You just can't win with DRM.

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AARP et al - no there there
Authored by: hardmath on Tuesday, October 13 2009 @ 09:30 PM EDT
The central thesis of the brief by AARP et al is that the patent application at
issue lacks "invention" and must be rejected by the Supreme Court on
that threshold issue.

The brief spends much of its wording on the legal issue that patent eligibility
requires an invention, i.e. a creative application of known or discovered
principles (abstract ideas, laws of nature, etc.). Only "inventions"
in this sense of a means to a useful result are eligible, and not the results
themselves or the principles themselves.

The good news is that they support the ineligibility finding of the appellate
court, but the bad news is that they reach this conclusion by a more fundamental
mode of reasoning than the "machine or transformation" test.

No invention, ergo no eligible patent claim.

regards, hm


---
"Mail-order schools lure fledgling code jockeys with promises of big bucks and
excitement. But a new survey finds hirings are rare." Computerworld, 12/11/95

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Final Bilski Briefs Filed - Microsoft, Google, FFII, ABA, etc.
Authored by: jrvalverde on Wednesday, October 14 2009 @ 03:28 AM EDT
> Still, this analogy to older methods of doing the same
> things, as they describe them, could take root in a
> judge's mind, particularly if he doesn't know what
> software actually is.

Well, I find it highly disturbing for other reasons: on one hand they are 100%
right in what they say. On the other, the exact same reasoning can be applied to
human reasoning: it entails measurable synapse modifications (the program) on a
versatile general purpose data processing machine (the brain) and measurable
electric current paths (the execution), as any decent biologist or neurologist
with tell you.

Indeed, they are even more macroscopic than photon pulses. Indeed, it was long
ago that IBM scientists replicated an animal brain on a computer (a minimal one,
but one anyway).

Allowing patents on software on those grounds is the same as allowing patents on
thoughts, and then, forbidding people from even thinking on patented ideas.

I think that if something, MS argument is the strongest argument that software
*is exactly the same thing* as ideas. And I suspect they know and didn't want
anybody else to point it out in time to the judges.

1984, here you come! (20 years later, but all the same..).

The actual question is whether the judges will be animistics or scientific
intellectuals.

Oh, wait, now I get it, I'm gonna patent a process by which a neuron based
computer is able to produce answers to sums, rests, multiplications and
divisions, and even to anything..

On, no, that is what business patents already did. Too late.



---
Jose R. Valverde
EMBnet/CNB

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The Microsoft brief is nonsense. Here's why.
Authored by: Anonymous on Wednesday, October 14 2009 @ 07:03 AM EDT

Computer programming is an exercise in reductionism, as every feature, decision, and analysis must be broken down to the level of the rudimentary operations captured by transistors turning on and off.

"Transistors turning on and off" happens to be how today's computers work. That has nothing to do with programs written in a language like C, which specify algorithms in a way which does not depend on the underlying computer.

You can execute a (small) C program by stepping through it with paper and pencil. People sometimes used to debug in this way. No "transistors turning on and off" there.

Most programming nowadays - certainly more than 99% - is done in machine-independent high-level languages like C, Perl, C++, Java, Pascal, BASIC, C#, Python, Lisp, etc, and has nothing to do with "reductionism" to "transistors turning on and off". When neural-network computers are developed, you can bet that somebody will write a Lisp interpreter and a C compiler for them.

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Final Bilski Briefs Filed - Microsoft, Google, FFII, ABA, etc.
Authored by: Anonymous on Wednesday, October 14 2009 @ 10:20 AM EDT
"The fantastic variety in which computers are now found can obscure the
remarkable fact that every single one is, at its heart, a collection of tiny
on-off switches--usually in the form of transistors"

And each of those on-off switches are a collection of atoms and molecules which
have existed for quite some time already. If you follow this train of thought
then everything that exists of atoms and molecules is prior art. That only
leaves anti-matter to be patented.

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Microsoft's logic would end software patents
Authored by: jpvlsmv on Wednesday, October 14 2009 @ 01:45 PM EDT
On reflection of Microsoft's argument, that a patentable process for
"configuring transistor operations" in the context of a piece of
computing equipment would have the same effect as eliminating software patents
entirely. Here's my reasoning:

If the court agrees that the process of manipulating the switches (transistors)
in a certain way is patentable subject matter, patent applicants will have to
describe in detail how their software maps to these transistor manipulations.
Their patent would be limited in scope only to this particular set of
manipulations.

So if the patent describes its software as the set of behavior "X"
when it's executed on an Intel Core i7-975 processor, the manipulation of
transistors is completely different when loaded onto an AMD processor. So the
patent (which protects a particular manipulation of transistors) would not apply
to that same software running on a new kind of processor.

Even more, a different implementation of the same algorithm, even on the same
processor type, would result in a different manipulation of transistors. Even
if the change between the patented behavior and the different implementation is
as simple as combining it with debugging symbols, or reordering instructions in
a way that doesn't affect the outcome (for example, an optimizing compiler)

So in this case, a patent applicant would either be locked in to a specific
processor implementation (remember that Intel revises its die maps regularly, so
there are many "steppings" of each branded processor), or have to
apply for a patent on each and every processor implementation, only to have
those patents be trivially sidestepped.

In fact, I would assert (without proof) that even loading the software into
different places in the computer's memory would cause a different manipulation
of the transistors. So a modern OS, such as Windows, Linux, MacOS, Unix
derivatives, mainframes, etc, would automatically transform the machine code on
the disk into a different (not covered by the patent on this particular
transistor manipulation) and distinct process.

And then, poof. No such thing as an effective software process patent.

--Joe

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washingtonpost.com securityfix avoid_windows_malware_bank_on a Live CD
Authored by: SilverWave on Wednesday, October 14 2009 @ 02:21 PM EDT
http://voices.washingtonpost.com/securityfix/2009/10/avoid_windows_malware_bank_
on.html

Avoid Windows Malware: Bank on a Live CD

---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions

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Hoisting MS by their own (legal) petard.
Authored by: darkonc on Wednesday, October 14 2009 @ 07:26 PM EDT
I haven't looked at MS's Bilski brief, but reading the summary at patently-o, and this jumps out at me:
Today's computers - although complex - are not fundamentally different from Babbage's 1836 mechanical computer.
(Emphasis mine), but presumably what they focused on So let's take this argument and run with it -- but change the focus somewhat.
Today's computers - although complex - are not fundamentally different from Babbage's 1836 mechanical computer.
So, in other words, throwing the analogue of a 170 year old machine into the fray is sufficient to turn an unpatentable idea into a patentable one.... Throwing anything mechanical into the fray can make an idea patentable?

plot device, by simply including the most obviously mechanical process of writing it down (or any equivalent such as typing it up, or typing it into a computer). Similarly, mathematical models would only be unpatentable only if you could run the process entirely in your head without writing them down (presuming, of course, that the act of firing related synapses isn't delcared mechanicala). Ditto to accounting methods, etc.

Ultimately, the argument implies that Ideas would only be excluded as patentable inventions as long as the idea can be expressed with absolutely no physical representation.

Absurd, isn't it? I only hope that the SCOTUS agrees.

---
Powerful, committed communication. Touching the jewel within each person and bringing it to life..

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Everyone should read the CASRIP brief.
Authored by: Anonymous on Wednesday, October 14 2009 @ 09:56 PM EDT
Everyone should read "amicus curiae brief of center for advanced study and research in intellectual property (CASRIP) of the University of Washington school of law and of CASRIP research affiliate scholars".
This brief instead of have and axe to grind and trying to find the arguments that will sharpen that axe, seems to be genuinely grappling with the question what is a "usefull art" and what should be pattentable under current law.
It has examples of false positives and false negatives in the machine or transformation test. Nevertheless, it thinks the M or T test is the best test commonly discussed. It proposes a complex test the "useful arts" test that tries to figure out what were usefull arts when the constitution was written. In addition it says that the M or T test should also be used when the patent depends on a particular scientific principal.
I think this "amicus" is genuinely trying to help the court as a "friend".

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Final Bilski Briefs Filed - Microsoft, Google, FFII, ABA, etc.
Authored by: Anonymous on Thursday, October 15 2009 @ 12:40 AM EDT
When a musician composes a song, stringing together notes and chords to create a
melody they are afforded a copyright to their work under copyright law with the
intention of promoting art with incentive as provided for by the constitution.

Would it make sense to also allow the musician to patent playing notes on a
guitar, a piano, or any instrument of their choice? Or perhaps patent a specific
sequence of notes that produce a desired effect for the listener?

While perhaps adding additional incentive to any individual artist to produce,
copyright and patent more sequences of notes and how they are played the
overbearing nature of combining copyrights and patents not only removes the
incentive that promotes art from other artists it would burden the entire music
market and industry as artists could unwittingly violate another's patent even
though they are composing some new and advanced artistic work.

So here we are with Microsoft asking that they be allowed to have both copyright
and patent protection, surely not for the purpose of promoting computer science
but only for a selfish desire to acquire as much of the incentive for themselves
at the cost of future development of useful computer science by the developers
outside Microsoft that easily out number their development capacity.

Software is covered by copyright as it should be, leave patents for new and
innovative devices that cannot be covered by copyright. When the Supreme Court
rules against software patents developers and companies like Microsoft will not
lose as they will continue to have their copyright protection.

Article 1 Section 8 Clause 8 of the United States Constitution is not a
guarantee of perpetual revenue streams, it is intended to promote the sciences
and arts. When the laws extending from this clause no longer support its purpose
they must be deemed unconstitutional and void.

Outlaw software patents.

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Software is not physical even if they argue electrical signals are.
Authored by: Anonymous on Thursday, October 15 2009 @ 02:03 AM EDT
Ah, but what do they mean by "physical"? They don't mean physical as in cotton gins. They mean things like electromagnetic signals and electric current. They define "physical" like this:

"Physical" means anything discernible or measurable, including (for example) electromagnetic signals propagated through the air, electric current transmitted by wire, electrostatic or magnetic charges on appropriate media, or photonic impulses through a fiber optic cable.

Well in this case software cannot be patented since software is not physical even in this sense. Nor does controlling a series of electrical pulses using non-physical software, because the non-physical software is what they are seeking to patent. Using this argument, programmable hardware is patentable but not the program.

If Microsoft's arguments are valid, any data we are capable of storing or perceiving can itself be patented since in order to perceive them, we have to be able to be able to represent them in some form - ink on a sheet of paper, magnetic domains on a floppy disk, electrical charge on a USB key, sound waves stored cut as a vibration in a vinyl record etc.

Indeed using Microsoft's arguments, all human thoughts, ideas, memories would be be patentable in themselves because they are stored as chemical signals in the human brain, and more physical than the electro-magnetic signals Microsoft claims makes the data representing software running on a computer or stored as data on a hard disk, USB key or CD patentable.

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Patent on soldering
Authored by: SRL on Thursday, October 15 2009 @ 01:09 PM EDT
Actually, yes you can patent somebody soldering something. If a patent covers a
given electronic circuit, patent law forbids you from soldering components in a
pattern that is covered by the claims in that patent. I think that's actually
Microsoft's point here.

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Final Bilski Briefs Filed - Microsoft, Google, FFII, ABA, etc.
Authored by: Anonymous on Thursday, October 15 2009 @ 01:31 PM EDT
We must remember, people's DNA has been patented already, even without their
permission. Is it such a leap that some special interests would want to break
the seal on patenting software, or even manage to get the courts to go along
with it?

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PJ:
Authored by: Anonymous on Thursday, October 15 2009 @ 01:44 PM EDT
"Still, this analogy to older methods of doing the same things, as they
describe them, could take root in a judge's mind, particularly if he doesn't
know what software actually is."

PJ I agree with you, however I would like to offer:
I believe the Court has already made it clear its thinking on methods/processes,
business methods/processes anyway. Business methods/processes are no different
then any other methods/processes, that is with respect to, those
methods/processes that were once done by people and now taken over by software;
that as a result of change, are now software the Court ruled on software
business methods/processes. The problem for the argument based on switches etc,
is that software is written and compiled for the devices, devices that in turn
are created to "run" the software. Asking the Court to believe that
software is tied to the device by anyother way then intent is going to be a hard
sell. I know people with little computer knowledge and are able to reason the
differences between software and the hardware it runs on. The question of intent
gos with design, as I am thinking if two things being different however designed
to work together as software and hardware, does not make one or the other the
same as one or the other. They work together by design, and the software
carrying out the same methods/processes as once done by people, running on
harware is no less software. Software is software, the difference when people
were carrying out the functions of those methods/processes, methods/processes
were not patented ?, then the question to answer is how, now that the same
methods/processes can be patented as being only designed as software designed to
run on the hardware. The hardware no longer people, the software no longer the
knowledge of those people, but the software and hardware today is a product of
the past, so if couldn't be patented in the past, why now ?. The thinking to
reason on this is in my opinion, is not a matter of knowledge of software as it
is more about knowing the methods/processes of the past, are with us now.
Software or not, it is the methods/processes that should be seen as being in
danger from patents.

[ Reply to This | # ]

Is software development a useful art?
Authored by: Anonymous on Sunday, October 18 2009 @ 11:49 PM EDT
The constitution only gives congress the power to grant patents for the things in the "useful arts".

Computer Science, being part of mathematics, is part of the "liberal arts" or "polite arts" and therefore is not part of the "useful arts" as the term was understood when the constitution was written. Read the CASRIP brief.

Can we construct a strong argument that software development is part of computer science and therefore not in the "useful arts"? Software development has a practical feel to it. It may be hard to persuade the supreme court justices who are not technical people.

If not we will need to rely on the machine or transformation test.

[ Reply to This | # ]

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