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

• Microsoft, with Symantec and Koninklijke Philips Electronics N.V.
• Google, with financial services firms
• Bloomberg
• Nevada State Bar
• ABA
• 11 Law Professors and AARP
• FFII
• CCIA
• EFF

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.

"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.

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.

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.

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.

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.

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.

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.

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

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

Counsel for Microsoft Corporation

ADDITIONAL COUNSEL LISTED ON INSIDE COVER

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

i

QUESTION ADDRESSED BY AMICI CURIAE

ii

TABLE OF CONTENTS

Page

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

iii

TABLE OF AUTHORITIES

Page(s)

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,
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)

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)

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

_____________________

INTEREST OF AMICI CURIAE

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

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

3

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

ARGUMENT

5

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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.

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

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

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

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.

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

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

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

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."

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

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

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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

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CONCLUSION

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

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.").