decoration decoration
Stories

GROKLAW
When you want to know more...
decoration
For layout only
Home
Archives
Site Map
Search
About Groklaw
Awards
Legal Research
Timelines
ApplevSamsung
ApplevSamsung p.2
ArchiveExplorer
Autozone
Bilski
Cases
Cast: Lawyers
Comes v. MS
Contracts/Documents
Courts
DRM
Gordon v MS
GPL
Grokdoc
HTML How To
IPI v RH
IV v. Google
Legal Docs
Lodsys
MS Litigations
MSvB&N
News Picks
Novell v. MS
Novell-MS Deal
ODF/OOXML
OOXML Appeals
OraclevGoogle
Patents
ProjectMonterey
Psystar
Quote Database
Red Hat v SCO
Salus Book
SCEA v Hotz
SCO Appeals
SCO Bankruptcy
SCO Financials
SCO Overview
SCO v IBM
SCO v Novell
SCO:Soup2Nuts
SCOsource
Sean Daly
Software Patents
Switch to Linux
Transcripts
Unix Books
Your contributions keep Groklaw going.
To donate to Groklaw 2.0:

Groklaw Gear

Click here to send an email to the editor of this weblog.


To read comments to this article, go here
SFLC Files Briefs with Supreme Court Arguing Against Software Patents
Friday, December 15 2006 @ 02:05 PM EST

This will interest you, and it certainly interests me. You may have read about the Microsoft v AT&T case, which is about whether or not U.S. software patents cover activity outside of the United States. The Software Freedom Law Center has just filed an amicus brief in the case, arguing against that proposition -- which puts them on the same side of the argument as Microsoft -- but significantly, the brief also argues against software patents. Eben Moglen Executive Director of SFLC: "The Supreme Court has consistently ruled that algorithms and mathematics cannot be patented. Since software is expressed as mathematical algorithms, it should not be patentable."

That exactly what I've been arguing for years, so I'm excited that at least now the issue is beginning to be addressed. I've explained to you before that changes in the law take time, that there is an educational process, whereby judges and lawyers move their thinking based on the kind of education that this brief represents. Sometimes the process takes a while, but it is the process that finally works. Way back in the summer of 2003, I wrote an Open Letter to Microsoft, back when we first heard them hint about suing Linux over patents, pointing out that there isn't a company in the world that isn't violating somebody's patents, because software code is math. Complicated math, but math just the same. And there are only so many ways to say 1 + 1 = 2:

One of these sweet days, enough people will finallly understand this, and they will say to each other, "Patents aren't a good fit with software. Why did we let Microsoft and other large software companies land grab like this? The only result is a restriction on innovation by the rest of us." You know how much you believe in innovation. That'll be a PR challenge you can't win. And that'll be the end of the patent hussle.

Law is based on what people think is fair and appropriate. In a democracy, at least, that is the idea. And when you get so many people so mad, it's trivial to predict the result to you if you attack the GNU/Linux community in your typical smarmy way.

That sweet day may be closer, thanks to this brief. Someone has to raise an issue at the right court at the right time for good results to flow. Even if this doesn't bear immediate fruit, at least the issue is before the Supreme Court. Here are some other reasons why software and patents need to get a divorce. Here is a paper written in 1999 to the USPTO by the League for Programming Freedom, "Software Patents - An Industry at Risk", providing in great detail all the reasons why software patents are a bad idea. Yes. 1999. The education process takes time, and you have to talk to the right body. The Supreme Court is the right body, and the educational process has, at least, begun.

The worst thing, to me, about the patent system is that there is no place in it for software released under the GPL. The amicus brief opens like this:

Much of the world’s most important and most significant software is distributed under terms that give recipients freedom to copy, modify and redistribute the software (“Free and Open Source Software”). One could not send or receive e-mail, surf the World Wide Web, perform a Google search or take advantage of many of the other benefits offered by the Internet without Free and Open Source Software, which also includes the Linux operating system that is today’s strongest competitor to Petitioner’s Windows operating system. Indeed, this brief was written entirely with Free and Open Source Software word processors, namely OpenOffice, gedit and LaTeX, each of which are not just competitive with nonfree software programs like those offered by Petitioner on terms of functionality, but which also provide their users with the freedom to improve the program to fit their needs and desires.

The Software Freedom Law Center (“SFLC”) is a notfor-profit legal services organization that provides legal representation and other law-related services to protect and advance Free and Open Source Software. SFLC provides pro bono legal services to non-profit Free and Open Source Software developers and also helps the general public better understand the legal aspects of Free and Open Source Software. SFLC has an interest in this matter because the decision of this Court will have a significant effect on the rights of the Free and Open Source Software developers and users SFLC represents. More specifically, SFLC has an interest in ensuring that limits are maintained on the reach of patent law through Section 271(f) so that Free and Open Source software development is not unreasonably and unnecessarily impeded.

SUMMARY OF ARGUMENT

Software can not be a “component[] of a patented invention” under 35 U.S.C. § 271(f) because software is not patentable subject matter under 35 U.S.C. § 101. As such, the Federal Circuit’s holding to the contrary in this case is erroneous and should be reversed.

I. Software Cannot Be A “Component[] Of A Patented Invention” Under § 271(f) Because Software Is Not Patentable Subject Matter Under § 101.

The Court of Appeals for the Federal Circuit in this case resolved the issue of whether software may be a “component” of a patented invention under § 271(f) by relying on its contemporaneous Eolas decision, which held that “without question, software code alone qualifies as an invention eligible for patenting [under 35 U.S.C. § 101],” and that “every form of invention eligible for patenting [under 35 U.S.C. § 101] falls within the protection of Section 271(f).” AT&T Corp. v. Microsoft Corp., 414 F.3d 1366, 1369 (Fed. Cir. 2005) (citing Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005)).

While the Federal Circuit is correct that only subject matter eligible for patenting under § 101 can be captured by § 271(f), the Federal Circuit’s holding in Eolas that software is patentable subject matter conflicts with longstanding precedents of this Court. As noted in the recent opinion of Justice Breyer dissenting fromthis Court’s decision to dismiss as improvidently granted a patentable subject matter challenge, this Court has not approved of the Federal Circuits Section 101 jurisprudence. See Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 126 S.Ct. 2921, 2928 (2006) (Breyer, J., dissenting) (discussing the Federal Circuit’s “useful, concrete, and tangible result” test for patentable subject matter and stating that “this Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary”). To support its holding in Eolas that “without question, software code alone qualifies as an invention eligible for patenting,” the Federal Circuit relied merely on its own previous decisions. Eolas, 399 F.3d at 1339 (citing In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999)). Eolas and the earlier cases on which it relied completely ignored this Court’s precedent (discussed below) that sets out firm limits on patentable subject matter and that - in fact - excludes software from patentable subject matter. Therefore, since Eolas fails to abide by this Court’s precedent regarding patentable subject matter, the Federal Circuit’s reliance on Eolas for the holding in this case that software can be a “component[] of a patented invention” under 271(f) is legally erroneous and should be reversed.

Here's the full press release, followed by a text version of the brief:

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

FOR IMMEDIATE RELEASE

Software Freedom Law Center Files Brief with Supreme Court Arguing
Against Software Patents

Brief Filed in Microsoft v. AT&T

NEW YORK, December 15, 2006 -- The Software Freedom Law Center (SFLC), provider of pro-bono legal services to protect and advance Free and Open Source Software, today filed a brief with the United States Supreme Court arguing against the patenting of software.

In the case Microsoft v. AT&T, the Supreme Court will decide whether U.S. patents can apply to software that is copied and distributed overseas. The Court of Appeals for the Federal Circuit, a specialized patent court known for allowing patents on software and business methods, originally decided in favor of AT&T, expanding the international reach of U.S. software patents. Microsoft appealed, and the Supreme Court agreed to hear the case.

In its brief, SFLC argues that software copied and distributed outside the United States cannot infringe U.S. patents. The brief also argues that the Federal Circuit's decisions declaring software to be patentable subject matter conflict with Supreme Court precedent and, as such, should be overruled.

"I expect many people will be surprised that the Software Freedom Law Center has filed a brief with the Supreme Court in support of Microsoft," said Daniel Ravicher, SFLC Legal Director. "In this specific case, Microsoft and SFLC are both supporting the position that U.S. software patents have no right to cover activity outside of the United States, especially in places that have specifically rejected software patents."

In Supreme Court decisions, the explanation for deciding a case is almost always more important than the outcome of the particular case at hand. In this case, the Court's decision will determine whether U.S. software patents can be used to restrict software development, distribution and use throughout the rest of the world. The ruling may also decide whether software patents are even legally allowed to exist in the United States.

"In contrast to the Federal Circuit, the Supreme Court has maintained limits on patentable subject matter throughout U.S. history," said Eben Moglen, Executive Director of SFLC. "The Supreme Court has consistently ruled that algorithms and mathematics cannot be patented. Since software is expressed as mathematical algorithms, it should not be patentable."

Software patents are an important issue for developers and users of Free and Open Source Software. The Software Freedom Law Center, along with other organizations, hosted a conference at MIT and Boston University in November that addressed the legal, economic and social consequences of software patents.

SFLC's brief is available on the Web here.

About the Software Freedom Law Center

The Software Freedom Law Center -- chaired by Eben Moglen, one of the world's leading experts on copyright law as applied to software -- provides legal representation and other law-related services to protect and advance Free and Open Source Software. The Law Center is dedicated to assisting non-profit open source developers and projects. For criteria on eligibility and to apply for assistance, please contact the Law Center directly or visit the Web at http://www.softwarefreedom.org.


No. 05-1056

IN THE
Supreme Court of the United States

__________________________________

M I C R O S O F T C O R P O R AT I O N,
Petitioner,

v.
AT & T C O R P.,

Respondent.

On Writ of Certiorari to the
United States Court of Appeals
for the Federal Circuit

BRIEF OF THE SOFTWARE FREEDOM
LAW CENTER AS AMICUS CURIAE
IN SUPPORT OF PETITIONER

_______________________________

EBEN MOGLEN
Counsel of record

DANIEL RAVICHER
RICHARD FONTANA
Software Freedom Law Center
[address, phone]

December 15, 2006

1

TABLE OF CONTENTS

TABLE OF AUTHORITIES . . . . . . . . . . . . . . ii

INTEREST OF THE AMICUS CURIAE . . . . . . . 1

SUMMARY OF ARGUMENT. . . . . . . . . . . . . 3

I. Software Cannot Be A "Component[] Of
A Patented Invention" Under § 271(f) Be-
cause Software Is Not Patentable Subject
Matter Under § 101. . . . . . . . . . . . . . . 3

A. This Court's Precedent Sets Out Limits On
Patentable Subject Matter. . . . . . . . . . . 4

B. The Federal Circuit Has Strayed From
This Court's Limits On Patentable Subject
Matter. . . . . . . . . . . . . . . . . . . . . . 6

C. Since Software Does Nothing Other Than
Execute Mathematical Algorithms, It Is
Not Patentable Subject Matter And, Thus,
Can Not Be A "Component[] Of A
Patented Invention" Under § 271(f). . . . . 10

CONCLUSION . . . . . . . . . . . . . . . . . . . . 13

i

TABLE OF AUTHORITIES

Cases

Arrhythmia Research Tech., Inc. v. Corazonix Corp.,
958 F.2d 1053 (1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

AT&T Corp. v. Excel Communications, Inc.,
172 F.3d 1352 (Fed. Cir. 1999) . . . . . . . . . . . . . . . . . . . . . 4, 9

AT&T Corp. v. Microsoft Corp.,
414 F.3d 1366 (Fed. Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . . 3

Diamond v. Chakrabarty, 447 U.S. 303 (1980) . . . . . . . 4, 8, 9

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

Eolas Techs. Inc. v. Microsoft Corp.,
399 F.3d 1325 (Fed. Cir. 2005) . . . . . . . . . . . . . . . . . . . . . 3, 4

Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127 (1948) . . . 5, 6

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

In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) . . . . . . . . 4, 8, 9

Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc.,
126 S.Ct. 2921 (2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

Le Roy v. Tatham, 55 U.S. (14 How.) 156 (1853) . . . . . . . . . 6

ii

O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854) ...........5

Parker v. Flook, 437 U.S. 584 (1978) . . . . . . . . . . . . . . . 4, 5, 11

State St. Bank & Trust Co. v. Signature Fin. Group,
149 F.3d 1368 (Fed. Cir. 1998) . . . . . . . . . . . . . . . . . . . . . . . 9

White v. Dunbar, 119 U.S. 47 (1886) . . . . . . . . . . . . . . . . . . . 11

Constitutions, Statutes, and Regulations

35 U.S.C. § 101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim

35 U.S.C. § 271 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim

Other Authorities

D. Chisum, The Patentability of Algorithms,
47 U. Pitt. L. Rev. 959 (1986) . . . . . . . . . . . . . . . . . . . . . . . . 7

Kenneth W. Dam, The Economic Underpinnings of
Patent Law
, 23 J. Legal Stud. 247 (1994) . . . . . . . . . . . . . . 6

R.L. Gable & J.B. Leaheey, The Strength of
Patent Protection for Computer Products
,
17 Rutgers Computer & Tech. L.J. 87 (1991) . . . . . . . . . 7

iii

INTEREST OF THE AMICUS CURIAE1

Much of the world's most important and most significant software is distributed under terms that give recipients freedom to copy, modify and redistribute the software ("Free and Open Source Software"). One could not send or receive e-mail, surf the World Wide Web, perform a Google search or take advantage of many of the other benefits offered by the Internet without Free and Open Source Software, which also includes the Linux operating system that is today's strongest competitor to Petitioner 's Windows operating system. Indeed, this brief was written entirely with Free and Open Source Software word processors, namely OpenOffice, gedit and LaTeX, each of which are not just competitive with nonfree software programs like those offered by Petitioner on terms of functionality, but which also provide their users with the freedom to improve the program to fit their needs and desires.

The Software Freedom Law Center ("SFLC") is a not-for-profit legal services organization that provides legal representation and other law-related services to protect and advance Free and Open Source Software. SFLC provides pro bono legal services to non-profit Free and Open Source Software developers and also helps the general public better understand the legal aspects of Free and Open Source Software. SFLC has an interest in this

1

matter because the decision of this Court will have a significant effect on the rights of the Free and Open Source Software developers and users SFLC represents. More specifically, SFLC has an interest in ensuring that limits are maintained on the reach of patent law through Section 271(f) so that Free and Open Source software development is not unreasonably and unnecessarily impeded.

2

SUMMARY OF ARGUMENT

Software can not be a "component[] of a patented invention" under 35 U.S.C. § 271(f) because software is not patentable subject matter under 35 U.S.C. § 101. As such, the Federal Circuit's holding to the contrary in this case is erroneous and should be reversed.

I. Software Cannot Be A "Component[] Of A Patented Invention" Under § 271(f) Because Software Is Not Patentable Subject Matter Under § 101.

The Court of Appeals for the Federal Circuit in this case resolved the issue of whether software may be a "component" of a patented invention under § 271(f) by relying on its contemporaneous Eolas decision, which held that "without question, software code alone qual- ifies as an invention eligible for patenting [under 35 U.S.C. § 101]," and that "every form of invention eligible for patenting [under 35 U.S.C. § 101] falls within the protection of Section 271(f)." AT&T Corp. v. Microsoft Corp., 414 F.3d 1366, 1369 (Fed. Cir. 2005) (citing Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005)).

While the Federal Circuit is correct that only subject matter eligible for patenting under § 101 can be captured by § 271(f), the Federal Circuit's holding in Eolas that software is patentable subject matter conflicts with longstanding precedents of this Court. As noted in the recent opinion of Justice Breyer dissenting from this Court's decision to dismiss as improvidently granted a patentable subject matter challenge, this Court has not approved of the Federal Circuits Section 101 jurisprudence. See Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 126 S.Ct.

3

2921, 2928 (2006) (Breyer, J., dissenting) (discussing the Federal Circuit's "useful, concrete, and tangible result" test for patentable subject matter and stating that "this Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary").

To support its holding in Eolas that "without question, software code alone qualifies as an invention eligible for patenting," the Federal Circuit relied merely on its own previous decisions. Eolas, 399 F.3d at 1339 (citing In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999)). Eolas and the earlier cases on which it relied completely ignored this Court's precedent (discussed below) that sets out firm limits on patentable subject matter and that - in fact - excludes software from patentable subject matter.

Therefore, since Eolas fails to abide by this Court's precedent regarding patentable subject matter, the Federal Circuit's reliance on Eolas for the holding in this case that software can be a "component[] of a patented invention" under § 271(f) is legally erroneous and should be reversed.

A. THIS COURT’S PRECEDENT SETS OUT LIMITS ON PATENTABLE
SUBJECT MATTER.

Confronted with the rise of new technologies, this Court has addressed the issue of patentable subject matter several times. Gottschalk v. Benson, 409 U.S. 63, 71 (1972); Parker v. Flook, 437 U.S. 584, 591 (1978); Diamond v. Chakrabarty, 447 U.S. 303 (1980); Diamond v. Diehr, 450 U.S. 175 (1981). Since before the Civil War, this Court has consistently made it clear that subject matter which

4

would have the practical effect of preempting laws of nature, abstract ideas or mathematical algorithms is ineligible for patent protection. O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1854); Benson, 409 U.S. at 71. This age-old and time-tested precedent effectively establishes a penumbra of ineligibility for patent protection to safeguard the fundamental policy that laws of nature, abstract ideas and mathematical algorithms be left unrestrained by patents.

This Court stated in Flook that to be eligible for patent protection, "[a] process itself, not merely the mathematical algorithm, must be new and useful." 437 U.S. at 591; Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948). This Court further stated in Flook that it is "incorrect[ to] assume[] that if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101." 437 U.S. at 593. This Court explained that such an assumption is based on an impermissibly narrow interpretation of its precedent, including specifically Benson, and is "untenable" because "[i]t would make the determination of patentable subject matter depend simply on the draftsman's art and would ill serve the principles underlying the prohibition against patents for 'ideas' or phenomena of nature." Id.

In alignment with Benson and Flook, this Court's decision in Diehr held that structures or processes must, when considered as a whole, perform functions intended to be covered by patent law in order to be eligible for patent protection. 450 U.S. at 192. Diehr followed and upheld the core holdings of both Benson and Flook. Id. at 190, 191-193 (citing Benson and Flook repeatedly and stating "[o]ur reasoning in Flook is in no way inconsistent with our reasoning here").

Benson, Flook, Diehr and the other decisions of this

5

Court regarding patentable subject matter consistently established that the inquiry into whether subject matter is eligible for patenting is one of substance, not form. This Court requires that one look, not simply at the language of the patent claim to see if it recites a structure of multiple steps or components, but also at the practical effect of the claim to see if it in fact covers - or otherwise would restrict the public's access to - a principle, law of nature, abstract idea, mathematical formula, mental process, algorithm or other abstract intellectual concept.

This substantive standard ensures that skilled patent draftsmanship is not capable of overcoming one of the core principles of patent law recognized by this Court for more than 150 years that "[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 v. Tatham, 55 U.S. (14 How.) 156, 175 (1853); Funk Bros., 333 U.S. at 130; Benson, 409 U.S. at 67 ("[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work").

B. THE FEDERAL LIMIT HAS STRAYED FROM THIS COURT'S LIMITS ON PATENTABLE SUBJECT MATTER

Many scholars have noted that the creation of the Federal Circuit "did away as a practical matter with Supreme Court jurisdiction in patent cases." Kenneth W. Dam, The Economic Underpinnings of Patent Law, 23 J. Legal Stud. 247, 270 (1994). For example, through a series of decisions, the Federal Circuit has abandoned the substantive based standard established by this Court for determining patentable subject matter and replaced it with

6

a more expansive formalistic approach that looks only to see whether a patent claim contains some structure or has some minimal practical utility. The Federal Circuit's form-over-substance approach has come to include virtually anything within patentable subject matter.

Initially, the Federal Circuit used the opinions of legal commentators to justify straying from Benson and Flook. Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1057 n.4 (1992) ("Although commentators have differed in their interpretations of Benson, Flook, and Diehr, it appears to be generally agreed that these decisions represent evolving views of the Court, and that the reasoning in Diehr not only elaborated on, but in part superseded, that of Benson and Flook") (emphasis added) (citing R.L. Gable & J.B. Leaheey, The Strength of Patent Protection for Computer Products, 17 Rutgers Computer & Tech. L.J. 87 (1991); D. Chisum, The Patentability of Algorithms, 47 U. Pitt. L. Rev. 959 (1986)). Evidently, the Federal Circuit felt that "general agreement" amongst legal commentators justified abandoning this Court's precedent. In reaching this conclusion, the Federal Circuit also ignored the Diehr Court's statement that its decision there was in accord with Benson and Flook. Diehr, 450 U.S. at 185 - 193.

Also in Arrhythmia, the Federal Circuit stated that "claims to a specific process or apparatus... will generally satisfy section 101." Id at 1058 (emphasis added). This Court's precedent does not, in fact, support the proposition that any process or apparatus "generally satisfies" the requirements of patentable subject matter. Diehr, 450 U.S. at 193 ("[a] mathematical formula as such is not accorded the protection of our patent laws... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment") (citing Benson and Flook). The new "general rule"

7

promulgated in Arrhythmia was a major step in the Federal Circuit's departure from this Court's precedent regarding patentable subject matter.

Roughly two years later, the Federal Circuit said that this Court's precedent on patentable subject matter was too unclear to follow. In re Alappat, 33 F.3d 1526, 1543 n.19and n.20 (Fed. Cir. 1994) ("The Supreme Court has not been clear ", "The Supreme Court has not set forth, however, any consistent or clear explanation", "the understandable struggle that the [Supreme] Court was having in articulating a rule"). Contrary to the Federal Circuit's characterizations, however, this Court's precedent on patentable subject matter is plainly clear: the analysis is one of substance, not form, and asks whether a patent claim is substantially directed to a law of nature, natural phenomenon, abstract idea or mathematical algorithm.

After disregarding this Court's precedent as "unclear," the Federal Circuit substituted its own formalistic approach, which finds that virtually anything is eligible for patenting. Id at 1542 ("[t]he use of the expansive term 'any' in § 101 represents Congress's intent not to place any restrictions on the subject matter for which a patent may be obtained"). The Federal Circuit's approach con- flicts with this Court's precedent. As just one example, it ignores the firm statement in Diehr that "[a] mathemat- ical formula does not suddenly become patentable sub- ject matter simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a par- ticular technological use." 450 U.S. at 193.

In support of its holding, the Federal Circuit cited this Court's Chakrabarty decision for the proposition that, "Congress intended § 101 to extend to 'anything under the sun that is made by man." Id (citing Chakrabarty, 447 U.S. 303, 309). However, the Federal Circuit then went much farther than Chakrabarty's holding by saying,

8

"Thus, it is important to read into § 101 limitations as to the subject matter that may be patented where the legislative history does not indicate that Congress clearly intended such limitations." Id But such was precisely not this Court's holding in Chakrabarty. Immediately following the language quoted by the Federal Circuit, this Court continued to say in Chakrabarty that, "[t]his is not to suggest that § 101 has no limits or that it embraces every discovery." 447 U.S. at 309 (emphasis added). In support of that statement, this Court referred to Flook, Benson, Funk Bros. and other cases, and not to any legislative history. Thus, this Court's precedent clearly shows that there are indeed limits on patentable subject matter beyond those expressly stated by Congress. The Federal Circuit's ruling to the contrary was error.

Indeed, Alappat was a highly divided en banc decision, wherein several members of the Federal Circuit recognized that the majority was making a severe judicial error. Id at 1552, 1562 (Archer, C.J., dissenting). Chief Judge Archer said, "Losing sight of the forest for the structure of the trees, the majority today holds that any claim reciting a precise arrangement of structure satisfies 35 U.S.C. §101.... [T]he rationale that leads to this conclusion and the majority's holding that Alappat's rasterizer represents the invention of a machine are illogical, inconsistent with precedent and with sound principles of patent law, and will have untold consequences," and that "the majority's test under § 101 that looks simply to whether specific structure is claimed is [ ] inconsistent with Supreme Court precedent"). Id

Since Alappat, the Federal Circuit has continued its expansion of patentable subject matter through the implementation of its formalistic approach. State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368 (Fed. Cir. 1998) (holding that anything with a "practical utility" is

9

patentable subject matter); AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999). The effect of this expansion has been to eliminate the Benson-Flook- Diehr limitation on patentable subject matter, because any semi-competent patent drafter can easily craft claims that have a "practical utility" while being substantially directed to the use of a law of nature, abstract idea, natural phenomenon or mathematical formula. The Federal Circuit believes such claims are patentable subject matter. This Court's precedent mandates that they are not.

C. SINCE SOFTWARE DOES NOTHING OTHER THAN EXECUTE MATHEMATICAL ALGORITHMS, IT IS NOT PATENTABLE SUBJECT MATTER AND, THUS, CAN NOT BE A “COMPONENT[] OF A PATENTED INVENTION” UNDER § 271(F).

This Court has repeatedly addressed the issue of whether software is patentable subject matter. First, in Benson this Court said:

The patent sought is on a method of programming a general-purpose digital computer to convert signals from binary-coded decimal form into pure binary form. A procedure for solving a given type of mathematical problem is known as an "algorithm." The procedures set forth in the present claims are of that kind; that is to say, they are a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another. From the generic formulation, programs may be developed as specific applications.

10

409 U.S. at 65. This Court rejected in Benson the patentability of a software patent directed to a specific application of a generic formulation because "the mathematical formula involved here has no substantial practical application except in connection with a digital computer." Id at 71. The holding of Benson is properly applicable to all software, because a computer program, no matter what its function, is nothing more or less than the representation of an algorithm. It is not conceptually different from a list of steps written down with pencil and paper for execution by a human being. In no uncertain terms, this Court in Benson held that software, which contains and upon command executes algorithms that solve mathematical problems through the use of a computer, was not patentable under § 101.

Then, in Flook, this Court held that software could not become patentable subject matter simply by adding to the proposed claims some "post-solution activity." 437 U.S. at 590. This Court explained:

The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques. The concept of patentable subject matter under § 101 is not "like a nose of wax which may be turned and twisted in any direction...."

11

Id. (citing White v. Dunbar, 119 U.S. 47, 51. (1886)) Thus, claims to implement some method or accomplish some process substantially through the use of software, which does nothing more than encode and execute upon command an algorithm to solve a mathematical problem, are no more patentable than direct claims to software that solves such a problem itself.

Further, just as claiming fifty or even a thousand laws of nature is no more patentable than claiming a single law of nature, no form of software, regardless of how many algorithms or forumlas it is comprised of, is patentable because it will always be merely and solely made up of mathematical algorithms.

This Court's decision in Diehr upheld the holdings in Benson and Flook, and merely found that the claimed invention in that case was not substantially directed to just software, but instead was - in totality - directed towards an "industrial process for the molding of rubber products," which is undeniably included within the realm of patentable subject matter. 450 U.S. at 191-93. Had the applicant sought to claim the software used in that process by itself, however, this Court would have most assuredly found it to be unpatentable subject matter just as it had in Benson and Flook.

Thus, this Court's precedent repeatedly sets out that software, which is nothing more than a set of instructions an algorithm to be performed by a computer in order to solve some mathematical problem, is subject matter than is not patentable under § 101. In this case, we need not address whether the alleged "component[] of a patented invention" under § 271(f) is substantially software or not, because the parties concede it is software per se. As such, since it is not patentable subject matter under § 101, it likewise can not be a "component[] of a patented

12

invention" under § 271(f) and the Federal Circuit's holding in this case to the contrary was judicial error.

CONCLUSION

For the foregoing reasons, this Court should reverse the Federal Circuit's decision.

Respectfully submitted.

EBEN MOGLEN

DANIEL RAVICHER
RICHARD FONTANA
Software Freedom Law Center
[address, phone]

December 15, 1995

13


1 Pursuant to Supreme Court Rule 37.6, amicus states that no counsel for a party authored this brief in whole or in part, and that no person or entity, other than amicus curiae and its counsel made a monetary contribution to the preparation or submission of this brief. General consents of the parties to the filing of any and all amici briefs was received by this Court on November 28, 2006, from counsel for the Petitioner and on November 30, 2006, from counsel for the Re- spondent.


  View Printable Version


Groklaw © Copyright 2003-2013 Pamela Jones.
All trademarks and copyrights on this page are owned by their respective owners.
Comments are owned by the individual posters.

PJ's articles are licensed under a Creative Commons License. ( Details )