I have exciting news for you. Red Hat has just filed
its brief [PDF] in
Bilski, and it's saying things you certainly have been hoping someone would express to the Supreme Court. For one thing, they explain the tech, how programs are algorithms, and thus they should not be patentable. The brief asks the Supreme Court to adopt the lower court's machine-or-transformation test, but also -- yay! -- to exclude software from patentability!
They also lay out clearly the damage that has been done by broadening patents to include abstract ideas, how risky it has become to even try to write software. Here's the press release, subtitled Files Amicus Brief Giving Open Source Perspective in Bilski Case and Supporting the Exclusion on Patenting Algorithms. Also Red Hat's President and CEO, Jim Whitehurst, has a blog on Bilski.
I love Red Hat. They stand alone alone so far among vendors, willing to stand up and express what the FOSS community would really say if it could speak with one voice to the Supreme Court. This is certainly what *I* would say if I had that chance. And so I am satisfied. I was going down the depressing list of briefs filed for Petitioner on the ABA's list of filed amicus briefs, and it was so frustrating to see no one saying anything like what I believe to be technically true about software patents or addressing the specific needs of Free and Open Source software. At last someone has told them what we wanted to say. I just hope the Supreme Court has some techies in the clerk pool!
If anyone could do a quick OCR for me, I'd appreciate it a lot. - Done.
Here's the meat of the press release, followed by the brief, minus the header and index, which I'll add asap:
Red Hat Urges Supreme Court to Address Difficulties Posed By Patents to Software
Files Amicus Brief Giving Open Source Perspective in Bilski Case and Supporting the Exclusion on Patenting Algorithms
RALEIGH, N.C.--(BUSINESS WIRE)--Red Hat, Inc. (NYSE: RHT), the world's leading provider of open source solutions, today announced it has filed an amicus brief with the United States Supreme Court. In the brief, Red Hat explains the practical problems of software patents to software developers. The brief, filed in the Bilski case, asks the Supreme Court to adopt the lower court's machine-or-transformation test and to make clear that it excludes software from patentability.
The Bilski case involves the standard for patenting a process. The case concerns a business method patent, but involves many of the same issues as software patents.
“Red Hat continues its commitment to the free and open source software community by taking a strong position against bad software patents,” said Rob Tiller, vice president and assistant general counsel, IP for Red Hat. “Our patent system is supposed to foster innovation, but for open source and software in general, it does the opposite. Software patents form a minefield that slows and discourages software innovation. The Bilski case presents a great opportunity for the Supreme Court to rectify this problem.”
Patenting of software exploded in the 1990s based on judicial decisions changing the test for patentable subject matter. Software patents now number in the hundreds of thousands, and they cover abstract technology in vague and difficult-to-interpret terms. Because software products may involve thousands of patentable components, developers face the risk of having to defend weak-but-costly patent infringement lawsuits. A new class of business enterprise – patent trolls – has developed to file lawsuits to exploit this system.
The Federal Circuit set forth a clear test to determine if a process is patentable in stating that it must be either “tied to a particular machine or apparatus” or must “transform a particular article into a different state or thing.” Red Hat argues that this standard is consistent with Supreme Court case law, and that it should be applied to exclude algorithms, including computer software, from patenting.
The scope of patentable subject matter is an issue of critical importance to the future development of all software, including open source. The Supreme Court's Bilski decision could clarify the law and lessen the risks that innovation will be hindered by patents. Oral argument is scheduled for November 9, 2009.
Red Hat has consistently supported patent reform to address problems posed to open source and other software developers. It previously filed an amicus brief in the Bilski case with the Federal Circuit Court of Appeals. To read the full amicus brief, please visit http://www.redhat.com/f/pdf/rh-supreme-court-brief.pdf.
For more information about Red Hat, please visit www.redhat.com. For more news, more often, visit press.redhat.com.
Red Hat, the world's leading open source solutions provider, is headquartered in Raleigh, NC with over 65 offices spanning the globe. CIOs ranked Red Hat as one of the top vendors delivering value in Enterprise Software for five consecutive years in the CIO Insight Magazine Vendor Value survey. Red Hat provides high-quality, affordable technology with its operating system platform, Red Hat Enterprise Linux, together with applications, management and Services Oriented Architecture (SOA) solutions, including JBoss Enterprise Middleware. Red Hat also offers support, training and consulting services to its customers worldwide. Learn more: http://www.redhat.com.
Supreme Court of the United States
BERNARD L. BILSKI AND RAND A. WARSAW,
DAVID J. KAPPOS, UNDER SECRETARY OF COMMERCE
FOR INTELLECTUAL PROPERTY AND DIRECTOR,
PATENT AND TRADEMARK OFFICE,
On Writ of Certiorari to the
United States Court of Appeals
for the Federal Circuit
BRIEF AMICUS CURIAE OF RED HAT, INC.
IN SUPPORT OF AFFIRMANCE
ROBERT H. TILLER
Counsel of Record
RED HAT, INC.
Counsel for Amicus Curiae
TABLE OF CONTENTS
|TABLE OF AUTHORITIES
|STATEMENT OF INTEREST OF AMICUS
CURIAE RED HAT, INC.
|SUMMARY OF ARGUMENT
||THE COURT BELOW CORRECTLY APPLIED THIS COURT'S
PRIOR DECISIONS ESTABLISHING THAT ABSTRACT IDEAS ARE NOT
PATENTABLE, AND ITS MACHINE-OR-TRANSFORMATION TEST IS CONSISTENT
WITH THOSE DECISIONS
||THE FEDERAL CIRCUIT CORRECTLY ABANDONED A
MISINTERPRETATION OF STATUTORY SCOPE THAT HAS CAUSED DRAMATIC HARM
TO THE INNOVATION PROCESS IN SOFTWARE
||Software Innovation Long Predated Software Patents
||The Proliferation of Software Patents Has Resulted in New Risks
that Discourage Innovation
||AN ABSTRACT IDEA DOES NOT BECOME PATENTABLE MERELY
BY IMPLEMENTING IT IN COMPUTER SOFTWARE
TABLE OF AUTHORITIES
|In re Allapat, 33 F.3d 1526 (Fed. Cir.
|In re Bilski, 545 F.3d 943 (Fed. Cir.
|Dealertrack, Inc. v. Huber, No. 06-2335,
2009 WL 2020761 (C.D. Cal. Jul. 7, 2009)
|Diamond v. Diehr, 450 U.S. 175 (1981)
|Gottschalk v. Benson, 409 U.S. 63
|Oreilly v. Morse, 56 U.S. 62 (1853)
|Parker v. Flook, 437 U.S. 584 (1978)
||7, 8, 20-21
|State Street Bank & Trust Co. v. Signature
Fin. Group Inc., 149 F.3d 1368 (Fed. Cir. 1998), cert. denied,
525 U.S. 1093 (1999)
|WMS Gaming Inc. v. Int'l
Game Tech., 184 F.3d 1339 (Fed. Cir. 1999)
|Ex parte Cornea-Hasegan, No. 2008-4742
(BPAI Jan. 13, 2009)
|Ex parte Daughtrey, No. 2008-0202 (April 8,
|Ex parte Enenkel, No. 2008-2239 (April 6,
|Ex parte Forman, No. 2008-005348 (BPAI Aug.
|Ex parte Goud, No. 2008-003121 (BPAI July
|Ex parte Gutta, No. 2008-3000 (BPAI Jan.
|Ex parte Halligan, No. 2008-2823 (BPAI
April 8, 2008)
|Ex parte Myr, No. 2009-005949 (BPAI Sept.
|Ex parte Nawathe, No. 2007-3360 (BPAI Feb.
CONSTITUTION AND STATUTES
|35 U.S.C. § 101 (2006)
||6, 7, 8, 21
|U.S. Const. art. I, § 8
|AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION, REPORT OF THE
ECONOMIC SURVEY (2009)
|JAMES BESSEN & MICHAEL J. MEURER, PATENT FAILURE: HOW
JUDGES, BUREAUCRATS, AND LAWYERS PUT INNOVATORS AT RISK (2008)
||12, 13, 14, 15, 16
|James Bessen & Robert Hunt, An Empirical Look at
Software Patents, 16 J. ECON. & MGMT. STRATEGY 157
|DAN L. BURK & MARK A. LEMLEY, THE PATENT CRISIS AND HOW THE
COURTS CAN SOLVE IT (2009)
||11, 13, 14, 15, 16, 17
|COMM. ON INTELLECTUAL PROP. RIGHTS IN THE KNOWLEDGE-BASED
ECON., NAT'L RESEARCH COUNCIL, PATENTS IN THE
KNOWLEDGE-BASED ECONOMY (Wesley M. Cohen & Stephen A. Merrill
|CLAYTON M. CHRISTENSEN, THE INNOVATOR'S
|Amit Deshpande & Dirk Riehle, The Total Growth of Open
Source, in PROCEEDINGS OF THE FOURTH CONFERENCE ON OPEN SOURCE
SYSTEMS, 197-209 (Springer Verlag, 2008)
|ERIC VON HIPPEL, DEMOCRATIZING INNOVATION (2005)
|BEN KLEMENS, MATH YOU CAN'T USE
“ PATENTS, COPYRIGHT, AND SOFTWARE (2006)
||15, 16, 17, 19
|Ben Klemens, The Rise of the Information Processing
Patent, 14 B.U. J. SCI. & TECH. L. 1 (2008)
|Donald E. Knuth, Letter to Commissioner of Patents and
Trademarks (Feb. 23, 1994)
|Mark Lemley, Ignoring Patents, 2008 MICH. ST. L. REV. 19
|Michael J. Meurer, Controlling Opportunistic and
Anti-competitive Intellectual Property Litigation, 44 B.C. L.
REV. 509 (2003)
||14, 17, 18
|To Promote Innovation: The Proper Balance of Competition and
Patent Law and Policy, Report of the U.S. Federal Trade
Commission, ch. 3 § V (2003)
|Kirk Rowe, Why Pay for What's Free?:
Minimizing the Patent Threat to Free and Open Source Software,
7 J. MARSHALL REV. INTELL. PROP. L. 595 (2008)
|RICHARD M. STALLMAN, FREE SOFTWARE, FREE SOCIETY: SELECTED
ESSAYS OF RICHARD M. STALLMAN (Joshua Gay, ed., 2002)
|Andrew W. Torrance & Bill Tomlinson, Patents and the
Regress of Useful Arts, 10 COLUM. SCI. & TECH. L. REV. 130
TABLE OF AUTHORITIESContinued
|STEVEN WEBER, THE SUCCESS OF OPEN SOURCE (2004)
BRIEF AMICUS CURIAE OF RED HAT, INC.
Red Hat, Inc. is the world's leading provider of
open source software and related services to enterprise customers.1 Its software products are used by
Wall Street investment firms, hundreds of Fortune
500 companies, and the United States government.
Headquartered in Raleigh, North Carolina, Red Hat
has offices in 28 countries.
IN SUPPORT OF AFFIRMANCE
STATEMENT OF INTEREST OF
AMICUS CURIAE RED HAT, INC.
Red Hat's interest in this proceeding is based on its
experience in the software industry and its commitment to the free and open source software community. Open source software is growing at an exponential rate,2 and is already of strategic economic
importance. It provides the technological backbone of
many large corporations and supports essential functions of many national and regional governments. It
is used daily by millions of individuals for such
activities as web searching, email, on-line shopping,
and banking. It is found in devices as varied as
mainframe computers, desktop computers, cellular
phones, camcorders, medical devices, automobiles,
The open source model produces software innovation through a mechanism of collaborative development that relies on free communication of ideas
among large numbers of independent individuals and
companies. To understand open source, it is helpful
to understand generally how software is made. Software begins as plain text "source code."
Programmers write and edit source code in human-readable
programming languages that allow specification of
software features and behavior at a high level of
abstraction. Source code is typically translated by a
program called a compiler into "object code" form,
which basically consists of a series of instructions to
be executed on a computer. Since object code consists
of unintelligible strings of 1s and 0s, software is effectively unmodifiable without access to its source code.
Open source software permits such modification by
making the source code available to the user.
Open source software is the product of collaborative development that uses a combination of technological and legal means. Typically, an open source
program originates as a community-based project
whose members work together using Internet tools
such as email, mailing lists, Internet relay chat, bug
reporting systems, wikis, and source code version
control systems. These tools enable rapid communication among geographically dispersed software developers, and make it possible for large numbers of
developers from many different backgrounds and
organizations to work collaboratively. A community
project makes its software publicly available in
source code form, under licensing terms that grant
very broad, royalty-free copyright permissions allowing further use, copying, modification and distribution.
In making source code available and conferring
broad copyright permissions, open source differs
significantly from traditional proprietary software. A
vendor of proprietary software generally develops the
software in-house and provides only object code to the
user subject to restrictive licenses that allow no
rights to copy, modify, or redistribute that code. Such vendors retain the source code as a trade secret.
The open source development model has proven to
be highly effective in producing software of superior
quality.3 Because there are many developers working
as collaborators in a distributed fashion, innovation
happens rapidly.4 Because of the many who volunteer their time, and the availability of the source code
under royalty-free licenses granting generous modification and distribution rights, the cost of producing
and improving software is low. Software bugs and
security problems are quickly identified and remedied. Moreover, because users have access to the
source code, those users can diagnose problems and
customize the software to suit their particular needs.
The scope of patentable subject matter is an issue
of critical importance to the future development of all
software, including open source. Because open source
innovation depends on sharing source code and free
collaboration, open source community members do
not generally seek to prohibit or control use of open
source software through patents, and most open
source software developers view software patents as
hindering innovation. Red Hat respectfully submits
that this Court should evaluate the issues at bar with
a view to the importance of open source software and
the bright promise of future open source innovation.
SUMMARY OF ARGUMENT
In the decision below, the Federal Circuit issued a
course correction. Beginning in the mid-1990's, that
court disregarded the guideposts established by this
Court on the limits of patentable subject matter and
issued a series of decisions that opened the floodgates
for patents on certain kinds of abstract ideas. As a
result, there are now hundreds of thousands of patents on abstract subject matter, and tens of thousands of new patents are now granted each year for
software and business methods that were previously
excluded from patentable subject matter.
Far from encouraging innovation, this proliferation
of patents has seriously encumbered innovation in
the software industry. Software is an abstract
technology, and translating software functions into
patent language generally results in patents with
vague and uncertain boundaries. Software products
are often highly complex, created by combining
hundreds or thousands of discrete (and potentially
novel) elements in a cumulative process. Because the
boundaries of software patents are exceedingly vague
and the numbers of issued software patents is now
enormous, it is virtually impossible to rule out the
possibility that a new software product may arguably
infringe some patent.
Thus, under the Federal Circuit's previous erroneous approach, the risk of going forward with a new
software product now always entails an unavoidable
risk of a lawsuit that may cost many millions of
dollars in legal fees, as well as actual damages, treble
damages, and an injunction that terminates a business. Only those with an unusually high tolerance
for risk will participate in such a market. The more
risk averse, no matter how great their business or
technical gifts and innovative potential, are likely
to avoid such a market and seek their fortunes
This case offers an opportunity to restore the
historical and well-founded boundaries for patentable
subject matter that exclude abstract ideas from
patent eligibility. It also offers an opportunity to
reaffirm the rule, supported both by case law and by
sound policy, that computer software is among the
types of abstract subject matter that are not
patentable under 35 U.S.C. § 101. The machine-or-transformation test set forth in the decision below is
fully consistent with this Court's prior case law
regarding the patenting of abstract ideas. The Court
should adopt this test and make clear that it excludes
software from patenting.
I. THE COURT BELOW CORRECTLY APPLIED THIS COURT'S PRIOR DECISIONS ESTABLISHING THAT ABSTRACT
IDEAS ARE NOT PATENTABLE, AND ITS
IS CONSISTENT WITH THOSE DECISIONS
This Court has long recognized that patents have
costs as well as benefits. See Gottschalk v. Benson,
409 U.S. 63, 68 (1972) (explaining Oreilly v. Morse,
56 U.S. 62 (1853)). Patents do not always promote
innovation, and they may substantially hinder it. See
id. A patent on a process excludes others from using
that process. If the patent is too broad or vague, it
may block or discourage technological progress.
Therefore defining the proper subject matter limits of
process patents under 35 U.S.C. § 101 is of critical
importance. This requires distinguishing between a
patentable "process" within the meaning of Section
101, and abstract intellectual concepts.
Thus this Court has determined that "[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." Benson, 409 U.S. at 67. 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. Id. at 68.
To be sure, "[t]he line between a patentable
'process' and an unpatentable 'principle' is not always
clear." Parker v. Flook, 437 U.S. 584, 589 (1978).
This Court has repeatedly faced this line-drawing
problem in the context of computer-related patents,
and has consistently articulated the guideposts to
be used. It has affirmed and reaffirmed that
"[t]ransformation and reduction of an article 'to a
different state or thing' is the clue to patentability of
a process claim that does not include particular
machines." Benson, 409 U.S. at 70. Accord Diamond
v. Diehr, 450 U.S. 175, 192 (1981);Flook, 437 U.S. at
In the mid-1990s, however, the Federal Circuit
took an approach at odds with this Court's teachings
in Flook, Benson, and Diehr. In the leading cases of
In re Allapat, 33 F.3d 1526 (Fed. Cir. 1994), and State
Street Bank & Trust Co. v. Signature Fin. Group Inc.,
149 F.3d 1368 (Fed. Cir. 1998), cert. denied, 525 U.S.
1093 (1999), the Federal Circuit significantly broadened the standards for patentable subject matter.
These and subsequent Federal Circuit cases ignored
the risks of granting patents on abstract ideas, and
instead held that usefulness ("a useful, concrete and
tangible result") was sufficient to satisfy Section 101.
State Street, 149 F.3d at 1373; Allapat, 33 F.3d at
As explained in the next section, this departure
from this Court's teachings caused enormous damage
to the patent system in general and the software
industry in particular. In the decision below, the en
banc court of appeals acknowledged that its "useful,
concrete and tangible result" test was problematic.
In re Bilski, 545 F.3d 943, 959-60 (Fed. Cir. 2008). It
carefully reexamined this Court's decisions in Flook,
Benson, and Diehr, acknowledged the importance of
not extending patentable subject matter so far as to
impede technological innovation, and articulated a
test that is entirely consistent with those decisions.
Using language from Flook, Benson, and Diehr, the
Federal Circuit's test distinguishes a patentable
process from an abstract idea by considering whether
"(1) it is tied to a particular machine or apparatus, or
(2) it transforms a particular article into a different
state or thing." Id. at 954. The appeals court explained that "the use of a specific machine or
transformation of an article must impose meaningful
limits on the claim's scope to impart patent-eligibility." Id. at 961. In addition, the court explained that
"the involvement of the machine or transformation in
the claimed process must not merely be insignificant
extra-solution activity." Id. at 962 (citing Flook, 437
U.S. at 590).
The decision below thereby corrected the erroneous
approach that the Federal Circuit took to Section 101
in the mid-1990s. The Federal Circuit's machine-or-
transformation test is in full accord with this Court's
prior decisions in Flook, Benson, and Diehr.
II. THE FEDERAL CIRCUIT CORRECTLY
ABANDONED A MISINTERPRETATION
OF STATUTORY SCOPE THAT HAS
CAUSED DRAMATIC HARM TO THE
INNOVATION PROCESS IN SOFTWARE
The decision below did not purport to address in
categorical terms the patenting of either business
methods or software. It is obvious, however, that the
machine-or-transformation test (or any other replacement test considered by this Court) will govern
attempts to patent these and other abstract ideas.
Patenting of software has been particularly controversial, and presents in a clear form the challenge of
separating abstract ideas from patentable processes.
The creation and expansion of the field of software
patents therefore is worth considering both as an
example of the larger problem posed by abstract
patents and a problem in its own right.
A. Software Innovation Long Predated
The importance of the software industry to the
United States economy is well recognized. What is
less well recognized is that major innovations and
economic successes in the software industry occurred
prior to the Federal Circuit's decisions in the mid-1990s encouraging software patents. Such enormously successful software products as Microsoft Word,
Oracle Database, Lotus 1-2-3, the Unix operating
system, and the GNU C compiler all date from the
1980s or earlier--well before the proliferation of
software patents. Market forces, rather than patents, spurred development of these products. See To
Promote Innovation: The Proper Balance of Competition and Patent Law and Policy, Report of the U.S.
Federal Trade Commission, ch. 3 § V, at 46 (2003),
available at http://www2.ftc.gov/os/
2003/10/innovationrpt.pdf (hereinafter "FTC Innovation Report").5
Indeed, in the 1972 Benson decision, this Court
took note of the exclusion of software from patenting,
of problems caused by attempts to patent software,
and of the industry's impressive growth without
patents. "Direct attempts to patent [software] programs have been rejected on the ground of non-statutory subject matter." 409 U.S. at 72 (quoting
'To Promote the Progress of . . . Useful Arts,' The
President's Commission on the Patent System 13
(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
The Benson Court, quoting the President's Commission, also noted the inability of the Patent Office
to examine adequately software patent applications.
409 U.S. at 72. At the same time, the Court noted
"that the creation of programs has undergone substantial and satisfactory growth in the absence of
patent protection and that copyright protection for
programs is presently available." Id.
Thus the software industry began and reached
maturity without the benefit of extensive patent
monopolies. This is not to say there was no legal
protection for software products. As the Benson
Court noted, copyright law provided (and it still provides) substantial protection for software products.6
This recent history, by itself, calls into serious
question whether software patents serve the primary
purpose of the patent system of encouraging
innovation. See U.S. Const. art. I, § 8. Many of the
world's most successful software companies and soft-
ware products originated and grew strong without
incentives from patents. Instead, these successes
arose from the dynamics of the competitive market
place. FTC Innovation Report, ch. 3, § V at 46. That
is, prior to the expansion of patentability for software
in the mid-1990s, survival in the market place for
software depended primarily on the ability to innovate better and more quickly than competitors. Competition, without patent monopolies, resulted in a
remarkably dynamic software industry with an
impressive record of innovation.7
B. The Proliferation of Software Patents
Has Resulted in New Risks that
Since the mid-1990s, there is one respect in which
software patents have been successful as a species:
they have proliferated. At present in the United
States there are at least 200,000 issued software
patents. See JAMES BESSEN & MICHAEL J. MEURER,
PATENT FAILURE: HOW JUDGES, BUREAUCRATS, AND
LAWYERS PUT INNOVATORS AT RISK 22 (2008)
(hereinafter "PATENT FAILURE"), available in part
They continue to increase at the rate of approximately 20,000 per year. See James Bessen & Robert
Hunt, An Empirical Look at Software Patents, 16 J.
ECON. & MGMT. STRATEGY 157, 158 (2007). This
proliferation has raised significant risks for software
For years, far-sighted industry leaders, scholars,
and software developers have warned of these risks
and opposed software patents. See PATENT FAILURE
at 189. These include Bill Gates, co-founder of
Microsoft. In 1991, Mr. Gates stated, "If people had
understood how patents would be granted when most
of today's ideas were invented and had taken out
patents, the industry would be at a complete
standstill today." Kirk Rowe, Why Pay for What's
Free?: Minimizing the Patent Threat to Free and
Open Source Software, 7 J. MARSHALL REV. INTELL.
PROP. L. 595, 595 (2008).
Similar, Donald E. Knuth, Professor Emeritus at
Stanford University and one of the world's most
respected computer scientists, wrote in 1994, "When I
think of the computer programs I require daily to get
my own work done, I cannot help but realize that
none of them would exist today if software patents
had been prevalent in the 1960s and 1970s." Donald
E. Knuth, Letter to Commissioner of Patents and
Trademarks 2 (Feb. 23, 1994), available at http://
cus_curiae_brief_Knuth_en.pdf. Dr. Knuth also
stated, "I strongly believe that the recent trend to
patenting algorithms is of benefit only to a very small
number of attorneys and inventors, while it is
seriously harmful to the vast majority of people who
want to do useful things with computers." Id.
The views of Mr. Gates and Dr. Knuth were shared
by many firms and developers in the 1990s. PATENT
FAILURE at 189. The risk that they articulated--that
patents tend to hinder software innovation--relates
to at least two different aspects of software: the
incremental nature of software development and the
near impossibility of establishing clear boundaries for
In general, software innovation is cumulative in
nature--that is, new products typically build on products built previously. See FTC Innovation Report, ch.
3, § V at 44-45; THE PATENT CRISIS at 47. Innovation
is rapid and product cycles are short.8 Major software products are complex, involving many
thousands or even millions of lines of code and many
different components. Components are normally
developed using many earlier-developed sub-components. Some software products contain thousands of
distinguishable components, any number of which
could (in view of erroneous patenting practices)
already be patented. See FTC Innovation Report, ch.
3 § V at 52; THE PATENT CRISIS at 53-54.
It is, however, practically impossible to know with
reasonable certainty whether a new software product
could be said to infringe some prior software patent.
Patents are conventionally referred to as intellectual
property. However, as James Bessen and Michael
Meurer have explained in detail, patents differ
substantially from tangible property in that their
boundaries are often fuzzy and unpredictable.
PATENT FAILURE at 46-72. If patents do not give clear
notice of their limits, they create a risk of inadvertent
infringement. Vague patents also enable
opportunistic behavior. For example, a patentee
may, based on vague language, claim ownership of a
technology unknown to the inventor, but instead first
conceived by someone else. Id. at 199. 9
This problem of uncertain patent boundaries is
particularly acute with software patents. Software is
an abstract technology.10 Software algorithms can be
represented in numerous different ways, and even
computer scientists sometimes disagree over whether
two software technologies are equivalent. See
PATENT FAILURE at 22, 203. Thus it is not surprising
that software patents are typically framed in abstract
language with uncertain boundaries. See PATENT
FAILURE at 23, 203; THE PATENT CRISIS at 27, 58.
As a result, a software developer, when shown a
software patent, often cannot be sure whether the
patent reads on newly developed code.
This difficulty is multiplied hundreds or thousands
of times with regard to a complex software product
combining hundreds or thousands of discrete components. A separate but related problem faces all
software developers--that of the impossibility of
patent clearance, or determining whether there are
existing patents that may be said to read on a new
product. There is no reliable, economical method for
searching the hundreds of thousands of existing
software patents.11 PATENT FAILURE at 50, 69-70.
See also MATH YOU CAN'T USE at 79-80. The clearance problem is made even worse by the existence of
tens of thousands of applications that for eighteen
months after filing are unpublished.
Thus, simply by virtue of producing and marketing
an innovative software product, a software developer
assumes the risk of a costly patent infringement
lawsuit.12 See FTC Innovation Report, ch. 3. § V at
53-54, 56. In the U.S., software patents are more
than twice as likely to be the subject of a lawsuit
than other patents and account for one quarter of all
patent lawsuits. PATENT FAILURE at 22, 192. The cost
of defending a patent lawsuit frequently amounts
to several million dollars. AMERICAN INTELLECTUAL
PROPERTY LAW ASSOCIATION, REPORT OF THE ECO-
NOMIC SURVEY I-128-29 (2009). Such lawsuits involve
technical issues that are difficult for judges and
juries to understand, and so even with a strong
defense the outcome is usually far from certain. If
there is a judgment of infringement, the penalty may
be an injunction ending further production and
enormous monetary damages. Defense costs and
litigation risks are so large that in most cases
defendants agree to some payment to settle such
cases. Even when claims appear to have no valid
basis, targets frequently agree to pay for licenses
based on the mere threat of litigation. Michael
J. Meurer, Controlling Opportunistic and Anticompetitive Intellectual Property Litigation, 44 B.C.
L. REV. at 542.
Some large technology companies have addressed
the risk of inadvertent infringement of patents by
seeking as many patents as possible, on the theory
that a large patent portfolio signals the possibility of
a countersuit and thus will deter other companies
from bringing a patent lawsuit.13 See FTC
Innovation Report, ch. 3 § V at 56; THE PATENT CRISIS
at 55. Companies with such portfolios often enter into
cross-licensing agreements with other large
companies that have their own patent portfolios in an
attempt to obtain a modicum of patent peace. Id. at
52. See RICHARD M. STALLMAN, FREE SOFTWARE,
FREE SOCIETY: SELECTED ESSAYS OF RICHARD M.
STALLMAN 101-103 (Joshua Gay, ed., 2002); MATH
YOU CAN'T USE at 83-85.
While such defensive measures are understandable
from an individual enterprise's perspective, they are
far from optimal. They create a vicious cycle: to
defend against a multitude of vague patents, companies obtain still more vague patents. Resources
expended on this strategy are, of course, unavailable
for research and development or for other more
productive purposes. FTC Innovation Report, ch. 3
§ V at 52. Moreover, although established companies
may be able to bear the cost of this deterrence
strategy, small companies and potential new competitors generally lack the resources to do so. Thus the
system discourages new entry into the market, and
thereby hinders innovation. See id. at 51-52. See
also CLAYTON M. CHRISTENSEN, THE INNOVATOR'S
DILEMMA 26, 52 (2006) (showing that small firms
generally lead in new technologies).
Moreover, even for companies with the financial
resources to build patent portfolios, the deterrence
approach is not always effective. With the proliferation of software patents has come the expansion of a
class of businesses created expressly for the purpose
of exploiting vague patents. See Ben Klemens, The
Rise of the Information Processing Patent, 14 B.U. J.
SCI. & TECH. L. at 27-31; Meurer, supra. These are
sometimes referred to as non-practicing entities or,
less politely, as patent trolls. These entities acquire
vague patents at low cost with a view to threatening
or bringing lawsuits against operating businesses.
They frequently conceal their identities and holdings
until the companies that are their targets, which
have no knowledge of the relevant patents, are locked
in to a product and business strategy. Then they
demand ransom. Because such entities produce no
products, they are not deterred by the possibility of a
In sum, all software companies, developers, and
users face substantial risks from software patents.
These risks include whether an unknown patent may
cover newly written code or some other preexisting
code in a complex product, whether such a patent
could be the basis of a lawsuit, whether a relevant
patent is in the hands of an aggressive party
dedicated to bringing patent lawsuits, and whether a
trial may result in an injunction or damages award.
These risks have obviously not brought the software industry to a standstill. Established companies
are protected to some extent by their patent portfolios and war chests. But for them and even more for
new players, software innovation, like sky diving,
requires a high tolerance for risk. See MATH YOU
CAN'T USE at 91. Developers without a high risk
tolerance are likely to find the threat of ruinous
lawsuits to be discouraging, and to use their talents
and energy in less hazardous endeavors. Thus software patents discourage new entries into the marketplace and new software innovation.
III. AN ABSTRACT IDEA DOES NOT BECOME PATENTABLE MERELY BY
IMPLEMENTING IT IN COMPUTER
In connection with addressing the test for excluding abstract ideas from patenting, this Court it
should also clarify the application of that test in the
context of computer programs that run on general
purpose computers. Lower court case law and commentary since the Federal Circuit's en banc decision
shows that this issue is an important one on which
this Court's guidance is needed.
The basic question is whether an otherwise unpatentable idea becomes "tied to a particular machine"
when it is implemented in software for execution on a
general purpose computer. Prior to the decision
below, the Federal Circuit gave credence to the idea
that a general purpose computer could be transformed into a particular machine by executing
software. WMS Gaming Inc. v. Int'l Game Tech., 184
F.3d 1339, 1348 (Fed. Cir. 1999). On the other hand,
this view was recently rejected in Dealertrack, Inc. v.
Huber, No. 06-2335, 2009 WL 2020761, at *4 (C.D.
Cal. Jul. 7, 2009). Moreover, it has been recently
repeatedly rejected by the Board of Patent Appeals
and Interferences. See, e.g. Ex parte Myr, No. 2009-005949 (BPAI Sept. 16, 2009); Ex parte Forman, No.
2008-005348 (BPAI Aug. 17, 2009); Ex parte Goud,
No. 2008-003121 (BPAI July 20, 2009); Ex parte
Daughtrey, No. 2008-0202 (April 8, 2009); Ex parte
Halligan, No. 2008-2823 (BPAI April 8, 2008); Ex
parte Enenkel, No. 2008-2239 (April 6, 2009); Ex
parte Nawathe, No. 2007-3360 (BPAI Feb. 9, 2009);
Ex parte Gutta, No. 2008-3000 (BPAI Jan. 15, 2009);
Ex parte Cornea-Hasegan, No. 2008-4742 (BPAI Jan.
13, 2009). This Court's decisions in Benson and
Diehr signal that the mere fact that otherwise
unpatentable software is executable on a general
purpose computer should not convert such software
into a patentable invention.
This is not to say that software may not be part of
a patentable process or machine. As Diehr recognized, an algorithm that is plainly unpatentable by
itself may be a part of a process that is patentable
when it involves a physical transformation of the sort
that has traditionally been considered patentable,
such as an industrial process for curing rubber. 450
U.S. at 184-88. See also Parker v. Flook, 437 U.S. at
589-94. The Court has also recognized that an
otherwise abstract idea may be patentable when "tied
to a particular apparatus." Flook, 437 U.S. at 588,
In Benson, the patent application covered "a
method of programming a general-purpose digital
computer to convert signals from binary-coded
decimal to pure binary form." 409 U.S. at 65. The
Court found that the procedure at issue was a
mathematical algorithm, and amounted to an unpatentable abstract idea. Id. at 65-66. It is important
to note, however, that the algorithm had "no substantial practical application except in connection with
a digital computer." Id. at 71. The claims were
intended to "cover any use of the claimed method in a
general-purpose digital computer of any type." Id. at
Thus the algorithm claimed in Benson could have
been viewed as "tied to a machine," inasmuch as it
was functionally tied to a digital computer. Nevertheless, this Court held that the claims were abstract
ideas outside the scope of Section 101. Thus Benson
precludes an interpretation of Section 101 that views
abstract ideas as patentable based on their implementation in software running on a general purpose
The more recent decision in Diehr is consistent
with this understanding. The rubber curing process
in Diehr involved an algorithm and a computer,
but this Court's analysis of subject matter turned on
the claim as a whole, which concerned the physical
transformation of the rubber--not the implementation of the algorithm in a computer program. 450
U.S. at 184-85. Diehr explained that use of the
computer did not render the process unpatentable,
but the decision makes clear, by its focus on the
transformation of rubber, that use of the computer
alone does not suffice to make the process patentable.
See id. at 187.
The Diehr Court cautioned against allowing the
prohibition on patenting of abstract formulas to "be
circumvented by attempting to limit the use of the
formula to a particular technological environment."
450 U.S. at 191. "To hold otherwise would allow a
competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent
protection." Id. at 192. In view of this caution, this
Court should make clear that the test for patentable
subject matter cannot be satisfied by the mere drafting device of adding a general purpose computer as
an element in a claim that is otherwise directed to an
The judgment of the Federal Circuit should be
ROBERT H. TILLER
Counsel of Record
RED HAT, INC.
Counsel for Amicus Curiae
No counsel for a party authored this brief in whole or in
part, and no such counsel made a monetary contribution
intended to fund the preparation or submission of this brief. No
person other than amicus curiae, its members, or its counsel
made a monetary contribution to its preparation or submission.
Petitioners and Respondents have consented to the filing of this
brief through blanket letters of consent filed with the Clerk's
The amount of open source code doubles every fourteen
months. Amit Deshpande & Dirk Riehle, The Total Growth of
Open Source, in PROCEEDINGS OF THE FOURTH CONFERENCE ON
OPEN SOURCE SYSTEMS, 197-209 (Springer Verlag, 2008),
There are numerous widely used open source software pro-
grams, including the Linux operating system kernel, the Apache
web server, the Firefox web browser, the MySQL database
management system, and the GCC compiler collection.
See, e.g., ERIC VON HIPPEL, DEMOCRATIZING INNOVATION 93-106 (2005), available at http://web.mit.edu/evhippel/www/books.
The profit motive is, of course, an important incentive for
software development, but it is not the only one. Open source
software developers generally work for open source projects on a
voluntary basis. See STEVEN WEBER, THE SUCCESS OF OPEN
SOURCE 129 (2004). Some of the motivations for their contributions include improving the functioning of a product for business
or personal use, enhancing programming skills, reputation,
philosophical commitment to free software, and personal
enjoyment. Id. at 134-36.
Copyright protects authors against the copying of their
software. Patents, of course, block independent invention of
patented technology. Although some patent advocates use the
rhetoric of "theft" of ideas to support their arguments, there is
evidence that the great majority of patent lawsuits are not
against defendants who copied inventions but rather against
independent inventors. DAN L. BURK & MARK A. LEMLEY, THE
PATENT CRISIS AND HOW THE COURTS CAN SOLVE IT 28 (2009)
(hereinafter "THE PATENT CRISIS").
Although it is frequently assumed that patents encourage
technological innovation, there is little empirical evidence supporting this view. In a 2003 report "Patents in the Knowledge-Based Economy," the National Academies undertook a comprehensive review of the United States patent system, and concluded that "[t]here are theoretical as well as empirical
reasons to question whether patent rights advance innovation in
a substantial way in most industries." COMM. ON INTELLECTUAL
PROP. RIGHTS IN THE KNOWLEDGE-BASED ECON., NAT'L RESEARCH
COUNCIL, PATENTS IN THE KNOWLEDGE-BASED ECONOMY 2
(Wesley M. Cohen & Stephen A. Merrill eds., 2003), available
studies have called into question the basic assumption that
patent protection in general spurs innovation. Andrew W.
Torrance & Bill Tomlinson, Patents and the Regress of Useful
Arts, 10 COLUM. SCI. & TECH. L. REV. 130, 133-34 (2009).
Because of rapid product cycles, it is difficult for a software
inventor to use a patent productively to enforce legitimate
rights. A patent lawsuit is likely to take longer to resolve than a
product cycle, and may even take several product cycles. See
THE PATENT CRISIS at 57.
For example, a plaintiff may argue that a pre-internet patent covers some use of internet technology. Michael J. Meurer,
Controlling Opportunistic and Anti-competitive Intellectual
Property Litigation, 44 B.C. L. REV. 509, 542 (2003).
Computer software is abstract because it is, in essence,
nothing more than a set of mathematical algorithms, expressed
in a particular programming or machine language. An algorithm
is a mathematical construct, consisting of a series of steps for
solving a problem. See BEN KLEMENS, MATH YOU CAN'T USE
PATENTS, COPYRIGHT, AND SOFTWARE 48-51 (2006) (hereinafter
"MATH YOU CAN'T USE"). Computer scientists view software as
consisting entirely of algorithms. See Ben Klemens, The Rise of
the Information Processing Patent, 14 B.U. J. SCI. & TECH. L. 1,
9-11 (2008). As Donald Knuth has explained, "[It is not] possible
to distinguish between 'numerical' and 'nonnumerical' algorithms, as if numbers were somehow different from other kinds
of precise information." See Letter to Commissioner of Patents
and Trademarks at 1. This Court has held that algorithms are
not patentable. Benson, 409 U.S. at 72.
The unreliability of indexing for software patents also
means that software patents are of little use in advancing
innovation by disclosing new technology. From a software
developer's point of view, it is completely impractical to seek new
ideas in patents, and few if any do so. Most avoid reading
patents, for fear that a chance encounter may increase the risk
that they will one day be accused of willful infringement. See
THE PATENT CRISIS at 32; Mark Lemley, Ignoring Patents, 2008
MICH. ST. L. REV. 19, 21 (Spring 2008).
A further indication of the ineffectiveness of the patent
system for software is that there is little patent licensing prior
to development and distribution of products. See THE PATENT
CRISIS at 59. Because of vague patent boundaries and unreliable search methods, it is not possible to determine all possible
rights at issue and strike bargains as to those rights.
Red Hat, like some of its competitors, has built a patent
portfolio. This portfolio is designed to be used only for the
purpose of defending against patent aggression. Red Hat has
extended a public Patent Promise under which it pledges not to
enforce its patents against parties that infringe those patents
through their use of software covered by designated open source
licenses. See https://www.redhat.com/legal/