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 OF PROFESSOR LEE A. HOLLAAR AND

IEEE-USA AS AMICI CURIAE IN
SUPPORT OF AFFIRMANCE

DAVID M. BENNION
Counsel of Record
MICHAEL R. MCCARTHY
PARSONS BEHLE & LATIMER
201 SOUTH MAIN STREET
SALT LAKE CITY, UT 84111
(801) 532-1234

Counsel for Amici Curiae

September 1, 2009

Becker Gallagher · Cincinnati, OH · Washington, D.C. · 800.890.5001

 i

Table of Contents

Table of Authorities . . . . . . . . . . . . . . . . . . . . . . . . iii

Interest of the Amici Curiae . . . . . . . . . . . . . . . . . . 1

Summary Of The Argument . . . . . . . . . . . . . . . . . . 3

Argument . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

A trilogy of confusing opinions leads to the

question before this Court . . . . . . . . . . . . . . . . . 7

The need for a simple test for statutory subject

matter . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

What happened after the Diehr opinion shows

how spending time on determining statutory
subject matter leads to bad patents . . . . . . . . 10

Where to draw the line . . . . . . . . . . . . . . . . . . 13

The Federal Circuit’s opinion just creates new

confusion, with software-based inventions as
collateral damage . . . . . . . . . . . . . . . . . . . . . . . 13

The proposed alternatives will lead to decades

of litigation trying to determine where the line
lies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16

Software-based inventions need and deserve

patent protection as processes . . . . . . . . . . . . 17

Other protections, such as copyright or trade

secret, are not sufficient and employing them
will only result in distortions in their law . . . 20
 ii

The use of method claims for software-based

inventions results in clearer claiming . . . . . . 22

A clear line: statutory methods make or use a

machine, manufacture, or composition of
matter . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29

Conclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35
 iii

Table of Authorities

Cases

Cochran v. Deener,
94 U.S. 780 (1876) . . . . . . . . . . . . . . . . . . . . . . . 6

Cybersource v. Retail Decisions,

No. C 04-03268 MHP, 2009 U.S. Dist. LEXIS
26056 (N.D. Cal. Mar. 26, 2009) . . . . . . . . . . . 15

DealerTrack v. Huber,
No. CV 06-2335 AG, 2009 U.S. Dist. LEXIS
58125 (N.D. Cal. Jul. 7, 2009) . . . . . . . . . . . . . 15

Diamond v. Diehr,
450 U.S. 175 (1982) . . . . . . . . . . . . . . . . . . passim

Ex parte Koo and Leung,

Appeal 2008-1344 (BPAI, Nov. 26, 2008) . . . . 35

Ex parte Langemyr,
Appeal 2008-1495, 89 USPQ2d 1988 (BPAI,
2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki

Co., 535 U.S. 722 (2002) . . . . . . . . . . . . . . . . 2, 3

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

In re Alappat,
33 F.3d 1526 (Fed. Cir. 1994) . . . . . . . . . . . . . 15

In re Benson,
441 F.2d 682 (CCPA 1971) . . . . . . . . . . . . . . . 16
 iv

In re Bergy,
596 F.2d 952 (CCPA 1979) . . . . . . . . . . . . . . . . 6

In re Bilski,
545 F.3d 943 (Fed. Cir. 2008) . . . . . . . . . . . . . 14

In re Freeman,
573 F.2d 1237 (CCPA 1978) . . . . . . . . . . . . . . 15

In re Morris,
127 F.3d 1048 (Fed. Cir. 1997) . . . . . . . . . . . . 32

In re Noll,
545 F.2d 141 (CCPA 1976) . . . . . . . . . . . . . . . 15

In re Nuijten,
515 F.3d 1361 (Fed. Cir. 2008, cert. denied) . . 30

In re Prater,
415 F.2d 1393 (CCPA 1969) . . . . . . . . . . . . . . 15

In re Schrader,
22 F.3d 290 (Fed. Cir. 1994, Newman, J.
dissenting) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16

Metro-Goldwyn-Mayer Studios, Inc. v. Grokster,

Ltd., 545 U.S. 913 (2005) . . . . . . . . . . . . . . . . 2, 3

Parker v. Flook,
437 U.S. 584 (1978) . . . . . . . . . . . . . . . . . 3, 8, 28

Research Corporation Technologies v. Microsoft

No. CV-01-658-TUC-RCJ, 2009 U.S. Dist.
LEXIS 71883 (D. Az, July 28, 2009) . . . . . . . . 22
 v

Sitrick v. Dreamworks,
516 F.3d 993 (Fed. Cir. 2008) . . . . . . . . . . . . . 29

State Street Bank v. Signature Financial,

149 F.3d 1368 (Fed. Cir. 1998) . . . . . . 16, 22, 24

Whelan Assocs. Inc. v. Jaslow Dental Lab., Inc.,

et al., 797 F.2d 1222 (3d Cir. 1986) . . . . . . 20, 21

Statutes

17 U.S.C. § 102(b) . . . . . . . . . . . . . . . . . . . . . . . . . 20
35 U.S.C. § 101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
35 U.S.C. § 102 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
35 U.S.C. § 103 . . . . . . . . . . . . . . . . . . . . . . . . . 6, 34
35 U.S.C. § 112 . . . . . . . . . . . . . . . . . . . 6, 22, 23, 24
35 U.S.C. § 122(b) . . . . . . . . . . . . . . . . . . . . . . . . . 10
35 U.S.C. § 273 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
Public Law 106-113 § 1000(a)(9), 113 Stat. 1501A-
555 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

Rules

Sup. Ct. R. 37.6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

Regulations

37 C.F.R. § 41.37(c)(1)(v) . . . . . . . . . . . . . . . . . . . . 24

Other

James Bessen and Michael J. Meurer, Patent

Failure: How Judges, Bureaucrats, and Lawyers
Put Innovation at Risk, Princeton University
Press, 2008 . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
 vi

Kenneth L. Thompson, “Text Matching Algorithm,”

United States Patent 3,568,156, granted March
2, 1971 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

Thomas G. Fessenden, An Essay on the Law of

Patents for New Inventions (1810), available at
http://www.ipmall.info/hosted_resources/ip_an
tique_library/Patent/Fessenden_1810.pdf) . . . 30

United States Patent and Trademark Office,

“Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35
U.S.C. § 101,” August 2009. . . . . . . . . . . . . . . 32
 1

Interest of the Amici Curiae1

Lee A. Hollaar, the author of this brief, is a

professor of computer science in the School of
Computing at the University of Utah. He teaches
courses both in computer and intellectual property law
and in computer systems and networking. He has been
programming computers since 1964 and designing
computer hardware since 1969. He received his B.S.
degree in electrical engineering from the Illinois
Institute of Technology in 1969 and his Ph.D. in
computer science from the University of Illinois at
Urbana-Champaign in 1975.

Professor Hollaar is an inventor and patentee of

computer-related technology; a Registered Patent
Agent involved with the prosecution of patent
applications since 1989; an expert witness, consultant,
and special master in patent litigation; the author of
Legal Protection of Digital Information (BNA Books,
2002) and course material on computer-based patents;
and a teacher of that material. He is concerned that
the decision in this case will continue the unclear lines
of what is statutory subject matter by making
distinctions not tied to real technological differences or
may force inventors of computer-program-based

1
In accordance with Supreme Court Rule 37.6, counsel listed on
the cover states that this brief was authored by amicus curiae
Professor Hollaar and reviewed by counsel, and that counsel to a
party did not author this brief in whole or in part. No person other
than the amici curiae and their counsel made a monetary
contribution to the preparation or submission of this brief.
Petitioners and Respondent have consented to the filing of all
amicus curiae briefs in support of either or neither party and their
consents have been filed with the Court.
 2

inventions to claim them in ways that obscure the

patentable advance over the prior art.

Dr. Hollaar is the former chair of IEEE-USA’s

Intellectual Property Committee, where he supervised
the filing of the amicus brief whose theory of
foreseeability was adopted by this Court in Festo,2 and
filed an amicus brief on his own behalf in Grokster3
whose theory of inducement liability was also adopted
by this Court.

IEEE-USA is an organizational unit of The

Institute of Electrical and Electronics Engineers, Inc.
(IEEE), a New York-based not-for-profit, which is the
world’s leading educational and scientific association
for the advancement of technology. IEEE-USA
supports the nation’s prosperity and competitiveness
by fostering technological innovation for the benefit of
all, including the more than 210,000 engineers,
scientists and allied professionals who are U.S.
members of the IEEE.

As part of its mission, IEEE-USA seeks to ensure

that U.S. patent and copyright law serves to promote
the progress of science and the useful arts consistent
with the principles set forth by our nation’s
founders. IEEE’s U.S. members serve on the “front
line” of the United States copyright and patent system.
Our membership includes inventors and software
authors who create and use cutting-edge technology,

2
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S.
722 (2002).
3
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S.
913 (2005).
 3

who research and publish professional articles and

journals, and who develop published standards that
form the bases for widely adopted and critical
technologies. They are entrepreneurs and employees of
firms that acquire, license, and market patented
works.

IEEE-USA recognizes that the promotion of

progress requires a delicate balancing of these groups
interests, and IEEE-USA consistently speaks for that
balance. When a decision threatens to disrupt the
nation’s intellectual property system, IEEE-USA
respectfully believes it has the experience and
perspective to aid the court as it interprets the law to
achieve the constitutional directive of promoting
progress. It has done so previously with amicus filings
in Festo and Grokster, suggesting the balanced
approach ultimately adopted by this Court.

The Federal Circuit decision in this case,

concerning the patenting of method claims, as well as
subsequent decisions of the Board of Patent Appeals
and Interferences and trial courts, threaten existing
and future software patents, an area of law and
technology important to IEEE’s members.

Summary Of The Argument

This Court’s trilogy of software patent cases,4 and

the lower court decisions trying to reconcile them, have
led to over three decades of uncertainty. This Court
should use this case to repudiate those unfortunate

4
Gottschalk v. Benson, 409 U.S. 63 (1972), Parker v. Flook, 437
U.S. 584 (1978), and Diamond v. Diehr, 450 U.S. 175 (1982).
 4

cases (and thereby the opinions below based on them)

and go back to the original clear and simple test for
determining when a process is statutory subject
matter:

• A process is patentable subject matter when it

involves making or using a machine,
manufacture, or composition of matter.

Such a test is needed so examiner time can be spent

more productively on the critical questions of novelty
and nonobviousness and not trying to determine if a
process is statutory.

The Federal Circuit’s opinion in this case just

creates new confusion over what it means to be “tied to
a particular machine.” Already, we are seeing
collateral damage to software-based patents, with the
Patent Office denying patents and district courts
striking down granted patents.

Other proposed tests (“method of doing business,”

“abstract/applied,” “practical application” or “useful,
concrete and tangible,” or “technological”) portend
more decades of uncertainty, as the Patent Office
Board of Appeals and Interferences and the Federal
Circuit try on a case-by-case basis to apply those terms
to determine where the boundary really lies.

Judge Dyk’s concurrence in this case provides an

excellent discussion of how this test was the
understanding at the time of the Patent Act of 1793,
on which the current statutory language is based, of
when a process is statutory subject matter. Although
this test is over two centuries old, because the concepts
of “machine, manufacture, or composition of matter”
 5

have evolved with technology, so has this test. It

provides a good and clear line for even the most
cutting-edge technology.

At the same time, this Court should take this

opportunity to restate three principles related to that
test:

• Claims drawn to the other categories (machine,

manufacture, or composition of matter) are
always statutory subject matter.
• A claim that covers both statutory and non-
statutory embodiments (under the broadest
reasonable interpretation of the claim when read
in light of the specification and in view of one
skilled in the art) embraces subject matter that
is not eligible for patent protection and therefore
is directed to non-statutory subject matter.
• While using a machine may make a claim
statutory, if the method itself is known in the
prior art, simply adding a machine to perform
the method does not necessarily make the claim
nonobvious.

Because the claims at issue in this case are not

limited to using or making a machine, manufacture, or
composition of matter, they are not statutory subject
matter, and the decision below should be affirmed, but
on the modified grounds stated above.

Argument

Section 101 of the Patent Act of 1952, 35 U.S.C.

§ 101, provides the initial coarse filters in determining
whether something is patentable. First, any claims
must recite statutory subject matter (a “process,
 6

machine, manufacture, or composition of matter, or

any new and useful improvement thereof”5) and
second, the invention must be “useful.” It is only after
those requirements are met that the novelty
requirement of Section 102, 35 U.S.C. § 102, the non-
obviousness requirement of Section 103, 35 U.S.C.
§ 103, and the enablement requirements of Section
112, 35 U.S.C. § 112, need be considered.6

Before the advent of computer technology, process

claims in patents were used to claim a new way of
making or using a known machine, manufacture, or
composition of matter, the other classes of statutory
subject matter. The first patent granted by the United
States, in 1790, was for a new process for making
potash. In Cochran v. Deener, this Court stated:

That a process may be patentable, irrespective

of the particular form of the instrumentalities
used, cannot be disputed. * * * A process is a
mode of treatment of certain materials to
produce a given result. It is an act, or a series of

5
The brilliance of the original drafters of this provision is that
they used general terms which have been able to evolve as
technology has evolved, incorporating things that could not have
been contemplated two centuries ago, and yet saying that not
everything should be patentable. Only one word has been changed
(“art” updated to the more common “process”) since this provision
was enacted in the Patent Act of 1793.
6
A good summary of the steps that must be passed in order for a
patent to be granted on an invention is given by Judge Giles Rich,
one of the drafters of the Patent Act of 1952, in In re Bergy, 596
F.2d 952, 959-963 (CCPA 1979). The opinion goes on to note some
confusion introduced by not tracking the statutory scheme in
discussing the patentability of an invention.
 7

acts, performed upon the subject matter to be

transformed and reduced to a different state or
thing. If new and useful, it is just as patentable
as is a piece of machinery.7

A trilogy of confusing opinions leads to the

question before this Court

The confusion over what is a statutory process

began with this Court’s decision in Gottschalk v.
Benson,8 finding unpatentable a method for
“converting signals from binary coded decimal form
into binary” claimed as a series of steps. Concluding
that Congress should draw the patentability line with
respect to software-based inventions,9 this Court held
that the claimed invention was unpatentable. But the
opinion also stated “It is said that the decision
precludes a patent for any program servicing a

7
94 U.S. 780, 787-788 (1876), cited in Diehr, 450 U.S. at 182-183.
8
409 U.S. 63 (1972).
9
Unfortunately, Congress ignored this Court’s suggestion and has
said essentially nothing about the patentability of software-based
inventions. Congress did adopt a “prior user right” for “method[s]
of doing or conducting business” in 1999, see 35 U.S.C. § 273
added by Public Law 106-113 § 1000(a)(9), 113 Stat. 1501A-555,
but that appears to be a safe harbor for those who had felt that
business methods were unpatentable and had kept their business
method as a trade secret so that it was unavailable as prior art.
The prior use defense of § 273 prevents a later-issued patent from
stopping the continued use of their method. Contrary to
petitioner’s assertion in the questions presented, there is no
indication that Congress ever intended this provision as a
statement that business methods were statutory subject matter.
 8

computer. We do not so hold.”10 So, it was left to future

cases to determine when a computer program would be
patentable.

At the same time, this Court made it clear that the

traditional limitation on patentable processes was not
absolute, but didn’t say where the line is.

It is argued that a process patent must

either be tied to a particular machine or
apparatus or must operate to change articles or
materials to a “different state or thing.”

We do not hold that no process patent could

ever qualify if it did not meet the requirements
of our prior precedents.11

The two follow-up cases that this Court decided on

when a software-based invention was patentable did
little to clarify the situation. In Parker v. Flook,12 a
claim whose “only novel feature ... is a mathematical
formula” was held unpatentable, while three years
later, Diamond v. Diehr13 found a method that
involved the repeated calculation of a known
mathematical formula (the Arrhenius equation)
patentable.

10
Benson, 409 U.S. at 71.
11
Benson, 409 U.S. at 71.
12
437 U.S. 584 (1978).
13
450 U.S. 175 (1981).
 9

Having no clear linchpin with which to determine

when a software-based invention was patentable or
not, the Federal Circuit and its predecessor court, the
Court of Customs and Patent Appeals, tried to fashion
tests for when a claimed software-based invention is
statutory subject matter, as computer technology
became more important and conventional machines
using gears were replaced by embedded computers in
devices such as gas pumps and washing machines.

One only has to look at the multitude of CCPA,

Federal Circuit, Board of Patent Appeals and
Interferences, and district court opinions, as well as
law review articles and briefs in this case, all claiming
to be following this Court’s trilogy of opinions and yet
getting dramatically different results (both Bilski and
the Federal Circuit claim fidelity to those opinions), to
see that those three opinions have produced nothing
but confusion.

It is time for this Court to start with a clean slate

and clearly draw the line when a process, especially
one implemented using a computer or performing a
business method, is statutory subject matter.

The need for a simple test for statutory

subject matter

As mentioned previously, whether something is

statutory subject matter is just the first of many filters
used to determine whether something should be
granted a patent. Because patents, unlike any other
form of intellectual property protection, don’t recognize
independent creation as a defense, it is important that
only claims that are novel and non-obvious be allowed.
 10

A patent examiner has only a very limited time to

determine whether a claim not only meets the
threshold requirements of statutory subject matter
and usefulness, but also the more substantive
requirements of novelty and non-obviousness. Given
the limited time an examiner has to process a patent
application to either issuance of a patent or a final
rejection – on the average, less than twenty hours – it
is important that a determination of whether a claim
is statutory subject matter be simple to make.14

What happened after the Diehr opinion shows

how spending time on determining statutory
subject matter leads to bad patents

The prosecution history of United States Patent

4,344,142, which is the patent that issued as a result
of this Court’s decision in Diehr, is instructive. Before
the appeal, the examiner had rejected the claims only
for statutory subject matter and enablement.15 The

14
Applicants also need a predictable test for statutory subject
matter. Since most patent applications are published after
eighteen months, see 35 U.S.C. § 122(b), and in as little as six
months if a provisional application had been filed, and because it
now takes two years or more before an examiner first reviews an
application, it is likely that an application will be published (and
any chance for trade secret protection lost) before whether a
claim’s statutory subject matter validity will be assessed.
And since the nature of the claim will determine the form of the
disclosure, which can’t be changed without losing the application’s
priority date and possibly the right to any patent because of the
application’s publication, it is critical that an applicant know at
the time of filing that a claim recites statutory subject matter.
15
The examiner questioned whether undue experimentation
would be necessary for a person with ordinary skills to program
 11

examiner had not reviewed the application for novelty

or nonobviousness and, in fact, Diehr’s attorney tried
to goad the examiner on the point by saying that the
“applicants infer” that there were no issues in light of
the prior art.

Following this Court’s decision on March 3, 1981,

the application worked its way back to the examiner.
On September 28, 1981, Diehr slightly amended the
claims so that they better matched the way the courts
had interpreted them.16 On March 23, 1982, the
examiner allowed the application as amended.

Rather than a normal office action where the

examiner cites prior art and indicates that the claimed
invention would be obvious in light of that prior art,
the office action reads more like a response from an
applicant. Two patents are cited as prior art, and the
examiner then points out how each patent differs from
the claimed invention. The examiner does not discuss
why those differences would not be obvious,

the computer to control “a plurality of rubber-molding presses

simultaneously.” The applicant eventually overcame that rejection
by submitting affidavits regarding how it would be possible to
write the program based on the specification.
16
Of significance, “repetitively calculating in the computer, at
frequent intervals during each cure, the Arrhenius equation” was
changed to “repetitively performing in the computer, at frequent
intervals during each cure, integrations to calculate from the
series of temperature determinations the Arrhenius equation” and
“indicates equivalence” was changed to “indicates completion of
curing.”
 12

particularly in light of other prior art that may teach

those differences.17

Since the patent is essentially on the

implementation on a computer of a well-known
equation first proposed in 1884, one would have
expected at least some examination for obviousness by
the examiner, but the record shows none. This is
especially true after Diehr had submitted affidavits
saying how straightforward the programming of a
computer to implement the claimed method would be,
even for controlling a number of molds simultaneously.

In reviewing other prosecution histories of early

software-based patents,18 when the examiner initially
rejected the claims on the grounds that they didn’t
recite statutory subject matter, much of the
prosecution of the application was spent finding claim
language that would get around the examiner’s initial
statutory subject matter rejection. When such
language was finally found (and it often was not
substantially different in scope from the original claim

17
One difference was that Diehr explicitly claimed determining
the temperature “at a location closely adjacent to the mold cavity”
and the other difference was that Diehr performed a continuous
comparison.
18
On June 2, 1995, the United States Patent and Trademark
Office proposed examiner guidelines for determining when a
software-based invention was statutory subject matter, with final
guidelines effective on February 28, 1996. In light of the
guidelines, rejections based on lack of statutory subject matter
substantially declined, both because applicants had a clear idea of
how to claim their software-based inventions to meet the statutory
subject requirement and because examiners had a clearly-stated
test for determining statutory subject matter.
 13

language), the application was allowed with only the

slightest consideration of prior art.

Whatever this Court says regarding when a claim

written as a series of steps recites statutory subject
matter, it is vitally important to the patent system
that the test be clear and straightforward to apply.
Otherwise, too much time will be spent on applying
the test to the detriment of the more important
determination of whether a claimed invention is really
a non-obvious contribution deserving patent
protection.

Where to draw the line

The Federal Circuit’s method patentability case

law, particularly regarding software-based inventions
and business methods, has been confusing and
controversial because the Federal Circuit has been
bound by this Court’s trilogy of software patent cases,
which do not draw a clear patentability line for
methods. Fortunately, this Court can start with a
clean slate simply by overruling any aspect of the
trilogy that is inconsistent with this case. Patent
examiners and trial courts will no longer have to try to
reconcile the irreconcilable, making distinctions that
are not anchored in reality.

The Federal Circuit’s opinion just creates new

confusion, with software-based inventions as
collateral damage

The Federal Circuit opinion in this case shows the

confusion caused by this Court’s software-patent
trilogy. In trying to reconcile the language of those
three opinions (and overruling its past opinions where
 14

it felt there was a departure from those three

opinions), the Federal Circuit held that a method is
statutory if “it is tied to a particular machine or
apparatus, or transforms a particular article into a
different state or thing,”19 parroting Benson’s
“Transformation and reduction of an article ‘to a
different state or thing’ is the clue to the patentability
of a process claim that does not include particular
machines.”20

What the Federal Circuit did in this case with

regard to whether a software-based invention claimed
as a method recites statutory subject matter is just
kick the can down the road.

Is a general-purpose digital computer a “particular

machine or apparatus” or is something more
required?21 The Patent Office’s Board of Patent
Appeals and Interferences apparently thinks so. In an
“informative opinion” last year, the Board found that
a claimed method that is “not tied to ‘a particular
machine,’ but rather is tied only to a general purpose
computer” is not patentable. It is not clear what
characteristics of a computer need to be specified to
make it a “particular machine,” especially “because a
general purpose computer in effect becomes a special

19
In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008).
20
Benson, 409 U.S. at 70.
21
Ex parte Langemyr, Appeal 2008-1495 at 24, 89 USPQ2d 1988
(BPAI, 2008). Perhaps the Board held the way that it did in hopes
that the applicant would appeal to the Federal Circuit and have
that court say what it means by “a particular machine or
apparatus.”
 15

purpose computer once it is programmed to perform

particular functions pursuant to instructions from
program software.”22

And at least two district courts have invalidated

patents whose claims were directed to a “computer
aided method.”23 Tens-of-thousands of patents that
claimed software-based inventions as methods are now
open to question.

Is the requirement of a particular component

necessary for performing the claimed method enough?
The claim in Benson, found not to be statutory subject
matter by this Court, is directed to a particular
machine or apparatus – an electrical circuit that
includes a “reentrant shift register.”24 Would it be

22
In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994), citing In re
Freeman, 573 F.2d 1237, 1247 n.11 (CCPA 1978); In re Noll, 545
F.2d 141, 148 (CCPA 1976); and In re Prater, 415 F.2d 1393, 1403
n.29 (CCPA 1969).
23
Cybersource v. Retail Decisions, No. C 04-03268 MHP, 2009 U.S.
Dist. LEXIS 26056 (N.D. Cal. Mar. 26, 2009) and DealerTrack v.
Huber, No. CV 06-2335 AG, 2009 U.S. Dist. LEXIS 58125 (N.D.
Cal. Jul. 7, 2009).
24
A shift register is a hardware device that shifts all the bits
stored in it one position, either left or right, depending on the type
of shift register or the control signal to the shift register. A
reentrant shift register takes the bit shifted out from the end of
the shift register and stuffs it back in the other end.
At oral arguments, “the Patent Office Solicitor admitted that
the reference to this piece of apparatus in the claim was, for him,
its ‘most embarrassing phrase.’” The CCPA noted that it was not
only a phrase, but also a key part of a number of claim elements,
indicating that claim 8 only claimed the technique in the context
 16

patentable under the Federal Circuit’s opinion in this

case because the method is tied to a particular
machine or apparatus?

It is likely that unless this Court makes a clear and

unambiguous statement regarding when a method is
statutory subject matter, applicants (and their
attorneys, who are often engineers just as creative as
their clients) will continue to push the boundaries of
patentability. Affirmation by this Court just means
that Bilski has to figure out a different form for his
claims, based on some other quote taken out of context
in this or a subsequent opinion.

The proposed alternatives will lead to

decades of litigation trying to determine
where the line lies

A number of alternatives to the Federal Circuit’s

“transformation or machine” test have been proposed.
Some have suggested that “methods of doing business”
not be patentable, reversing State Street Bank v.
Signature Financial,25 ignoring that the test was
“poorly defined, redundant, and unnecessary” in light
of the other statutory tests.26 Bilski and others instead
propose that this Court restore their view of State
Street Bank – that any process is patentable as long as
it produces a “useful, concrete and tangible result,”

of a particular machine or apparatus. In re Benson, 441 F.2d 682,

687 (CCPA 1971).
25
149 F.3d 1368 (Fed. Cir. 1998).
26
In re Schrader, 22 F.3d 290, 298 (Fed. Cir. 1994, Newman, J.
dissenting).
 17

ignoring that that statement was in the context of a

claimed machine. Still others propose that to be
patentable something must make a “technological
contribution.” Judge Rader, in his dissent below, and
others say that the test should be whether what is
claimed is an “abstract idea.”

Adoption of any of these approaches portends

decades more litigation as applicants probe the
boundaries of patentability and alleged-infringers try
to invalidate issued patents. Much as the Federal
Circuit, in the opinion below, simply replaced the
question “what is a process” with the questions “what
is a particular machine, and what does it mean to be
tied to it,” all of the tests mentioned above simply raise
new definitional questions.

For example, those opposed to patents on software-

based inventions (or an infringer faced with a
software-based patent and no other defense) will argue
that software is “abstract.” Given the fact that many
improvements to machines today are the result of the
software on the embedded processor that controls the
machine, an opinion holding software abstract would
take a major area of innovation out of the patent
system.

Software-based inventions need and deserve

patent protection as processes

The use of computer technology has expanded well

beyond the use of an expensive digital computer to
control an industrial process when this Court last
considered the patentability of software-based
inventions more than a quarter-century ago to being
seemingly omnipresent. Microwave ovens, washers
 18

and dryers, television sets and radios, thermostats,

furnaces and boilers, sprinkler controllers, and clocks
and watches are but a few of the appliances where an
embedded computer has replaced mechanical timers,
gears, and switches, resulting in more reliable
products able to perform more functions at lower
prices.

Many of the new capabilities for such appliances

are the result of novel and nonobvious computer
programs that control traditional machines in ways
that cannot be realistically done using mechanical
controls. Much as Diehr’s invention sensed the actual
tire mold temperature and determined what to do
next, today’s microwave ovens sense the temperature
of meat being cooked and dryers sense the moisture
content of the clothes.

But many innovations are not limited to a

particular type of appliance, but are advances that can
benefit a wide range of computer programs. Although
a new way to convert BCD numbers to binary is not
that important, a technique for sorting information
much faster would be because sorting is a fundamental
activity in database systems, word processors (to
handle things like indexes), compilers, and many other
types of computer programs.

But the method in Benson wasn’t patentable

because it had a wide range of possible uses.

The mathematical formula involved here has no

substantial practical application except in
connection with a digital computer, which
means that if the judgment below is affirmed,
the patent would wholly pre-empt the
 19

mathematical formula and in practical effect

would be a patent on the algorithm itself.”27

That is a particularly perverse observation with

respect to patents, because it denies patent protection
to new techniques that have many applications, while
presumably allowing patents on techniques that have
limited applicability.

One argument the opponents of patents for

software-based inventions make is that software is
mathematics, and mathematics is not patentable.28
But that not only ignores how software-based
inventions are generally claimed, but is bad computer
science. Claims that include data structures in
random-access memories, input devices such as
keyboards or mice, screen display devices, or clocks

27
Benson, 409 U.S. at 71-72.
28
Benson, 409 U.S. 63, (1972) is generally cited for the latter
proposition. But in most instances, the correspondence between
computer programs and mathematics is merely cosmetic. For
example, the equation E = MC2 expresses a relationship between
energy and matter first noted by Einstein, while the computer
program statement E = M * C ** 2 represents the calculation of M
time C raised to the second power and then assigning the result
to a storage location named E. It is unfortunate for purposes here
that the early developers of programming language made their
calculation-and-assignment statements look like mathematical
equations so that they would seem familiar to scientists and
engineers. But the common programming statement I = I + 1,
which increments the value stored in location I, is essentially
nonsense as a mathematical equation. Similarly, a computer
program is a series of calculation-and-assignment statements that
are processed sequentially, not a set of simultaneous
mathematical equations that are solved for their variables.
 20

and time-outs, common in software-based patents, are

no longer equivalent to pure mathematics.

Other protections, such as copyright or trade

secret, are not sufficient and employing them
will only result in distortions in their law

Although computer software can be protected by

copyright, that is not sufficient since copyright
protection does not “extend to any idea, procedure,
process, system, [or] method of operation,”29 the very
innovation that patents are intended to protect.
Instead, today it is essentially limited to protection
against literal copying or taking advantage of source
code from a former employer. But before patents on
software-based inventions became common, courts
were expanding the nonliteral scope of copyright to
“structure, sequence, and organization” of computer
programs,30 giving patent-like protection without the
benefit to the public of disclosure and claiming.

Since patents have become generally accepted for

protecting innovative techniques in computer
programs, copyright protection for computer programs
has been scaled back by the courts so that it covers
literal copying – buying a single copy of a commercial
software product such as Microsoft Windows or Office
and installing it on every machine a dealer sells – or
when a former employee or other person with access to

29
17 U.S.C. § 102(b).
30
Whelan Associates Inc. v. Jaslow Dental Laboratory, Inc., et al,
797 F.2d 1222 (3d Cir. 1986). This case essentially provided
patent-like protection to software without the requirements of
disclosure and clear claiming.
 21

a program’s source code copies not only the ideas in the

program (which could be trade secret misappropriation
if they are not patented) but also the way those ideas
have been implemented (“expressed”).

Any reduction in the availability of patent

protection for software-based techniques would likely
result in new distortions to copyright as it is pushed to
protect ideas in addition to expression, much as it was
in Whelan’s time.

And in many cases, a new technique is self-

revealing, so that trade secret protection is not
available.31

31
Many programmers forego trade secret protection for their
source code by making it available under a “free” or “open-source”
license. These licenses, which are backed by copyrights of the
source code, often require anybody improving the program to
make their modifications available under the same license. But
that does not keep someone from taking any new ideas in the
program and incorporating them in a program while keeping their
source code as a trade secret, because copyright does not protect
ideas.
Although most open-source programmers are opposed to
software patents, this likely stems from a time when many of
their programs were “clones” of existing proprietary programs (the
original “free software” program was to be a reimplementation of
the Unix operating system), and a patent could prevent such
cloning.
In this respect, they are like developing countries, which
downplay intellectual property protection until they start
producing their own innovations, at which time copyrights and
patents become more interesting. The United States did not
protect the works of foreign authors until 1891, when protection
of American authors’ works in foreign countries became
important.
 22

The use of method claims for software-based

inventions results in clearer claiming

The question is then how such software-based

inventions should be claimed, particularly to meet the
statutory requirement that:

The specification shall conclude with one or

more claims particularly pointing out and
distinctly claiming the subject matter which the
applicant regards as his invention.32

One way is as a machine or apparatus, which

avoids the question of what processes are patentable.33
This is what was done, for example, in the first claim
of an early patent for a software-based invention:34

1. Apparatus for detecting matches between

strings of information-representing signals
comprising:
[a] means for comparing each subunit of a first
string to the first subunit of a second string;

32
35 U.S.C. § 112, second paragraph.
33
Unless the machine claims are somehow treated as process
claims, as was done by the trial court in State Street Bank and
recently in Research Corporation Technologies v. Microsoft (No.
CV-01-658-TUC-RCJ, 2009 U.S. Dist. LEXIS 71883, D. Az, July
28, 2009). It might have been far better if the Federal Circuit had
simply held that the trial court was wrong to treat as a process
what was clearly claimed as a statutory machine.
34
Kenneth L. Thompson, “Text Matching Algorithm,” United
States Patent 3,568,156, granted March 2, 1971, and assigned to
Bell Telephone Laboratories. Ken Thompson is one of the
principal creators of the Unix operating system.
 23

[b] means for recording the identification of that

subunit of the second string which subunit
follows each matched subunit of the first string;
[c] means for comparing each identified subunit
of the second string to the next succeeding
subunit of the first string;
[d] means for indicating a successful match
when all subunits of the second string are
compared; and
[e] means for indicating an unsuccessful match
when all subunits of the first string are
compared.

Since the elements of the claimed apparatus are in

means-plus-function form, we have to look to the
specification to see what is really being claimed.35 And
what we find is two very different implementations of
the claimed special-purpose machine – the first in
conventional digital logic of the period (DEC “Flip
Chip” modules) and the second as assembly-language
program segments for the IBM 7094 computer.36

35
See 35 U.S.C. § 112, sixth paragraph:
An element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
36
Presumably it was claimed this way to make the examiner see
statutory subject matter (at least the digital logic) and then
leverage that into a patent on the software implementation, both
through claim 1 and a corresponding method claim 2. This
application was filed at the time that Bell Labs was trying to
determine the patentability of computer-based inventions.
Another application that they filed became the subject of
 24

Such a claim is undesirable because it is not clear

on its face what is covered by the patent. One has to
read through the specification and guess what
structure corresponds to each functional element37 and
what may be equivalent to the structure in the
specification. The Federal Circuit, in State Street
Bank, apparently felt that it was necessary to include
its view of the means for implementing each claim
element so that the claim could be understood.38

A recent book posits that a major problem with

patents today is that it is difficult for people to
determine what is covered by a patent, and this lack of

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

Similarly, when the invention of State Street Bank was
claimed both as a method and a machine, the examiner rejected
the method claims but allowed the corresponding machine claims.
149 F.3d at 1371.
37
It is not necessary for the applicant to indicate the
corresponding structure in the specification for a claim element to
the examiner, and examiners seldom indicate what they
considered the corresponding structure. The Board of Patent
Appeals and Interferences does require that:
every means plus function and step plus function as
permitted by 35 U.S.C. 112, sixth paragraph, must be
identified and the structure, material, or acts described in
the specification as corresponding to each claimed
function must be set forth with reference to the
specification by page and line number, and to the
drawing, if any, by reference characters.
37 C.F.R. § 41.37(c)(1)(v). Because of that, every appeal coming to
this Court from the Board will have the corresponding structure
identified. But that is not the case for patents that have not been
appealed to the Board.
38
149 F.3d at 1371-1372.
 25

a predictable property right produces uncertainty for

developers and costly disputes that may outweigh the
positive incentives of the patent system.39 The authors’
research found that only in some sectors of technology,
such as the pharmaceutical industry, do patents act as
advertised, with their benefits outweighing their costs,
while for software, the lack of clear claiming has a
definite negative effect.

Software-based inventions can be claimed in a more

straightforward manner using method claims, where
the elements of the claims are the steps of the method
performed by the new software technique.40 This way
of claiming simplifies the examination of the
application, because it concentrates on the new method
that is the heart of the invention. Much innovation
today is in the techniques implemented using a
computer, such as a more sophisticated way of
controlling energy usage by an appliance which could

39
James Bessen and Michael J. Meurer, Patent Failure: How
Judges, Bureaucrats, and Lawyers Put Innovation at Risk,
Princeton University Press, 2008, at 46-72 (“If You Can’t Tell the
Boundaries, Then It Ain’t Property”).
40
Some people may try to justify such a claim by saying that the
claimed method “transforms” a general-purpose computer into a
“special-purpose” computer. But that ignores when the claimed
method occurs, which is when the “transformed” computer
performs all the steps of the method. A method claim for
transforming the computer would have steps such as “loading the
program implementing the method from a storage device into the
instruction-storage memory of the computer, so that the
instructions implementing the steps of the method can be
executed.” Such a method is clearly obvious in light of decades of
loading program instructions to be executed into memory.
 26

not be practically implemented using a mechanical

controller.

For example, the claim above rewritten as a

method claim would be:

The method of detecting matches between

strings of electronically coded subunits
comprising the steps of:
[a] comparing each subunit of a first string to
the first subunit of a second string;
[b] recording the identification of that subunit of
the second string following each matched
subunit of the first string;
[c] comparing each identified subunit of the
second string to the next succeeding subunit of
the first string;
[d] indicating a successful match when all
subunits of the second string are compared; and
[e] indicating an unsuccessful match when all
subunits of the first string are compared.41

Not only does the use of the process claim not

require that the specification be consulted to find
corresponding structure to determine the scope of the
claim, but it is infringed not when some collection of
parts capable of performing the claimed method
happen to come together in one machine, perhaps from

41
This is, in fact, Claim 2 of the 3,568,156 patent, except that the
steps of the method are numbered rather than using letters to
correspond to the “means-for” elements of the apparatus claim.
 27

different programs, but when the new method is

actually performed.42

It should not be surprising that it is convenient to

claim the technique of a software-based invention
using language that is similar to describing the steps
a person would do to perform the technique. But that
is not because it is practical for a person to actually
perform the technique, but because of our tendency to
anthropomorphize computers,43 describing the things
done by a computer as if it were being done by a
person.

But a claim to a software-based invention will often

contain language explicitly limiting it to a computer
(often in the preamble) or implicitly because of the
nature of claim elements. For example, in the claim
immediately above, the preamble limits the claim to

42
For those wanting to catch people constructing the special-
purpose computer created by the method, a dependent claim such
as “A digital computer system programmed to perform the method
of claim N” can be used. Similarly, an article of manufacture claim
to catch those producing the disks used to distribute an
implementation of the method, a claim like “A computer-readable
medium storing a computer program implementing the method of
claim N” can be used. With both, the examiner can concentrate on
determining the novelty and nonobviousness of the claimed
method, and then simply check to see that the dependent claims
are in the proper form.
43
Ironically, the term “computer” referred to a person who carried
out calculations or computations, such as those employed by the
military to calculate ballistics tables. As analog and digital
computers took over these tasks, in the middle of the twentieth
century, the term took on today’s meaning of a device performing
the computations.
 28

“electronically coded subunits” and not strings of

characters written on paper to be read by a person.

Claiming a software-based invention as a method

is clearly not the type of clever claiming this Court
warned about when it said:

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 * * *.”44

Instead, claiming a software-based invention as a

method makes it clear where the novelty of the
invention rests, which in turn makes it easier for the
examiner to assess whether the requirements of
novelty and non-obviousness have been met.

Using a process claim rather than a machine

claim,45 coupled with the Federal Circuit’s developing

44
Parker v. Flook, 437 U.S. 584, 590 (1978).
45
If it is desirable to also claim the software-based invention as a
machine or apparatus for purposes of who infringes, that can
easily be done with a dependent claim in the form of “A digital
computer system programmed to perform the method of [the
parent method claim].”
 29

law on full-scope enablement,46 applicants will specify

in the claim the particular steps of their claimed
method that creates the special-purpose computer, but
not use language overly broad lest their patent be
invalid for lack of enablement. Unlike claiming the
invention as a machine using functional elements,
there will be no need for a person wanting to know the
scope of the claims to guess at what structure in the
specification defines each claim element, how broadly
that structure should be read, and what are its
equivalents.

This Court should support the use of process claims

for software-based inventions because they represent
a way of more clearly claiming what would otherwise
be statutory: the special-purpose machine programmed
to perform the method.

A clear line: statutory methods make or use

a machine, manufacture, or composition
of matter

Judge Dyk’s concurrence below notes that the

original understanding at the time of the first patent
statutes was that an “art” in the patent sense (changed
to “process” by the Patent Act of 1952) involved
“working or making of any manner of new
manufacture,” and that “manufacture” – something

46
See, for example, Sitrick v. Dreamworks, 516 F.3d 993 (Fed. Cir.
2008). It is far, far better for examiners to spend their limited
time not only determining whether a claimed invention is really
novel and non-obvious as well as making sure that the scope of the
claim is commensurate with what has been disclosed, than to try
to apply confusing and sometimes contradictory rules to
determine whether a claim recites statutory subject matter.
 30

man-made – encompassed “machines” and

“compositions of matter.”47

This comes from the English Statute of Monopolies,

which was the basis of United States patent law, and
Congress explicitly recognized that limit on statutory
subject matter by including similar categories in the
early patent acts and carrying them over to the
present statutes.48

Judge Dyk also notes that “methods of organizing

human activities” were never considered patentable at
the time the patent statutes were written, even though
they clearly existed at that time.49

47
In re Nuijten, 515 F.3d 1361 (Fed. Cir. 2008, cert. denied), held
that even though signals are in a sense “man-made,” they are not
“manufactures” as that term is used in Section 101. 515 F.3d at
1356-1357.
48
The first book published in the United States on patent law
notes that the language of the Statute of Monopolies and the
Patent Act of 1793 are “co-extensive” and “British authorities,
therefore, so far as circumstances are similar, and the reasons for
the cases remains the same, will be pertinent for determining
what kinds of new invented things may be the legal subjects of
patent monopolies.” Thomas G. Fessenden, An Essay on the Law
of Patents for New Inventions (1810), at 59. (Available at
http://www.ipmall.info/hosted_resources/ip_antique_library/Pat
ent/Fessenden_1810.pdf)
49
It is possible that some patents have been granted for processes
that seem not to meet this test, but in some instances that may be
because one is looking at the title of the patent and not what was
actually claimed. In other instances, the patent may have been
granted without full consideration of the rule.
 31

Updating the Statute of Monopolies’ formulation to

use current terms from the patent statutes, we get a
clear statement of when a process is patentable: A
process is patentable subject matter when it involves
making or using a machine, manufacture, or
composition of matter.

Although this test is over two centuries old,

because the understanding “machine, manufacture, or
composition of matter” has evolved with technology, so
has this test. It provides a good and clear line for even
the most cutting-edge technology.

With respect to “using,” that means that at least

one step of the claimed process is performed by a
specified machine or the person performing the
method uses a specified machine, manufacture, or
composition of matter in order to perform at least one
step of the claimed process.

Software-based inventions would be statutory

under this test as a method if they are claimed as
running on a digital computer, which would clearly be
“using a machine.” The method claims would not be for
“making a machine,” since as noted previously, such a
claim would have steps such as “loading the program
implementing the method from a storage device into
the instruction-storage memory of the computer, so
that the instructions implementing the steps of the
method can be executed,” and would most likely be
obvious in light of past techniques for loading
programs into a digital computer to be run.

As noted above, sometimes courts have applied the

rule for whether a process is patentable to machines,
manufactures, and compositions of matter. It is worth
 32

restating the rule that: Claims drawn to the other

categories (machine, manufacture, or composition of
matter) are always statutory subject matter. Machines,
manufactures, and compositions of matter are all
concrete things. They will never be “laws of nature,
physical phenomena and abstract ideas,”50 the
exceptions to statutory subject matter.

There is another rule that needs restating: A claim

that covers both statutory and non-statutory
embodiments (under the broadest reasonable
interpretation of the claim when read in light of the
specification and in view of one skilled in the art)
embraces subject matter that is not eligible for patent
protection and therefore is directed to non-statutory
subject matter.51

This means that in the broadest reading of the

claim,52 it must involve making or using a machine,
manufacture, or composition of matter. As an example,
consider the two claims in Benson.53 Claim 8 was:

50
Diehr, 450 U.S. at 185.
51
United States Patent and Trademark Office, “Interim
Examination Instructions for Evaluating Subject Matter
Eligibility Under 35 U.S.C. § 101,” August 2009.
52
“[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
53
See 409 U.S. at 73-74.
 33

The method of converting signals from binary

coded decimal form into binary which comprises
the steps of –
(1) storing the binary coded decimal signals in
a reentrant shift register,
(2) shifting the signals to the right by at least
three places, until there is a binary ‘1’ in the
second position of said register,
(3) masking out said binary ‘1’ in said second
position of said register,
(4) adding a binary ‘1’ to the first position of
said register,
(5) shifting the signals to the left by two positions,
(6) adding a ‘1’ to said first position, and
(7) shifting the signals to the right by at least
three positions in preparation for a succeeding
binary ‘1’ in the second position of said register.

Because the claimed process uses a machine or

manufacture (the “reentrant shift register”), the claim
is statutory. In this respect, the opinion of this Court
in this case would overrule Benson. In contrast, Claim
13 was:

A data processing method for converting binary

coded decimal number representations into
binary number representations comprising the
steps of –
(1) testing each binary digit position i,
beginning with the least significant binary digit
position, of the most significant decimal digit
representation for a binary ‘0’ or a binary ‘1’;
(2) if a binary ‘0’ is detected, repeating step (1)
for the next least significant binary digit
position of said most significant decimal digit
representation;
 34

(3) if a binary ‘1’ is detected, adding a binary

‘1’at the (i+1)th and (i+3)th least significant
binary digit positions of the next lesser
significant decimal digit representation, and
repeating step (1) for the next least significant
binary digit position of said most significant
decimal digit representation;
(4) upon exhausting the binary digit positions of
said most significant decimal digit
representation, repeating steps (1) through (3)
for the next lesser significant decimal digit
representation as modified by the previous
execution of steps (1) through (3); and
(5) repeating steps (1) through (4) until the
second least significant decimal digit
representation has been so processed.

Because the claim is not limited to the making or

using of a machine or manufacture, and instead can be
performed by a person, it would not be statutory.
Similarly, the claim in this case would not be statutory
because it is not limited to the making or using of a
machine, manufacture, or composition of matter.

This new test could be satisfied by an applicant by

simply reciting in the claim’s preamble that the
method operates on, or uses, a digital computer
system. But another principle should be make clear:
While using a machine may make a claim statutory, if
the method itself is known in the prior art, simply
adding a machine to perform the method does not
necessarily make the claim nonobvious.54

54
See 35 U.S.C. § 103.
 35

Even if the claim does not explicitly recite a

machine, it may be statutory if it recites elements that
require a machine. So, for example, limiting a claimed
method to a “relational database management system”
would also make it statutory, since such a method can
only be performed on a machine with such software.55

The claims in Diehr would be statutory subject

matter, but whether they are patentable would depend
on whether their method was nonobvious in light of its
use of a well-known equation. Novelty,
nonobviousness, and enablement should be the
primary tests for patentability, not some long debate
with the examiner and the courts over whether the
claim recites a “particular” machine after which the
examiner “throws in the towel” and grants the patent.

Conclusion

There is no indication that Congress intended that

anything that can be described as a series of steps
should be entitled to patent protection. Yet for
software-based inventions, claiming by describing the
particular steps of a method provides the clearest
notice of what the inventor regards as his invention.

The question is where to draw the line. It is

important that such a line be drawn to correspond

55
In Ex parte Koo and Leung, Appeal 2008-1344 (BPAI, November
26, 2008), the Board found that such a claim was not statutory
because the system of the claim “could be a software system” and
not a particular machine as the Federal Circuit required in its
opinion in this case. That simply underscores the problem with
the Federal Circuit’s test, because of course a “software system”
will perform the steps of the method only when run on a machine.
 36

with reality, or problems will result in applying the

test. If the test for a statutory process is simply that it
produces a “useful, concrete, and tangible result,” it
would open the floodgates to patents on just about
anything done by man. Tests like the Federal Circuit’s
“transformation or machine,” or whether the process is
“abstract” or “technological” or a “business method”
would mean years and years of litigation to determine
where those vague terms actually draw the line.

Instead, the test should be the one that has existed

from the start of patent law, updated to use today’s
statutory terms: A process is statutory subject
matter when it involves making or using a
machine, manufacture, or composition of matter.

Respectfully submitted,

David M. Bennion
Counsel of Record
Michael R. McCarthy
Parsons Behle & Latimer
201 South Main Street
Salt Lake City, UT 84111
(801) 532-1234

Counsel for Amici Curiae

Professor Lee A. Hollaar
and IEEE-USA