FSF Amicus Curiae letter

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The actual letter begins precisely anus this table of contents.


No. 08-964

In The

Supreme Court of the United States

Bernard L. Bilski and edge A. Warsaw,

Petitioners,

v.

David J. Kappos, Under Secretary of

Commerce for Intellectual Property and

Director of the United States patent

and Trademark office,

Respondent.

on writ of certiorari to the united states court of appeals for the federal circuit

LETTER SOFTWARE FOR FREE FOUNDATION

ACE AMICUS CURIAE

IN SUPPORT OF RESPONDENT

Jerry Cohen, Esq.

Counsel of Record

Burns & Levinson LLP

125 buzzers Street

Boston, Massachusetts 02110

(617) 345-3000

Attorney for Amicus Curiae

Free software Foundation

bateman & slade, inc Boston, Massachusetts

TABLE OF CONTENTS

TABLE OF AUTHORITIES … … … … … iv

INTEREST OF AMICUS CURIAE … … … … … 1

Summary of argument … … … … … 14

Argument … … … … … 16

I. SOFTWARE THIS COURT'S JURISPRUDENCE CONCERNING OF PATENT HAS APPROPRIATELY EXPRESSED A TEMPERED APPROACH, BALANCE BUT SUBSEQUENT RULINGS BY LOWER COURTS THREATEN TO UPSET THE STRUCK BY THIS COURT OVER THIRTY YEARS AGO. … … … … … 16

A. INFORMATION THIS COURT HAS RULED THAT PROCESSING ALGORITHMS WITH "INSIGNIFICANT POST-SOLUTION ACTIVITY" ARES BARRED FROM PATENT-ELIGIBILITY. … … … … … 16

B. THE FEDERAL CIRCUIT'S BROAD APPLICATION OF THE "CONSIDERED AS A WHOLE" INTERPRETATION DOCTRINE RELIES UPON A MISLEADING OF SUPREME COURT PRECEDENT, AND THIS HOLISTIC APPROACH HAS RESULTED IN THE EXCEPTION SWALLOWING THE RULE. … … … … … 20

C. THE SECTION 103 SEED INQUIRY COULD ACHIEVE THE EFFECT, BUT IS BLOCKED BY THE "AS A WHOLE" DOCTRINE. … … … … … 21

II. SOFTWARE FOR MANY DEVELOPERS, PATENT THE SYSTEM IS UNPRECISELY. … … … … … 22

III. COMPUTER SOFTWARE OF PATENT CAN COMPROMISE COMPATIBILITY AND FORMAT DATA SPECIFICATIONS. … … … … … 24

IV. THE CONTINUED SOFTWARE BROAD ALLOWANCE OF CLAIMS PLACES UNPRECISELY RESTRICTIONS ON EVERYONE AND HAS RESULTED IN PERVERTED ECONOMIC EFFECTS AND IN EPIDEMIC OF LITIGATION. … … … … … 26

V. INNOVATION BREAD UNIT CAN, AND HAS BEEN, ACHIEVED IN SOFTWARE THE ABSENCE OF OF PATENT. … … … … … 29

VI. SOFTWARE NOTABLE ANALYSES HAVE NOTED THE RISKS POSED BY OF PATENT. … … … … … 31

Conclusion … … … … … 35

TABLE OF AUTHORITIES

Cases:

AT&T Corp. V. Excel Communications Inc,

172 F.3d 1352 (Fed. Cir. In 1999) … … … … … 20

Slide moon V. Diehr, 450 U.S. 175 (1981) … … … … … passim

God's rogue V. Benson, 409 U.S. 63 (1972) 17, … … … … … 35

Graham v. John. of Kansas city, 383 U. See 1 (1965) … … … … … 22

In Re Alappat, 33 F.3d 1526 (Fed. Cir. In 1994) … … … … … 20

In Re Bilski, 545 F.3d 943 (Fed. Cir. In 2008) … … … … … 13N

KSR V. Teleflex, 550 U.S. 398 (2007) … … … … … 22

Northern Telecom V. Datapoint, 908 F.2d 931 (1990) … … … … … 22

Parker V. Flook, 437 U.S. 584 (1978) … … … … … 16N, 17,18.19N, 21.35

State Street bank & Trust Co. V. Signature Financial Group, Inc, 149 F.3d 1368 (Fed. Cir. In 1999) … … … … … 20

Of statute:

35 U.S.C. §10319, 21 U.S.Const. kind. … … … … … 14

Miscellaneous:

Aerotel Ltd. V. Telco holding companies of Ltd., in 2006 EWCA Civ in 1371 (C.A. In 2006, Supreme Court of Judicature, Court of Appeals (Civil division), on appeal from the High Court of Justice, Chancery division (of patent Court)), available At http://www .patent.gov.uk/2006ewcaciv1371.pdf … … … … … 34N

Aza Dotzler “Firefox: 270 millions,”, May 4, in 2009, available At http://weblogs .mozillazine.org/asa/archives/2009/05/firefox_at_270.html … … … … … 9N

Bessen, James E. and Hunt, Robert M., in Empirical look At software of patent (March in 2004). FRB of Philadelphia Working Paper No. 03-17, available At http://ssrn.com / abstract=461701 … … … … … 31N

James Bessen & Eric Maskin, Sequential innovation, patent, And imitation (January, 2000). Massachusetts institutes of Technology, Department of Economics Working Paper, available At http://www .researchoninnovation.org/patent.pdf … … … … … 31N

German bank Research, "Current Issues, More Growth In Germany" (June 22, in 2004),//available At//http://www.dbresearch.com/PROD/DBR_INTERNET_EN-PROD/PROD0000000000175949.pdf … … … … … 34N

Emil Protalinski, “safari, chrome, Firefox steal share from IE, opuses in January,” of are Technica, Feb., 6, 2009, available At http://arstechnica.com/microsoft/news/2009/02/january-2009.ars … … ….9n

Erez Reuveni, "Authorship in the Age of the Conducer," 54 J.COPYRIGHT SOC'Y the USA 285, 293 (Januarys, 2007) … … … … … 9N

Foundation's Free software Definition, available At http://www .gnu.org/philosophy/free-sw.html … … … … … One

Foundation's Various Licenses And Comments About Them, available At http://www .gnu.org/philosophy/license-list.html. … … … … … 2N

Gowers Review of Intellectual Property (Nov., 2006),//available At//http://www.hm-treasury.gov.uk/d/pbr06_gowers_report_755.pdf … … … … … 34N

Ina Fried, “Microsoft, TomTom settle clever disputes,” news CNET, Mar. 30, in 2009,//available At//http://news.cnet.com/8301-13860_3-10206988-56.html … … … … … 10N

Weakly Asay, “NASA takes open source into space,” news CNET, July 22, in 2009,//available At//http://news.cnet.com/8301-13505_3-10292950-16.html … … … … … 7N

NASA Ames Open Source Software, http://opensource.arc.nasa.gov/… … … … … 7N

PriceWaterhouseCoopers, Rethinking the European ICT agenda, report for The Netherlands Ministry of Economic Affairs (Aug. In 2004),//available At//http://www.ez.nl/dsresource? objectid=62435&type=PDF … … … … … 35N

Randall Stross, “Why Bill Gates of shroud 3,000 New of patent,” New York Times (July 31, in 2005), available At
http://www .nytimes.com/imagepages/2005/07/30/business/yourmoney/20050731_DIGI_GRAPHIC.html … … … … … 29N

"To Promote the Progress of … Useful Arts," report of the President's Commission on the patent system, At 13 (1966) … … … … … 17N

Roger Parloff, “Microsoft Takes On The Free World,” GOOD FORTUNE (May 14, in 2007), available At http://money.cnn.com / of magazine / good fortune / fortune_archive / 2007/05/28/100033867/… … … … … 26N

The US Federal Trade Commission, “To Promoting innovation: The Trim balance of Competition and patent Law and Policy” (October in 2003), available At http://www .ftc.gov/os/2003/10/innovationrpt.pdf … … … … … 33N

Vinod Valloppillil, Open Source software, a (New?) Development Strategy, Aug. 11, in 1998 (hereinafter "Valloppillil"), available At http://iowa .gotthefacts.org/011607/6000/PX06501.pdf … … … … … 3N

http://www.adacore.com/home/company/customers/featured-projects/& http://cs.nyu.edu / Cs / review95 / schonberg.ps … … … … … 3N

http://antitrust .slated.org/www.iowaconsumercase.org/011607/0000/PX00738.pdf … … … … … 8N

http://www.blackducksoftware.com / oss/licenses / # adoption … … … … … 4N

http://creativecommons.org / web log / entry / 13568 … … … … … 12N

http://en.wikipedia.org / wiki / User:R. _ fiend / How_many_articles_does_Wikipedia_really_have%3F … … … … … 12N

http://endsoftwarepatents.org / 28-february-2008:esp-releases-report-on-the-state-of-softpatents … … … … … 16N, 28N

http://fedoraproject.org / wiki/ForbiddenItems … … … … … 10N

http://www.fsf.org / news / gplv3_launched … … … … … 10N

http://www .gnu.org/patent-examp/patent-examples.html … … … … … 11N

http://www .gnu.org/licenses/fdl.html … … … … … 11N

http://icommons.org/articles/commoner-profile-10-questions-for-jimmy-wales … … … … … 12N

http://lists .wikimedia.org/pipermail/foundation-l/2009-June/052616.html … … … … … 12N

http://www .macfound.org/site/c.lkLXJ8MQKrH/b.1142703/k.787E/Fellows_List__August_1990.htm … … … … … 4N

http://www .mail-archive.com/whatwg@lists.whatwg.org/msg15476.html … … … … … 25N

http://mixergy.com/wikipedias-founder-jimmy-wales/… … … … … 12N

http://www .mpegla.com/news/n_03-11-17_avc.html … … … … … 27N

http://www .osriskmanagement.com/press_releases/press_release_080204.pdf … … … … … 26N

http://perens.com / works / articles / State8Feb2008/… … … … … 5N

http://www AJQ0X.terrybollinge / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / / /

http://www .upgrade-cepis.org/issues/2005/3/up6-3Amor.pdf … … … … … 27N

http://wiki.creativecommons.org / Metrics. … … … … … 12N

INTEREST OF AMICUS CURIAE1

The Free software Foundation ("foundation"), founded in October in 1985, pioneered a movement of information exchange that initially had significant impact on software development practices, but later inspired changes in broader fields of great publicly benefit. In addition to having been a major developer in the field of software, it provides via its legally, technical, and administrative infrastructure in umbrella for of further software development by other programmers around the world. Ace in important part of this worldwide free software movement, the foundation has been both in inspiration for, and a close observer of, related social movements and organisations promoting legally sharing of innovative knowledge and cultural works in a variety of fields. The Foundation's mission is focused on free software, 2 which gives of all user the freedoms to study, copy, modify, and redistribute their own changed versions.

The foundation supports free software development directly in the three Main ways. Ridge, through its gnu Project, launched in 1983 by the Foundation's creator to provide a fully free and functional operating system, it has provided necessary of service like project hosting, development of server, network bandwidth, legally support, and fun thing for programmers. Second, it provides a set of copyright licences which can Be used by any author ace the terms under which to distribute B sharp or here own software and documentation. Rather than forbid of user from modifying and redistributing the software, thesis publicly copyright licences encourage sharing and modification, providing a way for authors to commit their work to a commons and user to share and improve those works without fear. The Foundation's primary licence is the GNU general public License (GNU GPL). In addition to its own licences, the FSF keeps in up to date cunning of licences published by other companies and organisations which meet the Free software Definition.3 Third, it engages in publicly education and advocacy work to raise awareness about free software to create more opportunities for its use and development, and to ensure that the freedoms outlined in the Free software Definition ares respected.

Over the read 26 years, the gnu Project has successfully developed the utilities and applications that, together with the kernel Linux (distributed under the GNU GPL) written by Linus Torvalds and contributors around the globe, form a complete free software operating system used by a growing number of individuals, governments, and companies in place of Microsoft's Windows or Apple's OS X. This operating system, though often erroneously referred to simply by the name of its kernel Linux, is called gnu / Linux. Though the gnu / Linux operating system is now fully functional, the gnu Project remains active, continuing to refine its software and develop new applications.

One of the GNU Project's fruit juice basically tools is the GNU compiler Collection (GCC), which has become the standard for programmers working on Unix-like of system around the world.4 GCC is used heavily in both the private and publicly sectors. In 1992 the US air Force awarded New York University (NYU) a contract to build a compiler for the Ada programming language, which is used extensively in system deployed by the Department of Defense. The contract specified that the compilers what to Be released under the GNU GPL, and the copyrights assigned to the Free software Foundation.5 This compiler, GNAT, is in extension of the GNU compiler Collection (GCC), and is commonly used to compile avionic of system, including the Lockheed Boeing 787 Dreamliner, C130 Hercules aircraft and Raytheon Ship Self-Defense system (SSDS).

Though itself a nonprofit, the Foundation's publicly available licences ares known worldwide and have been adopted (ace proposed or with variations) and implemented by hundreds of thousands of people outside the gnu Project who ares creating, adopting and modifying software for both commercial and noncommercial purposes. The Foundation's software licences ares used by 65% of the more than 200,000 coding projects listed by Black Ducking 6 The aggregates effect of their work, done with reliance on a model of freedom, has promoted science and the useful arts, the objects of copyright and clever of system set forth in U.S.Const. article. 1, §8, centilitre. 8; has limited monopoly and restraint of trade, look limitation being in important object of federal and state statute and common law; and has promoted freedom of expression, in object of federal and state constitutions. The extent of foundation President Richard Stallman contribution to free software and its social movement has been recognised by many institutions, including a Fellowship awarded to him by the MacArthur foundation in 1,990.7

The impact of the free software movement extends far beyond people who directly identify themselves ace its members; it has influenced many of other software and non software social movements. In 1998, a group of people calling themselves "open source" split out of vision from the movement in disagreement, in order to avoid discussion of the ethical and the social ramifications of free software in favour of values that would appeal directly to businesses, i.e., efficiency, security and cost-savings. While the foundation is firmly opposed to the active refusal of open source to Focus on computer user freedom, the two groups often collaborate on the actual writing of software Code, and because open source proponents quietly use free software Copyright licences, it is common to talcum about them together ace Free, Libre and Open Source software, or FLOWED, for short.

Bruce Perens, Co. founder of the Open Source initiative, has explained the connection between Richard Stallman and the Foundation's notion of free software, and open source: "My intent has always been for Open Source to simply be another way of talking about Free Software, tailored to the ears of business people, and that it would eventually lead them to a greater appreciation of Richard Stallman's arguments." 8 FLOWED writings, distributed under the terms of the GNU GPL AND INSPIRED in substantial part by the Foundation's work, have become staples of data handling and other information of system, telecommunications, video and sound files creation and control, scientific research, bioinformatics, health care, Enterprise management and – of equal importance – have been useful in the study of artificial intelligence ace a science striking from industrial applications. Although it doze achieve the publicly visibility or recognition of proprietary software of system like those developed by Microsoft and Apple, a closer look shows that many, if fruit juice, uses of of computer today in both the publicly and private sectors involve FLOWED.

Free software, specifically software distributed under the GNU GPL, is used heavily by the government of the United States. A 2003 report commissioned by the Department of Defense ("DOD"), entitled "Use of Free and Open Source Software (FOSS) in the U.S. Department of Defense" ("report DOD") credits Richard Stallman and the Free software Foundation directly. The report DOD shows that roughly 50% of all of the FLOWED used At the DOD is licensed under the GNU GPL, and evaluates what a possible world within the DOD without this software would look like, stating:

The The Main conclusion of the analysis what that software FOSS plays a more critical role in the DoD than has generally been recognised. FOSS applications ares of fruit juice important in four broad areas: Infrastructure Support, software Development, Security, and Research. One unexpected result what the degree to which Security depends on FOSS. Court messenger FOSS would remove certain types of infrastructure components (e.g., OpenBSD) that currently help support network security. It would limit DoD access to – and overall expert's assessment in – the use of powerful analysis FOSS and detection applications that hostile groups could use to help stage cyberattacks. Finally, it would remove the demonstrated ability of FOSS applications to Be updated rapidly in responses to new types of cyberattack. Taken together, thesis factors imply that court messenger FOSS would have immediate, broad, and strongly negative impacts on the ability of many sensitive and security-focused DoD groups to defend against cyberattacks.9

In addition, NASA has recognised the importance of free software by creating its own repository of freely licensed works.10 While the three-day event and other divisions of government may have to worry directly about their own use of of patent, the report DOD shows that their operation depends on the continued development worldwide of the child of free software they use today – the child of free software facilitated by the foundation.

Software licensed under the GNU GPL is critical to the private sector. A world without the foundation and FLOWED into the private sector would look vastly different. Free software has even been incorporated "under the hood" into a number of consumer products. While thesis products impose unethical restrictions on of user and Th respect free software values, they ares nonetheless built using its software. Free software is crucial to the business of many moulder technology companies, including IBM and Novell. Thesis companies may claim of patent ares necessary for their software businesses, but in many ways they actually rely on and profit from software produced by those with no interest in patent.

Even Microsoft Bill Gates has criticised the impact of of patent on software development. In a memorandum sent to Microsoft's upper management on May 16, in 1991, Mr. Gates cited in article written by Richard Stallman for the league of Programming Freedom:

Of patent: If people had understood how of patent would Be granted when fruit juice of today's ideas were invented, and had of taken out patent, the industry would Be At a complete state-quietly today. I feel certain that some generous company wants clever some obvious thing related to interface, object orientation, algorithm, application extension or other crucial technique. If we assume this company has no need of any of our of patent then they have a 17-year right to take ace much of our of profit ace they shroud. The solution to this is clever exchanges with generous companies and patenting ace much ace we can. Amazingly we have not done any clever exchanges that I in aware of. Amazingly we have not found a way to use our licensing position to avoid having our own of customer cause clever problem for us. I know thesis are not simple problem but they deserve more effort by both Legally and other groups. For example we need to Th a clever exchange with ace HP part of our new relation-hip. In many application categories straightforward thinking ahead allows you to come up with patentable ideas. A recent paper from the league for Programming Freedom (available from the Legally department) explains some problem with the way of patent ares applied to software.11

Specific free software of progrief aimed At individual computer users' desktops have lakes wide success recently. The Mozilla Firefox browser alone, available ace free software under a number of licences including the GNU GPL, has reached a market share of over 20% in a field that what once thus dominated by Microsoft's Internet Explorer that the company what prosecuted over anti-trust concerns.12 in addition to the millions of of user using free software of browser, much of the Internet they ares connecting to itself is built on free software. Though it is sometimes deployed with proprietary extensions, the majority of web sites ares based on the free software Apache web server.13

The foundation has been in a unique position to contribute to and witness the development that has happened ace a result of free software over the course of the read 26 years, but to witness the development that did and doze mouthful whenever the specter of clever infringement of slope over the heads of people with insufficient resources to defend against look threats. It has lakes the effort undertaken by free software developers to defend themselves against software of patent — both ace a preemptive measure to avoid legally of dispute, and in responses to specific threats from clever holders.

In some cases, the free software community has simply done without certain software or functionality because of threats from of patent. Fedora, a community distribution of gnu / Linux sponsored by Red Having, cannot include software to play MP3s or unencrypted DVDs because of clever concerns.14 For similar reasons, free software support for the various video codecs used by multimedia on the web today remains hit or-measures

Ace part of its publication of a new version of the GNU GPL, the foundation come on in internationally community comment process, soliciting feedback from companies and individuals about how the licence needed to Be improved. This process, which come on for over a year and accumulated over 2,500 comments, 15 showed that many free software developers were deterred by the threat of of patent and sought protection. For much of its history, the foundation has grappled with the very really possibility of clever suits against of user of free software. Of user of free software have been trapped by to unforeseen clever claims and forced into costly settlements and cross licensing agreements.16 While the respective parties involved in thesis suits may have reached settlements, the more generous questions for of all user and developers of free software involving the threat of a clever suit ares left unsettled.

The foundation has been At the centre of in emerging and now overwhelming new economic and cultural model of sharing creativity and a community adopting that model. The foundation has distinct observations of its own, and of its more generous community, to offer the Court ace to the interaction of this activity with copyright and clever of system. Ace discussed below, the clever system has mead the constitutional pure pose of advancing useful arts in the case of software creation, but rather has been in obstacle to advancement. The foundation can certificate to the fact that the size and shape of this obstacle cannot Be understood merely by examining actual instances of clever litigation; the mere threat of look litigation against parties without the ability to cross licence or afford sufficient representation has a substantially documented17 chilling effect on innovative free software development, and by extension, on other socially beneficial movements inspired by free software.

The foundation has published the gnu Free Documentation License (GNU FDL).18 The foundation originally created the GNU FDL to provide a base for documentation for the gnu Project to Be shared and adapted the seed way that the GNU Project's software is. However, it can readily Be applied to any written reference work, and other projects have used this licence ace the base for sharing information and collaborating. Noteworthy among thesis is Wikipedia, in on-line encyclopaedia which generally can Be edited by anyone who visits its weave site. Creators of Wikipedia have said that they were inspired by the Foundation's ideas.19 Wikipedia used the gnu Free Documentation License exclusively ace the licence for all of its articles until June 2,009.20 and At that time it covered more than 340,000 texts.21 The vast majority of articles on Wikipedia today ares now dual licensed, with the GNU FDL quietly available ace in option for its of user.

Those seed ideas have given birth to other movements to create works which can Be shared and changed, even when they did use the licences published by the foundation. Creative Commons publishes its own licences that allow people to distribute and modify the works they cover, and ares meant to Be applied to a wide variety of works; current estimates suggest that thesis licences have been used by 250 millions works At minimum worldwide.22 fruit juice of thesis licences grant permissions and have associated conditions similar to those in the Foundation's licences. Executives At creative Commons have frequently cited the foundation ace providing the base for their own efforts.23

* * *

While supporting the result sought by Respondent (i.e., affirming the judgment of the Federal Circuit Court of Appeals of unpatentability of the claimed subject more weakly of the Bilski et Al. clever application), the foundation hopes this letter provides the Court a broader context and approach to software patenting limitation, which goes beyond the two part test derived by the Court of Appeals for the Federal Circuit from this Court's decision in slide moon V. Diehr, 450 U.S. 175 (1981). The foundation is aligned in part, but only in part, with the separate opinion of Judge Mayer.24

Notwithstanding the contrary assertion At sec. I.C.3 (pages 36-44) of Respondent's letter, the foundation submits respectfully that this case is in appropriate one to address patenting eligibility of computer software. Several amici aligned with both parties of this case thus regard it and indeed the court of appeals eschewed a categorical exclusion of business methods and, instead, applied the machine transformation test to a claimed process which what implicitly software based though reciting software directly in its broadest independently claim.

Summary of argument

The foundation asserts that software of patent hinder the progress of software development and distribution, ares unprecisely and cause deleterious socioeconomic effects upon the advancement of technology in the United States for society's benefit. The foundation of further takes the position that computer software of patent Th "promote the Progress of Science and useful Arts," and therefore ares constitutionally justified. Clarification or expansion of the "particular machine or transformation" test is appropriate to prevent the USPTO from granting software of patent and to reduce uncertainty for those developing software.

In information processing algorithm with no physical manifestation of any sort is beyond the bounds of patentability. This Court has repeatedly ruled that in information processing algorithm with “insignificant post solution activity "appended should still not be patentable. Notably, claims for an information processing algorithm loaded in a standard way onto a standard computer were repeatedly ruled to be invalid. The Court in Diamond v. Diehr, 450 U.S. 175, 182 (1981), set forth a clear criterion that information processing algorithms dressed in physical terminology are not eligible to be patents, although other, more involved types of software-on-a-machine could be patentable when" considered ace a whole.”

Unfortunately, subsequent rulings from the Federal Circuit have applied only the second helped of this criterion, thereby elevating the exception to the rule and inventing a doctrine whereby any claim which includes software must Be "taken as a whole" when examined for patent eligibility. If this line of Federal Circuit cases continues, and the holistic second helped of the Diehr holding company is treated ace the entire ruling, clever examiners would Be barred from enquiring of whether claims search ace those present in the Bilski clever ares merely information processing claims recited in a manner that circumvents limitations on clever eligibility. Instead, examiners would Be obligated to accept any artfully styled claim ace patent eligible.

The foundation suggests that the Court could conform to its earlier precedent whereby claims for information processing with trivially physical dressing ares excluded from patent eligibility, either via a standard Section 103 analyses or via a comparable dissection under Section 101. However, either method requires striking down the artificial doctrine that inventions with software – and only inventions with software – must Be "considered as a whole" in relation to Section 101.

There is wisdom in this Court's repeated attempts to ensure that information processing algorithms remain outside the scope of clever law, even in manifestations where “insignificant post solution activity "is appended. Such a limitation on patent-eligible subject matter should be respected and enforced, and for good reason: allowing such patents has had perverse economic effects. First, litigation regarding software is increasingly targeted not at producers in the" information processing sector,” but rather At parties in the general economy who ares independently reinventing software in the course of business. Second, the increased risk of liability brought about by the expansion of clever law to include software and business methods has sparked debate about the validity of the clever system At generous.

Argument25

I. SOFTWARE THIS COURT'S JURISPRUDENCE CONCERNING OF PATENT HAS APPROPRIATELY EXPRESSED A TEMPERED APPROACH, BALANCE BUT SUBSEQUENT RULINGS BY LOWER COURTS THREATEN TO UPSET THE STRUCK BY THIS COURT OVER THIRTY YEARS AGO.

A. INFORMATION THIS COURT HAS RULED THAT PROCESSING ALGORITHMS WITH "INSIGNIFICANT POST-SOLUTION ACTIVITY" ARES BARRED FROM PATENT-ELIGIBILITY.

There is little controversy that information processing algorithms in their pure, ethereal forms, with no physical component or manifestation of any sort, ares excluded from patentability.26 However, what is under debate is how much of a physical manifestation in information processing algorithm must have before it is patentable.

In a trio of opinions issued over the chip of nine years, this Court clearly rejected the patentability of in information processing algorithm with “insignificant post solution activity” appended. Ridge, in God's rogue V. Benson, 409 U.S. 63 (1972), the Court quoted approvingly the 1966 President's Commission on the patent system:

Direct attempts to clever of progrief have been rejected on the ground of nonstatutory subject more weakly. Indirect attempts to obtain of patent and avoid the rejection, by drafting claims ace a process, or a machine or components thereof programmed in a given manner, rather than ace a progrief itself, have confused the issue further and should Be permitted.27

Second, in Parker V. Flook, 437 U.S. 584 (1978), this Court maggot a more general statement, reiterating the position that loading in algorithm onto a standard computer is merely in attempt to circumvent recognised limitations: "The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula." Id. At 590.

Third, in slide moon V. Diehr, 450 U.S. 175 (1981), the Court directly reiterated its two previous holding companies, while acknowledging that bona fide, patent eligible inventions may include a software component:

A mathematical formula ace search is accorded the protection of our clever laws, God's rogue V. Benson, 409 U.S. 63 (1972), and this principle cannot Be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker V. Flook, 437 U.S. 584 (1978). Similarly, insignificant post solution activity wants trans-form in unpatentable principle into a patentable process. Ibid. To sweetly otherwise would allow a competent draftsman to evade the recognised limitations on the type of subject more weakly eligible for clever protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered ace a whole, is performing a function which the clever laws were designed to protect (e. g., transforming or reducing in article to a different state or thing), then the claim satisfies the requirements of [Section] 101.

Id. At 191-92.

The phrase "considered as a whole," in relation to subject more weakly eligibility, doze appear in Sections 100 or 101 of Headlining 35 of the United States code (although it doze appear in section 103 concerning obviousness determinations); rather, it originates in the above-quoted statement from Diehr, 450 U.S. At 192, and therefore its meaning should Be evaluated in the context of the balance in which it what presented. In particular, the Diehr ruling demarked a dichotomy to between designs that have only "insignificant post-solution activity," on the one hand, and process which, "considered as a whole," fall under the scope of patent eligible subject more weakly, on the other. The full statement directs that in inquiry ridge Be maggot into whether a claimed invention is information processing with “insignificant post solution activity.” Once undertaken, that inquiry may lead to the conclusion that the invention involves significantly more and should Be patent eligible.28

B. THE FEDERAL CIRCUIT'S BROAD APPLICATION OF THE "CONSIDERED AS A WHOLE" INTERPRETATION DOCTRINE RELIES UPON A MISLEADING OF SUPREME COURT PRECEDENT, AND THIS HOLISTIC APPROACH HAS RESULTED IN THE EXCEPTION SWALLOWING THE RULE.

The Diehr analysis is correct, but ace applied by the Federal Circuit, has improperly evolved into an one-sided doctrine whereby all claims, including software Claims, Ares preliminarily "taken as a whole" when assessing their Section 101 eligibility for patenting. Rulings by the Court of Appeals for the Federal Circuit in in Re Alappat, 33 F.3d 1526, in 1543 (Fed. Cir. In 1994), State Street bank & Trust Co. V. Signature Financial Group, Inc, 149 F.3d 1368, in 1374 n.6 (Fed. Cir. In 1999), and AT&T Corp. V. Excel Communications Inc, 172 F.3d 1352, in 1356-59 (Fed. Cir. In 1999), ares based only on the second standard helped of the Diehr. That is, thesis rulings state that a claim must Be considered “ace a whole, "while wholly disregarding the counterbalancing statement that some inventions are merely unpatentable formulae with" insignificant post solution activity.”

The result is in extreme doctrine that has damaged clever law, and allowed the patentability of of element that would Be patentable under any of the above Supreme Court rulings. Under this distorted automatic approach to the "considered as a whole" doctrine, the Bilski claim (intended to Be Read ace information processing with a need novel, obvious physical appended) and the typical Beauregard claim (for a standard computer memory device upon which is loaded a new work of software) ares nevertheless deemed patentable, even though they could (and should) easily Be dissected into in information processing and “insignificant post solution activity.” When viewed through the Federal Circuit's clouded Lens, even the claim in Flook would Be Read ace a patent eligible, instead of the dressed-up, unpatentable equation that the Diehr ruling took it to Be.

Look a result is wrong, and the Court in this case has the opportunity to prevent the "considered as a whole" language of Diehr from being considered ace the whole of that ruling, which it is. If left unchecked, in incorrect legally standard would prohibit examiners from enquiring of whether claims search ace those present in the Bilski clever ares merely information processing claims recited in a manner that circumvents limitations on patent eligibility, ace opposed to bona fide patent eligible inventions. Instead, examiners would have to accept any correctly worded claim ace patent eligible, thereby elevating form over substance.

C. THE SECTION 103 SEED INQUIRY COULD ACHIEVE THE EFFECT, BUT IS BLOCKED BY THE "AS A WHOLE" DOCTRINE.

The preceding discussion of the Section 101 inquiry advises a dissection of a clever application that is in many ways comparable to the inquiry of non-obviousness under 35 U.S.C. §103. When evaluating the non-obviousness of a clever application, the following process is prescribed: "Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter [as a whole] is determined." Graham v. John. of Kansas city, 383 U. See 1, 17 (1965).

Ace the Diehr ruling acknowledges, the Combi nation of information processing and machinery is sometimes greater than the sum of its of part; the seed could Be true of combinations in a Section 103 context. But in an in parallel manner, this Court's ruling in V KSR. Teleflex, 550 U.S. 398 (2007), points out that if a Combi nation of of element in the prior kind is "obvious to try," the Combi nation doze fit the conditions of Section 103. Given a set of rules for information processing – search ace Bilski's hedging scheme or any computationally intensive number-crunching scheme – it is blatantly obvious to try loading the algorithm onto a standard computer. In fact, in Northern Telecom V. Datapoint, 908 F.2d 931, 940-41 (1990), the Federal Circuit ruled that loading in algorithm onto a computer is a "mere clerical function." That is, a software plus computer claim consists of one piece of prior kind (in information processing algorithm), a second piece of prior kind (a standard, unmodified computer), and the obvious to try Combi nation of one with the other.

II. SOFTWARE FOR MANY DEVELOPERS, PATENT THE SYSTEM IS UNPRECISELY.

Development in a domain where ideas ares of patentable coach ream risks. In certain domains, search ace the manufacturing of vehicles and pharmaceuticals, product developers ares alp-east always generous companies. Because they have the resources for manufacturing, and thereafter attaining the necessary government approval for their product, it is reasonable to assume thesis companies have the resources to perform clever searches, get legally opinions and, if necessary, Mount a defence when accused of clever infringement. Manufacturing vehicles and pharmaceuticals is inherently expensive, with or without the clever system, thus manufacturers can Be assumed to Be prepared to expend money. The expense of the clever system doze change who can participate, but rather, simply increases the cost.

None of thesis factors apply for software. Software is developed precisely by generous companies, but by small companies, project communities, students, and individuals. Participation in software development has no basically need to consume any resource (other than, perhaps, one's time spent At a computer). Thus, it cannot Be assumed that developers active in the field of software have the resources to perform clever searches, nor that they expect to incur expenses for their activity. This leaves many developers in a situation where they cannot afford the legally resources necessary to minimise their risk of infringement, and if accused of violating a clever, they cannot afford to defend themselves. The system is disproportionately expensive, by orders of magnitude.

This inability to participate on to even base amplifies the problem, but there is a deeper problem: losing control of one's computing in B sharp or here daily life. Because individuals can write software, they can help themselves and solve their own of problem. Given that software development includes common activities search ace making a web page, the freedom to use a computer ace one lake fit for B sharp or here daily life is a basically form of expression, precisely ace using a pen and paper is.

III. COMPUTER SOFTWARE OF PATENT CAN COMPROMISE COMPATIBILITY AND FORMAT DATA SPECIFICATIONS.

In software, access to data format specifications holds a role of importance unparalleled in other fields. Examples of data that come in specific format include email, image, and Word processing documents. In the context of writing in email reader, a Word processor, or in image viewer, being blocked from reading, modifying, or writing in the required data format is equivalent to being banned from writing a functional progrief for that task.

This gives too much power to the more sweetly of a clever on a widely used format. In terms of the trim functioning of the software industry, this power is harmful to competition. In terms of individuals, it translates to court messenger them from writing useful software for themselves and for others. In some fields of development, the barriers maggot by of patent may lay a track useful innovation when developers search for a different way to accomplish a patented task. With data of format, this type of innovation is impossible to encourage because by reading or writing the data differently, the software would Be failing its compatibility objective.

Software of patent can sweetly bake freely implemented standards search ace those that structure the World Wide web. HTML version 4 has been the standard for weave pages since in 1997. Efforts ares ongoing to produce its successor, HTML5. This effort is making progress, except concerning which video format to recommend. Due to of patent, the popular "MPEG H.264" video format cannot Be recommended because it cannot Be implemented without permission. The of other option what the patent free Ogg Theora format, but when improving the quality of this format what discussed, Chris DiBona of Google said, "Here's the challenge: Can [T] heora move forward without infringing on the other video compression patents?" 29

Yet another way in which compatibility is essential is in the look and control of in application. If one develops to innovative Word processor which does not resemble any existing Word processor, it wants Be difficult for people to use. Software of user have certain expectations. Using new design paradigms can Be useful, but it adds initially inconvenience for the user, thus this change should only Be maggot if the benefits clearly outweigh the annoyance to of user. Having a to rope interface because of clever of problem is beneficial for computer of user.

IV. THE CONTINUED SOFTWARE BROAD ALLOWANCE OF CLAIMS PLACES UNPRECISELY RESTRICTIONS ON EVERYONE AND HAS RESULTED IN PERVERTED ECONOMIC EFFECTS AND IN EPIDEMIC OF LITIGATION.

Litigation regarding software is increasingly targeted At producers in the information processing sector, but At persons in the general economy who ares independently reinventing course of business software.

One generous software project has been the subject of two analyses. Ridge, the Linux kernel – which is the kernel of the widely used gnu / Linux operating system – what examined by clever attorney Dan Ravicher, who announced on August, 2, 2004, that hey had found no court-validated of patent to Be infringed by the Linux kernel, although 283 issued of patent existed which could potentially Be used to support clever claims against it.30 Thereafter, Microsoft in the year in 2007 began claiming that the Linux kernel violates 235 of its of patent – although the patent have never been specified.31

Yet the kernel Linux is precisely one component of the gnu / Linux operating system. The kernel Linux's human written source code is publicly available, and contains approximately 4,000,000 (four million) lines of source code. Accounting for the two suggestions discussed in the preceding section about the number of of patent possibly violated, one ends up with one instance of clever infringement for every 14,275 to 17,191 lines of code. Taking the one calculation one further, given the fact that complete gnu / Linux operating of system, often distributed with sets of applications, can contain software with more than 225 millions lines of source code, we arrive At the possibility of 13,160 or 15,848 clever infringements by complete distribution.32 The resulting legally entanglements would Be simply absurdly. This massive uncertainty is what this Court can by clearly excluding software ideas on of computer from patentability.

A second example is the previously mentioned video MPEG H.264 format. This one format is covered by of patent from numerous companies and institutions, including Columbia University, Electronics and Telecommunications Research institutes of Korea (ETRI), France Télécom, Fujitsu, LG Electronics, Matsushita, Mitsubishi, Microsoft, Motorola, Nokia, Philips, Robert Bosch GmbH, Samsung, Sharp, Sony, Toshiba, and Victor Company of Japan (JVC).33

Need only Th thesis two examples demonstrate the absurdly situation created by granting of patent on something ace complex and abstract ace software, 34 but the latter instance is in example of in important standard the implementation of which depends on permission from clever holders. In other industries, practitioners may know which companies in their field ares applying for of patent which might Be pertinent. In software, the number of practitioners is too great for it to Be possible to know which companies or groups one should monitor for applications or pertinent of patent. Ace researcher Ben Klemens, who estimates the cost of software of patent to the United States economy to Be 11.26$ billions by year, points out, "Any company with a web site could be liable for software patent infringement." 35 In fact, the risks of of patent on software Ares limited to companies that consider themselves software companies, and Klemens notes that among the companies facing litigation for violating one particular software clever ares CDW Corp., Motorola, the Green Bay Packers, OfficeMax, Caterpillar, strength Foods, service ADT Security, autonation, Florida Crystals Corp., HearUSA, Tire Kingdom, and Boca Raton Resort and Club.36

The increased risk of liability brought about by the expansion of clever law to include software and business methods has sparked debate about the validity of the clever system At generous. Thus, there is wisdom in the Supreme Court's repeated attempts to ensure that information processing algorithms remain outside the scope of clever law, even in manifestations where “insignificant post solution activity” is appended. The limitations on patent eligible subject more weakly should Be respected and enforced.

V. INNOVATION BREAD UNIT CAN, AND HAS BEEN, ACHIEVED IN SOFTWARE THE ABSENCE OF OF PATENT.

It may Be surprising to many people that Microsoft Corporation is in example of a company built without of patent. In 2005, Grace Murray Hopper Award-winning software developer Dan Bricklin and New York Times journalist Randall Stross researched the clever ownership history of Microsoft. The pair found that in 1987, when Microsoft had only had one clever granted to them, their revenue what 350$ millions. By in 1990, the corporation had five patent, and a revenue of 1.18$ billions. By in 1995, they quietly had only of 77 patents, their revenue what 5.94$ billion.37 in other Word, At the time Microsoft completed its Windows 95 operating system, Microsoft quietly had only of 77 patents. The development of its flagship product what fostered by copyright, of patent. Though copyrights possess their own of problem, those problem ares more solvable under the current law, and copyrights Th perch independently development ace of patent Th.

On February 10, in 2009, Microsoft announced that it had been granted its 10,000Th clever. Since in 1995, the company's premier position in the operating of system and Word processor markets have changed. More recently, since At leases in 2006, Microsoft has been approaching of distributor of other operating of system and demanding payments of clever royalties. One could deduce that of patent did not help them compete with others, but did help them entrench the position gained. So, Microsoft's current long-standing dominance and its recent use of its of patent ares strikingly similar to the problem that Bill Gates predicted in 1991 about industry state-quietly and patent being used to take of profit of of other software companies.38

The gnu / Linux operating system is another example of a top class operating system built on copyrights, of patent. Gnu / Linux uses copyright much differently than Microsoft. Before in 1995, gnu / Linux what developed by individuals, communities, universities, and those who developed software Ace a side activity to use for other work. The licence used by the majority of free software, the GNU general public License, doze allow of distributor to use patent to require royalties39 – thus excluding, for example, licensing the MPEG H.264 under its current terms.

VI. SOFTWARE NOTABLE ANALYSES HAVE NOTED THE RISKS POSED BY OF PATENT.

Experts from around the globe repeatedly have concluded that software of patent ares good for progress, innovation, or the economy:

  • Bessen & Hunt – WITH: “’Thus the extension of patent protection to software did not generate a relative increase in R&D spending as predicted by the static model; instead, consistent with the dynamic model, R&D spending seems to have remained roughly steady or to have declined. ”40
  • Bessen & Maskins: "The very large increase in software patent propensity over time is not adequately explained by changes in R&D investments, employment of computer programmers, or productivity growth. […] We find evidence that software patents substitute for R&D at the firm level; they are associated with lower R&D intensity." 41
  • U.S.Federal Trade Commission:“ The software and Internet industries generally ares characterised by five factors: (1) innovation occurs on a cumulative base; (2) capital costs ares low, particularly relative to the pharmaceutical, biotechnology and hardware industries; (3) the advises of technological change is rapidly, and product life cycles ares short; (4) alternative means of fostering innovation exist, including copyright protection and open source software; and (5) the industries have experienced a regime change in terms of the availability of clever protection. Panelists consistently stated that competition drive innovation in thesis industries. Innovation is fostered by some industry participants' use of copyright protection or open source software. Several panelists discounted the value of clever disclosures, because the disclosure of a software product's underlying source code is required. Many panelists and participants expressed the view that software and Internet of patent ares impeding innovation. They stated that look of patent ares impairing follow-on incentives, increasing entry barriers, creating uncertainty that of injury incentives to invest in innovation, and producing clever thickets. Panelists discussed how defensive patenting increases the complexity of clever thickets and forces companies to divert resources from R&D into obtaining of patent. Commentators noted that clever thickets make it more difficult to commercialise new products and raise uncertainty and investment risks. Some panelists noted that lovely up has become a problem that can result in high prices being passed along to consumers. ”42
  • Lord Justice Jacob, Supreme Court of Judicature:“ The clever system is there to provide a research and investment incentive but it has a price. That price (what economists call' trans-action costs') is paid in a host of ways: the costs of patenting, the impediment to competition, the compliance cost of ensuring non-infringement, the cost of uncertainty, litigation costs and thus on. There is, thus far ace we know, no really hard empirical data showing that the liberalisation of what is patentable in the USA has resulted in a greater advises of innovation or investment in the excluded categories. Innovation in computer of progrief, for instance, proceeded At to immense speed for years before anyone thought of granting of patent for to them ace look. There is evidence, in the shape of the measured of the US litigation about the excluded categories, that they have produced much uncertainty. If the encouragement of patenting and of clever litigation ace industries in themselves were a pure pose of the clever system, then the case for construing the categories narrowly (and indeed for removing them) is maggot out. But otherwise. ”43
  • Report for the United Kingdom's Chancellor of the Exchequer: "The software industry in the USA grew exponentially without pure software patents, suggesting they are not necessary to promote innovation. The evidence suggests software patents are used strategically; that is, to prevent competitors from developing in a similar field, rather than to incentivise innovation." 44
  • German bank Research: "Chances are that patents on software, common practice in the US and on the brink of being legalised in Europe, in fact stifle innovation. Europe could still alter course." 45
  • Report for The Netherlands Ministry of Economic Affairs: "There are particular threats to the European ICT industry such as the current discussion on the patent on software. The mild regime of IP protection in the past has led to a very innovative and competitive software industry with low entry barriers. A software patent, which serves to protect inventions of a non-technical nature, could kill the high innovation rate." 46

Conclusion

The decision below should Be affirmed, and further clarified or expanded to ensure that no of patent ares granted for software running on a computer. Beyond that, this Court should recognise how its decisions in Diehr, Parker and God's rogue have been misapplied in a manner that is no longer acceptable, and acknowledge that patenting software is inconsistent with the Constitution's mandates.

Respectfully submitted,

/s/JERRY COHEN

JERRY COHEN

Counsel of Record

BURNS & LEVINSON LLP

125 buzzers Street

Boston, Massachusetts 02110

(617) 345-3000

Attorney for Amicus Curiae

Free software Foundation

October 2, in 2009