No. 08-964
================================================================
In The
Supreme Court of the United States
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BERNARD L. BILSKI and RAND A. WARSAW,
Petitioners,
v.
JOHN J. DOLL, Acting Under Secretary of Commerce
for Intellectual Property and Acting 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
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BRIEF OF AMICI CURIAE
DOLBY LABORATORIES, INC., DTS, INC.,
AND SRS LABS, INC., IN SUPPORT
OF NEITHER PARTY
----------------- ♦ -----------------
JOHN L. COOPER*
NAN E. JOESTEN
DEEPAK GUPTA
FARELLA BRAUN + MARTEL LLP
235 Montgomery Street
San Francisco, CA 94105
(415) 954-4400
Counsel for Amici Curiae
*Counsel of Record
================================================================
COCKLE LAW BRIEF PRINTING CO. (800) 225-6964
OR CALL COLLECT (402) 342-2831
i
QUESTIONS PRESENTED
Whether the Federal Circuit erred by holding
that a “process” must be tied to a particular machine
or apparatus, or transform a particular article into a
different state or thing (“machine-or-transformation”
test), to be eligible for patenting under 35 U.S.C.
§ 101, despite this Court’s precedent declining to limit
the broad statutory grant of patent-eligibility for
“any” new and useful process beyond excluding
patents for “laws of nature, physical phenomena, and
abstract ideas.”
Whether the Federal Circuit’s “machine-or-
transformation” test for patent-eligibility, which
effectively forecloses meaningful patent protection to
many business methods, contradicts the clear
Congressional intent that patents protect “method[s]
of doing or conducting business.” 35 U.S.C. § 273(a)(3).*
* The Amici’s argument is limited to the first question
presented: whether the machine-or-transformation test is an
appropriate test for patentability. The Amici do not express an
opinion on the second question on which certiorari was granted.
ii
TABLE OF CONTENTS
Page
QUESTIONS PRESENTED ..................................
i
STATEMENT OF INTEREST................................
1
INTRODUCTION AND SUMMARY OF ARGU-
MENT ..................................................................
2
ARGUMENT ...........................................................
5
I.
THE
BILSKI TEST INTERJECTED AM-
BIGUITY INTO THE QUESTION OF
WHAT CONSTITUTES PATENTABLE
SUBJECT MATTER AND HAS DIS-
RUPTED THE SETTLED EXPECTATIONS
OF INFORMATION AGE BUSINESSES ...
5
A. The “Machine-or-Transformation Test”
Is Ambiguous As Applied To “Informa-
tion Age” Inventions Like Digital Sig-
nal Processing, Because Such Inventions
Operate On Data And Waveforms
Rather Than Physical “Articles” ...........
6
B. Bilski Admits Its Own Troubling Am-
biguity ....................................................
8
C. Application Of Bilski Has Caused
Serious Problems ................................... 10
D.
The Machine-or-Transformation Test
Elevates Form Over Substance ............ 11
II.
THE BILSKI TEST DEPARTS FROM
DIEHR’S VIEW OF PATENTABILITY ...... 12
iii
TABLE OF CONTENTS – Continued
Page
A. Under Diehr’s Holding, The Only
Exclusions From Patent-Eligibility Are
“Laws Of Nature, Natural Phenomena,
And Abstract Ideas” ............................... 12
B. Diehr’s Practical Application Require-
ment Did Not Require Transformation
Of Physical “Articles” ............................ 15
III. DIEHR IS WELL-SUITED TO THE IN-
FORMATION AGE ...................................... 18
A. Decades Of Post-Diehr Federal Circuit
Precedent Confirm That Data And
Waveform Transformation, Including
Practical Applications of Digital Signal
Processing, Are Properly Patent-
Eligible ................................................... 18
B. If Bilski’s Invention Is To Be Rejected
Based On The Non-Technical Nature
Of The Invention, The Standard Ap-
plied Should Be Precise And Unambig-
uous ........................................................ 22
CONCLUSION ....................................................... 22
iv
TABLE OF AUTHORITIES
Page
FEDERAL CASES
In re Abele, 684 F.2d 902 (Cust. & Pat. App.
1982) ............................................................ 17, 18, 19
In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) ....... 15, 17
Arrhythmia Research Tech., Inc. v. Corazonix
Corp., 958 F.2d 1053 (Fed. Cir. 1992) ........... 3, 19, 20
In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) ......... passim
Cochrane v. Deener, 94 U.S. 780 (1876) ..................... 12
Diamond v. Chakrabarty, 447 U.S. 303 (1980) ......... 17
Diamond v. Diehr, 450 U.S. 175 (1981) ............. passim
Gottschalk v. Benson, 409 U.S. 63
(1972) ............................................... 13, 14, 15, 16, 17
Mackay Radio & Telegraph Co. v. Radio Corp.
of America, 306 U.S. 86 (1939) ............................... 14
In re Nuijten, 500 F.3d 1346 (Fed. Cir.
2007) .......................................................... 6, 7, 20, 21
Parker v. Flook, 437 U.S. 584 (1978) .... 13, 14, 15, 16, 17
CONSTITUTION
U.S. Const. Art. I, Section 8 ................................... 4, 22
FEDERAL STATUTES
35 U.S.C. § 101 ................................................... passim
35 U.S.C. § 273(a)(3) ..................................................... i
1
STATEMENT OF INTEREST
Dolby Laboratories (“Dolby”), DTS, Inc. (“DTS”)
and SRS Labs, Inc. (“SRS”) (herein “Amici”) develop
and deliver audio products and technologies that
make the entertainment experience more realistic
and immersive.
Dolby has over 1100 employees, including techni-
cians, engineers, researchers and scientists who are
vital to Dolby’s patent process. Its worldwide portfolio
includes over 1500 issued patents and over 2000
pending applications. For more than four decades,
Dolby has provided high-quality audio and surround
sound in cinema, broadcast, home audio systems,
cars, DVDs, headphones, games, televisions, and
personal computers. Dolby’s technologies have been
included in more than 3 billion products through
licenses with major manufacturers throughout the
world. For fiscal year 2007, Dolby spent more than
$44 million for research and development and for
fiscal year 2008 more than $62 million.1
DTS is a major provider of high quality branded
entertainment technologies, which have been incorpo-
rated in hundreds of millions of consumer electronics
products manufactured and sold globally by licensee
1 The parties have consented to the filing of this brief. No
counsel for a party authored this brief in whole or in part, and
no counsel or party made a monetary contribution intended to
fund the preparation or submission of this brief. No person other
than Amici, their members, or their counsel made a monetary
contribution to this brief ’s preparation or submission.
2
customers. It has a substantial base of intellectual
property assets, including 42 patent families and 110
individual patents granted worldwide.
SRS develops audio technologies that enable
users to enjoy natural, restored sound from a wide
variety of audio devices. Billions of people worldwide
have purchased audio devices that use SRS’
technologies. These technologies include advanced
audio enhancement, dialog clarity, voice intelligibility,
and surround sound processing. SRS also has a large
worldwide patent portfolio that includes over 100
issued patents and dozens of pending applications.
----------------- ♦ -----------------
INTRODUCTION AND
SUMMARY OF ARGUMENT
In the 28 years since Diamond v. Diehr, 450 U.S.
175 (1981), was decided, this Court has not addressed
the growing ambiguity in Federal Circuit jurispru-
dence regarding the patentability of processes that
apply scientific algorithms to bring into existence
valuable new technological applications. Limiting
patentable processes to those tied to particular
machines or transformations of articles, as required
by the standard set forth in In re Bilski, 545 F.3d 943
(Fed. Cir. 2008), is not required by Title 35, Section
101 of the United States Code as applied in Diehr,
and will unreasonably foreclose valuable techno-
logical development.
3
In the current information age, such a limitation
risks discouraging innovation in new and unforeseen
areas of technology. An example of such valuable
technology that should be unquestionably patentable
is the analysis of echocardiographic signals that
measured heart rate as addressed in Arrhythmia
Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053
(Fed. Cir. 1992). Digital audio signals represent
physical phenomena just the same as echocardio-
graphic signals do. Audio signal processing utilizes
technology such as psychoacoustics to develop
valuable processes for operating on, transforming and
synthesizing new digital audio signals. This is
precisely the kind of innovation that has resulted in
the Amici’s numerous technological innovations that
have enhanced the quality of entertainment.2 Prac-
tical applications of digital signal processing meet the
criteria set forth in Diehr. The manipulation of an
audio signal by application of scientific principles to
achieve a result that has practical application is
patentable irrespective of whether the process is tied
to a particular machine or whether digital audio
signals qualify as “articles.”
2 Company founder Ray Dolby was awarded a Technical
Grammy® from the Recording Academy for “ma[king] a contri-
bution of outstanding technical significance to the recording
field.” Dolby has similarly received two Scientific and Engi-
neering Awards from the Academy of Motion Picture Arts and
Sciences. DTS has also received a Scientific and Engineering
Award from the Academy of Motion Picture Arts and Sciences.
4
Bilski has introduced uncertainty into, and
potentially narrowed the standard for, patentability
that this Court should now clarify. Amici take no
position on whether the business method claims in
Bilski should be rejected. But in the words of Judge
Newman in dissent in Bilski, “[u]ncertainty is the
enemy of innovation.” 545 F.3d at 977. If patentability
of those claims is rejected, it should be because the
concept of hedging risks in commodities trading is of
a non-technical nature.3 That the Bilski claims are
not traditional industrial processes that transform
physical articles is immaterial. The Court should not
throw out the “babies” – patents for valuable
technological innovations in the well-established field
of signal processing – with what it may view as the
“bathwater” of business method patents.
----------------- ♦ -----------------
3 Article I, Section 8 of the U.S. Constitution sets forth the
purpose of the U.S. Patent System as being “to promote the
Progress of Science and useful Arts.”
5
ARGUMENT
I.
THE BILSKI TEST INTERJECTED AMBI-
GUITY INTO THE QUESTION OF WHAT
CONSTITUTES PATENTABLE SUBJECT
MATTER AND HAS DISRUPTED THE
SETTLED EXPECTATIONS OF INFORMA-
TION AGE BUSINESSES.
Although Bilski addressed only an application for
a business method patent, the standard it adopted
impacts a far wider range of inventions than just
business methods. Under Bilski, a process is pat-
entable if it meets the exclusive test of being “(1) . . .
tied to a particular machine or apparatus, or (2)
[
.
.
.
] transform[ing] a particular article into a
different state or thing.” Bilski, 545 F.3d at 954, 964-
65 (“the machine-or-transformation test is the only
applicable test and must be applied”). This test is
problematic because it calls into doubt whether
information age inventions that operate on data or
waveforms are eligible for patenting.
The
Bilski test represents a significant departure
from the standard for patent-eligibility set forth in
Diehr. Diehr established a narrow and well-defined
set of exceptions to patentability, and required only
that a process have practical application to be
eligible. Under Diehr, information age technologies
have routinely been held patent-eligible, and as a
consequence, the field has flourished. Bilski threatens
to disrupt the audio technology industry and under-
mine the settled expectations of intellectual property
6
owners by substituting ambiguity in the place of
Diehr’s certainty.
A. The “Machine-or-Transformation Test”
Is Ambiguous As Applied To “Infor-
mation Age” Inventions Like Digital
Signal Processing, Because Such In-
ventions Operate On Data And Wave-
forms Rather Than Physical “Articles.”
The Bilski test limits patent-eligibility under its
transformation prong to processes that transform
“particular articles.” The word “article” carries with it
sufficient industrial age baggage as to create con-
fusion in the contemporary information age. Because
digital signals and data might not be regarded as
“articles” due to their incorporeal nature, processes
that operate on signals and data might now be
excluded from patent-eligibility at the threshold.4
This, Amici submit, would be error.
4 In In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), the
Federal Circuit traversed each of the categories enumerated in
35 U.S.C. § 101 and found that an audio signal was neither a
process, machine, manufacture or composition of matter and
therefore such a signal did not itself qualify as patentable
subject matter. In reaching this conclusion, the court made a
determination that such a signal is not an “article.” The court
reasoned that an “article” is “a particular substance or com-
modity” and further stated, in reliance on dictionary definitions:
These definitions address “articles” of “manufacture”
as being tangible articles or commodities. A tran-
sient electric or electromagnetic transmission
does not fit within that definition.
(Continued on following page)
7
Such technical inventions are fundamentally
different from business methods and should remain
patent-eligible. Digital audio signals, for example, are
representations of disturbances of sound waves
traveling through the air. Therefore, they represent
something physical. When translated back into sound
waves they impact human eardrums. They can be
shaped and compressed much like the uncured rubber
that was at issue in Diehr. Digital audio signal
processing utilizes research in psychoacoustics to
develop valuable processes for operating on, trans-
forming and synthesizing new digital audio signals.
These processes epitomize the application of science
to the creation or transformation of structures, and
are a far cry from business methods that typically
deal with human social relationships, legal obli-
gations and markets.
In its attempt to rein in business methods, Bilski
has created uncertainty as to the patentability of
technology for processing audio waveforms and other
similar inventions that are the focus of extensive
investment in the contemporary information age.
That the machine-or-transformation test effectively
lumps together such inventions that represent the
practical application of technical principles with
business methods, demonstrates just how far astray
the Federal Circuit has gone in Bilski.
Id. at 1356 (emphasis added). Accordingly, the court concluded
that audio signals lack the substance and tangibility requisite to
being an article.
8
B. Bilski Admits Its Own Troubling Ambi-
guity.
The Bilski ruling expressly acknowledges the
ambiguity that may result from applying its test in
the realm of “information age” processes:
[T]he main aspect of the transformation test
that requires clarification here is what sorts
of things constitute “articles” such that their
transformation is sufficient to impart patent-
eligibility under § 101. It is virtually self-
evident that a process for a chemical or
physical transformation of physical objects or
substances is patent-eligible subject matter. . . .
The raw materials of many information-
age processes, however, are electronic
signals and electronically-manipulated
data. And some so-called business methods,
such as that claimed in the present case,
involve the manipulation of even more
abstract constructs such as legal obligations,
organizational relationships, and business
risks. Which, if any, of these processes
qualify as a transformation or reduction
of an article into a different state or
thing constituting patent-eligible sub-
ject matter?
See Bilski, 545 F.3d at 962 (bold emphasis added).
Bilski’s troubling ambivalence is even more apparent
in its holding:
[C]laim 1 does not involve the transforma-
tion of any physical object or substance, or
an electronic signal representative of
9
any physical object or substance. Given
its admitted failure to meet the machine
implementation part of the test as well,
the claim entirely fails the machine-or-
transformation test and is not drawn to
patent-eligible subject matter.
Id. at 964 (bold emphasis added). Thus, in Bilski
itself, the Federal Circuit applied an expanded scope
of the second prong of its test, one which, correctly,
Amici contend, includes processes that transform “an
electronic signal representative of any physical
object or substance.” Id. (emphasis added).
This prompts the question of whether the second
prong of the test is limited to “articles” at all, whether
signals and data are “actually articles,” or whether
data and signals are not articles and may be excluded
from patent-eligibility. What is clear is that
technology companies should not have to bear the
cross of Bilski’s uncertainty. Bilski’s ambivalent
insertion of an industrial age “article” requirement
within its test for patent-eligibility has done violence
to the settled expectations of intellectual property
leaders like the Amici and has established what
amounts to bad economic policy. By narrowing and
interjecting uncertainty into whether the trans-
formation and analysis of waveforms representing
physical phenomena may be patentable, Bilski casts a
cloud of uncertainty over such far-ranging technology
fields as audio-visual compression and analytics,
medical diagnostics, noise reduction and seismic
analysis. Judge Newman in dissent in Bilski was
10
correct: “Uncertainty is the enemy of innovation.” Id.
at 977. The uncertainty created by Bilski is neither
required by precedent nor proper as a matter of
policy.
C. Application Of Bilski Has Caused
Serious Problems.
Bilski’s machine-or-transformation test does not
merely have the potential to cause confusion and
doubt with respect to the patent-eligibility standard,
it has actually caused such problems. For instance,
the experience of the Amici has been that Examiners
appear to be so uncomfortable with the vagueness of
the transformation prong that they routinely reject
all claims to digital audio coding processes that do not
unambiguously satisfy the machine prong. For
example, Dolby is currently pursuing patent appli-
cations containing process claims that explicitly recite
innovative transformative operations on audio data.
That the processes recited by these claims constitute
practical applications of technological principles is
beyond question. However, Examiners routinely hold
that such claims are directed to nonstatutory subject
matter. In particular, Examiners insist that patent-
eligibility can only be achieved by adding to the
claims phrases such as “wherein X is implemented by
a digital signal processor” or “wherein Y
is performed by a computing device.” Based on
these experiences, it appears that the machine-or-
transformation test has effectively reduced patent-
eligibility determinations within the Patent and
11
Trademark Office to magic word expeditions,
epitomizing the elevation of form over substance.
D. The Machine-or-Transformation Test
Elevates Form Over Substance.
Due to its focus on very specific claim language
characteristics, the machine-or-transformation test
leads to the rejection of legitimate technical
innovations that do not contain “magic words” and
the allowance of claims for non-technical processes
that do.
Any claim, even one for a business method or an
abstract idea, could be formulated to comply with the
machine-or-transformation test with clever drafts-
manship. For example, if the phrase “wherein the
method is performed by a computing device” is added,
the claim may pass muster under the U.S. Patent
Office’s current application of the machine-or-
transformation test.
Prior
to
the
Bilski decision, it would generally
have been considered bad practice to recite specific
hardware in a claim to a method that is hardware-
independent, or to recite what is represented by data
in a claim to a method that is content-independent.
Consequently, adopting the machine-or-transformation
requirement at this point may retroactively
invalidate innumerable already-issued claims to
legitimate technological innovations.
12
II. THE BILSKI TEST DEPARTS FROM
DIEHR’S VIEW OF PATENTABILITY.
A. Under Diehr’s Holding, The Only
Exclusions From Patent-Eligibility Are
“Laws Of Nature, Natural Phenomena,
And Abstract Ideas.”
The machine-or-transformation test, like other
now-abandoned patent-eligibility tests that came
before it, purports to be rooted in the policies
articulated in Diamond v. Diehr, 450 U.S. 175 (1981).
The Diehr standard, however, was not so constricted
as to limit patent-eligibility to processes that are “tied
to a particular machine” or transform a “particular
article.”
Diehr took a broad view of what constitutes a
“process” and imported no extrinsic limitations to
Section 101’s pronouncement that processes are
patentable. The Court noted that Section 101 imposes
no restrictions on process patentability other than
that the process be new and useful. Diehr, 450 U.S. at
183 (citing Cochrane v. Deener, 94 U.S. 780, 787-88
(1876) (“If new and useful, [a process] is just as
patentable as is a piece of machinery.”)); see also 35
U.S.C. § 101. The Court further noted that “Congress
intended statutory subject matter to include anything
under the sun that is made by man.” Diehr, 450 U.S.
at 182 (citation omitted).
In
Diehr, where a process was transformative, its
eligibility for patenting was “not altered by the fact
that in several steps of the process a mathematical
13
equation and a programmed digital computer are
used.” Id. at 185.5 To the contrary, the Court held that
“a process may be patentable, irrespective of the
particular form of the instrumentalities used. . . .” Id.
at 182-83 (citation omitted).
Diehr was a culmination of the Court’s maturing
views on computer software patenting that began
first with Gottschalk v. Benson, 409 U.S. 63 (1972)
and then Parker v. Flook, 437 U.S. 584 (1978). In both
Benson and Flook, claims were ineligible for patenting
because the applicants claimed what the Court be-
lieved to be nothing more than abstract mathematical
formulas that were “like laws of nature.”6
Diehr represented the inverse proposition – a
process that applied a mathematical formula could
5 Significantly, the process at issue in Diehr differed from
the prior art only with respect to steps performed internal to the
general purpose digital computer involved in the rubber-curing
process. The Diehr Court’s allowance of such claims clearly
signaled that an applicant may be entitled to patent protection
even when the inventor’s contribution to the art occurs entirely
within a computing device.
6 In Flook, the Court analogized such formulas to the
Pythagorean theorem. Flook, 437 U.S. at 590. In Diehr, the
Court analogized such formulas to Einstein’s equation E=mc2
and Newton’s law of gravity. Diehr, 450 U.S. at 185. From these
analogies, it is clear that the Court intended the exclusion to
cover only formulas that mathematically represent laws of
nature. However, in the context of computer-implemented
processes, such as digital signal processing, many “formulas” are
based entirely on human ingenuity and not natural laws, and
are therefore not “like laws of nature.”
14
be patentable where the result was practical,
allowing a claim to an improved curing process for
rubber that used the Arrhenius equation. So long as
the equation was practically applied, the process that
used the equation fell outside of the narrow
exclusions set forth in Benson and Flook. The Court
stated:
It is now commonplace that an application of
a law of nature or mathematical formula to a
known structure or process may well be
deserving of patent protection. (Internal
citations omitted). As Justice Stone ex-
plained four decades ago: “While a scientific
truth, or the mathematical expression of it,
is not a patentable invention, a novel and
useful structure created with the aid of
knowledge of scientific truth may be.”
(quoting Mackay Radio & Telegraph Co. v.
Radio Corp. of America, 306 U.S. 86, 94
(1939)).
Diehr, 450 U.S. at 187-88 (emphasis in original).
Thus, Diehr held that using mathematical steps is
not anathema to patent-eligibility where a practical
result follows from the application of such principles.
After Diehr, only “laws of nature, natural phe-
nomena, and abstract ideas” are patent-ineligible.
Diehr, 450 U.S. at 185.7 Because of this holding, Diehr
7 Diehr confirmed that Benson and Flook stand for “no
more” than the exclusion of those three categories from patent-
eligibility. Id. at 185-86 (emphasis added).
15
represented a starting point for future invention in
the realm of computer and information technology. It
was not a cage with which to contain the
contemporary information age.
B. Diehr’s Practical Application Require-
ment Did Not Require Transformation
Of Physical “Articles.”
Diehr held only that claims to a practical
application – internal mathematical operations
notwithstanding – are separate and apart from the
sort of abstract patent-ineligible claims in Benson and
Flook.8 The Bilski Court placed too much emphasis on
Diehr’s use of the term “article” in the statement:
“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.” Diehr, 450 U.S. at 184 (citation omitted).
8 In 1994, the Federal Circuit illustrated a clear under-
standing of this distinction when it stated:
[T]he proper inquiry in dealing with the so called
mathematical subject matter exception to §
101
alleged herein is to see whether the claimed subject
matter as a whole is a disembodied mathematical
concept, whether categorized as a mathematical
formula, mathematical equation, mathematical
algorithm, or the like, which in essence represents
nothing more than a ‘law of nature,’ ‘natural
phenomenon,’ or ‘abstract idea.’ If so, Diehr precludes
the patenting of that subject matter.
In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994, en banc)
(emphasis in original).
16
Diehr found that even a process with mathematical
elements could be patent-eligible where as a whole
the claim is drawn to some practical application;
thus, Diehr was concerned with the practical appli-
cations produced by the steps in a transformative
process, not the nature of the objects in those steps.
The Court did not in any way limit what the objects
of such patent-eligible applications could be. Nor did
it need to in order to harmonize Benson and Flook.
Quite to the contrary, the Diehr opinion oscillates
between the use of the term “article” – which has
connotations of tangibility and physicality – and the
use of the term “structure” – which is broader.
Further, Diehr did not limit patentability to
transformation of physical articles, but noted only
that “articles” are just examples of something that
patent-eligible processes might transform. Diehr, 450
U.S. at 192 (“On the other hand, when a claim
containing a mathematical formula implements or
applies that formula in a structure or process which,
when considered as a whole, is performing a function
which the patent laws were designed to protect (e.g.,
transforming or reducing an article to a different
state or thing), then the claim satisfies the require-
ments of § 101”).
By imposing the requirement that an article
must be transformed to be patentable, Bilski runs
counter to Diehr’s express prohibition against
narrowing the scope of patent-eligibility:
17
. . . in dealing with the patent laws, we have
more than once cautioned that “courts should
not read into the patent laws limitations and
conditions which the legislature has not
expressed.”
Id. at 182 (quoting Diamond v. Chakrabarty, 447
U.S. 303, 308 (1980)) (internal quotation omitted).
Unfortunately, these warnings have largely gone
unheeded.9 The judicial history of Section 101
illustrates a repeated cycle in which lower courts
have used statements from Benson, Flook, and Diehr
as the basis for patent-eligibility tests that go beyond
those “long-established principles,” only later to
abandon those tests when it becomes evident that
they exclude subject matter that the patent system
was clearly intended to cover.10 The establishment of
9 In re Alappat, 33 F.3d 1526, 1543 (Fed. Cir. 1994, en banc)
stands as a noteworthy exception. The Alappat Court recognized
that:
A close analysis of Diehr, Flook, and Benson reveals
that the Supreme Court never intended to create an
overly broad, fourth category of subject matter
excluded from § 101. Rather, at the core of the Court’s
analysis in each of these cases lies an attempt by the
Court to explain a rather straightforward concept,
namely, that certain types of mathematical subject
matter, standing alone, represent nothing more than
abstract ideas until reduced to some type of
practical application, and thus that subject matter
is not, in and of itself, entitled to patent protection.
(Bold emphasis added).
10 See, e.g., Bilski, 545 F.3d at 959 (“we conclude that the
Freeman-Walter-Abele test is inadequate”), and Bilski, at 959-60
(Continued on following page)
18
a machine-or-transformation test by the Federal
Circuit in Bilski is merely the latest iteration of that
cycle. Similar to each of its predecessor tests, that
test excludes a wide range of legitimate technological
innovations, and accordingly should be discarded.
III. DIEHR IS WELL-SUITED TO THE INFOR-
MATION AGE.
A. Decades Of Post-Diehr Federal Circuit
Precedent Confirm That Data And
Waveform Transformation, Including
Practical Applications of Digital Sig-
nal Processing, Are Properly Patent-
Eligible.
The principles set forth in Diehr regarding
patentable subject matter under Section 101 have
proven to be just as applicable to contemporary
information technology as they were to the computer-
aided industrial rubber curing process Diehr
specifically addressed. Three decades of post-Diehr
precedent confirm that practical applications of
digital signal processing and other methods that
operate on incorporeal forms of data are still entitled
to patent protection.
In
In re Abele, 684 F.2d 902 (Cust. & Pat. App.
1982), the predecessor court to the Federal Circuit
Court of Appeals reviewed “an improvement in CAT
(“we also conclude that the ‘useful, concrete and tangible result’
inquiry is inadequate”).
19
scan imaging technique whereby the body [was]
exposed to less radiation and, through use of a
weighting function in the calculations producing
the image, the artifacts [were] eliminated.” Id. at
904. Although an independent claim drawn to a
mathematical algorithm without regard to the data
source was found not to be patent-eligible, the court
did find that a dependent claim tied to “X-ray
attenuation data” was patentable. Id. at 908-09. The
dependent claim did not recite “a mere procedure for
solving a given mathematical problem.” Id. at 909.
Rather, like in Diehr, the improvement “reside[d] in
the application of a mathematical formula within the
context of a process which encompasse[d] signif-
icantly more than the algorithm alone.” Id.11
In
Arrhythmia Research Tech., Inc. v. Corazonix
Corp., 958 F.2d 1053 (Fed. Cir. 1992), the Federal
Circuit held that a mathematical analysis of a digital
representation of an echocardiographic heart reading
that could identify an acute arrhythmia was
patentable. The court found that though there was a
mathematical aspect to the invention, the “input
signals . . . [were] related to the patient’s heart
function,” the transformation of electrical signals
11 In discussing Abele, the Federal Circuit suggested that
the patent-eligible claim recognized a sufficient nexus to the
physical world, noting that the “data clearly represented
physical and tangible objects, namely the structure of bones,
organs, and other body tissues.” See Bilski, 545 F.3d at 963
(discussing Abele).
20
from one form to another was itself physical, and
ultimately “a signal related to the patient’s heart
activity,” something manifestly physical, was the
“resultant output.” Id. at 1059 (emphasis added). The
court expressly noted the analogy to Diehr, stating
“applicants ‘do not seek to patent a mathematical
formula . . . they seek only to foreclose from others
the use of that equation in conjunction with all of the
other steps in their claimed process.’ ” Id. at 1059-60.
The same sort of physicality relied on in Arrhythmia
is found in digital audio signals. Audio signals relate
to sound waves that travel through the air which
when incident on the human ear drum create the
perception of sound. They are analogous to the
echocardiographic signals that measured heart rate,
which were analyzed in Arrhythmia and held to be
patentable.
In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir.
2007) confirmed patent-eligibility of a process for
embedding a digital watermark in a digital audio
signal without comment. Claim 1 of the Nuijten
application, which was not at issue but was
mentioned by the Federal Circuit, illustrates just how
well-entrenched digital audio signal processing has
become as a patent-eligible field.12 This process claim
12 Claim 1 is the broadest process claim allowed. It reads:
A method of embedding supplemental data in a signal,
comprising the steps of:
encoding the signal in accordance with an
encoding process which includes the step of
(Continued on following page)
21
is not tied to a “particular machine” and it operates
on nothing more than an audio “signal” to improve its
quality. A Bilski footnote commented, “[w]e note
that the PTO did not dispute that the process
claims in Nuijten were drawn to patent-eligible
subject matter under § 101 and allowed those
claims.” Bilski, 545 F.3d at 951, n.2 (bold emphasis
added). Though these claims were allowed by the
Patent Office, and were not criticized in Bilski, there
is more than a mere hypothetical concern that such
claims would not be deemed patent-eligible post-
Bilski. See Section IC, supra (post-Bilski, the PTO is
requiring machine references which wrongfully limit
the scope of the invention).
Diehr allows claims that apply mathematical,
scientific or technological principles to achieve a
practical result. This strikes an appropriate balance
between society’s interest in creating incentives for
companies to invest in research and development
versus the need to preserve fundamental principles,
feeding back the encoded signal to control
the encoding; and modifying selected sam-
ples of the encoded signal to represent the
supplemental data prior to the feedback of
the encoded signal and including the mod-
ifying of at least one further sample of
the encoded signal preceding the selected
sample if the further sample modification is
found to improve the quality of the en-
coding process.
Nuijten, 500 F.3d at 1351.
22
abstract ideas and general scientific knowledge to the
public. It should be as effective going forward as it
has been since it was instituted three decades ago.
B. If Bilski’s Invention Is To Be Rejected
Based On The Non-Technical Nature
Of The Invention, The Standard
Applied Should Be Precise And
Unambiguous.
The claimed invention in Bilski is a method of
hedging risks in commodities trading. The Amici take
no position on whether the Bilski claims should be
rejected. If, however, patentability is rejected based
on the non-technical nature of the invention,13 the
standard should be articulated with sufficient pre-
cision as to leave no ambiguity that processes
practically applying scientific and mathematical
technological principles remain patent-eligible.
----------------- ♦ -----------------
CONCLUSION
This Court’s jurisprudence in Diehr provides an
appropriate roadmap for patentability into the 21st
Century. Under Diehr, the manipulation of a
waveform by application of scientific principles to
achieve a result that has practical use is patentable.
Not only does such a test provide certainty and
13 See Article I, Section 8 of the U.S. Constitution.
23
consistency with prior precedent, it is proper policy as
well. Furthermore, this Court should not hold that
patentability requires the transformation of material
or an “article” with the traditional physicality of the
industrial age. Such an interpretation would do
violence to innumerable technological innovations
that have useful, practical application in the infor-
mation age.
Respectfully submitted,
JOHN L. COOPER
FARELLA BRAUN + MARTEL LLP
235 Montgomery Street
San Francisco, CA 94105
(415) 954-4400
Counsel of Record for Amici
Curiae
Dolby
Laboratories,
DTS, Inc., and SRS Labs, Inc.
BRIAN D. HICKMAN
HICKMAN, PALERMO, TRUONG
&
BECKER, LLP
2055 Gateway Place, Ste. 550
San Jose, CA 95110
(408) 414-1080
Of Counsel to Dolby Laboratories
MICHAEL BIBER
HEATH HOGLUND
DOLBY LABORATORIES, INC.
100 Potrero Street
San Francisco, CA 94103
(415) 558-0200
Of Counsel to Dolby Laboratories
24
BLAKE A. WELCHER
WILLIAM L. JOHNSON
DTS, INC.
5171 Clareton Drive
Agoura Hills, CA 91301
(818) 827-2200
Of Counsel to DTS, Inc.
JOHN R. KING
KNOBBE MARTENS OLSON
&
BEAR, LLP
2040 Main Street, Ste. 1400
Irvine, CA 92614
(949) 721-2998
Of Counsel to SRS Labs, Inc.
Document Outline
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