No. 08-964
IN THE
Supreme Court of the United States
 
BERNARD L. BILSKI and RAND A. WARSAW,
Petitioners,
v.
JOHN DOLL, Acting Under Secretary of Commerce
for Intellectual Property and Acting Director,
Patent and Trademark Office, Respondent.
_______________________________
ON WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
BRIEF OF AMICUS CURIAE INTELLECTUAL
PROPERTY OWNERS ASSOCIATION
IN SUPPORT OF NEITHER PARTY
STEVEN W. MILLER, President
GEORGE L. GRAFF
RICHARD F. PHILLIPS, Chair,
Counsel of Record
Amicus Brief Committee
112 Holly Place
INTELLECTUAL PROPERTY
Briarcliff Manor, NY 10510
OWNERS ASSOCIATION
(914) 762-3706
1501 M Street, NW
Suite 1150
ERIC E. BENSEN
Washington, DC 20005
384 Euston Road South
(202) 507-4500
Garden City, NY 11530
(516) 486-2250
Counsel for Amicus Curiae
224372
A
(800) 274-3321 • (800) 359-6859

i
Cited Authorities
TABLE OF CONTENTS
Page
TABLE OF CITED AUTHORITIES  . . . . . . . . .
i
INTEREST OF AMICUS CURIAE  . . . . . . . . . .
1
INTRODUCTION  . . . . . . . . . . . . . . . . . . . . . . . . . .
2
SUMMARY OF ARGUMENT  . . . . . . . . . . . . . . .
4
ARGUMENT  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
8
A. The Machine or Transformation Test –
Properly Construed – is One Approach to
Determine Patentability of a Process  . . .
8
B. The Transformation of Matter Test Must
Be Construed and Applied in a Manner
that Recognizes and Applies Modern
Technology  . . . . . . . . . . . . . . . . . . . . . . . . . . .
13
C. A Computer or Other Device that has
been Programmed to Perform a Claimed
Function is a “Particular Machine”  . . . . .
19
CONCLUSION  . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
28
APPENDIX  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
1a

ii
T
Cited Authorities
ABLE OF CITED AUTHORITIES
Page
CASES
Cochrane v. Deener,
94 U.S. 780 (1876)  . . . . . . . . . . . . . . . . . . . . . . . . 10, 24
Corning v. Burden,
56 U.S. (15 How.) 252 (1853)  . . . . . . . . . . . . . . .
9
Diamond v. Chakrabarty,
447 U.S. 303 (1980)  . . . . . . . . . . . . . . . . . . . 4, 5, 9, 10
Diamond v. Diehr,
450 U.S. 175 (1981)  . . . . . . . . . . . . . . . . . . . . . passim
Dolbear v. American Bell Tel. Co.,
126 U.S. 1 (1888)  . . . . . . . . . . . . . . . . . . . . . . 15, 16, 23
Expanded Metal Co. v. Bradford,
214 U.S. 366 (1909)  . . . . . . . . . . . . . . . . . . . . . . .
16
Gottschalk v. Benson,
409 U.S. 63 (1972)  . . . . . . . . . . . . . . . . . . . . . . . passim
In re Abele,
684 F.2d 902 (C.C.P.A. 1982)  . . . . . . . . . . . . . . . . 3, 17
In re Bilski,
545 F.3d 943 (Fed. Cir. 2008)  . . . . . . . . . . . . . passim
In re Meyer,
688 F.2d 789 (C.C.P.A. 1982)  . . . . . . . . . . . . . . . .
3

iii
Cited Authorities
Page
Le Roy v. Tatham,
14 How. 155 (1852)  . . . . . . . . . . . . . . . . . . . . . . . .
5
O’Reilly v. Morse,
15 How. 61 (1853)  . . . . . . . . . . . . . . . . . . . . . . . passim
Parker v. Flook,
437 U.S. 584 (1978)  . . . . . . . . . . . . . . . . . . . . . passim
Risdon Iron & Locomotive Works,
158 U.S. 68 (1895)  . . . . . . . . . . . . . . . . . . . . . . . . 11, 16
State St. Bank & Trust Co.
v. Signature Fin. Group,
149 F.3d 1368 (Fed. Cir. 1998)  . . . . . . . . . . . . . .
4
Tilghman v. Proctor,
102 U.S. 707 (1881)  . . . . . . . . . . . . . . . . . . . . . . .
23
CONSTITUTIONAL PROVISIONS
U.S. Const., art. I, § 8  . . . . . . . . . . . . . . . . . . . . . . . 9, 13
STATUTES
35 U.S.C. § 101  . . . . . . . . . . . . . . . . . . . . . . . . . . . passim

1
INTEREST OF AMICUS CURIAE
Amicus curiae Intellectual Property Owners
Association (“IPO”) is a trade association representing
companies and individuals in all industries and fields of
technology who own or are interested in U.S. intellectual
property rights.1 IPO’s membership includes more than
200 companies and a total of nearly 11,000 individuals
who are involved in the association either through their
companies or as inventor, author, executive, law firm, or
attorney members. Founded in 1972, IPO represents the
interests of all owners of intellectual property. IPO
members receive about thirty percent of the patents
issued by the Patent and Trademark Office to U.S.
nationals. IPO regularly represents the interests of its
members before Congress and the PTO and has filed
amicus curiae briefs in this Court and other courts on
significant issues of intellectual property law. The
members of IPO’s Board of Directors, which approved
the filing of this brief, are listed in the Appendix.2 IPO
generally adheres to a policy of submitting amicus briefs
on significant issues affecting its members. Because of
the central importance of the scope of patent eligible
subject matter under 35 U.S.C. § 101, IPO has
1. No counsel for a party authored this brief in whole or in
part, and no such counsel or party made a monetary contribution
intended to fund the preparation or submission of this brief.
No person other than the amicus curiae, or its counsel made a
monetary contribution to its preparation or submission.  The
parties have consented to the filing of this brief and such
consents are being lodged herewith.
2. IPO procedures require approval of positions in briefs
by a three-fourths majority of directors present and voting.

2
authorized the filing of this brief urging this Court to
adopt its members’ view of that scope as set forth below.
IPO expressly declines, however, to take any position
on whether claim 1 of the 08/833,892 patent application,
which was at issue below, claims patent eligible subject
matter under § 101.
INTRODUCTION
The patent claim at issue in this case is directed to
a method for hedging risk in the field of commodities
trading. In re Bilski, 545 F.3d 943, 949 (Fed. Cir. 2008)
(“Bilski”). Under the claimed method, a provider of a
commodity, such as coal, would initiate a series of
transactions with consumers at a fixed rate to insulate
them from higher rates that would result from a spike
in demand due to unusually cold weather. Id. The
provider would then initiate transactions with coal
suppliers at a second fixed rate that would insulate them
from lower prices for coal that would result from a drop
in demand due to unusually warm weather. Id. The
offsetting positions would then operate as a hedge for
the provider against unusual demand for coal. Id. The
Patent & Trademark Office (“PTO”) rejected the claim
as not directed to patentable subject matter under 35
U.S.C. § 101. Id.
In affirming that result, the Federal Circuit held
that this Court’s decisions in Diamond v. Diehr, 450
U.S. 175 (1981) and Gottschalk v. Benson, 409 U.S. 63
(1972) establish a “definitive test” for determining the
patent eligibility of a claimed process: whether the
process “(1) . . . is tied to a particular machine or
apparatus or (2) . . . transforms a particular article into

3
a different state or things” (the “Machine or
Transformation Test”). Id. at 954. Although the court
held that there was no basis for doing so now, it did note
that “future developments in technology and the
sciences may present difficult challenges to the machine-
or-transformation test” and opined that that this Court
“may ultimately decide to alter or perhaps even set
aside this test to accommodate emerging technologies.”
Id. at 956.
The Federal Circuit then went on to discuss how
the test would apply in various circumstances,
concentrating on its own prior decisions and those of its
predecessor, the Court of Customs and Patent Appeals.
Id. at 961-63. Because the Bilski claim admittedly did
not require the use of any machine to practice the
claimed process, the Federal Circuit did not attempt to
define the scope of the “particular machine” aspect of
the test, but concentrated its analysis to a discussion of
what constitutes a “transformation into a different state
or thing.” Id. at 962.
Noting that it was “virtually self-evident that a
process for a chemical or physical transformation of
physical objects is patent-eligible subject matter,” the
court focused its discussion on electronic signals and
electronically manipulated data, which it described as
“the raw materials of many information-age processes.”
Id. at 962. Pointing to its predecessor’s decisions in
In re Abele,  684 F.2d 902 (C.C.P.A. 1982),  and  In re
Meyer, 688 F.2d 789 (C.C.P.A. 1982), the Federal Circuit
concluded that a display of data that “did not specify
any particular type of data; nor . . . specify how or
from where the data was obtained or what the data

4
represented” would be insufficient, but that “the
transformation of that raw data into a particular visual
depiction of a physical object on a display was sufficient”
to meet the test. Id.
As for so called “business method” patents, such as
the one involved in this case, the Federal Circuit held
that “transformations or manipulations simply of public
or private legal obligations or relationships, business
risks, or other such abstractions cannot meet the test
because they are not physical objects or substances, and
they are not representative of physical objects or
substances.” Id. at 962. However, the court took pains
to reaffirm its holding in State St. Bank & Trust Co. v.
Signature Fin. Group, 149 F.3d 1368 (Fed. Cir. 1998),
that “business method claims . . . are ‘subject to the
same legal requirements for patentability as applied to
any other process or method.’” 545 F.3d at 960 (quoting
State St. Bank & Trust Co., 149 F.3d at 1375-76).
SUMMARY OF ARGUMENT
In crafting the language defining potentially
patentable subject matter, Congress used sweeping
language, “Whoever invents or discovers any new and
useful process . . . may obtain a patent . . .” 35 U.S.C.
§ 101. It is telling that Congress chose to make no carve
outs from its formulation of potentially patentable
subject matter. IPO urges this Court to reaffirm prior
precedent that patent eligible subject matter is to be
broadly construed. Diamond v. Chakrabarty, 447 U.S.
303 (1980) at 308 (“In choosing such expansive terms as
‘manufacture’ and ‘composition of matter,’ modified by
the comprehensive ‘any,’ Congress plainly contemplated

5
that the patent laws would be given wide scope.”).
Previously, this Court has found only three limited
exceptions to patentability.3 Today more than ever, a
flexible approach to interpreting the statutory
framework of the 1952 Patent Act and applying the
Machine or Transformation Test is necessary in
distinguishing abstract ideas from practical applications
of ideas in constantly changing and rapidly evolving
areas of human endeavor. See Chakrabarty, 447 U.S. at
309 (noting comments of the principal draftsman of the
1952 recodification that “anything under the sun made
by man” is patentable subject matter).
IPO believes the Machine or Transformation Test
is consistent with this Court’s precedents, but, properly
understood it is simply a method for distinguishing
between patentable subject matter and “laws of nature,
natural phenomena, and abstract ideas,” which this
Court has clearly held to be unpatentable subject
matter. Diehr, 450 U.S. at 185. Thus, IPO asks this Court
to make clear that the Machine or Transformation test
is not the exclusive test, and to expressly authorize the
courts and the PTO to develop alternative approaches
to analyze particular claimed inventions on a case-by-
case basis, within the broader framework. Said another
way, IPO advocates that while the Machine or
Transformation test is a clue, but not the only clue, to
patent eligibility under § 101.
3. The laws of nature, physical phenomena, and abstract
ideas have been held not patentable. See Parker v. Flook, 437
U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, (1948);
O’Reilly v. Morse, 15 How. 61, 112-121 (1853); Le Roy v. Tatham,
14 How. 155, 175 (1852).

6
Further, there are significant gaps in the Federal
Circuit’s discussion of the application of the Machine
and Transformation Test to contemporary and future
technological developments, most particularly to the use
of computers, which IPO urges this court to address in
order to reduce confusion and uncertainty in the courts
and the PTO. Moreover, in the one area it did discuss at
some length – processes involving the use of electronic
signals to transmit information, IPO believes that the
Federal Circuit’s discussion unduly focuses on the
contents of the data – particularly whether or not the
data creates an image of physical objects – rather than
the manner in which those signals are generated.
In particular, IPO believes that this Court’s long
standing precedent, and the need to provide appropriate
protection to valuable innovative technologies, require
that a claim that sets out a method for changing any
existing state of matter, including by generating or
modifying an electrical, optical or any other type of
signal to transmit information, is patentable, regardless
of whether the subject matter being conveyed relates
to images or physical objects, methods of doing
business, mathematical functions, or even video games,
so long as the methodology for producing the signals
are sufficiently defined and the claims meet the other
standards for patentability under the Patent Act.
In addition, IPO believes that a discussion of the
application of the “particular machine” to the computers
and other programmable devices, which have already
replaced mechanical devices and “hard wired” circuitry
in so many areas of contemporary life, can no longer be
avoided. Although admittedly not specifically involved

7
in this case, the failure to address the applicability of
the “particular machine” to devices whose prevalence
and significance could hardly have been imagined when
that test was originally articulated by this court, has
created huge uncertainty, not only as to the
patentability of future inventions, but to the validity of
some of the most valuable and important patents
currently in effect, that is sure to engender extensive
litigation and have a chilling effect on the investment in
the research and development activities that are so
important to the future strength of American industry
and our ability to maintain our status in an increasingly
competitive global economy.
IPO believes that the history of the development of
the “particular machine” requirement clearly points the
way to the appropriate application of that test to
computers and other programmable devices: a process
that is tied to the use of a programmable device,
including a general purpose computer, generally
satisfies the “particular machine” requirement for
patent eligibility so long as the claim that requires that
the device be programmed to perform the functions
specified in the claim in the manner contemplated
by the inventor and the claim otherwise meets the
novelty, usefulness, non-obviousness and disclosure
requirements of the Patent Act.

8
ARGUMENT
A. The Machine or Transformation Test – Properly
Construed – is One Approach to Determine
Patentability of a Process
IPO believes that the Machine or Transformation
Test is consistent with this Court’s precedents and
serves as one appropriate measure for determining the
patentability of processes, provided the test is construed
and applied in a manner that adequately takes into
account the broad statutory language of the Patent Act,
this Court’s precedent and existing and future
technology. However, the statutory language of the
Patent Act is broad, and the mushrooming of
developments in such fields as nanotechnology, applied
quantum mechanics and genomics, render it unwise to
adopt a test for patentability that would or should
necessarily apply to claims involving innovations for
which the appropriateness of the test have never been
considered. Rather, this Court should continue, as it did
in Benson, to expressly recognize that other standards
or analytic frameworks may apply in cases involving
claims that are fundamentally different from those
that this Court has previously had an opportunity to
pass upon. Gottschalk v. Benson, 409 U.S. 63, 70 (1972)
It is argued that a process patent must either
be tied to a particular machine or apparatus
or must operate to change articles or
materials to a ‘different state or thing.’ We do
not hold that no process patent could ever
qualify if it did not meet the requirements of
our prior precedents.

9
Subject to the exceptions described above, the
patent statute provides a very broad and expansive
framework for what may be patented:
Whoever invents or discovers any new and
useful  process, machine, manufacture, or
composition of matter, or any new and useful
improvement thereof, may obtain a patent
therefor, subject to the conditions and
requirements of this title. (emphasis added)
35 U.S.C. § 101.
This expansive breadth was intended by Congress4
to accomplish its Constitutional imperative to “promote
the Progress of Science and useful Arts” by “securing
for limited Times to . . . Inventors the exclusive Right
to their . . . Discoveries.” U.S. Const., art. I, § 8, cl. 8
(pertinent part).
The Machine or Transformation Test, properly seen,
has been one way that the Court has determined
whether a given process is patentable. Other Courts
have asked whether the invention claims a “practical
method or means of producing a beneficial result or
effect” (Diamond v. Diehr 182, n.7 (quoting Corning v.
Burden, 56 U.S. (15 How.) 252, 267-68 (1853)) (emphasis
added). Although this brief will generally leave to others
a detailed analysis of the history of the development of
the Machine or Transformation Test, we note that this
Court has used that particular test as simply one way
4. This Court previously took note of the legislative intent
behind the 1952 Patent Act. See Chakrabarty footnote 6.

10
to determine whether an invention claims a practical
method or merely an abstract idea. See Chakrabarty Id.
The “machine” aspect of the particular test traces
its origin at least to this Court’s decision in O’Reilly v.
Morse, 56 U.S. 62 (1854), discussed more fully at p. 19,
infra,  while the “transformation” aspect was initially
expressed in Cochrane v. Deener, 94 U.S. 780 (1877), in
which the Court, after noting that the claims in issue
did not require any particular configuration of
machinery, nevertheless held that a patentable “process”
would include:
[A] mode of treatment of certain materials to
produce a given result. It is an act, or a series
of acts, performed upon the subject-matter
to be transformed and reduced to a different
state or thing.
94 U.S. at 788.
Starting in the early 1970’s, this Court considered
a trio of cases involving the patentability of process
claims, starting with Gottschalk v. Benson, 409 U.S. 63
(1972), continuing with Parker  v.  Flook,  437 U.S. 584
(1978), and culminating in Diamond v. Diehr, 450 U.S.
175 (1981), in which this Court summarized its
precedents in the following terms:
This Court has undoubtedly recognized limits
to §  101 and every discovery is not embraced
within the statutory terms. Excluded from
such patent protection are laws of nature,
natural phenomena, and abstract ideas. “An

11
idea of itself is not patentable.” “A principle,
in the abstract, is a fundamental truth; an
original cause; a motive; these cannot be
patented, as no one can claim in either of them
an exclusive right.”
450 U.S. at 185 (internal citations omitted).
The  Diehr  majority stressed that the Court’s
holdings in Benson and Flook “stand for no more than
these long-established principles.” Id. As this Court has
recognized, the need to distinguish between patent
eligible processes and unpatentable abstract ideas or
laws of nature has always presented the courts with
difficult issues. See, e.g., Parker v. Flook, 437 U.S. 584,
589 (1978) (“The line between a patentable ‘process’ and
an unpatentable ‘principle’ is not always clear.”); Risdon
Iron & Locomotive Works, 158 U.S. 68, 71 (1895) (“That
certain processes of manufacture are patentable is as
clear as that certain others are not, but nowhere is the
distinction between them accurately defined.”).
Accordingly, the Machine or Transformation Test must
not be applied rigidly, and indeed there are instances in
which it is inappropriate. It is one useful approach to
determine whether a claimed process falls within § 101,
but it cannot be definitively stated to be the exclusive
approach. The analysis necessarily must adapt to the
specific facts of each form of practical innovation.
Indeed, the opinion of the Federal Circuit itself
recognizes the difficulty of a “one size fits all” test:
. . . [W]e agree that future developments
in technology and the sciences may present

12
difficult challenges to the machine-or-
transformation test, just as the widespread
use of computers and the advent of the
Internet has begun to challenge it in the past
decade. Thus, we recognize that the Supreme
Court may ultimately decide to alter or
perhaps even set aside this test to
accommodate emerging technologies.
545 F.3d at 956.
It is hard to imagine any single test sufficing to
differentiate patentable processes from unpatentable
subject matter under §101. No matter how the Machine
or Transformation test is formulated and refined, there
will always be scope for innovation outside such test,
while also falling outside this Court’s long established
exclusion of “abstract ideas, laws of nature and natural
phenomenon”.
In sum, IPO believes that the Court should again
recognize, as it did in Benson, the possibility that
process claims might not fit neatly into the Machine or
Transformation Test, and may require the application
of a modified or different standard in order to
appropriately accord with the broad legislative
framework that Congress has set forth.5 IPO believes it
is important for this Court not to mandate that the
Machine or Transformation Test be applied rigidly, but
rather to leave to the PTO and lower courts the freedom
5. In Benson, this Court took pains to point out that it was not
holding that “no process patent could ever qualify if it did not
meet the requirements of our prior precedents.” 409 U.S. at 7.1.

13
to consider other tests that can accommodate
innovations that do not fit within the confines of
the Machine or Transformation Test, and which
nevertheless should be eligible for patent protection in
order the comply with the overall policy of the Patent
Act and the constitutional grant to Congress “To
promote the Progress of Science and useful Arts by
securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and
Discoveries.” U.S. CONST. art. 1, § 8.
B. The Transformation of Matter Test Must Be
Construed and Applied in a Manner that
Recognizes and Applies Modern Technology
Although, as noted above, IPO remains concerned
that many areas of practical innovation may
unnecessarily be precluded from patent protection if the
Machine or Transformation Test is held to be the sole
test for eligibility, another pressing concern is that the
courts and the PTO may construe and apply the existing
test in a narrow and restrictive manner that further
limits the availability of patent protection. In particular,
IPO believes that when applied, both aspects of the test
must be applied in a manner which clearly recognizes
the significance and implications of modern technology
on what constitutes a “machine” and the myriad ways
in which the states of matter can be “transformed” in
order to accomplish useful functions.
With respect to the “transformation” aspect of the
test, the Federal Circuit noted that it is “virtually self-
evident that a process for a chemical or physical
transformation of physical objects” is patent-eligible

14
subject matter. Although that is certainly true, those
concepts must incorporate a recognition that matter and
its properties can be physically and chemically
transformed in a host of ways that were not remotely
conceived of when the test was first articulated,
including, but certainly not limited to modifying the DNA
molecules of biological cells, and inducing and modifying
the energy states of matter to control the output of
electro-magnetic, nuclear or other forms energy or the
quantum states of subatomic particles. IPO believes
that any process which can change these or any other
attributes of matter from their pre-existing state in
order to perform useful functions fit within the rubric
of transformation of matter under this Court’s
precedents and that this Court’s opinion in this matter
should clearly so state.
A particularly important (although hardly the only)
area in which this issue has arisen is in patents involving
the generation or modification of electronic, optical or
other forms of signals that are used to convey
information. In its decision below, the Federal Circuit
recognized such signals as the “raw materials of many
information age processes” and discussed at some length
the applicability of the test to such signals. 545 F.3d at
962. However, without citing any authority of this Court,
the Federal Circuit applied the “transformation” test in
a manner that drew a distinction based not on whether
the process itself involved a transformation of matter,
but on the subject matter of the information that was
being conveyed, concluding that a process that
generated an image that happened to represent physical
or tangible objects or substances would be patentable,
but implying that a new method for generating signals

15
to convey “abstract constructs such as legal obligations,
organizational relationships and business risks” would
not be.
In fact, however, this Court has long recognized the
patentability of processes involving generation and
modification of electrical and other forms of signals to
convey information without regard to the subject matter
of the information being conveyed. Indeed, one of the
oldest and most well known examples of the application
of the transformation test to a process for using
electrical signals to convey information, not mentioned
or considered in the decision below, is this Court’s
decision in the “Telephone Cases,” i.e.,  Dolbear v.
American Bell Tel. Co., 126 U.S. 1 (1888).
One of Alexander Graham Bell’s claims involved in
those cases was for a “method of and apparatus for
transmitting vocal or other sounds telegraphically . . .
by causing electrical undulations, similar in form to the
vibrations of the air accompanying the said vocal or other
sounds . . . .” Id. at 531. As described in the specification,
the invention consisted “in the employment of a
vibratory or undulatory current of electricity, in
contradistinction to a merely intermittent or pulsatory
current, and of a method of, and apparatus for,
producing electrical undulations upon the line wire.” Id.
In sustaining the patentability of the claimed
method portion of the claim as an “art” or “process” (the
two words have historically been used interchangeably
in patent law), independent of the particular means or
device for creating them, the Court pointed out that the

16
generation of the electrical signals inherently required
a transformation from that which existed in nature:
In this art — or, what is the same thing under
the patent law, this process, this way of
transmitting speech — electricity, one of the
forces of nature, is employed; but electricity,
left to itself, will not do what is wanted. The
art consists in so controlling the force as to
make it accomplish the purpose.
126 U.S. at 532.
Thus, the claim met the “transformation” test not
because of its subject matter – which required no
images of physical objects or even a reproduction of
intelligible speech – but because it required
transformation of electricity from its natural state “by
gradually changing the intensity of a continuous electric
current, so as to make it correspond exactly to the
changes in the density of the air caused by the sound of
the voice.” Id. at 533.
This Court’s holding that the Bell claim met the
statutory definition of a patentable “useful art,” has been
repeatedly cited with approval by this Court. Seee.g.,
Gottschalk v. Benson, 409 U.S. at 68-69; Expanded Metal
Co. v. Bradford, 214 U.S. 366, 384, 385 (1909) (citing the
Telephone Cases, among others, to illustrate the
breadth of processes that can be properly claimed by a
patent); Risdon Iron & Locomotive Works, 158 U.S. at
76-77 (referring to the Telephone Cases as “the most
important case in which a patent for a process was
considered”). Notably, however, the claim would not have

17
survived the “transformation” test as construed in the
opinion below since the claim “did not specify any particular
type of data; nor … specify how or from where the data
was obtained or what the data represented;” nor provide
that the signal being generated convey an image of a
physical object.6
Although it is perhaps the most prominent example,
the Bell claim is hardly unique in illustrating the divide
between this Court’s precedent and the more restrictive
construction of the Machine or Transformation Test
applied by the Federal Circuit in its decision below. Another
important example is provided by U.S. Patent No.
1,342,885 (the “Armstrong Patent”), which disclosed the
process for converting radio signals that made FM
transmissions feasible. Claim 1 of the patent read:
The method of amplifying and receiving high
frequency electrical oscillatory energy which
comprises, combining the incoming energy with
locally generated high frequency continuous
oscillations of a frequency differing from said
incoming energy by a third readily-amplifiable
high frequency, converting the combined energy
by suitable means to produce said readily-
amplifiable high frequency oscillations,
amplifying the third said high frequency
oscillations, and detecting and indicating the
resulting amplified oscillations.
There is little doubt that the Armstrong patent, as a
method of changing the state of electronic signals,
6. Notably, neither Bilski nor In re Abele cite to the
Telephone Cases.

18
claimed patent eligible subject matter under the holding
of the Telephone Cases. However, it would be unlikely
to survive the holding of Bilksi because the claim says
nothing about particular types of data or an image
representing a physical object. Another example is
provided by U.S. Patent No. 4,901,307 (the “Gilhousen
Patent”), which, in claim 33, claimed a fundamental
process for cell phone communication comprised of
various steps for providing, converting and transmitting
communication signals. Again, there is little doubt that
the Gilhousen Patent claimed eligible subject matter
under the holding of Telephone Cases, but it too could
not have survived the holding of Bilksi that a claim that
“did not specify any particular type of data; nor . . .
specify how or from where the data was obtained or what
the data represented” is unpatentable.
IPO urges this Court to recognize that not only the
generation and modification of electrical signals, but any
other process that can alter the attributes of matter or
energy from their pre-existing state, whether by
manipulating the optical, phasic, genetic, magnetic,
gravitational, quantum mechanical or any other
attribute capable of being generated or modified and
detected in order to perform a useful function, should
qualify as patentable subject matter, and that the court
should decisively reject the notion that the patentability
of a process of conveying, manipulating or displaying
information using such signals turns on the source or
subject matter of the information being conveyed or
whether it can generate a visual depiction of a physical
object.

19
C. A Computer or Other Device that has been
Programmed to Perform a Claimed Function
is a “Particular Machine”
Citing the fact that the Bilski invention did not
involve the use of a computer to implement its claimed
process, the Federal Circuit decided to “leave to future
cases the elaboration of the precise contours of machine
implementation, as well as the answers to particular
questions, such as whether or when recitation of a
computer suffices to tie a process claim to a particular
machine.” 545 F.3d at 962. Although IPO recognizes the
general wisdom of declining to rule upon issues that are
not presented by the specific facts of the case before
the court, it considers the question of patentability of
computer implemented processes to be critically
important and anticipates that this Court will be more
than sufficiently briefed on the subject in this case to
justify providing the practitioners the IPO represents,
along with the PTO and the courts, with some guidance
on the critical question of the patentability of process
claims involving the use computers and other
programmable devices.
In particular, IPO believes strongly that a blanket
exclusion from patentability of processes implemented
through the use of computers and other programmable
devices would be harmful as a matter of policy and
unjustified in light of the purpose and function of the
“particular machine” test as it has developed in this
Court’s jurisprudence. The use of computers and other
programmable devices to perform functions that have
been historically performed by mechanical devices or
hard-wired circuitry has become so pervasive that a

20
blanket exclusion of process patents implemented
through programmable devices would eliminate patent
protection for a wide swath of our modern economy that
has been built and developed in large part in reliance
on the availability of such protection. Almost all analog
electronics can now be represented mathematically and
reproduced through modern digital circuitry and there
is no logical basis for treating the invention of, for
example, analog filtering processes accomplished
through the use of “old fashioned” discrete resistors,
capacitors, transistors and other conventional
components differently from those which accomplish
similar functions by programming the circuitry in a
general purpose microprocessor to perform the same
function. Yet, today, those functions, and indeed virtually
all of the functionality of radios, televisions, telephones
and many functions historically performed by mechanical
devices such as clocks, adding machines, linotype
machines and cameras, are now implemented primarily
through the use of the software controlled operation of
microprocessors capable of performing a wide variety
of functions. In essence, once they have been
programmed, “general purpose” computers become
special purpose machines on a practical level and it
would unjustifiably exclude large areas of technology
from patent protection if they were simply excluded
because the machine that was designed to implement
them is capable of performing other functions as well.
To be sure, IPO recognizes that a general
requirement that some unspecified function be
performed on a computer, without more, may not be a
sufficient designation of a “particular machine” for
purposes of the Machine or Transformation Test.

21
However, a review of the historical development of the
“particular machine” requirement points to the
conclusion that the requirement can and should be
deemed to be satisfied so long as the claim inherently
requires that the computer or device be programmed
to perform its function in the particular manner that
was conceived by the inventor.
 The “particular machine” aspect of the Machine or
Transformation Test was developed more than 150 years
ago as a way to satisfy this Court’s concern that a patent
not be used to give the patentee exclusive rights in a
fundamental principle (i.e., a law of nature, abstract idea
or natural phenomena): where a process is tied to a
“particular” machine, all other means of executing the
process remain open to the public such that there is no
danger of giving one patentee exclusive rights in natural
principle or a means of usefully employing such
principles that he or she did not invent. 7 This concern
7. It will be helpful here to distinguish between limiting a
process to a particular means of execution, which, as discussed
above, leaves the process open to be executed by other means,
and limiting a process to a field of use. In the latter situation,
all other means of executing the process within the field of use
would still be cut off from the public and would not ameliorate
the danger that, in fact, the patentee received exclusive rights
in a fundamental principle. The Federal Circuit recognized that
distinction in its decision below, noting that “pre-emption of all
uses of a fundamental principle in all fields and pre-emption of
all uses of the principle in only one field both indicate that the
claim is not limited to a particular application of the principle”
(citing Diehr, 450 U.S. at 193 n.14 (“A mathematical formula in
the abstract is nonstatutory subject matter regardless of
whether the patent is intended to cover all uses of the formula
or only limited uses.”).

22
was initially articulated by this Court’s holding in
O’Reilly v. Morse, 56 U.S. 62 (1854), where the Court
rejected a claim directed at the use of electro-
magnetism, however created, for imprinting intelligible
characters as not patent eligible. Id. at 120. The
rationale for this result, as expressed by the court, was
the need to assure that the inventor’s patent was limited
to the process that he invented and would not foreclose
others from inventing different, and potentially superior
methods of accomplishing similar results:
If this claim can be maintained, it matters not
by what process or machinery the result is
accomplished. For aught that we now know some
future inventor, in the onward march of science,
may discover a mode of writing or printing at a
distance by means of the electric or galvanic
current, without using any part of the process
or combination set forth in the plaintiff ’s
specification. His invention may be less
complicated — less liable to get out of order —
less expensive in construction, and in its
operation. But yet if it is covered by this patent
the inventor could not use it, nor the public have
the benefit of it without the permission of this
patentee.
Nor is this all, while he shuts the door against
inventions of other persons, the patentee would
be able to avail himself of new discoveries in the
properties and powers of electro-magnetism
which scientific men might bring to light. For
he says he does not confine his claim to the
machinery or parts of machinery, which he

23
specifies; but claims for himself a monopoly in
its use, however developed, for the purpose of
printing at a distance. New discoveries in
physical science may enable him to combine it
with new agents and new elements, and by that
means attain the object in a manner superior to
the present process and altogether different
from it. And if he can secure the exclusive use
by his present patent he may vary it with every
new discovery and development of the science,
and need place no description of the new
manner, process, or machinery, upon the records
of the patent office. And when his patent expires,
the public must apply to him to learn what it is.
In fine he claims an exclusive right to use a
manner and process which he has not described
and indeed had not invented, and therefore
could not describe when he obtained his patent.
The court is of opinion that the claim is too broad,
and not warranted by law.
56 U.S. at 113.
This holding was further explained in the Telephone
Cases where this Court stated that “[t]he effect of [the
O’Reilly] decision was, therefore, that the use of
magnetism as a motive power, without regard to the
particular process with which it was connected in the
patent, could not be claimed, but that its use in that
connection could.” 126 U.S. at 534; see also Tilghman
v. Proctor, 102 U.S. 707, 726-727 (1881)
The eighth claim of Morse’s patent was held
to be invalid, because it was . . . not for a

24
process, but for a mere principle. It amounted
to . . . a claim of the exclusive right to the use
of electro-magnetism as a motive power for
making intelligible marks at a distance; that
is, a claim to the exclusive use of one of the
powers of nature for a particular purpose. It
was not a claim of any particular machinery,
nor a claim of any particular process for
utilizing the power; but a claim of the power
itself . . . .
(emphasis added).
These cases make it clear that the underlying
purpose of the machine prong of the Test is to insure
that the process claimed is no broader than the
particular process that the inventor conceived. To put
it simply, the machine embodies a particular manner of
executing the process, thereby insuring that all other
manners of accomplishing the same result remain open
to the public.
 In applying that principle, it is also important to
emphasize that there is no requirement that the
“particular machine” be novel or specifically designed
for use in the claimed process. CfCochrane v. Deener,
94 U.S. 780, 788 (1876) (“The machinery pointed out as
suitable to perform the process may or may not be new
or patentable; whilst the process itself may be altogether
new, and produce an entirely new result.”). Indeed,
section 100(b) of the Patent specifically defines the term
“process” as including “a new use of a known process,
machine, manufacture, composition of matter, or
material.” (Emphasis added.) Thus, there can be no

25
requirement that a “particular” machine be one specially
designed to carry out the claimed process nor that it be
novel in itself.
Applying these principles to computers readily
supplies the answer to the question of whether and
under what circumstances a process that is implemented
on a computer or other programmable device is tied to
a “particular machine.” If the claim requires that the
programmable device implement certain functions of a
process with sufficient specificity to limit the claim to
the particular process conceived by the inventor, such
as by requiring the use of a specified program or
algorithm, then it would satisfy the particular machine
test, even though the computer is capable of performing
other functions and the program may have been
designed for other purposes.
Properly construed, this Court’s decisions in
Benson and Flook are consistent with this conclusion.
Issued at the dawn of the computer age, the claim in
Benson involved a basic algorithm for converting binary
coded decimal numbers into pure binary numbers. The
Court held the claim was not patentable not because it
was implemented on a computer, but because it sought
to claim all uses of a basic mathematical algorithm. Thus,
the Court was concerned that, if the patent issued, it
would “wholly pre-empt the mathematical formula and
in practical effect would be a patent on the algorithm
itself.” 409 U.S. at 72.
In Flook this Court considered the patentability of
a process claim for updating the alarm limits for a
catalytic converter process in which the only difference

26
between the claimed process and the prior art was a
particular mathematical algorithm which, the Court took
pains to point out, was not required to be implemented
on a computer or any other type of machine. Based upon
an extensive review of its precedents, from Morse  to
Benson, the Court held that even if newly discovered, a
scientific principle or mathematical formula cannot be
patented but is to be treated “as though it were a familiar
part of the prior art.” 437 U.S. at 592. Since, in that
case, the algorithm was the only aspect of the process
that was claimed to have been invented, the Court
rejected the claims as unpatentable. However, the court
also took pains to point out that the fact that the
algorithm itself could not be patented did not preclude
the patentability of claims for a novel and useful
application of the algorithm:
Respondent’s is unpatentable under § 101, not
because it contains a mathematical algorithm
as one component, but because once that
algorithm is assumed to be within the prior
art, the application, considered as a whole,
contains no patentable invention. Even though
a phenomenon of nature or mathematical
formula may be well known, an inventive
application of the principle may be patented.
Conversely, the discovery of such a
phenomenon cannot support a patent unless
there is some other inventive concept in its
application.
437 U.S. at 594 (emphasis added).

27
It is important to emphasize that nothing about the
holdings of these cases turns on the question of whether
the claimed algorithms were implemented on a
computer. Indeed, the Flook decision took pains to
emphasize that, at that time, the computer industry was
too immature and there was insufficient precedent for
it to consider that question:
The youth of the industry may explain the
complete absence of precedent supporting
patentability. Neither the dearth of precedent,
nor this decision, should therefore be interpreted
as reflecting a judgment that patent protection
of certain novel and useful computer programs
will not promote the progress of science and
the useful arts, or that such protection is
undesirable as a matter of policy.
437 U.S. at 595.
Rather, the critical question was whether the claim,
considered as a whole, purported to claim a novel and
useful process apart from the unpatentable algorithms
it employs. If so, the claims would be patentable even if
(as Flook presumes) the algorithm itself is not.
In sum, IPO urges this Court to state unequivocally
that a microprocessor based general purpose computer
or other programmable device, like any other machine,
can qualify as a “particular machine” for purposes of
the Machine or Transformation Test, so long as its use
is sufficiently limited in the patent to the implementation
of a defined process for performing a useful function
and does not foreclose other uses of a particular
algorithm or scientific principle.

28
CONCLUSION
For the forgoing reasons, IPO believes that the
Machine or Transformation Test, properly applied, will
normally be a sufficient test for determining the
eligibility of a process patent under § 101, but that the
Court should make clear that applying the Machine or
Transformation Test too rigidly may call into question
the patent eligibility of practical innovations which go
beyond mere abstract ideas, laws of nature, and natural
phenomena. This Court should leave open the possibility
that other specific tests or analytical frameworks may
be appropriate to analyze particular innovations on a
case-by-case basis, within the broader framework of
section 101 of the Patent Act. Moreover, when the
Machine or Transformation Test is applied, the concept
of “transformation” needs to include not only tangible
chemical or physical attributes of objects, but also their
electrical, magnetic and any other intangible properties
that are capable of being created, modified and detected
to perform useful functions, including, particularly to
transmit, manipulate, store or retrieve information of
any kind, without regard to its subject matter. Similarly,
the Court should affirm, once and for all, that the
computers and other programmable devices that have
become so pervasive in our modern economy can fill the
role of a “particular machine” for purposes of the test
so long as the device has been programed to perform a
defined function in the manner contemplated by the
inventor and the claims are otherwise sufficiently limited
to a novel and useful process that does not pre-empt all
uses of a basic mathematical formula or other law of
nature or abstract idea.

29
Respectfully submitted,
STEVEN W. MILLER, President
GEORGE L. GRAFF
RICHARD F. PHILLIPS, Chair,
Counsel of Record
Amicus Brief Committee
112 Holly Place
INTELLECTUAL PROPERTY
Briarcliff Manor, NY 10510
OWNERS ASSOCIATION
(914) 762-3706
1501 M Street, NW
Suite 1150
ERIC E. BENSEN
Washington, DC 20005
384 Euston Road South
(202) 507-4500
Garden City, NY 11530
(516) 486-2250
Counsel for Amicus Curiae

APPENDIX

1a
Appendix
APPENDIX
Members of Board of Directors,
Intellectual Property Owners Association*
Marc S. Adler
Roger Gobrogge
Marc Adler, LLC
Dow Corning Corp.
Angelo N. Chaclas
Bernard J. Graves, Jr.
Pitney Bowes, Inc.
Eastman Chemical Co.
William J. Coughlin
Krish Gupta
Ford Global
EMC Corp.
Technologies LLC
Jack E. Haken
Timothy Crean
Koninklijke Philips
SAP Labs, LLC
Electronics, N.V.
Robert DeBerardine
Dennis R. Hoerner, Jr.
Sanofi-Aventis Groupe
Monsanto Co.
Bart Eppenauer
Carl B. Horton
Microsoft Corp.
General Electric Co.
Scott M. Frank
Soonhee Jang
AT&T
Danisco U.S. Inc.,
Genencor Division
Michael L. Glenn
Dow Chemical Co.
Philip S. Johnson
Johnson & Johnson
* IPO procedures require approval of positions in briefs
by a three-fourths majority of directors present and voting.

2a
Appendix
George William Johnson
Jeffrey L. Myers
Hoffmann-La Roche Inc.
Adobe Systems Inc.
Dean Kamen
Douglas Norman
DEKA R&D Corp.
Eli Lilly and Co.
Charles M. Kinzig
Sean O’Brien
GlaxoSmithKline
United Technologies Corp.
David J. Koris
Richard F. Phillips
Shell International B.V.
Exxon Mobil Corp.
Noreen A. Krall
Kevin H. Rhodes
Sun Microsystems, Inc.
3M Innovative
Properties Co.
William C. Lee, III
Coca-Cola Co.
Peter C. Richardson
Pfizer, Inc.
Michelle Lee
Google Inc.
Mark L. Rodgers
Air Products
Kevin Light
& Chemicals, Inc.
Hewlett-Packard Co.
Manny Schecter
Richard J. Lutton, Jr.
IBM Corp.
Apple Inc.
Robert R. Schroeder
Steven W. Miller
Mars Inc.
Procter & Gamble Co.
Suzanne M. Shema
Jonathan P. Meyer
ZymoGenetics, Inc.
Motorola, Inc.

3a
Appendix
David Simon
Brian K. Stierwalt
Intel Corp.
ConocoPhillips
Dennis C. Skarvan
Thierry Susur
Caterpillar Inc.
Air Liquide
Russ Slifer
James J. Trussell
Micron Technology, Inc.
BP America, Inc.
Wayne Sobon
Michael Walker
Accenture
DuPont
Daniel J. Staudt
Stuart Watt
Siemens Corp.
Amgen