Transcript

IN THE SUPREME COURT OF THE UNITED STATES

SIDNEY A. DIAMOND, COMMISSIONER OF PATENTS AND TRADEMARKS, Petitioner, v. JOHN J. BRADLEY AND BENJAMIN S. FRANKLIN, Respondents

No. 79-855

October 14, 1980

The above-entitled matter came on for oral argument at 11:36 o'clock a. m.

BEFORE:

HON. WARREN E. BURGER, Chief Justice of the United States
HON. WILLIAM J. BRENNAN, Associate Justice
HON. POTTER STEWART, Associate Justice
HON. BYRON R. WHITE, Associate Justice
HON. THURGOOD MARSHALL, Associate Justice
HON. HARRY A. BLACKMUN, Associate Justice
HON. LEWIS F. POWELL, JR., Associate Justice
HON. WILLIAM H. REHNQUIST, Associate Justice
HON. JOHN PAUL STEVENS, Associate Justice

APPEARANCES:

LAWRENCE G. WALLACE, ESQ., Deputy Solicitor General, Department of Justice, Washington, D. C. 20530; on behalf of the Petitioner.

NICHOLAS PRASINOS, ESQ., Honeywell Information Systems, Inc., Office of the General Counsel, 200 Smith Street, Waltham, Massachusetts 02154; on behalf of the Respondents.

PROCEEDINGS

MR. CHIEF JUSTICE BURGER: We will hear arguments next in Diamond v. Bradley.

You may proceed whenever you are ready, Mr. Wallace.

ORAL ARGUMENT OF LAWRENCE G. WALLACE ON BEHALF OF THE PETITIONER

MR. WALLACE: Mr. Justice Brennan and may it please the Court:

In this and the next case to be heard the Court of Customs and Patent Appeals reversed the rejection by the Patent Office, including the Patent Office Board of Appeals, of the patent claims at issue. We sought review because we believe that the cases are controlled by this Court's interpretation of Section 101 of the Patent Act, in Parker v. Flook, which was decided in the 1977 term, and because the Court of Customs and Patent Appeals' rejection of that interpretation of the Patent Act in favor of a different explanation of the result reached by the Court in Flook has put the Patent Office in an obviously difficult position with respect to the thousands of pending patent applications involving computer programming.

Before getting into the specifics of this case, I would like to say, up front, that we do not regard the interpretation of Section 101 of the Patent Code adopted in Flook to be an appropriate subject for reexamination by the Court at this time. This is a statutory interpretation, authoritatively reached by this Court. It's a matter that Congress can change if it sees fit to do so, and indeed there has been significant congressional activity in this area since the Court's decision.

The Patent Office, which is the administrative agency directly affected, has been following this interpretation for a matter of more than two years now. And ordinarily no member of the Court would reexamine an interpretation of a federal statute subject to congressional change after it has been authoritatively decided by a majority of the Court.

The fact that the Court of Customs and Patent Appeals has persisted in differing with this interpretation is not, in our view -- and I say this with all respect to that court -- is not in our view a reason for a different approach with respect to the stability of a statutory precedent in this Court.

QUESTION: Do you think that the Court of Customs and Patent Appeals declined to follow Flook?

MR. WALLACE: I think it has differed with the interpretation of Section 101 that this Court adopted in Flook.

QUESTION: Well, it didn't -- at least it didn't purport to depart from Flook.

MR. WALLACE: It has a different explanation for the result in Flook, which brings about --

QUESTION: Different from yours; different from yours.

MR. WALLACE: Different from ours, and different --

QUESTION: Not necessarily different from ours.

MR. WALLACE: Well, this is fairly debatable.

QUESTION: Well, that's what this case is about, isn't it?

MR. WALLACE: But the Court of Customs and Patent Appeals has written at some length about why it thought that the Court's reading of Section 101 in Flook was erroneous. It's not a difference that is without basis on the pages of their opinions. I believe the Court is familiar with this and I don't want to belabor the point. I do want to make the basic point that if as we view the matter this would not be an appropriate subject for reexamination in the absence of this difference. I don't think that the fact that the Court below has differed with this interpretation should make the matter more subject to reexamination. I think that that would send a message to the lower courts that would be unfortunate for consistency in the administration of the law.

QUESTION: Yes. Both courts are bound by the meaning of Congress in Section 101, are they not?

MR. WALLACE: Of course, Mr. Justice. As I said, the Court has written on that meaning in Flook and Congress is now actively considering what changes if any to make in the patent or copyright laws, and I'll get into the details of that subsequently.

QUESTION: Mr. Wallace, I didn't understand the Respondent to ask us to reexamine Flook.

MR. WALLACE: I don't believe that has been put to the Court. No one has asked the Court to overrule Flook. The arguments that are being made are, it seems to me, inconsistent with the ratio decidendi of Flook, and that is what I refer to as the Court's interpretation of Section 101. Nobody is asking that the holding be overruled. The Court of Customs and Patent Appeals has been very meticulous in following that holding, but based on a different explanation from what I regard, what we have regarded as the ratio decidendi of Flook in the interpretation of Section 101 of the patent laws.

Now, in this case, to get into the specifics of this case, the Board of Appeals, as we understand Flook, applied the Flook test to the claims at issue and examined the claims at issue in light of the rationale adopted by this Court in Flook. And under Flook, as the Board of Appeals viewed this, if the claims recite a scientific principle, idea, concept, formula, or phenomenon of nature, then that basic tool of scientific and technological work, as the Court called it in the Benson case, should be assumed to be within the prior art. And then, what remains must be analyzed to determine whether it is novel under Flook's reading of the Morse case and others.

If one prefers one can say, then the claims as a whole should be examined, assuming that scientific principle, formula, et cetera, to be already known.

QUESTION: Isn't "novelty" covered by another section of the Act?

MR. WALLACE: That was precisely the position of the dissenting opinion in Flook. Novelty is covered --

QUESTION: Well, it's true.

MR. WALLACE: -- by Section 102 of the Patent Code. It is.

QUESTION: Dissenting opinions, as I was taught in law school, are subversive literature; nothing more or less. But that much is true, that novelty is covered by another section of the patent laws.

MR. WALLACE: It certainly is. Section 101 also uses the word "new," however.

QUESTION: Mr. Wallace, is it that the remainder of the application is to be examined to determine whether there is novelty or to determine whether anything else novel is claimed?

MR. WALLACE: The latter formulation is the more accurate one, Mr. Justice.

QUESTION: And that's why the dissent -- that's a point the dissent missed in Flook, isn't it? And in Flook it was conceded the only novel thing was the formula.

MR. WALLACE: That is true. It was conceded in Flook. In this case, it is being contested by the Respondent in this Court. However, whether contested or conceded, the Board of Appeals, I think quite rightly, thought it was its duty to determine whether there is any novelty thing claimed other than in what must be assumed under Flook to be within the prior art. And that determination was made in this case and the conclusion was that the only contribution, as the Board put it, the only novelty inhered in the program, the computer program, that was a part of these claims. And, as we detail in our briefs and our reply briefs, there was an examination here of the prior art cited by the respondent itself before the Patent Office, a patent that had been issued to Coulter and an application by Carre, in both of which all of the diagrams save the ones at the very end were reproduced by the respondent as part of their claim.

The Coulter patent, indeed, is an example of the kind of patent that has been issued on computer hardware. Some of the briefs suggest that our position is that such patents can't be issued, but that in itself is an example of such patents that are valid and can be issued.

And, in analyzing these in detail, it was seen that all that was left as a contribution was the program, although respondents contend otherwise before this Court. I think this is adequately set forth in our brief and reply brief.

In light of those findings, there were three possible bases as we see the case, for distinguishing of Flook and for reaching a different result from Flook. And all three of those are, in our view, unpersuasive.

The first is that this application involved a machine claim rather than a process claim such as was involved in the Flook case. The first thing I want to mention about that difference is a passage from an opinion by Judge Rich in the Court of Customs and Patent Appeals. It happens to be a dissenting opinion but it's not dissenting on this particular point. It's in a case called "Application of Chatfield," which is cited in the briefs; it's 545 F.2d, and at page 160 he points out in his opinion, based on the experience of that Court and of the Patent Office:

"Given an invention which is in essence a new program for a general purpose digital computer, a competent patent draftsman can readily define the invention as either a process or a machine or both. This has been demonstrated time and again by the computer program cases which have come to this Court."

We have another similar quotation from the same judge in our brief, on page 22.

This is not, as we regard it, a difference of substance in the claim or a difference of inventive contribution, but basically a difference in the draftsmanship of the application. And indeed the fact that the application is put as a machine claim rather than a process claim, if anything raises possible additional impediments to the granting of the application because of the cases we've collected on page 17 of our brief, in which this Court has consistently held that a claim describing the inherent operation of a known machine is not statutory subject matter. Obviously, whether the machine was capable of executing the program that respondents have devised was predetermined by the design of the machine itself, and the inventor of that machine should hardly be excluded under the patent laws from uses of the machine which were inherent in the operation that he built into the machine, which is really what's involved here.

As we further point out, there is also the problem that allowing this as a new machine claim would extend the life of the patent on the machine through a new machine claim that essentially just describes one of the inherent operations of the machine. This is not a matter that's wholly irrelevant to what the respondents have -- put into the case in this Court, because page 1 of respondents' brief starts off, in their statement under the heading, "What the invention is":

"The Respondents' invention is one of a series of inventions which collectively define an entirely new computer machine which is now being commercially marketed worldwide as the Honeywell Series 60, Level 64 computer."

In essence they're saying that the life of the of the Coulter patent is extended by this additional machine patent if it were to be granted.

And we have also addressed in our reply brief the possibility of a doctrine of transitory novelty where a particular selection put into a player piano or a particular letter or a memorandum inserted into a word processor that hasn't been in the word processor before -- you know, those machines that are replacing typewriters in offices -- would transform the machine for the moment into a new machine. This has never been a doctrine recognized under the patent law and would have the same drawbacks, the same inconsistencies of established law as I have described.

A second possible basis for distinguishing Flook, equally unpersuasive in our view, is that the claim here involves firmware, so-called, rather than software.

QUESTION: Well, is that the same, Mr. Wallace -- is this patent only on the firmware module? Or is it on the whole --

MR. WALLACE: The claim is on the whole machine, using the firmware, but --

QUESTION: -- switching operation from main memory to switchback registers?

MR. WALLACE: Through this method, through the described method, and the contribution --

QUESTION: Is that what the patent covers?

MR. WALLACE: That's what the claim is.

QUESTION: Not merely the firmware module?

MR. WALLACE: Not merely the firmware but the claim is on the whole machine and as fixed up with this firmware to transfer the information within the existing computer.

QUESTION: Mr. Wallace, under your previous argument which you had just left at the time Justice Brennan asked you that question, would an electric typewriter not be patentable because of the existence of a typewriter that you punch by keys under 101?

MR. WALLACE: I don't think the previous patent would necessarily preclude a patent there, because you're dealing with a different machine. I don't think it would be precluded under 101 in that instance. It might be that the only, that there'd be a lack of novelty because the --

QUESTION: But then, that would be under another section.

MR. WALLACE: Probably under another section. I haven't really given thought to that particular question, but that isn't what's involved here. Here we have the same hardware and the same arrangement of hardware and making use of one of the inherent uses for which it was designed and of which it's capable. That's quite a different question from yours, it seems to us.

QUESTION: Mr. Wallace, you do then concede that the patent claims the words "data structure" describe a machine?

MR. WALLACE: Well, this is the argument being made by the respondents. At one point, before the CCPA, the Government said that the claims do, are written in a way to describe a machine. The claims are basically for a process of transferring the information, but they're written in the form of claiming the machine, the familiar machine, the conventional machine, as a program to perform this process. That's the best I can describe it.

QUESTION: Do the words "data structure" have any recognized meaning? There are all sorts of glossaries in the briefs and all, and this is one term, a rather important term, that doesn't seem to be included in any of the glossaries.

MR. WALLACE: I don't know of any accepted meaning for it. Data processing is the most common use of computers. It's really a more common use than solving mathematical problems of the kind that was involved in Flook. The examples given by the Court of Customs and Patent Appeals are typical of that, reproducing a page of the Milwaukee phone book or a court opinion. This is data processing, and in a sense a computer is a data structure. I don't know that anything more than that is meant by it.

Now, the fact that the claims here involve firmware rather than software seem to us of no legal significance. The Court of Customs and Patent Appeals itself said that firmware may be likened to software. All that is really involved here is a microprogram that fits into the control unit rather than the kind of program that fits into the main memory storage, so that then the microprogram, like an ordinary program, consists of a series of sequential steps to be carried out through the ordinary mathematical functioning of the digital computer; but using them in a microprogram in the control unit, that enables the programmer to have a so-called macroprogram in the main memory and he can, by throwing that one switch, or giving that one instruction, that will set off the series of sequential steps that have been put into the control unit in the microprogram. That's the only difference and it doesn't seem to us or to the Court of Customs and Patent Appeals to be a difference of legal significance.

Then the third possible basis for distinguishing Flook and the one that the Court of Customs and Patent Appeals has in fact been relying on in the post-Flook cases is an attempt to limit the holding in Flook to computer programs designed to solve mathematical problems.

Our submission is that this is basically an illusory distinction and indeed one that doesn't fit in with the reasoning of the Court of Customs and Patent Appeals itself, in its own cases, because a digital computer is designed solely to perform mathematical computations. Any program that makes use of it is necessarily mathematical in nature, regardless of whether it's designed ultimately to find the solution to a mathematical problem or for the more common purpose of data processing. And indeed, the skills and contribution required of the deviser of the program does not depend on whether the program is designed to solve a mathematical problem or to do the data processing.

The examples given by the Court of Customs and Patent Appeals in this case, reproducing a page of the Milwaukee telephone directory or a particular court opinion, seem to us examples that require less of a contribution, less of an inventive contribution from a programmer than was involved in Flook, where, after all, a new formula was devised to calculate the alarm limits.

Whether the particular inventive contribution varies, depending on the nature of the data processing to be done or the nature of the mathematical problem to be solved --

MR. JUSTICE BRENNAN: We'll resume there at 1 o'clock, Mr. Wallace.

(Recess)

MR. JUSTICE BRENNAN: You may resume, Mr. Wallace, if you're ready.

MR. WALLACE: Thank you, Mr. Justice Brennan.

I have stated why, in our view, each of the three possible bases for distinguishing the Flook case is unpersuasive, and those arguments are elaborated in our briefs.

I just want to briefly inform the Court of the legislative developments in this field, currently. On page 24 of our brief we refer to a bill that was introduced last March by Representative Kastenmeier, a bill entitled, "The Computer Software Copyright Act of 1980." That bill since that time has been favorably reported by both the House Committee on Government Operations and the House Judiciary Committee, but has not yet gone to the House floor, although it is anticipated that there will be floor action with respect to it during the session right after the elections.

There has not yet been activity in the Senate, but the significant thing, as we see it, is that the congressional activity is focusing on copyright protection rather than patent protection, which would protect the deviser of computer programs. Arguably, this protection already exists under the present copyright law and this would just be a clarification. But it would afford protection to the deviser of programs against plagiarism, against the copying of the fruits of his labors, but still would not preclude others, would not exclude them from the inherent uses of the machine if they through their own labors want to devise a program to process similar data in a similar way -- for instance, reproducing the Milwaukee telephone directory.

There may be a basis for a congressional judgment if that is a more appropriate form of protection.

I would like to reserve the balance of my time.

QUESTION: Mr. Wallace, can I ask one question before you sit down? With respect to your third, your response to the third arguable distinction of Flook, namely, that Flook should not be limited merely to mathematical formulas produced by some software, is it your view of the patent claim which is in Judge Rich's opinion -- it describes four separate means of describing this data structure -- that that description of a first, second, third, and fourth means is in effect a description of a computer software program, and that that is what they're seeking to patent?

I must confess I have some difficulty understanding the claim and I'm not quite sure where in your view of the case the program is claimed by the patent.

MR. WALLACE: Well, in our presentation in this Court we're not going back to the claims ab initio, but we're relying on the findings of the Board of Appeals that while the claims are cast as a claim on a machine, the only thing new in the claims in light of the prior art is the microprogramming to be inserted into the control unit. This is based on the fact that the claims reproduce in detail and rely on the prior art of the Coulter and Carre applications. And we think that is the posture in which the case comes to this Court. The Court of Customs and Patent Appeals did not disagree with the Board's findings with respect to where their claim of novelty inheres, and I think it would just be a distraction to try to reanalyze the claims ab initio.

QUESTION: Well, Mr. Wallace, this gets back, I guess, to the question I asked you, wasn't it, earlier? You don't regard this patent as simply on the firmware module. It's broader than that.

MR. WALLACE: The claims are put more broadly, but that is where the novelty inheres in the claims. That's where the claim of novelty inheres under the findings of the Board.

QUESTION: But that's never been passed on, I thought?

MR. WALLACE: Well, the Court of Customs and Patent Appeals didn't differ with it, it didn't uphold that either. It just said that the Board shouldn't have isolated where the claim of novelty is.

QUESTION: But didn't it say that the issues of novelty and obviousness remain to be considered?

MR. WALLACE: Yes, yes. I'd like to reserve the balance of my time.

MR. JUSTICE BRENNAN: Mr. Prasinos.

ORAL ARGUMENT OF NICHOLAS PRASINOS ON BEHALF OF THE RESPONDENTS

MR. PRASINOS: Mr. Justice Brennan, may it please the Court:

The issue before the Court today is a narrow question of statutory interpretation under 35 U.S.C. 101. More specifically, the question is whether or not the respondents' invention is a machine as that term is used under 35 U.S.C. 101. If it is, Your Honors, then the invention is eligible to be considered by the United States Patent and Trademark Office under the other conditions of patentability of 35 U.S.C.

Your Honors, briefly then, the question is eligibility, not patentability. I would like to state up front, Your Honors, that this is a machine in the true sense of the word. It is disclosed as a machine, it is claimed it is a machine, and it is a machine. Even the Commissioner admitted before the CCPA that it is a machine, and I might read the exact words. In reply to a question of one of the Justices which was, "Do you agree with the applicant that he is claiming a machine where it starts out in multiprogram computer systems?"

The answer was, "I suppose it is a machine. It is an apparatus of some sort. Yes, Your Honor."

Your Honors, I would also like to state up front that this is not a computer program. Computer programs are generally written by programmers. They are sold separate and apart. They utilize conventional computers. This invention utilizes hardware which is physically incorporated into the computer to make a new computer machine.

Your Honors, I might state again that this is one of a series of inventions which collectively define the Level 64 Honeywell Series computer which is marketed worldwide today. It was developed over an extended period of time. It involved hundreds of engineers and at a cost of over $25 million.

The invention is comprised of a hardware combination comprising registers, hardware gates, logic circuits, and memory elements which are physically incorporated into the computer and permanently incorporated into the computer. They cooperate with each other and function with each other to substantially instantaneously and automatically change the physical capabilities of this machine. In effect, what they do is provide different architectures, different models, so to speak. It instantaneously, substantially provides a scientific model or a business model. Let me make this absolutely clear by a familiar analogy. Recently, an automobile manufacturer --

QUESTION: Before you get to your analysis, Mr. Prasinos, because I have trouble getting into analogies, Judge Rich described the two advantages of your -- your machine relates to, what do you call it, reinitializing the --

MR. PRASINOS: That's a portion of the computer machine.

QUESTION: The two difficulties before, as I understand it, were that sometimes you have to pull an awful lot of switches and it's time-consuming when you void it --

MR. PRASINOS: Right.

QUESTION: Or secondly, you have to use software that is what they say, model-dependent.

MR. PRASINOS: Yes, Your Honor.

QUESTION: As I understood it, that meant that the problem was you could only use that software for one kind of model.

MR. PRASINOS: Yes.

QUESTION: Now, as I understand it, your description of this invention, it describes hardware that only fits in one model. Or is the hardware transferable to different kinds of models?

MR. PRASINOS: What it does, that language in the beginning, in the summary, was amended in the very first portion, and it's on the record in here, where "model-dependent" was stricken out and additional language was written in which in effect made it clear that what it did is provided different independent models to the computer. One way of initializing it is just to initialize it by actually having a clone of its initial type of model under consideration.

QUESTION: Is the invention claimed in this patent model-dependent? Model-dependent as Judge Rich used the term in the second page of his opinion?

MR. PRASINOS: No, it is not. Your Honor, what this --

QUESTION: Well, then, it's not a permanent part of any given model of the machine?

MR. PRASINOS: It is a permanent part of this computer, the Level 64 computer machine, Your Honor.

The analogy might make this clear, Your Honor. Recently an automobile manufacturer introduced an automobile engine called the V-8, 6 & 4. What it is, it automatically substantially instantaneously changes it to a four-cylinder model, six-cylinder model, eight-cylinder model in response to power requirements. When you need power, like passing or going up a hill, why it automatically changes it into an eight-cylinder model. Or when it's idling, it changes to a four-cylinder model.

Now, one way that that can be done is you're going to have some kind of hardware that will sense the power requirements. Some other type of hardware that's going to cut off the cylinders and its appurtenant hardware. And still another control element. Now, this physical hardware is incorporated into that automobile engine and substantially and automatically changes and gives different models.

Now, that's exactly what our machine does. It provides different computing powers, Your Honor.

QUESTION: But that's for a given machine, and as I understand the prior art, if you had the right software for a particular machine, you could have done that before this invention.

MR. PRASINOS: The problem is that this is not software, Your Honor. That's where the misunderstanding comes.

QUESTION: But how is it an advance over the software, is what I don't understand?

MR. PRASINOS: It is hardware, Your Honor. Software is utilized, if I might make that point clear, by computer programs. All computer machines, systems, are comprised of both hardware and software. The hardware are the physical objects which, upon which the circuits are fabricated and transmit the electric circuits, electric signals. The software utilizes the hardware in order to solve user problems.

Now, Your Honor, software are written by programmers and they're generally, software are generally embodied in this. They are shown on the record on pages 4 and 5, and these are typical software. You put this in a conventional computer. These are sold separate and apart from the computer. The user then, who buys something like this to solve something like placing a telephone directory into his computer or solving an accounting problem, Your Honor. Now, Your Honor --

QUESTION: Was there software available before your invention for reinitializing particular models of machines?

MR. PRASINOS: Yes, it was; yes, it was, Your Honor.

QUESTION: Well, that's the kind of software that would be analogous to your invention, I guess?

MR. PRASINOS: What's that? Yes, Your Honor. This is the type of software that would do that.

QUESTION: Is there some particular rule applicable to patents that pertain to the computer industry that is different from the rules that pertain to every other kind of industry?

MR. PRASINOS: No, Your Honor, it is not. Basically, Your Honor, all machines have a rule of action. Therefore, for example, the rule of action can be embodied in the machine operations.

QUESTION: What is it in 101 that the examiner can kind of turn away at the door? Supposing, at the time of the invention of the vacuum cleaner, somebody brought in a vacuum cleaner and said, this is a machine and it does something a lot better than a broom could do it. Could the examiner say, it doesn't meet the 101 criterion?

MR. PRASINOS: No. But under the precept --

QUESTION: Well, if the inventor came in, or the applicant came in and said, I've invented vacuum, what happens when there's a vacuum?

MR. PRASINOS: Yes, Your Honor.

QUESTION: That would not be patentable, any more than an applicant who came in and said, I've invented the law of gravity. That's not patentable. That much is conceded, isn't it?

MR. PRASINOS: I didn't hear the first part, Your Honor.

QUESTION: Well, it was a question. If an applicant came in and said, my total machine depends upon my invention of a vacuum. Now, that would not be patentable, would it?

MR. PRASINOS: Your Honors, it's combination of elements that are patentable.

QUESTION: Right; correct.

MR. PRASINOS: The scientific principle itself is not patentable.

QUESTION: Exactly.

MR. PRASINOS: It is a discovery, it has always existed, and in that form a person that comes in and says, I have discovered a basic, fundamental principle cannot get a patent on that. What he can get it is when he clothes it with the hardware, the combination of elements. Out of the myriad of combinations that are possible --

QUESTION: When a machine is a combination of elements, the mere fact that one element is the law of gravity or the operation of the law of gravity does not make the machine unpatentable per se, does not make a machine ineligible under 101. That's your point.

MR. PRASINOS: That's right. In Flook, as a matter of fact, this Court stated in essence that the conditions for patentability are that it falls under one of the categories of 35 U.S.C. 101. Two, it is manmade; three, it has not always existed.

QUESTION: Right. But that -- if you're looking at it as a whole, as a combination one element being an unpatentable element, there nevertheless in the other element must exist some novelty.

MR. PRASINOS: Your Honor, there is not novelty involved in 35 U.S.C. 101.

QUESTION: I didn't say that. I didn't say that. But even though having an unpatentable element in it doesn't disqualify, nevertheless you have to have -- the novelty in the unpatentable element won't provide the novelty necessary for the patent. You have to have the novelty in the other element, don't you?

MR. PRASINOS: No, Your Honor. Your Honor, it's just like Lee De Forest had the -- first of all, he took Fleming's valve, which was identical to Lee De Forest's arrangement, and all Lee De Forest inserted is a piece of wire in between. Now, that piece of wire, you can say, may not be patentable, and there was no novelty in that piece of wire. However, when you inserted it in there and biased in a certain way, that made those elements cooperate and function in a manner never before known and really what it did is introduce the whole electronic industry.

QUESTION: Well, then you should have -- why didn't you answer my question and say, yes, the novelty must exist in something besides the unpatentable element? You just said it does.

MR. PRASINOS: It exists in the combination, Your Honor.

QUESTION: Well, all right.

MR. PRASINOS: It exists in the combination, not any one element.

QUESTION: But the novelty cannot be, cannot solely exist in the unpatentable element.

MR. PRASINOS: But novelty is not an issue under 35 U.S.C. 1O1, Your Honor.

QUESTION: I understand that.

QUESTION: Mr. Prasinos, supposing -- you emphasize the difference between a machine and a process, as I understand you?

MR. PRASINOS: Yes.

QUESTION: Supposing a patent application said in substance as follows, we have a new machine. The thing that's new about it is that it will use the formula described in the Flook case. That's the only thing that's new. We've got a machine that uses that formula and all the other elements are well known. Would the fact that it was a machine take it out of the Flook case?

MR. PRASINOS: I can't visualize that particular situation, but I would like to say --

QUESTION: Say that had not been a process claim but they'd said, we have a computer programmed to solve this equation, updating our alarm limits and all that, and the only thing new about it is it has this particular program on the machine, and we're asking for a patent on the machine as opposed to the process.

MR. PRASINOS: I think the decisions of this Court applied. If it's a manmade machine that has not always existed, it certainly would be eligible for consideration under the other statutes of novelty under 102 and 103, Your Honor.

QUESTION: You'd say that if the precise invention described in the Parker v. Flook case had been described in terms of a machine which will do these things instead of a process, then it would have been patentable subject matter?

MR. PRASINOS: No; no, Your Honor. I am not saying that at all.

QUESTION: So then the distinction between a machine and a process can't be critical?

MR. PRASINOS: The distinction is that a process, Your Honor, changes something to a different state of thing.

QUESTION: Well, a machine can do that too.

MR. PRASINOS: Yes, but, for example, a process, you take steel, you take iron, you heat it to a given temperature, you put it in cold water, that changes it to a different state of thing. Now, 101 specifically enumerates process and delineates process from machine. And machine is a combination of elements.

QUESTION: Well, process can be a combination of elements.

MR. PRASINOS: It's a series of steps, Your Honor, a process is, for performing a -- changing something to a different state of thing.

Your Honors, if I might now turn to Benson and Flook, on which the Commissioner so heavily relies, in Flook a mathematical algorithm was involved. It was a discovery of something that always existed. The mathematical algorithm involved in Flook was a procedure for solving a given type of mathematical problem. Hence, Flook never discovered anything but a law of nature. This Court notes --

QUESTION: He certainly argued to the contrary here.

MR. PRASINOS: What's that, sir?

QUESTION: I say, he certainly argued to the contrary here.

MR. PRASINOS: I was not here, Your Honor.

This Court noted that the underlying notion is that a scientific principle such as that expressed in Flook reveals a relationship that has always existed. Thus, it was not the type of subject matter that the patent laws were enacted to protect. Yet, this Court never enunciated a two-step rule, it is submitted, Your Honors. They merely recognized that the process of Flook was old.

The Commissioner here is advocating a two-step rule whereby you would lock at an invention and see what the fundamental law of nature is like, for example, in Edison's light bulb. Then you would say, that's in the prior art. Now, are there other novel features? Let us now look at that bulb; that's old. Let's look at the incandescent filament; that's old. The vacuum technology is old. Therefore there is nothing new.

Certainly Flook was not all about that, Your Honor. Your Honors, it is only by this mistaken and somewhat irrational approach that the Commissioner can even lay claim that there is a program involved. This Court need not decide any broad policy questions regarding computer programs. There is no computer program involved.

As this Court articulated, such policy decisions are to be reserved and addressed by Congress.

Your Honors, it is submitted that the Commissioner is seeking a per se rule to have for his own administrative convenience, to have a program per se held as unpatentable subject matter. There is no program here. He states that it puts him in a difficult position to examine such programs. He has examined this invention, as the record below shows.

Your Honors, this is a manmade machine which has never existed. The Commissioner has admitted this. It fully complies with the conditions and precepts set out by this Court in its decisions of 101, including Benson, Flook and Chakrabarty. Holding and finding that this invention is patentable subject matter under 35 U.S.C. 101 would deprive the public of no rights which it has heretofore existed.

Your Honors, the decisions of this Court under 35 U.S.C. 101 requires that the court below be affirmed. Thank you.

MR. JUSTICE BRENNAN: Anything further, Mr. Wallace?

MR. WALLACE: Just briefly, Mr. Justice Brennan.

ORAL ARGUMENT OF LAWRENCE G. WALLACE ON BEHALF OF THE PETITIONER -- REBUTTAL

MR. WALLACE: In the joint appendix in this case, on pages 99 through 120, are reproduced the diagrams that accompany the application, and which I think can quickly be referred to to show what it was that was being claimed.

The diagrams on pages 99 through 119 were all reproductions of those in the prior art and in the Coulter patent and Carre application, the Coulter patent having been assigned to Honeywell, which is also the assignee of this claim.

The ones claimed to be novel, the ones added, are those on page 120. The ones up through page 119 are the same hardware, the same arrangement of hardware. The ones on 120 are Figures 15a, 15b, and 15c.

On page 2 of our reply brief, we discussed these briefly. Respondents told the Patent Office that Figure 15a illustrated the switch system base instruction whose "operation code is similar to the operation code of any instruction." In other words, it's really a conventional macroprogram mechanism by which to activate the microprogram in the control unit that is illustrated in Figures 15b and 15c. Those are flow charts which the respondent stated disclosed the microprogram, or can be translated into the microprogram. That is the basis for the Board's finding that the claim of novelty inhered in a microprogram, and that everything else was conventional in the art.

Now, obviously, process claims and machine claims stand on equal footing under Section 101. The mere fact that a claim is phrased as one or the other cannot be the end of inquiry under Flook, and I'll elaborate further on the meaning of Flook in the next case.

MR. JUSTICE BRENNAN: Thank you, Mr. Wallace. Thank you, gentlemen. The case is submitted.

(Whereupon, at 1:26 o'clock p.m., the case in the above-entitled matter was submitted.)