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IN RE BERNARD L. BILSKI and RAND A. WARSAW

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           Appeal No. 2007-1130
           Appeal No. 2007-1130                Serial No. 08/833,892
                                               Serial No. 08/833,892

_____________________________________________________________

UNITED STATES COURT APPEALS FOR THE FEDERAL CIRCUIT
UNITED STATES COURT OF OF APPEALS FOR THE FEDERAL CIRCUIT
_____________________________________________________________




    IN RE BERNARD L. and RAND A. WARSAW
    IN RE BERNARD L. BILSKI BILSKI and RAND                        A. WARSAW




           APPEAL FROM THE UNITED STATES PATENT
           APPEAL FROM THE UNITED STATES PATENT AND AND
        TRADEMARK OFFICE, BOARD OF PATENT APPEALS
        TRADEMARK OFFICE, BOARD OF PATENT APPEALS AND AND
                          INTERFERENCES
                          INTERFERENCES



           BRIEF OF AMICI CURIAE CONSUMERS UNION,
           BRIEF OF AMICI CURIAE CONSUMERS UNION,
        ELECTRONIC FRONTIER FOUNDATION, AND
        ELECTRONIC FRONTIER FOUNDATION, AND PUBLIC PUBLIC
               KNOWLEDGE FOR HEARING EN BANC BANC
               KNOWLEDGE FOR HEARING EN


 Jason M. Schultz
 Jason M. Schultz                          Pamela Samuelson
                                           Pamela Samuelson
 Samuelson Law, Technology and
 Samuelson Law, Technology and             Richard M. Sherman Distinguished
                                           Richard M. Sherman Distinguished
   Public Policy Clinic
   Public Policy Clinic                    Professor of Law Information
                                           Professor of Law && Information
 U.C. Berkeley School Law
 U.C. Berkeley School ofof Law             U.C. Berkeley School ofof Law
                                           U.C. Berkeley School Law
 396 Simon Hall
 396 Simon Hall                            Berkeley, CA 94720-7200
                                           Berkeley, CA 94720-7200
 Berkeley, CA 94720-7200
 Berkeley, CA 94720-7200
 Telephone: (510) 642-0499
 Telephone: (510) 642-0499                 Counsel for Amici Curiae
                                           Counsel for Amici Curiae
 Facsimile: (510) 643-4625
 Facsimile: (510) 643-4625                 Consumers Union, Electronic
                                           Consumers Union, Electronic
                                           FrontierFoundation, And Public
                                           Frontier Foundation, And Public
                                           Knowledge
                                           Knowledge




April 7, 2008
April 7, 2008
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                   CERTIFICATE INTEREST
                   CERTIFICATE OF OF INTEREST



Counsel for Amici Curiae Consumers Union, Electronic Frontier
Counsel for Amici Curiae Consumers Union, Electronic Frontier
Foundation, and Public Knowledge certifies thethe following:
Foundation, and Public Knowledge certifies following:

1. The full name of every party amicus curiae represented by by is:
1. The full name of every party or or amicus curiae represented me me is:
   Consumers Union; Electronic Frontier Foundation; Public
   Consumers Union; Electronic Frontier Foundation; andand Public
   Knowledge.
   Knowledge.

2. The name of the real party interest (if the party named in the
2. The name of the real party inin interest (if the party named in the
   caption is not the real party interest) represented by me is:
   caption is not the real party inin interest) represented by me is:
   Consumers Union; Electronic Frontier Foundation; Public
   Consumers Union; Electronic Frontier Foundation; andand Public
   Knowledge.
   Knowledge.

3. All parent corporations and any publicly held companies that that own
3. All parent corporations and any publicly held companies own
   10 percent of the stock of the party amicus curiae represented by
   10 percent of the stock of the party oror amicus curiae represented by
   me are: None.
   me are: None.

4. In addition to myself, I expect Pamela Samuelson to appear in thisthis
4. In addition to myself, I expect Pamela Samuelson to appear in
   Court on behalf of amici curiae.
   Court on behalf of amici curiae.




Signed: _____________________________
Signed: _____________________________                          Dated: April 2008
                                                               Dated: April 7,7, 2008
                Jason M. Schultz
                Jason M. Schultz
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                                       TABLE OF CONTENTS
                                       TABLE OF CONTENTS



CERTIFICATE OF INTEREST
CERTIFICATE OF INTEREST

TABLE OF AUTHORITIES.........................................................................iii
TABLE OF AUTHORITIES...                                                                     .iii

INTEREST OF AMICI.................................................................................vii
INTEREST OF AMICI...                                                                           ...vii

I.
I.      SUMMARY OF
        SUMMARY OF
        ARGUMENT........................................................................................1
        ARGUMENT...                                                                                    .1

II.
II.     ARGUMENT........................................................................................3
        ARGUMENT...                                                                                    .3

        A. To Restore Public Confidence in Patent System, Assist
        A. To Restore Public Confidence in thethe Patent System, Assist
           Technological Inventors, and Protect Consumers, the Court Should
           Technological Inventors, and Protect Consumers, the Court Should
           Refine Its Views on Statutory Subject Matter.................................3
           Refine Its Views on Statutory Subject Matter...                           ...3

                   1. There are Strong Public Policy Reasons Not to Patent Non-
                   1. There are Strong Public Policy Reasons Not to Patent Non-
                       Technological Methods.......................................................4
                       Technological Methods...                                                   .4

        B. Section 101 Should Only Allow Patents on “Technological”
        B. Section 101 Should Only Allow Patents on “Technological”
           Inventions.........................................................................................6
           Inventions...                                                                                    ..6

                   1. Section 101 Must Serve a Substantial Threshold
                   1. Section 101 Must Serve a Substantial Threshold
                       Function..............................................................................6
                       Function...                                                                        ...6

                   2. The Constitution and Judicial Precedents Support Using
                   2. The Constitution and Judicial Precedents Support Using
                       Section 101 to Limit Patentable Inventions to Advances
                       Section 101 to Limit Patentable Inventions to Advances in in
                       Technology..........................................................................8
                       Technology...                                                                     ..8

        C. A Framework for Assessing Technological Processes..................10
        C. A Framework for Assessing Technological Processes...            ...10

                   1. Category One: Processes That Transform Machines,
                   1. Category One: Processes That Transform Machines,
                       Manufactures, and Matter Are Presumptively
                       Manufactures, and Matter Are Presumptively
                       Technological....................................................................11
                       Technological...                                                               ..11

                   2. Category Two: Non-Transformative Processes That
                   2. Category Two: Non-Transformative Processes That Do Do
                       Not Employ Technological Elements Achieve Their
                       Not Employ Technological Elements To To Achieve Their
                       Purpose Are Not Patent-Eligible.......................................13
                       Purpose Are Not Patent-Eligible...                                 ...13


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                 3. Category Three: Processes that Use Technological
                 3. Category Three: Processes that Use Technological
                     Elements to Achieve their Result are Patentable a a Case-
                     Elements to Achieve their Result are Patentable ononCase-
                     By-Case Basis Using Five Precedent-Based Factors........14
                     By-Case Basis Using Five Precedent-Based Factors...     ..14

       D. Five Precedent-Based Factors Help Determine the Nature of
       D. Five Precedent-Based Factors toto Help Determine the Nature of
          Non-Transformative Processes That Employ Technology............15
          Non-Transformative Processes That Employ Technology...        ...15

                 1. Is the technology claimed merely that process is
                 1. Is the technology claimed merely that the the process is
                     capable of being carried out on machine?...
                     capable of being carried out on a a machine?......................16
                                                                                      .16

                 2. Is the technology claimed merely that process is
                 2. Is the technology claimed merely that the the process is
                     actually carried out by machine?...
                     actually carried out by a a machine?....................................17
                                                                                          ...17

                 3. Is the claimed technology merely a field-of-use
                 3. Is the claimed technology merely a field-of-use
                     limitation?.........................................................................18
                     limitation?...                                                                     .18

                 4. Is the claimed technology merely insignificant or post-
                 4. Is the claimed technology merely insignificant pre- pre- or post-
                     solution activity?...............................................................19
                     solution activity?...                                                         ...19

                 5. Does the process produce useful, concrete and tangible
                 5. Does the process produce a a useful, concrete and tangible
                     technological result?.........................................................20
                     technological result?...                                                   ...20

       E. Applying the Five Factors To To Historical Category Three Cases...21
       E. Applying the Five Factors Historical Category Three Cases...21

                 1. State Street Bank Signature Financial Group...
                 1. State Street Bank v.v. Signature Financial Group...............22
                                                                                ...22

                 2. AT&T Excel...
                 2. AT&T v.v. Excel...................................................................24
                                                                                                     .24

                 3. In re Abele.........................................................................25
                 3. In re Abele...                                                                     .25

                 4. In re Bradley.....................................................................27
                 4. In re Bradley...                                                               ...27

III.
III.   CONCLUSION...................................................................................29
       CONCLUSION...                                                                              ..29

CERTIFICATE OF COMPLIANCE
CERTIFICATE OF COMPLIANCE

CERTIFICATE OF SERVICE
CERTIFICATE OF SERVICE




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                                        TABLE OF AUTHORITIES
                                        TABLE OF AUTHORITIES



Constitutional Provisions
Constitutional Provisions


U.S. CONST. art. I, § 8, cl. 8............................................................................ 8
U.S. CONST. art. I, § 8, cl. 8...                                                                        .8


Cases
Cases


AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th 1979)...                           ... 15
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.Cir. 1979)........................ 15

AT&T Corp. Excel Commc’ns, Inc., 172 F.3d 1352 (Fed. Cir. 1999)
AT&T Corp. v.v. Excel Commc’ns, Inc., 172 F.3d 1352 (Fed. Cir. 1999)
                                                                                                         .21, 22, 24
  ................................................................................................ .......21, 22, 24

                                                                                         .. 22
Cochrane v. Deener, 94 U.S. 780 (1876)..................................................... 22
Cochrane v. Deener, 94 U.S. 780 (1876) ...

                                                                                       ... 27
Diamond v. Bradley, 450 U.S. 381 (1981)................................................... 27
Diamond v. Bradley, 450 U.S. 381 (1981) ...

Diamond v. Diehr, 450 U.S. 175 (1981) 7, 7, 9, 11, 12, 15, 16, 16, 18, 19,
Diamond v. Diehr, 450 U.S. 175 (1981) .... .... 9, 10,10, 11, 12, 15, 18, 19, 20 20

eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006)                                .. 4
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) ... ............................. 4

Ex parte Bilski, No. 2002-2257, 2006 WL 4080055 (B.P.A.I. 26, 2006)
Ex parte Bilski, No. 2002-2257, 2006 WL 4080055 (B.P.A.I. Sept.Sept. 26, 2006)
                                                                                                           .. 1, 7, 10
  ........................................................................................................... 1, 7, 10

Glenayre Electronics, Inc. Jackson, 443 F.3d 851 (Fed. Cir. 2006) ...         .. 15
Glenayre Electronics, Inc. v. v. Jackson, 443 F.3d 851 (Fed. Cir. 2006) ........ 15

Gottschalk v. Benson, 409 U.S. 63 (1972) ..... 11, 12, 13, 16, 17, 18, 21, 23
Gottschalk v. Benson, 409 U.S. 63 (1972) ..... 9, 9, 11, 12, 13, 16, 17, 18, 21, 23

                                                                             .. 25, 26, 27
In re Abele, 684 F.2d 902 (C.C.P.A. 1982)...................................... 25, 26, 27
In re Abele, 684 F.2d 902 (C.C.P.A. 1982) ...

In re Alappat, 33 F.3d 1526, 1554 (Fed. Cir. 1994)..................................... 11
In re Alappat, 33 F.3d 1526, 1554 (Fed. Cir. 1994)...                                 . 11

In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995)
In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) ... ........................................ 11
                                                                                           . 11

In re Bradley, 600 F.2d 807 (C.C.P.A. 1981)                                      . 27, 28, 29
In re Bradley, 600 F.2d 807 (C.C.P.A. 1981) ... .................................. 27, 28, 29

                                                                                     . 1, 8
In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007)........................................ 1, 8
In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007)...



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In re Grams, 888 F.2d 835 (Fed. Cir. 1989)                                                  ... 19
In re Grams, 888 F.2d 835 (Fed. Cir. 1989) ... ................................................ 19

                                                                                         .. 17
In re Schrader, 22 F.3d 290 (Fed. Cir. 1994)............................................... 17
In re Schrader, 22 F.3d 290 (Fed. Cir. 1994)...

In re Taner, 478 F.2d 1392 (C.C.P.A. 1973)                                                  .. 21
In re Taner, 478 F.2d 1392 (C.C.P.A. 1973) ... ............................................... 21

Lab. Corp. of Am. Holdings Metabolite Lab., Inc., 126 S. Ct. Ct. (2006)
Lab. Corp. of Am. Holdings v. v. Metabolite Lab., Inc., 126 S.29212921 (2006)
                                                                                                           .. 4, 6, 19
  ........................................................................................................... 4, 6, 19

Mackay Radio & Tel. Co. Radio of of Am., 306 U.S. 86 (1939)                       .. 9
Mackay Radio & Tel. Co. v. v. Radio Am., 306 U.S. 86 (1939) ... .................... 9

                                                                            .. 10
Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).................... 10
Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)...

Order Granting En Banc Hearing In In re Bilski, 2007-1130, 2008 WL
Order Granting En Banc Hearing of of re Bilski, No. No. 2007-1130, 2008 WL
                                                                                 ... 14, 16, 20
  417680 (Fed. Cir. Feb 15, 2008)................................................... 14, 16, 20
  417680 (Fed. Cir. Feb 15, 2008)...

Parker v. Flook, 437 U.S. 584 (1978)                                ... 7, 11, 14, 18, 19, 20
Parker v. Flook, 437 U.S. 584 (1978) ... .............................. 7, 11, 14, 18, 19, 20

Paulik v. Rizkalla, 760 F.2d 1270 (Fed. Cir. 1985)........................................ 9
Paulik v. Rizkalla, 760 F.2d 1270 (Fed. Cir. 1985)...                                    .9

                                                                                                 ... 9
Pfaff v. Wells, 525 U.S. 55 (1998).................................................................. 9
Pfaff v. Wells, 525 U.S. 55 (1998)...

State St. Bank & Trust Co. Signature Fin. Group, Inc., 149 F.3d 1368
State St. Bank & Trust Co. v.v. Signature Fin. Group, Inc., 149 F.3d 1368
                                                                                    . 7, 11, 21, 22, 23
  (Fed. Cir. 1998)................................................................... 7, 11, 21, 22, 23
  (Fed. Cir. 1998)...

TrafFix Devices, Inc. Mktg Displays, Inc., 532 U.S. 23 23 (2001)                  .. 8
TrafFix Devices, Inc. v.v. Mktg Displays, Inc., 532 U.S.(2001) ... ................. 8


Statutes
Statutes


17 U.S.C. § 101 (2005)
17 U.S.C. § 101 (2005) ..................................................................................... 8
                                                                                                           .8

17 U.S.C. § 107 (1992)                                                                                  .. 15
17 U.S.C. § 107 (1992) ................................................................................... 15


Legislative Materials
Legislative Materials


James E. Rogan, Under Sec’y of Commerce for Intellectual Prop., United
James E. Rogan, Under Sec’y of Commerce for Intellectual Prop., United
  States Patent and Trademark Office, Statement Before the Subcommittee
  States Patent and Trademark Office, Statement Before the Subcommittee


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   on Courts, the Internet and Intellectual Property, Committee on
   on Courts, the Internet and Intellectual Property, Committee on the the
   Judiciary, U.S. House of Representatives (Apr. 2002) ...
   Judiciary, U.S. House of Representatives (Apr. 11,11, 2002) ......................... 4
                                                                                       .4

S. REP. NO. 1979, as reprinted in 1952 U.S.C.C.A.N. 2394                         .. 10
S. REP. NO. 1979, as reprintedin 1952 U.S.C.C.A.N. 2394 ... ....................... 10


Patents
Patents


U.S. Patent No. 11,081,866 (filed Mar. 2005) ...                                           .. 4
U.S. Patent No. 11,081,866 (filed Mar. 15,15, 2005) ......................................... 4

U.S. Patent No. 5,102,338 (filed July 31, 1990)                                               .. 1
U.S. Patent No. 5,102,338 (filed July 31, 1990) ... ............................................ 1

U.S. Patent No. 5,190,458 (filed Apr. 1991)...                                              .. 1
U.S. Patent No. 5,190,458 (filed Apr. 17,17, 1991)............................................ 1

U.S. Patent No. 6,292,788 (filed Dec. 1998) ...                                             ... 1
U.S. Patent No. 6,292,788 (filed Dec. 3, 3, 1998) ............................................. 1

U.S. Patent No. 6,544,037 (filed Apr. 2001)...                                              .. 1
U.S. Patent No. 6,544,037 (filed Apr. 17,17, 2001)............................................ 1

U.S. Patent No. 6,607,389 (filed Dec. 2001) ...                                          .. 1, 6
U.S. Patent No. 6,607,389 (filed Dec. 3, 3, 2001) ......................................... 1, 6

U.S. Patent No. 7,255,277 (filed Apr. 6, 2006).............................................. 1
U.S. Patent No. 7,255,277 (filed Apr. 6, 2006)...                                          .1

U.S. Patent. Application No. 10/869,082 (filed June 2004)...                       ... 1
U.S. Patent. Application No. 10/869,082 (filed June 17, 17, 2004)..................... 1


Other Authorities
Other Authorities


Editorial, Patently Obvious: The Internet Fueled an an Unhealthy Demand
Editorial, Patently Obvious: The Internet hashas FueledUnhealthy Demand
  for Dubious Patents Covering Common Business Practices, L.A. TIMES
  for Dubious Patents Covering Common Business Practices, L.A. TIMES, ,
                                                                                                            .. 3
  Oct. 30, 2006............................................................................................... 3
  Oct. 30, 2006...

Editorial, Pay to Obey, N.Y. TIMES, October 2006...
Editorial, Pay to Obey, N.Y. TIMES, October 31,31, 2006.................................. 3
                                                                                        .3

Floyd Norris, You Can’t Use that Tax Idea, Patented, N.Y. TIMES, Oct.
Floyd Norris, You Can’t Use that Tax Idea, It’s It’s Patented, N.Y. TIMES, Oct.
  20, 2006....................................................................................................... 3
  20, 2006...                                                                                                   .3

Greg Hitt, Ban on Tax-Plan Patents?, WALL ST. Sept. 24, 2007 ...                 .. 3
Greg Hitt, Ban on Tax-Plan Patents?, WALL ST. J., J., Sept. 24, 2007 .............. 3

John R. Thomas, The Patenting the Liberal Professions, 40 40 B.C. L. R
John R. Thomas, The Patenting ofof the Liberal Professions, B.C. L. REV. EV.
                                                                                                       ... 7
  1139, 1145 (1999)....................................................................................... 7
  1139, 1145 (1999) ...


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Pamela Samuelson, The Story of Baker Selden: Sharpening The
Pamela Samuelson, The Story of Baker v.v. Selden: Sharpening The
  Distinction Between Authorship and Invention, in INTELLECTUAL
  Distinction Between Authorship and Invention, in INTELLECTUAL
  PROPERTY S STORIES (Jane Ginsburg and Rochelle Cooper Dreyfuss, eds.,
  PROPERTY TORIES (Jane C. C. Ginsburg and RochelleCooper Dreyfuss, eds.,
  Foundation Press 2005)............................................................................... 5
  Foundation Press 2005)...                                                                           .5

Paul Davidson, Patents Out Control?, USA TODAY, Jan. 13, 2004 ...
Paul Davidson, Patents Out ofof Control?, USA TODAY, Jan. 13, 2004 .......... 3
                                                                            .3

Robert Bray, The European Union “Software Patents” Directive: is
Robert Bray, The European Union “Software Patents” Directive: What What is
  It? Why is It? Where are We Now?, 2005 DUKE & & TECH. REV. ..... 21
 It? Why is It? Where are We Now?, 2005 DUKE L. L. TECH. REV. 11 11 ..... 21

Sabra Chartrand, Patents: Insurance Protection Terrorism, Divorces,
Sabra Chartrand, Patents: Insurance Protection for for Terrorism, Divorces,
  Frivolous Lawsuits and Excessive Gambling Losses, N.Y. TIMES, June
  Frivolous Lawsuits and Excessive Gambling Losses, N.Y. TIMES, June 30, 30,
  2003............................................................................................................. 3
  2003...                                                                                                         .3

UNITED STATES ATENT AND TRADEMARK O OFFICE, PERFORMANCE
UNITED STATES PPATENT AND TRADEMARK FFICE, PERFORMANCE AND
AND
 ACCOUNTABILITY REPORT, FISCAL YEAR 2006                                       ... 4
 ACCOUNTABILITYREPORT, FISCAL YEAR 2006 .......................................... 4
 ...
UNITED STATES ATENT AND TRADEMARK O OFFICE, PERFORMANCE
UNITED STATES PPATENT AND TRADEMARK FFICE, PERFORMANCE AND
ANDACCOUNTABILITY REPORT, FISCAL YEAR 2007                                       ... 3
   ACCOUNTABILITYREPORT, FISCAL YEAR 2007 .......................................... 3
   ...
!!
!!

!!
!!

!




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              !"#"$%$&"'()'*&"$+$!"'()'#%*,*',-+*#$
              !"#"$%$&"'()'*&"$+$!"'()'#%*,*',-+*#$


       Amiciare not-for-profit organizations concerned withwith consumer
       Amici are not-for-profit organizations concerned consumer

welfare and innovation policy.1 Patent law enhances consumer welfare
welfare and innovation policy.1 Patent law enhances consumer welfare by by


encouraging innovation fields of of technology, it can can harm consumer
encouraging innovation inin fields technology, but but it harm consumer

welfare if construed as extending everything under the sun made by
welfare if construed as extending to to everything under the sun made by

humans. Amici urge the Court to interpret 35 U.S.C. § in accordance
humans. Amici urge the Court to interpret 35 U.S.C. § 101 101 in accordance

with these goals.
with these goals.

       Amici have no financial interest in thethe outcomethis this case and no
       Amici have no financial interest in outcome of of case and no

other party paid for or authored this brief.2 Pursuant to this Court’s Order,
other party paid for or authored this brief.2 Pursuant to this Court’s Order,


neither a motion for leave file nor consent of of parties is required.
neither a motion for leave toto file nor consent the the parties is required.




1 See http://www.consumersunion.org/;
1 See http://www.consumersunion.org/; http://www.eff.org/;
http://www.eff.org/;
http://www.publicknowledge.org/.
2 Students of the Samuelson Law, Technology & Public Policy Clinic at the
2 Students of the Samuelson Law, Technology & Public Policy Clinic at the U.C.
U.C.
Berkeley School of Law (Constance Jinhee Choi, Robert J. Esposito, and Solyn J. Lee)
Berkeley School of Law (Constance Jinhee Choi, Robert J. Esposito, and Solyn J. Lee)
           prepare this brief under the supervision of Deirdre K. Mulligan, Jason
helped to prepare this brief under the supervision of Deirdre K. Mulligan, Jason M.
Schultz, and Jennifer A. Lynch.
          and Jennifer A.


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I.
I.     SUMMARY OF ARGUMENT
       SUMMARY OF ARGUMENT

       Ever since State Street, the United States Patent and Trademark Office
       Ever since State Street, the United States Patent and Trademark Office

(“PTO”) has been flooded with applications for a wide variety of
(“PTO”) has been flooded with applications for a wide variety of non- non-

technological “inventions” such arbitration methods, dating methods, tax-
technological “inventions” such as as arbitration methods, dating methods, tax-

planning methods, legal methods, and novel-writing methods.3 These
planning methods, legal methods, and novel-writing methods.3 These


applications have eroded public confidence in patent system and driven
applications have eroded public confidence in thethe patent system and driven

up the cost and decreased the return for applicants seeking legitimate
up the cost and decreased the return for applicants seeking legitimate

technological patents. They also threaten to harm consumers by arbitrarily
technological patents. They also threaten to harm consumers by arbitrarily

erecting barriers to competition that bear relationship to to professional
erecting barriers to competition that bear nono relationshipthe the professional

competence of the service provider the quality of of service, and by
competence of the service provider oror the quality the the service, and by

imposing higher costs via licensing fees providers must and pass on on
imposing higher costs via licensing fees providers must paypay and pass to to

consumers.
consumers.

       To address these problems and to answer the questions posed by this
       To address these problems and to answer the questions posed by this

Court’s En Banc Order, we propose a framework guaranteeing that
Court’s En Banc Order, we propose a framework for for guaranteeing that

patents only issue to technological processes. This framework allow
patents only issue to technological processes. This framework will will allow



3 See Ex parte Bilski, No. 2002-2257, 2006
3 See Ex parte Bilski, No. 2002-2257, 2006 WLWL 4080055, at(B.P.A.I. Sept. 26, 2006).
                                                  4080055, at *7 *7 (B.P.A.I. Sept. 26,
2006).
For examples such patents, see, e.g., In re Comiskey, 499 F.3d 1365 (Fed. Cir.
For examples of such patents, see, e.g., In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007);
      Patent No. 7,255,277 (filed Apr. 6, 2006) (method of designating dating status);
U.S. Patent No. 7,255,277 (filed Apr. 6, 2006) (method of designating dating status); U.S.
Patent No. 6,292,788 (filed                          for tax-deferred real estate investing);
Patent No. 6,292,788 (filed Dec. 3, 1998) (method for tax-deferred real estate investing);
      Patent                                                             jury); U.S. Patent
U.S. Patent No. 6,607,389 (filed Dec. 3, 2001) (method of selecting a jury); U.S. Patent
              No. 6,607,389 (filed
     6,544,037 (filed Apr. 17,
No. 6,544,037 (filed Apr. 17, 2001) (method for teaching experiential writing); U.S.
                                                   teaching experiential writing);
Patent No. 5,102,338 (filed
Patent No. 5,102,338 (filed July 31, 1990) (method for training children in the art of
                                   31, 1990) (method for training
          writing); U.S. Patent No. 5,190,458 (filed Apr. 17, 1991) (method of assessing
dialogue writing);U.S. Patent No. 5,190,458 (filed Apr. 17, 1991) (method of assessing a
                                                               (filed June
person’s character); U.S. Patent Application No. 10/869,082 (filed June 17, 2004)
          character); U.S. Patent Application
(process
(process of relaying a story having a unique plot).
          of relaying                  unique plot).


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patent examiners and courts to clearly and efficiently separate
patent examiners and courts to clearly and efficiently separate

“technological” inventions, which should receive patent protection,
“technological” inventions, which should receive patent protection, from from

“non-technological” methods, which should
“non-technological” methods, which should not.not.

       Drawing upon this Court’s and Supreme Court precedents, argue
       Drawing upon this Court’s and Supreme Court precedents, we we argue

that (1) processes that transform machine, manufacture, or composition of
that (1) processes that transform a a machine, manufacture, or composition of

matter are presumptively technological and patent-eligible; (2) processes
matter are presumptively technological and patent-eligible; (2) processes

that do not employ human-made machines, manufactures, or compositions
that do not employ human-made machines, manufactures, or compositions

of matter to achieve their purpose are non-technological and thus patent-
of matter to achieve their purpose are non-technological and thus patent-

ineligible; and (3) processes that make some use human-made matter,
ineligible; and (3) processes that make some use ofof human-made matter,

machines, or manufactures to achieve their purposes may technological
machines, or manufactures to achieve their purposes may bebe technological

and therefore patent-eligible on a case-by-case basis light of of clear
and therefore patent-eligible on a case-by-case basis in in light fivefive clear

factors gleaned from the Supreme Court’s decisions in Benson, Flook
factors gleaned from the Supreme Court’s decisions in Benson, Flook and and

Diehr and this Court’s decisions State Street and AT&T v. Excel. As As
Diehr and this Court’s decisions in in State Street and AT&T v. Excel.we we

show, our approach finds the overwhelming majority of processes easily
show, our approach finds the overwhelming majority of processes easily

adjudicated under (1) and (2), while the factor-based test (3) (3) provides
adjudicated under (1) and (2), while the factor-based test for for provides a a

much-needed efficient and meaningful approach to analyzing
much-needed efficient and meaningful approach to analyzing andand

administering 101’s threshold for more complex cases.
administering §§ 101’s threshold for more complex cases.




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II.
II.      ARGUMENT
         ARGUMENT

      A. To Restore Public Confidence in the Patent System,
      A. To Restore Public Confidence in the Patent System, Assist Assist
         Technological Inventors, andand Protect Consumers, the Court
         Technological Inventors, Protect Consumers, the Court
         Should Refine Its Views on on Statutory Subject Matter
         Should Refine Its Views Statutory Subject Matter

      Non-technological applications have eroded public confidence in the the
      Non-technological applications have eroded public confidence in

patent system’s purpose and public benefit. In fact, when critics of
patent system’s purpose and public benefit. In fact, when critics of the the

patent system seek to highlight its failures, they often point to these non-
patent system seek to highlight its failures, they often point to these non-

technological patents as proof ofof system out of of control.4
technological patents as proof a a system out control.4

      These applications also impose significant practical and financial burdens
      These applications also impose significant practical and financial burdens

on the PTO, other inventors, and the public. Every year, the PTO struggles
on the PTO, other inventors, and the public. Every year, the PTO struggles

to review and grant patents on appropriate inventions.5 Reviewing
to review and grant patents on appropriate inventions.5 Reviewing


applications on behavioral, relational, informational, other non-
applications on behavioral, relational, informational, and and other non-

technological methods undermines the PTO’s ability to achieve goal in a
technological methods undermines the PTO’s ability to achieve this this goal in a

timely manner. The diversion of resources to review non-technological
timely manner. The diversion of resources to review non-technological




4 Greg Hitt, Ban on Tax-Plan Patents?, WALL
4 Greg Hitt, Ban on Tax-Plan Patents?, WALL ST.ST.Sept. 24, 2007,2007, at A1; Floyd
                                                    J., J., Sept. 24, at A1; Floyd Norris,
Norris,                        It’s Patented, N.Y. TIMES, Oct. 20, 2006, at C1; Editorial,
You Can’t Use that Tax Idea, It’s Patented, N.Y. TIMES, Oct. 20, 2006, at C1; Editorial,
                    TIMES,
Pay to Obey, N.Y. TIMES, October 31, 2006 at A1; Editorial, Patently Obvious: The
                             October 31, 2006 at A1; Editorial,
                                                Dubious Patents Covering Common
Internet has Fueled an Unhealthy Demand for Dubious Patents Covering Common
Business   Practices, L.A. TIMES, Oct. 30, 2006; Paul Davidson, Patents Out of Control?,
Business Practices, L.A. TIMES, Oct. 30, 2006; Paul Davidson, Patents Out of Control?,
USA TODAY, Jan. 13, 2004, at 1B; Sabra Chartrand, Patents: Insurance Protection
USA TODAY, Jan. 13, 2004, at 1B; Sabra Chartrand, Patents: Insurance Protection for
Terrorism, Divorces, Frivolous Lawsuits and Excessive Gambling Losses, N.Y. TIMES,
Terrorism, Divorces, Frivolous Lawsuits and Excessive Gambling Losses, N.Y. TIMES,
June 30, 2003, at C3.
June 30, 2003, at C3.
5 UNITED STATES PATENT AND TRADEMARK
5 UNITED STATES PATENT AND TRADEMARK OFFICE, OFFICE,    PERFORMANCE AND
                     AND
PERFORMANCE REPORT, FISCAL YEAR 2007 (noting that 467,243 patent
ACCOUNTABILITY
ACCOUNTABILITYREPORT, FISCAL YEAR 2007 (noting that 467,243 patent applications
applications 2007),
were filed in
http://www.uspto.gov/web/offices/com/annual/2007/2007annualreport.pdf.


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methods delays the consideration of technological inventions6—under-
methods delays the consideration of technological inventions6—under-


protecting them and potentially reducing investment in their fields.
protecting them and potentially reducing investment in their fields. It can It can

also hurt consumers by delaying public access innovative and beneficial
also hurt consumers by delaying public access to to innovative and beneficial

new advances in the arts.
new advances in the arts.

   1. There are Strong Public Policy Reasons Not to Patent Non- Non-
   1. There are Strong Public Policy Reasons Not to Patent
       Technological Methods
       Technological Methods

   Numerous policy problems also arise when patents are allowed for non-
   Numerous policy problems also arise when patents are allowed for non-

technological applications. For example, granting applications as
technological applications. For example, granting applications suchsuch as

Bilski’s encourages rent-seeking on human thought and behavior,7 imposing
Bilski’s encourages rent-seeking on human thought and behavior,7 imposing


significant transaction costs on non-industrial actors who have no reason
significant transaction costs on non-industrial actors who have no reason to to

expect they will need toto defend themselves against patents.8 The public may
expect they will need defend themselves against patents.8 The public may

understand that use of some technology could infringe a patent, it should
understand that use of some technology could infringe a patent, but but it should

not have to anticipate infringement claims individual thought process or
not have to anticipate infringement claims on on individual thought process or



6 See
6 See UUNITED STATES PATENTTAND TRADEMARKPERFORMANCE AND
         NITED STATES PATENT AND RADEMARK OFFICE, OFFICE,
ACCOUNTABILITY AND
PERFORMANCE REPORT, FISCAL YEAR 2006 (noting 25-44 month pendency
ACCOUNTABILITYREPORT, FISCAL YEAR 2006 (noting 25-44 month pendency rate),
rate),
http://www.uspto.gov/web/offices/com/annual/2006/50304_table4.html; James E. Rogan,
http://www.uspto.gov/web/offices/com/annual/2006/50304_table4.html; James E. Rogan,
Under Sec’y of Commerce for Intellectual Prop., United States Patent and Trademark
Under Sec’y of Commerce for Intellectual Prop., United States Patent and Trademark
Office, Statement
Office, Statement Before the Subcommittee on Courts, the Internet and Intellectual
                                                                      and Intellectual
Property, Committee on the Judiciary, U.S. House of Representatives (Apr. 11, 2002),
Property, Committee on the Judiciary, U.S. House of Representatives (Apr. 11, 2002),
(“[t]he increasing volume and complexity of our workload poses serious issues
(“[t]he increasing volume and complexity of our workload poses serious issues for the
           Some might
USPTO. Some might even use the word “crisis”),
                              use the word “crisis”),
http://www.ogc.doc.gov/ogc/legreg/testimon/107s/rogan0411.htm.
7 See, e.g., U.S. Patent No. 11,081,866 (filed Mar. 15, 2005) (method of directing
7 See, e.g., U.S. Patent No. 11,081,866 (filed Mar. 15, 2005) (method of directing funds
funds
to a charity).
8 See Lab. Corp.
8 See Lab. Corp. ofof Am. Holdings Metabolite Lab., Inc., 126126 S.2921, 2922-23
                     Am. Holdings v. v. Metabolite Lab., Inc., S. Ct. Ct. 2921,
2922-23                                      allowing patents improper subject
(2006) (Breyer, J., dissenting) (noting that allowing patents on improper subject matter
may impede rather than    promote the progress of the useful arts); eBay Inc. v.
may impede rather than promote the progress of the useful arts); eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388 (2006) (Kennedy, J., concurring) (noting potential
                                                          J., concurring)
problems arising from burgeoning number of business method patents).
problems arising from burgeoning number of business method patents).


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interactions.9 Thus, using “technology” a a substantive limitation
interactions.9 Thus, using “technology” as assubstantive limitation on on


patentability provides clear and intuitive demarcation to individuals who
patentability provides a a clear and intuitive demarcation to individuals who

want to avoid infringement.
want to avoid infringement.

   Non-technological applications can also create substantive conflicts
   Non-technological applications can also create substantive conflicts withwith

other areas of intellectual property law. For example, recent attempts
other areas of intellectual property law. For example, recent attempts to to

patent movie plots and novel-writing methods pit patent copyright
patent movie plots and novel-writing methods pit patent and and copyright

policy against each other.10 Copyright law works to promote the maximum
policy against each other.10 Copyright law works to promote the maximum


amount of creative expression within each genre while patent protection
amount of creative expression within each genre while patent protection in in

creative works would exclude but the first author from a particular style
creative works would exclude allall but the first author from a particular style

of writing.11 Given the Constitutional goal of promoting creativity
of writing.11 Given the Constitutional goal of promoting creativity in the in the


liberal arts, should be copyright, not patent, that regulates these works.
liberal arts, itit should be copyright, not patent, that regulates these works.

   Non-technological patents in service professions are also troubling. For
   Non-technological patents in service professions are also troubling. For

example, patents on doctors’ diagnostic thought processes could inhibit
example, patents on doctors’ diagnostic thought processes could inhibit

timely and appropriate medical care and undermine both Hippocratic
timely and appropriate medical care and undermine both thethe Hippocratic



9 Ex parte Bilski, 2006 WL 4080055,
9 Ex parte Bilski, 2006 WL 4080055, at at *17 (noting most individuals only worry
                                          *17 (noting most individuals only worry about
about                               with methods associated with industry and
patent infringement when dealing with methods associated with industry and the
            of goods). Unexpected patenting undermines
production of goods). Unexpected patenting undermines both the notice function of the
                                                                the notice function
patent system as well as its public disclosure goals.
patent system as well as its public disclosure goals.
10 See, e.g., U.S. Patent Application
10See, e.g., U.S. Patent Application No.No. 10/869,082 (filed June 17, 2004)
                                          10/869,082 (filed June 17, 2004) (process of
(process of
relaying a story having a unique plot).
11 See Pamela Samuelson,
11See Pamela Samuelson, The The Story of Baker v. Selden: Sharpening The
                                Story of Baker v. Selden: Sharpening The Distinction
Distinction
Between Authorship and Invention, INTELLECTUAL PROPERTY STORIES (Jane
Between Authorship and Invention, in in INTELLECTUAL PROPERTY STORIES (Jane C.
C.
Ginsburg and Rochelle Cooper Dreyfuss, eds.,                 Press 2005) (noting that
Ginsburg and Rochelle Cooper Dreyfuss, eds., Foundation Press 2005) (noting that
“Everything under the sun made by humans” is an overbroad conception of patentable
“Everything under the sun made by humans” is an overbroad conception of patentable
subject         since it would sweep into the patent system            that protects
subject mater, since it would sweep into the patent system everything that protects
copyrights).


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Oath’s basic tenets and the doctor-patient relationship.12 12 Similarly, patents
Oath’s basic tenets and the doctor-patient relationship. Similarly, patents

on legal techniques could undermine lawyers’ abilities to fulfill their ethical
on legal techniques could undermine lawyers’ abilities to fulfill their ethical

duty of zealous advocacy to their clients.1313 Even judges and juries might be
duty of zealous advocacy to their clients. Even judges and juries might be

affected if, for example, the PTO were to allow patents on methods
affected if, for example, the PTO were to allow patents on methods of of

calculating damages or determining liability. Patents on non-technological
calculating damages or determining liability. Patents on non-technological

services also hurt consumers by raising costs, limiting competition,
services also hurt consumers by raising costs, limiting competition, and and

erecting barriers that artificially limit professionals’ opportunities to improve
erecting barriers that artificially limit professionals’ opportunities to improve

their skills and competence.
their skills and competence.

   In light of these undesirable consequences stemming from thethe State
   In light of these undesirable consequences stemming from State

Street/AT&T experiment, the Court should take this opportunity to establish
Street/AT&T experiment, the Court should take this opportunity to establish

a clear threshold under 101 that will limit non-technological patent
a clear threshold under §§101 that will limit non-technological patent

applications as a matter of law and policy.
applications as a matter of law and policy.


   B. Section 101 Should Only Allow Patents on “Technological”
   B. Section 101 Should Only Allow Patents on “Technological”
      Inventions
      Inventions

           1.
           1.      Section 101 Must Serve Substantial Threshold Function
                   Section 101 Must Serve A A Substantial Threshold Function

       Both this Court and the Supreme Court have consistently recognized
       Both this Court and the Supreme Court have consistently recognized

that inventors must pass through 101’s gateway before novelty, non-
that inventors must pass through § § 101’s gateway before novelty, non-

obviousness and other requirements can be assessed. See Diamond Diehr,
obviousness and other requirements can be assessed. See Diamond v. v. Diehr,


12 See Metabolite, 126 S.
12See Metabolite, 126 S. Ct.Ct.2928-29 (noting special public interest considerations
                              at at 2928-29 (noting special public interest
considerations
         from patents
arising from patents that could restrict the medical profession and inhibit doctors from
                                                     profession and inhibit doctors from
using their best medical judgment).
13 See U.S. Patent No. 6,607,389 (filed Dec. 3, 2001) (method of selecting
13See U.S. Patent No. 6,607,389 (filed Dec. 3, 2001) (method of selecting a jury).
a jury).

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450 U.S. 175, 188 (1981); Parker Flook, 437 U.S. 584, 593 (1978); State
450 U.S. 175, 188 (1981); Parker v. v. Flook, 437 U.S. 584, 593 (1978); State

St. Bank & Trust Co. Signature Fin. Group, Inc., 149 F.3d 1368, 1372 n.2
St. Bank & Trust Co. v.v. Signature Fin. Group, Inc., 149 F.3d 1368, 1372 n.2

(Fed. Cir. 1998).
(Fed. Cir. 1998).

      Without any real threshold requirement, patent applicants have
      Without any real threshold requirement, patent applicants have

deluged the PTO with inventions that are inappropriate for patenting.
deluged the PTO with inventions that are inappropriate for patenting. See See

Bilski, 2006 WL 4080055, *3 (noting that “[p]erhaps encouraged by
Bilski, 2006 WL 4080055, at at *3 (noting that “[p]erhaps encouraged by

certain general language” State Street, there has been an influx of
certain general language” inin State Street, there has been an influx of

applications covering processes that are not tied implementation by by
applications covering processes that are not tied to to implementation a a

specific technology or machine). Thus, a substantial threshold is necessary
specific technology or machine). Thus, a substantial threshold is necessary

to keep unwanted applications out the PTO’s queue.
to keep unwanted applications out ofof the PTO’s queue.

      Such thresholds are not uncommon; fact, they exist in in all areas
      Such thresholds are not uncommon; inin fact, they existall areas of of

intellectual property law provide judicial and administrative economy and
intellectual property law to to provide judicial and administrative economy and

to ensure that laws reflect public policy goals such as protecting the public
to ensure that laws reflect public policy goals such as protecting the public

domain. See, e.g., Lab. Corp. of Am. Holdings v. Metabolite Lab., 126
domain. See, e.g., Lab. Corp. of Am. Holdings v. Metabolite Lab., Inc.,Inc., 126

S. Ct. 2921, 2926 (2006) (Breyer, dissenting) (comparing line between
S. Ct. 2921, 2926 (2006) (Breyer, J.,J., dissenting) (comparing line between

patentable processes and unpatentable principles copyright law’s
patentable processes and unpatentable principles toto copyright law’s

distinction between copyrighted material and non-copyrightable ideas);
distinction between copyrighted material and non-copyrightable ideas); JohnJohn

R. Thomas, The Patenting of the Liberal Professions, 40 B.C. L. REV. 1139,
R. Thomas, The Patenting of the Liberal Professions, 40 B.C. L. REV. 1139,

1145 (1999) (comparing doctrinal bars to patents business methods,
1145 (1999) (comparing doctrinal bars to patents on on business methods,

mental steps, algorithms and printed matter copyright law limits that
mental steps, algorithms and printed matter to to copyright law limits that



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protect public domain). See also TrafFix Devices, v. Mktg Displays,
protect public domain). See also TrafFix Devices, Inc. Inc. v. Mktg Displays,

Inc., 532 U.S. 23 (2001) (using “functionality” doctrine to limit trademark
Inc., 532 U.S. 23 (2001) (using “functionality” doctrine to limit trademark

protection for patentable products); U.S.C. § § 101 (2005) (codifying
protection for patentable products); 1717 U.S.C.101 (2005) (codifying

“useful article” doctrine limit copyright protection for pictorial, graphic,
“useful article” doctrine to to limit copyright protection for pictorial, graphic,

or sculptural works).
or sculptural works).

       In the domain of patent law, § 101 filters outout unpatentable inventions
       In the domain of patent law, § 101 filters unpatentable inventions

at the outset, obviating the need to evaluate other requirements such
at the outset, obviating the need to evaluate other requirements such as as

novelty and non-obviousness. addition, § 101 plays a crucial role role in
novelty and non-obviousness. In In addition, § 101 plays a crucial in the the

judicial economy patent litigation, where courts must contend with an
judicial economy ofof patent litigation, where courts must contend with an

ever-increasing caseload crowding their dockets. A robust § threshold
ever-increasing caseload crowding their dockets. A robust § 101 101 threshold

limits unnecessary judicial expenditures claim construction, discovery,
limits unnecessary judicial expenditures onon claim construction, discovery,

summary judgment, and trial.
summary judgment, and trial.

          2.
          2.     The Constitution and Judicial Precedents Support Using
                 The Constitution and Judicial Precedents Support Using
                 Section 101 to Limit Patentable Inventions to Advances
                 Section 101 to Limit Patentable Inventions to Advances in in
                 Technology
                 Technology

       To discern a reasonable and effective threshold forfor101, we we begin
       To discern a reasonable and effective threshold § § 101, begin

with first principles. The Constitution authorizes Congress to award patents
with first principles. The Constitution authorizes Congress to award patents

to inventors in order “Promote the Progress of . . . Useful Arts.” U.S.
to inventors in order toto “Promote the Progress .of ..the the Useful Arts.” U.S.

CONST. art. I, § 8, cl. 8. This Court has interpreted that purpose
CONST.art. I, § 8, cl. 8. This Court has interpreted that purpose as as

“advancing the useful arts—the process today called technological arts.”
“advancing the useful arts—the process today called technological arts.” In In

re Comiskey, 499 F.3d 1365, 1375 (Fed. Cir. 2007) (quoting Paulik
re Comiskey, 499 F.3d 1365, 1375 (Fed. Cir. 2007) (quoting Paulik v. v.



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Rizkalla, 760 F.2d 1270, 1276 (Fed. Cir. 1985) banc)). Thus, the
Rizkalla, 760 F.2d 1270, 1276 (Fed. Cir. 1985) (en(en banc)). Thus, the

Constitutional context patents—technological inventions in the the useful
Constitutional context ofof patents—technological inventions inuseful

arts—informs 101’s interpretation.
arts—informs §§ 101’s interpretation.

      Moreover, the Supreme Court has articulated numerous times that
      Moreover, the Supreme Court has articulated numerous times that

technology is what distinguishes patentable subject matter from which is
technology is what distinguishes patentable subject matter from thatthat which is

not. For example, Mackay Radio & & Co. v. Radio of Am., 306 306 U.S.
not. For example, inin Mackay RadioTel.Tel. Co. v. Radio of Am.,U.S. 86, 86,

94 (1939), the Court held that “[w]hile a scientific truth, or the mathematical
94 (1939), the Court held that “[w]hile a scientific truth, or the mathematical

expression of it, is not patentable invention, a a novel and useful structure
expression of it, is not a a patentable invention,novel and useful structure

created with the aid of knowledge scientific truth may be.” See See
created with the aid of knowledge of of scientific truth may be.” also also

Diehr, 450 U.S. at 184 (“Industrial processes . . the types which have
Diehr, 450 U.S. at 184 (“Industrial processes . . .. areare the types which have

historically been eligible receive the protection of our our patent laws.”).
historically been eligible to to receive the protection of patent laws.”).

      In addition, in Gottschalk Benson, 409 U.S. 63, 65 65 (1972),
      In addition, in Gottschalk v. v. Benson, 409 U.S. 63, (1972), the the

Supreme Court held that natural phenomena, mental processes, and abstract
Supreme Court held that natural phenomena, mental processes, and abstract

intellectual concepts are not patentable because they are basic tools
intellectual concepts are not patentable because they are basic tools of of

scientific and technological work. In other words, the difference between a
scientific and technological work. In other words, the difference between a

basic tool of technological work and actual patentable technological
basic tool of technological work and an an actual patentable technological

process is the application of that tool engineer or or improve technology.
process is the application of that tool to to engineer improve technology.

Id.; see also Pfaff v. Wells, 525 U.S. 55, (1998) (“The patent system
Id.; see also Pfaff v. Wells, 525 U.S. 55, 6363 (1998) (“The patent system

represents a carefully crafted bargain that encourages both the creation and
represents a carefullycrafted bargain that encourages both the creation and

the public disclosure of new and useful advances in technology, in return
the public disclosure of new and useful advances in technology, in return for for



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an exclusive monopoly for a limited period of time.”) (emphasis added);
an exclusive monopoly for a limited period of time.”) (emphasis added);

Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996)
Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996)

(“Congress created the Court of Appeals the Federal Circuit as as
(“Congress created the Court of Appeals forfor the Federal Circuitan an

exclusive appellate court for patent cases . observing that increased
exclusive appellate court for patent cases . ....observing that increased

uniformity would ‘strengthen United States patent system in such a way
uniformity would ‘strengthen thethe United States patent system in such a way

as to foster technological growth and industrial innovation.’”) (citation
as to foster technological growth and industrial innovation.’”) (citation

omitted) (emphasis added).
omitted) (emphasis added).

       Thus, using “technology” asas the threshold for patentability ensures
       Thus, using “technology” the threshold for patentability ensures

that basic human skills, behaviors, and interactions like those identified
that basic human skills, behaviors, and interactions like those identified in in

Section A as well as scientific tools, mental process, and abstract concepts
Section A as well as scientific tools, mental process, and abstract concepts

are free from encroachment by the patent system.1414
are free from encroachment by the patent system.

   C. A Framework Assessing Technological Processes
   C. A Framework for for Assessing Technological Processes

       In order to achieve the policy goals set out in Section A andand the
       In order to achieve the policy goals set out in Section A the

Constitutional purpose discussed Section B, § § 101 must present
Constitutional purpose discussed inin Section B,101 must present a a

technological threshold that both definable and meaningful. See Bilski,
technological threshold that is is both definable and meaningful. See Bilski,

2006 WL 4080055, *4 (“The USPTO is struggling to identify some way
2006 WL 4080055, atat *4 (“The USPTO is struggling to identify some way

to objectively analyze the statutory subject matter issue instead of saying
to objectively analyze the statutory subject matter issue instead of just just saying


14     is worth noting that while some argue there should be no substantive
14ItItis worth noting that while some argue there should be no substantive limits on
limits on subject matter under the oft-quoted language of “anything under the sun” in
patentable
patentable subject matter under the oft-quoted language of “anything         the sun”
              Diehr, 450 U.S. 175, 182 (1981), this quote
Diamond v. Diehr, 450 U.S. 175, 182 (1981), this quote was taken out of context from a
committee report, S. REP. NO. 1979, as reprinted in 1952 U.S.C.C.A.N. 2394, 2399. See
committee report, S. REP. NO. 1979, as reprinted in 1952 U.S.C.C.A.N.2394, 2399. See
Bilski, 2006 WL 4080055, at *5 (quoting Justice                  argument in
Bilski, 2006 WL 4080055, at *5 (quoting Justice Breyer at oral argument in Metabolite
noting this discrepancy).


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‘We know when we see it.’”) (no citation in original). To meet meet
‘We know it it when we see it.’”) (no citation in original). Tothese these

needs, the undersigned propose three categories, described below,
needs, the undersigned propose three categories, described below, to to

determine whether or not a a process claim is technologicalnature.15 15
determine whether or not process claim is technological in in nature.

           1.
           1.      Category One: Processes That Transform Machines,
                   Category One: Processes That Transform Machines,
                   Manufactures, and Matter Are Presumptively
                   Manufactures, and Matter Are Presumptively
                   Technological
                   Technological

       Under the first category, we seek approve the “easy” cases—cases
       Under the first category, we seek toto approve the “easy” cases—cases

that are, by their nature, presumptively technological. As numerous
that are, by their nature, presumptively technological. As numerous

Supreme Court cases have held, processes that transform matter,
Supreme Court cases have held, processes that transform matter,

manufactures, or machines into different state or thing are patentable.
manufactures, or machines into a a different state or thing are patentable.

Diehr, 450 U.S. at 184; Benson, 409 U.S. 69; Flook, 437 U.S. at 589.
Diehr, 450 U.S. at 184; Benson, 409 U.S. at at 69; Flook, 437 U.S. at 589.

Thus, in most of these cases, examiners can proceed under 101 without
Thus, in most of these cases, examiners can proceed under § § 101 without

complex analysis.
complex analysis.

       To “transform” something, however, does simply mean to change
       To “transform” something, however, does notnot simply mean to change

its state. As the Supreme Court has instructed, transformation changes
its state. As the Supreme Court has instructed, transformation changes the the

composition of the subject matter into a fundamentally different or
composition of the subject matter into a fundamentally different statestate or



15 We assume
15We assume forfor purposesthisthis brief that machines, compositions of and
                   purposes of of brief that machines, compositions of matter,
matter, and themselves are presumptively technological in nature; however, claims for
manufactures
manufactures themselves are presumptively technological in nature; however, claims
processes that are drafted as systems and machines present many of the same problems
processes that are drafted as systems and machines present many of the same problems
from a § 101 perspective, see, e.g., In re Beauregard,                         1995) and
from a § 101 perspective, see, e.g., In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) and
State                                         Group, 149 F.3d             Cir. 1998), and
State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368 (Fed. Cir. 1998), and
      St. Bank &
thus, our framework may be useful for testing these presumptions as well. Other policy-
                                                these presumptions as well. Other policy-
based exclusions, such as the printed-matter exception, would also serve to rebut such a
based exclusions, such as the printed-matter exception, would also serve to rebut such a
presumption. See In re Alappat,                                                C.J.,
presumption. See In re Alappat, 33 F.3d 1526, 1554 (Fed. Cir. 1994) (Archer, C.J.,
                                           1526, 1554 (Fed. Cir.
            in part and                    (“The discovery of music does not become
concurring in part and dissenting in part) (“The discovery of music does not become
patentable subject matter simply because there is an arbitrary claim to some structure.”).
patentable subject matter simply because there is an arbitrary claim to some structure.”).


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thing. Diehr, 450 U.S. at 184. Thus, substituting a computer processor
thing. Diehr, 450 U.S. at 184. Thus, substituting a new new computer processor

that is twice as fast transforms computer system, but machine-implemented
that is twice as fast transforms a a computer system, but machine-implemented

processes that simply rearrange the representation data in memory do not.
processes that simply rearrange the representation ofof data in memory do not.

While the function certain components may change in in relation to the
While the function ofof certain components may changerelation to the new new

representation of data, the fundamental nature the machine remains the
representation of data, the fundamental nature of of the machine remains the

same.16 Transformation for patentability purposes requires more than
same.16 Transformationfor patentability purposes requires more than


reordering; requires changing the fundamental nature of of object.
reordering; itit requires changing the fundamental naturethe the object.

       For example, moving chairs around a dining room table may
       For example, moving chairs around a dining room table may

“transform” one’s furniture in some sense. the the furniture’s fundamental
“transform” one’s furniture in some sense. But But furniture’s fundamental

nature is not transformed into different state or or thing, even if it becomes
nature is not transformed into a a different state thing, even if it becomes

more useful for dinner party. Similarly, one can program a computer
more useful for aa dinner party. Similarly, one can program a computer

within its normal parameters display either a box or circle on on the screen.
within its normal parameters to to display either a boxaor a circlethe screen.

A computer programmed display a a circle is certainly physically different
A computer programmed toto displaycircle is certainly physically different

from a computer programmed display a a square in sense that different
from a computer programmed toto displaysquare in thethe sense that different

gates are charged, different electrical signals are sent, etc. The differences,
gates are charged, different electrical signals are sent, etc. The differences,

however, are within the general parameters the machine as designed; no
however, are within the general parameters of of the machine as designed; no




16 In Benson, the Court described
16In Benson, the Court described the the “patent sought” as “a method of
                                      “patent sought” as “a method of programming a
programming a digital computer to convert signals from binary-coded decimal form
general-purpose
general-purposedigital computer to convert signals from binary-coded decimal form into
            form.” 409 U.S. at 65. Given that the Supreme Court held this was
pure binary form.” 409 U.S. at 65. Given that the Supreme Court held this was
unpatentable under § 101, the merely physical conversion of               signals
unpatentable under § 101, the merely physical conversion of electrical signals
representing data (whether it be numbers or other information) is not sufficiently
representing data (whether it be numbers or other information) is not sufficiently
transformative to be a patentable process, i.e. it does not transform the digital computer
transformative to be a patentable process, i.e. it does not transform the digital computer
                                    different state or thing. See
(the machine) into a fundamentally different state or thing. See id.


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matter has been transformed or improved, even though the output signal may
matter has been transformed or improved, even though the output signal may

be more useful for particular purpose.
be more useful for aa particular purpose.

      The Supreme Court’s holding Benson is is instructive on point.
      The Supreme Court’s holding in in Benson instructive on this this point.

There, the Court noted that the processes of “tanning, dyeing, making
There, the Court noted that the processes of “tanning, dyeing, making

waterproof cloth, vulcanizing India rubber, smelting ores” are instances
waterproof cloth, vulcanizing India rubber, [or] [or] smelting ores” are instances

“where the use of chemical substances physical acts, such as temperature
“where the use of chemical substances oror physical acts, such as temperature

control, changes articles or materials.” Benson, 409 U.S. at The Court
control, changes articles or materials.” Benson, 409 U.S. at 69.69. The Court

further reasoned “[t]he chemical process the physical acts which
further reasoned “[t]he chemical process or or the physical acts which

transform the raw material are, however, sufficiently definite to confine
transform the raw material are, however, sufficiently definite to confine the the

patent monopoly within rather definite bounds.” Id. Thus, transformation
patent monopoly within rather definite bounds.” Id. Thus, transformation

serves as a useful approximation for technological improvement because
serves as a useful approximation for technological improvement because it it

helps sufficiently define the boundaries between what is patentable what
helps sufficiently define the boundaries between what is patentable andand what

is not in a tangible and meaningful way.
is not in a tangible and meaningful way.

      Thus, taking guidance from Benson and Diehr, Category One finds
      Thus, taking guidance from Benson and Diehr, Category One finds

any process that transforms machine, matter, composition of of matter to
any process that transforms machine, matter, oror composition matter to be be

presumptively technological and patentable.
presumptively technological and patentable.

          2.
          2.     Category Two: Non-Transformative Processes That
                 Category Two: Non-Transformative Processes That Do Do
                 Not Employ Technological Elements To Achieve Their
                 Not Employ Technological Elements To Achieve Their
                 Purpose Are Not Patent-Eligible
                 Purpose Are Not Patent-Eligible

      Under Category Two, we seek eliminate the non-transformative
      Under Category Two, we seek toto eliminate the non-transformative

processes that fail to employ any technological elements—meaning human-
processes that fail to employ any technological elements—meaning human-



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made compositions of matter, machines, manufactures—to achieve their
made compositions of matter, machines, oror manufactures—to achieve their

purpose. These should not be patent-eligible under § 101, as they do
purpose. These should not be patent-eligible under § 101, as they do not not

contain any elements that pass the “technology” threshold.17 This would
contain any elements that pass the “technology” threshold.17 This would

include Bilski’s method,1818 and the non-technological tax-planning methods,
include Bilski’s method, and the non-technological tax-planning methods,

legal methods, dating methods, and methods for writing plots mentioned
legal methods, dating methods, and methods for writing plots mentioned in in

Section A.
Section A.

           3.
           3.      Category Three: Processes that Use Technological
                   Category Three: Processes that Use Technological
                   Elements to Achieve their Result are Patentable on a Case-
                   Elements to Achieve their Result are Patentable on a Case-
                   By-Case Basis Using Five Precedent-Based Factors
                   By-Case Basis Using Five Precedent-Based Factors

       Category Three covers processes that do not transform matter,
       Category Three covers processes that do not transform matter,

machines, or manufactures but do employ them achieve a a practical result.
machines, or manufactures but do employ them to to achievepractical result.

In other words, the process itself does not transform one of of other § 101
In other words, ifif the process itself does not transform onethe the other § 101

technologies (machines, matter, manufactures), then it should only
technologies (machines, matter, manufactures), then it should only be be

considered “technological” if it uses one of those technologies to perform
considered “technological” if it uses one of those technologies to perform

some other task. This limits patents to technology-related processes
some other task. This limits patents to technology-related processes and and

prevents patents like those cited Section A A from issuing.
prevents patents like those cited inin Section from issuing.

17 Note that technological elements do
17Note that technological elements do not not necessary include all physical elements.
                                              necessary include all physical elements. While
While processes may involve “physical” steps, not all processes are technological the
many
many processesmay involve “physical”steps, not all processes are technological in the
patent sense. After all, all activities are physical on some level because they involve
patent sense. After all, all activities are physical on some level because they involve
physics      matter, e.g., electrons, gravitational forces, energy, and so forth. Even
physics and matter, e.g., electrons, gravitational forces, energy, and so forth. Even
“mental steps” involve biochemical reactions and
“mental steps” involve biochemical reactions and neural pathway activation. However,
Supreme         precedent clearly prohibits patents on mental processes. See Parker v.
Supreme Court precedent clearly prohibits patents on mental processes. See Parker v.
                                Thus, technological elements
Flook, 437 U.S. 584 (1978). Thus, technological elements should only include human-
made compositions of matter, machines, or manufactures since those are the other
made compositions of matter, machines, or manufactures since those are the other
express categories mentioned in                              on categories like mental steps
express categories mentioned in § 101 and do not intrude on categories like mental steps
                                           and do not
or natural phenomena.
or natural phenomena.
18 This answers Question One of
18This answers Question One of the the Court’s Order Granting En Banc Hearing re
                                         Court’s Order Granting En Banc Hearing of In
of In re 2007-1130, 2008 WL 417680, at *1 (Fed. Cir. Feb 15, 2008).
Bilski, No.
Bilski, No. 2007-1130,         WL 417680, *1 (Fed. Cir. Feb

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     There are concerns, of course, that because almost any “process” can
     There are concerns, of course, that because almost any “process” can bebe

carried out via human-made machine, manufacture, composition of
carried out via aahuman-made machine, manufacture, or or composition of

matter, this would mean that all processes are patentable with simple
matter, this would mean that all processes are patentable with thethe simple

addition of technological element. However, the Supreme Court
addition of aatechnological element. However, the Supreme Court has has

expressly warned against allowing claims where inclusion of technology
expressly warned against allowing claims where thethe inclusion of technology

is “token.” Diehr, 450 U.S. at 193 n.14. To this this and the use of
is “token.” Diehr, 450 U.S. at 193 n.14. To limit limitand avoid avoid the use of

“artful drafting” circumvent § 101’s substantive gate-keeping role,
“artful drafting” to to circumvent § 101’s substantive gate-keeping role,

patentability in these instances should be decided a a case-by-case basis
patentability in these instances should be decided onon case-by-case basis

using the five factors below order to to determine their nature.
using the five factors below in in order determine their truetrue nature.

   D. Five Precedent-Based Factors to Help Determine the NatureNature of
   D. Five Precedent-Based Factors to Help Determine the of
      Non-Transformative Processes That Employ Technology
      Non-Transformative Processes That Employ Technology

       Courts have historically used factored tests analyze tough issues in
       Courts have historically used factored tests to to analyze tough issues in

other areas of intellectual property law. See, e.g., Glenayre Electronics,
other areas of intellectual property law. See, e.g., Glenayre Electronics, Inc. Inc.

v. Jackson, 443 F.3d 851 (Fed. Cir. 2006) (evaluating fifteen “Georgia-
v. Jackson, 443 F.3d 851 (Fed. Cir. 2006) (evaluating fifteen “Georgia-

Pacific” factors approximate appropriate patent damages); AMF Inc. Inc.
Pacific” factors toto approximate appropriate patent damages); AMF v. v.

Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (weighing eight “Sleekcraft”
Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (weighing eight “Sleekcraft”

factors to determine whether trademark likelihood of confusion exists);
factors to determine whether trademark likelihood of confusion exists); 17 17

U.S.C. § 107 (1992) (outlining four non-exclusive factors for determining
U.S.C. § 107 (1992) (outlining four non-exclusive factors for determining

fair use on a case-by-case basis). applying the factors described below,
fair use on a case-by-case basis). InIn applying the factors described below,

the Court can do the same for the patentability of Category Three processes.
the Court can do the same for the patentability of Category Three processes.




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       The analysis begins with the entire invention rather than its result.
       The analysis begins with the entire invention rather than its result.

This is one aspect of this Court’s State Street and AT&T decisions needs
This is one aspect of this Court’s State Street and AT&T decisions thatthat needs

clarification.19 While the result is important part of an an inventive process,
clarification.19 While the result is an an important part ofinventive process,


the Supreme Court has instructed us to look the invention as as a whole,
the Supreme Court has instructed us to look at at the invention a whole,

Diehr, 450 U.S. at 188. Also, with other balancing tests, no one one factor
Diehr, 450 U.S. at 188. Also, as as with other balancing tests, no factor

should be dispositive; all factors should considered and weighed to
should be dispositive; all factors should be be considered and weighed to

achieve an appropriate result. Below provide an an explanation of
achieve an appropriate result. Below wewe provide explanation of eacheach

factor in turn.
factor in turn.

          1.
          1.      Is the technology claimed merely that process is
                  Is the technology claimed merely that the the process is
                  capable of being carried out a a machine?
                  capable of being carried out on onmachine?

       It is well-established that a a process does not become patentable
       It is well-established that process does not become patentable

merely because it is capable of being carried out a a machine. Benson, 409
merely because it is capable of being carried out ononmachine. Benson, 409

U.S. at 63. In Benson, the Court concluded that mere fact that the
U.S. at 63. In Benson, the Court concluded that thethe mere fact that the

mathematical procedures could be carried out existing computers was not
mathematical procedures could be carried out in in existing computers was not

sufficient to find the process patentable. at at 71-72. The Court held
sufficient to find the process patentable. Id. Id.71-72. The Court held this this

was prudent because the mere capability for a process be carried out on a
was prudent because the mere capability for a process to to be carried out on a

machine was too broad limitation and would, in essence wholly pre-empt
machine was too broad aalimitation and would, in essence wholly pre-empt

use of the process in any field. Although Claim 13, for example, did not
use of the process in any field. Id.Id. Although Claim 13, for example, did not

contain any reference to particular apparatus, the method could be carried
contain any reference to aa particular apparatus, the method could be carried

out on an apparatus. Id. 73-74. The Supreme Court, however, held that
out on an apparatus. Id. atat 73-74. The Supreme Court, however, held that

19 See Question Five of
19See Question Five of thethe Court’s En Banc Order, 2008 417680, at *1.
                           Court’s En Banc Order, 2008 WL WL 417680,
at *1.

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Claim 13 was not patentable because patent on a method that “can be done
Claim 13 was not patentable because a a patent on a method that “can be done

mentally” in practical effect would be a patent on the algorithm Id. at
mentally” in practical effect would be a patent on the algorithm itself.itself. Id. at

67, 72. See also In re Schrader, F.3d 290, 294 (Fed. Cir. 1994) (holding
67, 72. See also In re Schrader, 2222 F.3d 290, 294 (Fed. Cir. 1994) (holding

that a process connecting auction bidders via closed-circuit television
that a process connecting auction bidders via closed-circuit television

through a large-screen display was patent-ineligible despite possibility
through a large-screen display was patent-ineligible despite the the possibility

that the result of the auction could displayed on a a screen).
that the result of the auction could bebe displayed onscreen).

       Factor one thus weighs against patentability forfor process claims whose
       Factor one thus weighs against patentability process claims whose

only connection to technology their possible execution on on a machine.
only connection to technology is is their possible executiona machine.

          2.
          2.      Is the technology claimed merely that process is
                  Is the technology claimed merely that the the process is
                  actually carried out a a machine?
                  actually carried out byby machine?

       Factor two assesses whether a claim’s only connection to technology
       Factor two assesses whether a claim’s only connection to technology

is its implementation on specific machine or or system.
is its implementation on a a specific machine system.

       A process is not patentable simply because the patent claim calls for for
       A process is not patentable simply because the patent claim calls

its implementation on specific apparatus. In In Benson, although Claim 8
its implementation on a a specific apparatus. Benson, although Claim 8

disclosed the apparatus for carrying out algorithm—a “reentrant shift
disclosed the apparatus for carrying out itsits algorithm—a “reentrant shift

register”—the Supreme Court held that “the mathematical formula has
register”—the Supreme Court held that “the mathematical formula here here has

no substantial practical application except in connection with a digital
no substantial practical application except in connection with a digital

computer” and in practical effect would be a patent on an idea
computer” and in practical effect would be a patent on an idea andand

prohibited by 101. 409 U.S. at at 71-72. Thus, the fact fact process
prohibited by ! ! 101. 409 U.S.71-72. Thus, the meremerethat athat a process




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was actually practiced on machine did not change the mental character of
was actually practiced on machine did not change the mental character of the the

claim into technological one. at at
claim into aatechnological one. Id. Id.71. 71.

       Using Benson’s treatment of Claim 8 a a model, factor instructs
       Using Benson’s treatment of Claim 8 as as model, factor twotwo instructs

examiners to assess whether a claim’s only connection to technology is
examiners to assess whether a claim’s only connection to technology is its its

actual execution on machine. An affirmative answer weighs against
actual execution on aamachine. An affirmative answer weighs against

patentability.20
patentability.20


           3.
           3.      Is the claimed technology merely a field-of-use limitation?
                   Is the claimed technology merely a field-of-use limitation?

       Factor three is designed to prevent the “artful drafting” of adding a
       Factor three is designed to prevent the “artful drafting” of adding a

technological field-of-use limitation in order to the the § 101 threshold. In
technological field-of-use limitation in order to passpass § 101 threshold. In

Flook, the Court held that claim was not patentable just because it was tied
Flook, the Court held that a a claim was not patentable just because it was tied

to a specific end use. 437 U.S. at 595. There, the Court rejected a claim
to a specific end use. 437 U.S. at 595. There, the Court rejected a claim

under § 101 for an improved method calculation, even though the
under § 101 for an improved method of of calculation, even though the

calculation was implemented via computers “automatic monitoring
calculation was implemented via computers for for “automatic monitoring

alarming” during catalytic conversion of hydrocarbons. Id. no matter
alarming” during catalytic conversion of hydrocarbons. Id. Thus, Thus, no matter

how transformative or technological field-of-use limitation is, Flook
how transformative or technological thethe field-of-use limitation is, Flook

holds that this alone is insufficient to make a process patentable. Id. at
holds that this alone is insufficient to make a process patentable. Id. at 590,590,

593 n.11; see also Diehr, 450 U.S. 193 n.14. Thus, under factor three, if a
593 n.11; see also Diehr, 450 U.S. atat 193 n.14. Thus, under factor three, if a




20 For instance, if Claim 1
20For instance, if Claim 1 of of Bilski were include a limitation requiring the the
                              Bilski were to to include a limitation requiring method be
method be         telephone, factor       would still weigh against patentability because
implemented via telephone, factor two would still weigh against patentability because
this inclusion was merely a means    for executing the otherwise non-technological method.
this inclusion was merely a means for executing the otherwise non-technological method.


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Category Three process is only tied technology via a field-of-use
Category Three process is only tied toto technology via a field-of-use

limitation, this weighs against patentability.
limitation, this weighs against patentability.

           4.
           4.      Is the claimed technology merely insignificant pre- or
                   Is the claimed technology merely insignificant pre- or post- post-
                   solution activity?
                   solution activity?

       The Flook case also held that technological elements in a process
       The Flook case also held that technological elements in a process

must amount to more than insignificant post-solution activity in to
must amount to more than insignificant post-solution activity in orderorder to

render a claim patentable under ! 101. 437 U.S. at (noting that
render a claim patentable under ! 101. 437 U.S. at 590590 (noting that


discovery of the Pythagorean theorem would not have been patentable even
discovery of the Pythagorean theorem would not have been patentable even

if usefully applied existing survey techniques); see also Diehr, 450 450 at
if usefully applied toto existing survey techniques); see also Diehr, U.S. U.S. at

193 n.14 (noting that although some post-solution activity be be attached
193 n.14 (noting that although some post-solution activity can canattached to to

almost any mathematical formula, the formula does become patentable
almost any mathematical formula, the formula does notnot become patentable

subject matter merely by including in claim a “token post-solution
subject matter merely by including in thethe claim a “token post-solution

activity”).
activity”).

       Similarly, insignificant pre-solution activity is also also patent-ineligible
       Similarly, insignificant pre-solution activity is patent-ineligible

subject matter. See In re Grams, 888 F.2d 835, 839 (Fed. 1989)
subject matter. See In re Grams, 888 F.2d 835, 839 (Fed. Cir.Cir. 1989)

(holding pre-solution data-gathering step could convert an an unpatentable
(holding pre-solution data-gathering step could notnot convertunpatentable

method into patentable subject matter).21 Accordingly, if the technology
method into patentable subject matter).21 Accordingly, if the technology




21 See also Metabolite, 126 S.
21See also Metabolite, 126 S. Ct. Ct.2927 (reasoning that despite claiming the step of
                                     at at 2927 (reasoning that despite claiming the
step of           from a           assay, “claim
obtaining results from a protein assay, “claim 13 is not a process for transforming blood
                                                              process for transforming
or any other matter” because    a protein assay, while itself a transformative process, is
or any other matter” because a protein assay, while itself a transformative process, is
                    activity to a discovered               unpatentable correlation)
mere pre-solution activity to a discovered yet arguably unpatentable correlation)
(emphasis
(emphasis in original).
           in original).


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used in a Category Three process is merely insignificant pre- or post-
used in a Category Three process is merely insignificant pre- or post-

solution activity, it should generally be found patent-ineligible.
solution activity, it should generally be found patent-ineligible.

          5.
          5.     Does the process produce useful, concrete and tangible
                 Does the process produce aa useful, concrete and tangible
                 technological result?
                 technological result?

      Factor five addresses, in part, this Court’s Banc Question Five as
      Factor five addresses, in part, this Court’s EnEn Banc Question Five as

to whether the Court’s precedents State Street and AT&T should be
to whether the Court’s precedents inin State Street and AT&T should be

reconsidered and to what extent, any, they should be overruled. We
reconsidered and to what extent, if if any, they should be overruled. We

believe that the “useful, concrete and tangible result” (UC&TR) test
believe that the “useful, concrete and tangible result” (UC&TR) test from from

those cases deviates too far from the proper 101 threshold of of technology,
those cases deviates too far from the proper § § 101 threshold technology,

both in that allows inventions to to patentable even when they do do
both in that itit allows inventions be be patentable even when theynot not

transform matter or employ technology and in that test focuses entirely
transform matter or employ technology and in that the the test focuses entirely

on the result instead of the claim as whole. In In order to bring these
on the result instead of the claim as a a whole. order to bring these

decisions in line with Supreme Court precedents and good public policy,
decisions in line with Supreme Court precedents and good public policy, the the

UC&TR test should be reclassified the final factor and focus on
UC&TR test should be reclassified as as the final factor and focus on

technological results so as to better capture the proper scope § § 101
technological results so as to better capture the proper scope of of101

processes.
processes.

      Supreme Court precedent particularly compels this. example, the
      Supreme Court precedent particularly compels this. For For example, the

Diehr invention produced the technological result manufacture, i.e.
Diehr invention produced the technological result of aof a manufacture, i.e.

cured synthetic rubber. 450 U.S. 187. This is distinguishable from the
cured synthetic rubber. 450 U.S. at at 187. This is distinguishable from the

results in Benson and Flook where the results were numerical,
results in Benson and Flook where the results were numerical, notnot

technological. See Flook, 437 U.S. at 585 (finding the result of an alarm
technological. See Flook, 437 U.S. at 585 (finding the result of an alarm


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limit to be merely number); Benson, 409 U.S. at at (finding that the the result
limit to be merely a a number); Benson, 409 U.S. 71 71 (finding thatresult

of method was numerical); see also re Taner, 478 F.2d 1392 (C.C.P.A.
of method was numerical); see also InIn re Taner, 478 F.2d 1392 (C.C.P.A.

1973) (finding mere output numbers was not a technological result).
1973) (finding mere output of of numbers was not a technological result).

While State Street and AT&T involved computers telecommunication
While State Street and AT&T involved computers andand telecommunication

systems, they actually present similar situations to Flook Benson. State
systems, they actually present similar situations to Flook andand Benson. State

Street’s machine produced the result a a final share price and AT&T’s
Street’s machine produced the result ofof final share price and AT&T’s

system produced a data field. State Street, 149 F.3d at 1373; AT&T Corp.
system produced a data field. State Street, 149 F.3d at 1373; AT&T Corp. v. v.

Excel Commc’ns, Inc., 172 F.3d 1352, 1354 (Fed. Cir. 1999). As in
Excel Commc’ns, Inc., 172 F.3d 1352, 1354 (Fed. Cir. 1999). As in FlookFlook

and Benson, these are informational and financial results, technological
and Benson, these are informational and financial results, notnot technological

ones.22 Thus, whether or not the result technological strongly correlates
ones.22 Thus, whether or not the result is is technological strongly correlates


with whether or not the invention is technological in nature thus
with whether or not the invention is technological in nature and and thus

patentable.
patentable.

   E. Applying the Five Factors To Historical Category Three Cases Cases
   E. Applying the Five Factors To Historical Category Three

     To demonstrate how the five factors would work in Category Three
     To demonstrate how the five factors would work in Category Three

cases, we apply them below to exemplary claims from several historical
cases, we apply them below to exemplary claims from several historical

cases on patentable subject matter.
cases on patentable subject matter.




22 Note also that this revised UC&TR factor would also bring United States
22Note also that this revised UC&TR factor would also bring United States patentable
patentable                                    European Patent Office
subject matter into closer harmony with the European Patent Office (EPO), which
         matter into
requires an invention to produce “technical effects beyond the normal physical
          an invention
interactions between             and the computer” in order to be patentable. See
interactions between a program and the computer” in order to be patentable. See Robert
      The European Union “Software                 Directive: What is It? Why It? Where
Bray, The European Union “Software Patents” Directive: What is It? Why is It? Where
                2005 DUKE L. & TECH. REV. 11, 22. “technological result” factor
are We Now?, 2005 DUKE L. & TECH. REV. 11, 22. AA “technologicalresult” factor would
                              effects” test in this regard.
parallel the EPO’s “technical effects” test in this regard.


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              1. State Street Bank Signature Financial Group
              1. State Street Bank v.v. Signature Financial Group

       In State Street, this Court examined a a claim formachine—a
       In State Street, this Court examined claim for a a machine—a

data-processing system—that carries out series of computations to
data-processing system—that carries out a a series of computations to

produce a numerical result. 149 F.3d at 1371-72. As the Court noted,
produce a numerical result. 149 F.3d at 1371-72. As the Court noted,

however, “[t]he question whether a a claim encompasses statutory
however, “[t]he question of of whetherclaim encompasses statutory

subject matter should not focus on which of four categories of
subject matter should not focus on which of thethe four categories of

subject matter a claim directed to—process, machine, manufacture,
subject matter a claim isis directed to—process, machine, manufacture,

or composition of matter—but rather the essential characteristics of
or composition of matter—but rather on on the essential characteristics of

the subject matter[.]” at at 1375; also AT&T, 172 F.3d at 1357
the subject matter[.]” Id.Id. 1375; seesee also AT&T, 172 F.3d at 1357

(“Whether stated implicitly or explicitly, we consider the scope
(“Whether stated implicitly or explicitly, we consider the scope of § of §

101 to be the same regardless of the form—machine process—in
101 to be the same regardless of the form—machine or or process—in

which a particular claim is is drafted.”).23
which a particular claim drafted.”).23

       The first factor asks whether, like Claim 13 13Benson, the link link to
       The first factor asks whether, like Claim in in Benson, the to

technology in the claim merely that the process could be be carried out
technology in the claim is is merely that the process could carried out on aon a

machine. Here, the answer yes. The nature of of invention is a is a method
machine. Here, the answer is is yes. The nature the the invention method

of processing data, which can be carried out a a computer. As the Supreme
of processing data, which can be carried out onon computer. As the Supreme

Court reasoned in Benson, “mathematical procedures can carried out in
Court reasoned in Benson, “mathematical procedures can bebe carried out in

existing computers long use, no new machinery being necessary.” 409
existing computers long inin use, no new machinery being necessary.” 409


23 In addition, the Supreme Court
23In addition, the Supreme Court hashas recognized artful applicants may attempt to
                                       recognized that that artful applicants may
attempt to
mask  unpatentable processes in the guise of machine claims. See Cochrane v. Deener, 94
mask unpatentable processes in the guise of machine claims. See Cochrane v. Deener, 94
                                  “[t]he machinery pointed out as
U.S. 780, 788 (1876) (noting that “[t]he machinery pointed out as suitable to perform the
process
process may or may not be new or patentable”).
        may or may not be new or patentable”).


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U.S. at 67. Like Benson, the data processing in State Street “can [also]
U.S. at 67. Like Benson, the data processing in State Street “can [also] be be

carried out in existing computers long in use.”
carried out in existing computers long in use.” Id. Id.

       The second factor follows the same course. It asks whether
       The second factor follows the same course. It asks whether the the

claim’s tie to technology merely that its its process is actually carried out
claim’s tie to technology is is merely that process is actually carried out by by

a machine, similar to Claim 8 Benson. Again, the the answer is there is
a machine, similar to Claim 8 in in Benson. Again, answer is yes; yes; there is

no other tie to technology State Street’s claim other than the machine
no other tie to technology inin State Street’s claim other than the machine

components necessary for carrying out the data processing method. Thus,
components necessary for carrying out the data processing method. Thus,

both factor one and two weigh against patentability.
both factor one and two weigh against patentability.

       Factor three asks whether the technology merely a a field-of-use
       Factor three asks whether the technology is is merelyfield-of-use

limitation such as in Flook. The answer here is it is not. However, this
limitation such as in Flook. The answer here is thatthat it is not. However, this

is because the field-of-use limitation is non-technological itself, as
is because the field-of-use limitation is non-technological itself, as it is it is

directed to managing financial services configuration as a partnership.
directed to managing aafinancial services configuration as a partnership.

Thus, factor three also weighs against patentability. Factor asks
Thus, factor three also weighs against patentability. Factor fourfour asks

whether the technological elements are either pre post-solution activity.
whether the technological elements are either pre or or post-solution activity.

Here, it is neither, in so far as the claimed machine performs data-
Here, it is neither, in so far as the claimed machine performs the the data-

processing solution.24
processing solution.24

       Finally, under factor five, the process does not produce a a
       Finally, under factor five, the process does not produce

technological result. While a final share price be be concrete and tangible,
technological result. While a final share price maymayconcrete and tangible,

it is neither useful to the apparatus the invention, nor to to external
it is neither useful to the apparatus ofof the invention, noranyany external


24 See State Street,
24See State Street, 149149 F.3d at 1371 (“Givencomplexity of theof the
                        F.3d at 1371 (“Given the the complexity calculations, a
calculations, a                   a virtual necessity to perform
computer or equivalent device is a virtual necessity to perform the task.”).


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technology or technological field; rather financial in nature. In
technology or technological field; rather it isit is financial in nature. In

summary, factors one, two, three and five weigh against patentability while
summary, factors one, two, three and five weigh against patentability while

factor four weighs favor of it. it. Thus, patentability should be denied.
factor four weighs inin favor of Thus, patentability should be denied.

              2. AT&T Excel
              2. AT&T v.v. Excel

       In AT&T, this Court examined a method billing long distance calls
       In AT&T, this Court examined a method for for billing long distance calls

that accounts for the caller and the receiver having different PICs, or primary
that accounts for the caller and the receiver having different PICs, or primary

                                                       172 F.3d at 1353. The
interexchange carriers (i.e. long distance providers). 172 F.3d at 1353. The
interexchange carriers (i.e. long distance providers).

process involves two steps: the creation a a message record and the
process involves two steps: the creation ofof message record and the

recordation of the PIC indicator each caller. Id.
recordation of the PIC indicator of of each caller. Id.

       As in State Street, factor one weighs against patentability because
       As in State Street, factor one weighs against patentability because thethe

invention has no particular tie technology other than the fact that a
invention has no particular tie to to technology other than the fact that a

machine is capable of performing the steps the claimed process. Factor
machine is capable of performing the steps of of the claimed process. Factor

two similarly weighs against patentability because claim does not
two similarly weighs against patentability because the the claim does not

involve any technology beyond the telecommunications system
involve any technology beyond the telecommunications system that that

facilitates the call and the message record.
facilitates the call and the message record.

       Factor three asks whether the claim recites technology merely as a a
       Factor three asks whether the claim recites technology merely as

field-of-use limitation. Here, answer is yes. The preamble states that that
field-of-use limitation. Here, the the answer is yes. The preamble states the the

billing method “for use in in a telecommunications system,” although it
billing method isis “for use a telecommunications system,” although it

could just as easily be implemented any service industry unrelated to
could just as easily be implemented in in any service industry unrelated to

technology. Id. at 1354. For instance, the method could be used to two
technology. Id. at 1354. For instance, the method could be used to bill bill two



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individuals covered by different insurance companies who involved in an
individuals covered by different insurance companies who are are involved in an

automobile accident. Therefore, the technology functions solely field-
automobile accident. Therefore, the technology functions solely as a as a field-

of-use limitation and thus weighs against patentability.
of-use limitation and thus weighs against patentability.

       The fourth factor asks whether the claim recites technology only as as
       The fourth factor asks whether the claim recites technology only

part of incidental pre- post-solution activity. Like State Street, this factor
part of incidental pre- oror post-solution activity. Like State Street, this factor

weighs in favor of patentability, because telecommunications system
weighs in favor of patentability, because thethe telecommunications system

carries out both steps of the claim.
carries out both steps of the claim.

       Factor five questions whether the process produces a useful, concrete,
       Factor five questions whether the process produces a useful, concrete,

and tangible technological result. The instant process produces a record
and tangible technological result. The instant process produces a call call record

containing the PIC indicators the caller and receiver; the result of the
containing the PIC indicators of of the caller and receiver; the result of the

process is mere information. While information is useful for billing
process is mere information. While thisthis information is useful for billing

purposes, it does not improve the performance function of of
purposes, it does not improve the performance or or functionthe the

telecommunications system. Overall, factors one, two, three five five
telecommunications system. Overall, factors one, two, three and and all all

weigh against patentability, with only factor weighing in favor. As in
weigh against patentability, with only factor fourfour weighing in favor. As in

State Street, patentability should be denied.
State Street, patentability should be denied.

              3. In re Abele
              3. In re Abele

       In re Abele was aacase where the CCPA considered two variants of a a
       In re Abele was case where the CCPA considered two variants of

method intended to improve the function of a computed tomography scanner
method intended to improve the function of a computed tomography scanner

(“CAT scanner”). 684 F.2d 902 (C.C.P.A. 1982). The first claimed in
(“CAT scanner”). 684 F.2d 902 (C.C.P.A. 1982). The first claimed in

general language “a method of displaying data in a field,” was held
general language “a method of displaying data in a field,” and and was held



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nonstatutory, while the second limited the claim to “a method of displaying
nonstatutory, while the second limited the claim to “a method of displaying

X-ray attenuation data produced a a two dimensional field computed
X-ray attenuation data produced inin two dimensional field by aby a computed

tomography scanner,” and was held statutory. at at 908.
tomography scanner,” and was held statutory. Id. Id.908.

       Under our analysis, factor one weighs in in favor patentability
       Under our analysis, factor one weighs favor of of patentability

because unlike State Street and AT&T, the claim does not merely assert that
because unlike State Street and AT&T, the claim does not merely assert that

the steps of the process can be performed by the recited machine. The CAT
the steps of the process can be performed by the recited machine. The CAT

scanner is much more than means to perform calculations; it is object
scanner is much more than aameans to perform calculations; it is the the object

of the claim that the invention seeks improve. Therefore, the the use
of the claim that the invention seeks to to improve. Therefore,use of a of a

machine is not optional, nor it it tangential to object of the the invention
machine is not optional, nor is is tangential to the the object of invention or or

even merely a means of implementing Factor two also weighs in favor of
even merely a means of implementing it. it. Factor two also weighs in favor of

patentability. The claim involves more than the mere calculation of
patentability. The claim involves more than the mere calculation of X-ray X-ray

data by a CAT scanner. X-ray attenuation data comes in from the scanner
data by a CAT scanner. X-ray attenuation data comes in from the scanner

and is displayed per the claimed method a a way that reduces total area
and is displayed per the claimed method in in way that reduces thethe total area

that the scanner must expose to X-ray light. This is more merely
that the scanner must expose to X-ray light. This is more thanthan merely

carrying out the process.
carrying out the process.

       Factors three and four also weigh inin favor patentability. Under
       Factors three and four also weigh favor of of patentability. Under

factor three, the CAT scanner does not act as mere field-of-use limitation
factor three, the CAT scanner does not act as a a mere field-of-use limitation

because the claimed process is designed specifically work with the
because the claimed process is designed specifically to to work with the

claimed CAT scanner. This contrasts with claim preamble in AT&T,
claimed CAT scanner. This contrasts with the the claim preamble in AT&T,

which purported to limit the general billing method telecommunications
which purported to limit the general billing method to a to a telecommunications



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system, even though there was nothing about the method that particularly
system, even though there was nothing about the method that particularly

tied it to such system. Similarly, under factor four, the scanner is a
tied it to such aasystem. Similarly, under factor four, the CATCAT scanner is a

fundamental part of the claimed process and not limited to pre- or post-
fundamental part of the claimed process and not limited to pre- or post-

solution activity as would the case if, for instance, the claim were for a
solution activity as would bebe the case if, for instance, the claim were for a

method of diagnosing patient that began with obtaining a CAT scan.
method of diagnosing a a patient that began with obtaining a CAT scan.

      Finally, per factor five, the process produces display data andand narrows
      Finally, per factor five, the process produces display data narrows

the X-Ray beam, which a useful, concrete, and tangible technological
the X-Ray beam, which is is a useful, concrete, and tangible technological

result. See id. As the CCPA observed, “[n]arrowing the beam is
result. See id. As the CCPA observed, “[n]arrowing the beam is

advantageous not only because the exposure of body to X-ray is is thereby
advantageous not only because the exposure of a a body to X-raythereby

reduced but also because computer calculation time produce the image is
reduced but also because computer calculation time to to produce the image is

shortened inasmuch as the amount of data to be processed less.” Id. Thus,
shortened inasmuch as the amount of data to be processed isis less.” Id. Thus,

all five factors weigh favor of of patentability.
all five factors weigh in in favor patentability.

             4. In re Bradley
             4. In re Bradley

      The invention in this case claimed a “firmware module” programmed
      The invention in this case claimed a “firmware module” programmed

with permanent microcode, which when coupled with a CPU, allows a
with permanent microcode, which when coupled with a CPU, allows a

computer to execute more than one program once. See In In re Bradley,
computer to execute more than one program at at once. See re Bradley, 600 600

F.2d 807, 809 (C.C.P.A. 1981), aff'd an equally divided court, Diamond
F.2d 807, 809 (C.C.P.A. 1981), aff'd by by an equally divided court, Diamond

v. Bradley, 450 U.S. 381 (1981).
v. Bradley, 450 U.S. 381 (1981).

      Factors one and two weigh favor of patentability. Under factor one,
      Factors one and two weigh inin favor of patentability. Under factor one,

the invention’s claim technology is is merely that the the firmware is
the invention’s claim toto technologynotnot merely that firmware code code is



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capable of execution by the firmware module. Rather, the invention
capable of execution by the firmware module. Rather, the invention as a as a

whole is the integration the process with the firmware module, which
whole is the integration ofof the process with the firmware module, which

when programmed with particular microcode, allows the CPU to perform
when programmed with particular microcode, allows the CPU to perform

multiple tasks in parallel more efficiently than the prior art. See 808-
multiple tasks in parallel more efficiently than the prior art. See id. at id. at 808-

09. Likewise, under factor two, invention’s claim to technology is not
09. Likewise, under factor two, thethe invention’s claim to technology is not

merely that the firmware module executes the firmware code. As the CCPA
merely that the firmware module executes the firmware code. As the CCPA

reasoned, “[the invention] does not relate computer applications, i.e., any
reasoned, “[the invention] does not relate to to computer applications, i.e., any

specific task that computer asked to perform, but rather to to internal
specific task that aacomputer isis asked to perform, but ratherthe the internal

operation of the computer and its ability to manage efficiently its operation
operation of the computer and its ability to manage efficiently its operation

in a multiprogrammed format.” at at 808.
in a multiprogrammed format.” Id. Id.808.

       Factors three and four also weigh inin favor patentability. Under
       Factors three and four also weigh favor of of patentability. Under

factor three, the claim does not recite technology to impose a field-of-use
factor three, the claim does not recite technology to impose a field-of-use

limitation; rather the process applies directly to a firmware module whose
limitation; rather the process applies directly to a firmware module whose

function is dictated by particular “microcode” without regard use in a
function is dictated by particular “microcode” without regard to its to its use in a

particular field. at at 809. Likewise, because the firmware module
particular field. Id.Id. 809. Likewise, because the firmware module is an is an

integral part of the process claimed, it is not insignificant or post-
integral part of the process claimed, it is not insignificant pre- pre- or post-

solution activity.
solution activity.

       Lastly, factor five weighs in in favorpatentability because the the
       Lastly, factor five weighs favor of of patentability because

invention produces useful, concrete and tangible technological result. The
invention produces aa useful, concrete and tangible technological result. The

prior art included means storing data for multiple processes locally on the
prior art included means ofof storing data for multiple processes locally on the



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CPU in “scratchpad registers,” which are much faster to access than
CPU in “scratchpad registers,” which are much faster to access than the the

normal system memory (e.g. RAM). Id. at 808. These art means were
normal system memory (e.g. RAM). Id. at 808. These prior prior art means were

inferior because every time the scratchpad data was altered, the CPU would
inferior because every time the scratchpad data was altered, the CPU would

either have to completely rewrite the scratchpad memory, or software
either have to completely rewrite the scratchpad memory, or the the software

would have to contain CPU-specific code instructing the CPU to alter
would have to contain CPU-specific code instructing the CPU how how to alter

the data. Id. The result the invention is that it allows any any to alter
the data. Id. The result of of the invention is that it allowsCPU CPU to alter

data stored on the scratchpad register without having to flush data and
data stored on the scratchpad register without having to flush the the data and

without requiring any particular CPU-dependant code in the software.
without requiring any particular CPU-dependant code in the software. Id. at Id. at

808-09. This improves the speed the CPU while eliminating the need for
808-09. This improves the speed of of the CPU while eliminating the need for

CPU-specific code. Improving speed of of CPU is a concrete, useful,
CPU-specific code. Improving thethe speedthe the CPU is a concrete, useful,

and tangible technological result. In summary, all factors weigh in
and tangible technological result. In summary, all five five factors weigh in

favor of patentability.
favor of patentability.

III. CONCLUSION
III. CONCLUSION

      Section 101 is an important and necessary gatekeeper for the patent
      Section 101 is an important and necessary gatekeeper for the patent

system, especially when evaluating patent-eligibility for processes. For
system, especially when evaluating patent-eligibility for processes. For the the

foregoing reasons, the Court should adopt a three-category approach to
foregoing reasons, the Court should adopt a three-category approach to thisthis

threshold and when confronted with complex cases, use five factors to
threshold and when confronted with complex cases, use thethe five factors to

ensure that only technological processes are patent-eligible.
ensure that only technological processes are patent-eligible.




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                Respectfully Submitted,
                Respectfully Submitted,



April 7, 2008
April 7, 2008   ________________________________
                             Jason M. Schultz
                             Jason M. Schultz
                Counsel of Record for Amici Curiae
                Counsel of Record for Amici Curiae
                Samuelson Law, Technology and Public
                Samuelson Law, Technology and Public
                Policy Clinic
                Policy Clinic
                U.C. Berkeley School Law
                U.C. Berkeley School ofof Law
                396 Simon Hall
                396 Simon Hall
                Berkeley, CA 94720-7200
                Berkeley, CA 94720-7200
                Telephone: (510) 642-0499
                Telephone: (510) 642-0499
                Facsimile: (510) 643-4625
                Facsimile: (510) 643-4625
                Counsel of Record for Amici Curiae
                Counsel of Record for Amici Curiae
                Consumers Union, Electronic Frontier
                Consumers Union, Electronic Frontier
                Foundation, And Public Knowledge
                Foundation, And Public Knowledge




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                    CERTIFICATE COMPLIANCE
                    CERTIFICATE OF OF COMPLIANCE

      Pursuant to Rule 32(a)(7)(C) ofof the Federal Rules Appellate
      Pursuant to Rule 32(a)(7)(C) the Federal Rules of of Appellate

Procedure, certify that the foregoing Brief of Amici Curiae Consumers
Procedure, IIcertify that the foregoing Brief of Amici Curiae Consumers

Union, Electronic Frontier Foundation, and Public Knowledge is double-
Union, Electronic Frontier Foundation, and Public Knowledge is double-

spaced (except headings, block quotations, and footnotes) and complies with
spaced (except headings, block quotations, and footnotes) and complies with

the type volume limitations Rule 29(d) of of the U.S. Court of Appeals
the type volume limitations of of Rule 29(d)the U.S. Court of Appeals for for

the Federal Circuit and this Court’s February 2008 Order. I further
the Federal Circuit and this Court’s February 15,15, 2008 Order. I further

certify that the body this brief—not including the the cover page, of
certify that the body ofof this brief—not includingcover page, table table of

contents, table of authorities, and certificates—contains 6952 words
contents, table of authorities, and certificates—contains 6952 words as as

determined by Microsoft Word, including the statement of interest,
determined by Microsoft Word, including the statement of interest,

headings, footnotes, quotations, signature lines, and date.
headings, footnotes, quotations, signature lines, and date.




                                         _______________________________
                                                    Jason M. Schultz
                                                    Jason M. Schultz
                                         Samuelson Law, Technology and
                                         Samuelson Law, Technology and
                                           Public Policy Clinic
                                           Public Policy Clinic
                                         U.C. Berkeley School Law
                                         U.C. Berkeley School ofof Law
                                         396 Simon Hall
                                         396 Simon Hall
                                         Berkeley, CA 94720-7200
                                         Berkeley, CA 94720-7200
                                         Telephone: (510) 642-0499
                                         Telephone: (510) 642-0499
                                         Facsimile: (510) 643-4625
                                         Facsimile: (510) 643-4625
                                         Counsel of Record for Amici Curiae
                                         Counsel of Record for Amici Curiae
                                         Consumers Union, Electronic Frontier
                                         Consumers Union, Electronic Frontier
                                         Foundation, And Public Knowledge
                                         Foundation, And Public Knowledge




April 7, 2008
April 7, 2008
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                       CERTIFICATE SERVICE
                       CERTIFICATE OF OF SERVICE

I, Jason M. Schultz, hereby certify that I caused two copies of
I, Jason M. Schultz, hereby certify that I caused two copies of the the

foregoing Brief Amici Curiae Consumers Union, Electronic Frontier
foregoing Brief ofof Amici Curiae Consumers Union, Electronic Frontier

Foundation, and Public Knowledge be served this seventh (7th) day of
Foundation, and Public Knowledge to to be served this seventh (7th) day of

April 2008, by first class mail, postage prepaid, upon each of the following
April 2008, by first class mail, postage prepaid, upon each of the following

sets of Counsel of Record:
sets of Counsel of Record:

                                  David C. Hanson, Richard Byrne,
                                  David C. Hanson, Richard L.L. Byrne,
                                  Nathan J. Prepelka
                                  Nathan J. Prepelka
                                  The Webb Law Firm
                                  The Webb Law Firm
                                  700 Koppers Building
                                  700 Koppers Building
                                  436 Seventh Avenue
                                  436 Seventh Avenue
                                  Pittsburgh, PA 15219
                                  Pittsburgh, PA 15219
                                  Counsel for Plaintiff-Appellant
                                  Counsel for Plaintiff-Appellant

                                  James A. Toupin, Stephen Walsh,
                                  James A. Toupin, Stephen Walsh,
                                  Raymond T. Chen, Thomas W. Krause
                                  Raymond T. Chen, Thomas W. Krause
                                  P.O. Box 15667
                                  P.O. Box 15667
                                  Arlington, VA 22215
                                  Arlington, VA 22215
                                  Counsel for the Director the United States
                                  Counsel for the Director of of the United States
                                  Patent and Trademark Office
                                  Patent and Trademark Office



April 7, 2008
April 7, 2008                     ________________________________
                                              Jason M. Schultz
                                              Jason M. Schultz
                                  Samuelson Law, Technology and Public
                                  Samuelson Law, Technology and Public
                                    Policy Clinic
                                    Policy Clinic
                                  U.C. Berkeley School Law
                                  U.C. Berkeley School ofof Law
                                  396 Simon Hall
                                  396 Simon Hall
                                  Berkeley, CA 94720-7200
                                  Berkeley, CA 94720-7200
                                  Telephone: (510) 642-0499
                                  Telephone: (510) 642-0499
                                  Facsimile: (510) 643-4625
                                  Facsimile: (510) 643-4625
                                  Counsel of Record for Amici Curiae
                                  Counsel of Record for Amici Curiae
                                  Consumers Union, Electronic Frontier
                                  Consumers Union, Electronic Frontier
                                  Foundation, And Public Knowledge
                                  Foundation, And Public Knowledge

				
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