# Amicus Brief — Dann v. Johnston > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385003_0284%3A10 ## Record - **Collection:** Supreme Court brief - **Document type:** Amicus Brief - **Published:** January 1, 1976 - **Citation:** 425 U.S. 219 ## Text —_—_— Suprerte Court. vS& FILED sep 22 1SmS i | MICHAEL ROOAK. IF cuerk | Supreme Court of the United States October Term, 1974. No. 74-1033. C. MARSHALL DANN, Commissioner of Patents & Trademarks, Petitioner, v. THOMAS R. JOHNSTON, Respondent. On Writ of Certiorari to the United States Court of Customs and Patent Appeals. BRIEF AMICUS CURIAE FOR THE AMERICAN PATENT LAW ASSOCIATION. Arntuur R. Wua ce, President, Ricuarp E. Kurtz, American Patent Law Association, 1831 The Fidelity Building, 2001 Jefferson Davis Highway, Philadelphia, Pennsylvania. 19109 Arlington, Virginia. 22202 JaMes W. FALk, Howarp Popper, 600 Mountain Avenue, Murray Hill, New Jersey. 07974 Barry E. SAMMONS, 780 North Water Street, Milwaukee, Wisconsin. 53202 Jack C, GOLDSTEIN, 2100 Transco Tower, Houston, Texas. 77027 Attorneys for Amicus Curiae, The American Patent Law ‘ or internetcna! Printing Co., 711 So. SOth St, Phils., Pa. 191943 — Tel. (215) 727-8711 TABLE OF CONTENTS. Page I. Tae NATURE AND THE INTEREST OF THE AMICUS ..... l II. SUMMARY OF THE ARGUMENT ...............0. 000000. 3 Pe GED «cakcecenesbenesddedcdecronsousnesecéucen Saaee, simpteen 290-360; “News Scope—$ icoorocaso Spt = Ou Electronic Design, August 18 1975. = lnctremestation, mie News, Vol 20No. 1008, August 4, 1975. “Mi cieteemguten: ehen fll Geo Gcleco tana” EDN .-— ber 20, 1974 12. The Government (C. Br. 15) acknowledges that —— in a computer ocr “the anioaatiinel te cose Such new and unobvious configurations yy ve ys been within the of the t scope paten 18 Brief Amicus Curiae resident in each. The rule of action of a music box is to have its steel comb plucked by the spikes set into its rotating drum; the rule of action of a player piano is to have its keys actuated according to the pattern of holes punched in its paper roll. Each type of machine plays the “music” by slavishly striking the note identified by the spike on the drum or the hole on the paper. Though each machine can be characterized by more detailed rules of action spelling out its particular distinctive instrumentali- ties, both machines can be characterized on a broader level, by the common rule of action: “strike the identified note.” Thus, when a “new” drum or paper roll is inserted that differs from the “old” drum or paper roll solely be- cause of the musical significance contained, the “rule of action” of neither machine is changed. Though there might be an advance in the art of music from a paper tape of “Chopsticks” to a paper tape of a Sousa march, the change is not in the rule of action of the machine but only in the fine art of music. This is not the case with computers. The advent of the programmable digital computer made available for the first time a machine having a truly changeable “rule of action.” '* In the music box or player piano, only notes could be struck. The digital computer is so flexible that it can run entire chemical processing plants or make con- nections for transcontinental telephone conversations. For each of these different situations maclunes with different “rules of action” are required. In each case the “rules” are encoded in the computer memory merely by patterns of “bits.” The Government wrongly asserts that these vastly different technologies differ from each other only by “the meaning one chooses to assign outside the com- 13. “Programmable devices—Your best buy in control?”, Mod- ern Materials Handling, February, 1975. . Brief Amicus Curiae 19 puter to a particular configuration of binary digits or ‘bits’ in its memory.” (G. Br. 7, quoting the Board )."* From the above it can be seen that in this case both the term “computer” and the term “program” have not been well defined even though they are central to the Government's argument. The Government (G. Br. 15) notes that there are systems programs and application programs and then indicates that it is the application pro- gram that “is generally denoted by references to computer programs in common parlance.” Their brief then assumes that one is only talking “in common parlance.” Amicus CBEMA in its brief (n. 3), also discusses sys- tems programs and applications programs but considers that a system program is “an integral part of the com- puter.” APLA concurs and considers that a computer is a unique combination of electrical components intercon- nected by that “integral part,” the requisite programs that determine the basic operations, the “rule of action” of the The rule of action may be permanently incorporated or wired into a machine; it may be permanently but alter- ably incorporated, as by the use of the semiconductor read- of that memory. A “fixed wire computer” and a “general purpose computer” (G. Br. 16) are again undefined terms. 20 Brief Amicus Curiae Both terms can apply to a digital computer (contrary to the implications of footnote 14, G. Br. 15). And both terms can apply to a computer with a read-only memory. By speaking “in common parlance” the Government con- fuses, not clarifies, the issue. IV. CONCLUSION. The Government's first question (G. Br. 2) assumes that Benson held process patents unavailable for all pro- grammed operations of a computer. This assumption is erroneous and cannot be the basis for the sweeping pro- nouncement of unpatentability of prcgrammed apparatus which the Government propounds. By this question and other statements in its brief the Government confuses, not clarifies, the issues. The legal principles to be applied are not dependent on the presence or absence of programming in the enabling disclosure. The question of the patentability of programmed machines and programmable processes should be dealt with in the same way as with identical questions that would arise with any other types of machines or processes. The inventor of a new, useful and unobvious process or apparatus should pot be deprived of the incentives ot the patent statutes merely because his invention uses pro- gram control in its implementation. Respectfully submitted, Ricuarp E. Kurtz, James W. Fa x, Howarp Popper, Barry E. SAMMONS, Jacx C. GoLpsTEin, Attorneys for Amicus Curiae, Artuur R. WHALE, The American Patent Law President, Association. American Patent --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385003_0284%3A10. Public record. Not legal advice.