Amicus Brief — Parker v. Flook

BOR ARGUMENT

* Supreme Court, U.S.

FILED

APR 5 i978

— JR., CLERK

Supreme Court of the Uni ,

| October Term, 1977

a No. 77-642

LUTRELLE F. PARKER, Acting Commissioner of

Patents and Trademarks,

Petitioner,

v.

DALE R. FLOOK,

Respondent.

On Writ of Certiorari to the United States Court of

Customs and Patent Appeals.

BRIEF AMICUS CURIAE FOR

MOBIL OIL CORPORATION

Ricuarp E. Kurtz

Woopcock WaAsHBURN KuRTz

& MACKIEWICZ

1800 United Engineers Building

30 South 17th Street

Philadelphia, Penna. 19103

MicHaEL G. GiLMAN

New York, N. Y.

wagues J. SCHERBACK

Attorney s for Amicus Curiae,

Oil Corporation

Of Counsel:

CuHaries A. Huccetr

General Patent Counsel .

Mobil Oil Corporation

New York, N. Y.

international Printing Co., 711 So. 50th St., Phila., Pa. 19143 — Tel. (215) 727-8711

TABLE OF CONTENTS.

Page

I. THe NATURE AND INTEREST OF THE AMICUS ............, 1

II. SUMMARY OF THE ARGUMENT ..............0ceeeeeees 2

Se MEE Crock bunddeas qhuebodekds be seesoctesetes 3

A. Benson has been properly applied by the C. C. P. A.

oe ca conaneiegkeeseesenansens 3

B. An inventor's idea or discovery is part of the invention

as a whole and must be considered in determining

I i wos dacdon ce cu Venseues cdcundertpes 6

C. Exclusion of a broad area of the useful arts from pro-

tection under the federal patent statutes will be

detrimental to the advancement of the useful arts... 9

EE ee Peery epee PRES Ge aren 12

TABLE OF CITATIONS.

Cases: Page

In re Aufhauser, 399 F. 2d 275 (C. C. P. A. 1968) .......... 7

In re Bergy, 563 F. 2d 1031 (C. C. P. A. 1977) ............ 12

In re Chakrabarty, — F. 2d —, 369 BNA-P. T. C. J, D-l

SR EY Sac ada bee eeiadhs Gnkapeneakoes 12

In re Chatfield, 545 F. 2d 152 (C. C. P. A. 1976) ........... 3

In re Christensen, 478 F. 2d 1392 (C. C. P. A. 1973) ........ 3

In re Conover, 304 F. 2d 680 (C. C. P. A. 1962) ............ 7

Dann v. Johnston, 425 U. S. 219 (1976) .................5. 3,4

In re deCastelet, 562 F. 2d 1236 (C. C. P. A. 1977) ......... 4

In re Deutsch, 553 F. 2d 689 (C. C. P. A. 1977) ............ 3,5

Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U. S.

EE i656 Weeanecin das aeebaess Sek daneeuen 7

In re Flook, 559 F. 2d 21 (C. C. P. A. 1977) ............... 4

Funk Bros. Seed Co. v. Kalo Inoculant, 333 U. S$. 127 (1948) 8

Goldstein v. California, 412 U. S. 546 (1973) .............. 10

Gottschalk v. Benson et al., 409 U. S. 63 (1972) ........ 2, 3, 4,6,9

Graham et al. v. John Deere Co. of Kansas City et al., 383

SD svcd Geullensned ecdeeekel bondeea bens 7

In re Johnston, 502 F. 2d 765 (C. C. P. A. 1974) ............ 3

Kewanee Oil Co. v. Bicron Corp. et al., 416 U. S. 470 (1974) .10, 11

Mackay Radio & Telegraph Co. v. Radio Corporation of

Repartamy, SHB Gs GBB COD. oo kc cw vcecenesdscccasess 8

In re Noll, 545 F. 2d 141 (C. C. P. A. 1976) ............... 3

In re Richman, 563 F. 2d 1026 (C. C. P. A. 1977) .......... 4

In re Roberts and Burch, 470 F. 2d 1399 (C. C. P. A. 1973)... 7

Ex parte Ruehle, Appeal No. 320-89, Pat. Office Bd. of App.

Ce I 6410 0.065 tions denncuwadcekesese 5

Sears, Roebuck & Co. v. Stiffel Co., 376 U. S. 225 (1964) .... 9

Trio Process Corporation v. L. Goldstein's Sons, Inc., 461 F. 2d

ee EE coc katveseincheduveeseusatvdabunus 7

U. S. v. Adams et al., 383 U. S. 39 (1966) .................. 7

In re Waldbaum, 559 F. 2d 611 (C. C. P. A. 1977) ......... 4

In re Warmus, — F. 2d —, 195 U. S. P. Q. 234 (C. C. P. A.

SE b:ctsnerdedabenbediansgennssenedeesiskete neue 4

White-Smith v. Apollo, 209 U. S. 1 (1908) ................. 9, 10

TABLE OF CITATIONS (Coutimued).

Statutes: Page

EE, rf CEN oe ROTOR ey,

EE 9 i RRR TIRES, NACE CSRS er ete 3, 4,8, 1

Ss a 2,3, 4, 6,7, 11

35 U.S. C. § 106 (proposed, H. R. 5924, 90th Cong,, Ist Sess.) 11

PSE NS ENE ee aE RUACS in AOS Seine ape 1

To cuuaeeiekeen 5

IN THE

Supreme Court of the United States _

——

OcroBER TERM, 1977

No. 77-642

LUTRELLE F. PARKER, ACTING COMMISSIONER

OF PATENTS AND TRADEMARKS,

Petitioner,

v.

DALE R. FLOOK,

Respondent.

On Writ or CERTIORARI To THE UNITED STATES

Court Or Customs AND PATENT APPEALS.

BRIEF AMICUS CURIAE FOR

MOBIL OIL CORPORATION.

I.

THE NATURE AND INTEREST OF

THE AMICUS.

This brief amicus curiae is submitted by Mobil Oil

Corporation in accordance with Rule 42(2) of this Court.

Letters of consent from both parties have been filed with

the Clerk of the Court.

Mobil Oil Corporation has as its principal business

the exploration for, production, refining and marketing of

petroleum and products derived therefrom on a worldwide

basis. As a supporting activity, Mobil has several research

facilities in different parts of the country utilized for orig-

inal research to develop the full potential of computer

2 Brief Amicus Curiae for Mobil

applications in its various fields of activity. Mobil’s com-

puters are in twenty-four hour a day use to find petroleum,

to control its refineries, to increase the yield of petroleum

products, and to develop new processes for converting

coal to liquid petroleum products such as gasoline. Its

large expenditures in research and practical applications

involving computer operation have given rise to pro-

prietary information deemed of great value. Mobil has

an extensive licensing program under which its patented

proprietary technology is generally made available for use

by others around the world. Computer related technology

has not been included, however, because of uncertainty as

to protection afforded by the patent laws.

I.

SUMMARY OF THE ARGUMENT.

A. The C. C. P. A. has carefully applied this Court's ruling

in Gottschalk v. Benson et al, 409 U. S. 63 (1972) , (here-

inafter Benson). Digital computers are used in numerous

arts and technologies, a variety of which have been con-

sidered by the C. C. P. A. since the Benson decision. No

general rule of law can justly prescribe the patentability

of all of them. Petitioner wrongly urges this Court to

adopt a general rule of law denying patentability to all

inventions which are implemented by digital computers.

B. In urging unpatentability, Petitioner uses an approach

inconsistent with the well established principle codified in

35 U. S. C. § 103, that the invention as a whole must be

considered in determining patentability. Petitioner would

separate the inventor's original idea, or discovery from the

mode of implementing it. In accordance with Petitioner's

approach, this mode of implementation must be inventive

in and of itself. This would rule out large numbers of

important patents in which the inventor's idea or discovery

Brief Amicus Curiae for Mobil 3

rather than its mode of implementation is the inventive

contribution.

C. If the Petitioner's position is adopted, large segments

of the useful arts would be excluded from protection under

the federal patent statutes. These innovations would be

protected, if at all, only under the proprietary rights laws

of the various states. The disparity in protection, and

attendant confusion as to whether protection exists in a

given state, would unnecessarily limit the exchange of

technology. The patent statutes should be construed as

applying to all newly developed technologies unless Con-

gress specifically excludes them from protection.

IT.

ARGUMENT.

A. Benson Has Been Properly Applied by the C. C. P. A.

in Many Appeals.

Digital computers are use in geophysical exploration ',

banking *, graphic display *, controlling systems of other

computers *, operating systems of oil refineries®, data

1. In re Christensen, 478 F. 2d 1392 (C. C. P. A. 1973); 35

U.S. C. § 101 rejection affirmed by C. C. P. A.

2. In re Johnston, 302 F. 2d 765 (C. C. P. A. 1974); 35

U. S. C. §§ 101 and 103 rejections reversed by C. C. P. A.; reud. as

to 35 U. S. C. § 108 rejection sub nom. Dann v. Johnston, 425 U. S.

219 (1976).

3. In re Noll, 545 F. 2d 141 (C. C. P. A. 1976); 35 U.S. C. § 101

rejection reversed by C. C. P. A.; cert. denied — U. S. —, 195

U. S. P. Q. No. 5, p. IL.

4. In re Chatfield, 545 F. 2d 152 (C. C. P. A. 1976); 35 U.S. C.

ag a reversed; cert. denied — U. S. —, 195 U. S. P. Q.

No. 5, p. II.

5. In re Deutsch, 553 F. 2d 689 (C. C. P. A. 1977); 35 U.S. C.

§ 101 rejection reversed by C. C. P. A.

4 Brief Amicus Curiae for Mobil

processing °, catalytic cracking of hydrocarbons‘, control-

ling machine tools *, aircraft navigation ® and selling auto-

mobiles *°. These arts were involved in ten appeals which

the C. C. P. A. decided since this Court’s decision in

Benson. No general rule can justly prescribe the patenta-

bility of all of the foregoing technologies. The presence

or absence of a programmed general purpose digital com-

puter in a patent application claiming an innovation

neither confers upon nor detracts from the patentability of

that innovation. Nevertheless, the Patent Office has taken

the position that Benson precludes patentability of all of

the foregoing arts which use digital computers, a position

reasserted by petitioner in this appeal. Petitioner is at-

tempting to do the very thing which this Court so care-

fully guarded against in Benson when it stated:

“It is said that the decision precludes a patent for any

program servicing a computer. We do not so hold.”

409 U. S. at 71, (emphasis added ).

Furthermore, in urging a broad proscription of patent-

ability, Petitioner has ignored this Court's subsequent

observation that the holding in Benson was “limited” to

the patentability of the process in question. Dann v.

Johnston, supra, 425 U. S. at 224.

The C. C. P. A. has carefully applied Benson on a case

by case basis, eschewing the broad proscription of patent-

6. In re Waldbaum, 559 F. 2d 611 - C. P. A. 1977); 35

U. S. C. § 101 rejection affirmed by C. C. P. A.

7. In re Flook, 559 F. 2d 21 (C. C. P. A. 1977); cert. granted

sub nom. Parker v. Flook, — U. S. — (1977) (No. 77-642).

8. In re deCastelet, 562 F. 2d 1236 (C. C. P. A. 1977); 35~

U. S. C. § 101 rejection affirmed by C. C. P. A.

9. In re Richman, 563 F. 2d 1026 (C. C. P. A. 1977); 35 U.S. C.

§ 101 rejection aflirmed by C. C. P. A.

10. In re Warmus, — F. 2d —, 195 U. S. P. Q. 234 (C. C. P. A.

1977); 35 U. S. C. § 103 rejection affirmed by C. C. P. A. without

reaching rejection under 35 U. S. C. § 101.

~~ a

Brief Amicus Curiae for Mobil 5

ability urged by Petitioner. That court found patentable

subject matter in five cases and found unpatentable subject

matter in the remaining five cases. In these ten cases, the

C. C. P. A. very carefully analyzed exactly what the ap-

plicants claimed. Only such a careful analysis on a case

by case basis will enable the patent system to meet the

constitutional mandate for advancing the useful arts. If

this Court adopts Petitioner’s position as set forth on page

18 of its brief, however, all of the careful analysis by the

C. C. P. A. will be ignored by the Patent Office.

As one example of the problems and further appeals

which would be engendered by such a holding, consider

the patent application, assigned to amicus, and involved

in In re Deutsch supra, n 5. That patent application re-

lates to the computer control of a system of multiple

plants, such as oil refineries. The C. C. P. A. unanimously

found the subject matter claimed in the Deutsch applica-

tion to be patentable. The Patent Office did not petition

this Court for certiorari, but neither did the Patent Office

issue the patent. Despite the fact that the C. C. P. A.

handed down its decision on May 5, 1977, the Patent Office

has not yet taken even preliminary steps toward issuance

of the patent. Action on this application and numerous

other patent applications, which in all respects comply

with the requirements for patentable subject matter, has

been suspended pending a decision on the broad issue

which the Petitioner would have this Court decide ™.

1l. The Patent Office normally sends a Notice Of Allowance

requesting payment of a fee. After payment of the final fee, the

oe on is A ee ar and issued. 37 C. F. R. § 1.316.

12. As a further example of the manner in which the Patent

Office has suspended proceedings, reference is made to Ex Parte

Ruehle, Appeal No. 330-89, Pat. Office Bd. of App. Although the

Board of A agreed that early decisions on ap are

normally in the best interests of the parties and the public, it denied

a petition to expedite a decision on an appeal relating to seismic

6 Brief Amicus Curiae for Mobil

Amicus submits that Benson, as it has been carefully ap-

plied by the C. C. P. A., properly carries out the constitu-

tional mandate to promote the progress of the useful arts.

B. An Inventor's Idea or Discovery Is Part of the Inven-

tion as a Whole and Must Be Considered in Determin-

ing Patentability.

Thousands upon thousands of patents have been

granted to amicus and others on chemical, electrical and

mechanical inventions in which implementation of the

idea is perfectly clear from the idea itself. Petitioner

argues that:

“To merit monopoly protection, it is not sufficient that

a claim embody a concrete, tangible application of a

mathematical or scientific principle; it must also ex-

tend beyond the routine, conventional, or uninventive

applications that follow once the applicant possesses

the idea.” Petitioner's Brief at 19.

This contention is antithetical to the law which has

upheld the validity of numerous patents in which the in-

ventor'’s contribution was a discovery or an idea. As just

one example, compositions of matter useful in catalytic

cracking of gasoline can usually be conventionally pro-

duced after the inventor discovers the composition. Peti-

tioner argues that the means or mode for implementing

the discovery must be unobvious, but this is completely

contrary to the established principle, codified in 35 U. S. C.

§ 103, that the invention as a whole must be considered in

12. (Cont'd. )

exploration. As its reason, the Board stated that “. . . Parker v.

Flook may have @& substantial impact on the law governing the

on) in this appeal.” (Unpublished decision dated March 14,

Brief Amicus Curiae for Mobil 7

determining patentability." Graham et al v. John Deere

Co. of Kansas City et al, 383 U. S. 1, 3, 32 (1965). This

Court has consistently considered the invention as a whole

in determining patentability.

In Eibel Process Co. v. Minnesota & Ontario Paper

Co., 261 U. S. 45 (1923), the patentee discovered that

wrinkling and malformation of paper in a paper making

machine that had baffled an entire industry for decades

occurred because the stock did not flow fast enough at a

critical point in the process. Eibel simply increased the

pitch of the path of the stock to take advantage ofthe

force of gravity to increase the flow rate. This Court up-

held the patent, deciding that the patentee had made a

patentable contribution in discovering the problem even

though once discovered the solution was routine.

In U. S. v. Adams et al, 383 U. S. 39 (1966), a patent

on a water activated battery was upheld. The imple-

mentation of this battery required only ordinary skill, but

it was the idea that imparted patentability to the patent.

The invention as a whole, and not the particular form

or language used to describe it, must be considered in

determining the patentability of the subject matter in-

volved in any particular case. If the subject matter is

implemented with the aid of a computer, the appropriate

13. 35 U. S. C. § 103 provides:

§ 103. Conditions for patentability; non-obvious subject matter.

A patent may not be obtained though the invention is not

identically disclosed or described as set forth in § 102 of this

title, if the differences between the subject matter sought to be

patented and the prior art are such that the subject matter as a

whole would have been obvious at the time the invention was

made to a person having ordinary skill in the art to which said

subject matter pertains. Patentability shall not be negatived

by the manner in which the invention was made.

14. See Trio Process Corporation v. L. Goldstein's Sons, Inc.,

461, F. 2d 66, n. 18a (3 Cir. 1972); In re Aufhauser, 399 F. 2d 275,

277 (C. C. P. A. 1968); In re Conover, 304 F. 2d 680, 683 (¢ C.

A. wey and In re Roberts and Burch, 470 F. 2d 1399 (C. C.

_ A.

8 Brief Amicus Curiae for Mobil

language with which to define this subject matter is mathe-

matics, a language which the technologist utilizing the

computer understands. Analogously, the biologist under-

stands species named in Latin. Ergo, biological inven-

tions often make use of Latin terms to define species. The

language used to define an invention ought not to be

dispositive of patentability—rather patentability should be

judged by the invention as a whole, however, described.

For example, many chemical process patents claim inven-

tion in controlling a particular process variable within

specified limits. One acceptable way of claiming such

might be “controlling the pressure of a reaction between

100 and 500 psi as a function of the reaction temperature.”

This could also be accurately written:

P = f(T); from P = 100 pss.i. to P = 500 pss.i.

Whether a patent claim is written in prose or in mathe-

matical format is not determinative of patentability.

“While a scientific truth, or the mathematical ex-

pression of it, is not patentable invention, a novel

and useful structure (process, machine, manufacture

or composition of matter) created with the aid of

knowledge of scier tific truth may be.” Mackay Radio

& Telegraph Co. v. Radio Corporation of America,

306 U. S. 86, 94 (1939) (Parenthetical matter added

from 35 U. S. C. § 101)

The inclusion of a mathematical relationship in a patent

claim does not necessarily destroy patentability.

Petitioner's brief distorts the patent law by improperly

expanding the limited holding of Funk Bros. Seed Co. v.

Kalo Inoculant, 333 U. S. 127 (1948). In that case, the

alleged invention related to a principle of nature. Prin-

ciples of nature or natural phenomena, such as that in-

volved in the Funk case, are not patentable because they

are not related to the useful arts for which the Constitu-

nO ee ee

Brief Amicus Curiae for Mobil g

tion mandates patent protection. Where the invention as

a whole relates to a principal of nature, or a fundamental

natural law, only the unobvious implementation is patent-

able, not the particular law itself. Where the invention

relates to one of the useful arts, however, such as the

catalytic chemical conversion of hydrocarbons involved in

the case at bar, it is only necessary that the invention as

a whole, including the idea or discovery, be unobvious.

C. Exclusion of a Broad Area of the Useful Arts From

Protection Under the Federal Patent Statutes Will

Be Detrimental to the Advancement of the Useful

Arts.

The desirability of uniformity under a federal patent

system is well stated in Sears, Roebuck & Co. v. Stiffel Co.,

376 U. S. 225, 230 (1964):

“Thus the patent system is one in which uniform

federal standards are carefully used to promote in-

vention while at the same time preserving free com-

petition.”

Petitioner argues that Benson precludes patentability

of substantial numbers of patents for computer imple-

mented inventions.” If the Petitioners position is

adopted, the same situation will exist that existed with

respect to sound recordings after White-Smith v. Apollo,

209 U. S. 1 (1908) precluded statutory federal copyright

protection for these recordings. In the interim between

White-Smith v. Apollo and passage in 1971 of the Federal

statute providing copyright protection for sound record-

ings, the states were free to enact statutes providing pro-

tection for sound recordings. This Court noted that a

copyright granted by a particular state had effect caly

15. Petitioner’s Brief at 24. Petitioner estimates the number of

such applications to be 600 to 900 now pending with approximately

450 such applications being filed each year.

10 Brief Amicus Curiae for Mobil

within its boundaries, thus having no coercive effect on

“record or tape piracy” outside of those boundaries. Gold-

stein v. California, 412 U. S. 546, 558 (1973), reh. den. 414

U. S. 883. The analogy between the exclusion of sound

recordings from the copyright laws before 1971 and the

potential exclusion of “new technology” from the 1952

Patent Act, as argued for by petitioner, is too strong to be

ignored.

If a broad area of computer implemented tech-

nology is excluded from protection under the federal

patent statutes, the only proprietary rights in this tech-

nology will be under such laws as the various states may

enact.'"® The result of this varied protection will be a

burden upon interstate commerce as well as a detriment to

the American economy. If Petitioner's position is adopted,

the states presumably would be free to enact laws extend-

ing beyond the normal trade secret type of protection.

This Court has previously held that:

“The only limitation on the States is that in regulat-

ing the area of patents and copyrights they do not

conflict with the operation of the laws in this area

passed by Congress . . .” Kewanee Oil Co. v. Bicron

Corp. et al, 416 U. S. 470, 479 (1974).

16. While the Federal Copyright Law may provide some

nationwide protection for computer programs, the protection ex-

tends only to the particular form of expression of the particular

computer program and not to the underlying technical advance

expressed in different form. Moreover, the reasoning of White-

Smith v. Apollo might be applied to find that the Copyright Act of

1978 does not extend protection to each use of a program in

physical form in a machine. The new copyright act provides that

copyrighted matter fixed in physical form is a copy: but 17 U. S. C.

§ 117 provides that existing law will be applied notwithstanding

other provisions of the statute. Many questions remain as to the

application of this new act to computer technology. A commission

to study changes in the copyright laws relating to protection of

computer programs is currently at work, but it is by no means

certain when and if Congress will act on its recommendations.

Brief Amicus Curiae for Mobil 11

Kewanee reconciled the potential conflict between federal

patent laws and state proprietary rights laws. Kewanee

also recognized that some inventions which do not meet

the standards of patentability set forth in 35 U. S. C. § 101

are protectible only under state law. The situation clearly

cries out for broad construction of 35 U. S. C. § 101 to in-

clude as much technology as possible under the federal

patent laws. Such a construction will help prevent conflict

between federal and state laws.

The uses made by this amicus, and almost all other

uses of computer technology extend beyond the confines of

a single state. To rely solely on the trade secret protection

of multiple states (or upon patent-like statutes which the

states might enact) would unnecessarily complicate and

restrict the disclosure and transfer of proprietary informa-

tion about this technology. A better approach is recog-

nized in Kewanee. Federal patents should be granted to

encourage disclosure of those inventions which are so

meritorious that they meet the standards of 35 U. S. C.

§ 103. Trade secret protection would be available to

encourage investment in the areas of doubtfully patentable

and clearly unpatentable technologies. |

Petitioner, having already decided that the patent

laws are not applicable to computer implemented tech-

nology, suggests at page 25 of its brief that Congress pro-

vide some other form of protection.” If it is necessary

to await Congressional action, confusion as to the nature

17. Congress has considered legislation makiȢ computer pro-

s unpatentable. H. R. 5924, proposed, 35 U. S. C. § 106, 90th

— Ist Sess. (1967) provided:

“Computer Programs Not Patentable: A plan of action or set

of operating instructions, in whatever form presented, to cause

a controllable data a or or computer to perform selected

operation shall not be patentable.”

This legislation was proposed and hearings were held, but the

legislation was not adopted. Similar legislation has not been sub-

sequently proposed.

12 Brief Amicus Curiae for Mobil

and scope of protection will exist in the interim. The bet-

ter reasoned approach is to construe the patent statutes

as applying to all areas of technology unless Congress

specifically excludes a given area from patentability.

We are presently witnessing man’s entry into exciting

new areas of technology.’* Are the patent statutes to be

so narrowly construed that this Court must decide whether

each of these new technologies is statutory subject matter?

If the narrower approach is taken, the patent laws could

be construed as not applying to many important new tech-

nical advances in our rapidly changing technology.

IV.

CONCLUSION.

American jurisprudence is built upon the principle of

adaptability. Much of today’s commonplace technology

was the science fiction of 1952; much of tomorrow’s tech-

nology would seem like science fiction today. This Court

should not construe the 1952 Patent Act so meanly and

narrowly as to require Congress to reenact it as each previ-

ously uncontemplated technology emerges. ;

Respectfully submitted,

RicHarp E. Kurtz

MIcHAEL G. GILMAN

WILLIAM J. SCHERBACK

Attorneys for Amicus Curiae,

Mobil Oil Corporation

Of Counsel:

Cuares A. HuGGETT

18. For example, consider the creation of new living organisms.

See In re Bergy, 563 F. 2d 1031 (C. C. P. A. 1977) and In re

Chakrabarty, — F. 2d —, 369 BNA-PTC] D-1 (C. C. P. A. 1978).

The PTC Journal comment on page A-3 refers to the filing by the

Government of petitions for certiorari in both cases.