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Gottschalk v. Benson

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Citation Edit

Gottschalk v. Benson, 409 U.S. 63, 175 U.S.P.Q. (BNA) 673 (1972) (full-text).

Factual Background Edit

The plaintiffs had filed a patent application for a method for converting numerical information from binary-coded decimal numbers into pure binary numbers, for use in programming conventional general purpose digital computers. The lower courts had held that the invention was merely a mathematical algorithm or mental steps, and did not constitute patentable subject matter.

U.S. Supreme Court Proceedings Edit

The sole question certified to the Supreme Court was whether the method was a statutory process.[1] The numerous briefs filed by the parties and various amici curiae explored most of the subject matter issues that had been raised both in and out of court and asserted a variety of policy arguments. The case was heard by six justices[2] who unanimously joined in Justice Douglas' opinion, finding the claimed processes to be nonstatutory subject matter.

The opinion emerges from a consideration of the Benson and Tabbot application in conjunction with the following statement of the Supreme Court's conclusions:

What we come down to in a nutshell is the following: It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly preempt the mathematical formula and in practical effect would be a patent on the algorithm itself.[3]

At a minimum, therefore, Benson stands for the proposition that processes which are (a) defined by an algorithm with no practical use except in the programmed manipulation of signals in a digital computer, and (b) not limited by further claim language confining the claim to a subset of possible applications, are nonstatutory subject matter.

It is also clear that the Court's reasoning would have applied squarely to an apparatus claim to a digital computer programmed to practice the algorithm had such a claim been presented. However, apparatus claims were not present and were therefore not covered by the holding, narrowly construed.

Several other features of the case are of interest:

(1) The opinion discussed Cochrane v. Deener[4] at length and stated that "transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines."[5] The thrust of this observation was turned aside, however, when the Court later stated: "[w]e do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents."[6] It is clear in any case that Justice Douglas did not consider the Cochrane test satisfied by state changes in computer components, perhaps because of their ephemerality. Also important was the characterization of Cochrane as "precedent."[7]
(2) Justice Douglas was plainly preoccupied with programs in general.
(3) The outcome turned on potential economic control of an "idea."[8] It is therefore rather surprising that Justice Douglas, who has been especially preoccupied with first amendment issues, found the subject matter limitation in the intent of Congress rather than in the Constitution.[9]
(4) The generally confusing language of the opinion and particularly the sudden qualifications of categorical statements of doctrine, are persuasive evidence that the remaining members of the court were unwilling to go much beyond the fact pattern of the case. The absence of concurring opinions under such circumstances suggests that the others either considered the issue unimportant or forbiddingly complex.

This was the first of the patentable subject matter "trilogy", which included Parker v. Flook and Diamond v. Diehr.

ReferencesEdit

  1. Id. at 64, 175 U.S.P.Q. (BNA) at 674.
  2. Justices Stewart, Blackmun, and Powell abstained for unstated reasons.
  3. 409 U.S. at 71-72, 175 U.S.P.Q. (BNA) at 676.
  4. 94 U.S. 780 (1876)(full-text).
  5. 409 U.S. at 70, 175 U.S.P.Q. (BNA) at 676.
  6. Id. at 71, 175 U.S.P.Q. at 676.
  7. Id.
  8. Id.
  9. If these programs are to be patentable, considerable problems are raised which only committees of Congress can manage, for broad powers of investigation are needed, including hearings which canvass the wide variety of views which those operating in this field entertain. The technological problems tendered in the many briefs before use indicate to us that considered action by the Congress is needed.

    Id. at 73, 175 U.S.P.Q. (BNA) at 677 (footnote omitted).

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