Anticipate This!™ | Patent and Trademark Law Blog

Microsoft v. AT&T: Notable Quotes from the Oral Arguments.

Posted in Litigation Commentary by Jake Ward on February 22, 2007

Per usual, we will preface our thoughts with the following disclaimer:  “It is generally a futile effort to predict how the Supreme Court will rule on any given issue.”  That being said, we think it was clear the Justices were concerned about the effects on the reach of U.S. patent law if AT&T were to prevail.  The technology at issue also appeared to perplex the Justices at times, as much of the arguments appeared to focus on the Justices’ attempt to wrap their minds around the technical aspects of the AT&T patent.  Interestingly, although the questions presented have been narrowly framed to determine the appropriate meaning of the terms “component” and “supplied from the United States” within Section 271(f)(1), the issue of whether software itself is patentable appeared to be at the forefront of the Justices’ thoughts. 

Below are some quotes that we found of particular interest:

Transcript at page 9.

JUSTICE KENNEDY: But I still would like to know your position. The golden disk is or is not a component?
MR. OLSON (ON BEHALF OF PETITIONER): It is not a component — 

Transcript at page 12.

JUSTICE KENNEDY: That seems odd. I mean, Microsoft doesn’t say please buy our disk because it’s the prettiest disk in the business.
MR. OLSON: Justice Kennedy –
JUSTICE KENNEDY: It says buy our program because the program means something. 

Transcript at page 21.

MR. JOSEFFER (ON BEHALF OF THE UNITED STATES AS AMICUS CURIAE SUPPORTING THE PETITIONER): The United States view — I’m not sure exactly how much we disagree on this — but the United States view is that, for example, a blank disk is not a component of this invention because you don’t need a blank disk to practice this invention. The — the actual component is the physical substantiation, the physical copy of the software that’s inserted into a computer and if you get a disk –
JUSTICE SOUTER: In other words, the disk plus the — plus the coded instructions. 

Transcript at page 22.

JUSTICE BREYER: I take it that we are operating under the assumption that software is patentable? We have never held that in this Court, have we?

Transcript at page 34.

JUSTICE SOUTER: Why doesn’t that get you right back to the point that Justice Breyer was making? [MR. WAXMAN is] saying, I think, in essence if you send a blueprint — this is like a blueprint. It tells, it tells a machine which may be in Europe how to put the object code on other disks or on hard drives. The machine in Europe is following instructions just the way an artisan would follow a blueprint. 

Transcript at page 39.

JUSTICE SOUTER: It is an object that has coded onto it, transferred to it in a readable way, those commands. But it’s an object, isn’t it?
MR. WAXMAN (ON BEHALF OF RESPONDENT): Well, it’s not necessarily an object. I don’t know whether you would call a stream of photons that is constantly repeated under the Atlantic Ocean an object.

Transcript at page 40.

JUSTICE SCALIA: I hope we can continue calling it the golden disk. It has a certain Scheherazade quality that really adds a lot of interest to this case. (Laughter.)

Transcript at page 43.

JUSTICE BREYER: But I then would be quite frightened of deciding for [AT&T]and discovering that all over the world there are vast numbers of inventions that really can be thought of in the same way that you’re thinking of this one, and suddenly all kinds of transmissions of information themselves and alone become components. So I’m asking you, is there any outside the computer field analogous instance where the transmission of information has itself been viewed as the transmission of a component?

Transcript at page 53.

JUSTICE BREYER: You’re right, Justice Ginsburg, that the court of appeals for the Federal Circuit thought it was bringing this statute up to date and it even said so. We are making an extension of the statute to keep up to date with the technology. That is not for courts to do.

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