# Gottschalk v. Benson

RESPONDENT: Benson

LOCATION: Allegheny County District Court

DOCKET NO.: 71-485

DECIDED BY: Burger Court (1972-1975)

LOWER COURT:

CITATION: 409 US 63 (1972)

ARGUED: Oct 16, 1972

DECIDED: Nov 20, 1972

ADVOCATES:

Hugh B. Cox - for respondents

Richard B. Stone - for petitioner

## Facts of the case

Engineers Gary Benson and Arthur Tabbot invented a faster and more efficient mathematical procedure for transforming the normal "decimal" type of numbers (base 10) into true "binary" numbers (base 2) which are simpler to process within computers. Their mathematical procedure was somewhat akin to long division, albeit with different steps. Their attorney argued before the patent examiner that the inventors were entitled to a broad patent covering any use of their new mathematical procedure, even use of it by a human using pencil and paper. The examiner rejected their invention. An appellate court overruled the examiner and ordered a patent to issue. The Commissioner of Patents then petitioned successfully to have the Supreme Court review this decision. Before the Supreme Court, the inventors' attorney backed down from his earlier position and argued that the inventors were entitled to a patent covering all uses of their new mathematical procedure in computers, but not necessarily to its use by humans using pencil and paper. (The members of the Supreme Court at that time knew very little about computers.)

## Question

Is a computer program patentable? More specifically, is a mathematical procedure such as long division patentable?

### Media for Gottschalk v. Benson

### Audio Transcription for Oral Argument - October 16, 1972 in Gottschalk v. Benson

#### Warren E. Burger:

We’ll hear this morning in 71-485, Gottschalk, Commissioner of Patents against Benson and Tabbot.

Mr. Stone, you may proceed whenever you’re ready.

#### Richard B. Stone:

Thank you, Mr. Chief Justice and may it please the Court.

This case which is here on in a somewhat unusual writ of certiorari to the United States Court of Customs and Patent Appeals raises the question whether respondents are in entitled to a patent on a method which they have devised for converting numerical information expressed in one form of mathematical language into another mathematical language.

Both of which languages are used extensively in general purpose digital computers.

#### Warren E. Burger:

Very well, must they not have the digital computer as part of this combination in order to make the whole thing meaningful?

The formula that process standing alone after a meaningful, is it?

#### Richard B. Stone:

No, our bet is precisely -- our contention Mr. Chief Justice is that what respondents have claimed here is simply a set of steps to be carried out in a machine. They have tried to link the claim that they have made to the machinery a number of ways but our contention which I will shortly develop --

#### Warren E. Burger:

They’re interdependent, aren’t they?

#### Richard B. Stone:

Our contention is that the mathematical procedure which respondents are claiming.

The procedure for converting from one form of mathematical language into another is indeed entirely independent of the machinery.

#### Warren E. Burger:

Interdependent, I said.

#### Richard B. Stone:

No, independent is our -- is precisely our claim and I will develop that shortly.

That is the basic thrust of our argument Mr. Chief Justice.

The underlying mathematical technology involved in respondents’ claim as explained in great length in our brief and in respondents’ brief and though there is some difference in emphasis, I think there is little if any significant difference between the Government and respondents with respect to the technological nature of the claim discovery.

Furthermore, though the technical background is set forth in our brief, I believe it would help place respondents’ claim in its proper context.

The technology necessary to an understanding of the legal issue in this case, is I think simply that it may appear and I will briefly describe here exactly what it is that respondents wish to patent.

A computer is a device which solves problems involving either numerical information or other kinds of data which can be broken down by logic into numerical form.

By far, the most common type of computer in operation today is the digital computer which its name implies, operates on information and data expressed the numerical digits.

The basic function of a computer is quite simple after a problem has been broken down into the mathematical steps necessary to solve that problem.

The computer computes the solution by actually doing the arithmetic, though it is an enormously elaborate and complicated and sophisticated device, the modern computer itself is really an extension in principle of the old adding machine or calculator.

Its utility lies in its ability to perform in minutes or even in seconds’ calculations which would require years to perform by hand.

Although the computer represents digits and numbers in physical forms such as for example by series of electrical pulses, the mathematical processes which the computer performs or the same which a human would perform except that they are expressed by means of the physical symbols built into the computer which uses electrical signals for example in a manner of similar to the way in which we use pencil and paper.

Thus, the machine is built with the capacity that carry out a wide variety of arithmetical calculations but though the machine is built to do the arithmetic it is told to do.

The machine can’t think.

It cannot solve a problem unless the operator breaks that problem down into a series of mathematical or logical steps for the computer to carry out.

This series of mathematical steps is the computers instructions or as it is popularly known in the trade of programming.

Though some computers are built to carry out one particular program, obviously, the greatest utilities in general purpose of computers which are built to perform a wide variety of programs requiring only that the problems be broken down into logical mathematical steps and translated to a language that is compatible with the internal physical characteristics of a computer.

This brings us to this precise subject of respondents’ claim.

In the great majority of general purpose of digital computers, the simplest and most convenient means of physically representing numbers is in switch light alternatives such as the presence or absence of an electrical signal of pulse for example analogous and perhaps more understandable terms to the on and off the light bulb.