Those who have followed patent cases at the Federal Circuit might well
have concluded that anything and everything is patent-eligible subject matter
under Section 101, so far as the Federal Circuit is concerned.
However
there is a significant exception to the Everything is Patent-Eligible
Doctrine: transitory signals. The relevant case is I
n Re Nuijten. The majority consisted of Judges Gajarsa (who wrote the
opinion for the court) and Moore. Judge Linn dissented.
The ineligible
claims are drawn to transmitted signals that incorporate
'watermarks'.
At the PTO, this case is regularly cited to reject
so-called Beauregard claims whose scope extends to signals transmitted
over the Internet.
Note however that, in the case of Nuijten, the
majority opinion included the following:
Thus, Nuijten has
been allowed claims to the process he
invented, a device that performs that
process, and a storage medium holding the resulting signals. None of these
claims is before us on appeal.
(CAFC, 2006-1371,
p.6)
The attention of the Court was thus directed to the claims to the
signals themselves:
Claim 14 of Nuijten’s application is the
only independent claim of the four rejected by the PTO. It
reads:
A signal with embedded supplemental data, the signal
being encoded in accordance with a given encoding process and selected samples
of the signal representing the supplemental data, and at least one of the
samples preceding the selected samples is different from the sample
corresponding to the given encoding process.
(emphasis added).
Claims 22, 23, and 24 depend on Claim 14, respectively adding
requirements that
the embedded data be a watermark, that the signal be a video signal,
and that
the signal be an audio signal.
The opinion moves on to discuss
claim construction, which was in dispute between Nuijten and the PTO. The
discussion seems worthy of full quotation (to exhibit how some CAFC judges
address questions of patent-eligibility):
The claim
construction dispute between Nuijten and the PTO turns on a somewhat esoteric
and metaphysical point, namely: are the claims at issue limited to covering only
physical instances of signals, or do they also cover intangible, immaterial
strings of abstract numbers? The PTO suggests that “claim 14 can be read
to claim a
signal that is merely data”—that is, merely numerical
information without any physical embodiment. Nuijten disagrees, arguing that
“a signal must have sufficient physical substance to be discerned and
recognized by a recipient.” That is, a signal can be
sensed and received
by some physical apparatus, if not directly by a
person.
Nuijten’s position on this issue is correct
in a limited way.
A “signal” implies
signaling—that is, the
conveyance of information. To convey information to a recipient
a physical
carrier, such as an electromagnetic wave, is needed. Thus, in order to be
a
“signal,” as required by the claim, some carrier upon which the
information is embedded is required. See Arrythmia Research Tech., Inc. v.
Corazonix Corp., 958 F.2d 1053,
1059 (“The view that there is
nothing necessarily physical about ‘signals’ is
incorrect.”
(quotation marks
omitted)).
However, while the claims are limited so
as to require some physical carrier of information, they do not in any
way specify what carrier element is to be used. The only limitations in
Claim 14 address the signal’s informational content. Specifically, the signal
must encode some supplemental data, it must have been encoded according to
a
“given encoding process,” and a sample, or single data point,
located before the location of the supplemental data must be different from the
original. The text of the claims is not limited by any specified physical
medium, nor do the dependent claims add any physical limitations. They again
require only that the signal carry certain information—a watermark, video,
or audio. Therefore, any tangible means of information carriage will
suffice for all of the claims at issue. Nuijten’s claims can of course be
embodied by conventional, known means, such as electrical signals, modulated
electromagnetic waves, and pulses in fiber optic cable. So long as some object
or transmission carries the information specified by Nuijten’s claim, it falls
within that claim’s scope regardless of its physical form. In summary, some
physical form for the signal is required, but any form will do, so long as a
recipient can understand the message—the nature of the signal’s physical
carrier is totally irrelevant to the claims at issue.
Moving
on to the statutory categories:
Nuijten and the PTO agree that
the claims include physical but transitory forms of
signal transmission such as
radio broadcasts, electrical signals through a wire, and light
pulses through a
fiber-optic cable, so long as those transmissions convey information
encoded in
the manner disclosed and claimed by Nuijten. We hold that such
transitory
embodiments are not directed to statutory subject
matter.
A nice broad holding uncharacteristic of the CAFC when
it comes to patent-ineligibility!. To get there, the majority have to
tiptoe quietly and discreetly past the State Street
hydra.
Our inquiry here, like that of the Board, will consider
whether a transitory, propagating signal is within any of the four statutory
categories: process, machine, manufacture, or composition of matter. Before
embarking on an analysis considering each of the four categories, we must
address a prior statement of this court which Nuijten argues forecloses such an
analysis.
In State Street Bank & Trust Co.
v.
Signature Financial Group, Inc., 149 F.3d 1368, 1375 (Fed. Cir.
1998), we noted that
“[t]he question of whether a claim encompasses
statutory subject matter should not focus on which of the four categories of
subject matter a claim is directed to—process, machine, manufacture, or
composition of matter—but rather on the essential characteristics of the
subject matter, in particular, its practical utility.” However, we do not
consider this statement as a holding that the four statutory categories are
rendered
irrelevant, non-limiting, or subsumed into an overarching question
about patentable utility. Indeed, State Street recognized that “the
[claimed] subject matter must fall into at least one category of statutory
subject matter,” id. at 1375 n.9, and specifically found that the claim at
issue was directed to a machine, id. at 1375. In telling courts where they
“should not focus” their analysis, State Street was advising
not to be concerned about debates over “which of the four
categories,” id. (emphasis added), subject matter, falls into—that
is, not to be overly concerned with pigeonholing subject matter once the
court
assures itself that some category has been satisfied. If, for instance, a court
determines that a claim encompasses either a process or machine but is unsure
which
category is appropriate, it need not resolve the ambiguity. The claim must
be within at least one category, so the court can proceed to other aspects of
the § 101 analysis. See State Street, 149 F.3d at 1371
(“[I]t is of little relevance whether claim 1 is directed to a
‘machine’ or a ‘process.’”). State Street
sets forth a sound premise, but this case
presents a different situation.
The
essence of the dispute between the parties is
whether a transitory signal is
covered by any statutory category. The four categories
together describe the
exclusive reach of patentable subject matter. If a claim covers
material not
found in any of the four statutory categories, that claim falls outside
the
plainly expressed scope of § 101 even if the subject matter is otherwise new
and useful.
We must therefore determine whether any of the four categories
encompass the claims
on appeal, and it is appropriate to consider each of the
categories in turn.
“State Street sets forth a
sound premise”—one doesn't know whether to laugh or
cry—“but this case
presents a different situation.” When
Judge Rich, in State Street, was punching gaping holes through the
already ineffectual “coarse eligibility filter” of Section 101, he
would presumably have been startled to discover that it would be possible to
claim anything all that could not plausibly have some affiliation to at least
one of the four categories. One wonders at the metaphysical sensibilities of a
judge is unable to tell the difference between a ‘process’ and a
‘machine’, but can with a straight face maintain that some claim
could be drawn to some sort of process/machine chimaera that is neither pure
process nor pure machine.
Nevertheless, there is an accompanying
footnote:
Of course, a claim that is so unclear as to be
ambiguous about whether it
covers a process or a machine might be invalid for
failure to “particularly point[] out and
distinctly claim[] the subject
matter which the applicant regards as his invention,” 35
U.S.C. § 112
¶ 2, but claim definiteness is a requirement separate from
patentability
under § 101.
Is it truly the case that
‘claim definiteness is a requirement separate from patentability under
§ 101’?. Only if you accept the doctrine of the Three Doors.
But the Three Doors is grounded only on Judge Rich's construction of
section 101, not on section 101 itself. It is worth noting that Justice Breyer
repudiated the Three Doors Doctrine in Mayo v. Prometheus, when it
was recommended to the Supreme Court in the Government brief.
Once past
State Street, the majority can consider each of the four categories in
turn to determine whether the category is capacious enough to hold
‘signals’. The consideration of ‘process’ yields
paydirt in the form of useful, sensible dicta:
The Supreme
Court and this court have consistently
interpreted the statutory term
“process” to require action. See Gottschalk v. Benson,
409 U.S. 63, 70
(1972) (“A process is a mode of treatment of certain materials to produce
a given result. It is an act, or a series of acts, performed upon
the subject-matter to be transformed and reduced to a different state or
thing.” (emphasis added)
(quoting Cochrane v. Deener, 94 U.S. 780,
788 (1876))); NTP, Inc. v. Research in
Motion, Ltd., 418 F.3d 1282, 1316
(Fed. Cir. 2005) (“A process is a series of acts.”
(quoting
Minton v. Nat’l Ass’n of Sec. Dealers, Inc., 336 F.3d 1373, 1378 (Fed.
Cir.
2005))); In re Kollar, 286 F.3d 1326, 1332 (Fed. Cir. 2002)
(“[A] process … consists of
a series of acts or steps …. It
consists of doing something, and therefore has to be carried out or
performed.”). Nuijten’s argument that his claims might be covered by
the
“process” category even if they do not recite acts therefore
lacks merit.
There is more on processes, but the majority soon
dispatch the ‘process’. Dispatching the ‘machine’
presents little difficulty and is soon accomplished. The
‘manufacture’ is a more formidable foe, but Diamond v. Chakrabarty supplies a handy
weapon:
The question of whether the claimed signals are
“manufactures” is more difficult. They are man-made, in the sense
of having been encoded, generated, and transmitted by artificial means. However,
artificiality is insufficient by itself to render something
a
“manufacture.” The Supreme Court has defined
“manufacture” (in its verb form) as “the
production of
articles for use from raw or prepared materials by giving to these materials new
forms, qualities, properties, or combinations, whether by hand-labor or by
machinery.” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)
(emphasis added)
(quoting Am. Fruit Growers, Inc. v. Brogdex Co., 283
U.S. 1, 11 (1931)).
There are further citations, and the
majority provide a lengthy footnote to dismiss points made by the dissent.
However the majority have a more accurate understanding of the notion of
‘tangibility’ than did Judge Rich in State Street when he
held that a calculated account balance represented a “useful, concrete and
tangible result”:
These definitions address
“articles” of “manufacture” as being tangible articles
or
commodities. A transient electric or electromagnetic transmission does not
fit within that definition. While such a transmission is man-made and
physical—it exists in the real world and has tangible causes and
effects—it is a change in electric potential that,
to be perceived, must
be measured at a certain point in space and time by equipment capable of
detecting and interpreting the signal. In essence, energy embodying the
claimed
signal is fleeting and is devoid of any semblance of permanence during
transmission. Moreover, any tangibility arguably attributed to a signal is
embodied in the principle that it is perceptible—e.g., changes in
electrical potential can be measured. All signals within the scope of the claim
do not themselves comprise some tangible article or commodity. This is
particularly true when the signal is encoded on an electromagnetic carrier and
transmitted through a vacuum—a medium that, by definition, is devoid of
matter. Thus, we hold that Nuijten’s signals, standing alone, are not
“manufacture[s]” under the meaning of that term in § 101.
Note the last point. Great to see some physics! Indeed
there is a footnote discussing wave-particle duality in quantum mechanics, and
dismissing the argument that, under that theory, the electromagnetic waves could
be considered as being equivalent to streams of photons, and thus as being
‘tangible’. Great stuff! (N.B., photons have zero mass, so seem
hardly ‘tangible’. Moreover can anyone envisage
‘touching’ something moving at the speed of light.) Moreover the
final point illustrates an important principle of claim construction: if a claim
reads on patent-ineligible subject-matter, or on prior art, then the claim is
invalid. In this case, the fact that the claim reads on electromagnetic fields
in a vacuum that are not tangible, and thus cannot be ‘manufactures’
damns the possibility that ‘signals’ are
‘manufactures’.
To press the point home, the majority have
another footnote dismissing the dissent:
The dissent
perpetuates a common mischaracterization of the holding in Alappat, 33 F.3d at 1544 by suggesting
that we have conflated the “result” of the
“useful, concrete,
and tangible result” inquiry with a “thing” that must be
useful, concrete
and tangible. The dissent is wrong. In Alappat, we
decided the question of determining whether a machine, including a number of
digital electronic circuits that performed mathematical operations on electrical
signals (a function we deemed “true of all digital
electrical
circuits”) was an “abstract idea” because the function
performed by the
machine was, in essence, a mathematical algorithm.
Alappat, 33 F.3d at 1544. We
concluded that the combination of digital
electronic circuits was “not a disembodied
mathematical concept which may
be characterized as an “abstract idea,” but rather a specific
machine to produce a “useful, concrete, and tangible result.”
Id. (emphasis added). We reiterated these principles in finding that the machine
claimed in State Street was not an abstract idea. See State
Street, 149 F.3d at 1368. We have even
considered the “useful,
concrete, and tangible result” factors in determining whether a claim to a
process was patent-eligible. See AT&T Corp. v. Excel Commc’ns,
172 F.3d 1352, 1358 (Fed. Cir. 1999). The dissent agrees that the claimed signal
is not a
“machine.” We have never held that a manufacture is
ever required to produce any
result. Thus, the “useful, concrete, and
tangible result” inquiry is simply inapplicable
here.
There is a further footnote discussing the applicability
of In Re Hruby (concerning a design patent claiming an
aethetically-pleasing water fountain), and O'Reilly v. Morse, an important 19th
century Supreme Court case.
Under the doctrine of stare decisis,
the majority cannot set aside either Alappat or State Street. The
most they can do is either to distinguish the case at hand from the binding
precedents, or else to argue that the alleged precedents are
inapplicable.
The final foe, ‘compositions of matter;’ can
be subdued with a single short paragraph. The majority cna then finally dismiss
Nuijten's claims drawn to signal as being drawn to patent-ineligible
subject matter.
______
There is a substantial dissent
from Judge Linn. I have only skimmed it. I only set out in this posting to
write a short comment of a paragraph or so, drawing attention to In Re
Nuijten, but when I looked at the opinion, I got sucked into it, and found
myself working through it in more detail. The impression I get is that Judge
Linn's dissent appears, at least superficially, to be the most cogent and
reasoned account of the approach taken towards Section 101 of the patent statute
set out by any of the apostles of Judge Rich. I must work through it some time,
but not now!
______
A request for a rehearing en
banc was denied. However three judges
dissented from the denial of a rehearing en banc. Those who have followed
Federal Circuit cases would not be surprised to learn that the dissenters were
Judges Linn, Newman and Rader.
______
The oral
argument in this case was discussed on PatentlyO.
PatentlyO also has a
posting on the denial of an
en banc rehearing of the case, which summarizes Judge Linn's
objections [ Reply to This | Parent | # ]
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