Patently-O Bits and Bytes No. 46: Supreme Court Edition

  • In re Nuijten: The applicant has filed a petition for certiorari to overturn the Federal Circuit’s decision that a man made signal is not patentable.  Professor Duffy filed a ‘law professor’ amicus supporting the position which I signed. We argue that the CAFCs Nuijten decision improperly creates a new subject matter exclusion of transitory inventions that cannot be perceived without special equipment.  The AIPLA also filed a brief asking the Supreme Court to hear the case. [Law Professor Brief][AiplaNuijten (119 KB)]. Judge Linn’s dissent in the Nuijten decision may well serve as an additional amicus.
  • Biomedical Patent Management v. California: This case challenges California’s claims to 11th Amendment Soveriegnty based in part on the state’s increased involvement in the business of patenting and commercialization. The Supreme Court is awaiting views from the US Solicitor General on whether the US recommends grant of certiorari.   
  • Translogic v. Dudas: In this case, Translogic asks the Supreme Court to invalidate a BPAI opinion based on the unconstitutional appointment of BPAI judges. In a recent study, I showed that 83% of recent BPAI decisions included at least one judge appointed by the PTO Director rather than the constitutional required “head of department.”  Translogic has several procedural hurdles.
  • Calmar v. Arminak: The design patent holder asked the Supreme Court to reverse the Federal Circuit’s application of the “ordinary observer” test that improperly excludes the most natural ordinary observer – a retail customer. On June 9, the Supreme Court Denied certiorari.

56 thoughts on “Patently-O Bits and Bytes No. 46: Supreme Court Edition

  1. Up above, somebody surmised that it might make a difference at the EPO, which panel you get, in the Appeal Board hearing your case. To the extent that each member of the Boards of Appeal (DG3) has a strong personal opinion, that’s right. But DG3 Decisions are collective. There is no provision for dissents. The Decision comes from the Board. What individual members thought is invisible. Members are rotated. No room for mavericks or the prima donna. Consensus is what the petitioner experiences. And there IS a consensus view in Europe what a “technical problem” is. Mind you, if you were to ask me about chemical subject matter in DG3, now that’s another matter, for another day.

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  2. e6k, sorry, I didn’t make my point clearly. Irony abounds.

    When you said the article is based on the application, I assumed you meant the article was published after the patent application was filed. In that case, Rule 56 would not appear to apply to the article itself b/c you could not use it as a 102 reference. Based on your reply, though, my assumption might be wrong and the article may have published or been submitted prior to the patent application.

    If you wouldn’t have made a 103 over just the article, it sounds like you might consider making a 103 based on the citations in the article.

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  3. “e6k, if the article is based on the application, and the art is described in the background, are you just complaining because the art was not cited?”

    I’m complaining because by not citing the art I did not happen to stumble upon it and thus based a 103 rejection on the AAPA alone. My superiors took issue with this, which I can understand, but I’m pissed because my previous superior said it was fine and now I’m left holding a reopened pre-appeal that goes back to non-final when everything was reportedly “fine”. Also, I’m a bit pissed because the attorney did a piss poor job of explaining what the actual prior art said. In fact, I might even go so far as to say he blatantly misstated what it said. But, be that as it may, and even as contributory to the now rejected 103 rejection as that may be, the documents should be cited.

    “The patent process does not require specific citation of the prior art, whereas scholarly publications generally do. ”

    Rule 56? I must be reading it wrong. “Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.” “The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.”

    I could be wrong, but the information in that article was the closest and even his rehash in the Background doesn’t make up for the rest of the context of the article being lost. To be quite honest, I wouldn’t even have made a 103 over just the article. It’s his explanation of the article which is daming. It’s dum sht like this that helps to slow things down.

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  4. –Then I find an article that just happens to be based on the application by the inventors. Thanks for citing the art in your publication but not in your patent application. That art isn’t relevant to patentability, but it is relevant to providing scholarly support for your work? Ridiculous. Litigator’s playground.–

    e6k, if the article is based on the application, and the art is described in the background, are you just complaining because the art was not cited?

    The patent process does not require specific citation of the prior art, whereas scholarly publications generally do. On these limited facts, I don’t see much for a litigator to work with, at least not if you’re implying inequitable conduct occurred. Though the litigator should be able to make a good case as to is admitted prior art, reducing the amount of stuff to argue about.

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  5. –The only valid criticism of Europe’s “technical” test I have so far seen is the “Alice in Wonderland” criticism that, for each EPO TBA, “it means what I say it means”. However, when you think about it, that’s actually an advantage, because the TBA’s are processing a flow of hundreds of “technical” cases. The very absence of Binding Precedent allows a consensus pragmatic view of what’s “technical” to emerge quite quickly, and will evolve with technology yet already delivers a high level of precious legal certainty.–

    It seems you’re saying the presence of subjectivity is an advantage because it allows the TBA’s to process their workload quickly. Because each TBA can decide as they wish w/o being bound by precedent, a consensus emerges quickly.

    This does not seem to allow for pre-planning. It sounds like our complaint with the Federal Circuit – some decisions may turn on which three-judge panel you get.

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  6. …and what Paul Cole might be getting at is that substance is more important than form, and that patents should be given for ALL new and non-obvious, enabled and useful solutions to objective technical problems, to promote the progress of technology. The only valid criticism of Europe’s “technical” test I have so far seen is the “Alice in Wonderland” criticism that, for each EPO TBA, “it means what I say it means”. However, when you think about it, that’s actually an advantage, because the TBA’s are processing a flow of hundreds of “technical” cases. The very absence of Binding Precedent allows a consensus pragmatic view of what’s “technical” to emerge quite quickly, and will evolve with technology yet already delivers a high level of precious legal certainty. So there. Incidentally, hand-waving (see above) isn’t a solution to a “technical” problem.

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  7. What cave is trying to say, I believe, is that pure signal claims should not be allowed.

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  8. Sorry Paul, its typical EPO vocalese and semantic dallying by windbag bureaucrats with too much time on their hands – the ultimate gobbledygook.

    From a communication standpoint. There is no difference between information and content. Information can plainly be described in communication theory as the Hamming distance between subsequent vectors. If the Hamming distance of the content is zero, then the information is zero.

    What your windy quote was the meaning of the content, which communication systems don’t care about. The communication system doesn’t care if you transmit Picasso or porn.

    If you came up with a new way to synchronize communications by an embedded signal then the method may be patentable, but the signal itself would not be – unless the government wanted to pervert the truth to effect a particular and possibly corrupt outcome.

    Welcome to the new Dark Ages.

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  9. “Just cite the article and the background art and ask the applicant to state whether the described art was on sale, in public use, etc. more than one year prior to the filing or before the invention.”

    The art was put almost in it’s entirety in the Background. And the described art was published 4 years prior. Problem was, by not citing the document he made problems for me when I was going to the board because the spe/specialist didn’t like me making a 103 based on his Background whereas my previous spe was like “it’s all good”. I’m going to go ahead and address his inane argument as well while I’m citing the new stuff just so it’s so air tight no BPAI judge could mess up the decision, or more likely he’ll just back down. He just has huge bals because he got some other examiner to allow an application for basically the same thing. I suppose that examiner must have wanted that day off. No problem, my new primary ref addresses the old case’s ind as well as the new case’s and should show up if any litigator cares to peruse this case for art. I can only hope he goes ahead with some litigation with his overclaims.

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  10. “e6K, the substrate material wasn’t claimed and the spec listed materials including glass as possible materials…so”

    So, he argued something that wasn’t in the claim. That’s simpler than you were making it out to be.

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  11. e6K, the substrate material wasn’t claimed and the spec listed materials including glass as possible materials…so

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  12. e6K, the substrate material wasn’t claimed and the spec listed materials including glass as possible materials…so

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  13. “Then I find an article that just happens to be based on the application by the inventors. Thanks for citing the art in your publication but not in your patent application. That art isn’t relevant to patentability, but it is relevant to providing scholarly support for your work?”

    Just cite the article and the background art and ask the applicant to state whether the described art was on sale, in public use, etc. more than one year prior to the filing or before the invention.

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  14. Could I patent a hand signal, if it solved the prior art problem of being mistaken for a rival gang member? Sure it’s “cognitive information”– but it’s also highly functional.

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  15. Could I patent a hand signal, if it solved the prior art problem of being mistaken for a rival gang member? Sure it’s “cognitive information”– but it’s also highly functional.

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  16. CaveMan’s points are well covered by the decisions that I cited.

    In Case T 1194/97 PHILIPS (EP-B-0500927), the question that had to be decided was whether a claim to a recording medium having stored information on it was precluded from protection. The Appeal Board followed the BBC decision and drew a distinction that had previously been identified by Shannon in his theory of communication between information that can be protected and content which is excluded from protection and said:

    “… the deciding board considered it appropriate to distinguish between two kinds of information, when discussing its presentation. According to this distinction, a TV signal solely characterised by the information per se, eg moving pictures, modulated upon a standard TV signal, may fall under the exclusion of Article 52(2)(d) and (3) EPC but not a TV signal defined in terms which inherently comprise the technical features of the TV system in which it occurs. The present board regards a record carrier having data recorded thereon as being in this respect analogous to a modulated TV signal and considers it appropriate to distinguish in a corresponding way between data which encodes cognitive content, e.g. a picture, in a standard manner and functional data defined in terms which inherently comprise the technical features of the system (reader plus record carrier) in which the record carrier is operative. The significance of the distinction between functional data and cognitive information content in relation to technical effect and character may be illustrated by the fact that in the present context complete loss of the cognitive content resulting in a humanly meaningless picture like “snow” on a television screen has no effect on the technical working of the system, while loss of functional data will impair the technical operation and in the limit bring the system to a complete halt. In particular the board sees no reason to ascribe less technical character to a synchronisation signal recorded as digital data, eg a predetermined binary string, than to an analog synchronisation signal transmitted or recorded as a pulse having a distinctive shape.”

    The Board supported its position by reference to Claude E. Shannon and Warren Weaver, The Mathematical Theory of Communication (1949):

    “The word information, in this theory, is used in a special sense that must not be confused with its ordinary usage. In particular, information must not be confused with meaning. In fact, two messages, one of which is heavily loaded with meaning and the other of which is pure nonsense, can be exactly equivalent, from the present (information technology) viewpoint, as regards information. Information in communication theory relates not so much to what you do say, as to what you could say. That is, information is a measure of one’s freedom of choice when one selects a message.”

    So there’s the difference Cave-Man. Well accepted and acknowledged in these arts.

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  17. Nuijten probably doesn’t want claim 14 anyway. Why? Because it’s not statutory under 112/1, scope of enablement. Look at the signal closely – the first recited signal, the one that is embedded with supplemental data, it has to be an analog signal, but later in the claim, the second recited signal is encoded, and according to the spec this has to be a digital signal. The encoding process takes a digital signal and turns it into an analog one, so while the claim contains only one signal, from the spec, you can see that the claim does not describe the end-result signal correctly. The claim needs two signals, a digital one and an analog one to be accurate. Nuijten didn’t invent this signal, he invented another one, a different one. If this claim is accurate, then because it contains only one signal, the signal has to be a digital signal in one part of the claim and an analog signal in another part of the claim. We call this a scope of enablement issue, and one for which I wouldn’t think he would want the courts to decide on. Even if the courts say it’s statutory under 101, it’s a defective claim for this other reason. I think Dean Kamen had it right, we allow too many claims that have 112/1 problems.

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  18. Paul Cole,

    Frankly, I don’t see the difference between “information” and “content.” Very plainly it should NOT be possible to protect a claim to a signal being transmitted on the internet since its been happening for DECADES. If anything, Shannon is prior art against any attempt at a signal claim on the internet or just about any other channel for that matter.

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  19. If you want to know the difference between information and meaning or content, there are two fundamental EPO Appeal Board decisons which are worth reading. One of them is television signal/BBC T 0163/85 and the other is Data Structure/Philips T 1194/97 which is one of the most interesting and important EPO decisions in the whole field. In the latter case, the EPO justifies its approach with reference to the Shannon and Weaver 1949 book “The Mathematical Theory of Communication” which in this field has the authority of holy scripture.

    Very plainly it should be possible to protect a claim to a signal or to data transmitted over the Internet if the novelty lies in the information and not in the content or meaning, the BBC signal structure being a straightforward example of this. The transient nature of the signal is irrelevant – a film delivered by cable is transient but it is a commercial product and people pay to view it. If you looked at the data on a small enough scale you would see a pattern of 0′s and 1′s, but that is not the point.

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  20. Dennis,

    Page 6 of the brief mentions that light has been slowed to 38 mph (and cites a 2007 edition of Washington Post as the reference !?) Sure it all true, but the technical literature (i.e., Nature, Vol 397, pages 594-598) published research in 1999 that showed it going slower yet – 17 mph.

    And let’s not forget the researchers who temporarily stopped it. (Nature 409: 490–493).

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  21. “then there was the argument that a glass substrate was different from a silicon substrate…”

    He made that argument because technically it’s true. link to texasglass.com

    Though, a simple 103 no doubt suffices for your purposes.

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  22. somebody,

    It is not that the invention is not in the claims broadly…it is that the specific aspect that really is the essence of the invention is not claimed…this happens all the time. Also, I have applied art with the same description and the same figures as an application that I am working on …applied it…and had an attorney argue till he was blue in the face that the identical pictures and description were not describing his invention…it was almost ridiculous…then there was the argument that a glass substrate was different from a silicon substrate…

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  23. somebody,

    It is not that the invention is not in the claims broadly…it is that the specific aspect that really is the essence of the invention is not claimed…this happens all the time. Also, I have applied art with the same description and the same figures as an application that I am working on …applied it…and had an attorney argue till he was blue in the face that the identical pictures and description were not describing his invention…it was almost ridiculous…then there was the argument that a glass substrate was different from a silicon substrate…

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  24. Antennas are non-discriminatory – you cant design an antenna that CANT pick up in-band signal energy.

    No, but you can design a system that does not “use” that signal energy for any real purpose. I don’t think you want to count heating up the antenna/circuit to a filter by a fraction of a micro degree as that having been “used”. That is simply a natural effect of your machine upon mine, one that, in reality, you caused to occur. I did not force you to transmit. If anything you forced me to receive, all I did was make an antenna, which doesn’t even come close to infringing on a signal.

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  25. Thanks for your salient reference Leopold Mooney, maybe you need to throw that new crack pipe in the lake again.

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  26. Alun: the argument regarding anything with an antenna was a reductio ad absurdum of the effect of patented signals. There is nothing ridiculous about it. And of course there are many pocket radios configured to receive TV, even digital TV. My point is that in a patented signal regime, anything that receives the signal, even unintentionally, could be viewed as infringing. Antennas are non-discriminatory – you cant design an antenna that CANT pick up in-band signal energy. If you did, it would no longer be an antenna.

    Eurodisnea said: “I would argue that such claims cover downloadable products as much as they cover products on disc or whatever.” That may be true once the entire program is downloaded and executed. But as for “signal claims” there would be nothing inherently patentable about one packet or one kilobyte of the program being transferred.

    It seems that signals are like workpieces.

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  27. “It’s ridiculous to say that anything with an antenna infringes signal claims.”

    Who said that?

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  28. Too many comments to plough through all of them.

    I thought this was settled in O’Reilly v Morse, but apparently not.

    It’s ridiculous to say that anything with an antenna infringes signal claims. Would a pocket AM radio infringe a claim for a digital TV signal? I think not.

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  29. “Except in the context [of] a technical problem to be solved, most signals have virtually no utility.”

    Except in the context of a nail, a hammer has virtually no utility.

    “… unless and until they do something useful, like get received, [signals] are just disembodied electromagnetic perturbations propagating through space according to some fairly predictable rules of nature and science.

    Unless and until the hammer does something useful, like hit a nail, a hammer is just a more or less embodied assemblage of perturbations propagating through space-time according to some fairly predictable rules of nature and science.

    Sorry, I don’t think the utility prong of Section 101 does much to illuminate the subject matter issues regarding electromagnetic signals. As anyone who has ever listened to the Dr. Demento show knows, of course electromagnetic signals are useful.

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  30. “Then I find an article that just happens to be based on the application by the inventors.”

    I love these apocryphal stories from examiners. It’s just like the one about the attorney who brings in the inventor to the interview and the inventor “admits” that “the invention” is something that’s not in the claims.

    I’ve yet to meet an examiner who doesn’t swear that actually happened. In one of their interviews no less.

    Too funny.

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  31. This is an issue near and dear to my heart as in-house patent counsel for a technology company whose work involves generating and deciphering ‘signals’. Generally one has to do something to create a signal, e.g. directing radiation (first signal) at an object to create a response (second signal). Except in the context a technical problem to be solved, most signals have virtually no utility. Further, one will recognize that in many cases, signals contain many useful components, the utility of which may become apparent only over time. Limiting patentability for signals to the context in which the signals are used for or result in a tangible result is the only practicable solution I can imagine.

    Otherwise let me lay claim to monochromatic electromagnetic signals having a gaussian profile now.

    CJ

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  32. Thanks.

    Funny story for you, I have this case where the applicant’s background is reading backwards and forwards over the claimed invention with but a small 103, and it even provides motivation. My last boss, he’s like “sure use it, looks good to me”. My new boss, he’s like “Hmm, I don’t know”. So we talk to the appeals guy and he’s like, no doesn’t look good because it’s a 103 based on the AAPA alone. I say, ok, so then this is not prior art in the background? He says “sometimes”, just like I am already aware. The applicant isn’t even arguing that what is set forth in the background isn’t admitted prior art and these guys are arguing it for him. Fine, fine, that’s the way they want to roll we’ll roll out concrete evidence I’m not going to sit and argue with them when they have no point to make and the art likely isn’t all that hard to find. Anyway, so they want each of the peices of the art the applicant has already admitted to existing being found. Of course, I’m not looking forward to finding them since the evidence of them already is in my hand, and the applicant is not protesting its use. Then I find an article that just happens to be based on the application by the inventors. Thanks for citing the art in your publication but not in your patent application. That art isn’t relevant to patentability, but it is relevant to providing scholarly support for your work? Ridiculous. Litigator’s playground.

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  33. Caveman said, re software embodied in a signal: “What your talking about is protecting content. I don’t see how patent protection is the right solution.”

    At the EPO, what matters for a computer-implemented method to be patentable is that there is a “technical effect” that is novel and inventive. If a claim to the method (and/or apparatus programmed to perform the method) meets this requirement, then the EPO will accept a claim to a corresponding computer program product, and there is no need to recite a data carrier. I would argue that such claims cover downloadable products as much as they cover products on disc or whatever.

    What matters for the EPO is the technical functionality of the program. I wouldn’t call that “content”. To me content refers to non-functional information, be it music or a movie or text. You could say that computer code is “content” in some sense, but that misses the point and I would say is not proper usage of the word. Executable code is not “mere” content in the way that an MP3 file is.

    Copyright protects both executable code and digitally encoded content. You can’t patent content, in the sense that I am using the word here, but you can patent the functionality of executable code, subject to novelty and non-obviousness. The EPO recognises that if the functionality supports an allowable claim, it makes sense to allow claims to the method, programmed apparatus and program product.

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  34. Hooray for Paul Cole. The EPO sees patentability where a claim is directed to the solution of a technical problem that’s new and not obvious. I’m not an eTech man but I don’t see why the inventor of a new and non-obvious solution to a technical problem shouldn’t enjoy the protection of a claim that encapsulates the inventive solution and is directed to the thing that defines the trade, like a program on a disc, or a signal. Of course, defining such a signal clearly enough for an allowable claim might be an insoluble problem in itself but, if Applicant can crack that problem, good luck to him/her. Maybe the US courts will tell us now, what’s wrong with the signal claims that the EPO has allowed.

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  35. E6k,
    In the interest of freeing up more of your time for entertaining me here, try MPEP 706.02(f)(1)(B).

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  36. Also, after having read the claims, on first blush it seems they have claimed a method of doing math, and a medium containing instructions to perform a method, both in a computer. Correct me if I’m wrong, but doing math isn’t patentable right?

    On a side note, unless this application predates 2005 Matlab has functions that seem to read over the claim.

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  37. I’m sure the board is paying due credit where due credit is due pds. That is an informative decision though, thanks for sharing.

    Anyway, a quick aside, if I have a reference who claims benefit of a provisional which supports all subject matter in the reference, is the date of the provisional’s filing usable as the filing date of the reference if I want to use it as a 102(e) or a 103(a) under 102(e)?

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  38. An informative opinion recently came down from the BPAI:

    /media/docs/2008/07/fd081495.pdf

    This is what the BPAI found:
    As explained infra, Appellants’ method claim is not a section 101 “process,” because it does not include a particular machine, nor does it transform subject matter to a different state or thing. A statutory “process” must meet one of those two requirements. (pg. 19)

    As stated in pg. 18, “Appellants’ claim 1 calls for a method executed in a computer apparatus.” I guess a “computer apparatus” doesn’t qualify as a machine.

    This is from AT&T Corp. v. Excel:
    This understanding of transformation is consistent with our earlier decision in Arrhythmia, 958 F.2d 1053, 22 USPQ2d 1033 (Fed. Cir. 1992). Arrhythmia’s process claims included various mathematical formulae to analyze electrocardiograph signals to determine a specified heart activity. See id. at 1059, 22 USPQ2d at 1037-38. The Arrhythmia court reasoned that the method claims qualified as statutory subject matter by noting that the steps transformed physical, electrical signals from one form into another form – a number representing a signal related to the patient’s heart activity, a non-abstract output. See id., 22 USPQ2d at 1038. The finding that the claimed process “transformed” data from one “form” to another simply confirmed that Arrhythmia’s method claims satisfied 101 because the mathematical algorithm included within the process was applied to produce a number which had specific meaning – a useful, concrete, tangible result – not a mathematical abstraction. See id. at 1060, 22 USPQ2d at 1039.

    Interestingly enough, the BPAI didn’t even cite AT&T v. Excel. Also, the only reference to State St. Bank is the following throw-away argment on page 27:

    We further note that this claim would fail even under the “useful, concrete, and tangible result” test, as explained in State St. Bank & Trust Co. v. Signature Fin. Group, Znc., 149 F.3d 1368 (Fed. Cir. 1998), because the output provided in claim 1 does not relate to any system in the real world.

    I guess the BPAI is now just paying lip service to the State St. Bank and AT&T decisions.

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  39. Paul, what would be patentable about mere software that was encoded-on a medium. If it was the arrangement of the data that isn’t patentable, if its the data itself, that isn’t patentable. If the computer implemented method is patentable, no transfer of a portion of the code to implement the method would be patentable. Did you read AT&T v. Microsoft?

    What your talking about is protecting content. I don’t see how patent protection is the right solution.

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  40. The EPO has granted claims to signals for many years if the signal structure solves a technical problem.

    Is the reasoning of EPO Appeal Boards wholly irrelevant to what should be happening in the US? As both Europe and the US are PCT signatories, and the PCT imposes common standards of patentability, what happens elsewhere in the World should not be wholly irrelevant to US discussions.

    In these days where software can be purchased and downloaded over the Internet, it is a practical necessity for adequate protection of inventors in many fields of technology that such software should be protected by signal structure claims. The received signal, of course, is decoded and used, and it is common ground that apparatus loaded with the received signal may be patentable. But often the only thing that is the subject of commerce is the signal and without the possibility of claiming it the position of inventors is seriously weakened, especially if the software or other signal is transmitted from the US and used in a country outside the US where no patent has been registered.

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  41. I agree with e6k that Duffy et al does a great job of revealing the flaws in the CAFC ruling. I especially like their references to trespass law. Too often patent law sits in isolation.

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  42. And that doesn’t even scratch the surface of signals being nothing more than information attached to a known physical object (light etc.) just as words are information on a page.

    As a matter of fact, we have protection of signals already, and it is called copyright. Anyone who has tried to UL a hit movie lately can tell you that the signals they are broadcasting are subject to action under copyright law. There is no reason that we should be adding more “protection” (i.e. restrictions) for signals.

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  43. After having reread the brief and without getting too deep back into this debate I believe that it’s fair to say that Duffy demolishes the CAFC’s reasoning. And I also believe that this is fairly apparent to everyone. Still doesn’t make a signal a manufacture by any stretch of the word. Perhaps a mere establishment of what the ordinary meaning of manufacture is would suffice.

    It seems that overwhelmingly my sources I have available, especially the technical ones, are in agreement that it is “The making of goods by hand or machinery, usually on a large scale.” That is, you are making goods or “The operation of producing a new product, article, substance, or commodity different from and having a distinctive name, character, or use from its constitute raw or prepared materials.” You would not term a writer to be a “manufacturer” even though if you wanted to stretch the word you could. In the same sense, you would not term a radio station a manufacturer even though they generate signals. It is only when you dig into the broadest uses of the term that you can hope to define a signal as a manufacture, and you would be deemed silly in ordinary conversation, especially with those that work with signals. They would not refer to themselves as manufactures of anything except perhaps the equipment to generate the signals.

    If we allow the term manufacturer to apply to all who generate signals you and I are now manufacturers. But that is contrary to the use of the word. When that starts to happen, as any lawyer knows, mischief is afoot.

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  44. Unfortunately for In re Nuijten and Translogic v. Dudas, they are going to be in the “long conference” of September 29th. That’s the first Supreme Court conference after the summer, and it’s something most Supreme Court specialists try to avoid if at all possible. The sense is that there are too many cert. petitions stacking up during the off months, and the new cert. pool clerks are gun shy about suggesting grants.

    Technically, Biomedical Patent Management Corp. v. California is also in this conference, but we are in the SG invitation group.

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  45. pds

    Is he “using” the signal?

    Sort of like a distributor “passing” a product along from a manufacturer to a retailer?

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  46. OK … I’ve read the brief. Personally, I think that signals are patentable subject matter.

    However, I do have a caveat to my opinion, one that I believed I have expressed before and regards an issue already discussed above.

    That issue is one of infringement. Identifying whether an entity infringes is one part of the issue that I won’t really get into. However, my big problem is with an intermediary that passes along the signal. Does some electronic switch through which the signal passes “makes, uses, offers to sell, or sells” the invention? I have a problem with an unaware third party who simply passes the signal along being accused of infringement.

    I’m not a litigator so I’m not too familiar with what a litigator might try to argue, but this is the one of the big sticking points for me with regard to claims as to signals. However, this shouldn’t effect whether or not signals should be patentable, because that involves an entirely different set of questions.

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  47. Paw,

    I would say that a typical quanta necessary for signal patentability in a patentable signal regime would be a packet or some other similar discrete PHY layer signal chunk that could be individually routed. If we assume in your hypo that the patentable portion was above the packet layer, which really doesn’t make sense in the packet world since everything above that layer is just data, it really wouldn’t matter if the higher level data was broken up. If I get a packet that “belongs” to someone else, which is entirely possible under the open architecture framework upon which the Internet was originally built, I would theoretically infringe in some manner.

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  48. You guys may want to read Professor Crouch’s brief /media/docs/2008/06/duffynuijten.pdf
    and then reconsider your opinions.

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  49. CaveMan -

    In a distributed network, such as the Internet, your router will not receive the entire signal, but only a portion of it (one or more packets). So your router is technically not making, using, or selling the entire signal. My two cents.

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  50. “It seems to me that a subject matter “exclusion” cannot be made for that which is not proper subject matter to begin with. ”

    Hear hear Cave. Patentable signals is a ridiculous concept, the SC needs to shut the door on them, hard, and then double bolt it.

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  51. I agree with Prof. Duffy that the CAFC’s articulation should not be the reason a signal is denied patentability. There should be a better way to articulate why a signal should not be patentable. But again, I’m not so sure the “gobbledygook” court is in a position to do it.

    Prof. Duffy says that the decision would work mischief in the patentability analysis, however, the mischief caused by patentable signals IMO is far greater. Forget DMCA, if you send a packet that happens to be routed over my gear are you telling me I have to pay a royalty? And since antennas are more or less non-discriminatory at least within the reception band, are you telling me I would be infringing your signal patent if my antenna received it, which it surely will, whether or not I process it?

    Such logic would turn the entire communication industry on its head. If you didn’t like RIM, just wait for a world where owners of signal patents sue any manufacturer making a product with an antenna.

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  52. BTW, something wrong with the link to the AIPLA brief…

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  53. In the “Questions presented” the word article is used. An article, by definition is tangible.

    article: “An individual thing or element of a class; a particular object or item”

    object: “Something perceptible by one or more of the senses, especially by vision or touch; a material thing.”

    I pray that cert is denied… The last thing we need is for this Supreme Court, the one that gave us KSR and “gobbledygook,” to rule on a matter of such fundamental importance.

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  54. It seems to me that a subject matter “exclusion” cannot be made for that which is not proper subject matter to begin with. Seems to me that signals fall into the same category as algorithms: unless and until they do something useful, like get received, they are just disembodied electromagnetic perturbations propagating through space according to some fairly predictable rules of nature and science.

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  55. Regarding Calmar v. Alminak: good for the Supremes.

    I believe it’s also good for design patents, although design patent proponents may disagree. As I wrote elsewhere: “if the Supremes approve of the Gorham test then the fun of invalidating design patents can begin in earnest. The same test for infringement must apply to validity. If Joe Sixpack looks at Design A and it “looks pretty much like” prior art Design B, then say buh-bye to the design patent.”

    So all in all, design patents likely dodged a bullet, at least on the validity end …

    Reply

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