In re Nuijten: Patentable Subject Matter, Textualism and the Supreme Court

DuffyBy Professor John F. Duffy, George Washington University

[PDF Version of this Post] In re Nuijten, which is being argued to the Federal Circuit today, presents the important issue of whether a new type of artificially constructed signal may be patented.  The Patent and Trademark Office opposes patentability on the grounds that, as a matter of textual interpretation, signals do not fall within any one of the four categories of patentable subject matter – “process, machine, manufacture, or composition of matter” – identified in section 101 of the Patent Act.  PTO Br. at 12 (quoting 35 U.S.C. § 101).  Though Nuijten raises important issues concerning the scope of patentable subject matter under U.S. law (and that’s reason enough for most patent practitioners and scholars to care about its outcome), the case is also about much more.  It is about the fundamental approach to interpreting the Patent Act and the effect of the Supreme Court’s recent interest in patent cases.  To appreciate those larger issues, we must begin with a basic understanding of the facts at issue.

PatentlyO2006044Modern signals (e.g., for carrying audio, video or data) may be constructed to contain embedded “supplemental data” or “watermarks,” which typically contain information such as the source or copyright status of the underlying information being transmitted.  The addition of such watermarks, which is old in the art, can distort the underlying signal.  Nuijten invented a new way to add watermarks that results in less distortion.  Nuijten filed a patent application with claims directed to (1) the new process for adding watermarks, (2) storage media containing signals encoded by the new process, and (3) the signals themselves.  The PTO has allowed claims for the process and for the storage media containing the signals, but not for the signals themselves.  The PTO does not disputed that the signals sought to be patented are demonstrably new and nonobvious.  The agency’s sole objection rest on section 101 of the Patent Act. 

The PTO’s legal position in Nuijten has one great virtue: The agency begins its analysis of patentable subject matter with the text of section 101 of the Patent Act.  Far too often legal analyses of patentable subject matter pay little or no attention to words of the statute: 

§ 101. Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 

The PTO’s brief in the case seeks out definitions for the four crucial terms in the statute – “process,” “machine,” “manufacture,” and “composition of matter” – and concludes that signals fit within none of the definitions.  Therefore, the agency concludes, signals are not patentable. 

The PTO appears to be trying to follow a textualist approach to the interpretation of the Patent Act.  For that, the agency should win applause.  Textualism is a form of statutory interpretation that is currently in ascendancy at the Supreme Court, and there is now likely a majority of current Justices (including the Chief Justice and Justices Scalia, Kennedy, Thomas and Alito) who adhere to some form of fairly rigorous textualism in statutory interpretation.

PatentlyO2006045That’s what’s good about the PTO’s approach to Nuijten. Unfortunately, the agency is just not very good at textualism.  Of all methods of statutory interpretation, textualism is perhaps the most difficult to apply because it appears so deceptively simple.  The method at first appears to be so easy that any child with a good dictionary could follow it.   But it requires a bit more sophistication than that. 

The chief flaw of the PTO’s position is one of timing.  The crucial words in section 101 – especially “composition of matter” and “manufacture” – were written in 1793.  See Diamond v. Chakrabarty, 447 U.S. 303, 308-09 (1980) (setting forth the history of section 101 and concluding that Congress has repeatedly re-enacted language originally drafted by Thomas Jefferson in 1793).  The PTO relies upon a number of dictionaries to help in interpreting those words, but none that are even remotely contemporaneous with the codification of the relevant words.  As Supreme Court decisions demonstrate, dictionaries are helpful to interpret the text of a legal instrument, but the appropriate set of dictionaries are those that were written at approximately the same time as the legal instrument.  See Smiley v. Citibank (S.D.), N.A., 517 U.S. 735, 745 (1996) (Scalia, J., for a unanimous Court) (looking to dictionaries from the era in which the statute was passed); St. Francis College v. Al-Khazraji, 481 U.S. 604, 610-12 (1987) (White, J., for an unanimous Court) (looking to dictionaries contemporaneous to the enacting Congress in interpreting an 1866 civil rights statute); Perrin v. United States, 444 U.S. 37, 42 (1979). (recognizing the “fundamental canon of statutory construction is that, unless otherwise defined, words will be interpreted as taking their ordinary, contemporary, common meaning”) (emphasis added). 

Thus, a careful textualist would not want to rely upon a dictionary published in 2000 (see PTO Br. in Nuijten at 10), an economics textbook published in 1989 (see PTO Br. at 15), or even a dictionary definition from 1900 that has been cited by the Supreme Court (see PTO Br. at 13, quoting a 1900 dictionary definition recited in American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931)).  A careful textualist would look to contemporaneous definitions of the relevant statutory language.  We will here consider four such dictionaries that have been cited in opinions written by some of the Supreme Court’s textualist Justices for interpreting provisions in the original U.S. Constitution, which was written just a few years before the 1793 Patent Act.  See Utah v. Evans, 536 U.S. 452, 492 (2002) (Thomas, J., concurring in part and dissenting in part; joined in relevant part by Kennedy, J.); DOC v. United States House of Representatives, 525 U.S. 316, 346-47 (1999) (Scalia, J., concurring in part; joined by the Chief Justice and Justices Thomas and Kennedy).  The four dictionaries are: Samuel Johnson, A Dictionary of the English Language (1755); Nathan Bailey,  The New Universal Etymological English Dictionary (25th edition 1783); Thomas Sheridan, A Complete Dictionary of the English Language (4th Edition 1790); and Noah Webster, American Dictionary of the English Language (1828). 

 Let’s look first at “composition of matter.”  Under the PTO’s view, that category “by its own terms requires matter.”  PTO Br. at 12.  Because the PTO views signals as not encompassing matter, they do not fit within the category.  But this view begs the crucial question: What would the word “matter” mean to an eighteenth century speaker of the English language?  The 1790 edition of Sheridan’s dictionary defines “matter” to be “Body, substance extended; materials, that of which any thing is composed.”  The relevant definition of “body” in the Sheridan dictionary is ” matter, opposed to spirit; … reality, opposed to representation.” Similarly, “substance” is defined merely to be “Something existing, something of which we can say that it is; … something real, not imaginary.”  Thus, the relevant distinction for defining matter is not between mass and energy (a modern distinction much emphasized by the PTO’s brief in Nuijten) but between the real and the spiritual, or perhaps between real and imaginary

 This same distinction is made even more explicit in Webster’s 1828 dictionary.  (Though Webster’s was published 35 years after the enactment of the Patent Act, it has the benefit of being a dictionary of American English).  Webster’s definition of “matter” includes the following helpful clarification: 

Matter is usually divided by philosophical writers into four kinds or classes; solid, liquid; aeriform, and imponderable. Solid substances are those whose parts firmly cohere and resist impression, as wood or stone; liquids have free motion among their parts, and easily yield to impression, as water and wine. Aeriform substances are elastic fluids, called vapors and gases, as air and oxygen gas. The imponderable substances are destitute of weight, as light, caloric, electricity, and magnetism.

The word “imponderable” to Webster in 1828 did not have its modern connotation of inscrutable; rather the word merely referred to “destitution of sensible weight.”  Like Sheridan, Webster too defined “matter” by reference to “body,” which in turn was defined as “matter, as opposed to spirit” and “reality, as opposed to representation.” 

 Though Webster and Sheridan tended to define matter broadly, two other dictionaries hinted at a more narrow definition that would require more than just reality.  For example, while Johnson’s 1855 dictionary defined matter as “body, substance extended” and gave broad definitions to “body” and “substance,” the dictionary also cited a usage by Watt’s Logick that defines matter to include things that have”length, breadth, and depth” and that can “exclude every thing of the same kind from being in the same place.”  This sort of definition would seem to exclude things such as signals composed of photons, which do not have the property of excluding other photons from being in the same place.  It is not entirely clear, however, that Johnson intended for the definition of “matter” to be so limited, for he also gives other broader definitions, including one under which matter is “that of which any thing is composed.” 

Arguably the narrowest definition of matter is found in Bailey’s dictionary.  The 25th edition from 1783 defined matter to be “”the same as body; it is a penetrable, divisible and passible substance, extending itself into length, breadth and thickness, and capable of putting on all manner of forms.” The requirements of length, breadth and thickness seem more specific than what is found in the other contemporaneous definitions.  Yet even under this definition, signals may qualify as a composition of “matter,” for even signals made of nothing more than electromagnetic radiation (i.e., photons) have finite limits in all three dimensions. 

Contrary to the PTO’s position, it is by no means clear that signals are not compositions of “matter,” as that term was understood in the late 18th century.  Most contemporaneous definitions of “matter” are very broad, with the dominate theme being that matter excludes only the spiritual and the imaginary.  But whatever hint of ambiguity there is in “matter,” there is certainly none in the word “manufacture,” which all contemporaneous dictionaries define in sweeping terms.  For example, Bailey defines “manufacture” to encompass “any sort of commodity made by the work of the hands.”  “Commodity,” in turn, refers to “merchandize,” which meant “commodities or goods to trade with, also traffic or trade.” 

Similarly, Johnson defines manufacture to mean  “the practice of making any piece of workmanship” or “any thing made by art.”  “Art” here, of course, refers to the eighteenth century definitions of the word, “[t]he power of doing something not taught by nature and instinct,” “a science, as the liberal arts,” “a trade,” or “artfulness, skill.”  The relevant definitions are all identical in Sheridan’s dictionary.  Finally, Webster defines manufacture to include “[t]he operation of making cloth, wares, utensils, paper, books, and whatever is used by man” or “[a]ny thing made from raw materials by the hand, by machinery, or by art.”  The constraint that a manufacture must be made from “raw materials” is not a significant limitation because Webster defines “material” to be “consisting of matter; not spiritual” and explicitly notes that electricity and other such energetic “imponderable” substances may be matter.  

 In sum, the contemporaneous definitions of “manufacture” require merely that the “manufacture” be created artificially (i.e., by the hand of mankind), and not of the spiritual realm.  Perhaps also, as Bailey suggests, the manufacture must be a commodity – i.e., something that is traded.  But modern commercial electromagnetic signals, even those composed of only photons, would not have difficulty meeting any of those requirements. 

 A careful textualist would not stop with contemporaneous dictionary definitions.  The context of the words must also be considered.  Here again, the PTO’s position in Nuijten comes up lacking.  The crucial words in section 101 are preceded by the word “any,” and longstanding Supreme Court precedent both inside and outside of the patent field holds that the term “any” points toward a broad construction of the relevant language.  See, e.g., J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Intern., Inc., 534 U.S. 124, 130 (2001) (“In choosing such expansive terms as ‘manufacture’ and ‘composition of matter,’ modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.”) (quoting  Diamond v. Chakrabarty); Citizens’ Bank v. Parker, 192 U.S. 73, 81 (1904) (“The word any excludes selection or distinction.”) (emphasis added).

 A textualist would consider canons of statutory construction such “noscitur a sociis,” which literally means “it is known by its associates” but is more commonly described in statutory interpretation as meaning “a word is known by the company it keeps.”  S.D. Warren Co. v. Maine Bd. of Environmental Protection, 126 S.Ct. 1843, 1845 (2006).  In section 101, the crucial terms are all capacious.  As a whole, the list of patentable subjects tends to reinforce the sense that these terms were meant to be applied expansively. 

Finally, any interpreter of statutory text would want to understand the stakes of the relevant interpretive choice.  Here again, the PTO’s position comes up wanting.  To understand what is at stake in the case, we must ask: Why does the patent applicant want claims to a signal in addition to the claims covering the process for generating the signal and the media storing the signal?  The applicant here is, after all, a sophisticated party.  The real party at interest in Nuijten is the Philips Corporation, one of the largest and most successful electronic corporations in the world.  Philips’ reason for wanting signal claims is fairly evident: Philips wants to be able to bring direct infringement actions against parties transporting its novel form of signals.  The process claims will not protect Philips against overseas generation of the signals, and the “storage medium” claims will not necessarily reach a company that is merely transporting the signals. 

Yet even if the PTO’s position prevails and signals themselves are not patentable, there will still be nothing to stop Philips from claiming transport media (e.g., wires, cables, and fibers) containing the relevant signal.  True, such claims may not be able to cover free space propagation of an electromagnetic signal, but that may matter little.  Current technology requires electronic circuitry having physical wires to generate and to receive an electromagnetic signal.  Moreover, many, perhaps even most, electromagnetic signals are today being transported by fibers, cables or wires.  Thus, even under the PTO’s interpretation of § 101, Philips should be able to achieve much of its intended objective, provided that the company observe some formalisms. 

This is not to say that the issue in Nuijten is unimportant.  While in many cases there may be formalistic ways to work around the ad hoc limitation on patentability sought by the PTO, the PTO’s position will engage patentees in litigation over the validity of those formalistic “work arounds,” and that litigation will focus on metaphysical distinctions wholly tangential to the underlying merits of the invention and to the basic policies of the Patent Act.  That sort of litigation may be great news for patent lawyers who revel in “gobbledygook” and “meaningless” jargon, see Trans. of Oral Argument in KSR International v. Teleflex Inc., No. 04-1350, at pp. 40-41, but it has no connection to the policies that Congress seeks to advance in authorizing patents for meritorious inventions.  

So much for the legal issue in Nuijten.  There is also, however, a subtext to this particular Federal Circuit case, for it occurs in the shadow of a recent revival in the Supreme Court’s interest in patent cases.  Thus, it is quite clear that all of the legal actors in this case are asking: What would the Supreme Court do with this issue?  Specifically, the Federal Circuit judges must be wondering whether, if they adhere to their traditionally broad approach to interpreting section 101, will the ruling survive a likely appeal to the High Court by the PTO. 

While predicting Supreme Court decisions is always fraught with uncertain, it is nonetheless hard to imagine that the PTO’s position in this case would be viewed by the Court as anything other exceptionally weak.   True, just last Term three Justices joined in an opinion that would have recognized some restriction on the scope of section 101.  See LabCorp v. Metabolite, 126 S.Ct. 2921 (2006) (Breyer, J., dissenting, joined by Stevens and Souter, JJ.).  But those Justices were concerned with issuing patents that might be construed as covering every manifestation of a “natural principle,” and they had an articulable policy justification underlying their position: They were concerned with the possibility of patenting “basic tools of scientific and technological work,” which they believed should be “part of the storehouse of knowledge” that is “free to all men and reserved exclusively to none.”  Id. at 2923 (internal quotations omitted).  But whatever else can be said about the new type of watermarked signals created by the Philips Corporation, they seem miles removed from any claim to “basic science.”  They are instead an example of a garden-variety advance of applied science and technology – clever engineering, but hardly a fundamental principle of nature. 

Moreover, the dissenting opinion in LabCorp was joined by none of the Court’s most committed textualists (as mentioned above, this group probably encompasses at least the Chief Justice and Justices Scalia, Kennedy, Thomas and Alito).  It seems unlikely in the extreme that those Justices would look favorably on the PTO’s position, which has been reached without any examination of the relevant contemporaneous material.  And from the Federal Circuit’s viewpoint, the Nuijten case is probably as good as any other for testing whether the Supreme Court is going to impose new limitations on § 101.  Sooner or later, the Supreme Court is going to grant certiorari in some § 101 case.  Every appellate lawyer in Washington knows that, after the LabCorp litigation, certiorari is not going to be hard to obtain on § 101 issues.  If the Supreme Court is going to consider imposing new limits in the area, Nuijten is an excellent case to show not only the weak textual basis for manufacturing new limitations but also the mass of problems likely to arise if such limits are created. 

Note: John Duffy is the Oswald Symister Colclough Research Professor of Law a George Washington University Law School and is widely considered one of the leading patent law academics.  He was a clerk of Justice Antonin Scalia and maintains an active Supreme Court practice. [Link]

Cite as John F. Duffy, In re Nuijten: Patentable Subject Matter, Textualism and the Supreme Court, Patently-O (2007), http://patently.wpengine.com/patent/2007/02/in_re_nuijten_p.html.

Documents:

Notes:

  • Hal Wegner has noted the panel, Gajarsa, Linn, and Moore, JJ., are all grads of various ‘institutes of technology.’ (RPI & MIT).
  • Nuijten’s invention involves digital watermarks, the claim at issue reads as follows: 14. 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.
  • DDC Commentary: If the CAFC allows this patent, look for Supreme Court review.

51 thoughts on “In re Nuijten: Patentable Subject Matter, Textualism and the Supreme Court

  1. E=Mc2 – signals are energy and matter is convertible into energy; therefore, signals are matter in a different form – don’t let me get into quantum physics.

  2. Richard Stern hits some of the key issue.

    Entertainment is a recognized utility. Therefore, a method of telling a new joke meets the utility standard for patentability.

    But here’s the rub. The current state of the law is that an otherwise old method (“a method of making a subject laugh by telling a joke”) can not be made into a novel invention merely by changing the information (the particular joke) that is being conveyed as part of the method. If we go down that road, we are patenting not methods or compositions but the information itself.

    If putting novel information into an old signal (“an electromagnetic signal”) makes the signal itself patentable, then we run into the same problem. In what case would a signal carrying a new joke NOT be patentable??? Will the Federal Circuit mandate that PTO examiner’s utilize a “laugh test”?

  3. “Perhaps one answer to Malcolm’s question is repeatability. You can modulate a signal in a particular manner to provide a (new, non-obvious) signal with repeatable characteristics.

    This is also entirely unlike sending smoke signals (see 2/6 12:43 pm post).”

    Okay, can I ask how these “repeatable” signals are “entirely unlike” smoke signals? And how are they “entirely unlike” light waves emanating from a flashing neon sign advertising a new and non-obvious product?

  4. I agree strongly with Professor Duffy’s suggestion that we should determine what the members of Congress thought they were saying when they passed the text of the first patent act in 1790. That act provided for patents to persons who “invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used.” (Text available at link to docs.law.gwu.edu.) Subsequent patent acts, down to the present, have preserved substantially this language.

    I would amplify his proposed textual approach, however, and add some caveats. First, we should also consult the wording of Article III, Section 8, Clause 8, which limits Congress’s patent-granting power to promotion of the useful arts. That wording suggests that the classes of statutory subject matter, then (art, manufacture, engine, machine, or device) and now (machine, [article of] manufacture, composition of matter, and process), must be within what was understood as the useful arts in the period around and following 1789, plus perhaps a degree of reasonable extrapolation for things of substantially the same kind. Certainly, tanning, dyeing, weaving, papermaking, metalworking, and the like were useful arts, but many things besides laws of nature and abstract ideas failed to qualify. (For example: I claim a method of soothing the savage breast, comprising playing music in sonata allegro format; I claim a method of relaxing and soothing dyspeptic persons, comprising telling them stories that begin with the statement, “Take my wife, please”; I claim a method of determining what is a marketable blend of whiskey, comprising blind testing different blends to ascertain which blends most meet approval; I claim an article of printed matter X wherein the imprinted information on a substrate is novel but the substrate and the information do not cooperate in a novel way.) This is more a problem of whether business methods are within the useful arts than whether signals are statutory subject matter, but probably making signals was not ejusdem generis with anything in the useful arts in 1790, and therefore unlikely to have been intended by the draftsmen to be within the listed classes of statutory subject matter.

    Second, it is not enough to consult dictionaries. For example, the passage from Webster that Professor Duffy cites gives Webster’s understanding of what philosophers in the 18th century thought was matter – citing a usage by Watt’s Logick that defines matter to include things that are extensible, i.e., have “length, breadth, and depth” and that definition thus excludes every thing of the same kind from being in the same place. (Obviously, signals can be superimposed on one another.) Would it not be better than consulting what Webster in 1855 thinks philosophers think (or thought in 1789) is matter to consult instead the texts of Locke and Hume and decide for ourselves? Surely, we will get a better fix on what was a useful art and what is ejusdem generis with the statutory subject matter classes of 1790 to try reading Locke and Hume than Webster.

    Third, Professor Duffy uses the words thing and something several times (for example, “any thing made by art”), as well as similar terms. I question whether in 1790 incorporeal objects were considered things in the sense used here or were things “made by art.” I can make a joke, artfully or inartfully, but is that the kind of thing that is statutory subject matter? The reference to any thing made by art is not self-explanatory.

    Support for the proposal to look to the 18th century context here – at least “cf.” support – can be drawn from Markman, which looked to 1790 practice to determine whether a judge or jury should construe claim meaning. Looking to the original contextual is a promising approach. But it may well take us to the opposite answer from that which Professor Duffy suggests.

    There is a curious parallel to the construction of section 3 of the Clayton Act of 1914, 15 U.S.C. § 14. That section makes unlawful certain exclusive dealing arrangements in the sale of goods, wares, merchandise, etc. Advertising and electric power have each been held not to be within the scope of section 3 because they are not ejusdem generis with goods, wares, etc.

  5. Perhaps one answer to Malcolm’s question is repeatability. You can modulate a signal in a particular manner to provide a (new, non-obvious) signal with repeatable characteristics.

    This is also entirely unlike sending smoke signals (see 2/6 12:43 pm post).

  6. I’m sorry. My immediately preceding post lost the quotation from the person raising the question addressed. It was:

    As a practical matter, it would seem that solidly drafted claims on the transmitter and receiver units would cover any kind of commercial infringement of proprietary signals. Therefore, what difference does it really make if signals are patentable or not? Can anyone come up with an example to the contrary?

  7. Malcolm Mooney, Feb 06, 2007, asks:

    >

    In transnational patent infringement, such as that involved in the NTP-RIM case, you can have problems finding direct infringement or even contributory or induced infringement. For example, consider a patent on a method of selling financial instruments over the Internet. The customer fills out a form and sends it to the patentee over the Internet. An infringer sets up business in the Cayman Islands or Finland, complete with Web site. The infringer causes (actively induces?) the US customer-user to carry out some of the steps of the method in the US and, again in the US, to make and send out over the Internet to the Caymans a signal adapted for carrying out some steps of the method. The infringer sends a confirm signal back to the US user, so that the confirm signal is “physically” present in the US (to whatever extent one can say that for a signal). In such a case it may be easier to establish the elements of an infringement case based on the claimed US signals (enduser-send and infringer-confirm signals)than on the method. (System is hopeless right now under NTP-RIM.)

  8. As I was present during the Federal Circuit hearing, I believe the textualist argument was given some weight by the panel. However, Judge Linn (who appeared to be the one who read the briefs) seemed persuaded by the arguments in favor of finding signals patentable. Although Judges Gajarsa and Moore questioned the support for 101 patentability at points, I forecast that Linn will write the opinion.

  9. “Whoever invents or discovers *any* new and useful … composition of matter… may obtain a patent therefor”

    Does “any” mean each and every definition of the word “composition”?

    Composition has many possible meanings:
    1a : the act or process of composing; specifically : arrangement into specific proportion or relation
    5 : an intellectual creation:
    7 : the operation of forming a composite function;

    Ditto for “manufacture”:
    2. A product that is manufactured. 3. The making or producing of something.

  10. “E=mc^2. Matter and energy are inexorably entangled with one another.”

    That’s nice.

    That equation is old. Transmitted signals and waves of all kinds are even older. Please explain why nobody considered arguing that signals and waves were patentable compositions of matter until now. Why is it suddenly so “obvious” to certain people that, e.g., induced radiation is patentable as a *composition of matter*?

  11. “E=mc^2. Matter and energy are inexorably entangled with one another.”

    That’s nice.

    That equation is old. Transmitted signals and waves of all kinds are even older. Please explain why nobody considered arguing that signals and waves were patentable compositions of matter until now. Why is it suddenly so “obvious” to certain people that, e.g., induced radiation is patentable as a *composition of matter*?

  12. What really matters is “the matter”. I think the crux lies in understanding, interpriting ” the matter”. “process, machine, manufacture, or composition ” as referred in 101 are mere applications or so to say the adjectives od matter. If matter does not exist these do not exist.

    Therefore we need to well understand what law intended by the use of the word “matter”.

    Should we think and construe the “matter” only in dimensional frames of analytical mind? Will it not be prejudised manner of analysis? We need ot attend to fundamental questions like can matter be unidomensional or multidimensional. We can well accept it being of two or three dimenaions because we can measure it. Is it the only way to measure it? Can something that does not exist, amend or modify existing things? CAN SOMETHING THAT DOES NOT EXIST IMPART NON-OBVIOUS CHARACTER TO ACCEPTED VERSIONS OF MATERIALS? If the answer is yes then that non existing thing is also a matter. And if we accept that is is a matter, 101 cannot come in way.

    Milind Sathe
    India sathemilind2@rediffmail.com, milindvsathe@rediffmail.com

  13. In days of old, when judges were bold,
    and had more than just stiff & hubiristic spine;
    They would use their wit, and pragmatic spit,
    To fashion a Solomon like opine.

    (Ah, how I miss the good old, pre-“textual” days. Wasn’t there a time when judges had enough spine –and cranium– to reason on the basis of contemporary “public policy” and on the basis of modern scientific thinking? How did they get transformed into the mindless, Bible-thumping “textualists” we see now a days referring back to original scripture as if the Founding Fathers were divine beings? What demons have possessed our current judiciary? How do we release them from the bondage of their Salem witch-hunt mentalities? E=mc^2. Matter and energy are inexorably entangled with one another. One cannot “transmit” an abstract signal. Sorry Malcolm. Much as you clap your abstract hands in your abstractionist’s mind, none of us will receive that abstract signal. You have to move your body, hit the keyboard, and send the energized electrons on their way. That is reality.)

  14. I agree with Tom Kulaga above, who remarks more on texualism doctrine than on patent law: why not use a dictionary from 1952, when the words were recodified?

    This illustrates a problem in the textualist approach generally. Is there a presumption that Congress meant to keep the original textual meaning of a statute when it recodifies the statute without changing the language? Does Congress need to change one word? five? a whole section? What if the original text has since gained a new, different meaning at recodification, and Congress wants the new, different meaning to apply? Must Congress change the statute and depart from the old wording with the desired, new meaning to show their intent that the original textual meaning not apply?

    Aside from general problems, I think textualism has even greater difficulty in the arena of IP statutory interpretation. Given the rapid pace of technological change, textualism demands much from the legislature (and their underlying electorate) by requiring constant revision of technology-related statutes and understanding of advanced technology to suit the new technology. Aren’t judges in a better institutional position to interpret statutes in light of technological change, addressing these changes on a case-by-case basis (and as the changes themselves occur), instead of a legislature writing statutes accounting for the changes post-hoc? I know this argument mirrors the fundamental debate between textualism and pragmaticism, and I don’t mean to open that can of worms. I simply think that rapid technological change and the example problem above offer a further justification for a pragmatic approach to interpreting 35 USC that is not strictly textual.

  15. “As a practical matter, it would seem that solidly drafted claims on the transmitter and receiver units would cover any kind of commercial infringement of proprietary signals. Therefore, what difference does it really make if signals are patentable or not? Can anyone come up with an example to the contrary?”

    The difference is that if you just patent the coding and decoding you cannot make an internet carrier liable for transmitting an anonymous bit stream in the middle.

    It matters enough to Philips that they are taking the issue to appeal.

  16. As a practical matter, it would seem that solidly drafted claims on the transmitter and receiver units would cover any kind of commercial infringement of proprietary signals. Therefore, what difference does it really make if signals are patentable or not? Can anyone come up with an example to the contrary?

    Don Quixote send his best wishes…

  17. Philips then has a patent, which can be licenced to the music companies, on the music with the embedded information. Then Philips and the record companies could presumably go to the internet carriers

    Indeed. And why stop there? Embed “watermarks” in the music itself, then patent the analog radio transmissions emanating from from radio stations, as well as the soundwaves coming from loudspeakers. Embed messages in printed text and patent the light waves carrying the messages from the page to the eye, or from the page to a copy machine.

    If there is a compelling distinction to be made between these “signals” and the sorts of signals that Phillips wants to claim, let’s hear it. Otherwise, the parties pressing for patents on signals should admit the logical consequences of opening up 101 to include the patenting of downstream events produced by a process.

  18. “Again, I think fundamental opposition to the allowability of signal claims is probably coming from the big corporate interests who will suddenly have a lot of headaches if a signal with a watermark is patented.”

    Right this dispute does not appear to be about protecting a method of coding or decoding the information. It is directed at the signal as it exists in transit, in whatever form that signal may take from time to time.

    Let us suppose that Philips gets the patent they are claiming so that they will have a patent on any future signal which has embedded within it supplemental information coded accorded to their new digital watermarking scheme. Let us further suppose that Philips then goes to the record companies and says use our watermarking scheme to embed a code that says “this is copyrighted music and cannot be lawfully transmitted on the internet”. Philips then has a patent, which can be licenced to the music companies, on the music with the embedded information. Then Philips and the record companies could presumably go to the internet carriers and say:if you allow transmission of a digital file containing that embedded information you are guilty of patent infringement since we have a patent on the signal, as it exists in transit, which your hardware is carrying, reproducing, storing or transmitting. The internet carriers are forced to become copyright police.

  19. For everyone’s reference, here is the signal claim from Nuijten:

    “14. 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.”

    The thesis then of Professor Duffy’s article here I think, might be stated as: “what would be the result of the subject matter determination under 101 if a term other than “signal” were used?”

  20. to annon:

    Claiming the transport mechanism was not exactly what I had in mind.

    I guess I was talking about more of a definitive (mechanical) recitation of the “signal” itself, e.g. “…a set of electromagnetically organized free-space molecules organized in an information portion and an electromagnectic watermark portion…” or something like that.

    Again, I think fundamental opposition to the allowability of signal claims is probably coming from the big corporate interests who will suddenly have a lot of headaches if a signal with a watermark is patented.

    Although, interestingly, Microsoft’s brief in Microsoft v. AT&T, has language that would tend to support a signal, physically embodied as “an electromagnetic impulse” and capable of “travelling,” as being a component under 271(f) thus by reverse logic patentable subject matter…

    But, hey, I’m just a simple cave man.

  21. “Aside from the fact that Malcolm Mooney is an annoying dullard”

    LOL! I only need to be sharp enough to cut through the pseudo-techno sophistry.

    I do disagree mildly with anon: the point about Phillips having patent means available to achieve adequate coverage for its invention is not “interesting,” unless one has not encountered the concept of greed before.

    As for a “specific claim” to the “electromagnetic action of a modulator,” I agree that you could claim a modulator and you could claim a process of producing signals with that modulator, but I don’t see how you claim “electromagnetic action.” Would that be a method claim or a composition claim?

    Can I claim the van der Waal’s forces around my protein separately from the protein itself?

  22. “I apologize to professor Duffy for having to endure any of the tiresomeness he brings to this forum”

    Duffy is engaged in an exercise in self promotion or is advocating for a client on a paid basis or both. If he doesn’t like it when people disagree with him, that’s his problem.

  23. Greg and I will now stick our heads in a microwave oven where they belong…

    The resulting composition of matter will be governed by the following steps:

    1) Defrost for 8 hours; and
    2) Microwave on HIGH until two explosions occur.

    Thank you in advance for your applause

    Good bye

    Dennis, is namestealing approved behavior here?

  24. CaveMan makes a good point:
    “Perhaps then what is needed to successfully claim a signal is a specific claim to the electromagnetic action of the modulator on the free-space particles or something of that nature so that there is no ambiguity. It would be interesting to see if a more mechanical claim to a signal would pass subject-matter muster.”

    Though Prof. Duffy seems to have said this as well:
    “Yet even if the PTO’s position prevails and signals themselves are not patentable, there will still be nothing to stop Philips from claiming transport media (e.g., wires, cables, and fibers) containing the relevant signal. True, such claims may not be able to cover free space propagation of an electromagnetic signal, but that may matter little. Current technology requires electronic circuitry having physical wires to generate and to receive an electromagnetic signal. Moreover, many, perhaps even most, electromagnetic signals are today being transported by fibers, cables or wires. Thus, even under the PTO’s interpretation of § 101, Philips should be able to achieve much of its intended objective, provided that the company observe some formalisms.”

    Is this similar to how the applicant got what was essentially a software patent in Alappat, or am I missing something?

  25. Greg and I will now stick our heads in a microwave oven where they belong…

    The resulting composition of matter will be governed by the following steps:

    1) Defrost for 8 hours; and
    2) Microwave on HIGH until two explosions occur.

    Thank you in advance for your applause

    Good bye

  26. Aside from the fact that Malcolm Mooney is an annoying dullard, and I apologize to professor Duffy for having to endure any of the tiresomeness he brings to this forum, several important points are presented here that bear careful analysis.

    It is my undertanding that the PTO “issues” new Examiners a copy of Webster’s. Whether Webster’s is simply to assist the Examiners in basic English literacy, which often is a major hurdle for those to whom English is a second language, or whether Webster’s is intended to provide the ordinary definition for claim terms I don’t know.

    My experience has been that the PTO sometimes ignores both the specification and definitions from art-specific dictionaries to support rejections based on more ordinary meanings of terms. For example, in a recent rejection of a claim having, as one element, a flange, the PTO rejected the claim by reading the claimed flange on a bump disclosed in the reference. The specification and a mechanical dictionary defined the claimed flange as “plate-shaped” but Webster’s did not. The PTO would not budge, preferring instead to dumb-down the definition.

    Perhaps then what is needed to successfully claim a signal is a specific claim to the electromagnetic action of the modulator on the free-space particles or something of that nature so that there is no ambiguity. It would be interesting to see if a more mechanical claim to a signal would pass subject-matter muster.

    I don’t see why not if you consider that, for example, a semiconductor chip is nothing more than beach sand having had some useful processing performed upon it. In the same way, a “signal” is just free-space particles, that have been electromagnetically modulated.

    The problem might be the fear struck in the hearts of the big telcos, wireless carriers included, at the thought of suddenly becoming a conduit for patented parcels.

    UGH

  27. How exactly does one “transmit” an abstraction?

    It’s a process called “communication,” stepback. I can patent a method of clapping my hands to communicate an abstract idea (“Allah is Great”) to someone across the room.

    Do you think I should be able to patent the movement of air molecules over time which constitutes the transimssion of my abstract idea? Is that moving air a “process” or a “composition”?

    Message to the technorati: you can kick up all the dust you want but at the end of the day all you have is a cloud of dust. When it came to patenting DNA molecules or life forms, the arguments were straightforward not because the technology was easy for the rubes to grasp but because straightforward arguments are, well, convincing.

    Yes, it’s too bad that the PTO’s briefs aren’t a model of clarity. Then again, the PTO isn’t arguing for some shocking new restriction on what may be patented. Quite the opposite.

  28. stepback

    “I hope you understand that a rocket accelerating towards the speed of light increases in mass because the energy pumped into the rocket is being converted into an effective increase of mass”

    Your concern for my possible state of ignorance is touching. I do understand that, depending on the frame of reference of the observer relative to the frame of reference of the rocket and whether the power source is internal or external to the rocket, the rocket may increase in mass.

  29. Dennis,

    The zip download worked fine for me. Thank you.

    So, I’m starting to read the PTO’s first brief and right away it makes no sense.

    The PTO asserts that “signals” are “abstractions” (i.e., page 2, line 1 of PTO main Brief).

    But then at page 4, the PTO says that claim 15 is “ALLOWED” and patentable subject matter because claim 15 recites: “A storage medium having stored thereon [an abstraction]”? Note that I replaced the word “signal” with the word “abstraction” because the PTO maintains that signal and abstraction are the same thing.

    At page 10 the PTO uses definition number 7 and asserts thereby that an “abstraction” can be “transmitted”. How exactly does one “transmit” an abstraction? I suspect the PTO is concealing some major physics breakthrough from the rest of us.

    Lastly I note that the PTO does not make any finding of fact based on a thing called “evidence” and coupled with logic (perhaps resort to a modern physics book?) as to why a person of “skill” would “reasonably” construe “signal” to mean an “abstration” as opposed to a real world signal of the type that artisans talk about. Ordinary artisans do not waste their time correcting distortion in abstractions. Maybe supernatural artisans engage in such activities, but not “ordinary” artisans in the art to which Applicant’s invention pertains.

    P.S. Joe, if your physics degree did not come with an understanding of what e=mc^2 means, then I strongly suggest you return your degree for a money back refund. (Yes, you scored one nit pick point against me with “continuum”. I did not mean in it that way. On the other hand, I hope you understand that a rocket accelerating towards the speed of light increases in mass because the energy pumped into the rocket is being converted into an effective increase of mass –the so-called Lorentz transform.)

  30. Joe Smith naively comments above:
    “What is happening here is that Philips is trying to extend patent law into the realm of copyright.”

    Why not? The copyright system, based on the contradictions and nonsense of the idea/expression dichotomy, has been borrowing from the patent system for years, eagerly letting patent law be extended into copyright law. Non-infringing uses of Betamax – extended from patent law. Inducement to infringe of Grokster – extended from patent law. Substantial similarity – narrow idea protection equal to, if not borrowed from, patent law’s doctrine of equivalents.

    For example, consider the abstraction-filtration-comparison testing that goes on in (software) copyright infringement cases. This is little more than claims drafting (abstraction), 102 novelty analysis (filtration), and then 103 obviousness analysis (comparison), but unlike the patent system, all of this is done AFTER you get sued.

    The only fault with cases like Nuijten is not being ambitious enough, especially when the science is on their side.

  31. What about smoke signals?

    Let’s say I have novel method for making some smoke signals. I patent the method. Now I want to patent the “signals.”

    I could — in theory, obviousness considerations notwithstanding — patent a column of air in which carbon particles (i.e., puffs of smoke) in the air are dispersed in a defined way. That would be a composition claim.

    But could I patent a “changing column of air,” capturing each infinitesimally different composition over a specified time period, as the puffs of smoke rise? Is that a process or a composition of matter? Seems like neither to me.

  32. stepback

    “”Then if the amount of excess of these “electron” matter particles fluctuates over time in one wire and the relative scarcity of electrons does the same in the other, what I have are fluctuating compositions of matter.”

    It seems as if you seek to patent an event produced by a process. It’s like a scientist who discovers a process for restoring furniture by applying a liquid. He patents the process of applying the liquid, but he also wants to patent the events which follow application of the liquid, i.e., the novel changes in the fiber of the wood over time that result following the process.

    This would seem to be prohibited by 101, as patenting a law of nature. I can shake a pole and it vibrates. I can claim my novel method of shaking the pole and I can claim the pole … maybe even the vibrating pole … but the vibrations themselves?

    The lid will be kept on this can of worms.

  33. My position in the “goods” or “matter” versus “software” (which may be transmitted by “signals”) or “information” (which may be synonymous with “signals”) has been that “information” is matter or goods. There is no information if it doesn’t interact (phase velocity may be greater than the speed of light, but information does not travel faster than the speed of light).

    Signals in one medium interact with transducers to provide signals in other media. This may be to physically push a stylus.

    In my view, computer programs (in software form) are analogous to molds for machine parts, particularly cams and cam followers — again, information transduced into other signals.

    This controversy has been carried over from the late 1990’s debate on Uniform Commercial Code Article 2, which previously had been applied with “off-the-shelf” computer programs treated as “goods” (with warranties of merchantibility) versus software development contracts that were viewed as service contracts (subject to “workmanlike performance” standards). The Uniform Computer Information Transactions Act, adopted in Virginia and Maryland and rejected by everyone else, concentrated power in mass market information publishers. UCC Article 2 itself was revised with the unexplained provision, “the term ‘goods’ does not include information,” but that version has not been adopted by any state.

    My view is that UCC Article 2, applied to “goods” and patent law, applied to “compositions of matter”, apply to the deterministic (within quantum limits) interaction of signals. Copyright law, on the other hand, applies to “expression” — at this point in our technological understanding/evolution, non-deterministic interaction with the human psyche, possibly analogous to Webster’s “spiritual” or “imaginary”.

    Regarding the example in the thread on patenting a label on a book, a closer example is patenting the watermark on each page of the book. The patentee has the right to exclude the making, using or selling of the specific article (the book) with the watermarks. The copyright holder has the right to exclude the reproduction of, distribution of, public display or performance of, and creation of a derivative work from the copyrightable elements of the book. Does an unauthorized reader of a book that is patented and copyrighted infringe any of these rights? If the watermark is not normally visible to the reader, it is certainly arguable that it is not being “used” by the reader. If the paper (medium) itself is patented — for example, “e-paper” or other paper that requires more than natural human vision and natural lighting to perceive the information — it might be a closer argument. In In re Nuijten, the watermarked signal arguably is not “used” by the user of the information identified by the watermark, just as an article of manufacture with patented features not related to holding down paper arguably is not “used” in an infringing way if used as a paperweight. Generally, one would expect Philips to assert the patent on the signal against unauthorized transmitters of the patented signal and manufacturers of transducers that actually look at the watermarks; litigation against end-users in patents is even less developed than copyright actions against end-users.

  34. So nobody wants to wager?

    Greg referred to CAFC precedent. What is the Federal Circuit case which holds: “Signals are patentable compositions of matter”? I missed that one.

  35. “Because it is permissible to claim information embodied in a storage medium,”

    These are, of course, Beauregard claims based on the 1995 Federal Circuit case of the same name.

    Interestingly, during oral arguments, Judge Linn explicitly opened the possibility that neither signals per se nor stored information should be patentable.

  36. [“Now, we can cue up the technorati….”]

    Because it is permissible to claim information embodied in a storage medium, it is worth noting that the “difference between information storage and information communication is fundamentally only a difference in one’s inertial frame of reference.” Michael P. Frank, “The Physical Limits of Computing,” Computing in Science & Engineering, May/June 2002, at 24.

  37. Hear hear Greg.

    The PTO needs more physicists (or people who have taken basic modern physics classes in any case). Glad to see that at least one poster here understands science.

    In addition, I doubt that someone like Moore, who had to take at least one term of Quantum Mechanics as an undergrad for her EE degree (I don’t know in what field she concentrated for her Masters), would agree that signals are not matter and are thus unpatentable. My prediction: if anyone takes Malcolm up on his offer, he/she will be $100 dollars richer. Too bad I’m not a betting man…

  38. Prof. Duffy’s analysis makes one key mistake that the PTO, in their ignorance of modern physics, repeatedly makes. Prof. Duffy at one point writes: “Thus, the relevant distinction between is not between mass and energy (a modern distinction much emphasized by the PTO’s brief in Nuijten), …..”. He is referring to the PTO’s continual use of the phrase “energy or matter”, which is NOT a modern distinction in light of relativity theory (think of the phrase “conservation of energy-mass”). One of the governing theories of all matter is Quantum FIELD theory. Signals are as physical, as matterish, as the (quasi)-particles that they are composed of: photons, phonons, etc. Signals are matter/physical to be manufactured. Stick your head in a microwave over and turn it on – you will clear understand the physical nature of signals. Anyone in the PTO Policy Office who uses the phrase “energy or matter” should be fired, as well as whoever cited a book of economics instead of a book on physics in the PTO brief – there is no room for contempt of science at the PTO.

    A few comments posted above predict the court will never uphold the patentability of signals. Why? The CAFC has repeatedly upheld the patentability of signals. Indeed, the PTO is fighting the same battle before the CAFC that it lost about 20 years ago, when the same court ruled that signals are patentable. There is a chain of caselaw, and the PTO is wasting everyone’s time adding to this chain with a case it is going to lose. The current chain is ATT/Excel, Arrthymia, In re Taner, In re Sherwood, and In re Johnson, and then further back to O’Reilly v. Morse.

    This is a stupid case of PTO lawyers not understanding science, and a waste of the PTO’s resources.

  39. I began reading Appellant’s Brief and noticed they rely on Arrhythmia Research Tech. case. I use this case frequently to combat 101 rejections. I also noticed the upsurgence in 101 rejections since the PTO’s (Nov. 2006?) proclamation relating to 101 subject matter. However, from my experience, and reading of the PTO’s position, they distort the case law (much like the MPEP).

  40. “The photon came out of the electron. The electron is matter. Therefore the photon is some emission of matter like stuff. I heard of one crazy patent examiner who claimed that the photon and electron are all manifestations of a same continuum of stuff.”

    Gosh Stepback, I guess when I got my physics degree we were using different textbooks. They never taught me that the photon comes OUT of the electron and they taught me that the existence of a continuum of stuff had been disproven.

    At least this helps explain why you seem to operate under a different reality.

  41. The philisophical problem that I have with using a 1755 dictionary, is that the definitions are composed of words that also have 1755 meanings. i.e., you shouldn’t just look at the definition of the word, but also the definitions of the words in the definition in order to be sure that the words in the original definition still have the same meaning today. This could go on indefinitely of course.

    It is analogous to a dictionary of a foreign language, say French. I only know a few phrases in French, so such a dictionary is useless to me. I can find new words in it, but the definitions are useless unless they include the few words that I know. But a French/English dictionary is very useful to me: look up a word in French, and read/interpret the definition using my knowledge of English.

    Professor Duffy is arguing here that a 1755 dictionary is equivalent to a 1755/2007 dictionary: look up a word from 1755 and read/interpret the definition, using your knowledge of 2007 English. I would argue that a 1755 dictionary is a foreign language dictionary entirely.

  42. This question about the patentability of any and all types of signals certainly allows many here to “signal” their mastery over the art of linguisitc manipulation and also to indicate their forgetfulness about basic scientific concepts.

    Now last time I looked (and please forgive me if the standard model of physics has drastically changed during the interim), a hydrogen atom was composed of something called an “electron” as well as another thing called a “proton”. Each of these components is understood to be “matter” or at least a manifestation of matter to some extent when viewed as a particle instead of as a wavelike phenomenon.

    So if I have two spaced-apart copper wires where one contains a relative excess of these “electron” particles and another contains a relative scarcity, there should be no problem in viewing each of these wires as a “composition of matter” where the composition includes the nuclei of copper atoms as well as a sea of electrons, with one sea of one wire having more electrons than the sea in the other wire. Stop me if I am totally wrong here.

    Then if the amount of excess of these “electron” matter particles fluctuates over time in one wire and the relative scarcity of electrons does the same in the other, what I have are fluctuating compositions of matter. No?

    Also the last time I looked, when an electron drops from a high energy orbital to a lower one it usually emits something called a “photon”. The photon came out of the electron. The electron is matter. Therefore the photon is some emission of matter like stuff. I heard of one crazy patent examiner who claimed that the photon and electron are all manifestations of a same continuum of stuff. That patent examiner expressed his idea as e=mc^2. Obviously he was just plain cookoo. By contrast, those people who use their eyes, and their “common sense” to determine what is “matter” and what is not, are geniuses. So we should listen to them and not to what the scientists tell us. Simple is as simple does.

  43. Dennis,
    Can you please check the hyperlinks of the brief attachments? None of them seem to work from my end. Thanks.

  44. Duffy writes:

    See Diamond v. Chakrabarty, 447 U.S. 303, 308-09 (1980) (setting forth the history of section 101 and concluding that Congress has repeatedly re-enacted language originally drafted by Thomas Jefferson in 1793). . . . See Smiley v. Citibank (S.D.), N.A., 517 U.S. 735, 745 (1996) (Scalia, J., for a unanimous Court) (looking to dictionaries from the era in which the statute was passed);” etc.

    And then he goes on to argue that a dictionary from around 1793 should be used to determine the statutory meaning.

    I am not a law professor and I have not studied statutory construction since law school, but from Duffy’s statement of the law, I would assume a dictionary from 1952 would be more appropriate than the ones he advocates using. Congress ratified the original langauge in 1952. Diamond v. Chakrabarty (“In 1952, when the patent laws were recodified, Congress replaced the word “art” with “process,” but otherwise left Jefferson’s language intact.”) It would make sense that the language in 1952 was ratified because of its meaning in 1952, otherwise, Congress would have changed more than the one word.

  45. If you had told Jefferson that his writings were patentable since they were, after all, printed in ink on physical paper and hence compositions of matter he would have laughed in your face. SCOTUS should do the same.

  46. “While predicting Supreme Court decisions is always fraught with uncertain, it is nonetheless hard to imagine that the PTO’s position in this case would be viewed by the Court as anything other exceptionally weak. ”

    In that case, would you be willing to wager? I’ll bet you $100 that signals will never be found patentable absent legislation to amend section 101.

    Why? Because signals are not compositions of matter or processes or machines or manufactures. It’s not clear to me why you choose “matter” as the basis for finding your definition and not “manufacture.” The strange thread-winding exercise you followed would seem to yield just as much fruit — or more — if you started with “manufacture” instead of composition of matter (or any other term!).

    Now, we can cue up the technorati who will say something like, “But you don’t understood the science” blah blah blah. Nonsense. I understand enough — enough as the Supreme’s will ever understand.

    May I patent the blehforgib? The blehforgib is the air flow produced by my novel fan apparatus. Keep your attorny handy in case I sense an offending breeze coming from your direction.

    “It seems unlikely in the extreme that those Justices would look favorably on the PTO’s position, which has been reached without any examination of the relevant contemporaneous material.”

    Oh, I think they’ll look favorably on the PTO’s position. You don’t need a weatherman to know which way the wind blows, and you don’t need a pointy head to know that a signal isn’t a composition of matter, at least not in 2007.

    Maybe if the Supreme’s hear Phillips’ arguments, they’ll be more inclined to buy the argument that putting “In God We Trust” on our coins violates the 1st Amendment. That’s a much more compelling argument than “signals are compositions of matter” (but I wouldn’t bet on the Supreme’s accepting it anytime soon).

  47. I’m just a tourist here but it sure seems to me that any signal is a “representation” and so would be excluded from the definitions of matter cited by the good professor.

    Philips has found a new way to encode supplemental data in a signal – the patentability of the coding method is not in issue in this case.

    What claim 14 appears to say is that if one takes a given signal – say a recent recording of Muskrat Love – and adds to it supplemental information using Philip’s coding process then Philips is claiming a patent on the ENTIRE resulting signal whatever it may be – Muskrat Love, Jenna Jamiesen’s greatest on screen moments or a Dicken’s novel.

    It’s as though I patented a method of putting a label on the front of a book and then threw in a supplemental claim that I would have a patent on any book that had one of my labels on it.

    That doen’t, with respect, seem right. What is happening here is that Philips is trying to extend patent law into the realm of copyright.

  48. For those who are interested, the audio of today’s arguments in Nuijten is at:

    link to cafc.uscourts.gov (caution big file)

    Whether the mp3 compressed data representing audio signals are “matter” per the 18th century definition or our modern definition is an exercise left for the reader.

    -Doug

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