Patentable Subject Matter: Professor Hricik Discusses Duffy’s Textualism

Earlier this week, Professor John Duffy published his critique of the Patent Office approach to patentable subject matter. In particular, Duffy used textual analysis to examine the meaning of patentable subject matter under the Patent Act (Section 101) and under the laws as they existed prior to 1952. Duffy’s analysis shows that the four statutory classes (process, machine, manufacture, or composition of matter) should be seen as extremely broad.  This is especially true of the terms “composition of matter” and “manufacture.” Those subject matter terms have remained unchanged drafted by Thomas Jefferson in 1793. At that time, Duffy explains, these words certainly would have encompassed signals, and perhaps much more.

Hricik_davidIn response, Professor David Hricik, a statutory construction scholar and a former patent litigator, has taken issue with this old-style textualism. According to Hricik, the Patent Act is different than many other statutes because it is contemplates a framework for future innovation. 

I think we end at the same place, but I don’t think that we ought to limit the terms of 101 to what the terms meant in 1793, 1866, or even 1950.

Underlying Hricik’s argument is the implicit sense that the government is not in a position to know what types of inventions we should be working-on. Rather, the scope of inventiveness should be controlled only by the creativity of inventors and their marketplace for funding. This is the same approach that we took in drafting the IPO brief in last-year’s Metabolite case.

Hricik’s argument may actually go to far by implying that innovation related legislation should be interpreted differently than any other legislation.  All legislation looks to the future with the understanding that society is in a constant state of flux. And all legislation operates in the backdrop of technological change. If textualism is the wrong approach to interpreting patent legislation then it is the wrong approach across the board.

17 thoughts on “Patentable Subject Matter: Professor Hricik Discusses Duffy’s Textualism

  1. RE: 5,899,634:
    Consider the USPTO Interim Guidelines (link to uspto.gov dapp/opla/preognotice/guidelines101_20051026.pdf). According to the Interim Guidelines, a “computer-readable memory encoded with functional descriptive material” is patentable, even though “functional descriptive material” is not. Before the Federal Circuit the parties agreed that Nuijten’s claim 15 (claiming a “storage medium having stored thereon a signal…”) is patentable.
    5,899,634’s claim 1 claims a “sheet flow of water” which “assumes an airborne trajectory over [a] walkway to form a tunnel-like passageway.” But it also claims “a flow surface,” “a platform or walkway,” and “at least one source of water.” These additional elements collectively provide a physically realizable “safe haven,” regardless of what one might think of the idea of claiming a “sheet flow of water” which “assumes an airborne trajectory over the walkway to form a tunnel-like passageway.”
    The “storage medium” of Nuijten’s claim 15 apparently provides a similar safe haven.

  2. “Section 271(g): NTP also asserted infringement under Section 271(g), which prohibits the import, sale, or use “within the United States a product which is made by a process patented in the United States.” The court held that 271(g) only applies to processes for the manufacturing of physical articles. As such, the statute was inapplicable to NTP’s claims directed to a method for transmitting information because those claims did not “entail the manufacturing of a physical product.””

    Thanks Dennis. The solution to Phillips problem, then, would seem to rely with Congress. If it is believed that patent protection for signals is “important,” protection for imported signals should simply be expressly added to 271(g).

    Expanding the definitions of the terms “composition of matter” and “articles of manufacture” to include waves moving through space in a defined way creates issues that are worse than the solution, as I’ve attempted to illustrate above-thread and elsewhere.

  3. Thought anyone following this article might be interested in a recent talk given at Monticello’s Robert H. Smith International Center for Jefferson Studies on “Jefferson and a Populist Approach to Intellectual Property Rights” by former professor and current patent lawyer Jeffrey Matsuura.

    link to monticello.org

  4. 387mgr,

    I for one am not surprised by a need expressed here for an animal-like, “smell” and lick test instead of resort to “evidence” and logic. But that is a whole other discussion. And the slip towards the Freudian “made by mad” is probably something we all deserve.

    That said, here is a copy of my earlier post to the In re Nuijten post on Patently-O:

    “Whoever invents or discovers *any* new and useful … composition of matter… may obtain a patent therefor” [sampled text from 35 USC 101]

    Does the “any” word in 101 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.

  5. While signal as “composition of matter” may fail the smell test, signal as “manufacture” doesn’t. It is hard to deny that a signal with a watermark is something “under the sun made by mad.” Certainly if the SETI searchers picked up this signal on their radio telescopes, they would regard it as indicative of intelligent life.

    The hard part is drafting a “signal” claim that avoids reciting the meaning of a signal, but focuses instead on its physical nature, i.e. what physical features of this this claimed signal distinguish it against background noise, so that a SETI researcher could actually identify your signal without having to know what it means.

    To see how hard this is, just try drafting a claim that distinguishes Chinese speech from all other sounds you can hear.

  6. It is a curiosity of the European patent system that the EPO does its work free of any constraints imposed on it by any court outside the EPO that is trying infringement or validity of patents the EPO has issued. So, the EPO just cracks on willy-nilly, with its task of examining, issuing, and revoking (in post-issue opposition proceedings). As a consequence, it suffers much criticism, that it is an ivory tower. But the system does have one advantage. The EPO blithely issues what it thinks ought to be protected (including signals)and refuses what it finds unpatentable under the EPC. No State Street here. The issue whether to enforce any particular issued claim, against any particular act alleged to infringe, falls on the seized court, which does the best it can, with what has been issued out of the EPO. I’m beginning to think it might be a strength of the European system, that there is this cut-out, between the PTO and the courts. We’ve got signals (and discs carrying software) covered, but not tax-saving schemes. How Philips would assert their signal claims in Europe is Philips’s problem.

  7. Malcom: You mentioned 271(g) as an avenue for capturing signal infringement. That doesn’t work under RIM v. NTP. The following is from an article that I published in 2005:

    Section 271(g): NTP also asserted infringement under Section 271(g), which prohibits the import, sale, or use “within the United States a product which is made by a process patented in the United States.” The court held that 271(g) only applies to processes for the manufacturing of physical articles. As such, the statute was inapplicable to NTP’s claims directed to a method for transmitting information because those claims did not “entail the manufacturing of a physical product.”

  8. Joe,

    You’re right. We are going off topic. The real question, as the USPTO submits it in its briefs, is whether a “signal” is an “abstraction” or whether it is non-abstract, real matter (of the matter-energy kind). The function of a signal is to provide an “indication”. (See link to m-w.com Etymology: Middle English, from Medieval Latin signale, from Late Latin, neuter of signalis of a sign, from Latin signum
    1 : SIGN, INDICATION, … 3 : something (as a sound, gesture, or object) that conveys notice or warning
    4 a : an object used to transmit or convey information beyond the range of human voice b : the sound or image conveyed in telegraphy, telephony, radio, radar, or television c : a detectable physical quantity or impulse (as a voltage, current, or magnetic field strength) by which messages or information can be transmitted) .

    It is not possible for an “abstraction” to provide an indication to anyone other than within the mind of the contemplator of the abstarction. An abstraction can not be transmitted. It is abstract. It is not of this world. Simple as that.

  9. “One purpose of a signal claim is to be able to go after foreign based copyists who propagate (import) the signal into the USA.”

    Remind me: what’s the matter with 271(g), assuming the method of producing the precious signal is patented (which it had better be)?

  10. Joe,

    Give us all a break. When a cargo ship comes into port carrying infringing goods (let’s say “machines” for purposes of 101), no one sues the captain of the ship for being a “carrier” of the infringing stuff. You sue the person who has legal responsibility for causing the infringing stuff to be propagated into the United Sates or its territories. That’s who you sue.

    One purpose of a signal claim is to be able to go after foreign based copyists who propagate (import) the signal into the USA. Why is that so hard to understand?

  11. Stepback – I think that you are missing the point. We are not debating whether the coding method is patentable (that would be covered by Morse). We are discussing whether the resulting coded message, as it exists in transit, is a patented article fixing the carrier with liability for patent infringement for reproducing and forwarding the messages.

    Duffy is clear about this issue when he writes:

    “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.”

    According to Duffy, it is the opportunity to sue for “merely transporting” the bit streams that is motivating this litigation.

  12. Dear Malcolm-in-the-Muddle,
    Sad for you that some of us have memories.
    Remember William F. Morse?

    “The Supreme Court did not strike down all of Morse’s patent claims. Morse actually did get to keep the following claim:

    “I claim as my invention, the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”

    Could it be that Morse was actually the first to patent the propagated signal after all? What hath God wrought, indeed. ”

    from
    link to comsoc.org

  13. So now we are on to the form vs substance conundrum. If the technical contribution is usable, in the course of trade, as a carrier of software, or a signal, and the patent system doesn’t protect it in that form, the invention gets misappropriated, and the inventor loses the market that is his/her right, despite the subsistence of a patent. Allowing claims to the programmed computer, but not the software on the disc, is unfortunate. So too is allowing the transmitter and the receiver but not the signal in between. But, of course, you have to deny patentability to mere presentations of information (as such), business methods (as such) and software (as such) and have a civil law system to retain sanity in the infringement courts. I am yet to be convinced that the founding fathers of the European Patent Convention (in common law England and civil law Germany) got it wrong. RoW finds the EPC handy. USA might find it helpful too.

  14. “Malcolm, I cannot for the life of me see why the public should find it strange that something as technical as a new and non-obvious way of building an electromagnetic signal should be seen as unfit for patenting.”

    I think everyone agrees that a method of creating a signal is patentable. Methods of doing stuff are generally patentable.

    It’s the patenting of the travelling waves themselves that is highly dubious. Waves aren’t compositions of matter. Waves are waves. I can claim a method of splashing someone. But I can’t claim the waves. I can claim a method of putting text on a page. But I can’t claim the light waves bouncing off the page.

    There is nothing remotely shocking about any of this, I’m afraid.

    Personally, I have no problem with patenting business methods, provided the business methods are novel and non-obvious.

  15. Comment from civil law Europe: I watch with fascination the way the USA indulges in intense analysis of text that is unfit for today’s world. England regards its Statutes as “always speaking” that is, always to be interpreted in the context of today’s world. Why not USA too? I should have thought that the public wins, when the line dividing what is patentable is set by a non-obvious contribution to technology. On that sensible criterion, managing signal structure, for example to render transmission of information more efficient, strikes me as eminently patentable subject matter, but not methods of doing business. Malcolm, I cannot for the life of me see why the public should find it strange that something as technical as a new and non-obvious way of building an electromagnetic signal should be seen as unfit for patenting. The public finds it far more remarkable that non-technical things, like ways of mitigating tax liability, should be patentable.

  16. Honestly, it doesn’t make a difference what approach is used. Professor Duffy’s argument that the terms in 101 encompass emanated waves (light waves, sound waves, radio waves, water waves, whatever) travelling through space is clear as mud.

    The court which holds that signals are compositions of matter is going to be the laughing stock of the nation. If anyone thinks patents are derided now, imagine the public’s reaction to that decision.

    In the real world, it doesn’t matter if there is a philosophical “rationale” for categorizing signals as compositions of matter (or vice versa). The smell is very bad and the smell is the first test. Next, we’ll have murder defendents arguing from the “philosophical materialist foundations of modern science” that there is no such thing as free will. Must the defendant’s arguments be rebutted point-by-point? Or can respectfully ask that our sensibilities not be offended?

    Transmitted waves of one kind or another have been around a long time. How come nobody ever had the guts to demand a patent on some form of them until 2005?

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