Signals Per Se; Nuijten; Textualism; and Floodgates

Continuing the debate on patenting of signals per se and the Nuijten case.

  • Professor Hricik continues our debate on whether the statute should be interpreted with back-looking textualism here.  His thought experiment is as follows:

Declaration_independenceWhat if we shortly conclude that there’s really no such thing as “matter” at all but it’s just vibrations of strings, and the ‘reality’ we perceive is only a manifestation of these vibrations that we cannot themselves perceive.   Does the conclusion that there is no “matter” as Jefferson understood the term mean nothing has patentable subject matter, since none of it is “matter” as that phrase was used back in Jefferson’s day?

  • Professor Duffy provides his new and fresh commentary on the oral arguments in PDF Form. (Duffy’s title is “Ten Points on the Oral Arguments in Nuijten”). Part of the debate explored by the judges is whether our 20th century knowledge of the relationship between energy and matter means implies that all energy forms should be patentable.
  • Expanding patentable subject matter always creates the potential for a flood of incoming patent applications.  We saw this type of flood with business-method and software-related applications in the past. The PTO continues to be severely criticized for allowing a number of ‘bad patents’ to issue in both of those areas during the earlier years. The general consensus is that the PTO is now doing a much better job (and is perhaps overzealous) at ensuring that business method patents meet the statutory requirements of novelty and nonobviousness. In my view, the examination problems began with the PTO’s prior art searching system — a system that, for the most part, assumes that all prior art is contained within prior US patents. As we know, the history of software and business method technologies is not primarily found in patents. For those areas, the PTO has been forced to rethink how it finds and examines non-patent prior art. In addition, these arts tend to have high cross-market uses — causing the issued patents to be potentially broader than they might have seemed in the context of the original application. Training and hiring issues also play a large role.  In the areas of software and business methods there is also a proportionally greater diversity of patent applicants because of the lower barriers to entry into those development arenas. The resulting greater amount of inexperience with the patenting process of those applications may have also resulted in a larger number of lower-quality patent applications.  That last point, however, is highly suspect considering the quality of applications being filed by many of the major players in the software arena.  In any event the PTO should be both cautious and ready to act.
  • In his paper, Professor Duffy notes that this particular case is unlikely to open any large floodgates.  Signals that are tied to some physical form (such as electronic memory) are already being patented.  As our regular commentator ‘Stepback’ and others have pointed out, Professor Noveck even has a patent covering a “computer data signal encoded in a carrier wave comprising . . .” (Claim 23 of US Pat. No. 6,823,363).

Links:

  • Professor Duffy’s Textualism Article
  • Professor Hricik’s Response
  • My Discussion of Hricik’s Response
  • Professor Osenga’s New Article: Ants, Elephant Guns, and Statutory Subject Matter.
  • 27 thoughts on “Signals Per Se; Nuijten; Textualism; and Floodgates

    1. I would recommend ignoring “Malcolm Mooney”. He just likes to come here and post strange, barely-defensible comments that he knows will incite some response. Then he tries to engage you in some “intellectual” argument by promptly abandoning his position and posting snipet comments to criticize one or two of your sentences in ways that have absolutely nothing to do with the original conversation. For examples, just look at any one of his posts above. He’s probably just a frustrated second year associate who can barely spell ptnaet and whose only rewards in life are arguing on the Internet and competing in the special olympics.

    2. Hey, I’m just a cave man.

      But it does seem that the thread had departed a bit from the 101 inquiry in view of the professor’s claims. I guess you didn’t get the memo. You may want to go ahead move your desk to the storage room.

    3. “The only thing I am projecting is the deep and widely felt desire on this blog for you to shed your gossamer wings”

      Yeah, right. My inbox is bursting with hate mail.

      I highly recommend a glass of wine and liberal use of the scroll bar.

    4. ” I will concede that the mere transmission of “something,” even a patentable something might possibly not, in a narrow hypothetical context, in and of itself, be an infringing event”

      Infringing event? Again, it’s Section 101 patentability we’re discussing. Focus, CaveMan. Focus.

      “I don’t think its the goalpost that’s moving, I would say grab that goalpost and hold on tight.”

      I would say, “the answer is a pencil because a vest has no sleeves.” I would then be making more sense than you, CaveMan, and demonstrating proper use of punctuation.

      So are you going to take my bet that electromagnetic signals aren’t patentable compositions of matter, or does that violate the CaveMan code? A simple “ugh” or “ugh-ugh” will suffice.

    5. “The patentability of that claim [adding a step of transmitting a method to a novel method claim] is not relevant to the fact that claims to a “manner” of transmitting a novel invention are not per se patentable”

      A crisp tautology to be sure, like a long dog chasing its equally long tail…

      I don’t think its the goalpost that’s moving, I would say grab that goalpost and hold on tight.

    6. The only thing I am projecting is the deep and widely felt desire on this blog for you to shed your gossamer wings, take off your high-heels and come down off of your high and contentious horse.

      If the world of patent law was as self-evident as you would have us all believe that is it in your mind, then I guess we could all go home now because all the problems would be solved. However, it isn’t, we don’t and we won’t.

      As I suspected, you ARE confusing patentability with infringment under 271. But being a one-trick pony, or a one note flute is, I guess, not a crime. I will concede that the mere transmission of “something,” even a patentable something might possibly not, in a narrow hypothetical context, in and of itself, be an infringing event (you piece of paper with my patentable instructions goes into your panty hose drawer, for example). However, I think if you realize that the purpose of transmitting the novel steps is so that they can be practiced, even at a later time, then I’ll take your bet and your money, Mooney.

      UGH

    7. “If I have a novel method claim to A, B & C, and I add a step of reproducing A, B & C, I still have a patentable claim”

      The goalpost is moving.

      Earlier you wrote that a claim to a “manner” of transmitting a novel invention was novel/unobvious. While such a claim may be “novel,” it is not per se patentable, which was (and is) the subject of our discussion.

      As for adding a step of transmitting a method to a novel method claim, sure, whatever. Once you’ve got your novel method claim, be everyone’s guest and include a step of celebrating your patent by baking a birthday cake with your name written in pink frosting.

      The patentability of that claim is not relevant to the fact that claims to a “manner” of transmitting a novel invention are not per se patentable.

      To take just one simple and obvious example: a method of writing your novel claim on a piece of paper and showing it someone (i.e., trasmitting the information via light waves): not patentable.

      Think about it, CaveMan. Or at the very least, get used to the idea that I’m right about this.

      Or better: place your bet.

    8. “And in a collegial forum such as this is there really a need for an “I’m right, you’re wrong” tantrum every other post from you?”

      LOL!!!! Talk about projecting.

    9. ceteris paribus, that is… My big cave man fingers sometime have trouble on this magic writing stone with the squiggly markings

    10. Sorry Malcolm, I guess I’m just too much of a cave man to tune in to your swishy wavelength. But I do know one thing. You are all over the place. I can’t be nearly as wrong as you are for putting forth a faulty hypothetical in the first place. And in a collegial forum such as this is there really a need for an “I’m right, you’re wrong” tantrum every other post from you?

      Even though I’m I just cave man, I do know one other thing. If I have a novel method claim to A, B & C, and I add a step of reproducing A, B & C, I still have a patentable claim, notwithstanding any sound fury or breathless rhetoric from you.

      You may be confusing a debate about the merits of infringement under 271 of a “reproduction” of a patented “component” with a debate about the patentability of a method for reproducing A, B & C, which in your new hypothetical (e.g. within the same spec) would of course, certis paribus, be patentable if A, B & C are.

      But hey, I’m just a cave man.

    11. Caveman wrote: If you are willing to admit that the steps of initiating, determining, permitting/preventing are novel, then why do you have trouble with the embodiment of transmitting code segments corresponding to the steps that you accept as novel, in an encoded carrier wave? It certainly is not as if you are claiming the broad notion of tranmitting a signal on a wave.

      This is a good question.

      I think the answer is that I like to keep processes from becoming so abstract as to have no useful effect on the real world. A computer program seems to me to be a process, i.e., a set of steps executed on a machine that makes the machine a special purpose machine that has a useful tangible result. This definition prevents the computer program process from being a “disembodied” set of abstract steps.

      Claiming a computer program as the modulation of a carrier wave seems to me to move well beyond the current jurisprudence for computer programs as processes with a useful and tangible result. Claiming a computer program as a modulation of a carrier wave turns the program into a transient event disembodied from the machine that carries out the process steps for solving a real-world problem.

      Basically, it is a move towards patenting information (the modulation information), rather than the useful application of that information to the solution of a problem.

      Patenting information is problematic to say the least.

    12. “By the way, your “group consisting of” light waves, sound waves, and electromagnetic wave (most would say electromagnetic waves include light waves) I think are all neatly covered by “carrier wave” since all can be modulated.

      Thank you for admitting that. As we continue discussing this issue and the patentability of waves, let’s keep this identity in mind.

      “Further, a patent claim to a method for reproducing a novel specification would be anticipated by the novel method itself, and the step of reproducing it obvious.”

      Wrong on both counts. The claim I’m referring to (obviously) is part of the same application which discloses the novel method.

      “you may be guilty of the crime of reading too much (or too little) Landis without a registration number (or even with one).”

      I guess you just can’t help youself. And you hadn’t even struck out yet. Pity.

      “Just because it *can* be claimed doesn’t mean that it should be claimed or that it would be useful to claim.”

      Tell it to Professor Noveck.

      Claims of the sort I mentioned have been asserted and litigated. See, e.g., Metabolite Labs, where the claim was alleged by the patentee to cover a “method” of thinking about a natural fact.

      Screwing with people in every possible way is useful, if you’re an aggressive obnoxious greedy person. That is why we’re having this discussion about the patentability of waves on the basis of the information they carry.

    13. Not sure what your point is good sir. Just because it *can* be claimed doesn’t mean that it should be claimed or that it would be useful to claim.

      Transmitting a computer code segment via sound waves? Get real. I guess when we advance enough as a society to develop the sound powered Internet, then your concerns may need to be addressed.

      Until then, I think the modulated carrier wave is sufficient to address the technical needs of this invention – including sound waves or even your personal favorite – water waves. By the way, your “group consisting of” light waves, sound waves, and electromagnetic wave (most would say electromagnetic waves include light waves) I think are all neatly covered by “carrier wave” since all can be modulated.

      Further, a patent claim to a method for reproducing a novel specification would be anticipated by the novel method itself, and the step of reproducing it obvious. What is important here is that, again, if you agree that the steps are novel/non-obvious, then a manner of enoding and/or transmitting the same steps, which are specifically recited in the body of the claim, are more or less de facto novel/non-obvious.

      You seem to be trying to split some mighty fine hairs with your example. As a result, you may be guilty of the crime of reading too much (or too little) Landis without a registration number (or even with one).

    14. If you are willing to admit that the steps of initiating, determining, permitting/preventing are novel, then why do you have trouble with the embodiment of transmitting code segments corresponding to the steps that you accept as novel, in an encoded carrier wave?

      Then why not claim a broader method of simply communicating the “novel” method to an entity, wherien the entity is a computer or person, by any means of communication from the group of communication means consisting of an electromagnetic wave, a light wave, and a sound wave? Why not claim a method of thinking about the “novel” method? Why not claim a method of reproducing a patent specification that describes the “novel” method?

      All those methods are “novel,” CaveMan, if the “underlying method” is novel, according to your logic.

      Can they all be claimed, then, CaveMan? Let us know what you think. To the extent they weren’t claimed by the patentee in this instance, why do you think they weren’t claimed? Laziness? Cheapness? Lack of revolutionary insight?

    15. “Instead of attempting to stretch the embodiment of a computer program to a wave by claims drafting, infringement laws may need to be updated so that the unauthorized electronic transmission of patented computer program can be an infringing event.”

      I don’t understand this reasoning (but then again, I’m not from California). How is it “improper” or even a stretch to claim a specific embodiment of something you are already willing to accept as novel.

      Hey, I’m just a cave man, but to me that’s like saying “ABC is novel, I accept that, but under no circumstances can I accept that ABC and D is novel! This is an outrage”

      It is far easier and more appropriate to allow a claim like the one above drawn to a particular embodiment of a data signal modulated on a carrier wave, particularly given you willingness to accept that the underlying elements are novel, than to change a law – especially when you are also willing to accept the fact that the effect would be the same!

    16. If you are willing to admit that the steps of initiating, determining, permitting/preventing are novel, then why do you have trouble with the embodiment of transmitting code segments corresponding to the steps that you accept as novel, in an encoded carrier wave? It certainly is not as if you are claiming the broad notion of tranmitting a signal on a wave.

    17. I agree with Malcolm. These claims are improper. The novelty, if any, resides in the steps of initiating, determining, permitting and preventing.

      The claim is attempting to say that a computer program for carrying out these steps can reside in the modulation of a carrier. Thus, it attemps to claim an embodiment of the computer program in an em wave.

      Underlying this claims drafting issue is the issue of catching a direct infringer, that infringer being one who transmits the program electronically.

      Instead of attempting to stretch the embodiment of a computer program to a wave by claims drafting, infringement laws may need to be updated so that the unauthorized electronic transmission of patented computer program can be an infringing event.

    18. The new “quantum” super computer developed by the Canadians can perform 64,000 instructions simultaneously based on the fact that the computer can assume states of 1s and 0s – at the same time. Werner Hiesenberg would be proud. See:

      link to newsfeedresearcher.com

      As a thought experiment, it would be interesting to attempt to construct claims for such a processing apparatus.

      Professor Noveck’s claims seem like a good model for the watermark claim in Nuijten. Having written many CDMA claims myself (essentially claims to a coded transmission), this seems to be a sensible approach.

      Speechless?! We should be so lucky. I wholeheartedly dispute Malcolm’s perennially oversimplified treatment of the subject of patentability of “waves.” I don’t think these claims can be stretched to resemble instructions on a piece of paper. There are lot of things going on in this claim, there are three code segments associated with the data signal each responsible for three separate activities.

      My only comment on these claims, particularly the first, is that there is a lot that is missing, but that only means the claim is broad. For example, the second code segment “determines” if a number of users engaging in the electronic conversation exceeds a predetermined number of users. If one assumes that there is one signal with the three segments embedded therein, I can’t see how anything could be determined. If the second segment contained an interrogatory, such as “all receivers of this signal please respond” then a determination could be made at a later time by a sender of the data signal as to how many users were present unless known a priori (which would obviate the need for determining).

      I guess without reading the specification, there is no point picking it apart.

      UGH

    19. “Well, something’s got to give …”

      Right. Patent law may be elastic but bad things happen when you get greedy and try to stretch an elastic band too far.

    20. “Right Malcolm, and it is patentable subject matter. Just like instructions on a computer readable medium, the medium being the ether here.”

      Well, something’s got to give and I’m going to bet that it won’t be the case law which says that a piece of paper doesn’t become patentable when allegedly non-obvious instructions are written on it.

    21. Right Malcolm, and it is patenable subject matter. Just like instructions on a computer readable medium, the medium being the either here. IMO

    22. Professor Noveck’s claims:

      21. A computer data signal encoded in a carrier wave comprising: a first code segment for initiating an electronic conversation between a plurality of users, each user associated with a respective computer; a second code segment determining if a number of users engaging in said electronic conversation exceeds a predetermined number of users; and, a third code segment for permitting a specific one of the plurality of users to become a moderator of the electronic conversation for a first time period if the number of users engaging in said electronic conversation exceeds said predetermined number of users, and preventing any of the users from becoming the moderator if the number of users engaging in said electronic conversation does not exceed said predetermined number of users.

      22. The computer data signal of claim 21, wherein the steps of permitting a specific one of the users to become the moderator and preventing any of the users from becoming the moderator respectively comprise electronically permitting one of the users to become the moderator and electronically preventing any of the users from becoming the moderator.
      —————

      I’m speechless, frankly. This is a (business) method patent and, in one embodiment, the method includes putting computer-readable instructions for carrying out steps of the method into an electromagnetic wave. The two claims above patent that wave.

      This is no different from patenting a piece of paper with instructions (“computer data”) written on it. I wonder why the professor didn’t patent her patent specification?

    23. “Does the conclusion that there is no “matter” as Jefferson understood the term mean nothing has patentable subject matter…?”

      Answer: no.

      This has been another installment of simple answers to easy questions.

    24. Additional Comment:

      The use of dictionaries here to define “matter” is inappropriate. Context matters. Here, the context is the patent specification. If the specification treats the signals as events, rather than as matter (because it is not concerned with the physics of the situtation), then the signals are events. Generally, events are claimed by means of a method claim.

      Trying to lay claim to the signals themselves is outside of the statutory framework, given the context of the patent specification. One can reasonably claim the process by which the signals are generated or detected. One cannot claim, in this context, the physics of the signal.

      The physicality of the signal is not novel and is not where the invention lies.

    25. I don’t see why the normal definition of matter cannot still be useful. Matter is that which persists but has properties which can change.

      Unless, you trying to claim something in QCD, this definition should be adequate for almost every purpose.

      The real distinction that should be drawn is between things and events. Signals are events, not things. Claiming them as things conflates the two.

    26. Seems to me that the patent bar is now just one tiny step away from arguing over how many angels can dance on the head of a pin.

    27. No matter? Just vibrations? Certainly a thought provoking and esoteric thesis. Reminds me of the movie entitled “What the %^&%(bleep) Do We Know?” Its a great movie I highly recommend it.

      And I’m just a cave man.

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