Signal Claims Are Not Patentable: Nuijten Stands — Rehearing Denied

In re Nuijten (en banc denied 2008)

The CAFC has decided not to hold an en banc hearing of the important Nuijten appeal.  In the original case, the CAFC (Judges Moore and Gajarsa) found that a transitory propagating signal is not proper patentable subject matter because it does not fit within any of the four statutory categories. That is, the signal is neither a process, machine, manufacture, nor composition of matter.

Three judges, including Judge Linn of the original panel, dissented from the en banc denial and offer a concise summary of their reasoning (some citations removed):

I respectfully dissent from the court’s decision not to rehear this case en banc. As I explained in my dissent from the panel opinion in this case, our decision conflicts with our own precedents as well as those of the Supreme Court. … It conflicts with our own precedent because our predecessor court’s decision in In re Breslow, 616 F.2d 516 (C.C.P.A. 1980), forecloses the majority’s conclusion that something “transient” or “fleeting” cannot constitute a “manufacture” under § 101. And it conflicts with Supreme Court precedent because it ignores the Supreme Court’s analysis of how, in general terms, § 101 is to be construed. As the Court discussed in Diamond v. Chakrabarty, patentable subject matter includes “anything under the sun that is made by man” except for certain enumerated exceptions: “The laws of nature, physical phenomena, and abstract ideas have been held not patentable.” The majority’s narrow construction of “manufacture” ignores this framework.

In addition, this case raises important questions about the relationship between § 101 and § 103. In this case, we affirm the PTO’s rejection of claims to a signal simpliciter, but the PTO has allowed a claim to a storage medium containing the very same signal, on the grounds that the storage medium is a manufacture that can be rejected, if at all, only under some provision other than § 101. In particular, the PTO considers the patentability of such claims under the “printed matter” doctrine of § 103. See In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). These distinctions make no practical sense and are poorly supported by precedent, which, to the contrary, requires a more holistic approach to the question of whether a claim is directed only to an unpatentable abstraction or whether it is directed to a patentable application of such an abstraction to an otherwise statutory invention. Cf. Parker v. Flook, 437 U.S. 584, 591 (1978) (“The process itself, not merely the mathematical algorithm, must be new and useful.”); cf. also In re Abele, 684 F.2d 902, 909 (C.C.P.A. 1982) (“As was the case in [Diamond v. ]Diehr[, 450 U.S. 174 (1981),] . . . the algorithm is but a part of the overall claimed process.”). The distinctions that are drawn between signals and storage media containing those signals would appear to apply equally to the distinctions between software and hardware and are artificial at best.

Notes:

  • The Comiskey case is (apparently) still pending decision on rehearing. Comiskey arguablly stretches the 101/103 relationship even further than Nuijten. However, it may have an even smaller shot of rehearing en banc because of the lack of a dissent as well as a lack of amicus support for the en banc request.
  • Patently-O Discussion of Nuijten and Comiskey
  • CAFC Nuijten Decision

90 thoughts on “Signal Claims Are Not Patentable: Nuijten Stands — Rehearing Denied

  1. The decision is correct, but the reasons are much more basic than those given in the case. Signals may be manufactures, but the term literally encompasses ideas.

    Ideas, which are not patentable subject matter, exist as signals moving in a nervous system.

    Imagine the patentee running brain scans to see if our thoughts carry supplemental data having the claimed characteristics, perhaps a secondary motivation or suppressed emotion. Imagine also the accused thinker trying to prove invalidity by reconstructing prior art thought patterns of themselves or others. Nothing in the claim precludes this.

    It is because signal claims read on ideas that they define unpatentable subject matter.

  2. driedmax — no comment here proves the epo got anything right … you finally concede the issue of where the us should be – a leader in intellectual property and discourse >> not pursuing old world industrial policy and national champions … philips did do a good job lobbying those defibrillators, though

    money can you reduce your “moving ball” to code? can we nano-tweeze the ball so only you can play, (or just your name for the truly tiny “itsy bitsy spider”-type lilliputians hiding behind luddites)? …

    btw, are prions obvious? patentable?

    have a good weekend …

  3. The longer this thread continues, the more complacent I get. Complacent that the European Patent Convention got its “101″ right. The more complacent that the continental European civil law system (no Binding Precendent) as the substrate for the EPO’s “technical character/technical problem” rubric represents a better way to keep 101 patent law rumbling along a “real life” and “common sense” path of development, that can cope with scientific advances, whatever they might be, as and when they occur, and then mature into TRIPS “all fields of technology”. In Europe’s “technical” world, there’s room for clear signal claims and clear product-by-process claims, but not for new ways to play markets.

    I can also appreciate that the US national interest points to patents on business models, scientific theories and so on. Quite tricky really, deciding how to play 101.

  4. Confusing issues is a way for someone to feel like they are having some impact when in fact they doesn’t really know that much. And I doubt those balls are moving much.

    And it doesn’t sound like Mooney understands chemistry, because transient movement, e.g. adding transient energy, to an old compound, for example, to create a new one is certainly patentable.

  5. “Rather, they “aren’t patentable now” because they fall under 35 USC 102(b), and are no longer “novel.”

    Wrong, wrong, wrong.

    My moving balls and my fast car are novel because — in the universe where signals are patentable — my claim requires that they are *actually moving* in a particular way in order to be infringed. Yes, when the identical balls stop moving in their novel trajectory, they are now “old” and not patentable under 102. Likewise, when the identical car slows down to a non-record speed, it is now “old” and not patentable under 102 (as are the otherwise novel light waves that emanated from the car while it was moving). Likewise, if my claims to the moving balls and the fast-moving car are granted, someone’s non-motionless balls or their slower moving car do not infringe my claims.

    This is all extremely silly and somewhat offensive to everyone’s sensibilities. My point is that the argument that signals are patentable subject matter is equally silly, for the same reasons. The transient movement of old stuff (electrons, balls, cars) does not make that stuff patentable as new compositions. It’s not a 102 issue, though, because the claim can be drafted to get around 102 (e..g., including the space around the old stuff and other limitations). It’s a subject matter issue because “moving ball” is, at the end of the day, NOT a composition of matter. It’s an EVENT caused by an action.

  6. MM writes “But those old fuzzy balls themselves aren’t patentable now just because they are moving faster than ever before or in a new direction than has not been previously documented.”

    Malcolm, you are absolutely right: “those old fuzzy balls themselves” are not patentable now, but not for the reason that you note. Tennis balls themselves are patentable subject matter; the reason that they “aren’t patentable now” is not because they fall outside of 35 USC 101. Rather, they “aren’t patentable now” because they fall under 35 USC 102(b), and are no longer “novel.”

    Mixing the 102 analysis into a 101 analysis confuses the issue. 101 simply deals with the question “is this subject matter patentable?” And, “those old fuzzy balls” (tennis balls (keep your mind out of the gutter)) are patentable.

    Cheers.

  7. “More to the point, when an electron is drifting in an electric field (caused by a voltage difference)”

    More to the point, that is a transient effect resulting from the practice of a method and not a composition of matter.

    It’s that simple.

  8. “a collection of electrons dispersed through space is a composition of matter ”

    Yes it is. Just like a collection of tennis balls in the space above the surface of a tennis court is a “collection of matter”.

    But those old fuzzy balls themselves aren’t patentable now just because they are moving faster than ever before or in a new direction than has not been previously documented.

    “I do understand, BTW the attraction of returning to the good old days of earth, sky, fire and water. Things were so much simpler back then.”

    It’s this sort of baloney that makes the pro-signal patenting folks’ position even more suspect. “I know more about physics than Justice Breyer so he isn’t entitled to answer these questions.” It’s obnoxious and arrogant. The question is simple, even if relativity and its underlying concepts are not. The question is: should signals be patentable subject matter? Yes or no? The answer is NO, not because “there is no way anybody on earth can credibly argue that a signal is a composition of matter” but NO because “there is no way that signals can be held patentable without opening the door to the patentability of tons of other crap using the same high-falootin’ relativistic arguments.”

    Is that really so hard to live with?

    According to your theory of patentability, if I break the land speed record, I should run to the patent office and file a patent on “a moving car, travelling at X MPH.” Then I’ll patent my clothes too, i.e., “a jacket, wherein said jacket is travelling through space at a speed of X MPH in a car.” And the light waves and sound waves emanating from the car.

    Why not? That’s what patents are for, after all. Protecting things. “Everything under the sun made by made by man,” just like it says in that famous … dicta.

    According to Judge Newman, you can even patent things that are IMPOSSIBLE TO DESCRIBE. According to her, that’s why we have product-by-process claims.

    That way lies insanity. And now, it’s whiskey time.

  9. MM,

    Since you now concede that an electron is matter, you have to also concede (but you won’t) that a collection of electrons dispersed through space is a composition of matter just as a collection of atoms dispersed through space is a composition of matter.

    When I have a collection of electrons moving through an electronic circuit (say a digital RTL type of circuit), the electrons constitute a composition of matter dispersed through the space of the circuit. The mass of each electron depends on its velocity and acceleration. The latter two parameters may define a “signal” propagating through the circuit. More to the point, when an electron is drifting in an electric field (caused by a voltage difference), the electron is being accelerated and its mass is being changed as a function of the voltage. Thus the signal may be constituted by a collection of electrons having different masses and distributed over space, in other words, a composition of matter.

    Hmmm, mass and energy cannot be isolated from one another. They part of the same continuum of stuff: E=mc^2.

    Persons skilled in the art of physics can’t separate mass and energy. Persons backwardly skilled in physics can. I do understand, BTW the attraction of returning to the good old days of earth, sky, fire and water. Things were so much simpler back then. :-0

    Have a good weekend.

  10. stepback, yes of course electrons have mass. Some pointy heads might argue that the photon has some relativistic mass as well.

    But we all agree that you can’t claim an electron (or a photon), regardless of whether it is moving up, down, forwards, backwards, through a wire, or through an optical fiber. It’s still an electron.

    Let’s say you’re a major league pitcher and you “invent” a new way of throwing a baseball. You can patent your method of throwing the ball, if it’s non-obvious. But you can’t patent a composition comprising “a space between a pitcher’s mound and a catcher, comprising air and a baseball, wherein said baseball moves through the space following a trajectory X”. My “basis” for this “blanket statement” is that the trajectory of the ball is merely an effect. It’s not a composition.

  11. MM,

    With all due respect, I don’t see any “article of manufacture” in 101.

    “Obviously” you and I are working out of different sets of law books.
    :-)

    On a side note: Do you view this whacky thing called “electricity” as electrons moving through a wire or is it an abstract energetic form tunneling through the universal ether? And of course the next question is whether you believe that electrons have this funny property called “mass”. That’s the “m” part of the E=mc^2 expression you know. Just curious. :-)

  12. “the Act of 1952 was no more than a codification of the “law” as it then stood”

    Well, I agree that this is the best argument you have.

    [pregnant pause]

  13. “…when 101 was last ratified”

    Would it not be much more correct to say that what is now 101 derives from the Patent Act of 1790, as amended by the Patent Act of 1793? It has not been changed in any substantive respect since then, and the Act of 1952 was no more than a codification of the “law” as it then stood.

  14. Dear Malcolm,

    Re: “Normal humans don’t consider energy to be matter.”

    Patent wise you may be right, but otherwise, with all due respect, you are not. Picking up a prior post of mine, let me shine some light on the subject.

    Was it obvious? Here is the absurd(?) hypothetical imponderable I postulated:

    “When an object emits light, say, a flashlight, it gets lighter.”

    A. Seems logical, even obvious.
    B. In Einstein’s day, physicists knew that mass and energy were interrelated,
    C. and they knew that the brightness of light c decreased by the square c2 of the distance from the light source.

    Was m = E/c2 obvious to physicists after it was formulated?

    I suspect a Physicist Having Ordinary Skilled In The Art, phosita, upon seeing the formula for the first time might have slapped his forehead and said, Al, of course!, why didn’t I c that 2?

    link to pbs.org

  15. “energy is not matter for the purpose of patent law–” how can you make such a blanket statement Dr. MM?”

    I just hit these keys with my fingertips and the words appear on the screen. Maybe it’s magic.

    If I had said “human emotions are not matter for the purpose of patent law” or “a dog’s memories are not matter for the purpose of patent law” you could, I suppose, have asked me the same question.

    My response would be the same: when 101 was last ratified, people knew about memory, they knew about emotion and they knew about energy. Yet they chose the terms “composition of matter” or “article of manufacture.”

    Normal humans don’t consider energy to be matter. In rarified circumstances, people may throw the terms around loosely but I suspect even nuclear and astrophysicists use the terms “energy” and “matter” very very carefully.

  16. SCOTUS has also held that tomatoes are vegetables (NIX v. HEDDEN, 149 U.S. 304 (1893)). That doesn’t mean they got the science right. (A tomato is a berry, which is a fruit.) The cool part about being a Supreme Court Justice is that you don’t have to be right, just confident.

  17. Coast,

    Wasn’t that the holding of the USSC case involving Samuel Morse, inventor of the Morse code? Didn’t he try to claim electro-magnetism but it was rejected?

  18. – energy is not matter for the purpose of patent law–” how can you make such a blanket statement Dr. MM? What is your basis?

  19. “I think what Sam Han is politely trying to relate to you is that you seem to be 30 years behind the times on the current Standard Model of Physics”

    Energy is not patentable. Therefore energy is not matter for the purpose of patent law. Information is not patentable. Therefore information is not matter for the purpose of patent law. Introducing fancyass physics doesn’t change anything because, politically speaking, hardly anybody wants energy to be patentable. The only people who want energy to be patentable are … [fill in the blank]

    “I would like to think that the “blades” on the light sabers (from Star Wars) would be patentable”

    I thought the “blade” was a field-bounded flare of pseudo-plasma obtained from the anti-neutrino exhaust fraction of your typical Tatooine moisture farm.

  20. Malcolm Mooney:

    At the risk of revealing to the world that I am a dork (sigh), I would like to think that the “blades” on the light sabers (from Star Wars) would be patentable, should such a technology ever be developed. Those “light blades” would be no different than the metal blades on current-day cutlery.

    Anyhow, I digress (and reveal myself to be a nerd).

    Cheers.

    Sam

  21. MM,

    I think what Sam Han is politely trying to relate to you is that you seem to be 30 years behind the times on the current Standard Model of Physics.

    Look for example at this site:
    link to en.wikipedia.org

    Don’t feel bad though. The judges on our benches are probably 50-500 years behind the times. Some still haven’t caught up with the crazy theories of Sir Isaac Newton or Galileo and insist instead that this planet was “created” in 6 days by an Intelligent Designer who divined that the “let there be light” stuff is separate and apart from the earth, fire and water stuff. According to the modern Standard Model, the earth, fire, water and light theory is no longer valid. We have switched over to talking in terms of fermions and bosons.

    Peace and may “the force” be with you. :-)

  22. Sam

    “The light, having both wave and particle properties, isn’t just the signal that is generated from a laser; it IS the physical force that moves an object (much like physical tweezers that are used to pluck eyebrows, or whatnot).”

    A very interesting point. I think it supports my position, however: while a method claim for manipulating laser beams to tweeze tiny objects is patentable, and a composition claim for a machine that creates such optical tweezers is patentable, the physical force itself is not (and should not be) patentable.

  23. Malcolm Mooney:

    To your comment: “Michael, Michael, Michael … I am surprised and disappointed by the casualness with which certain individuals are prepared to open the door to the patentability of light and sound waves carrying “novel” information (e.g., words, images, music, etc.).”

    Sometimes, the “light and sound waves” are used as physical forces that do exactly the same thing (but on a much smaller scale) as historically-mechanical devices.

    For example, take the optical tweezers. Here, the “light wave” acts as a physical force to move molecules from one place to another, such as in biological systems (e.g., plucking a DNA molecule from a DNA strand). The light, having both wave and particle properties, isn’t just the signal that is generated from a laser; it IS the physical force that moves an object (much like physical tweezers that are used to pluck eyebrows, or whatnot).

    As for your comment that signals are merely “effects” that arise from the signal generator, a similar argument can be made of anything that comes off of an assembly line. If the optical tweezers are nothing more than the “effect” of a laser, then plastic tweezers are nothing more than the “effect” of an injection-molding machine. Such a position (in my humble opinion) goes too far.

    Sam

  24. the revolution will NOT be televised … ad hominems are wasted energy

    rat: what people? this is an anonymous blog …

    i am not a scholar, i’m just another a-hole at the bar … rambling on … (singing my song) … and disgusted by the “serious” folk who got us into such a mess …

    my bandwidth + my opinions + my time to waste … sounds sorta serious, not really

  25. “i dont expect my stream of consciousness “ramblings” to meet any particular standard … what would that achieve? reassuring you? come on …”

    It might result in people considering your opinions seriously rather than treating your posts with the same lack of respect that you treat them with yourself.

  26. Ex#6K :: i try and write in hexdec & C & an occasional haiku (in kanji, of course) …

    hairy rat >> i dont expect my stream of consciousness “ramblings” to meet any particular standard … what would that achieve? reassuring you? come on …

  27. “Your comments are unreadable, friend.”

    Well, it’s reassuring to know that I am not alone in finding ironicslips stream of consciousness ramblings indecipherable.

  28. money :: my lack of edits is probably to blame …

    Yes. And when I broadcast the recording it leads to the production of a signal that is precisely as non-obvious as the original sound recording.

    no. the signal being broadcast is watermarked to differentiate it from all other “unique” copies … it is uniquely structured … and will be referenced specifically based on how it was “manufactured” for use — … think of a wrapper for content as a file format with little consumer benefit — drm, as mentioned previously — the structuring process makes the signal a manufacture and you can attach all kinds of rules and logic to that signal // you do the same by embedding this structure in the signal as well … NO originals will be made available as they are easily and untraceably copied … undermining projected returns on investment in manufacturing said signal … you think pharma chemical sequences lack the same threat? what about “gooble-dee-gook” gold master discs?

    But nobody is buying. As I predicted.

    really? so the dissenters decided based on your assessment that “nobody is buying” … do you own any consumer electronic equipment that restricts your activities, say DVD, itunes? you bought it then … the folks behind the patented restrictions make content and its processing inter-dependent … blu-ray will have upgrades made through code carried by new content//signals as upgrades become needed (at least the security spec indicates this scheme) … itunes binds the signal to an account … the signal cannot be separated from the environment …

    This rhetoric was annoying even before the curtain was (inevitably and predictably) pulled on the huge pile of worthless “credit” that fueled the US economy for the past decade or so.

    Now it’s silly, to say the least. You think IP reform is going to rescue the US economy?

    That’s sad.

    rhetoric? sad? how is it that copyright law reform and patent law reform is pushed by the same sponsors? they certainly see something you may be missing … or is it moving closer to industrial policy in picking winners (not protecting the risk-taking little guy) which is inopposite of our entrepreneurial history …

    your credit analysis is flawed — there is a difference between speculative equity (sell the dot-com stock) and speculative debt (lose the house you couldn’t afford): but, if it causes americans to pay higher rates to comfort nervous investors who traditionally believed that american innovation and superior job creation provided reasonable returns commensurate with risk … now harmonize ip and lower the barrier to infringement or the likelihood of successful infringement litigation and another foundation for american entrepreneurial risk taking is weakened … plenty of recent studies by partisans concur on this potential risk …

    btw, never said ip reform would help the country … my experience has seen gradual decline in the quality of our administration of ip policy … lack of focus & objective study of accounting//attribution//value measurement for intangibles, including manufactured signals (containerized or watermarked) are to blame for undermining the economy … dmca should not apply to printer cartridges and trade secret code for voting machines shown to be flawed should not impact democratic elections … but in an information economy … they do

    thanks for playing … seriously i would suggest stephen wolframs “a new kind of science” or anything gregory chaitin has written … interesting parallels

  29. money :: my lack of edits is probably to blame …

    Yes. And when I broadcast the recording it leads to the production of a signal that is precisely as non-obvious as the original sound recording.

    no. the signal being broadcast is watermarked to differentiate it from all other “unique” copies … it is uniquely structured … and will be referenced specifically based on how it was “manufactured” for use — … think of a wrapper for content as a file format with little consumer benefit — drm, as mentioned previously — the structuring process makes the signal a manufacture and you can attach all kinds of rules and logic to that signal // you do the same by embedding this structure in the signal as well … NO originals will be made available as they are easily and untraceably copied … undermining projected returns on investment in manufacturing said signal … you think pharma chemical sequences lack the same threat? what about “gooble-dee-gook” gold master discs?

    But nobody is buying. As I predicted.

    really? so the dissenters decided based on your assessment that “nobody is buying” … do you own any consumer electronic equipment that restricts your activities, say DVD, itunes? you bought it then … the folks behind the patented restrictions make content and its processing inter-dependent … blu-ray will have upgrades made through code carried by new content//signals as upgrades become needed (at least the security spec indicates this scheme) … itunes binds the signal to an account … the signal cannot be separated from the environment …

    This rhetoric was annoying even before the curtain was (inevitably and predictably) pulled on the huge pile of worthless “credit” that fueled the US economy for the past decade or so.

    Now it’s silly, to say the least. You think IP reform is going to rescue the US economy?

    That’s sad.

    rhetoric? sad? how is it that copyright law reform and patent law reform is pushed by the same sponsors? they certainly see something you may be missing … or is it moving closer to industrial policy in picking winners (not protecting the risk-taking little guy) which is inopposite of our entrepreneurial history …

    your credit analysis is flawed — there is a difference between speculative equity (sell the dot-com stock) and speculative debt (lose the house you couldn’t afford): but, if it causes americans to pay higher rates to comfort nervous investors who traditionally believed that american innovation and superior job creation provided reasonable returns commensurate with risk … now harmonize ip and lower the barrier to infringement or the likelihood of successful infringement litigation and another foundation for american entrepreneurial risk taking is weakened … plenty of recent studies by partisans concur on this potential risk …

    btw, never said ip reform would help the country … my experience has seen gradual decline in the quality of our administration of ip policy … lack of focus & objective study of accounting//attribution//value measurement for intangibles, including manufactured signals (containerized or watermarked) are to blame for undermining the economy … dmca should not apply to printer cartridges and trade secret code for voting machines shown to be flawed should not impact democratic elections … but in an information economy … they do

    thanks for playing … seriously i would suggest stephen wolframs “a new kind of science” or anything gregory chaitin has written … interesting parallels

  30. “”From a purely legal reasoning point of view, the Chakrabarty Court reaffirmed the Brogdex definition of manufacture…” — “The what the hey???”

    “Guided by these canons of construction, this Court has read the term “manufacture” in 101 in accordance with its dictionary definition to mean “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.” American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931).”

    Diamond v. Chakrabarty, 447 U.S. 303, 308″

    Empty rhetoric. The decision in Brogdex is hardly consistent with the reasoning in Chakrabarty, is it? Nor the legislative history of the tariff legislation post-Brogdex for that matter…

  31. “copying “information” undermines the value of our economy”

    This rhetoric was annoying even before the curtain was (inevitably and predictably) pulled on the huge pile of worthless “credit” that fueled the US economy for the past decade or so.

    Now it’s silly, to say the least. You think IP reform is going to rescue the US economy?

    That’s sad.

  32. “your sound recording is structured unstructured information (waveforms)”

    Yes. And when I broadcast the recording it leads to the production of a signal that is precisely as non-obvious as the original sound recording.

    That signal doesn’t differ in any meaningful way from the signals that some folks (you? sorry but your last comment went off the deep end) want to patent. It’s transmitted energy.

    It’s about as patentable as a thought, which can also be defined by someone with a really pointy head as a “composition of matter” made by man.

    But nobody is buying. As I predicted.

    I suppose one might argue that the US economy benefits from all the wanking, somehow. I mean, judges and attorneys have to feed their families, too.

  33. money, what is patentable?

    “morse is not insignificant”

    The facts suggest otherwise. The facts suggest that the granting of morse’s patent over a century ago is irrelevant.

    i know i know, so is marconi, right? a bunch of one dimensional waveforms. and, certainly you would chuck your iphone in deference to a beautiful morse transceiver (no two year contract) … i have a pinhole camera for sale too (film is getting expensive though)

    the facts are that for any number of human observations previously thought to be old ground … turn out to provide rich fodder for new invention … inventions precisely more “useful, tangible and concrete” enabling “renewed” willingness to pay for the goods and services based on those inventions

    name something that has been invented that cannot be reduced to perfectly copyable information … the “tangible” ingredients are all commodities (in the strictest sense — by naming the ingredients using the periodic table), so we can say they are not patentable, right (unless someone can invent a faux version that is cheaper and functions similarly — i have a pleather case for the pin hole camera)?

    “neither can you copyright said tone”

    Are you saying I cannot compose a minimal piece of music and prevent others from playing it without paying me a royalty?

    yes.

    because a “minimalist piece of music” is by definition not a “tone” … your sound recording is structured unstructured information (waveforms) … if you want to make exchange or sales easier you might as well make the coding cheaper than morse, right?

    now watermark it to make it unique … you cannot watermark a tone or silence because it just looks like noise — can you copyright noise? …

    i am queezy about how colors have been trademarked but there is one example that flies with your point … it is a piece of silence, cant remember the artist (ironic, that) it is simply called “4:11″ or “4:13″ but guess what … everyone knows who it is so they would purchase the piece not because of the lack of signal characteristics (just silence) but on the knowledge that it was recorded by said artist … his moment is worth something, more than mine and likely more than yours (i wish i could sell silence! or noise! — well, maybe noise canceling headphones using anti-signals) … he can collect royalties only if broadcasters can identify it as his piece … lots of room for moral hazard on that accounting …

    so, your version will not be copyrighted, in all likelihood. however you could successfully challenge his copyright and present a great defense of fair use of “your” silence. the confusingly similar standard would work if not for all those voices.

    “who buys music or other signals that have no perceptible or perceptual significance”

    I think everyone agrees that 101 does not cover things that have “no perceptible significance”. Or has a patent to an “improved soul” managed to issue under my radar?

    you are essentially agreeing with the points raised … a patentable signal is structured to meet human demands … it does not form itself and it does meet a threshold of patentability … we are not talking about “improved soul” patents … but wouldn’t prozac fit that rubric? would moody jane brady have been more appropriately labeled manic or “to be improved soul candidate” … try this instead: what exactly is “high definition”? is that for eagles? or, perhaps patent pools?

    just noticeable difference, incidentally, is also an age old notion in science so perceptual significance is largely a measurement of what people are willing to pay … do you think the net neutrality issue is about neutrality or human preference in signaling? do you think measurements of signals is not patentable subject matter? what about instead of hart disorders we were talking about large segments of industry which rely specifically on measuring signals?

    “it is structure (message)”

    No, it isn’t so just because you say so. It’s not “structure” in the way that term is understood by judges of the sort who get to decide what 101 covers.

    it doesn’t matter what the judges think because the issue is being legislated!

    as above, name one good or service that cannot be reduced to structured, perfectly copyable information that can be easily replicated by anyone … then tell me what the judges are going to do when all manner of copying “information” undermines the value of our economy … all the while the folks pushing for IP reform are debating whose signals are worth more …

  34. I did not research the case, but these signal claims do not deal with claims for electronic circuits which claim a resulting function signal output based on an certain signal input? Of course, with any electronic circuit, a different signal input will cause a different output signal.

    The word “signal” per se can still be useful for describing the function of a claim claiming electronic circuit structure.

  35. From a practical viewpoint, it seems that signals shouldn’t be patentable. How can the PTO examine the novelty of a signal? There aren’t any comprehensive databases of prior art signals with which to compare the “new” signal. ..

  36. “morse is not insignificant”

    The facts suggest otherwise. The facts suggest that the granting of morse’s patent over a century ago is irrelevant.

    “neither can you copyright said tone”

    Are you saying I cannot compose a minimal piece of music and prevent others from playing it without paying me a royalty?

    “who buys music or other signals that have no perceptible or perceptual significance”

    I think everyone agrees that 101 does not cover things that have “no perceptible significance”. Or has a patent to an “improved soul” managed to issue under my radar?

    “it is structure (message)”

    No, it isn’t so just because you say so. It’s not “structure” in the way that term is understood by judges of the sort who get to decide what 101 covers.

  37. Leopold,

    Thanks for explaining to MM (and others) the proper dichotomy between algorithms (unpatentable since Parker v. Flook) and applications of algorithms (patentable since Diehr v. Diamond). This dichotomy frequently gets “lost in the sauce.” If only a majority of the Federal Circuit could have made this distinction as well in Nuitjen. Under the dichotomy you explained, Judge Linn (and presumably fellow dissenting Judges Newman and Rader) is clearly correct as to why Nuitjen’s signal claims are patentable subject matter under 35 USC 101.

    P.S. After the GSK/Tafas suit hearing on Friday with no outcome yet, I got refreshed this weekend with other pleasurable diversions. But from what I’ve seen (and I could be wrong), I’m betting that the PTO Rules get “dropped kicked” by Cacheris.

  38. Sam – thanks for the link …

    M. Stonecker — thank you & here, here! : “Merely by way of example, the DMCA found it necessary to include a safe harbor position for “signals” coursing over the internet. It is by no means a stretch of the imagination to consider that the grant of a patent for Nuijten’s “signal” could raise significant tension between copyright and patent law on an issue that has been considered by Congress, albeit in the context of copyright law.” — especially now that copyright protection schemes are very pervasive and result in any number of large patent pools … CSS, blu-ray, DVD, MPEG4, SD, HDMI, etc. etc.

    additional caveat :: with DMCA — why would there be a prohibition against circumvention against something that is not a manufacture? namely the signal designed specifically to restrict the copying of *other* signals? this would apply to structuring a wrapper (“DRM”) or embedding a signal (“digital watermarks”)

    molly’s husband :: you ignore other aspects of copyright which extend to such arguments as performance rights, mechanicals, and even residuals (the heart of the now settled writer’s strike) … accounting and accountability matter … and, if you can count it and people pay for it … it is a manufacture … even more so … a patented “business method” that is also “software” — the nexus of so many discussion threads rolled up into one case …

    NTP v RIM revealed that encode and decode could be done extra-territorially to avoid certain claim constructions … so again the argument you raise is not in the context of a signal that is already encoded imperceptibly (a human standard or steganographically — a human standard for obfuscation) and carries information about the signal in which it is coded … watermarks are indeed needles in a haystack …

    the next set of responses is not factually correct for several reasons: “Perhaps the best way to describe the subject matter that I think SHOULD be patentable is a particular arrangement of containers for information, where the particular arrangement is novel, non-obvious, and is useful. Nuijten’s digital watermarks fit this model.”

    actually containerizing the information makes it impossible to observe the value (the signal) and instead would be like patenting a randomized signal (layered in encryption) – since people do not buy noise (well, within it’s signal processing meaning) … containers have proven ineffective and have been largely abandoned … see all of the Apple noise on DRM …

    “The mathematics behind the watermark is not patentable.”

    you obviously miss the point of how one is designed. There are many ways to code a code … spread spectrum has been applied, FFTs, DCTs, etc. the point is there is no one magical watermark they all fit within a trade-off over robustness to manipulation, security to tampering, and imperceptibility — all varying degrees of subjective human design decisions … and the applications vary … ac nielsen monitoring 90% of tv broadcasts or the music labels tracking, forensically, the leaks of their material prior to release … or simply to trigger events on a machine such as a DVD device.

    some of the most optimized approaches are better designed to survive all manner of lossy compression (up to the point that the signal is degraded which is the natural limit of any signal manipulation) which is mathematical …

    we can compare watermarking systems in terms of all three of the above trade-offs and we can also identify computational overhead in designs …

    “A method for applying the math to a particular application is. A device that applies the math in a useful way is. A signal that carries a particular data structure that facilitates the remote application of that math in a useful way should be (in my opinion). There is no overlap with copyright here – the structure, or layout, of the information is the subject matter. This is not “expression”, even if the information carried in that structure might be.”

    again, the point of a digital watermark (the major point) is to carry information resistant to manipulation or transformation between domains (analog to digital being just one) … it is structure (message) robust to unstructured manipulation (inadvertent or malicious) of the signal carrying the message … so there is no way to separate the two as you have described.

    with regards to congress getting involved … it is an invaluable opportunity to understand the nexus of patents and copyrights … whether the courts agree or not lots of money is being spent on these technologies and that cannot be ignored by inventors or consumers who are directly impacted by these technologies …

    money :: you contradict yourself … morse is not insignificant just an early example of communications (actual messaging alone) and later than the invention of “facsimiles” writing messages remotely over a “wire” … you cant hide a watermark in a tone (and neither can you copyright said tone — so what) only something that has enough perceptible significance to carry the watermark … and who buys music or other signals that have no perceptible or perceptual significance? cant say the patent at issue would hold up given all of the early prior art …

    the field itself resulted in new search classes as far back in 1995-1996, and others identified many years ago an area of invention that is significant not only to copyright but also in things like QoS for telecoms or tracers for currency that is digitized … too interest came into the field because of restrictions on cryptography …

    a slight point >> the theory behind watermarking relates to plausible deniability … you might think you found something but you cant be sure … just like with interrogations and the technology behind enforcement of the SALT II Treaty …

  39. “How does that “non-expression” differ from a non-obvious pattern of tones carried in a sound wave, or a non-obvious pattern of light waves reflected from a painting or emitted by a projector?”

    I obviously wasn’t clear. I’m not suggesting that an arbitrary pattern of anything should be patentable. I AM suggesting that in the world of digital communications, we are constantly creating new and useful ways of processing information, and that some of those new and useful ways depend on novel structures for moving that information around. Those skilled in the art can readily distinguish between a structure that carries information and the information itself, just as you can tell the difference between your cereal box and the cereal that it carries.

    “are PATENT courts AND THE PTO now going to be in the business of determining whether information in a signal is ‘expression’ or not?”

    No.

    “Please resist the urge to kick up dust!”

    I wasn’t trying to kick up dust. I simply mis-spoke (mis-wrote?). I meant to say that there are lots of propagated signal claims in granted patents – stand-alone signal claims. My point was simply that In re Nuijten changed the status quo, even if the status quo was a little murky. I agree with Mr. Slonecker that the courts should be wary of declaring certain categories unpatentable, especially given the Supreme Court’s previous expressions indicatig an expansive view of patentable subject matter. I disagree with Mr. Slonecker that Congress should step in. I think the reason they haven’t touched Section 101 is that they sense that they would likely do more harm than good.

  40. I should have asked “are PATENT courts AND THE PTO now going to be in the business of determining whether information in a signal is “expression” or not?”

  41. ” There is no overlap with copyright here – the structure, or layout, of the information is the subject matter. This is not “expression”, ”

    How does that “non-expression” differ from a non-obvious pattern of tones carried in a sound wave, or a non-obvious pattern of light waves reflected from a painting or emitted by a projector?

    Assuming the imaginary world where signals are patentable, are courts now going to be in the business of determining whether information in a signal is “expression” or not? And this is a good thing … why?????

    “First, there are lots of propagated signal claims in granted claims”

    Please resist the urge to kick up dust! Of course there are also kit claims with “instructions” in them. But we all know that instructions aren’t patentable, and we all know that those instructions can not render patentable an otherwise unpatentable kit.

  42. “Michael, Michael, Michael … I am surprised and disappointed by the casualness with which certain individuals are prepared to open the door to the patentability of light and sound waves carrying “novel” information (e.g., words, images, music, etc.).”

    “Here Mr. Slonecker has nailed it. A patent grant on a novel and non-obvious signal is indeed undistinguishable from the patenting of a particular arrangment of information.”

    I think you’re off the mark, here, Malcolm. First, there are lots of propagated signal claims in granted claims – this is not an issue of “opening” a door, but rather whether the CAFC properly closed the door.

    Furthermore, the (correct) issue is not whether a signal containing novel information should be patentable. It should NOT. Perhaps the best way to describe the subject matter that I think SHOULD be patentable is a particular arrangement of containers for information, where the particular arrangement is novel, non-obvious, and is useful. Nuijten’s digital watermarks fit this model. The mathematics behind the watermark is not patentable. A method for applying the math to a particular application is. A device that applies the math in a useful way is. A signal that carries a particular data structure that facilitates the remote application of that math in a useful way should be (in my opinion). There is no overlap with copyright here – the structure, or layout, of the information is the subject matter. This is not “expression”, even if the information carried in that structure might be.

  43. Mr. Bloom,

    I agree that a direct comparison between copyright and patent law is an “apples to oranges” comparison. However, it is fair to say that the two bodies of law operate in parallel, and an issue in one does hold the potential for creating a companion issue in the other. In no way do I profess to be an expert in the manner by which means of communication such as the internet actually work (other than a general familiarity with the various components necessary to facilitate such communication and communication protocols). Nonetheless, as pointed out above at least one substantive right, that of importation, might be affected by the allowance of a patent containing a claim to a signal per se. I leave it to imaginative counsel to identify other areas of possible problems.

    I for one subscribe to the view that a technological solution to a real-life problem does deserve more thoughtful consideration than the courts using tortuous language and approaches to try and fit (or exclude) new innovations into a largely judicially defined scheme. The fact that Congress has been largely silent on the issue suggests to me that it is either happy with the current state of affairs or it is simply ignorant of the ramifications the judicial scheme imposes on new innovations that have hitherto not been apparent. Congress has, of course, regularly weighed in concerning 102 et seq. It has not to my knowledge, however, made any significant attempt over the life of our Patent Laws to more clearly deliniate the metes and bounds of the door through which innovations must pass to enter the “world of patents”. If patents are truly believed to be a means to encourage innovation important to our economy domestically and internationally, then logic suggests the benefits to be realized from an extra-judicial debate. For example, many have decried In re Comiskey as an example of an “innovation” that should never be allowed to pass through the 101 door (By the way, I refer to the case as Steve Comiskey’s application because I have known him ever since we were Midshipman and classmates at the Naval Academy). Perhaps Congress would agree with detractors of the subject matter for which he filed an application, but then again it might not. In any event, until such an open debate takes place we will continue to be subjected to cases based upon largely unintelligible gibberish. For example, perhaps I misunderstand the distinction, but I fail to see any meaningful distinction between an electromagnetic signal passing through air and such a signal passing through a vacuum.

    Over my career I have come to appreciate that the “law” as we know it is the product of two distinct sources, the judicial and legislative branches. I continuously read learned articles that attempt to intellectually dissect a judicial opinion to try and define/proffer a “rule” of general applicability. Inevitably an unexpected fact situation later arising sends the courts into a tizzy as they attempt to somehow decide the issues newly presented by almost slavish reliance on stare decisis. The resulting decisions oftentimes make me throw up my hands in despair.

    Frankly, instead of Congress spending its resources on patent law reform/deform of dubious necessity, I would much prefer to see progress made on what I consider to be truly compelling issues such as the scope of 101. An amendment to 100 might likewise help. Seriously, defining an “invention” by using using that same word in the definition seems ludicrous (not to mention likely to earn a student a less than stellar grade on an English exam). Maybe, just maybe, the orderly development of the law in light of new “innovations” just might be promoted by the ABA and other professional organizations getting off of their collective duffs and considering the advisability of proposing new legislation to Congress accounting for everchanging technological progress.

  44. “It is by no means a stretch of the imagination to consider that the grant of a patent for Nuijten’s “signal” could raise significant tension between copyright and patent law on an issue that has been considered by Congress, albeit in the context of copyright law.”

    Here Mr. Slonecker has nailed it. A patent grant on a novel and non-obvious signal is indeed undistinguishable from the patenting of a particular arrangment of information.

  45. “I am surprised, indeed disappointed, at the casualness with which certain individuals are prepared to dismiss classes of subject matter from the reach of Section 101.”

    Michael, Michael, Michael … I am surprised and disappointed by the casualness with which certain individuals are prepared to open the door to the patentability of light and sound waves carrying “novel” information (e.g., words, images, music, etc.).

    As I noted earlier (when I predicted the timely demise of Nutijen) the issue boils down to consistency and policy. If you allow people to patent the *effects* that their alleged inventions have on the universe, you are opening the door to a very unpleasant legal reality that nobody wants to live in except (1) certain pointy head academic types who care mainly about seeing their name in print and (2) greedy companies with an interest in asserting such patents.

    It’s really too bad about Samuel Morse and that earlier Supreme Court case. But guess what? Nobody really gives a crxp about that case and for good reason.

  46. “A radio wave, light beam, sound wave, whatever, by itself, is useless.”

    A pitchfork, by itself, is useless. Yet it’s patentable subject matter. (Add a haystack, and then it’s extremely useful.)

    Your cellphone, without that “useless” radio wave, is also useless.

    A propagated radio wave, modulated to carry digital signals formatted in accordance with Nuijten’s digital watermarking technologies, is most certainly useful. The utility argument, in this arena, is all wet.

  47. “Merely by way of example, the DMCA found it necessary to include a safe harbor position for ‘signals’ coursing over the internet.”

    Interesting comment, Mr. Slonecker.

    However, I believe the issue under copyright is whether copyrighted material, in digital form, is copied as it passes through a server or other network node. From a technical point of view, it seems unquestionable that it is. Thus, a safe harbor was (arguably) needed.

    With respect to a patented signal, I think that it is far less clear that a relay device or temporary storage device on the Internet would “make” or “use” the patented signal. If a digital signal were patentable, the patentability would inhere in the particular structure, or arrangement, of the 1′s and 0′s, such as the digital watermarks in the Nuijten case. In my view, simply relaying a sequence would not be “using” the invention in any meaningful sense. Whether temporarily copying the sequence would constitute “making” the invention might be a little more problematic, but not terribly so. (Let’s leave aside “importing,” for now.)

    A determination that signals were patentable would thus not necessarily ensnare “innocent” service providers. However, someone above suggested that signal claims might be used against someone who “makes” the signal abroad, and then sends it into the United States. (Here I’m suggesting that “making” a signal only happens when you put the structure together the first time and transmit it.) The Federal Circuit seems to like extraterritorial patent enforcement (see, e.g., NTP v. Research in Motion). Similar policy arguments would apply here.

  48. I am surprised, indeed disappointed, at the casualness with which certain individuals are prepared to dismiss classes of subject matter from the reach of Section 101. If it is, as they suggest, such an easy answer, then I would have expected a reaction from the CAFC other than the division in the original Nuijten decision and the one following denial of a hearing en banc. I find it noteworthy that two of the three dissenters in the en banc decision have longstanding records reflecting their intimate familiarity with all aspects of Title 35, including having actually practiced patent law prior to assuming their positions on the bench. There is a third member of the court with similar credentials, but his view was not stated one way or the other in the en banc decision.

    The arguments for or against signals per se falling within the scope of 101 cut both ways. Personally, I wish that the issue was discussed in a manner fleshing out the pros and cons of each position. That would be constructive, versus the quick “sound bites” and “quips” that so many seem prone to do and than inform no one of the issues…both legal and practical.

    Merely by way of example, the DMCA found it necessary to include a safe harbor position for “signals” coursing over the internet. It is by no means a stretch of the imagination to consider that the grant of a patent for Nuijten’s “signal” could raise significant tension between copyright and patent law on an issue that has been considered by Congress, albeit in the context of copyright law.

    Of course, for now the rule is “signals are out” unless Nuijten petitions for cert and the SCOTUS once more decides the time is ripe to revisit 101. Personally, I happen to like these facts as a vehicle for revisiting the issue precisely because they push the envelope of conventional wisdom. It would certainly help to clarify in my mind if the reach of 101 will continue to be determined incrementally by the judiciary or by referral to Congress. Jurisprudence concerning 101 has been a slave to words crafted in the 1700′s. Innovation is rapidly moving into areas that not too long ago were never even envisioned. How nice it would be to see those “words” brought up to date to reflect technological reality.

  49. Since everyone is shamelessly self-promoting, I may as well do so.

    I never thought that the topic would become so heated, but I wrote a law review article in 2002, which addresses the very issue of whether or not signals are patentable subject matter.

    link to stlr.org

    If we are being intellectually honest about it, then we cannot deny that signals are indeed physical, and that they can be man-made. The law review article actually traces the history of the 101 decisions, and the state of the law was (in my humble opinion) pretty clear until these cases emerged.

    Cheers.

  50. “What is the big deal on signal claims? A radio wave, light beam, sound wave, whatever, by itself, is useless.”

    Because signals have physical properties, and because, as Judge Linn has correctly pointed out, should constitute at least an “article of manufacture” under 35 USC 101 Put it this way, if signals aren’t “physical” entities, then Einstein shouldn’t have gotten the Nobel Prize for the photoelectric effect. Also, how could Samuel Morse claim patent rights in carrying out Morse code if signals aren’t physical entities (O’Reilly v. Morse only denied the broader more nebulous claims, but not the more specific ones for carrying out Morse code)? Need I say more?

  51. “From a purely legal reasoning point of view, the Chakrabarty Court reaffirmed the Brogdex definition of manufacture…” — “The what the hey???”

    “Guided by these canons of construction, this Court has read the term “manufacture” in 101 in accordance with its dictionary definition to mean “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.” American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931).”

    Diamond v. Chakrabarty, 447 U.S. 303, 308

    I’m not saying that the Supreme Court can’t or shouldn’t revisit the definition, but the CCPA’s 1980 decision to the contrary is hardly strong precedent.

  52. “From a purely legal reasoning point of view, the Chakrabarty Court reaffirmed the Brogdex definition of manufacture…”

    The what the hey???

    “A signal that is specially shaped by man is not a naturally occurring phenomenon but rather something made by man under the sun.”

    The mind boggles

  53. step back -

    Assuming that information can be encoded in ripples in a pond (e.g. ripples with frequency F1 and amplitude A1 is the code for message 1, ripples with frequency F2 and amplitude A2 is the code for message 2, etc.),

    are information-encoded ripples in a pond statutory subject matter in general? How would you claim the ripples to make it statutory?

  54. A machine at the post office imposes a combination of forces on a piece of mail such that the piece of mail moves through the air in a novel way. The machine is patentable, the way mail moves through the air is not. A machine in my office imposes a combination of forces on data such that the data moves through the air in a novel way. The machine is patentable, the way the data moves through the air is not. The piece of mail itself is not the point of novelty, likewise the signal itself is not the point of novelty.

  55. A signal that is specially shaped by man is not a naturally occurring phenomenon but rather something made by man under the sun. The issue should be whether it is novel and useful, not whether its inventor is not to be allowed to stick his toe into the Patent Office door.

  56. another point …

    the content of morse code can hardly be described as having been the end all and be all of capacity of a given channel for communication (information theory in general impacts all manner of observation).

    but optimal inventive, nonobvious coding of information necessarily intersects with analog observers of signals.

  57. people pay for signals.

    how to access or manipulate signals is a large segment of what information technology is about.

    the signals are “structured” to meet human needs and demands, as well as more generally, designs. The mathematics simply improves the exactness in a certain geeky sense.

    it may be that control over the measurement itself is quite a bounty to save judgement for another day (if only in impact to business models and measuring of intangibles in general – that includes payment systems and ability to tax) …

    imho, the debate is over just what constitutes intellectual property.

  58. “What is the big deal on signal claims? A radio wave, light beam, sound wave, whatever, by itself, is useless.”

    I’ll be sure and let your ears know when they get busted by one of the new sound weapons our gov. is making. Also, waves have untapped potential for the future even when disregarding their application directly to machines, notably thin films come to mind currently, though it’s certainly not a limit. I also was unaware that speech was so useless…

    Even so, I see why we don’t want them patented, and also why they’re not considered statutory and I concur, at least at the present and until a good cause can be made for the patentability of one. That said, one day soon there may very well be a case for it.

  59. I can point out one kinda funky consequence to not allowing signal claims. At least a few writers used to recommend including example a computer readable memory to include bits and bytes in transit on networks or transmitted as radio waves as well as when stored in memory devices and hard drives, and I know of a few practitioners that followed that advice

    As an examiner in 2100 we learned at a 101 training session held shortly before I left the PTO that we should reject claims drawn to a computer readable medium whenever the enumerated examples in the spec included something that would result in a claims drawn to signals. I’m not sure what the applicant was supposed to do in response to such a rejection and I never got to actually make such a rejection.

  60. big hairy rat writes:

    “Why post the dissent? While there might be some purely academic interest in what the dissent had to say, the fact is that the majority has established the law until SCOTUS says otherwise.”

    Indeed. Why post jobs, developments in cases, IP conferences, news, or anything other than bullet point summaries of the reasoning of the majority in Supreme Court and CAFC patent cases? After all, the only people who read blogs are 2Ls who have patent exams in 5 minutes but forgot to study and lawyers who have CAFC appeals in 5 minutes but forgot to learn the law. This is too important to leave in the comments. You should e-mail Dennis right away.

  61. “Those ripples are under the sun and they are most certainly made by man.”

    Thank you for the potent analogy.

  62. “Can someone explain what patentable idea is found in a propogating signal that can’t be protected by some statutory non-signal claims?”

    This seems like a great explanation of why the majority found signals per se not to be patentable subject matter.

  63. Why post the dissent? While there might be some purely academic interest in what the dissent had to say, the fact is that the majority has established the law until SCOTUS says otherwise.

  64. So you’re saying I can’t patent the ephemeral ripples in my bathtub that result from a novel and nonobvious submarine flatulence?

    What a travesty. Those ripples are under the sun and they are most certainly made by man.

  65. Re: the big deal on signal claims, I’m not aware of any real example of enforcement, but I can imagine a situation where having a signal claim to enforce would be useful:

    A singal produced by a claimed method is broadcast from an offshore location. The signal is received by end users with devices that implement a claimed method. The devices also have significant non-infringing uses. Without a signal claim, the only infringing activity in the U.S. is being done by the individual users.

  66. “If the signal is new and non-obvious, mustn’t it follow that also new/non-obvious are: the method for producing it, a tangible media storing it, a device for receiving and decoding it, something to generate the signal, you get the idea.”

    Assume there is nothing new about the method, medium, device and the sole novelty/non-obviousness lies in non-statutory subject matter, such as, a signal. The policy question is whether non-statutory subject matter should have to be considered when assessing novelty or non-obviousness when the non-statutory subject matter imparts no utility over the prior art. Why should transmitting and receiving (old in the art) suddenly be patentable based upon a signal where the signal’s content is irrelevant to that transmission and receipt?

  67. “What is the big deal on signal claims? A radio wave, light beam, sound wave, whatever, by itself, is useless.”

    And thus no utility under section 101 (as I argue in my article that I so shamelessly plug above.

    That said, the concern is that carriers of the signal would be liable for infringement, though I find that to be weak, as infringement requires that someone “makes, uses, offers to sell, or sells” the invention, and a carrier would not do any of those things (perhaps “use” but I think that is a stretch). Just because no one has attempted to enforce such a claim doesn’t mean that it wouldn’t happen in the future.

  68. “Can someone explain what patentable idea is found in a propogating signal that can’t be protected by some statutory non-signal claims?”

    There isn’t any, JTS. But the reason that certain entities care about the patents to the signals is that such patents would allow those entities to file lots of really annoying lawsuits against anyone unfortunate enough to accidentally receive or carry (i.e., “using”) the patented signal.

    Some of the pointy-heads out there who favor signal claims like to pretend that signal patentability is a “scientific issue” but it’s really not (nobody subscribes to the view that any signal carrying a novel sound or image is patentable). It’s about corporate greed and corrupt telecommunication companies.

  69. A signal is not an embodiment of mathematics – Mathematics can be used to represent the physical signal. There is a difference. You people must be engineers.

  70. What is the big deal on signal claims? A radio wave, light beam, sound wave, whatever, by itself, is useless. Signals only become interesting or valuable when then make machines do things. A radio wave must be received and handled by circuitry and processes performed by the circuitry. A signal must be produced by some device or process. If the signal is new and non-obvious, mustn’t it follow that also new/non-obvious are: the method for producing it, a tangible media storing it, a device for receiving and decoding it, something to generate the signal, you get the idea. Why the fuss over signal claims? Can anyone point to any real world attempt to enforce such a claim (pre Nuitjen)? With success? Can someone explain what patentable idea is found in a propogating signal that can’t be protected by some statutory non-signal claims?

    I’ve written apps for signal processing inventions, inventions about improving features of signals, and I never felt that there was a gap in the various method, system, and media claims. If there’s a signal, it’s only useful when it’s actually received, but at that point you’re in statutory territory…

  71. “While it may be the physical embodiment of an algorithm” – considering the patentee was trying to patent a signal without regards to its physical embodiment(claim 14), I would say its the same thing as a mathematical algorithm. I also don’t see how claiming the physical embodiment of an algorithm (such as in some of the dependent claims) is really any different than trying to claim the algorithm.

    In regards to the rest of the world, I may be wrong – I have been before – but I believe Europe allowed the patenting of the use of algorithms but not the algorithms themselves. There is a difference. As of today, the EPO website still says you can’t patent mathmatical expressions.

  72. Rest of the World here: we allow signal claims but not claims when they are directed to subject matter that is nothing more than “discoveries, scientific theories, mathematical methods”, “aesthetic creations”, “schemes, rules and methods for performing mental acts, playing games or doing business”, or “presentations of information”. The EPO would say that a signal can sometimes be “technical” but a mathematical algorithm never. TRIPS says that patents are obtainable in all fields of technology. I think that mathematics is not a field of technology, but signals?

  73. How is a signal the same thing as a mathematical algorithm? That’s absurd. While it may be the physical embodiment of an algorithm, it is still a “thing” – it exists. As for the rest of the world, you need to get more current with what is going on overseas, particularly in the UK.

  74. In order to patent an abstract signal such as the one in Nuijten, you have to allow the patenting of mathematical algorithms. A signal is nothing more than a mathematical formula or algorithm. While conceptually, I’m not opposed to patenting algorithms, doing so would put us out of step with the rest of the world, and the Fed Circuit and SCOTUS are not willing to go there.

  75. A signal is a physical phenomenon.

    You can patent the phonograph. You can patent a novel compartment for listening to music. But you can’t patent the echo in the room. Besides, it’s just a fat lady singing.

  76. This is shameless self promotion, but I address this very problem (and case) in an upcoming paper:
    link to papers.ssrn.com

    Judge Linn made many good points in both dissents, but herein lies the problem:

    “As the Court discussed in Diamond v. Chakrabarty, patentable subject matter includes ‘anything under the sun that is made by man’ except for certain enumerated exceptions: ‘The laws of nature, physical phenomena, and abstract ideas have been held not patentable.’”

    Even if the “enumerated categories” could be reliably applied (doubtful), this statement is not tied to the statute in any sense. Chakrabarty could not have meant to say that the 101 categories no longer matter.

    From a purely legal reasoning point of view, the Chakrabarty Court reaffirmed the Brogdex definition of manufacture, so reliance on a 1980 CCPA case as a basis for inconsistent precedent seems like a stretch.

  77. The 101/103 relationship theory noted in the Nuijten dissent as well as in the Comiskey decision supporting the same theory – makes absolutely no sense. Isn’t the novelty underlying every invention essentially an abstract idea – “embodied” in some tangible patentable subect matter (article of manufacture, composition, etc.)? But according to the 101/103 relationship theory, if the novelty aspect of an invention fails 101, such as being abstract, then it is of no help that it is embodied in something that does not fail 101. Because, according to the theory, the “novelty aspect” must meet 101.

    This is plainly ridiculous.

    The core NOVELTY of every invention is ABSTRACT and does not meet 101, therefore NOTHING is patentable.

    For example, the novelty of a new chemical compound is the forumla depicting it on a piece of paper. Thus, tangibly embodying the novel abstract chemical formula cannot render it patentable. This would be true about every invention. The blueprint of a new machine is essentially the “abstract novel idea” of the machine. If the “abstract” blueprint is unpatentable – then according to the 101/103 relationship theory – the machine embodying the abstract is is also not patentable. pure nonsense.

    The 101/103 relationship is painfuly wanting of some plain common sense.

  78. “we affirm the PTO’s rejection of claims to a signal, simpliciter.” Simpliciter? Does that mean “for a silly reason”?

  79. I’m with the dissenters on why the denial of a rehearing en banc is wrong. Judge Linn (the dissenter in the panel decision) raises very valid concerns about conflicts with prior CCPA and Federal Circuit precedent and (gasp!) even SCOTUS precedent as evidenced by Chakrabarty v. Diamond on the extent of patentable subject matter (“anything under the Sun that is man made”). To not address this issue of signal claims (which has much larger ramifications for what is or might be patentable subject matter in the future) by an en banc decision is simply a “copout” by the Federal Circuit that leaves all of us (including the PTO) wondering what the limit of patentable subject matter is under 35 USC 101 and how that interplays with what is “prior art” under 35 USC 103.

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