In re Petrus Nuijten (CAFC 2006-1371)

The CAFC historical backdrop -

Section 101 states:

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

Language setting forth a variety of categories of matter deemed patentable has existed throughout the history of American patent law. The country’s first patent statute permitted a patent on “any art, manufacture, engine, machine or device.” Patent Act of 1790 § 4, 1 Stat. 109, 111 (1790). Soon thereafter, Congress amended the patent laws, changing the language to allow a patent for “any new and useful art, machine, manufacture or composition of matter.” Patent Act of 1793 § 1, 1 Stat. 318, 319 (1793).2 The next substantial amendment to the patent laws left this statutory language unchanged. Patent Act of 1836 § 6, 5 Stat. 117, 119 (1836). This four-category language has persisted to the present day, with the exception of the technical change of “art” to “process,” defined as “process, art or method,” in 1952.

The claims on appeal cover transitory electrical and electromagnetic signals propagating through some medium, such as wires, air, or a vacuum. Those types of signals are not encompassed by any of the four enumerated statutory categories: 'process, machine, manufacture, or composition of matter.

Claim construction was first addressed. Was a signal, as the PTO construed, "merely data," or, as Nuijten contended, "sufficient physical substance to be discerned and recognized by a recipient." Nuijten's position echoed that of Morse defending his claims.

That is, a signal can be sensed and received by some physical apparatus, if not directly by a person.

Nuijten’s position on this issue is correct in a limited way. A “signal” implies signaling - that is, the conveyance of information. To convey information to a recipient a physical carrier, such as an electromagnetic wave, is needed. Thus, in order to be a “signal,” as required by the claim, some carrier upon which the information is embedded is required. See Arrythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1059 (“The view that there is nothing necessarily physical about ‘signals’ is incorrect.” (quotation marks omitted)).

However, while the claims are limited so as to require some physical carrier of information, they do not in any way specify what carrier element is to be used... The text of the claims is not limited by any specified physical medium, nor do the dependent claims add any physical limitations. They again require only that the signal carry certain information—a watermark, video, or audio. Therefore, any tangible means of information carriage will suffice for all of the claims at issue. Nuijten’s claims can of course be embodied by conventional, known means, such as electrical signals, modulated electromagnetic waves, and pulses in fiber optic cable. So long as some object or transmission carries the information specified by Nuijten’s claim, it falls within that claim’s scope regardless of its physical form. In summary, some physical form for the signal is required, but any form will do, so long as a recipient can understand the message—the nature of the signal’s physical carrier is totally irrelevant to the claims at issue.

Our inquiry here, like that of the Board, will consider whether a transitory, propagating signal is within any of the four statutory categories: process, machine, manufacture, or composition of matter.

The 1853 Supreme Court decision of O'Reilly v. Morse covered the same ground as this case. SCOTUS there found the process of producing Morse code patentable under 101. The CAFC read the Morse decision applicable only to Nuijten's granted process claims.

His patent is not for the invention of a new alphabet; but for a combination of powers composed of tangible and intangible elements, described in his specification, by means of which marks or signs may be impressed upon paper at a distance, which can there be read and understood. And if any marks or signs or letters are impressed in that manner by means of a process substantially the same with his invention, or with any particular part of it covered by his patent, and those marks or signs can be read, and thus communicate intelligence, it is an infringement of his patent. The variation in the character of the marks would not protect it, if the marks could be read and understood. [emphasis added]

Morse had overbroad claims that were struck down. Those claims went beyond the process, to the result ("effect") itself. The CAFC followed the 1853 line of reasoning, without recognizing it.

From the SCOTUS 1853 Morse decision -

Now, in this case, there is no description but one, of a process by which signs or letters may be printed at a distance. And yet he claims the exclusive right to any other mode and any other process, although not described by him, by which the end can be accomplished, if electro-magnetism is used as the motive power. That is to say--he claims a patent, for an effect produced by the use of electro-magnetism distinct from the process or machinery necessary to produce it. The words of the acts of Congress above quoted show that no patent can lawfully issue upon such a claim. For he claims what he has not described in the manner required by law. And a patent for such a claim is as strongly forbidden by the act of Congress, as if some other person had invented it before him.

In consolidating case law, the CAFC elucidated the four categories of patentable subject matter, often culling from Supreme Court rulings. In short: 1) "[A] process claim must cover an act or series of acts." 2) A machine is "a concrete thing, consisting of parts, or of certain devices and combination of devices." 3) Manufacture is "(in its verb form)" - "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." In noun form, manufacture refers to "'articles' resulting from the process of manufacture." To the CAFC, "transient electric or electromagnetic transmission" doesn't fit. 4) Composition of matter is "two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids."

The CAFC decision was 2-1: Gajarsa and Moore in the majority, Linn dissenting.

In a well-reasoned dissent, Linn found that signals had physical form, and considered the claimed signals an article of manufacture. To Linn, duration of existence is a non-issue.

The majority bases its holding on the Century Dictionary definition of “manufacture” quoted by the Supreme Court in American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931), and again in Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980): “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.” I respectfully disagree that this definition limits the term “manufacture” to non-transitory, tangible things. When it defined “manufacture” as above, the Supreme Court emphasized that “[i]n choosing such expansive terms as ‘manufacture’ . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.” Chakrabarty, 447 U.S. at 308. Because the patent claim at issue contemplates “some physical carrier of information,” Majority Op. at 10, the claim requires that some input “material”—whether a pulse of energy or a stone tablet—has been given a “new form[],” “qualit[y],” or “propert[y]” by direct human action or by a machine. The resulting signal is thus a “manufacture” in the “expansive” sense of § 101. See also Am. Fruit, 283 U.S. at 11 (offering as a second definition of “manufacture,” “anything made for use from raw or prepared materials”).

The majority’s definition for “article”—“a particular substance or commodity”—likewise provides no indication that the substance must last any longer than is necessary to be useful... Indeed, we have squarely held that transitory inventions are patentable under § 101.