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June 23, 2008

Smoke Signal

Law professors John Duffy, Dennis Crouch, Mark Lemley, and others, filed an amici brief for certiorari before the Supreme Court, to toss the CAFC mistake In re Nuijten, which ruled that transient signals were not patentable subject matter under 35 U.S.C. § 101.

Petition for a CAFC en banc rehearing was denied, though there was stirring dissent of how wrong the ruling was.

The amici brief cited Diamond v. Chakrabarty as lead case law, which was also the locus the the CAFC en banc dissent.

[The Supreme] Court has admonished that, in the context of interpreting § 101, "courts 'should not read into the patent laws limitations and conditions which the legislature has not expressed.'" Id. at 308 (quoting United States v. Dubilier Condenser Corp., 289 U.S. 178, 199 (1933)).

The CAFC not-plugged-in backdrop, from the brief -

The panel majority below held that a new, nonobvious coded signal is not patentable subject matter because it is not a "manufacture" within the meaning of § 101. In reaching this conclusion, the panel recognized that such a signal "is man-made and physical-it exists in the real world and has tangible causes alld effects." App. 20a. Yet despite the panel's recognition that signals are physical, man-made things, the court held that a signal could not be the subject of a patent because (i) "it is a change in electric potential that, to be perceived, must be measured at a certain point in space and time by equipment capable of detecting and interpreting the signal"; (ii) "energy embodying the claimed signal is fleeting and is devoid of any semblance of permanence during transmission"; and (iii) "any tangibility arguably attributed to a signal is embodied in the principle that it is perceptible---e.g., changes in electrical potential can be measured." Id. at 20a-21a.

These three distinctions-which may be termed (i) equipment perceptibility; (ii) fleeting nature; and (iii) arguable tangibility-have never been recognized, either singly or in combination, as limitations on the scope of § 101.

Numerous patents have been issued on subject matter that cannot be perceived without the aid of equipment.

The second distinction invoked by the decision below-the "fleeting" nature of signal sought to be patented-is poorly defined and is inconsistent with basic patent policy. Restricting patentability based on the concept of a thing's "fleeting" nature is supported by no known precedent, and the Court of Appeals below provided no metrics for judging the timescale that would be used to decide whether an object's nature is "fleeting."

The third distinction relied upon by the Court of Appeals was that "any tangibility arguably attributed to a signal is embodied in the principle that it is perceptible--e.g., changes in electrical potential can be measured." App. 21a. This distinction is also difficult to define with any degree of precision and, in any event, is wholly alien to the text and purposes of the Patent Act.

As the Court Appeals noted elsewhere in its opinion, the signals at issue in this case are required to have "some physical form" in order to fall within the ambit of Nuijten's patent claims. App. 13a. Thus, contrary to the view adopted by the Board of Patent Appeals and Interferences (BPAI) in the Patent and Trademark Office (PTO), the Court of Appeals recognized that the signals here are not mere abstractions.

The distinction drawn by the Court of Appeals appears to be between tangible objects and merely physical objects.

The problems with that insubstantial distinction with regard to patent law -

First, tangibility itself is not a scientific concept... Second, the language of the statute does not require tangibility... Third, the decision by the Court of Appeals conflicts not only with this Court's admonitions against imposing new limitations on patentable subject matter, but also with this Court's specific holding in O'ReIlly v. Morse, 56 U.S. 62 (1853).

The rabbit punch conclusion -

In sum, the decision below conflicts with Supreme Court authority both in its general approach to interpreting 35 U.S.C. § 101 and in its specific holding that a new and nonobvious sign or signal is unpatentable. The justifications given by the panel majority for its unprecedented holding are scientifically vacuous and create bad patent policy.

Posted by Patent Hawk at June 23, 2008 9:53 PM | § 101


"courts 'should not read into the patent laws limitations and conditions which the legislature has not expressed.'"

Unfortunately in this case the subject matter in question doesn't even belong to one of the catagories so they haven't read any limitation in.

Posted by: e6k at June 24, 2008 6:25 PM