Recently the inventor of an electromagnetic data signal filed a petition for certiorari, asking the Supreme Court to overturn the Federal Circuit’s affirmation that his invention does not represent patentable subject matter.  See In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) ("Nuijten" pronounced approximately "noy-ten").   While the Federal Circuit found the signals to be new and useful, the Court held that the signals were not patentable because they do not fit into any of the four statutory categories of 35 U.S.C. § 101 ("101"), required for patentability.

At the administrative level, Nuijten sought two sets of claims in his patent application:  claims drawn to a method of embedding supplemental data, or "watermarks," in an electromagnetic signal and claims drawn to the signals themselves (e.g. Claim 4, "signal[s] with embedded supplemental data"), which are transitory in nature and imperceptible without special equipment.  While the U.S. Patent and Trademark Office (PTO) allowed the method claims, the PTO rejected the signal claims as drawn to nonstatutory subject matter.  The PTO’s position was that because the signals have no physical attributes, they are akin to abstract ideas and hence not patentable.  The applicant appealed.

A panel of three judges (Judges Gajarsa, Moore, and Linn) heard the case at the Federal Circuit.  Judges Gajarsa and Moore affirmed the PTO’s decision, with Judge Linn dissenting (a petition for rehearing en banc was denied).  The majority reached their conclusion by a slightly different route than the PTO.  In short, the majority held that Nuijten’s signals are not patentable because they do not fit into any of the four categories of 101 as defined by the terms "process," "machine," "article of manufacture," or "composition of matter."  In its rationale, the Court explained that the four categories of 101 define the explicit scope and reach of patentable subject matter.  These four categories are delineated by the terms of 101.  The terms of 101 find their meaning from a dictionary.  If an applicant’s invention cannot fit into one of the four categories, then it is not entitled to patent protection.

Applying the foregoing logic, the majority analyzed the four statutory terms as defined by a dictionary and illustrated why Nuijten’s signals do not fall within the scope of any of the four categories.  Most of the majority’s opinion was devoted to demonstrating how electromagnetic signals containing specifically introduced modulation patterns are not "articles of manufacture," the closest category to Nuijten’s invention.  As defined by the panel, "articles of manufacture" require some physical form and some non-transitory phase, however brief.  Because Nuijten’s signals were found to be wholly transitory and intangible, they could not be an "article of manufacture."

Judge Linn’s lengthy dissent took issue with the majority’s exclusionary approach towards patentability.  Unlike the majority, who tried to determine patentability by categorizing the invention pursuant to the mandates of 101, Judge Linn approached the question of patentability by applying the principles set forth in Diamond v. Chakrabarty, the seminal case that first articulated the Supreme Court’s expansive approach towards patentable subject matter.  447 U.S. 303 (1980).  Chakrabarty held that anything under the sun that is made by man is patentable, excluding only laws of nature, natural phenomena, and abstract ideas.  In that respect, statutory patentability should not depend on metaphysical distinctions between matter and energy.  To Judge Linn, it did not matter whether Nuijten’s signals were an "article of manufacture" or a "composition of matter" per se; what mattered to Judge Linn was that the signals were new, useful, and "made by man."

In his dissent, Judge Linn acknowledged that 101 imposes a statutory requirement for patentability; however, Judge Linn explained that the statutory requirement merely mandates that a claim must be drafted to encompass at least one of the four statutory categories of 101.  Patentability itself does not depend on the invention falling squarely within the boundaries of one of the four categories.  That a claimed invention could satisfy 101 while still not fitting into any of its categories would seem to be a conundrum, but Judge Linn explained the apparent paradox by stating that the precise terms of 101 ("process," "article of manufacture," etc.) are terms of art, meant to cover the full scope of technological ingenuity.  These terms were not intended by Congress to narrowly delineate categories of patentable subject matter and they were never intended to be strictly interpreted by a dictionary.  While the Nuijten majority interpreted the "article of manufacture" in 101 to encompass only inventions that are tangible and non-transitory, Judge Linn interpreted the same "article of manufacture" to encompass any product resulting from the exercise of inventive skill, however that product is manifested. 

In addition to discussing the patentability of the signals under Chakrabarty, Judge Linn’s dissent also included the following criticisms of the majority decision. 

First, Judge Linn took issue with the argument that an "article of manufacture" is limited to non-transitory inventions.  Transitory inventions are patentable according to both In re Breslow and In re Hruby.  In Breslow, chemical intermediates were held to be patentable, even though they were too unstable to be isolated and maintained.  616 F.2d 516 (C.C.P.A. 1980).  Despite the unstable nature of the chemicals, they were found to fall under the mantle of 101 as an "article of manufacture."  In Hruby, the overall pattern of water dispersed by a fountain, not the individual droplets, were found to be patentable despite the transitory nature of the pattern.  373 F.2d 997 (C.C.P.A. 1967).

Second, Judge Linn rebuffed the majority’s argument that electromagnetic signals such as Nuijten’s are not an "article of manufacture" because they are not tangible or physical in nature.  The majority’s position on this issue was that electromagnetic signals, such as Nuijten’s, are not patentable because they are not humanly perceptible without special equipment, and an "article of manufacture" requires some sort of physical "article."  By contrast, Judge Linn’s position on this issue is that electromagnetic signals can encompass embodiments in which the signal lasts indefinitely in physical form, examples being inscriptions of electromagnetic signals on paper or audio or video signals representing a symphony or motion picture.  In support of his position, Judge Linn turned to the 1853 Supreme Court decision permitting Morse to patent his system of dots, spaces and lines for telegraphic purposes.  O’Reilly v. Morse, 56 U.S. (15 How.) 62.  Judge Linn emphasized that, according to Morse, this issue was settled over 150 years ago.

The central issue before the Supreme Court in Nuijten is whether tangibility and permanence are a prerequisite to subject matter patentability.  If tangibility and permanence are necessary, then Nuijten will represent a reining in of Chakrabarty’s long-standing "anything under the sun" standard.

Authored by:

T. Aidan Toombs