One if by land, and two if by sea;
if these had been patented
where would we be?
The US Supreme Court decision in KSR continues to throw its long shadow on patent law as the Federal Circuit has further circumscribed the extent of patent protection and has once again narrowed the limits of patentability as based on 35 U.S.C. § 101 which provides:
"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."
(see also Patentability of Inventions and Grant of Patents)
The renown international New York law firm, Paul, Weiss et al. has published a recent memorandum on the limits of patentability titled What is Patentable Subject Matter? by John E. Nathan, Catherine Nyarady, and Larry A. Coury, which relates to two recent decisions of the Federal Circuit addressing the limits of patentability:
In re Comiskey and In re Nuijten
(see the post-decision comment at Patently-O and the pre-decision discussion by Professor John F. Duffy at Patently-O and also Harold Wegner at IPfrontline).
Nathan, Nyarady and Coury of Paul, Weiss write inter alia:
"In Comiskey, the Federal Circuit clarified what makes an abstract idea unpatentable. If an abstract idea has “no claimed practical application, it is not patentable.” And, an abstract idea with a practical application will only be patentable if it “involves another class of statutory subject matter.” The Supreme Court has recognized only two instances when this latter requirement is met: (1) when the abstract idea is a process that is tied to a particular apparatus or (2) when the process changes some material into a different state or thing. For example, if a process involving a mathematical algorithm uses a computer, the process may be patentable because it is tied to a specific apparatus.
In Comiskey, the Federal Circuit found most of the patent claims unpatentable because they were not tied to a particular apparatus: “the application of human intelligence to the solution of practical problems is not in and of itself patentable.” Other claims reciting the use of “modules” or the selection of an arbitrator from a database were found to be patentable subject matter, and the court remanded for a determination of whether these claims are obvious. The
court went further and noted that the “routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness.” [emphasis and this matter in brackets added by LawPundit - of course, KSR is cited as KSR Int’l Co. v. Teleflex Inc., 127 S. Ct 1727, 1743-44 (2007) (addition of a well-known electronic sensor to a well-known mechanical adjustable pedal would have been obvious)]
"The Nuijten patent application claimed, among other things, a signal with embedded supplemental data that could be used to prevent unauthorized copying. The Federal Circuit found the signal claims unpatentable under 35 U.S.C. § 101. The court found that the claims directed to the signals themselves include “physical but transitory forms of signal transmission,” and held that “such transitory embodiments are not directed to statutory subject matter.” The court defined each class of statutory subject matter under 35 U.S.C. § 101, then analyzed whether the signals fit within the definitions. In each instance, the signals failed to meet the definitions."
Circuit Judge Dyk in his majority opinion in the Comiskey case wrote:
"Following the lead of the Supreme Court, this court and our predecessor court have refused to find processes patentable when they merely claimed a mental process standing alone and untied to another category of statutory subject matter even when a practical application was claimed....
It is thus clear that the present statute does not allow patents to be issued on particular business systems—such as a particular type of arbitration—that depend entirely on the use of mental processes. In other words, the patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone, a field of endeavor that both the framers and Congress intended to be beyond the reach of patentable subject matter. Thus, it is established that the application of human intelligence to the solution of practical problems is not in and of itself patentable....
Comiskey’s independent claims 1 and 32 seek to patent the use of human intelligence in and of itself. Like the efforts to patent “a novel way of conducting auctions” which Schrader found to be directed to an abstract idea itself rather than a statutory category, Comiskey’s independent claims 1 and 32 describe an allegedly novel way of requiring and conducting arbitration and are unpatentable."
As far as the Nuijten patent claim is concerned, and not fully in line with Duffy's interpretation of Section 101 from the standpoint of Scalia-like textualism, the Federal Circuit in our opinion decided the case correctly by saying that signals themselves could not be patented, even if they had special humanly designed "watermarks" attached to them. As written in the majority opinion by Circuit Judge Gajarsa concerning the USPTO claims:
"... Nuijten has been allowed claims to the process he invented, a device that performs that process, and a storage medium holding the resulting signals. None of these claims is before us on appeal.
The claims whose disallowance Nuijten appeals are not traditional step-by-step process claims, nor are they directed to any apparatus for generating, receiving, processing, or storing the signals. As mentioned above, such claims have been allowed. The claims on appeal seek to cover the resulting encoded signals themselves....
Nuijten and the PTO agree that the claims include physical but transitory forms of signal transmission such as radio broadcasts, electrical signals through a wire, and light pulses through a fiber-optic cable, so long as those transmissions convey information encoded in the manner disclosed and claimed by Nuijten. We hold that such transitory embodiments are not directed to statutory subject matter."
There is a lot of interesting commentary about this at Patently-O in the comments section, but some of the discussion misses the main point which is that the Federal Circuit had no choice whatsoever but to make the decision that it did, finding signals not to be statutory subject matter. If a SIGNAL itself - watermarked or otherwise individually marked - could be patented "as a unique invention", then ANY SIGNAL containing ANY - for example - copyrighted information could also be patented, with the logical conclusion that a gigantic and totally chaotic system of individual "signal licensing" would develop, making the already extensive current chaos in patent and copyright law look like a cakewalk. It is of course clear to this observer that signals themselves are never "invented" within the meaning of the patent law, but only the means and methods of their transmission and reception. The waves and particles of the universe are omnipresent. One surely needs to keep separate the inventions of God and the inventions of Man.
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