Anticipate This!™ | Patent and Trademark Law Blog

In Re Petrus A.C.M. Nuijten – CAFC Rehearing Denied.

Posted in Opinion Commentary by Jake Ward on February 12, 2008

Dissent stating that the distinctions drawn between signals and storage media containing those signals are artificial at best. 

(Fed Cir. 2008, 06-1371o)

As stated in our original post on In Re Petrus A.C.M. Nuijten., the CAFC has previously held that a transitory, propagating signal cannot be patentable subject matter.  Petitions for a panel rehearing or a rehearing en banc at the CAFC were denied yesterday in a 9-3 decision, with strong a dissent by J. Linn (joined by J. Newman and J. Rader).  The dissenting justices opined as follows:

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. See In re Nuijten, 500 F.3d 1346, 1358 (Fed. Cir. 2007) (Linn, J., concurring-in-part and dissenting-in-part).  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, see Nuijten, 500 F.3d at 1356, that something “transient” or “fleeting” cannot constitute a “manufacture” under 35 U.S.C. § 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.” 447 U.S. 303, 309 (1980). 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.

Further analysis by Prof. Crouch, Patent Prospector, and Zura’s 271 Blog.

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