May 112013
 

In disputes involving computer-related patents, obviously the plaintiff needs to establish that the defendant is infringing at least one of the patented claims.  But when can the plaintiff peer into the defendant’s source code during discovery for purposes of lending support to infringement.  What if the defendant moves for summary judgment even before the plaintiff determines the meaning of the claim terms?  These questions are addressed in the above Federal Circuit case decided May 7, 2013.

Background

Baron’s patent (‘525) relates to reporting and forecasting real-time weather information. Baron sued MWI alleging infringement of the ‘525 patent.  Two months later, Baron served MWI with a request to produce MWI’s source code in their allegedly infringing technology.  MWI moved for a protective order asserting that Baron’s asserted patent claims do not recite a computer-code based invention.  Claim 1 is representative:

Baron responded by arguing that the “logic” (i.e., of claim 1) is the source code and thus MWI’s source code was relevant to show infringement since MWI implemented their technology on a computer with its source code.  The district court granted MWI’s protective order “without prejudice” so Baron could seek the information at a more appropriate time in the litigation.  Discovery continued with MWI serving Baron with discovery requests on how MWI allegedly infringed the asserted patent.  In response, Baron moved for a Markman hearing and objected to the discovery requests as premature.   Baron then served its Disclosure of Asserted Claims and Preliminary Infringement Contentions, detailing how Baron believed MWI infringed its patent. Importantly, Baron renewed its request to peer into the source code.  Then, MWI filed a motion for Summary Judgment of noninfringement, arguing that its technology merely forwards National Weather Service warnings to subscribers.  MWI’s motion for Summary Judgment included an affidavit in which the affiant explained why the accused products did not satisfy the limitations of the claim terms given her understanding of the claim terms.  In response, Baron argued that Summary Judgment was premature because the claims had not yet been construed and it had not yet had the opportunity to review MWI’s source code.  Baron then filed a motion to compel production of MWI’s source code, arguing that without the source code, “[it] and the court would simply have to rely on MWI’s word as to how its products function.”  The district court granted MWI’s motion for Summary Judgment, holding that claim construction was unnecessary because the court only had to construe “disputed” claim terms.  Was the district court’s grant of Summary Judgment proper? Should Baron have been given a chance to look at MWI’s source code?

Majority

The majority opinion held that the district court should have allowed the claims to be construed and should have allowed Baron to look at MWI’s source code.  Thus, the district court erred in granting Summary Judgment.  Baron adequately showed how the additional discovery was relevant and essential for its opposition to Summary Judgment.  Thus, the Federal Circuit held that it was improper for the district court to have refused Baron’s request to delay ruling on Summary Judgment.

Dissent

The dissent disagrees that the additional discovery was necessary, looking at the plain language of claim 1.  Judge Reyna argues that since MWI’s technology disseminates unmanipulated NWS warnings to subscribers, it cannot infringe “logic configured to make a determination . . . said logic further configured to transmit, if said logic determines . . . that said one contact identifier identifies a remote unit located within said geographic region,” as recited in claim 1.  The dissent stresses that since MWI’s affidavits attest that MWI’s source code does not analyze or manipulate the weather information, that’s the end of the story.

My thoughts

This case brings up an interesting point about the difference of reciting “configured to [some function]” versus “performs [some function]” in claims.  “Configured to” can be used to denote that the claim object is capable of doing, or allowed to do, some function.  For example, a ball can be configured to bounce, to throw, to deflate – all of these things are dependent on how the object is used, not on what functions the object performs.  With regard to infringement of software, without looking at the source code, it is difficult to say that a particular software is, or is not, configured to do something.  You may be able to determine that the software does not perform a particular function, but to say that the software is not configured to perform the function is a different analysis.  In the dissent, Judge Reyna states the functions of MWI’s program (i.e., merely disseminates to users) and states that the program does not perform other functions (i.e., determine or analyze).  The dissent then concludes that as a matter of law, MWI’s program does not infringe claim 1.  But when I look at the plain language of the representative claim (Judge Reyna’s own words), the inquiry is not whether MWI’s program performs these functions.  Instead, the inquiry is whether the program is “configured to” perform the functions.  So my question is this: without looking at the source code, can you state so confidently that MWI’s program is not “configured to make a determination” or “configured to transmit, if said logic determines . . .”?

 

 Posted by at 9:57 pm
Nov 082011
 

Marty Goetz’s recent piece on reframing the software patent debate may be the best way to go forward. He asks, “Is an invention that is patentable in hardware, equally patentable if implemented in software?” This inquiry takes into consideration the machine-or-transformation test and the judicial statutory exceptions. For instance, if an invention is a patentable piece of hardware then the software that does the same thing should not be deemed an abstract idea or a mental process.

Goetz continued to compare software to a manufactured product. Both life cycles, he argues, have similar characteristics. The definition phase describes functionality, specifications, the environment in which it must operate, and its operating characteristics. In the design phase, they develop and define all the interfaces, break down the functionality into modules, and do all the engineering so that the product can be properly implemented. During the implementation phase the software is debugged, tested, and goes through quality assurance. During the delivery phase there is alpha and beta testing, documentation, installation, and training. Companies can sell the product to other companies where the product becomes a component of a larger system and is repackaged. During the maintenance phase the company warrants its workmanship, and guarantees the correction of errors and defects. Finally, during the enhancement phase the product is improved, enhanced, upgraded, and new models, or releases, are announced.

Notwithstanding all the similarities between computer programs and manufactures, to me the patentability inquiry should come down to how the invention is claimed. Thinking about a computer program as what it actually does and performs just like a hardware counterpart is useful in determining its patentability. It also helps to alleviate confusion among critics that claim that you can’t patent code. I think that the original Beauregard claim was claimed in a way that meets the Goetz standard, but since then there are many claims that don’t.

Consider this claim from Beauregard, patent number 5,710,578:

Claim 22. An article of manufacture comprising:
a computer usable medium having computer readable program code means embodied therein for causing a polygon having a boundary definable by a plurality of selectable pels on a graphics display to be filled, the computer readable program code means in said article of manufacture comprising:
computer readable program code means for causing a computer to effect, with respect to one boundary line at a time, a sequential traverse of said plurality of selectable pels of each respective said boundary line;
computer readable program code means for causing the computer to store in an array during said traverse a value of an outer pel of said boundary of said plurality of selectable pels for each one of a plurality of scan lines of said polygon; and
computer readable program code means for causing the computer to draw a fill line, after said traverse, between said outer pels having said stored values, for each said one of said scan lines.

Importantly, this claim as written specifies that the computer program code must be used to cause certain things to happen. For instance, “for causing a polygon . . . to be filled” and “for causing a computer to effect . . . a sequential traverse.” In other words, the inventor is not claiming the code, but rather the code to have the computer actually do something. This is much like a machine that has certain switches hard-coded into it, this claim is drafted to resemble it very nicely. Another example in simpler language is here:

A computer-readable medium storing instructions that, when executed by a computer, cause the computer to:

calculate a set of occluding shields in a voxel dataset using …;

designate a voxel whose effective opacity exceeds a specified …;

apply the occluding shields to identify the regions of the voxel data …; and

render the voxel dataset, ….

In my research, I have run into many Beauregard-style claims that do not claim the instructions causing the computer to do certain things. Instead, these overbroad claims claim a computer medium with instructions. This may not meet the Goetz standard. Consider this claim, for instance:

A computer-readable storage medium encoded with a set of instructions for a computer, said instructions including:

a display routine configured to display a plurality of two-dimensional (“2D”) images representative of cross-sections of a three-dimensional (“3D”) volume in a plurality of viewports, wherein the plurality of viewports includes a first viewport, a second viewport and a third viewport each configured to display one of the 2D images; and
an angle of cross-section modifying routine configured to :
(1) alter an angle of the 2D image displayed in the second viewport based on and simultaneous with a movement of a control line in the first viewport,
(2) alter an angle of the 2D image displayed in the third viewport based on and simultaneous with a movement of a control line in the second viewport, and
(3) not alter an angle of the 2D image displayed in the first viewport based on the movement of the control line in the second viewport.

Here the claim of a computer program product comprises a medium that has instructions. From the claim, the invention does not claim something like a manufacture, what the invention can concretely do. Instead, the claim is to a set of instructions. Other alternative language I have seen is medium that “bears” certain instructions, or is “operable” or “capable” of making the computer perform certain steps. Claiming a computer medium that has instructions operable to do certain things doesn’t mean a whole lot, however. The inquiry should be whether it does it or not. In fact, it is possible of having instructions on the medium that never make an effect on the invention itself.

Here the important distinction that supports the fact that software patents are deserved just as hardware patents are. If hardware and software are interchangeable, then features that are built into the product but never utilized are still part of code, but not part of the invention. Consider this snippet of imaginary code.
if(true){
first set of instructions
}
else{
second set of instructions
}
Here the invention never performs the second set of instructions. The computer program will perform only the first set of instructions because the statement is set to always be true. Just like if this was a piece of hardware and a switch was turned on, so this piece of software is always set to perform the first set of instructions. Yet the second set of instructions are on the machine-readable medium.

I think that the courts and PTO are struggling with how to classify software inventions. Like Goetz, I believe that in many instances they resemble real-manufactures quite remarkably. In order for them to be treated as such in the patent arena, their patent claims must likewise resemble what the claimed code is actually doing.

 Posted by at 9:46 am
Aug 162011
 

I stumbled upon an interesting article (Can Beauregard Claims Show You The Money?) detailing the rise of the Beauregard claim. From its humble and shaky beginnings in 1995, the Beauregard claim had become a popular and successful style of claim for patent practitioners claiming inventions that involve computer programs. Last year, the claim seemed to have reached its zenith in, Finjan v. Secure Computing, 626 F.3d 1197 (Fed. Cir. 2010) where the Federal Circuit held that not only was it okay for a computer-readable medium with instructions on it to be enforced, but that the code needn’t even be active.

We fast forward to today, where the Federal Circuit decided Cybersource v. Retail Decisions. CyberSource brought suit against Retail Decisions, Inc., alleging infringement of its patent. Retail Decisions thereafter initiated an ex parte reexamination of the patent. The suit then resumed and the district court granted summary judgment for Retail Decisions of non-statutory subject matter. The CAFC affirmed the decision coming to its decision in an unprecedented way–that computer readable media with computer instructions should be treated as a process claim. Here is the analysis on why:

[P]rogramming a general purpose computer to perform an algorithm “creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994). But we have never suggested that simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind falls within the Alappat rule. Thus, despite its Beauregard claim format, under Abele, we treat claim 2 as a process claim for patent-eligibility purposes.

Anyone else confused by this analysis? Can’t all software be performed in the human mind if you break it down to the code?

I don’t agree with Judge Dyk’s analysis. This section of the opinion was extremely complicated, more complicated than it should have been. Claiming computer programs is not simple. In fact, the Beauregard claim is a very unique claim that doesn’t fit very nicely into a 1952 class of subject matter. Software claims resemble method claims in the sense that a series of methods are performed. But in this case, a computer is performing the methods, not a human. And in the case of a Beauregard claim, even though each task that a computer performs is a process, that’s not what is being claimed. Looking at Cybersource’s claim should put things into perspective.

2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:

a) obtaining credit card information relating to the transactions from the consumer; and

b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,

wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;

[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

[b] constructing a map of credit card numbers based upon the other transactions; and

[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.

This claim should not be examined as a method claim because it more closely resembles an article of manufacture. The preamble is man-made–a computer readable medium containing computer instructions. It is also a manufacture. Therefore, the case should be closed. Judge Dyk should have consulted Occam’s Razor that the simplest answer is most likely the correct answer in deciding this case.

I think that the struggle that the Federal Circuit is having is how to reject a patent when the judges don’t think that the complexity or inventiveness exceeds the basic level. However, just because what the machine does is abstract does not mean that a 101 analysis is in order. An article of manufacture was nonetheless created and 101 is thus satisfied. The Patent Act contains many other provisions that can be relied on to kick out the claim. That’s what we have 102, 103 and 112 for.

Today the Beauregard claim has experienced a setback. But after being around for more than 16 years, it seems unlikely that it has met its demise so abruptly.

 Posted by at 1:27 pm
Mar 042011
 

There’s an old saying about those who forget history. I don’t remember it, but it’s good. Stephen Colbert

When I took the class Patent Law a couple years ago, our class (probably like all other patent law classes across the country) studied the three iconic cases that dealt with the subject matter of processes: Benson, Flook, and Diehr. There seemed to be no controversy when we went over Benson, the “can’t patent an algorithm” case. The redacted opinion in my textbook had no dissent (Even though the opinion was unanimous, three justices did not participate in the decision). Furthermore, the professor, like Justice Douglas’s opinion, seemed to generalize the invention into an algorithm that converts numbers into binary. This was a very “obviously” unpatentable invention, at least that was my sense at the time.

Now, in revisiting this grandfather of subject matter cases (refer to how much Bilski still deferred to this case), I am noticing that the claims tell a different story. An interesting observation of Benson is that the CCPA in In re Benson, 441 F.2d 682 (C.C.P.A. 1971), which upheld the invention as patent-eligible, specifically cited to and focused on the claims at issue (claims 8 and 13). The Supreme Court did not even cite to the claims in the opinion, but rather attached them in the appendix to the opinion. How could the Supreme Court paint the invention in such clear terms without referring to the actual claims which make up the invention?

The claims at issue are as follows:

Claim 8.

The method of converting signals from binary coded decimal form into binary which comprises the steps of
(1) storing the binary coded decimal signals in a reentrant shift register,
(2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position of said register,
(3) masking out said binary ‘1’ in said second position of said register,
(4) adding a binary ‘1’ to the first position of said register,
(5) shifting the signals to the left by two positions,
(6) adding a ‘1’ to said first position, and
(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position of said register.”

Claim 13.
A data processing method for converting binary coded decimal number representations into binary number representations comprising the steps of
(1) testing each binary digit position ‘1,’ beginning with the least significant binary digit position, of the most significant decimal digit representation for a binary ‘0’ or a binary ‘1’;
(2) if a binary ‘0’ is detected, repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;
(3) if a binary ‘1’ is detected, adding a binary ‘1’ at the (i + 1)th and (i + 3)th least significant binary digit positions of the next lesser significant decimal digit representation, and repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;
(4) upon exhausting the binary digit positions of said most significant decimal digit representation, repeating steps (1) through (3) for the next lesser significant decimal digit representation as modified by the previous execution of steps (1) through (3); and
(5) repeating steps (1) through (4) until the second least significant decimal digit representation has been so processed.

Looking at the invention from the claims rather than from what the Supreme Court or a patent law professor tell you provides a different story. If I were the PTO today, I might go ahead and issue Benson’s application today. Let me explain why.

Back in 1968, the board rejected Benson’s application using the “mental processes” and “mathematical steps” doctrines. But when looking at the claims above, I don’t really see how the claims don’t fit within the framework of § 101. I agree with Judge Rich’s analysis: “Would a reasonable interpretation of the claims include coverage of the process implemented by the human mind?” The answer clearly is “No, for claim 8 is for a method to be practiced in part on particular apparatus specified to be a ‘reentrant shift register.’ Claim 8, moreover, refers to the operations of storing, shifting, and masking ‘signals’ which, by a reasonable interpretation in the light of the specification, can only mean signals of the kind upon which the disclosed electronic digital computer hardware operates.” Id. at 1142.

With regards to claim 13, which dealt with converting one representation into another representation, the board rejected it as “mental,” but Judge Rich’s analysis is enlightening. “The process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer.” It makes one wonder how the claim could be interpreted as broader than a digital computer, for instance having the recording medium be pencil and paper or red and blue poker chips, considering the specification makes no mention of other implementations besides a digital computer.

Fast forward 40 years. Today the PTO, the board, and other courts now prefer to use the term “abstract idea” to reject claims like this. But is it possible that the Federal Circuit today is similar to its CCPA predecessor then? Could Judge Rader be the new Judge Rich? The recent RCT v. Microsoft decision seems to imply so. Granted, Benson is different than RCT because RCT had already been issued patents and thus deserved a higher level of validity while Benson, on the other hand, involved the application stage. The RCT court refused to define abstract but said that  “this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter.” The court went on to show that the following claims were patent-eligible:

1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.

11. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to per-form said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.

1. [not asserted] A machine comprising a computer readable storage device which stores a dither matrix for use in halftoning image information and a comparator responsive to said computer readable storage device, said dither matrix comprising at least one array, said at least one array, when thresholded at a number of levels produces a number of dot profiles, a plurality of said number of dot profiles each having a power spectrum substantially characteristic of a blue noise power spectrum for the level at which such dot profile is produced.

4. The machine of claim 1, wherein substantially all of said number of dot profiles have a power spectrum substantially characteristic of a blue noise power spectrum for the level at which such dot profile is produced.

57. [not asserted] A computer readable memory device comprising a thresholdable halftoning mask, said halftoning mask designed to produce a plurality of visually pleasing dot profiles when thresholded at a number of levels and a comparator responsive to said computer readable memory device.

63. The computer readable memory device of claim 57, wherein said halftoning mask is designed to produce substantially all visually pleasing dot profiles when thresholded at a number of levels.

29. Apparatus for the halftoning of color images comprising a comparator for comparing, on a pixel-by-pixel basis, a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministric, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein an output of said comparator is used to produce a halftoned image.

Like Benson, the claims when read in a vacuum could reasonably be interpreted as “mental” or “mathematical.” But in the context of the specification, it is clear that the invention was tailored to a machine and was not abstract. Indeed the RCT court, without agreeing to define what abstract meant, provided perhaps the best definition to date: “this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter.” Id. at 868. The invention was not that.

In my opinion the PTO, or at least the Federal Circuit, in following its own subject matter jurisprudence, could hold that Benson’s invention is patent-eligible today. The invention sure wouldn’t survive other provisions of the Patent Law today, such as 102, 103, and 112, among others. But it’s useful to revisit Benson’s decision because to me the “unanimous” decision to hold Benson’s invention as non-statutory subject matter was not inevitable. It could have gone the other way.


 Posted by at 8:06 am
Feb 172011
 

It’s been a year since the USPTO issued guidelines stating that the claim “computer-readable medium” should not be statutory subject-matter because viewed in its most broad interpretation, the claim includes transitory embodiments such as signals. And since In re Nuijten held that signals do not fit into a statutory class of subject matter, the claim fails. I already made my thoughts known about this here, but today I wanted to give a report of the aftermath. The BPAI has certainly been busy, and especially since Bilski, in striking down patents related to software. Searching through the BPAI decisions, I found 132 cases that have been decided on the merits of subject matter. Interestingly, these cases are coming through the BPAI on a very regular basis. From the time I first performed my search (two weeks ago) to today, 17 more results appeared. This is definitely a hot topic right now. Software patents seem to be very much alive and well, however, a critical element of claiming computer-program related inventions is what you include in your specification.

While conducting this research, a few things struck me. First, the most common rejection was that there was insufficient limitation in the patent or the claim could be interpreted into non-statutory matter. Second, avoid having your claims get pegged with the label “software per se.” It’s bad. Next, RCT v. Microsoft was finally cited in a most recent BPAI decision. Ex Parte Clifford R. Jack & Peter C. Obrien, 2009-015192, 2011 WL 486179 (Bd. Pat. App. & Interf. Feb. 7, 2011). It appears that the BPAI has finally caught up to this recent and very important Federal Circuit case.

Next, initially after Bilski was decided, there was a trend towards rejecting claims that related to software. This trend seems to be going the other direction (although perhaps there has not been sufficient time to tell) since RCT v. Microsoft. Next, your patent, whether in the claims, or in the specification, needs to require that the invention be limited to some embodiment or on some particular apparatus. The limitation just can’t be construed as including a signal or else your claim is toast. Finally, you can claim a “computer-readable medium” if your specification limits the invention to being performed on a non-transitory medium. Otherwise, game over.

I’ve created a document that organizes the cases into one table. It’s interesting so I’ve made it available for download, in case anyone would like to look at the details. Here is the file: [download id=”2″] The document includes the citation to the decision, the claims at issue, the disposition of the claims, and the representative claim language.

Briefly about how I searched, it was difficult to search for “software patents” because of how unpredictable the wording of a claim might be. One of these days, we’re going to come to a point where you send your computer a telepathic vibe of what you want and a query will then return results for you. But we’re not to that point yet, so I conducted a very broad search of all 101 subject matter cases. Then I refined the search manually. Almost all of the subject matter was computer-related, to my satisfaction. Only a couple cases were purely abstract, involving how to play a game. If you want to perform the search for yourself, I used Westlaw:
advanced:(101 & “subject matter”) & DA(after 06-28-2010).

 Posted by at 6:39 pm
May 232010
 

The recent technological buzz has been on Craig Venter’s recent construction of an entirely new cell completely synthesized from scratch. A basic overview of his thoughts can be found in this interview. Venter’s research is incredibly inventive. He created an entirely new architecture for life, or in his words, a biological operating system. As I have a bioinformatics background, I love the analogy to software that “genetic code is our software.” Venter’s synthesis of a cell by refashioning the basic building blocks of life in a novel sequence to produce a useful result is exactly what is done with software today. One sequence is read by the cell’s machinery, the other sequence is read by a computer. Such sequences are embodied in a concrete application. Both should be patentable provided they do not occur in nature.

The recent backlash against Myriad Genetic’s BRCA gene patents most likely stems from the fact that the gene is naturally occurring. Many people become uneasy at the thought of not being able to perform a test on your own biological material. It’s as if you don’t control your own body, and that is scary. Perhaps Myriad’s gene patents were improvidently awarded. Had Myriad somehow altered the gene, or constructed an entirely new gene, there would have been a different story. The result of the case is far from over, however, as appeals are now in the works.

One quote from Venter’s interview struck me as directly applicable to patent law: “We’re entering a new [technological] era that is limited mostly by our imagination.” The patent law system cannot limit this new era that is being ushered in. It needs to be flexible enough to promote this area of science.

 Posted by at 8:42 am
Apr 182010
 

The effects of In re Nuijten are still being felt today. Most recently, David Kappos released guidelines that “computer-readable medium” should now include the buzzword “non-transitory” so as to not include signals.[1] The reasoning is that computer readable medium, when most broadly interpretated, could include a signal. The Federal Circuit in Nuijten[2] rejected the signal claim for not fitting into any of the four categories because the signal is transient and not tangible.[3] The court did acknowledge, however, that the signal is physical and man-made, exists in the real world, has tangible causes and effects, comprises particles, and is perceptible.[4] However, “non-transitory” is an improper limitation for the PTO to mandate. Without a more expansive view of patentability, limitations to non-transitory media will continue to harm incentives for software development and escalate piracy.

Rather than disqualifying all transitory inventions, which goes against patent law precedent, a better approach is to focus on whether the invention is physical, transferable, and reproducible.

Physical

Historically, courts have allowed signals that have demonstrated physical qualities. The Supreme Court in Dolbear v. American Bell Tel. Co.[5] held that electricity could be patentable subject matter.[6] The Court reasoned that Bell’s art consisted in controlling the force as to make it accomplish its purpose.[7] Such a purpose involved real, physical effects.[8]

The Federal Circuit in Arrhythmia Research Technology, Inc. v. Corazonix Corp.,[9] while not dealing with signals as an article of manufacture, stated that “[t]he view that ‘there is nothing necessarily physical about ‘signals’’ is incorrect.”[10] Importantly, other signal inventions have also been patented.[11]

The USPTO, notably, has previously held an expansive view of allowing computer readable media other than non-transitory computer disks.[12] In 1996, the idea of a propagated signal claim was widely unknown and under-appreciated in the software realm.[13] However, after releasing the Computer-Related Invention Guidelines (“Guidelines”), the PTO also released Claim Examples to train examiners how to properly apply the Guidelines.[14] These examples included a section on Compression and Encryption inventions. Claim 13, entitled Automated Manufacturing Plant, set forth the use of a signal claim.[15]

A computer data signal embodied in a carrier wave comprising:

a. a compression source code segment comprising . . . [recites self-documenting source code]; and

b. an encryption source code segment comprising . . . [recites self-documenting source code].[16]

In this example, the PTO instructions explained that the “computer data signal” was “specific software embodied on a computer-readable medium” and a “specific machine or manufacture.”[17] This computer data signal controlled physical processes of the automated manufacturing plant.[18] The current patent law should also reflect a standard of allowing as a patent-eligible article of manufacture physical inventions.

The Federal Circuit has held that signals that have physical effects are physical.[19] Continuing to approve of physical signals as patent-eligible would not disrupt patent law.

Transferable

Likewise, being able to transfer the physical embodiment of an invention sheds light on why the invention is patent-eligible as an article of manufacture. An article of manufacture software claim should be allowable when it represents a physical and transferable embodiment.[20] When software is embodied on a physical medium, the intangible and non-rivalrous idea takes on a physical and rivalrous expression.[21] Even as the transfer of transitory media (i.e. CDs, hard drives, USB drives, etc.) involves physical and rivalrous forms of transfers, so also does a signal involve a physical and rivalrous transfer. Like a CD, where a physical media that contains computer instructions can be transferred to only one person, using a transitory signal medium is similar.[22] Each transfer of the software using a signal involves one medium on which the software resides. The software on such a medium is transferred to one recipient.

Methods are intangible and non-rivalrous forms of property. Software as an idea of a structure, relationship, or set of instructions that a computer can perform mimics the intangible and non-rivalrous elements of methods. However, when software is embodied in a physical medium, it meets the standard of a patent-eligible article of manufacture because a particular embodiment can be transferred.

Reproducible

Finally, not everything that has physical effects and transferable should meet the standard of patent-eligibility. The invention must be reproducible so that the invention as a whole is constant and predictable. Because file transfers normally follow protocols that do not permit errors, most signals that are used to transfer software should be patent-eligible. By adopting the standard of physical, transferable and reproducible, rather than non-transitory, a fair line for the patentability of signal claims is drawn, while at the same time encouraging growth in the very expanding area of software development.

Requiring software to be consistently (reproducible) measurable and transferrable (physical) makes software a manufacture fitting the invention into one of the four categories in § 101. Equally important, those characteristics embody the invention with a real-world application, clearing the abstract idea exception to non-patentability. The PTO is already rejecting claims that do not explicitly claim signal, but could be construed as including a signal.[23] By restricting all signals as non-statutory subject matter, the patent system risks rejecting many futuristic inventions that are or could be construed as a signal.

Software must be embodied in a particular medium to avoid being interpreted as an abstract idea.[24] Even when it is claimed on a physical medium, it still runs the risk of being interpreted as an abstract idea because the novelty of the invention is not the medium it is on.[25] As § 101 was written in a time of physical and tangible articles, courts over the decades have appreciated the tangibility as being part of the invention. The medium is necessary to embody the invention as a non-abstract idea. It makes the invention reproducible, fixed, and constant.

In Benson, the first Supreme Court decision striking down a computer related invention for subject matter reasons, the Court stated that “one may not patent an idea.” The claim at issue dealt with the “processing of data by program and more particularly to the programmed conversion of numerical information” in general-purpose digital computers.[26] Claimed as a method, this case differs from physical embodiments of software as an article that can be transferred and reproduced. Physical, reproducible signals should be patentable because of the way that it clears the abstract idea exception. Since software is patent-eligible based on its history of being patented, and because it does not fall within any exception to patentable subject matter, and as current characterizations of software are either not compelling enough to be allowed for subject matter, or too limiting to be easily infringed, a new perspective on understanding how software fits into the patent framework.

A recent example makes clear the important role the signal can play and the sense of including it. In Microsoft Corp. v. AT&T Corp.,[27] the Court stated in dicta that “[a]bstract software code is an idea without physical embodiment . . . .”[28] The Court reasoned that in order for software to be a component, for purposes of § 271(f) it needed to be physically embodied.[29] The Court further reasoned that software needed to be expressed on a computer readable format like a CD to be combinable. “Abstracted from a usable copy, code is intangible, uncombinable information, more like notes of music in the head of a composer than ‘a roller that causes a player piano to produce sound.’”[30]

A signal is unlike an abstract form of software because the signal physically embodies the software. Like the Court in Microsoft held that software needed to be embodied in a physical medium to be more than a mere idea, a signal passes subject matter eligibility by being physically embodied in a computer-readable medium.[31]

Software embedded in a signal is more than an intangible algorithm or idea.[32] The medium makes the embodiment of the idea or algorithm an application to a real-world object that is new and useful. When it does so in a reproducible way, and can be ensured that the invention does not change, much like a non-transitory medium does not change, the signal should be patent-eligible.

The courts have upheld reproducible, transitory patentable subject matter in the past. In In re Hruby, the CCPA held that a transitory water fountain was eligible subject matter for a design patent.[33] The court rejected the notion that the fountain was fleeting[34] and held that it fit within the category of a manufacture.[35] The court reasoned that even though the fountain comprised transient and fleeting water molecules, the overall fountain remained substantially constant when certain parameters were met: configuring the orifice, maintaining a certain water pressure and atmospheric conditions. Additionally, the water fountain although made up of a transient composition of matter was physical in nature. The court reasoned that it would not make consider the fountain appropriate subject matter when frozen, but not eligible when liquid. The court also reasoned that the water fountain was reproducible.

Similar to the fountain in Hruby, a signal can also be maintained at a substantially constant level, especially when the signal is digital. In the field of distributing data through the Internet or networking communications, information in the form of a signal, is highly constant and includes packets of information that is able to be verified down to the very bit.  Like the water fountain, where the water pressure, the atmospheric conditions, and the orifice arrangements all when carefully maintained create a reproducible manufacture, so does the signal from one communication location to a destination when maintained have a very precise structure and composition of data.

A signal by the same analysis should also be a manufacture because of its reproducibility. In Ex parte Rice,[36] the BPAI held that a signal claim with the language “electromagnetic signal” was eligible subject matter, despite being “transitory and ephemeral in nature.”[37] A signal that, according to the court in Nuijten, is physical, transferrable, and reproducible, should like the water fountain in Hruby and the electromagnetic signal in Rice pass as an article of manufacture.

Because it is permissible to claim structures embodied in a storage medium, it is worth noting that the “difference between information storage and information communication is fundamentally only a difference in one’s inertial frame of reference.”[38] The difference between a non-transitory medium (such as a CD) being patent-eligible, but a signal automatically ineligible because it is transitory does not make sense, especially when the invention can be conveyed to the computer in the exact same form. It does not make sense to disqualify the signal claim based solely on its transitory nature.

Proposed Signal Claims

It seems unlikely that the propagated signal, which has so many similarities to patent-eligible manufactures, have been killed for good, such claims rather just must be adapted.[39] Arguably, the Federal Circuit in Nuijten could have categorized the signal as a manufacture, using an expansive view of subject matter. The category of manufacture is classically the catch-all subject matter category.[40] Thus a manufacture includes “every article devised by man except machinery upon the one side, and compositions of matter and designs upon the other.”[41] However, at the very least, assuming that the Federal Circuit was correct in Nuijten, a signal claim should be accepted when it incorporates the following limitations into it: physical, transferrable, and reproducible. Perhaps the court struck down the signal claim in Nuijten because it claimed a signal without any modifiers or limitations. The USPTO has issued 452 patents with “a claim having the exact phrase ‘computer data signal embodied in a carrier wave,’ the latest on September 11, 2007.”[42] The “computer data signal” claim signifies that the signal is physical. Since in Nuijten a signal claim without any modifiers was physical, it can only be assumed that a “computer data signal” is physical also.[43] Next, the signal can be transferred to computers because the claim is a computer data signal. Finally, the computer data signal is reproducible.[44] Computer data is transmitted in blocks, followed by a parity that checks the integrity of the receiver’s data.[45] One single bit error requires the retransmission of the entire block, ensuring that the content embedded in the signal is reproducible to the very bit.[46] This is unlike other types of transmission such as voice or video, where errors are tolerated.[47] Modifying the signal claim with “computer data” should convey the idea that the signal is reproducible.

Another signal claim that should pass the subject matter inquiry is “computer-readable signal.” This claim borrows language from the Beuaregard claim. If it can be established that “non-transitory” should not be a limitation to a software claim, then returning back to the pre-Nuijten claims of “a computer-readable medium . . . .” Kappos recently established that “a computer-readable medium” in its broadest reasonable interpretation includes a signal per se.[48] It may be desirable to claim a “non-transitory computer-readable medium,” as recommended in the interim guidelines, followed by “a computer-readable signal” to receive protection for both types of media. A computer-readable signal claim should work to the extent that it is reproducible and transferrable.  Even though some computer-readable signals may not be reproducible,[49] most data transmissions are. For those transmissions that are not set up to trace their reproducibility, allowing a “reproducible” modifier should solve the problem. For example, “a reproducible computer-readable signal” ensures that the invention is fixed in much the same way that current software is fixed in tangible media.


[1] “When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter.” David J. Kappos, Subject Matter Eligibility of Computer Readable Media. 1351 OG 212 (Feb. 23, 2010).

[2] 500 F.3d 1346, 1351 (2007).

[3] Id. at 1353, 1356.

[4] Id. at 1355.

[5] 126 U.S. 455 (1888).

[6] Id. at 532–33.

[7] Id. at 532.

[8] See In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007) (holding that a signal implies with it a physical carrier).

[9] 958 F.2d 1053 (Fed. Cir. 1992).

[10] Id. at 1059.

[11] See, e.g., In re Bernhart, 417 F.2d 1395, 163 USPQ 611 (CCPA 1969).

[12] Nancy Linck & Karen A. Buchanan, Patent Protection for Computer-Related Inventions: The Past, the Present, and the Future, 18 Hastings Comm. & Ent. L.J., 659, 677 (1996).

[13] Kuester, Horstemeyer & Santos, A New Frontier in Patents: Patent Claims to Propagated Signals, 17 J. Marshall J. Computer & Info. L. 75, 77 (1988).

[14] Id.

[15] It is important to note that the PTO has never consistently advocated signal claims. In Interim Guidelines from the preceding year, for example, stated “it does not appear that a claim reciting a signal encoded with functional descriptive material falls within any of the categories of patentable subject matter set forth in Sec. 101.” 1300 OG 142, at 25 (Nov. 22, 2005), available at http://www.uspto.gov/web/offices/com/sol/og/2005/week47/patgupa.htm (last visited Apr. 1, 2010). Additionally, this example was removed shortly after posting it on the USPTO’s website. Email from Dan Santos, IP Attorney, to Trent Ostler, J.D. Candidate, Franklin Pierce Law Center (Apr. 1, 2010, 21:34 PST) (on file with author).

[16] Examination Guidelines for Computer-Related Inventions, available at http://web.archive.org/web/19980529122936/http://www.uspto.gov/web/offices/pac/dapp/oppd/compenex.pdf, at 39 (Mar. 28, 1996).

[17] Id. at 41.

[18] Nancy Linck & Karen A. Buchanan, Patent Protection for Computer-Related Inventions: The Past, the Present, and the Future, 18 Hastings Comm. & Ent. L.J., 659, 677–78 (1996).

[19] See, e.g., In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007) (citing Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053, 1059 (Fed. Cir. 1992).

[20] See Dennis S. Karjala, The Relative Roles of Patent and Copyright in the Protection of Computer Programs, 17 J. Marshall J. Computer & Info. L. 41, 64 (1998) (“Program object code on a diskette is every bit as much a machine part as these hypothetical black boxes.”).

[21] For instance, a CD containing software is a tangible embodiment of the invention that can only be used by one person. Even though a computer can read the CD and the digital contents can be copied to another storage medium, this does not diminish the tangibility and rivalry of that particular CD with software.

[22] Dennis S. Karjala, The Relative Roles of Patent and Copyright in the Protection of Computer Programs, 17 J. Marshall J. Computer & Info. L. 41, 65 (1998).

In its executable form, the code exists as physical signals (high or low voltages or magnetic field strengths), not as ones and zeros that may be readable by humans. These physical signals may be used directly by the computer in the course of operations. For reasons of operational efficiency, however, these program signals are usually not directly used by the computer but rather are transferred from the diskette to other parts of memory, but the transfer is one to one and exact. . . . Consequently, while today the program does not directly govern computer operations from the diskette, its exactly transferred copy does.

Id.

[23] E.g, Ex parte Azuma, B.P.A.I. Appeal No. 2009-003902 (Sept. 14, 2009), available at http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009003902-09-14-2009-1 (last visited Apr.5, 2010).

[24] Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).

[25] See also In re Johnson, 589 F.2d at 206 (1978) (stating that Benson “applies equally whether an invention is claimed as an apparatus or process, because the form of the claim is often an exercise in drafting”); Andrei Iancu & Jeremiah Helm, Code on Disks and Hat Tricks: Is Computer Software on a Medium Really Patentable?, 90 J. Pat. & Trademark Off. Soc’y 97 (2008).

[26] Gottschalk v. Benson, 409 U.S. 63, 64 (1972).

[27] 550 U.S. 437 (2007).

[28] Id. at 449.

[29] Id.

[30] Id. at 451 n.12.

[31] But see In re Nuijten, 500 F.3d 1346, 1366 (holding that signals are unpatentable because they fail the tangibility requirement of being a manufacture).

[32] Andrei Iancu & Jeremiah Helm, Code on Disks and Hat Tricks: Is Computer Software on a Medium Really Patentable?, 90 J. Pat. & Trademark Off. Soc’y 97, 98 (2008).

[33] It is important to note that even though Hruby’s water fountain as a design patent relies on § 171 for subject matter, the only difference in language between § 101 and § 171 is “useful”:

101: 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. 35 U.S.C. § 101 (2008).

171: Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. 35 U.S.C. § 171 (2008).

Because the usefulness of software was never an issue in Nuijten, nor in other software patents, the subject matter concerns should be the same.

[34] Another term for fleeting is transitory. Dictionary.com, http://dictionary.reference.com/browse/fleeting (last visited Apr. 5, 2010).

[35] The court addressed the difference in language between article of manufacture and manufacture.

We fail to find in the opinion of the board majority any sufficient reason for holding the fountains are not ‘articles of manufacture.’ If, per chance, the board was attempting a distinction between ‘manufactures,’ which it seemed to think the fountains are, and articles of manufactures, we think that supposed distinction was fully disposed of by our predecessor court . . . in In re Hadden (holding that there is no difference between a manufacture and an article of manufacture).

[36] Ex parte Rice, Appeal No. 2002-1554 http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd021554 (B.P.A.I. Mar. 13, 2003)

[37] Id. at 2; accord O’Reilly v. Morse, 56 U.S. at 114–19; In re Breslow, 616 F.2d 516 (CCPA 1980).

[38] Michael P. Frank, The Physical Limits of Computing, 4 Computing in Science & Engineering 16, 24 (2002).

[39] Professor John Duffy at George Washington remarked:

Yet . . . there will still be nothing to stop Philips from claiming transport media (e.g., wires, cables, and fibers) containing the relevant signal.  True, such claims may not be able to cover free space propagation of an electromagnetic signal, but that may matter little.  Current technology requires electronic circuitry having physical wires to generate and to receive an electromagnetic signal.  Moreover, many, perhaps even most, electromagnetic signals are today being transported by fibers, cables or wires.  Thus, even under the PTO’s interpretation of § 101, Philips should be able to achieve much of its intended objective, provided that the company observe some formalisms.

[40] According to Chisum, manufacture “is the residual class of ‘product’ patent – encompassing all man-made items not found in substantially the same form in nature that are neither machines nor compositions of matter.” Chisum on Patents § 1.02[3].

[41] Id. (quoting I.W. Robinson, The Law of Patents for Useful Inventions, 270 (1890)).

[42] Posting of luke84 to http://ip-updates.blogspot.com/2007/09/signal-claims-not-patentable-subject.html (Apr. 2, 2010, 21:29 EST).

[43] See In re Nuijten, 500 F.3d 1346, 1356 (Fed. Cir. 2007) (holding that a signal is physical).

[44] The transmission that carries a data signal is governed by digital transmission standards that ensure that the sender’s and receiver’s content is the same. David Russell Smith, Digital Transmission Systems, at 13 (2003). The FCC authorizes carrier services and sets technical and operational standards. Id.

[45] Id. at 57.

[46] Id.

[47] Id.

[48] David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 OG 212 (Feb. 23, 2010), available at http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf (last visited Apr. 3, 2010).

[49] Such as voice and video transmissions. This is in contrast to data transmissions, that are governed by digital transmission standards that ensure that the sender’s and receiver’s content is the same. David Russell Smith, Digital Transmission Systems, at 13 (2003). The FCC authorizes carrier services and sets technical and operational standards. Id.

 Posted by at 1:30 pm
Jan 142010
 

Software (or computer program) transactions occur all the time and literally everywhere in our society. Such transactions can consist of downloading a program for free or it can involve going to the store and buying a particular program. The phrasing that I just used, you will note, gives an ordinary person the impression that there is an element of ownership in the computer program. More often than not, however, the transaction is not a sale of the digital good, but rather a license to use the software. On either opening the software packaging (shrink-wrap) or installing the program, there is undoubtedly an accompanying license that automatically enters you into. As previously noted, I purchased Microsoft Office last year and the license can be found here. Currently, there is a Circuit split on whether software should be considered a sale even though the software distributors want it to be a license. One side of the split has reclassified these licenses as sales. See Step-Saver Data Systems, Inc. v. Wyse Technology, 939 F.2d 91 (3d Cir. 1991); Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th Cir.1988). I am interested in how classifying software as licenses, rather than something to be owned, will affect the registration of Intellectual Property, especially as we are moving away from physical embodiments of digital property.

In a new article What Virtual Worlds Can Do for Property Law, Juliet M. Moringiello focuses on a couple recent virtual-property disputes in the computer game Second Life. 62 Fla. L. Rev. 159 (2010). One dispute involved a user who exploited a glitch and obtained land for a low cost. The owner of Second Life, Linden, said that the user breached the license and the virtual property was confiscated. The bottom line question that this case involved was who had rights to the virtual property in Second Life? Did the creator of the game merely grant the user a license to access the “proprietary server software, storage space, and computational power that enabled the experience of the ‘virtual land’ in Second Life”? or did the creator wrongfully take the virtual property that the user had acquired? This interesting question did not get resolved due to settlement. The author concludes that the limited amount of tangible property classifications should also apply to the virtual world. I wonder if the current classifications of tangible property are sufficient for intangible property.

Wherever you try and put digital property, it is an awkward fit. First, it is difficult to classify digital transactions as a sale. When we think of the sale of tangible goods, an owner gives up the actual good and transfers it to another. On the other hand, when a record company sells music, it can transfer an unlimited amount of music without diminishing its supply. Using a true sale perspective, when the record company sold its copy of an album, it would not possess that album anymore. In a Unix world, a true sale of a digital transaction would be the command “mv location/album.zip .” However, the command is instead “cp location/album.zip .” which means that the record company always has access to its original album.

Having said that digital property doesn’t fit perfectly in the category of a sale, the category of license doesn’t fit any better. Courts have used several factors to reclassify digital property from licenses to sales:

    The intent on the licensor to regain possession
    The absence of a recurring benefit
    A reason for construing it as a license other than restraining trade
    The pricing structure was more like a sale
    The licensee could sell the property

In re DAK Industries, Inc., 66 F.3d 1091 (9th Cir. 1995); UMG Recordings, Inc. v. Augusto, 558 F. Supp. 2d 1055 (C.D. Cal. 2008).

Perhaps we are in need of another category to fit emerging digital property into. The license/sale debate will most likely not get any easier or less heated as we move away from physical embodiments of software and towards cloud computing.

 Posted by at 9:31 pm
Dec 222009
 

There is plenty of buzz today about the Federal Circuit’s decision affirming that Microsoft infringed I4I’s XML software patent. People are talking about the permanent injunction, the damages, and willful infringement. These are all very interesting to me, but there is something much more interesting. You see, this patent really hits home for me because I bought the infringing product Microsoft Office after the District Court’s had issued its final decision. What I bought, and what the Federal Circuit discussed in their decision was completely different than what was in their claim. In patent number 5,787,449, the patent describes both system claims and method claims.

The Federal Circuit referred to the invention as software practicing the invention. When I went to the Mac store to buy Microsoft Office, I bought software that infringed the invention. The Federal Circuit can refer to it as such, the consumer can refer to it as software, but for some reason the PTO for subject matter reasons makes the patentee claim the invention in round-about ways. The system at issue (claim 1) claimed it as “a computer system for the manipulation of the architecture and content of a document.” However, I did not buy a computer system. I bought software. I could have bought the software online and downloaded it from a server and it would have been exactly the same as the discs that I bought at the mall. It seems counter-productive to claim software as anything other than software.

The next interesting point is how the Federal Circuit looked at the method claim. The Federal Circuit had no problem with the method claim at issue:

14. A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising:
providing the mapped content to mapped content storage means;
providing a menu of metacodes; and
compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and
providing the document as the content of the document and the metacode map of the document.

Here we have a method of dealing with data. It is clearly useful as it was “an improvement over prior technology in several respects.” But now we’re getting to the part that is perplexing for me. How is this method tied to a particular machine or apparatus? At first glance it appears that it is not, as there is no mention of a machine or apparatus. The next question is how does this method transform a particular article into a different state or thing? The only way that I can see this inquiry satisfied is if the court interprets a data structure as a particular article.

Now I understand that the Federal Circuit only looks to those issues that are before it, but subject matter has been used before looking to invalidity arguments before. Maybe Judge Prost & Co. didn’t even think to consider the machine-or-transformation test because software has been patentable subject matter for so long.

 Posted by at 5:45 pm
Nov 302009
 

Did anyone else catch this contradiction by Mr. Jakes?

  • MR. JAKES: Well, it’s not that clear from the Federal Circuit’s transformation test whether that would apply or not, because although the Federal Circuit
  • has said transformation of data might qualify, it said it has to represent something physical, something — a real object. And sound doesn’t necessarily have to be that. Sound can be generated artificially. So –
  • JUSTICE SCALIA: Sound — sound is not physical, and electric current is not physical?
  • MR. JAKES: I think electric current is physical.
  • JUSTICE SCALIA: Yes, I think so.
  • MR. JAKES: Yes.
  • JUSTICE SCALIA: Sound is, too.
  • MR. JAKES: It can be, but when it’s transmitted over a wire, it’s not. It’s something else. It’s an electrical current then.

So let me see if I’ve got this right, Mr. Jakes. There are instances where sound is not physical, but an electric current is always physical. An instance when sound is not physical is when it is transmitted over a wire, which turns it into something else. That something else, in your own words, is an electrical current. Didn’t you just say that an electric current is physical? So how would sound not be physical?

And also, I’ve got a question for Justice Scalia. I’m confused by this dialogue:

  • JUSTICE SCALIA: Sound is not transmitted over the wires. Sound has been transformed into current, and current is transmitted over the wire and then transformed back at the other end into sound.
  • MR. JAKES: Yes, and I would agree –
  • JUSTICE SCALIA: I think it clearly -clearly would have been covered by — by the test the government (referring to the machine-or-transformation test).

If current “clearly” passes the Bilski test, are you saying that a signal would also pass this test? If so, I am confused why you and your fellow justices failed to grant cert. and explain this for In re Nuijten where the Federal Circuit held that a “signal” was abstract, and not patentable subject matter. Perhaps a signal cannot be claimed as the “product” type of subject matter, but rather as a process. See Mr. Stewart’s explanation that manufactures, machines, and compositions of matter should be construed to encompass a very broad amount of subject matter and the machine-or-transformation test only applies to processes.

 Posted by at 6:47 pm