In re Nuijten (en banc denied 2008)
The CAFC has decided not to hold an en banc hearing of the important Nuijten appeal. In the original case, the CAFC (Judges Moore and Gajarsa) found that a transitory propagating signal is not proper patentable subject matter because it does not fit within any of the four statutory categories. That is, the signal is neither a process, machine, manufacture, nor composition of matter.
Three judges, including Judge Linn of the original panel, dissented from the en banc denial and offer a concise summary of their reasoning (some citations removed):
I respectfully dissent from the court’s decision not to rehear this case en banc. 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. … 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 that something "transient" or "fleeting" cannot constitute a "manufacture" under § 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." 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.
The Comiskey case is (apparently) still pending decision on rehearing. Comiskey arguablly stretches the 101/103 relationship even further than Nuijten. However, it may have an even smaller shot of rehearing en banc because of the lack of a dissent as well as a lack of amicus support for the en banc request.
- Patently-O Discussion of Nuijten and Comiskey
- CAFC Nuijten Decision