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Confusion - medium vs expression | 367 comments | Create New Account
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Confusion - medium vs expression
Authored by: Anonymous on Tuesday, March 19 2013 @ 04:24 PM EDT

IANAL: but I think there's a touch of confusion in there.

The "music file" does not have to be physical. But the expression of it needs to be "fixed in a medium". Of which said medium is physical.

Consider music upon the old magnetic tape as a good example. The physical medium is the magnetic tape. It's altered with regards which parts of it are magnetized to what extent. Causing a pattern to form. Of which pattern affects the electronics. Which then produce sound.

Vinyl ecords are the same with the exception the pattern is in the scratches.

The "fixed in a medium" is the physical part. However, the expression itself is abstract.

That raises an interesting realization:

    Copyright was designed to protect a specific physical expression of an abstract.
    Patent was designed to protect a specific physical implementation of an abstract.
Of course... neither is supposed to protect the abstract itself: the idea.

To protect the idea instead of the physical expression/implementation is a perversion of the Laws and the exchange they were meant to provide.

RAS

[ Reply to This | Parent | # ]

On the patent front - In Re Nuijten (CAFC, 2007) holding transitory signals to be nonstatutory
Authored by: macliam on Wednesday, March 20 2013 @ 08:28 PM EDT

Those who have followed patent cases at the Federal Circuit might well have concluded that anything and everything is patent-eligible subject matter under Section 101, so far as the Federal Circuit is concerned.

However there is a significant exception to the Everything is Patent-Eligible Doctrine: transitory signals. The relevant case is I n Re Nuijten. The majority consisted of Judges Gajarsa (who wrote the opinion for the court) and Moore. Judge Linn dissented.

The ineligible claims are drawn to transmitted signals that incorporate 'watermarks'.

At the PTO, this case is regularly cited to reject so-called Beauregard claims whose scope extends to signals transmitted over the Internet.

Note however that, in the case of Nuijten, the majority opinion included the following:

Thus, 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.

(CAFC, 2006-1371, p.6)

The attention of the Court was thus directed to the claims to the signals themselves:

Claim 14 of Nuijten’s application is the only independent claim of the four rejected by the PTO. It reads:
A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.
(emphasis added). Claims 22, 23, and 24 depend on Claim 14, respectively adding requirements that the embedded data be a watermark, that the signal be a video signal, and that the signal be an audio signal.

The opinion moves on to discuss claim construction, which was in dispute between Nuijten and the PTO. The discussion seems worthy of full quotation (to exhibit how some CAFC judges address questions of patent-eligibility):

The claim construction dispute between Nuijten and the PTO turns on a somewhat esoteric and metaphysical point, namely: are the claims at issue limited to covering only physical instances of signals, or do they also cover intangible, immaterial strings of abstract numbers? The PTO suggests that “claim 14 can be read to claim a signal that is merely data”—that is, merely numerical information without any physical embodiment. Nuijten disagrees, arguing that “a signal must have sufficient physical substance to be discerned and recognized by a recipient.” That is, a signal can be sensed and received by some physical apparatus, if not directly by a person.
Nuijten’s position on this issue is correct in a limited way. A “signal” implies signaling—that is, the conveyance of information. To convey information to a recipient a physical carrier, such as an electromagnetic wave, is needed. Thus, in order to be a “signal,” as required by the claim, some carrier upon which the information is embedded is required. See Arrythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1059 (“The view that there is nothing necessarily physical about ‘signals’ is incorrect.” (quotation marks omitted)).
However, while the claims are limited so as to require some physical carrier of information, they do not in any way specify what carrier element is to be used. The only limitations in Claim 14 address the signal’s informational content. Specifically, the signal must encode some supplemental data, it must have been encoded according to a “given encoding process,” and a sample, or single data point, located before the location of the supplemental data must be different from the original. The text of the claims is not limited by any specified physical medium, nor do the dependent claims add any physical limitations. They again require only that the signal carry certain information—a watermark, video, or audio. Therefore, any tangible means of information carriage will suffice for all of the claims at issue. Nuijten’s claims can of course be embodied by conventional, known means, such as electrical signals, modulated electromagnetic waves, and pulses in fiber optic cable. So long as some object or transmission carries the information specified by Nuijten’s claim, it falls within that claim’s scope regardless of its physical form. In summary, some physical form for the signal is required, but any form will do, so long as a recipient can understand the message—the nature of the signal’s physical carrier is totally irrelevant to the claims at issue.

Moving on to the statutory categories:

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.

A nice broad holding uncharacteristic of the CAFC when it comes to patent-ineligibility!. To get there, the majority have to tiptoe quietly and discreetly past the State Street hydra.

Our inquiry here, like that of the Board, will consider whether a transitory, propagating signal is within any of the four statutory categories: process, machine, manufacture, or composition of matter. Before embarking on an analysis considering each of the four categories, we must address a prior statement of this court which Nuijten argues forecloses such an analysis. In State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1375 (Fed. Cir. 1998), we noted that “[t]he question of whether a claim encompasses statutory subject matter should not focus on which of the four categories of subject matter a claim is directed to—process, machine, manufacture, or composition of matter—but rather on the essential characteristics of the subject matter, in particular, its practical utility.” However, we do not consider this statement as a holding that the four statutory categories are rendered irrelevant, non-limiting, or subsumed into an overarching question about patentable utility. Indeed, State Street recognized that “the [claimed] subject matter must fall into at least one category of statutory subject matter,” id. at 1375 n.9, and specifically found that the claim at issue was directed to a machine, id. at 1375. In telling courts where they “should not focus” their analysis, State Street was advising not to be concerned about debates over “which of the four categories,” id. (emphasis added), subject matter, falls into—that is, not to be overly concerned with pigeonholing subject matter once the court assures itself that some category has been satisfied. If, for instance, a court determines that a claim encompasses either a process or machine but is unsure which category is appropriate, it need not resolve the ambiguity. The claim must be within at least one category, so the court can proceed to other aspects of the § 101 analysis. See State Street, 149 F.3d at 1371 (“[I]t is of little relevance whether claim 1 is directed to a ‘machine’ or a ‘process.’”). State Street sets forth a sound premise, but this case presents a different situation. The essence of the dispute between the parties is whether a transitory signal is covered by any statutory category. The four categories together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful. We must therefore determine whether any of the four categories encompass the claims on appeal, and it is appropriate to consider each of the categories in turn.

State Street sets forth a sound premise”—one doesn't know whether to laugh or cry—“but this case presents a different situation.” When Judge Rich, in State Street, was punching gaping holes through the already ineffectual “coarse eligibility filter” of Section 101, he would presumably have been startled to discover that it would be possible to claim anything all that could not plausibly have some affiliation to at least one of the four categories. One wonders at the metaphysical sensibilities of a judge is unable to tell the difference between a ‘process’ and a ‘machine’, but can with a straight face maintain that some claim could be drawn to some sort of process/machine chimaera that is neither pure process nor pure machine.

Nevertheless, there is an accompanying footnote:

Of course, a claim that is so unclear as to be ambiguous about whether it covers a process or a machine might be invalid for failure to “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention,” 35 U.S.C. § 112 ¶ 2, but claim definiteness is a requirement separate from patentability under § 101.

Is it truly the case that ‘claim definiteness is a requirement separate from patentability under § 101’?. Only if you accept the doctrine of the Three Doors. But the Three Doors is grounded only on Judge Rich's construction of section 101, not on section 101 itself. It is worth noting that Justice Breyer repudiated the Three Doors Doctrine in Mayo v. Prometheus, when it was recommended to the Supreme Court in the Government brief.

Once past State Street, the majority can consider each of the four categories in turn to determine whether the category is capacious enough to hold ‘signals’. The consideration of ‘process’ yields paydirt in the form of useful, sensible dicta:

The Supreme Court and this court have consistently interpreted the statutory term “process” to require action. See Gottschalk v. Benson, 409 U.S. 63, 70 (1972) (“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.” (emphasis added) (quoting Cochrane v. Deener, 94 U.S. 780, 788 (1876))); NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1316 (Fed. Cir. 2005) (“A process is a series of acts.” (quoting Minton v. Nat’l Ass’n of Sec. Dealers, Inc., 336 F.3d 1373, 1378 (Fed. Cir. 2005))); In re Kollar, 286 F.3d 1326, 1332 (Fed. Cir. 2002) (“[A] process … consists of a series of acts or steps …. It consists of doing something, and therefore has to be carried out or performed.”). Nuijten’s argument that his claims might be covered by the “process” category even if they do not recite acts therefore lacks merit.

There is more on processes, but the majority soon dispatch the ‘process’. Dispatching the ‘machine’ presents little difficulty and is soon accomplished. The ‘manufacture’ is a more formidable foe, but Diamond v. Chakrabarty supplies a handy weapon:

The question of whether the claimed signals are “manufactures” is more difficult. They are man-made, in the sense of having been encoded, generated, and transmitted by artificial means. However, artificiality is insufficient by itself to render something a “manufacture.” The Supreme Court has defined “manufacture” (in its verb form) as “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) (emphasis added) (quoting Am. Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931)).

There are further citations, and the majority provide a lengthy footnote to dismiss points made by the dissent. However the majority have a more accurate understanding of the notion of ‘tangibility’ than did Judge Rich in State Street when he held that a calculated account balance represented a “useful, concrete and tangible result”:

These definitions address “articles” of “manufacture” as being tangible articles or commodities. A transient electric or electromagnetic transmission does not fit within that definition. While such a transmission is man-made and physical—it exists in the real world and has tangible causes and effects—it is a change in electric potential that, to be perceived, must be measured at a certain point in space and time by equipment capable of detecting and interpreting the signal. In essence, energy embodying the claimed signal is fleeting and is devoid of any semblance of permanence during transmission. Moreover, any tangibility arguably attributed to a signal is embodied in the principle that it is perceptible—e.g., changes in electrical potential can be measured. All signals within the scope of the claim do not themselves comprise some tangible article or commodity. This is particularly true when the signal is encoded on an electromagnetic carrier and transmitted through a vacuum—a medium that, by definition, is devoid of matter. Thus, we hold that Nuijten’s signals, standing alone, are not “manufacture[s]” under the meaning of that term in § 101.

Note the last point. Great to see some physics! Indeed there is a footnote discussing wave-particle duality in quantum mechanics, and dismissing the argument that, under that theory, the electromagnetic waves could be considered as being equivalent to streams of photons, and thus as being ‘tangible’. Great stuff! (N.B., photons have zero mass, so seem hardly ‘tangible’. Moreover can anyone envisage ‘touching’ something moving at the speed of light.) Moreover the final point illustrates an important principle of claim construction: if a claim reads on patent-ineligible subject-matter, or on prior art, then the claim is invalid. In this case, the fact that the claim reads on electromagnetic fields in a vacuum that are not tangible, and thus cannot be ‘manufactures’ damns the possibility that ‘signals’ are ‘manufactures’.

To press the point home, the majority have another footnote dismissing the dissent:

The dissent perpetuates a common mischaracterization of the holding in Alappat, 33 F.3d at 1544 by suggesting that we have conflated the “result” of the “useful, concrete, and tangible result” inquiry with a “thing” that must be useful, concrete and tangible. The dissent is wrong. In Alappat, we decided the question of determining whether a machine, including a number of digital electronic circuits that performed mathematical operations on electrical signals (a function we deemed “true of all digital electrical circuits”) was an “abstract idea” because the function performed by the machine was, in essence, a mathematical algorithm. Alappat, 33 F.3d at 1544. We concluded that the combination of digital electronic circuits was “not a disembodied mathematical concept which may be characterized as an “abstract idea,” but rather a specific machine to produce a “useful, concrete, and tangible result.” Id. (emphasis added). We reiterated these principles in finding that the machine claimed in State Street was not an abstract idea. See State Street, 149 F.3d at 1368. We have even considered the “useful, concrete, and tangible result” factors in determining whether a claim to a process was patent-eligible. See AT&T Corp. v. Excel Commc’ns, 172 F.3d 1352, 1358 (Fed. Cir. 1999). The dissent agrees that the claimed signal is not a “machine.” We have never held that a manufacture is ever required to produce any result. Thus, the “useful, concrete, and tangible result” inquiry is simply inapplicable here.

There is a further footnote discussing the applicability of In Re Hruby (concerning a design patent claiming an aethetically-pleasing water fountain), and O'Reilly v. Morse, an important 19th century Supreme Court case.

Under the doctrine of stare decisis, the majority cannot set aside either Alappat or State Street. The most they can do is either to distinguish the case at hand from the binding precedents, or else to argue that the alleged precedents are inapplicable.

The final foe, ‘compositions of matter;’ can be subdued with a single short paragraph. The majority cna then finally dismiss Nuijten's claims drawn to signal as being drawn to patent-ineligible subject matter.


______


There is a substantial dissent from Judge Linn. I have only skimmed it. I only set out in this posting to write a short comment of a paragraph or so, drawing attention to In Re Nuijten, but when I looked at the opinion, I got sucked into it, and found myself working through it in more detail. The impression I get is that Judge Linn's dissent appears, at least superficially, to be the most cogent and reasoned account of the approach taken towards Section 101 of the patent statute set out by any of the apostles of Judge Rich. I must work through it some time, but not now!


______


A request for a rehearing en banc was denied. However three judges dissented from the denial of a rehearing en banc. Those who have followed Federal Circuit cases would not be surprised to learn that the dissenters were Judges Linn, Newman and Rader.


______


The oral argument in this case was discussed on PatentlyO.

PatentlyO also has a posting on the denial of an en banc rehearing of the case, which summarizes Judge Linn's objections

[ Reply to This | Parent | # ]

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