35 USC §101 Electrical Signal Patent-Eligibility Test Case

must an invention be “tangible”?

In re Nuijten, No. 06-1301, implicates issues of whether an electrical signal is a patent-eligible ‘manufacture’ under 35 USC § 101, and whether patent-eligibility requires that subject matter be “tangible”. The case is still in the briefing stage and is not expected to be argued until early 2007. One of the claims covers “[a] signal with embedded supplemental data…”. (Claim 14 is reproduced below.)

Assuming that the Federal Circuit at makes a definitive ruling in Nuijten – either for or against a ruling of patent-eligibility, there is a strong possibility that if the case reaches the Supreme Court that this may be the first vehicle to probe the unease shown by at least three members of the Court over the scope of patent-eligibility as per the dissent from the dismissal of the Metabolite case (excerpted below). Review of Nuijten by the Supreme Court would also open the door for reconsideration of State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (C.A.Fed.1998).

Whether the Court would grant certiorari will in large measure depend upon the manner in which the Federal Circuit treats the case. Will it issue a broad or narrow ruling? Will it issue a unanimous ruling?

Interestingly, Intellectual Property Owners, Inc., has filed a brief amicus curiae strongly supporting patent-eligibility.

Claim 14: “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.”

Metabolite Case:

Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 126 S.Ct. 2921, 2927-28 (2006)(Breyer, J., dissenting from dismissal, joined by Stevens, Suter, JJ.)

“[Patentees] point to this Court’s statements that a ‘process is not unpatentable simply because it contains a law of nature,’ Flook, 437 U.S., at 590; see also Gottschalk, 409 U.S., at 67, and that ‘an application of a law of nature … to a known … process may well be deserving of patent protection.’ Diehr, 450 U.S., at 187. .

[Respondents argue that] claim 13 is a patentable ‘application of a law of nature’ because, considered as a whole, it (1) ‘entails a physical transformation of matter,’ namely, the alteration of a blood sample during whatever test is used, Brief for Respondents 33 (citing Cochrane v. Deener, 94 U.S. 780, 788 (1877); Gottschalk, supra, at 70, 93 S.Ct. 253), and because it (2) ‘produces a ‘useful, concrete, and tangible result,’ ‘namely, detection of a vitamin deficiency, [Patentee’s brief,] 36 (citing State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373 (C.A.Fed.1998)).

. [T]o use virtually any natural phenomenon for virtually any useful purpose could well involve the use of empirical information obtained through an unpatented means that might have involved transforming matter. Neither Cochrane nor Gottschalk suggests that that fact renders the phenomenon patentable. See Cochrane, supra, at 785 (upholding process for improving quality of flour by removing impurities with blasts of air); Gottschalk, supra, at 71-73 (rejecting process for converting numerals to binary form through mathematical formula).

“Neither does the Federal Circuit’s decision in State Street Bank help [patentees]. That case does say that a process is patentable if it produces a ‘useful, concrete, and tangible result.’ 149 F.3d, at 1373. But this Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary. The Court, for example, has invalidate

About Harold Wegner (756 Articles)



Foley & Lardner LLP


Harold C. Wegner is a partner in the international law firm of Foley & Lardner LLP, where he is actively engaged in cutting edge domestic and international patent issues. Domestically, Prof. Wegner focuses upon appellate patent issues as well as reexamination and other complex matters at the U.S. Patent and Trademark Office. Globally, Prof. Wegner crafts strategies for multinational and particularly Chinese and Japanese patent enforcement and management.

Prof. Wegner is the former director of the Intellectual Property Law Program at the George Washington University Law School, where he had been a professor of law; he continues his affiliation with George Washington as member of the Dean’s Advisory Board. He has been a visiting professor at Tokyo University and spent several years as a Mitarbeiter at the Max Planck Institute for Intellectual Property Law in Munich followed by service as a Kenshuin at the Kyoto University Law Faculty.

Prof. Wegner holds degrees from Northwestern University (B.A.) and the Georgetown University Law Center (J.D.). He started his career as a patent examiner. In 1980 he founded his own law firm; in 1994 he merged his practice into the Foley firm.