From Telegraphs to Content Protection: the Evolution of Signals as Patentable Subject Matter Under 35 U.s.c. § 101

• Publication year: 2007

Scott Bloebaum⁰

The patentability of communication signals under 35 U.S.C. § 101 first came before the Supreme Court in relation to Samuel Morse's telegraph. Contrary to the Court's ruling in O'Reilly v. Morse, however, the Federal Circuit recently held in In re Nuijten that useful, man-made signals are unpatentable because they do not fit within any of § 101's enumerated invention categories. As this Comment argues, the holding in Nuijten is based on artificial, overly narrow, and self-contradictory distinctions that are inconsistent with the expansive interpretation of § 101 mandated by the Court in Diamond v. Chakrabarty and Diamond v. Diehr. The holding in Nuijten also conflicts with the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS"), and is likely to impact substantive rights of inventors and frustrate important goals of patent reform, a current priority of both Congress and the executive branch.

I. Introduction

Samuel B. Morse, a Yale-educated portrait painter, built his first telegraph machine in 1835 in his spare time from his position as a professor of art at New York University.¹ Although he did not succeed in making the telegraph work over a significant distance until 1838, Morse applied for his first patent on the telegraph in 1837, which was granted as U.S. Patent No. 1647 in 1840.² After receiving a grant from Congress in 1842 to develop the invention, Morse finally crossed the threshold of fame in 1844 when he transmitted the now-famous "What hath God wrought" message from the U.S. Supreme Court chambers in Washington, D.C., to his assistant in Baltimore.³ Morse's original patent was reissued with amendments in 1846 and 1848.⁴

Imitation and infringement followed as others attempted to exploit Morse's invention by installing telegraph systems across the United States.⁵ Morse responded through the courts, filing his first infringement suit in 1849 against Henry O'Reilly, who had installed a telegraph system in Kentucky and Tennessee in 1845.⁶ After the circuit court found Morse's patent to be valid and infringed,⁷ O'Reilly appealed to the Supreme Court which heard O'Reilly v. Morse⁸ in 1853. Although the Court held that Morse's claim⁹ to all use of electromagnetic power distance communication was overly broad,¹⁰ it upheld a claim for a "system of signs . . . for telegraphic purposes."¹¹ This decision generally is considered the first instance of a signal being found patentable.¹²

Now fast-forward to the present, where advances such as the transistor, the integrated circuit, and digital computing and communications have relegated the telegraph to the role of a museum artifact. These advances have facilitated the creation of the Internet, a worldwide communications network through which the public can share many different types of information almost instantaneously. While a benefit to society in general, the Internet's speed and ubiquity presents many challenges to copyright holders by enabling Internet users to propagate content cheaply, easily, and widely. Copyright holders have responded to these challenges in a variety of ways, notably through the use of content-protection techniques generally known as digital rights management ("DRM").¹³ While DRM takes many different forms, the particular form of interest in this discussion is digital watermarking. In digital watermarking, a secondary data signal containing copyright or security information is embedded in a primary data signal containing multimedia content.¹⁴ With knowledge of the watermark, devices receiving a file containing the primary data signal can detect the presence, absence, or modification of the secondary watermark signal and respond appropriately by protecting the content carried on the primary data signal.¹⁵

Just like Morse's telegraph signals in O'Reilly, digital watermark signals reached a nexus with patent law in the recent case of In re Nuijten.¹⁶ In this case, the Federal Circuit considered the familiar question of whether a signal is patentable subject matter under 35 U.S.C. § 101.¹⁷ In contrast with the Supreme Court in O'Reilly, the court in Nuijten—despite having the benefit of 150 years of precedent and experiencing firsthand the recent technological revolution in computers and communications— narrowly construed § 101 and held that signals are per se unpatentable because they do not fall into any particular category of invention enumerated in the statute.¹⁸ This Comment argues that the majority in Nuijten created artificial, overly narrow, and self-contradictory distinctions between patentable and unpatentable subject matter under § 101. These distinctions are inconsistent not only with the controlling Supreme Court interpretations of § 101, but also with other recent Federal Circuit and Supreme Court case law and Congress's expressed intent behind the patent statutes. Furthermore, by elevating form above substance, the Nuijten opinion arguably places unnecessary burdens on both patent applicants and the U.S. Patent and Trademark Office ("USPTO"), thereby frustrating important goals of patent reform, a current priority for both Congress and the executive branch.

Part II of this Comment presents background material including the judicial interpretation of § 101, the definition of a "signal" and its relationship to computer programs, strategies for claiming inventions involving signals, and a brief history of case law on patentability of signals up to and including Nuijten. Part III presents a detailed analysis of the majority and dissenting opinions in Nuijten in view of the background material discussed in Part II as well as the recent Supreme Court decision in KSR International Co. v. Teleflex, Inc.¹⁹ Part III then discusses how the patentability doctrine in Nuijten aligns with European patent law and Congress's intent behind the legislation implementing the TRIPS agreement. The last section of Part III assesses how the holdings of Nuijten are likely to impact the rights of inventors, the important goals of patent reform, or perhaps both. Finally, Part IV summarizes the information and analysis presented in Parts II and III and briefly discusses a new case²⁰ before the Federal Circuit that eventually may impact the holdings of Nuijten.

II. Background

The Constitution grants Congress broad powers to enact laws that "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."²¹ Congress first responded to this grant by enacting the Patent Act of 1790, which enabled the executive branch to grant a patent to "any person . . . [who has] invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used."²² This initial statute further emphasized that the granting committee²³ must find the invention or discovery "sufficiently useful and important" as a prerequisite to granting the patent.²⁴ Congress amended this statutory language several times including significant changes in 1793, 1836, 1870, and most recently, 1952.²⁵

The current statutes governing the granting of patents are contained in various sections of title 35,²⁶ but the main requirements for patentability are found in four specific sections. First, § 101 specifies the scope of patentable subject matter: "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."²⁷

The most important "conditions and requirements" mentioned in § 101 are those found in §§ 102, 103, and 112. Section 102 sets forth a number of conditions related to prior public knowledge, sale, use, and patenting of an invention that must be met in order for the invention to be considered "novel" and thus patentable.²⁸ Furthermore, § 103 requires that an invention be "non-obvious" in order to be patentable.²⁹ Finally, § 112 requires the inventor to describe his or her invention to a degree that will "enable any person skilled in the art to which it pertains . . . to make and use" the invention.³⁰ This requirement has been referred to as the patent holder's consideration in the patent bargain.³¹

A. Judicial Interpretation of 35 U.S.C. § 101

While all of the statutory sections mentioned above contain important requirements for patentability of an invention, § 101 is arguably the most important because it is the initial door through which an applicant must pass.³² If this door is too narrow or restrictive, the limitations or restrictions of §§ 102, 103, and 112 become almost irrelevant. On the other hand, courts have long been wary of opening the door too widely at the risk of removing from the public domain the "basic tools of scientific and technological work."³³ Consequently, courts have continuously struggled to define the scope of patentable subject matter under § 101, and as a result two conflicting viewpoints have emerged from Supreme Court and Federal Circuit case law, as discussed in this section below.

The telegraph in O'Reilly provided an initial opportunity for the Supreme Court to define the bounds of patentable subject matter. While the Supreme Court allowed Morse's patent claim for the "system of signs," the majority opinion held that the claim covering the "use of the motive power of the electric or galvanic current . . . for marking or printing intelligible characters, signs, or letters, at any distances" was overly broad because it attempted to claim a principle of nature.³⁴ On the other hand, the dissent in O'Reilly would have allowed that same claim on the basis that the invention made an existing law of nature "the servant of man . . . [applied] to the perfecting of a new and useful art."³⁵ The Court later clarified this distinction in Dolbear v. American Bell Telephone Co.³⁶ by holding...