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No en banc rehearing for case holding "signals" not patentable subject matter
February 11, 2008

In a precedential order today, the Federal Circuit denied a petition for rehearing en banc in In re Nuijten. In that case, a panel of the court held that claims drawn to a "signal" did not fall into any of the statutory categories of patentable subject matter and were thus unpatentable under § 101. Judge Linn dissented from that decision, applying the § 101 framework from Diamond v. Chakrabarty, and would have held the claims to be drawn to statutory subject matter. You can read our full post about the panel's decision here.

Today Judge Linn authored the dissent again, this time joined by Judges Newman and Rader. As in his previous dissent, Judge Linn referred to Diamond v. Chakrabarty. He argued that under Chakrabarty, the signals claimed here were patentable subject matter. Not only does the decision conflict with Chakrabarty, he also asserted that a CCPA case, In re Breslow, also conflicted with the panel's decision. There, the court held that claims directed toward chemical compounds that were known to exist but could not be isolated because they were too unstable were considered "article[s] of manufacture" as defined by § 101. As stated by the CCPA:

It appears to us that the PTO would read into § 101 a requirement that compositions of matter must be stable—which is a relative term to say the least. We see no good reason to do so. It would appear that many compounds may find their greatest or even their sole utility in the fact that they are not stable. Certainly, in the invention at bar there is no reason to have the claimed compounds in a stable form so they can be bottled or tanked or otherwise stored. The preferred manner of using them is to produce them in situ, whereupon they exhibit their cross-linking activity, their only disclosed utility.

Here, the signals were "fleeting" or "transient," but Judge Linn argued that under Breslow, this did not matter for purposes of § 101.

Further, he argued the distinction between claims that were found to be drawn to patentable subject matter, namely claims to storage medium containing the signals at issue, and claims to the signals themselves, was "artificial at best."

It appears likely that a petition for certiorari to the Supreme Court will be filed in this case. This is further supported by the fact that in its last case dealing with § 101, Laboratory Corp. v. Metabolite Laboratories, Inc., the Court dismissed the petition for certiorari as improvidently granted, a decision that sparked three justices to dissent, showing that the Court may be looking for a case that presents a vehicle to rein in the scope of § 101.

To read the order in In re Nuijten, click here.

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