La United States Court of Appeals of the Federal Circuit a statué le 20 septembre dernier dans IN RE PETRUS A.C.M. NUIJTEN qu’un signal de transmission tel qu’un signal radio, un signal électrique circulant dans des fils, et une impulsion lumineuse circulant dans des fibres optiques ne constituait pas de la matière brevetable.
La revendication rejetée était la suivante:
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
Selon le Juge:
[W]hile 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. . . . [S]ome physical form for the signal isrequired, but any form will do, so long as a recipient can understand the messageâ€”the nature of the signal’s physical carrier is totally irrelevant to the claims at issue. . . .
The claims on appeal cover transitory electrical and electromagnetic signals propagating through some medium, such as wires, air, or a vacuum. Those types of signals are not encompassed by any of the four enumerated statutory categories: “process, machine, manufacture, or composition of matter.”
. . . The presence of acts recited in the claim does not transform a claim covering a thingâ€”the signal itselfâ€”into one covering the process by which that thing was made. Since a process claim must cover an act or series of acts and Nuijten’s signal claims do not, the claims are not directed to a process.
. . . A transitory signal made of electrical or electromagnetic variances is not made of “parts” or “devices” in any mechanical sense. While such a signal is physical and real, it does not possess concrete structure in the sense implied by these definitions. No part of the signalâ€”the crests or troughs of the electromagnetic wave, or perhaps the particles that make it up (modern physics teaches that both features are present simultaneously) is a mechanical “device” or “part.” A propagating electromagnetic signal is not a “machine” as that term is used in Â§ 101. . . .
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)).5 The term is used in the statute in its noun form, Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367, 1373 (Fed. Cir. 2003), and therefore refers to “articles” resulting from the process of manufacture. The same dictionary the Supreme Court relied on for its definition of “manufacture” in turn defines “article” as “a particular substance or commodity: as, an article of merchandise; an article of clothing; salt is a necessary article.” Century Dictionary 326 (William Dwight Whitney ed., 1895) (emphasis in original).
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 physicalâ€”it exists in the real world and has tangible causes and effectsâ€”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.6 Moreover, any tangibility arguably attributed to a signal is embodied in the principle that it is perceptibleâ€”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.7 This is particularly true when the signal is encoded on an electromagnetic carrier and transmitted through a vacuumâ€”a medium that, by definition, is devoid of matter.8 Thus, we hold that Nuijten’s signals, standing alone, are not “manufacture[s]” under the meaning of that term in Â§101. . . .
. . . A signal comprising a fluctuation in electric potential or in electromagnetic fields is not a “chemical union,” nor a gas, fluid, powder, or solid. Nuijten’s signals are not “composition[s] of matter.”