In the October 2007 issue of Venable’s IP News & Comment, we reported that the Court of Appeals for the Federal Circuit (CAFC) rendered a significant decision In re Nuijten6 holding that artificially created signals do not fall within the four categories of patentable subject matter. As articulated in § 101 of the Patent Act, an invention must be a “process, machine, manufacture, or composition of matter” in order to be considered for patent protection. The Nuijten invention at issue involves a signal that functions as a watermark on recordings and provides less sound distortion than current technology. Although Nuijten presented strong arguments that the signal was a “manufacture,” the court disagreed. In response to this decision denying patent protection to the signal, Nuijten filed a petition for rehearing en banc and a petition for panel rehearing.

On February 11, 2008 in a 9 – 3 decision, the CAFC denied both Nuijten petitions. Circuit Judge Linn writing for the dissenting tri-factor stated that the “decision conflicts with our own precedents as well as those of the Supreme Court” and “our predecessor court’s decision in In re Breslow forecloses the majority’s conclusion that something ‘transient’ or ‘fleeting’ cannot constitute a ‘manufacture’ under 35 U.S.C. § 101 (citations omitted).”7 The dissent draws attention to the court’s dichotomy in affirming the Patent and Trademark Office’s rejection of the signal simpliciter claims and allowance of the storage medium claims containing the signal simpliciter. Judge Linn concludes that the “distinctions make no practical sense and are poorly supported by precedent.”8 Given the denial of the hearing at the Federal Circuit, it is possible the Supreme Court will grant certiorari. This signal may soon leave its mark once and for all.