Ex Parte Mewherter Wrong Because Nuitjen Wrong (Why Judges and Clerks should consult scientists and engineers before talking about science or engineering)
The USPTO designated Ex parte Mewherter as a precedential decision with respect to 35 U.S.C. § 101. The opinion holds that Beauregard claims are not patent eligible because they could encompass transitory signals, and that transitory signals are unpatentable under the Nuijten decision. The flaw in Mewherter is that Nuitjen is wrong.
Nuitjen rejects computer readable medium claims because a computer readable medium could be a “transitory signal.” The Court assumed, incorrectly, that signals are transitory because they only last for a short period of time and therefore aren’t patent eligible. The error in their reasoning underscores that Judges and their clerks ought to consult with engineers or scientists before making scientifically unsound decisions. Here’s the error in their reasoning:
What’s the oldest thing in the universe? 13.7 year old signals (e.g., radio waves, light that has been stretched into microwaves) that were created during the Big Bang. Those signals, which have, by definition, existed since the beginning of time, are the exact opposite of transitory. Indeed, when compared to signals, seemingly tangible things that purportedly last forever (e.g., iron, cars, taxes) are in fact quite transitory. If you leave your car beside the ocean, it will dissolve. However, the signals from the Big Bang will still exist. Which is transitory?
How do signals from the Big Bang relate to Nuitjen? Well, no-one is going to claim anything dealing with the Big Bang due to inventorship issues, so let’s consider slightly less ancient signals. Consider Voyager. How long does it take for a radio signal to reach earth from Voyager? As of 2013, signals from Voyager 1 take nearly 16 hours to reach Earth. Is 16 hours transitory? According to the Federal Circuit, the fact that the radio waves are signals makes them transitory, even if they last for 16 hours. Yet any chemical reaction that produces a chemical that lasts for any period of time, however short, is not transitory. How can a signal that last sixteen hours, causes a change in a receiver, and causes a transfer of energy be transitory but a fleeting movement of an electron in an isotope be non-transitory?
The Federal Circuit reasons that in the chemical reaction there has been a transformation of matter, and that a transformation of matter, no matter how fleeting, produces patent eligibility. Once again, Judges and clerks ought to consult scientists or engineers before making decisions like this. Signals are transmitted by waves. Waves are oscillations accompanied with a transfer of energy. The oscillations and transfer of energy cause a transformation of matter (e.g., from a low energy state to a high energy state) that can last much longer than the fleeting chemical reactions that are patent-eligible. The transformation of matter may, in fact, last forever, be detectable forever, and be able to produce results forever, while the momentary isotope cannot actually be captured. Which ought to be patentable?
Let’s examine one difficult to reconcile effect of Nuitjen and now Mewherter. Consider a software producer who distributes an executable that when run clearly infringes a patented process that is protected with a valid Beauregard claim. If the software producer sends a CD with the executable from Canada to the United States, the software producer would be an infringer because the computer readable medium is “non-transitory.” But if the software producers allows users to download the exact same executable over the Internet, then the software producer is not a direct infringer because the computer readable medium used to distribute the software is “transitory”. Even though propagating the signal causes a physical transformation in the transmission medium, even though downloading the signal causes a physical transformation of the memory or disk of the receiving machine that outlives the signal, and even though the exact same result occurs (e.g., user has infringing software), the software producer is still not an infringer. Even if the signal were sent to Voyager, where it would last for at least 16 hours, it would still be transitory according to the Federal Circuit. Even if the signal missed Voyager and went off into space to last FOREVER, the software producer would still not be an infringer because the signal is “transitory.”
So, the message delivered by Nuitjen, and reinforced in Mewherter is this:
“Dear software producers, you are free to send clearly infringing executables into the United States and avoid liability for direct infringement.” (The Federal Circuit, 2013)
