Semiotics 101: Taking the Printed Matter Doctrine Seriously

ideas bars the patenting of a claim that is too broad because its scope is defined only by an abstract idea. For example, in O’Reilly v. Morse, Morse’s famous claim eight impermissibly sought to privatize all “use of . . . electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances.” 56 U.S. (15 How.) 62, 129 (1853). Every individual embodiment within Morse’s claim eight is arguably tied to a tangible, nonabstract machine (overlooking ESP), but the claim attempts to impermissibly privatize an abstract idea because the outer bounds of the claim are established with reference to an abstract idea. Here, the problem is that the language used to delineate the claim relies on an abstract idea. In contrast, in a second set of cases, the abstract-ideas exclusion seems to bar the patenting of immaterial processes such as human thought. In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“However, mental processes—or processes of human thinking—standing alone are not patentable even if they have practical application.”). Here, the claim language may be drawn very narrowly—it may describe one very specific mental process in great detail—but the “stuff” described by the claim, namely a mental process, is simply too abstract in some way to be patented. Thus, there is an ambiguity in the notion of an abstract idea: Is the impermissible abstractness located in the describing language or in the things and actions that the language describes? This ambiguity between describing language and the “stuff” described by language has parallels in many other patent law concepts. See, e.g., Collins, supra note 16, at 502–03ness located in the describing language or in the things and actions that the language describes? This ambiguity between describing language and the “stuff” described by language has parallels in many other patent law concepts. See, e.g., Collins, supra note 16, at 502–03 (noting that the notion of the “scope” of a claim in patent law can invoke either the meaning of the describing language—meaning-scope—or the size of the set of things that the language describes—thing-scope). The abstract-ideas exclusion has greater resonance with the printed matter doctrine when abstractness is taken as a property of the stuff described rather than a property of the describing language. 135. See supra notes 108–22 and accompanying text (contrasting the patentable-weight approach of the printed matter doctrine to the claim-as-a-whole approach); cf. Comiskey, 554 F.3d at 979 (holding that “a claim that involves both a mental process [that is, an abstract idea] and one of the other categories of statutory subject matter (i.e., a machine, manufacture, or composition) may be patentable under § 101”). 136. See, e.g., In re Sterling, 70 F.2d 910 (C.C.P.A. 1934) (finding that the same claims to printed matter were neither novel nor patentable subject matter). 2010] SEMIOTICS 101 1403 recorded on a substrate per se are analyzed under section 101, while claims describing printed matter on, or in combination with, conventionally patentable machines and manufactures are analyzed under either the novelty provisions in section 102 or the nonobviousness provisions in section 103. The reason for this statutory schizophrenia is likely the counterintuitive result of bringing a patentable-weight approach to patent eligibility to bear on machines and manufactures: it is awkward to recognize that a device is a patent-eligible “machine” when its mechanics are nonobvious but that the same device with labels is no longer a “machine” if the content of the labels is the only difference from the prior art. However, splitting the printed matter doctrine between section 101 and sections 102 and 103 raises more questions than it resolves. The same counterintuitive result still exists when the patentable-weight approach to patent eligibility is brought to bear on the claims that are today analyzed under section 101 because they are intuitively viewed as describing recorded information per se. A disk with specific information recorded thereon is a statutory “manufacture” when the structure of the disk is a patentable improvement over the prior art, but it is no longer a “manufacture” when it is the content of the information that differentiates the disk from the prior art. It makes no sense to shift only part of the printed matter doctrine to section 103. Furthermore, the text of section 103—unlike the text of section 101—expressly states that the nonobviousness analysis must be conducted by looking at “the subject matter as a whole.” Selectively ignoring certain limitations that differentiate a claimed invention from the prior art would therefore seem to be yet more problematic on a statutory level under section 103 than it would be under section 101. No other doctrine is administered as a hybrid of section 101 and sections 102 and 103, so the split reinforces the impression that the printed matter doctrine is the ugly duckling of contemporary patent law. C. Normative Desirability Given the doctrinal and statutory shortcomings of the printed matter doctrine, it is unsurprising that the Federal Circuit believes that “[a] ‘printed matter rejection’ . . . stands on questionable legal and logical footing.” For similar reasons, commentators have questioned the doctrine’s future viability. What is surprising, however, is that 137. See, e.g., Examination Guidelines, supra note 90, at 7481. 138. See, e.g., In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004) (applying the printed matter doctrine as a part of a section 102 novelty analysis to a claim to a kit of chemicals in combination with written instructions); In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983) (applying the printed matter doctrine as part of a section 103 nonobviousness analysis to a claim to a circular band with printed indicia). Judge Linn of the Federal Circuit has even suggested that the printed matter doctrine should be applied as part of the utility doctrine of section 101. In re Nuijten, 500 F.3d 1346, 1365–67 (Fed. Cir. 2007) (Linn, J., concurring in part and dissenting in part). 139. See supra notes 103–07 and accompanying text. 140. See supra notes 105–07 and accompanying text. 141. 35 U.S.C. § 103(a) (2006). 142. In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Gulack, 703 F.2d 1381, 1385 n.5 (Fed. Cir. 1983)) (internal quotation marks omitted). 143. See, e.g., 1 CHISUM, supra note 2, § 1.02[4], at 1-26 (“A question of interest is whether 1404 INDIANA LAW JOURNAL [Vol. 85:1379 there have been so few calls for the outright elimination of the printed matter doctrine from inventors who seek broader patent protection. There have been vocal critics— both judicial and nonjudicial—of many other historical and contemporary limits on patent-eligible subject matter. In contrast, there are no lobbyists before Congress, litigants in courtrooms, or judges at the bench arguing that the printed matter doctrine should simply be taken off the books right now. The frailty of the printed matter doctrine should, in theory, make it an easy target for any inventor and patentee who wants to internalize a larger share of the welfare benefits that her invention offers to society. Yet, there is no gathering wave of sentiment against the contemporary printed matter doctrine. There is no angry mob outside of the PTO demanding that technical diagrams or e-book files be eligible for patent protection when the content of the information conveyed is useful, novel, and nonobvious. There is a lesson to be learned from this relatively uncontroversial persistence of the core of the printed matter doctrine, despite its conceptual and statutory shortcomings. Although far from an analytical proof, the simple persistence of the printed matter doctrine strongly suggests that the doctrine restricts patentable subject matter in a manner that reflects widely shared understandings of what patent protection should be, and that it rests on normative justifications that should not be lightly dismissed. The fact that the Federal Circuit has marginalized the printed matter doctrine, but has not outright eliminated it, should be taken as a clue that the effect of the doctrine has significant normative value, even if that value has not yet been articulated with precision. In sum, the contemporary printed matter doctrine displays an odd and to what extent the traditional exception for printed matter will survive in view of court decisions that are critical of non-statutory exceptions to the four categories of patentable subject matter.”); Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 VA. L. REV. 1575, 1672 (2003) (“The Federal Circuit eliminated the long-standing rule against patenting business methods in 1998, and the related ‘printed matter’ doctrine is on uncertain footing as well.” (footnote omitted)). 144. One reason for this silence may be the relatively low economic stakes of printed matter cases involving board games and the like. See R. Carl Moy, Statutory Subject Matter and Hybrid Claiming, 17 J. MARSHALL J. COMPUTER & INFO. L. 277, 279 (1998). Another reason may be that the patent ineligibility of core printed matter claims is so intuitive and self-evidently correct that inventors realize that such claims will never issue. 145. See, e.g., In re Musgrave, 431 F.2d 882 (C.C.P.A. 1970) (criticizing and abandoning the mental steps doctrine); Donald S. Chisum, The Patentability of Algorithms, 47 U. PITT. L. REV. 959 (1986) (criticizing the exclusion of algorithms in the abstract from patent eligibility). Many amicus briefs were filed in the Supreme Court in In re Bilski by representatives of the software, biotech, and accounting industries suggesting that the Federal Circuit’s “machine-ortransformation” test interpreted patent eligibility too narrowly. See, e.g., Brief of Amicus Curiae Novartis Corp. Supporting Petitioners, Bilski v. Doll, No. 08-964 (U.S. filed Aug. 6, 2009) (arguing against restrictions on patent eligibility in biotechnology). 146. But see Andrew F. Knight, A Potentially New IP: Storyline Patents, 86 J. PAT. & TRADEMARK OFF. SOC’Y 859, 863–64 (2004) (arguing that storyline patents are eligible for patent protection because the printed matter doctrine “rests on shaky legal authority and, in any event, has been whittled away to an archaic common law has-been”). 147. Cf. Thomas F. Cotter, A Burkean Perspective on Patent Eligibility, 22 BERKELEY TECH. L.J. 855, 858 (2007) (arguing that “some of the traditional limitations on patentable subject matter . . . may yet have much to recommend them”). 148. A normative justification of what the PTO and the courts are doing when they apply the printed matter doctrine is beyond the scope of this Article. However, the justification tracks the 2010] SEMIOTICS 101 1405 amalgam of conceptual incoherence and normative acceptance, of statutory aloofness and self-evident correctness. To the extent that the printed matter doctrine is under any kind of attack today, the most common argument is not designed to expand patent-eligible subject matter by removing the restrictions on patent eligibility that are traditionally attributed to the printed matter doctrine. Rather, the argument is that the printed matter doctrine is the appendix of the patent regime: it is a superfluous doctrinal organ that no longer plays any role in restricting the scope of patent protection because all of the artifacts that it excludes from the patent regime would be excluded by the other, well-established validity doctrines—such as novelty, nonobviousness, and utility—if only they were given the chance to do their jobs. Whatever its merits when brought to bear on some of the other strands of the section 101 doctrine of patent eligibility, however, this appendix argument is unconvincing with respect to the printed matter doctrine. The printed matter doctrine has substantive bite. It restricts the set of novel, nonobvious, and useful artifacts of human ingenuity that are eligible for patent protection. Most importantly for the arguments presented in this Article, it restricts the reach of patent justification of why the knowledge conveyed by a patent disclosure must remain free for all to use qua knowledge, even during the term of a patent. See infra Part III.C (arguing that the printed matter doctrine is an implicit negative corollary of the patentee’s statutory disclosure obligations). The outcomes reached by courts in the printed matter cases can also be justified indirectly by framing the printed matter doctrine as a channeling doctrine that allocates responsibilities among different intellectual property regimes. Cf. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 34 (2003) (limiting the application of the Lanham Act to avoid creating a “species of mutant copyright law”). The “essence” of copyright, “[w]hat has distinguished copyright from other forms of intellectual property, [and] what has been at its base but not at the base of others,” is arguably “that the content of a copyrighted work has always had some nonfunctional aesthetic, informational, or entertaining qualities which are communicated to a human audience.” Pamela Samuelson, CONTU Revisited: The Case Against Copyright Protection for Computer Programs in Machine-Readable Form, 1984 DUKE L.J. 663, 749 (1984) (emphasis in original). But see id. at 753 (noting that copyrights in machine-readable computer software run counter to this rule). Perhaps copyright law, including its idea/expression dichotomy, should have the sole authority to determine the public/private balance with respect to what lies at its core, namely to the “informational . . . qualities” of the “content” that a work “communicate[s] to a human audience.” Id. at 749. For copyright law to be the final arbiter of that public/private balance, the printed matter doctrine must keep patent protection out of the mix. Cf. Dennis Karjala, Distinguishing Patent and Copyright Subject Matter, 35 CONN. L. REV. 429, 448–49 (2003) (arguing that the definition of a “useful article” in copyright law should be employed to limit the subject matter of both copyright and patent). 149. 35 U.S.C. § 102 (2006). 150. Id. § 103. 151. Id. § 101. 152. For an example of this appendix argument directed at the doctrine of patent eligibility in its entirety, see Michael Risch, Everything Is Patentable, 75 TENN. L. REV. 591, 606–09 (2008) (articulating a “rigorous patentability” standard for patent eligibility); see also Burk & Lemley, supra note 143, at 1642–44 & n.235 (arguing that the role played by the historical section 101 case O’Reilly v. Morse is today performed by the disclosure doctrines); F. Scott Kieff, The Case for Registering Patents and the Law and Economics of Present Patent-Obtaining Rules, 45 B.C. L. REV. 55, 108 (2003); Kristen Osenga, Ants, Elephant Guns, and Statutory Subject Matter, 39 ARIZ. ST. L.J. 1087, 1088 (2007) (addressing computer software in particular). 1406 INDIANA LAW JOURNAL [Vol. 85:1379 protection into technical texts and diagrams in a manner that the other validity doctrines do not. For a simple example, consider a hypothetical claim to a printed diagram that enables a doctor to diagnose a disease. A researcher discovers that the concentrations of two chemicals are inversely correlated in human blood: a high level of chemical A indicates that a patient has a low level of chemical B, and vice versa. This discovery paves the way for a new method of testing for a deficiency of chemical B: detecting a chemical B deficiency by correlating a high level of chemical A with a low level of B. Assume that the researcher seeks to claim something like “a device for determining the existence vel non of a chemical B deficiency consisting of a diagram” that encompasses the diagram illustrated in Figure 1: