The Curse of the Storage Mediums That Didn’t Foreclose Signals

If you thought you understood patent eligibility of software patents after Alice Corp., think again. Those who draft software patents should be sure to include “non-transitory” when referring to storage mediums in both the specification and the claims.

In a precedential Patent Trial and Appeal Board (PTAB) opinion decided in August, Ex Parte Mewherter, IBM claimed the concept of software that converted a slide from a slide show application into a raster image with a title in a nonpresentation application.  The Examiner deemed claims directed toward this software embedded in a computer readable storage medium patent ineligible because the claimed storage medium could encompass transitory media.  Specifically, IBM was claiming a machine-readable storage medium and during prosecution and appeal argued that its storage medium was for permanently storing information (i.e. non-transitory) as opposed to a machine-readable medium that could include transitory media such as signals.  The Examiner would have bought this, were it not for the fact that the claims did not specifically include a non-transitory limitation and the specification did not expressly define “machine-readable storage medium” as excluding transitory media such as signals.

The PTAB agreed with the Examiner, finding the claim at issue patent ineligible because (1) the common understanding of the claimed storage limitation did not necessarily exclude signals or other transitory media; and (2) the specification failed to define “storage medium” as excluding signals/non-transitory media. Accordingly, the broadest reasonable claim construction of IBM’s storage medium could include signals or transitory media.  This was the nail in IBM’s proverbial coffin.

Transitory media and signals have long been a thorn in the side of applicants looking to claim machine-readable storage mediums (which in recent years has increased for software applicants seeking to satisfy the machine-or-transformation test post-Bilski).  Software applicants have few options but to affirmatively disclaim transitory media in their disclosure by adding the non-transitory limitation into the claims as well as the specification.  For example, if “storage medium” is described in the specification, Mewherter makes fairly clear that transitory media (i.e. signals) must be excluded to avoid patent eligibility rejections notwithstanding the fact that this has little to do with the substance or pioneering nature of an invention.  Since signals are fairly pervasive in modern technology, practitioners should proceed cautiously in making sure these limitations are included in applications as filed.

If you are confused by this rule, you are in good company.  The U.S. Court of Appeals for the Federal Circuit (CAFC) set forth this transitory media axiom in In re Nuijten where it established that signals encoded in any particular manner were ineligible subject matter even if the invention was just the sort society seeks to encourage with a patent system and even if the signal was tangible.  Why? Because the signal was transitory as opposed to being non-transitory as required by the CAFC (i.e. not by statute).

Nuijten and Mewherter leave on the table the question: If IBM had claimed a storage medium with a more pioneering invention such as Chakrabarty’s oil eating organisms or Edison’s incandescent lightbulb, would the PTAB have found a way to look past Nuijten to find eligibility?

Regardless, in Mewherter, if there had been express language in the specification or claims that excluded transitory media, the PTAB concedes that the invention would likely be eligible.  Accordingly, IBM has heeded the PTAB’s advice and amended its claims, meaning, an answer insofar as these facts is not far off.

Until then, the larger question as to the sensibility of this transitory versus non-transitory distinction remains.