No.
`
`341 TO
`Supreme (!Court of the Guiteb States;
`
`CARL M. BURNETT,
`
`Petitioner,
`
`V.
`
`PANASONIC CORPORATION, PANASONIC
`CORPORATION OF NORTH AMERICA,
`PANASONIC INTELLECTUAL PROPERTY
`CORPORATION OF AMERICA,
`
`Respondents.
`
`On Petition For A Writ Of Certiorari
`To The United States Court Of Appeals
`For The Federal Circuit
`
`PETITION FOR A WRIT OF CERTIORARI
`
`CARL M. BURNETT
`12909 Hawkshead Terrace
`Silver Spring, MD 20904
`(240) 355-1128
`cmburn@live.com
`
`
`
`341 TO
`Supreme (!Court of the Guiteb States;
`
`CARL M. BURNETT,
`
`Petitioner,
`
`V.
`
`PANASONIC CORPORATION, PANASONIC
`CORPORATION OF NORTH AMERICA,
`PANASONIC INTELLECTUAL PROPERTY
`CORPORATION OF AMERICA,
`
`Respondents.
`
`On Petition For A Writ Of Certiorari
`To The United States Court Of Appeals
`For The Federal Circuit
`
`PETITION FOR A WRIT OF CERTIORARI
`
`CARL M. BURNETT
`12909 Hawkshead Terrace
`Silver Spring, MD 20904
`(240) 355-1128
`cmburn@live.com
`
`
`
`QUESTIONS PRESENTED
`Whether electronic data is the tangible embodi-
`ment of an electromagnetic analog or digital signal
`and when changed to a new and useful form of
`electronic data remains a tangible embodiment of
`an electromagnetic analog or digital signal and is
`therefore directed to patent-eligible subject mat-
`ter within the meaning of 35 U.S.C. § 101 as inter-
`preted by this Court.
`Whether a process that creates a new and useful
`tangible embodiment of electronic data is there-
`fore directed to patent-eligible subject matter
`within the meaning of 35 U.S.C. § 101 as inter-
`preted by this Court.
`
`
`
`11
`
`PARTIES TO THE PROCEEDING
`
`All parties to the proceeding are identified in the
`caption.
`
`
`
`111
`
`TABLE OF CONTENTS
`
`Page
`QUESTIONS PRESENTED ..................................i
`ii
`PARTIES TO THE PROCEEDING .........................
`TABLE OF AUTHORITIES ...................................v
`OPINIONS BELOW...............................................1
`JURISDICTION.....................................................1
`STATUTORY PROVISIONS INVOLVED .............1
`INTRODUCTION...................................................2
`STATEMENT OF THE CASE................................4
`STATUTORY BACKGROUND ...................4
`PROCEEDINGS BELOW............................8
`A. The Invention ........................................8
`B. Industry Standards ...............................11
`Society of Motion Picture and Televi-
`sion Engineers ("SMPTE") Stand-
`ards...................................................11
`Internet Engineering Task Force
`("IETF") Standard............................12
`C. Lower Court Proceedings ......................13
`14
`REASONS FOR GRANTING THE PETITION
`I. THE HOLDINGS BY THE CAFC CON-
`FLICT WITH SCIENTIFIC FACTS THAT
`ELECTRONIC DATA IS THE TANGIBLE
`EMBODIMENT OF AN ELECTROMAG-
`NETIC ANALOG OR DIGITAL SIGNAL
`
`16
`
`
`
`TABLE OF CONTENTS - Continued
`
`Page
`II. IMMEDIATE INTERVENTION IS RE-
`QUIRED BY THIS COURT TO PREVENT
`THE CAFC HOLDINGS FROM RENDER-
`ING INADMISSIBILE ELECTRONICALLY
`STORED INFORMATION AS EVIDENCE
`IN CIVIL AND CRIMINAL PROCEED-
`INGS.............................................................28
`CONCLUSION.......................................................34
`
`APPENDIX A: Burnett v. Panasonic Corp., No.
`18-1234, 2018 U.S. App. LEXIS 19843
`(Fed.Cir. 2018) ..................................................App. 1
`APPENDIX B: Burnett v. Panasonic Corp. of N
`Am., 2017 U.S. Dist. LEXIS 203808 (U.S. Dist.
`Md. 2017) ........................................................ App. 15
`
`
`
`V
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Alice Corp. Pty. Ltd. v. CLS Bank Intl, 134 S. Ct.
`2347(2014) ............................................................ 5,6
`Bilski v. Kappos, 561 U.S. 593 (2010).....................5, 14
`Burnett v. Panasonic Corp. of N Am., 2017 U.S.
`Dist. LEXIS 203808 (D. Md. 2017) ...........................1
`Burnett v. Panasonic Corp., No. 18-1234, 2018
`U.S. App. LEXIS 19843 (Fed. Cir. 2018) .........passim
`CLS Bank Intl v. Alice Corp. Pty., 717 F.3d 1269
`(Fed. Cir. 2013) ..........................................................6
`Diamond v. Diehr, 450 U.S. 175 (1981) ..................5, 14
`Digitech Image Tech's v. Electronics for Imaging,
`758 F.3d 1344 (Fed. Cir. 2014) ........................passim
`Exparte Mewherter, 107 U.S.P.Q.2d 1857 (2013)... 20, 22, 27
`Gottschalk v. Benson, 409 U.S. 63 (1972) ...............5, 14
`In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007)........passim
`Mayo Collaborative Servs. v. Prometheus Labs.,
`Inc., 132 S. Ct. 1289 (2012) .......................................6
`O'Reilly v. Morse, 56 U.S. (15 How.) 62,14 L. Ed.
`601(1853) .................................................... 6, 7, 8, 14
`Parker v. Flook, 437 U.S. 584 (1978).......................5, 14
`Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709
`(Fed. Cir. 2014) ..........................................................5
`
`
`
`vi
`
`TABLE OF AUTHORITIES - Continued
`
`Page
`
`STATUTES
`17 U.S.C. §§ 101, 506-07 .............................................32
`17 U.S.C. §§ 512,1201-05,1301-32 ............................32
`18 U.S.C. § 1028 ..........................................................32
`18 U.S.C. § 1029 ..........................................................32
`18 U.S.C. § 1030 ..........................................................32
`18 U.S.C. § 1030(a)(2) .................................................32
`18 U.S.C. § 1030(a)(4) ..................................................32
`18 U.S.C. § 1030(a)(5) .................................................32
`18 U.S.C. § 1030(a)(7) .................................................32
`18 U.S.C. § 1037 ..........................................................32
`18 U.S.C. § 1343 ..........................................................31
`18U.S.C.'2511 ..........................................................32
`18 U.S.C. § 2523 ..........................................................32
`18 U.S.C. §§ 1831-32 ...................................................32
`18 U.S.C. §§ 2319-20 ...................................................32
`18 U.S.C. §§ 2510-22 ...................................................32
`28 U.S.C. § 1254(1)........................................................1
`28 U.S.C. § 1498 ..........................................................32
`28 U.S.C. § 4001 ..........................................................32
`35 U.S.C. § 100(b)..........................................................2
`35 U.S.C. § 101 .....................................................passim
`35 U.S.C. § 112 ..............................................................7
`
`
`
`vii
`
`TABLE OF AUTHORITIES - Continued
`
`Page
`
`OTHER AUTHORITIES
`Data and Computer Communications by Wil-
`liam Stallings, 1st Ed. 1985 .............................. 17, 19
`Subject Matter Eligibility of Computer-Readable
`Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23,
`2010) ........................................................................20
`U.S. Patent No. 6,681,231.............................................9
`U.S. Patent No. 7,107,286 ................................... passim.
`U.S. Provisional Patent Application Ser. No.
`60/145,694 .................................................................9
`
`RULES
`Federal Rules of Civil Procedure 12(b)(6)..................13
`Federal Rules of Evidence 1001(d).................28, 29, 31
`
`REGULATIONS
`Regulation (EU) 2016/679 of the European Par-
`liament and of the Council of 27 April 2016 ..........15
`
`INTERNATIONAL STANDARDS
`IETF RFC 4119 A Presence-based GEOPRIV
`Location Object Format ..........................................24
`IETF RFC 6225 Dynamic Host Configuration
`Protocol ("DHCP") Options for Coordinate-
`Based Location Configuration Information
`("LCI") Standard .....................................................12
`
`
`
`vi"
`
`TABLE OF AUTHORITIES - Continued
`
`Page
`
`SMPTE 337M-2004 Material Exchange Format
`("MXF") File Format Specification Standard.........11
`SMPTE ST 300M:2011 Unique Material Identi-
`fierStandard...........................................................11
`
`
`
`1
`
`PETITION FOR A WRIT OF CERTIORARI
`Petitioner Carl M. Burnett respectfully petitions
`for a writ of certiorari to review the judgment of the
`United States Court of Appeals for the Federal Circuit.
`
`OPINIONS BELOW
`The Court of Appeals for the Federal Circuit's
`("CAFC") opinion reproduced at App. 1-14 is reported
`at Burnett v. Panasonic Corp., No. 18-1234, 2018 U.S.
`App. LEXIS 19843 (Fed. Cir. 2018). The District Court's
`opinion reproduced at App. 15-34 is reported at Bur-
`nett v. Panasonic Corp. off. Am., 2017 U.S. Dist. LEXIS
`203808 (D. Md. 2017).
`
`JURISDICTION
`The CAFC entered its judgment on July 16, 2018.
`This petition is filed within ninety (90) days of that
`judgment. The jurisdiction of this Court is invoked un-
`der 28 U.S.C. § 1254(1).
`
`STATUTORY PROVISIONS INVOLVED
`"Whoever invents or discovers any new and useful
`process, machine, manufacture, or composition of mat-
`ter, or any new and useful improvement thereof, may
`obtain a patent therefor, subject to the conditions and
`requirements of this title." 35 U.S.C. § 101.
`
`
`
`2
`
`"The term 'process' means process, art or method,
`and includes a new use of a known process, machine,
`manufacture, composition of matter, or material." 35
`U.S.C. § 100(b).
`
`INTRODUCTION
`The CAFC addressed fundamental questions re-
`lating to the patent eligibility of inventions that in-
`volve electronic geographic data and a process to
`convert electronic geographic data to a new form of
`electronic geospatial data. The CAFC held that "a pro-
`cess that starts with data applies an algorithm and
`ends with a new form of data is directed to an abstract
`idea." In assessing whether this process and the new
`form of data is patent-eligible under 35 U.S.C. § 101,
`the CAFC acknowledged the process had been previ-
`ously approved under preceding legal precedents as
`patent-eligible under 35 U.S.C. § 101.
`A more important legal issue concerning this hold-
`ing by the CAFC is whether electronic data is tangible
`property. In Digitech Image Tech's, the court held
`"[d]ata in its ethereal, non-physical form is simply in-
`formation that does not fall under any of the categories
`of patent-eligible subject matter under § 101." Digitech
`Image Tech's v. Electronics for Imaging, 758 F.3d 1344,
`1350 (Fed. cir. 2014), and, "[t]he claims are instead di-
`rected to information in its non-tangible form." Id. at
`1349. These holdings are all based on the previous
`holdings in the precedential case In re Nuiften, that:
`
`
`
`3
`
`"[a]ll signals within the scope of the claim do not them-
`selves comprise some tangible article or commodity."
`In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007).
`In Burnett, the court held that electronic data is non-
`tangible based on the holding in Digitech and Nuijten.
`App. 9.
`These holdings now create a major legal disagree-
`ment between the CAFC and courts of appeals of the
`other federal circuits as to the admissibility of elec-
`tronic data as tangible evidence. The electronic data
`in Burnett is Global Positioning System ("GPS") geo-
`graphic coordinate data, and the newer form of geo-
`spatial metadata, Geospatial Entity Object Code
`("GEOCODE") metadata. However, the holdings in
`Burnett, Digitech, and Nuijten also apply to any elec-
`tronic data which may represent electronic data en-
`coded as a tangible embodiment of an electromagnetic
`analog or digital signal.
`All appeals courts in the federal circuits that
`adjudicate criminal and civil law have accepted the ad-
`missibility of GPS and GEOCODE metadata as tangi-
`ble evidence in civil and criminal proceedings. There is
`also significant legal precedent that the courts have ac-
`cepted many other forms of electronic data, such as
`video and audio electronic data as tangible evidence.
`The CAFC in Burnett, Digitech, and Nuijten has
`held that all electronic data, specifically GPS and
`GEOCODE metadata, is abstract and non-tangible.
`Even if GPS source data and the resulting GEOCODE
`metadata is tangible, the CAFC has also held that
`
`
`
`4
`
`a computer process, or algorithm, produces a non-
`tangible form of electronic data that is abstract, non-
`tangible, and ineligible under 35 U.S.C. § 101. App. 9.
`These holdings in Burnett, Digitech, and Null ten
`therefore identify a fundamental disagreement among
`the appeals courts in the federal circuits regarding
`whether electronic data and electronically stored infor-
`mation, are tangible property that can be used as ad-
`missible evidence. Additionally, the CAFC holding in
`Burnett establishing that a computer process that pro-
`duces any type of electronic data is abstract renders all
`electronic data produced by a computer process ab-
`stract and non-tangible. App. 9.
`These inherently contradictory legal holdings
`among the federal circuits concerning the tangibility of
`electronic data and electronically stored information
`nullifies the admissibility of electronic data, electroni-
`cally stored data, and electronically produced data as
`tangible electronic evidence in any court proceedings.
`
`STATEMENT OF THE CASE
`I. STATUTORY BACKGROUND
`The Patent Act specifies the general subject mat-
`ter eligible for a patent—namely "any new and useful
`process, machine, manufacture, or composition of
`matter, or any new and useful improvement thereof."
`35 U.S.C. § 101. The subject matter eligible for patent-
`ing includes "any new and useful process, machine,
`
`
`
`5
`
`manufacture, or composition of matter, or any new and
`useful improvement thereof." Id. The judicially recog-
`nized exceptions from this provision are for "[l]aws of
`nature, natural phenomena, and abstract ideas." Alice
`Corp. Pty. Ltd. v. CLS Bank Intl, 134 S. Ct. 2347, 2354
`(2014).
`Patent-eligible subject matter for claiming differ-
`ent types of patent claims falls into two general cate-
`gories: claims that cover products and claims that
`cover methods. See also Diamond v. Diehr, 450 U.S. 175
`(1981); Parker v. Flook, 437 U.S. 584 (1978); Gottschalk
`v. Benson, 409 U.S. 63 (1972); Bilski v. Kappos, 561 U.S.
`593 (2010).
`Product claims relate to tangible items—i.e., in
`the terms of § 101, "machine[s], manufactureEsi, or
`composition[s] of matter." 35 U.S.C. § 101. In patent
`terms, claims to machines are often called "system" or
`"apparatus" claims. Unlike product claims, "method"
`claims (also known, in the terms of § 101, as "process"
`claims) claim a series of steps that lead to a useful re-
`suit.
`This Court has "set forth a framework for distin-
`guishing patents that claim laws of nature, natural
`phenomena, and abstract ideas from those that claim
`patent-eligible applications of those concepts." Alice
`Corp. Pty. Ltd., 134 S. Ct. at 2355. First, the court must
`"determine whether the claims at issue are directed
`to one of those patent-ineligible concepts." Id. "If not,
`the claims pass muster under § 101." Ultramercial, Inc.
`v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014).
`
`
`
`N.
`
`Second, if the answer to the first step is "yes," then the
`court must "consider the elements of each claim both
`individually and 'as an ordered combination' to deter-
`mine whether the additional elements 'transform the
`nature of the claim' into a patent-eligible application."
`Alice Corp. Pty. Ltd., 134 S. Ct. at 2355 (quoting Mayo
`Collaborative Servs. v. Prometheus Labs., Inc., 132
`S. Ct. 1289, 1297 (2012)). This step asks whether the
`claims add an "inventive concept" that is "sufficient to
`ensure that the patent in practice amounts to signifi-
`cantly more than a patent upon the ineligible concept
`itself." Alice Corp. Pty. Ltd., 134 S. Ct. at 2355 (quoting
`Mayo Collaborative Servs., 132 S. Ct. at 1297) (modifi-
`cation marks omitted). Additionally, an issued patent,
`such as the patent-in-suit in this matter, is entitled
`to a presumption of validity that applies to § 101
`challenges. This places a heavy burden on the party
`alleging the claims as patent-ineligible. CLS Bank
`Int'l v. Alice Corp. Pty., 717 F.3d 1269, 1284 (Fed. Cir.
`2013).
`There are however, two areas of subject matter
`that involve statutory eligibility under 35 U.S.C. § 101
`that have not been revisited by this Court since
`O'Reilly v. Morse, 56 U.S. (15 How.) 62, 14 L. Ed. 601
`(1853). These areas involve the patenting of electronic
`data and electromagnetic signals. The divided Court in
`O'Reilly held for Claim 8, that:
`"He claims the exclusive right to every im-
`provement where the motive power is the
`electric or galvanic current, and the result is
`
`
`
`fA
`
`the marking or printing intelligible charac-
`ters, signs, or letters at a distance."
`
`O'Reilly v. Morse at 112.
`"In fine, he claims an exclusive right to use a
`manner and process which he has not de-
`scribed and indeed had not invented, and
`therefore could not describe when he obtained
`his patent. The court is of opinion that the
`claim is too broad, and not warranted by law."
`
`Id. at 113.
`
`In reaching this holding, the Court indicated that
`Morse did not teach and enable other ways to com-
`municate information at a great distance by using the
`electromagnetic force. This enablement requirement is
`covered under 35 U.S.C. § 112. The Court also held that
`Claim 8 was at such a high level of generality and ab-
`straction that it claimed an "idea" rather than a prac-
`tical application and implementation of an idea, which
`made the claim ineligible under 35 U.S.C. § 101.
`However, in Judge Grier's dissent he states:
`
`"The mere discovery of a new element, or law,
`or principle of nature, without any valuable
`application of it to the arts, is not the subject
`of a patent. But he who takes this new ele-
`ment or power, as yet useless, from the labor-
`atory of the philosopher, and makes it the
`servant of man; who applies it to the perfect-
`ing of a new and useful art, or to the improve-
`ment of one already known, is the benefactor
`
`
`
`[ól
`[s1
`
`to whom the patent law tenders its protection,
`and;
`When a new and hitherto unknown product or
`result, beneficial to mankind, is effected by a
`new application of any element of nature, and
`by means of machines and devices, whether
`new or old, it cannot be denied that such in-
`vention or discovery is entitled to the denom-
`ination of a 'new and useful art."
`
`Id. at 132-133.
`
`He then asks:
`"What is meant by a claim [specifically,
`Morse's claim 8] being too broad?" "It is only
`when he claims something before known and
`used, something as new which is not new, ei-
`ther by mistake or intentionally."
`
`Id. at 135.
`This question by Judge Grier concerning the stat-
`utory patentability of the invention of "electromag-
`netic force" or signals and the embedded data in an
`electromagnetic signal has been answered by the
`CAFC in Burnett, Digitech, and Nuijten, but not by this
`Court.
`
`II. PROCEEDINGS BELOW
`A. The Invention.
`U.S. Patent No. 7,107,286 ('286 Patent) was ap-
`proved on September 12, 2006 as a continuation patent
`
`
`
`of U.S. Patent No. 6,681,231 ('231 Patent). The '231 Pa-
`tent was approved on September 7, 2003. The '231 Pa-
`tent claims priority based on the submission of U.S.
`Provisional Patent Application Ser. No. 60/145,694,
`filed on July 26, 1999. The '231 Patent is a single sys-
`tem patent claim, that patented an integrated infor-
`mation processing system for geospatial media.
`
`The '286 Patent was filed to patent the individual
`technologies that were dependent claims of the '231
`Patent. The '286 Patent contains five (5) independent
`claims and twelve (12) dependent claims. The asserted
`patent claims in the proceeding below include the fol-
`lowing claims:
`
`Claim 1 of the '286 Patent is a machine claim that
`invented a geospatial media recorder. The claim states:
`1. A geospatial media recorder, comprising:
`converting means for converting longitude and
`latitude geographic degree, minutes, and sec-
`ond (DMS) coordinate alphanumeric repre-
`sentations or decimal equivalent geographic
`coordinate alphanumeric representations and
`altitude alphanumeric representations into in-
`dividual discretion all-natural number geographic
`coordinate and measurement representations;
`and combining means for concatenating the
`discrete all-natural number geographic coor-
`dinate and measurement representations into
`a single discrete all-natural number geospa-
`tial coordinate measurement representation
`for identification of a geospatial positional lo-
`cation at, below, or above earth's surface al-
`lowing user to geospatially reference entities
`
`
`
`10
`
`or objects based on the identified geospatial
`positional location and point identification.
`'286 Patent at 13:60.' (Fed. Cir. Appx073).
`Claim 9 of the '286 Patent is a method claim that
`invented a specialized geospatial information pro-
`gramming process, the GEOCODE process, which cre-
`ates a specialized type of electronic metadata. The
`claim states:
`9. A geospatial information processing method
`comprising: converting latitude and longitude
`geographic degree, minutes, and seconds (DMS)
`coordinate alphanumeric representations or
`decimal equivalent geographic coordinate al-
`phanumeric representations and latitude al-
`phanumeric representations into individual
`discrete all-natural number geographic coor-
`dinate and measurement representations;
`and concatenating the individual discrete all
`natural number geographic coordinate and
`measurement representations into a single
`discrete all-natural number geospatial coordi-
`nate measurement representation for identi-
`fication of a geospatial positional location at,
`below, or above earth's surface allowing user
`to geospatially reference entities or objects
`based on the identified geospatial positional
`location and point identification.
`'286 Patent at 15:5. (Fed. Cir. Appx074).
`
`1 Unless otherwise noted, citations to the column and line
`numbers (e.g., X:Y) in this petition refer to the column and line
`numbers of the '286 Patent. (Fed. Cir. AppxO16-074).
`
`
`
`11
`
`B. Industry Standards
`1. Society of Motion Picture and Televi-
`sion Engineers ("SMITE") Standards
`SMPTE is an international standards develop-
`ment organization ("SDO") that establishes technical
`standards for the movie and television industries
`through the publication of recommended practices,
`standards, and engineering guidelines.
`On July 16, 2010, Petitioner filed a voluntary
`Standard Essential Patent ("SEP") licensing declara-
`tion to license Claim 9 of the '286 Patent for implemen-
`tation and use in the SMPTE ST 300M:2011 Unique
`Material Identifier Standard ("SMPTE 300M Stand-
`ard"). Petitioner's voluntary patent licensing declara-
`tion agreed to license Petitioner's patented technology
`under Reasonable and Non-Discriminatory ("RAND")
`licensing provisions for technology implemented in the
`SMPTE 300M Standard. Compi. Exhibit E at 1, Bur-
`nett v. Panasonic Corp. of N Am. 2017 U.S. Dist. LEXIS
`203808 (No. 8:17-cv-00236-PX).
`On November 5, 2013, Petitioner submitted an up-
`dated patent licensing declaration to cover additional
`SMPTE standards, including the SMPTE 337M-2004
`Material Exchange Format ("1V1XF") File Format Spec-
`ification Standard ("SMPTE 337M Standard"). The
`SMPTE 337M Standard defines the data structure of
`the= file format for network transport and storage
`of audiovisual material. One of the specifications of the
`SMPTE 337M Standard includes a UMID metadata
`identifier. Compi. Exhibit F at 1, Burnett v. Panasonic
`
`
`
`12
`
`Corp. of N Am. 2017 U.S. Dist. LEXIS 203808 (No.
`8: 17-cv-00236-PX).
`
`2. Internet Engineering Task Force
`("IETF") Standard
`IETF is an international SDO that oversees the
`Internet architecture and develops Internet standard
`specifications which are protocols that make the
`Internet operable. IETF RFC 6225 Dynamic Host Con-
`figuration Protocol ("DHCP") Options for Coordinate-
`Based Location Configuration Information ("LCI")
`Standard ("IETF RFC 6225 DHCP Coordinate LCI
`Standard") specifies how the DHCP protocol creates an
`item of geospatial metadata for the LCI that includes
`latitude, longitude, and altitude, with resolution or
`uncertainty indicators. IETF RFC 6225 DHCP Coor-
`dinate LCI Standard specifies the format of an item
`of geospatial metadata used to create a geospatial
`metadata object that encapsulates geospatial point lo-
`cation information assigned to a network client device.
`This standard also uses the GEOCODE® process to
`create the geospatial metadata object. IETF Request
`for Comments: 6225, Dynamic Host Configuration Pro-
`tocol Options for Coordinate-Based Location Configu-
`ration Information, Internet Engineering Task Force
`(July 2011), IETF https://tools.ietf.org/html/rfc6225.
`On March 18, 2014, Petitioner voluntarily submit-
`ted a patent licensing declaration to the IETF under
`RAND licensing provisions for technology imple-
`mented in the IETF RFC 6225 DHCP Coordinate LCI
`
`
`
`13
`
`Standard. On March 19, 2014, the IETF published the
`Geocode RAND licensing declaration. Compi. Exhibit
`G at 1, Burnett v. Panasonic Corp. of N Am., Civil Ac-
`tion No. PX 17-00236 (D. Md. 2017).
`
`C. Lower Court Proceedings
`On January 26, 2017, Petitioner Carl M. Burnett
`filed a complaint in the United States District Court
`for the District of Maryland alleging that Respondents
`infringed on Claim 1 and Claim 9 of the Petitioner's
`'286 Patent. Compi. at 1, Burnett v. Panasonic Corp. of
`N Am., Civil Action No. PX 17-00236 (D. Md. 2017).
`The complaint asserted specifically that Respondents'
`products, by employing the SMPTE 330M Standard
`and the SMPTE 337M Standard, integrate the technol-
`ogy protected by Claim 1 and Claim 9 of the '286 Pa-
`tent.
`On March 9, 2017, the Respondents filed a motion
`to dismiss the suit pursuant to Federal Rules of Civil
`Procedure 12(b)(6) asserting the claims are invalid un-
`der 35 U.S.C. § 101.
`Specifically, Respondents argued that Petitioner's
`claims fall into the § 101 "abstract ideas" exception, as
`they are directed solely to the abstract concept of "per-
`forming mathematical operations on a computer to ar-
`rive at a particular data format." App. 22.
`
`On November 1, 2017, the District Court issued a
`final order in favor of the Respondents and made the
`order final. App. 35-36.
`
`
`
`14
`
`On November 29, 2017, the Petitioner appealed
`the District Court order to the CAFC. Burnett v. Pana-
`sonic Corp., No. 2018-1234 (Fed. Cir. 2018).
`On July 16, 2018, the CAFC affirmed the lower
`court ruling. App. 1-14.
`
`REASONS FOR GRANTING THE PETITION
`Although this Court has examined 35 U.S.C. § 101
`in recent years and addressed the application of § 101
`to computer-implemented inventions, the Court has
`not addressed the issue of electronic data and electro-
`magnetic analog or digital signals as statutory subject
`matter since O'Reilly v. Morse. Additionally, the Court
`has never examined whether electronic data is a tan-
`gible embodiment of electromagnetic analog or digital
`signals and whether electronic data is tangible or non-
`tangible property for the purposes of statutory subject
`matter under 35 U.S.C. § 101. In Benson, Flook, Diehr,
`and Bilski , the Court examined the issues of computer
`software and its patentability under 35 U.S.C. § 101,
`but not electronic data or electromagnetic analog or
`digital signals used by telecommunication networks,
`computer hardware and computer software.
`Given the importance of electronic data in virtu-
`ally every industry globally and its essential use in
`electronic commerce worldwide, the Court should have
`a strong interest in examining this issue. The Euro-
`pean Patent Office's Board of Appeal ("EPO Board")
`held in its Shiller Medical decision that the European
`
`
`
`15
`
`Patent Convention did not as such exclude the patent-
`ability of signals, so that signals can now be claimed in
`patents. EPO Case Number T 0533/09, 3.4.01, (2014).
`The EPO Board acknowledged that a signal was nei-
`ther a product nor a process but could fall under the
`definition of "physical entity." The European Union
`also formalized the rules concerning electronic data
`use with the General Data Protection Rules (EU)
`2016/679(GDPR) in 2016.2 Additionally, The State of
`California recently passed the California Consumer
`Privacy Act of 2018 which legally recognizes the tangi-
`bility of electronic data in digital privacy laws. Cal. Civ.
`Code § 3, Title 1.81.5, Part 4, Division 3 (2018).
`These new legal authorities and regimes, both na-
`tionally and internationally, now compel the Court to
`examine whether electronic data is a tangible embodi-
`ment of an electromagnetic analog or digital signal and
`the eligibility of this subject matter under 35 U.S.C.
`§ 101. Additionally, the holdings by the lower courts
`now nullify the admissibility of electronic data as elec-
`tronically stored information and tangible evidence for
`criminal and civil proceedings. These legal issues are
`ripe and now warrant expeditious review by this
`Court.
`
`2 EU General Data Protection Regulation (GDPR): Regula-
`tion (EU) 2016/679 of the European Parliament and of the Council
`of 27 April 2016 (on the protection of natural persons with regard
`to the processing of personal data and on the free movement of
`such data, and repealing Directive 95/46/EC (General Data Pro-
`tection Regulation), OJ 2016 L 119/10).
`
`
`
`16
`
`1. THE HOLDINGS BY THE CAFC CONFLICT
`WITH SCIENTIFIC FACTS THAT ELEC-
`TRONIC DATA IS THE TANGIBLE EMBOD-
`IMENT OF AN ELECTROMAGNETIC ANALOG
`OR DIGITAL SIGNAL.
`The lower courts in Burnett, Digitech, and Nuijten
`have held that electronic data embedded as an embod-
`iment in electromagnetic analog or digital signals is a
`non-tangible property. This was first held by the CAFC
`in Nuijten. In Nuijten, the CAFC stated that "[aill sig-
`nals within the scope of the claim do not themselves
`comprise some tangible article or commodity." In re
`Nuijten, 500 F.3d at 1356-57. However, this holding
`was predicated on a misleading statement in the Ap-
`pellee's brief that incorrectly stated a scientific fact:
`"[tihus, contrary to IPO's suggestion, an electrical sig-
`nal, like optical signals and radio signals, is simply en-
`ergy, i.e., an electric field, and does not qualify as
`patentable subject matter for the same reasons that
`other energy signals do not." Appellee Br. at 18, In re
`Nuijten, 500 F.3d at 1346.
`The misleading statement is derived from infor-
`mation in the textbook Physics with Modern Physics
`for Scientists and Engineers which reads as:
`"[un an electromagnetic wave, the correspond-
`ing physical quantities are the electric and
`magnetic fields—which are vector quantities."
`Wolfson & Pasachoff, Physics with Modern
`Physics for Scientists and Engineers, 889, 3rd
`ed., Addison Wesley, (1999); and, "[p}hysi-
`cally, the existence of the waves is possible
`
`
`
`17
`
`because a change in either kind of field—elec-
`tric or magnetic—induces the other kind of
`field, giving rise to a self-perpetrating elec-
`tromagnetic field structure."
`Id. at 893 (emphasis added).
`Additionally, according to Dr. William Stallings, a
`preeminent scholar, scientist, and expert in the field of
`data communications, "lis]ignals are electric or electro-
`magnetic encoding of data." William Stallings, Data
`and Computer Communications, 29, 1st ed., MacMil-
`lan Publishing Company (1985).
`Both authorities contradict the legal theory es-
`poused by the Appellees.
`The CAFC also adopted new legal terminology
`from the Appellees' brief. In its opinion, the CAFC
`stated; "The claims on appeal cover transitory elec-
`trical and electromagnetic signals propagating
`through some medium, such as wires, air, or a vac-
`uum." In re Nuijten, 500 F.3d at 1352.
`The use of the term "transitory electrical and
`electromagnetic signals" is very problematic termi-
`nology because it implies that a signal is transitory or
`non-transitory and can change condition or state. The
`issue of a transitory condition of a signal was based on
`a discussion in the Appellees' brief as to whether Claim
`14 of the '286 Patent should be in the "composition of
`matter" category of patentable subject matter. The fi-
`nal position of the Appellees was that: "The Court
`properly refused to read in such a requirement [that a
`composition of matter be stable] into the definition of
`
`
`
`1r
`
`'composition of matter." Appellee Br. at 22, In re
`Nuijten, 500 F.3d at 1346. Regardless of this state-
`ment, the CAFC found that signals do not fall into the
`"composition of matter" category. The Appellees dis-
`cussed in their brief whether signals are patentable
`subject matter and determined that this matter was
`best left up to Congress to define a category of patent
`eligibility. Appellee Br. at 22-23. The CAFC however,
`held that signals could not be placed into a patentable
`subject matter category, and therefore are not patent-
`able under 35 U.S.C. § 101. In re Nuijten, 500 F.3d at
`1357.
`This incorrect legal theory was then used by the
`CAFC as justification to affirm the Board of Patent Ap-
`peals and Interferences holding. In re Nuijten, 500
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
