Supremes Deny 101 Appeal Dealing with Electronic Data and Electromagnetic Signals

Supremes Deny101 Appeal Dealing with Electronic Data and Electromagnetic SignalsOn Monday, December 3rd, the U.S. Supreme Court denied a petition for writ of certiorari in Carl M. Burnett v. Panasonic Corporation, declining to take up the case on appeal from the Court of Appeals for the Federal Circuit. This is now the latest case involving questions of patent-eligibility for an invention under 35 U.S.C. § 101 declined by the nation’s highest court. In this case, however, the Supreme Court hasn’t addressed the patentability of the relevant subject matter, namely electronic data and electromagnetic analog and digital signals, since 1853.

Burnett’s appeal to the Supreme Court followed the Federal Circuit’s decision this July to affirm the District of Maryland’s finding that patent claims asserted by Burnett were invalid under Section 101 for being directed to an abstract idea on a Rule 12(b)(6) motion for failure to state a claim filed by Panasonic. The invalidated claims were claims 1 and 9 of U.S. Patent No. 7107286, titled Integrated Information Processing System for Geospatial Media. The asserted claims covered a geospatial media recorder for encoding geospatial referencing elements onto video frames and a geospatial information processing method for processing visual, audio, textual and geospatial data.

Burnett appealed the district court’s invalidation of the asserted claims, arguing that the asserted claims were patent-eligible, that the district court erred in failing to construe five claim terms which were allegedly disputed and that the court violated Burnett’s due process rights when it failed to hold Rule 12(b)(6) and claim construction hearings. In affirming the lower court, the Federal Circuit panel of Circuit Judges Kathleen O’Malley, Raymond Clevenger and Jimmie Reyna found that, even accepting Burnett’s claim constructions, the claims were still directed to patent-ineligible subject matter and that the district court didn’t need to hold claim construction or Rule 12(b)(6) hearings because Panasonic didn’t dispute Burnett’s proposed constructions and because there was no requirement for a court to hold a hearing on a motion to dismiss.


In the petition for writ filed September 18th, Burnett asked the Supreme Court to take up the case to decide two questions: whether electronic data is the tangible embodiment of an electromagnetic analog or digital signal and remains a tangible embodiment when changed to a new and useful form of electronic data, thus becoming patent-eligible subject matter under Section 101; and whether a process that creates a new and useful tangible embodiment of electronic data is patent-eligible under Section 101. Panasonic had waived its right to respond to Burnett’s petition for writ on October 30th.

Although the Alice/Mayo framework is a relatively newer piece of case law used to determine questions of patent-eligibility for computer-implemented methods and other subject matter, the Section 101 eligibility of electronic data and electromagnetic signals hasn’t been revisited by the Supreme Court since its 1853 decision in O’Reilly v. Morse. In that case, the Supreme Court invalidated a claim to a method involving an electromagnetic signal as being so general that it constituted an idea rather than the practical application of an idea. However, a dissent by Justice Robert Cooper Grier posed a question on the statutory patentability of electromagnetic signals and data embedded in those signals, a question answered several times by the Federal Circuit but never by the Supreme Court.

Burnett’s petition also notes that the asserted claims in the case had been submitted for inclusion in industry technical standards set by various organizations. Burnett had filed two patent licensing declarations with the Society of Motion Picture and Television Engineers (SMPTE) and another declaration with the Internet Engineering Task Force (IETF) with both organizations requiring reasonable and non-discriminatory (RAND) terms for the licensing of patented technologies incorporated into standards.

“Given the importance of electronic data in virtually every industry globally and its essential use in electronic commerce worldwide, the Court should have a strong interest in examining this issue,” Burnett’s petition reads. Previous holdings by the Federal Circuit in Burnett and other related cases conflict with scientific facts supporting the idea that electronic data is the tangible embodiment of electromagnetic signals, the petition argues. One of those CAFC cases, In re Nuijten (2007), misinterpreted information from a physics textbook which noted the physical qualities of electromagnetic waves, leading the court to find that electromagnetic signals were instead non-tangible properties.

In Nuijten, the CAFC also adopted problematic legal terminology by saying that the claims-at-issue covered “transitory electrical and electromagnetic signals” despite the fact that signals cannot be transitory, they are either continuous or discrete based on the signal’s type and state. The flawed reasoning in Nuijten was applied by the Federal Circuit in its 2014 decision in Digitech Image Technologies v. Electronics for Imaging, where the appellate court held that electronic data is ethereal and non-tangible despite the physical qualities possessed by the electromagnetic signals in which the data is encoded.

Burnett then goes on to argue that, because patent law as decided by the Federal Circuit has determined that electronic data is non-tangible and abstract, electronic data now becomes inadmissible as evidence in all civil and criminal proceedings under U.S. law according to the Federal Rules of Evidence. Under those rules, for electronically stored information to be admissible as evidence, any printout or other output readable by sight must accurately reflect the information of the original source. However, if the original source electronic data and the electronically stored information are abstract and non-tangible, such data and information becomes inadmissible as tangible evidence.

Although a review of appellate cases in Circuit Courts found that challenges to the admissibility of electronic data as evidence was typically due to the fact that such data was obtained as the result of a warrantless search, the Federal Circuit’s rulings create a conflict with how such data is treated by other Circuit Courts. Expanding the applicability of electronic data as non-tangible property affects various areas of law and harms the ability to properly prosecute cybercrimes and digital piracy cases. Further, defense attorneys who do not raise arguments against the admissibility of electronic data evidence could face federal malpractice charges for failing to do so. But in denying Burnett’s petition for writ, it’s pretty clear that the Supreme Court isn’t that concerned about whether electronic data can be used as evidence in any legal proceeding anymore.


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Join the Discussion

14 comments so far.

  • [Avatar for Carl M. Burnett]
    Carl M. Burnett
    December 27, 2018 02:19 pm


    I would like to agree with you on this, but I have a different perspective regarding the Court of Appeals for the Federal Circuit (CAFC) holding which affects evidentiary standards in federal courts. Federal litigation starts at a district court and then progresses to an appellate court when appealed. For federal criminal and some civil cases, the circuit appellate court is the appeals court for each circuit except under special provisions of law. Patent cases and veterans’ benefits cases are adjudicated by the Court of Appeals for the Federal Circuit (CAFC), regardless of geographic location. When the CAFC was created in 1982, it merged the United States Court of Customs and Patent Appeals and the appellate division of the United States Court of Claims. Before these courts were created in 1909, all appeals were heard by the appellate court for each circuit. District court judges cannot reject the holdings of the CAFC because CAFC holdings impact the Federal Rules of Evidence. The Federal Rules of Evidence apply to all federal courts and state courts that agree to adhere to the Federal Rules of Evidence.

    In my case, and the previous precedential cases of Nutijen and Digitech, the holdings of the CAFC changed the tangibility of electromagnetic signals and electronic data to non-tangible properties used by all federal district courts based on the Federal Rules of Evidence. These holding by the CAFC appellate court changed the established admissibility of evidentiary properties of electromagnetic signals and electronic data from tangible to non-tangible evidentiary properties.

    This is important because before the CAFC holdings in my case in 2018, my patent claims concerning Global Positioning System (GPS) electromagnetic signals and electronic data had been approved in 2003 as not being an abstract idea and non-tangible property by the US Patent and Trademark Office. Since GPS electromagnetic signals and electronic data were considered not to be abstract and valid since 2003 it made GPS electromagnetic signals and electronic data tangible evidentiary properties that could be used in criminal and civil cases. Additionally, all district and other appellate courts in all the federal circuits agreed that GPS electromagnetic signals and electronic data under the Federal Rules of Evidence met the tangible evidentiary properties for admissibility. However, the holding by the CAFC in Nutijen, Digitech and my case expanded this non-tangibility to cover all electromagnetic signals and electronic data, not just GPS electromagnetic signals and electronic data.

    I pointed this out in my petition to the Supreme Court because these holdings by the CAFC, i.e. that all electromagnetic signals and electronic data is abstract and non-tangible, were a significant expansion in the applicability to all electromagnetic signals and electronic data. This significant change also has a major impact on the Federal Rule of Evidence regarding the admissibility of electromagnetic signals and electronic data as tangible properties of evidence. Federal district courts, and state courts that use the Federal Rules of Evidence, cannot reject the holding of the CAFC because CAFC changed the admissibility of electromagnetic signals and electronic data to non-tangible evidentiary properties under the Federal Rules of Evidence.

    The CAFC holdings, as a superior court to all federal district courts, are binding precedents based on the doctrine of stare decisis. Federal district court judges and state court judges that adhere to Federal Rules of Evidence are bound by the superior court precedential holdings of the CAFC under the doctrine of stare decisis. SCOTUS passed on my petition for certiorari on this important federal legal evidentiary matter and as a result, the SCOTUS failure to granting my petition for certiorari has allowed the lower appellate holdings of the CAFC to remain in force as binding precedent for all lower federal district courts and state courts that adhere to the Federal Rules of Evidence. The CAFC holdings that all electromagnetic signals and electronic data are non-tangible properties must be accepted by all lower district courts and therefore electromagnetic signals and electronic data cannot be used as admissible evidence under the Federal Rules of Evidence. These holdings by the CAFC eliminated the lower district court judges’ discretion to accept the CAFC holdings under a persuasive precedent in a de novo review of admissible evidence under the Federal Rule of Evidence as you have referenced in your posting.

    Where I do agree with you is defense attorneys will now be able to use this inadmissibility of electromagnetic signals and electronic data as a defense to win cases. However, they also could be subject to malpractice issues for failure to use this defense. Additionally, criminal, and some civil cases, can also be appealed based on the CAFC holdings if the electromagnetic signals and electronic data evidence used to convict or find civil litigants at fault is now inadmissible. The courts may experience a significant increase in their docket case load once this news is made available because the SCOTUS failed to timely address this critically important federal evidentiary issue.

    Carl M. Burnett

  • [Avatar for The Our Shawn McBride]
    The Our Shawn McBride
    December 23, 2018 06:07 am

    We must remember that under the way the US Circuit Courts work this ruling is actually only binding for the Federal Circuit – a Circuit Court with a smaller docket. The other circuits have the freedom to disagree – especially with respect to the extension of the core holding to evidence (the case at hand didn’t directly address evidence).

    Until the US Supreme Court actually rules on the issue we won’t have any certainty on this. Looks like a lot of litigation will now start raising this argument – so we’ll be learning a lot soon on how the circuits will handle.

  • [Avatar for Pro Say]
    Pro Say
    December 11, 2018 01:41 pm

    Carl — thank you for sharing.

    In three words: You. Were. Robbed.

    Welcome to the team.

  • [Avatar for Ternary]
    December 9, 2018 06:17 pm

    Night, thanks for providing the link. I personally would declare all algorithms patent eligible. But the judicial exception is that abstract ideas are not so.

    The question is, if applications using these algorithms would be patent eligible, as providing significantly more than the abstract idea itself. The set of examples of the link includes the Euclidean Algorithm (which determines if two numbers are relative prime.) It does not list the extended Euclidean Algorithm (EEA) which determines the multiplicative inverse of a number. The EEA itself is an abstract idea, as it relates to numbers.

    However, a machine that determines a multiplicative inverse of a very, very large number is very useful and provides significantly more than merely the abstract idea itself. The very, very large size of a number precludes deconstruction of that number in its constituting parts, even by a computer. So, if that very, very large number is transmitted over a not secure transmission line, even when intercepted, a malfeasant is not able to do anything with it. However, availability of an exponent and its multiplicative inverse allows a computer to calculate a key or to decrypt a coded number. In the context of transmission security, this is a very significant application of basically a very old and known abstract idea in number theory into a very useful computer application.

    Such an application of EEA, prior to the invention of RSA cryptography, was unknown. To me it remains inconceivable how a Judge can decide that such an application still merely is the abstract idea itself. They fundamentally miss the skills and knowledge to come to that decision. RSA was of course patented. (though it probably would have gotten into severe problems under Alice.) The Chinese remainder theory is another example of an abstract number theoretical concept, long known, that has significant applications in for instance error correcting coding, a field together with cryptography wherein inventions experience Alice rejections on an almost predictable basis. Another cryptography invention to look at in that context is Diffie Hellman key generation. Fundamentally an abstract idea, leveraged into a brilliant invention.

    Carl Burnett’s invention has a similar aspect. That is: it is unclear how a technically uninformed Judge can reasonably make the decision that a machine conversion and machine application of a GPS code in a ‘linear’ form does not have significant technical advantages in its application over the allegedly abstract idea of conversion. The technically better trained Examiner that allowed this case thought it has.

    Step two of the Mayo/Alice test is a question of fact and not a question of law. Because of the nature of inventions (unknown and often unusual) it is often unclear to a non-expert what the significance of an application of an abstract idea is. RSA is an example of that. A Judge reviewing RSA has to realize the intractable problem of factorizing large numbers and to determine a mantissa from a number modulo-n even if the exponent is known. If you don’t realize those facts, then RSA itself looks like an abstract idea, which it is not. While Berkheimer is of some help, in many cases it fails, because in many instances inventions, like RSA, are considered/alleged to be a larger scale of a simple problem. Which they are not.

    Anything under the sun should be patent eligible. But if the “directed to an abstract idea” is applied, an expert based (or jury based) decision on “significant more” should be applied and considered, including affidavits by experts, both in court and during prosecution.

  • [Avatar for Ternary]
    December 9, 2018 03:42 pm

    Carl Burnett, thanks very much for the explanation. A consolation may be the realization that you made a significant invention. No patent law can change that. Furthermore, you did everything you had to do. And only in hindsight (because of significant change in the rules) did you lose claims in the patent. The blame in this case, clearly goes to the patent system. Not to the inventor.

    As Gene asks in a recent post: “why do you want a patent?” I would point to your invention and say: “that is why!” But, I would also point to the fact that the system is stacked against independent inventors. My personal belief and concern is that Alice is not yet the end of anti-patent decisions.

  • [Avatar for Gene Quinn]
    Gene Quinn
    December 9, 2018 01:30 pm


    Thanks for taking the time to comment. If you would like to write an op-ed for publication as an article that we can distribute properly to our readership I would be very interested.

    If interested, contact us here:


  • [Avatar for Anon]
    December 9, 2018 10:18 am

    Thanks NW, but how is the current granddaddy of encryption not on that list? Most actual modern web interactions (especially ones of value) would not be happening as they are but for encryption.

  • [Avatar for Night Writer]
    Night Writer
    December 9, 2018 09:44 am

    I would like to see the judges at the CAFC and the justices at the Scotus explain why they think these are not patentable.

  • [Avatar for Carl M. Burnett]
    Carl M. Burnett
    December 8, 2018 02:11 pm

    Thank you’ s.

    First – Steve thank you for following my case and reporting on it.

    Gene @ 2
    As always, your keen ability to see the larger issues is illuminating. In this case, you went beyond the two claims and reviewed the other dependent claims, which were in fact very important to the infringement claims. At the time of the filing of the foundational patent the video industry was changing over from analog video to digital video and encoding and capturing claims had to be written for each method of encoding electronic data on to the video media or digital medium.

    Over the infringing period, Panasonic sold 27 analog and digital camcorder models so I could not, at the pleading stage, identify the specific dependent claims due to the specific technologies used by video camcorder model. I would have to wait to the Markman hearing to do this, and as you now know, I never got an opportunity to orally argue this point in a 101-motion hearing or a Markman hearing, because none were conducted. However, had I been given the opportunity to conduct a Markman hearing I would have identified the specific type of technology used by model, but this could not be done during the pleading stage and had to wait until after discovery and the Markman to prove it.

    Mike @ 3
    Yes. The converting and combining means are fully described in the specification and the claiming in the functionalities of the invented geospatial media recorder. What is important to remember is the use of a GPS receiver in the recorder to receive the GPS electromagnetic signals to capture the geographic coordinate electronic data. This data from the GPS receiver must be converted for use in a digital domain be it in an electronic device or over a digital telecommunication network.

    What I patented was this unique process of converting, through a data concatenation computer process, the creation of a single data item from the three or more geographic dimensional properties to identify a geospatial point in space – the vertex. Then, this new type of data was then written to media or a medium depending on the recording device or telecommunication medium.

    All this was declared and explained in the preamble and claims of the foundational pioneering patent and the follow-on continuation patent. We even included a flowchart detailing the specific different types of data and the converting process into a single type of data to identify the geospatial vertex point in both the foundational and continuation patents.

    Ternary @ 4
    As always you bring up so many interesting points that I detailed in my briefs at the district court and CAFC.

    I didn’t expect the dependent claims to be used in the infringement analysis until the Markman hearing. I knew I would have to wait for that portion of the trial to take place for the opportunity to introduce the dependent claims based on information verified in discovery. I did not believe this would be an issue in the 101 challenge. However, the opportunity didn’t happen, so it all came down to if electronic signals and data were patent eligible in the SCOTUS petition.

    As for the standards track, I initially took the technology to the National Geospatial-Intelligence Agency (NGA) and the National Center for Geospatial Information Standards (NCGIS) in 2003. The NCGIS directed me to propose the technology as a standard for the geospatial ISO standards. I presented it to the ISO body and worked four years on getting the technology incorporated into these standards. That effort was turned down in 2008 even after offering the technology with free licensing provisions. However, because the technology was adopted by SMPTE I then started down the SMPTE standards track in 2010 to offer it under RAND provisions. Panasonic signed an MOA regarding the terms and pricing in 2013. However, Panasonic never executed a RAND agreement because they proposed a more expansive agreement covering all the patented technology in the patent portfolio, which I agreed to in 2014. Then Alice was decided and as everyone knows – the “truth” changed.

    The patent claims refer to electronic signals and electronic data. Both the use of GPS electronic signals embedded with geographic electronic data and the conversion of that geographic electronic data in a new form of electronic geospatial data in the GEOCODE data format.

    You also refer to the fact I do have a copyright on some software code. This copyright covers only one type of programming code and this patent process can be written in many different programming languages that are covered under different copyrights. That’s why it was very important to have the patent on the programming process because it would cover the process regardless of the programming language used to instantiate the programming process.

    In closing
    I understood, based on the legal procedures for a 12(b)(6) motion that I may not be given the opportunity to orally argue my case in District Court and I pointed this out in my District Court surreply and CAFC appeal. I also knew the possibility of orally arguing my case at the CAFC would not happen because some pro se litigants are not allowed to argue at the CAFC. Only pro se litigants who are also members of the bar have been historically allowed to orally argue at the CAFC.

    So, my only other option was to make this an issue of national importance by bringing up the legal disagreement between the appellate courts, and the existing laws passed by Congress to stop cybercrime and hope this would compel the SCOTUS to grant my petition. I believed that the tangibility surrounding electronic signals and data and its use in evidentiary proceedings was a major issue that the SCOTUS could not go unaddressed. I also believed that given the current legal environment with the states crafting their own digital data privacy laws and the GDPR now in place in the EU, these would also compel the SCOTUS to grant the same legal protection of electronic signals and the data embedded as a tangible asset for every US citizens personal data. But, as Steve has noted – “the Supreme Court isn’t that concerned about whether electronic data” is tangible for use as tangible evidence in the courts or to protect US citizens digital data.

  • [Avatar for Night Writer]
    Night Writer
    December 8, 2018 12:37 pm

    Information processing takes time, energy, and space. Information processing is technical.

    Most of this case law is from such ignorant people. The brain is like the muscle. It is a physical object to process information.

  • [Avatar for Ternary]
    December 6, 2018 03:46 pm

    In the relevant cases before the CAFC and the District Court only claims 1 and 9 are in suit. This may have been a strategic mistake by Burnett in hindsight. Dependent claim 3 and independent claim 7 would have had (arguably) a better chance to pass Alice. But I would not hold my breath for that, considering the indifference of the Courts to scientific facts. Then, of course, it is unclear, without further knowledge of the claim charts, if Panasonic infringed the other claims, besides 1 and 9.

    Burnett did about everything right and according to the rules. He filed a provisional, filed non-provisionals and obtained patents. He overcame a 101 rejection by accepting an Examiner’s amendment. The CAFC explicitly held that amendment insufficient to overcome the 101 rejection. Burnett contributed the invention to a standard body and offered RAND and FRAND licenses. His demands may have been considered too high to Panasonic in light of the opportunities offered by Alice. The Burnett complaint against Panasonic was filed in 2017. Burnett identified 27 Panasonic models which presumably infringed willfully at the time of filing, his patent(s). At that time, the choice for Panasonic must have been easy. That is: take the opportunity to try to invalidate claims 1 and 9 over Alice with the opportunity to still engage in a license with Burnett if that attempt would have failed.

    I believe his petition to the Supreme Court was doomed from the beginning. No electronic data or signals are claimed in claims 1 and 9 and have to be reasoned/read into the claims through the specification or the preamble.

    Even if the Supreme Court is willing to consider patent eligibility of signals and electronic data, which I doubt, this would not have been the case for it.

    Burnett has obtained Copyright Registration for the software of his invention. I am curious to see if this gets him compensation for his work.

    Overall, this case is a very disappointing demonstration of how our IP system is failing inventors who did everything by the book. It fully exposes the arbitrary nature of our Patent System and it should be a warning for independent inventors to rely on IP protection via a patent.

    So, when Judge Newman says that there is no room in the US for second best, she seems to include independent inventors in that group, and Judges in the group of the best, of course.

  • [Avatar for Mike]
    December 6, 2018 01:44 pm

    J. Scalia, oral argument in Alice (2014)
    We have said that:
    You can’t take an abstract idea and then say “use a computer to implement it”.

    But we haven’t said that:
    You can’t take an abstract idea and then say “here is how you use a computer to implement it”.

    Takeaway: Claiming how to use a computer to implement an abstract idea should pass muster under 101.

    The patent claims “A geospatial media recorder, comprising: converting means for converting [data] … and combining means for concatenating [data] … .”

    Assuming “converting” and “combining” are abstract, does the specification or claim show how the “converting means” and/or the “combining means” use the recorder (or an element contained therein) to implement the converting and combining?

  • [Avatar for Gene Quinn]
    Gene Quinn
    December 6, 2018 11:23 am


    Maybe claim 1 includes a bunch of mathematical calculations, but how else are you going to positionally locate something in 3 dimensional space? And if you look at claim 4 there is incorporated by encoding means (in claim 3) and capturing means, which wouldn’t be mathematical calculations only.

  • [Avatar for Michael J. Feigin, Esq.]
    Michael J. Feigin, Esq.
    December 6, 2018 10:21 am

    Here’s the claim: “1. A geospatial media recorder, comprising: converting means for converting longitude and latitude geographic degree, minutes, and seconds (DMS) coordinate alphanumeric representations or decimal equivalent geographic coordinate alphanumeric representations and altitude alphanumeric representations into individual discrete all-natural number geographic coordinate and measurement representations; and combining means for concatenating the individual discrete all-natural number geographic coordinate and measurement representations into a single discrete all-natural number geospatial coordinate measurement representation for identification 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.”

    … It sounds like a bunch of mathematical calculations to me.