Chapter 7: Patent Protection of Software:
Introduction to Software Patent Cases





The following case, Alice v. CLS Bank, reflects the current state of the law of patent eligibility for software-related patents. The material in the following chapters describes where we are now, how we got there, and (tries to chart) where we are going.

Alice Corp. Pty. Ltd. v. CLS Bank Int’l (abridged)
United States Supreme Court
573 U.S. __, 134 S. Ct. 2347 (2014)

Justice Thomas delivered the opinion of the Court.

The patents at issue in this case disclose a computer implemented scheme for mitigating “settlement risk” (i.e., the risk that only one party to a financial transaction will pay what it owes) by using a third-party intermediary.The question presented is whether these claims are patent-eligible under 35 U. S. C. § 101, or are instead drawn to a patent-ineligible abstract idea. We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention. We therefore affirm the judgment of the United States Court of Appeals for the FederalCircuit.

I

A

Petitioner Alice Corporation is the assignee of several patents that disclose schemes to manage certain forms of financial risk. According to the specification, the invention “enabl[es] the management of risk relating to specified, yet unknown, future events.” The specification further explains that the “invention relates to methods and apparatus, including electrical computers and data processing systems applied to financial matters and risk management.”

The claims at issue are designed to facilitate the exchange of financial obligations between two parties by using a computer system as a third-party intermediary. The intermediary creates “shadow” credit and debit records (i.e., account ledgers) that mirror the balances in the parties’ real-world accounts at “exchange institutions” (e.g., banks). The intermediary updates the shadow records in real time as transactions are entered, allowing “only those transactions for which the parties’ updated shadow records indicate sufficient resources to satisfy their mutual obligations.” At the end of the day, the intermediary instructs the relevant financial institutions to carry out the “permitted” transactions in accordance with the updated shadow records, thus mitigating the risk that only one partywill perform the agreed-upon exchange.

In sum, the patents in suit claim (1) the foregoing method for exchanging obligations (the method claims), (2) a computer system configured to carry out the method for exchanging obligations (the system claims), and (3) a computer-readable medium containing program code for performing the method of exchanging obligations (the media claims). All of the claims are implemented using a computer; the system and media claims expressly recite a computer, and the parties have stipulated that the method claims require a computer as well.

B

The District Court held that all of the claims are patent ineligible because they are directed to the abstract idea of “employing a neutral intermediary to facilitate simultaneous exchange of obligations in order to minimize risk.” A divided panel of the United States Court of Appeals for the Federal Circuit reversed, holding that it was not “manifestly evident” that petitioner’s claims are directed to an abstract idea. The Federal Circuit granted rehearing en banc, vacated the panel opinion, and affirmed the judgment of the District Court in a one-paragraph per curiam opinion. Seven of the ten participating judges agreed that petitioner’s method and media claims are patent ineligible. With respect to petitioner’s system claims, the en banc Federal Circuit affirmed the District Court’s judgment by an equally divided vote.

Writing for a five-member plurality, Judge Lourie concluded that all of the claims at issue are patent ineligible. In the plurality’s view, under this Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U. S. __ (2012), the court must first “identif[y] the abstract idea represented in the claim,” and then determine “whether the balance of the claim adds ‘significantly more.’ ” The plurality concluded that petitioner’s claims “draw on the abstract idea of reducing settlement risk by effecting trades through a third-party intermediary,” and that the use of a computer to maintain, adjust, and reconcile shadow accounts added nothing of substance to that abstract idea. Chief Judge Rader concurred in part and dissented in part. In a part of the opinion joined only by Judge Moore, Chief Judge Rader agreed with the plurality that petitioner’s method and media claims are drawn to an abstract idea. In a part of the opinion joined by Judges Linn, Moore, and O’Malley, Chief Judge Rader would have held that the system claims are patent eligible because they involve computer “hardware” that is “specifically programmed to solve a complex problem.” Judge Moore wrote a separate opinion dissenting inpart, arguing that the system claims are patent eligible. Judge Newman filed an opinion concurring in part and dissenting in part, arguing that all of petitioner’s claims are patent eligible. Judges Linn and O’Malley filed a separate dissenting opinion reaching that same conclusion.

We granted certiorari and now affirm.

II

“We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Myriad. We have interpreted § 101and its predecessors in light of this exception for more than 150 years. Bilski; see also O’Reilly v. Morse; Le Roy v. Tatham, 14 How. 156, 174–175 (1853).

We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature, natural phenomena, and abstract ideas are “the basic tools of scientific and technological work.” Myriad. “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo; see U. S. Const., Art. I, § 8, cl. 8 (Congress “shall have Power . . . To promote the Progress of Science and useful Arts”). We have “repeatedlyemphasized this . . . concern that patent law not inhibit further discovery by improperly tying up the future use of ” these building blocks of human ingenuity. Mayo (citing Morse.

At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. Mayo. At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id. Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr. “[A]pplication[s]” of such concepts “to a new and useful end,” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U. S. 63, 67 (1972). Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “buildin[g] block[s]” of human ingenuity and those that integrate the building blocks into something more, Mayo, thereby “transform[ing]” them into apatent-eligible invention, id. The former “would risk disproportionately tying up the use of the underlying” ideas, id., and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.

III

In Mayo, we set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us?” Id. To answer that question, we consider the elements of each claim bothi ndividually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. Id. We have described step two of this analysis as a search for an “ ‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id.

A

We must first determine whether the claims at issue are directed to a patent-ineligible concept. We conclude that they are: These claims are drawn to the abstract idea of intermediated settlement. The “abstract ideas” category embodies “the longstanding rule that ‘[a]n idea of itself is not patentable.’ ” Benson (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507 (1874)); see also Le Roy (“A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right ”). In Benson, for example, this Court rejected as ineligible patent claims involving an algorithm for converting binary coded decimal numerals into pure binary form, holding that the claimed patent was “in practical effect . . . a patent on the algorithm itself.” And in Parker v. Flook, we held that a mathematical formula for computing “alarm limits” in a catalytic conversion process was also a patent-ineligible abstract idea.

We most recently addressed the category of abstract ideas in Bilski. The claims at issue in Bilski described a method for hedging against the financial risk of price fluctuations. Claim 1 recited a series of steps for hedging risk, including: (1) initiating a series of financial transactions between providers and consumers of a commodity; (2) identifying market participants that have a counter risk for the same commodity; and (3) initiating a series of transactions between those market participants and the commodity provider to balance the risk position of the first series of consumer transactions. Claim 4 “pu[t] the concept articulated in claim 1 into a simple mathematical formula.” The remaining claims were drawn to examples of hedging in commodities and energy markets.

“[A]ll members of the Court agree[d]” that the patent at issue in Bilski claimed an “abstract idea.” Specifically, the claims described “the basic concept of hedging, or protecting against risk.” The Court explained that “‘[h]edging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.’ ” “The concept of hedging” as recited by the claims in suit was therefore a patent-ineligible “abstract idea, just like the algorithms at issue in Benson and Flook.”

It follows from our prior cases, and Bilski in particular, that the claims at issue here are directed to an abstract idea. Petitioner’s claims involve a method of exchanging financial obligations between two parties using a third party intermediary to mitigate settlement risk. The intermediary creates and updates “shadow” records to reflect the value of each party’s actual accounts held at “exchange institutions,” thereby permitting only those transactions for which the parties have sufficient resources. At the end of each day, the intermediary issues irrevocable instructions to the exchange institutions to carry out the permitted transactions.

On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk. Like the risk hedging in Bilski, the concept of intermediated settlement is “a fundamental economic practice long prevalent in our system of commerce.” The use of a third-party intermediary (or “clearing house”) is also a building block of the modern economy. Thus, intermediated settlement, like hedging, is an“abstract idea” beyond the scope of § 101.

Petitioner acknowledges that its claims describe intermediated settlement, but rejects the conclusion that its claims recite an “abstract idea.” Drawing on the presence of mathematical formulas in some of our abstract-ideas precedents, petitioner contends that the abstract-ideas category is confined to “preexisting, fundamental truth[s]” that “‘exis[t] in principle apart from any human action.”

Bilski belies petitioner’s assertion. The concept of risk hedging we identified as an abstract idea in that case cannot be described as a “preexisting, fundamental truth.” The patent in Bilski simply involved a “series of steps instructing how to hedge risk.” Although hedging is a longstanding commercial practice, it is a method of organizing human activity, not a“truth” about the natural world that has always existed, see Flook. One of the claims in Bilski reduced hedging to a mathematical formula, but the Court did not assign any special significance to that fact, much less the sort of talismanic significance petitioner claims. Instead, the Court grounded its conclusion that all of the claims at issue were abstract ideas in the understanding that riskhedging was a “fundamental economic practice.”

In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.

B

Because the claims at issue are directed to the abstract idea of intermediated settlement, we turn to the second step in Mayo’s framework. We conclude that the method claims, which merely require generic computer implementation, fail to transform that abstract idea into a patent-eligible invention.

1

At Mayo step two, we must examine the elements of the claim to determine whether it contains an “‘inventive concept’” sufficient to “transform” the claimed abstract idea into a patent-eligible application. A claim that recites an abstract idea must include “additional features” to ensure “that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].” Mayo made clear that transformation into a patent-eligible application requires “more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’ ”

Mayo itself is instructive. The patents at issue in Mayo claimed a method for measuring metabolites in the bloodstream in order to calibrate the appropriate dosage of thiopurine drugs in the treatment of autoimmune diseases. The respondent in that case contended that the claimed method was a patent-eligible application of natural laws that describe the relationship between the concentration of certain metabolites and the likelihood that the drug dosage will be harmful or ineffective. But methods for determining metabolite levels were already “well known in the art,” and the process at issue amounted to “nothing significantly more than an instruction to doctors to apply the applicable laws when treating their patients.” “Simply appending conventional steps, specified at a high level of generality,” was not “enough” to supply an “‘inventive concept.’ ” Id.

The introduction of a computer into the claims does not alter the analysis at Mayo step two. In Benson, for example, we considered a patent that claimed an algorithm implemented on “a general-purpose digital computer.” Because the algorithm was an abstract idea, the claim had to supply a “‘new and useful’” application of the idea in order to be patent eligible. But the computer implementation did not supply the necessary inventive concept; the processcould be “carried out in existing computers long in use.” Ibid. We accordingly “held that simply implementing a mathematical principle on a physical machine, namely a computer, [i]s not a patentable application of that principle.” Mayo (citing Benson).

Flook is to the same effect. There, we examined a computerized method for using a mathematical formula to adjust alarm limits for certain operating conditions (e.g., temperature and pressure) that could signal danger in a catalytic conversion process. Once again, the formula itself was an abstract idea, and the computer implementation was purely conventional. In holding that the process was patent-ineligible, we rejected the argument that “implement[ing] a principle in some specific fashion” will “automatically fal[l] within the patentable subject matter of § 101.” Thus, “Flook stands for the proposition that the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of [the idea] to a particular technological environment.” Bilski.

In Diehr, by contrast, we held that a computer-implemented process for curing rubber was patent eligible, but not because it involved a computer. The claim employed a “well-known” mathematical equation, but it used that equation in a process designed to solve a technological problem in “conventional industry practice.” The invention in Diehr used a “thermocouple” to record constant temperature measurements inside the rubber mold—something “the industry ha[d] not been able to obtain.” The temperature measurements were then fed into a computer,which repeatedly recalculated the remaining cure timeby using the mathematical equation. These additional steps, we recently explained, “transformed the process into an inventive application of the formula.” Mayo. In other words, the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.

These cases demonstrate that the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Mayo. Nor is limiting the use of an abstract idea “to a particular technological environment.” Bilski. Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to“implemen[t]” an abstract idea “on . . . a computer,” Mayo, that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Mayo.

The fact that a computer “necessarily exist[s] in the physical, rather than purely conceptual, realm” is beside the point. There is no dispute that a computer is a tangible system (in § 101 terms, a “machine”), or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of the § 101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. Such a result would make the determination of patent eligibility “depend simply on the draftsman’s art,” Flook at 593, thereby eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable,’ ” Myriad.

2

The representative method claim in this case recites the following steps: (1) “creating” shadow records for each counterparty to a transaction; (2) “obtaining” start-of-day balances based on the parties’ real-world accounts at exchange institutions; (3) “adjusting” the shadow records as transactions are entered, allowing only those transactions for which the parties have sufficient resources; and (4) issuing irrevocable end-of-day instructions to the exchange institutions to carry out the permitted transactions. Petitioner principally contends that the claims are patent eligible because these steps “requirea substantial and meaningful role for the computer.” As stipulated, the claimed method requires the use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions; in other words, “[t]he computer is itself the intermediary.”

The relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer.They do not.

Taking the claim elements separately, the function performed by the computer at each step of the process is “[p]urely conventional.” Mayo. Using a computer to create and maintain “shadow” accounts amounts to electronic record keeping—one of the most basic functions of a computer. The same is true with respect to the use of a computer to obtain data, adjust account balances, and issue automated instructions; all of these computer functions are “well-understood, routine, conventional activit[ies]” previously known to the industry. In short, each step does no more than require a generic computer to perform generic computer functions.

Considered “as an ordered combination,” the computer components of petitioner’s method “ad[d] nothing . . . that is not already present when the steps are considered separately.” Id. Viewed as a whole, petitioner’s method claims simply recite the concept of intermediated settlement as performed by a generic computer. The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. See, e.g., Diehr. Instead, the claims at issue amount to “nothing significantly more” than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer. Under our precedents, that is not “enough” to transform an abstract idea into a patent-eligible invention.

C

Petitioner’s claims to a computer system and a computer-readable medium fail for substantially the same reasons. Petitioner conceded below that its media claims rise or fall with its method claims. As to its system claims, petitioner emphasizes that those claims recite “specific hardware” configured to perform“specific computerized functions.” But what petitioner characterizes as specific hardware—a “data processing system” with a “communications controller” and “data storage unit,” for example—is purely functional and generic. Nearly every computer will include a communications controller” and “data storage unit” capable of performing the basic calculation, storage, and transmission functions required by the method claims. As a result, none of the hardware recited by the system claims “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers.” See Bilski.

Put another way, the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “warn[ed] . . . against” interpreting § 101“in ways that make patent eligibility ‘depend simply on the draftsman’s art.’ ” Mayo (quoting Flook, 437 U.S. at 593); see id., at 590 (“The concept of patentable subject matter under § 101 is not ‘like a nose of wax which may be turned and twisted in any direction . . .’ ”). Holding that the system claims are patent eligible would have exactly that result.

Because petitioner’s system and media claims add nothing of substance to the underlying abstract idea, we hold that they too are patent ineligible under § 101.

Justice Sotomayor, with whom Justices Ginsburg and Breyer join, concurring.

I adhere to the view that any “claim that merely describes a method of doing business does not qualify as a ‘process’ under § 101.” Bilski v. Kappos, 561 U.S. 593, 614 (2010) (Stevens, J., concurring in judgment); see also In re Bilski, 545 F.3d 943, 972 (Fed. Cir. 2008) (Dyk, J., concurring) (“There is no suggestion in any of th[e] early [English] consideration of process patents that processes for organizing human activity were or ever had been patentable”). As in Bilski, however, I further believe that the method claims at issue are drawn to an abstract idea. I therefore join the opinion of the Court.




Economics and Legal Background of Patent
Protection for Software Related Inventions

Excerpt from PTO Materials – 58 Fed. Reg. 66,347 (Dec. 20, 1993)

Over the past decade, the computer software industry has evolved into a critical component of the U.S. economy. It is presently the fastest growing industry in the United States, with 1992 sales in the three core elements of the software industry – programming services, prepackaged software and computer integrated design – accounting for over $36.7 billion of our domestic gross product. The software industry has risen at an annual rate of 6.6 percent and today, the industry employs about 4 percent of the American work force.

The dynamic nature of the U.S. software industry has also served to propel the U.S. firms into a dominant position in the global software industry. U.S. firms hold about 75 percent of the global market for prepackaged software and approximately 60 percent of the world market for software and related services. In 1991, foreign sales of U.S. prepackaged software vendors totaled over $19.7 billion.

Constant innovation has been the key to continued success in the U.S. software industry. As such, it is imperative that our domestic intellectual property systems not only provide an effective stimulus for innovation, but also provide appropriate and effective means for protecting those innovations. Indeed, the continued success of U.S. firms, in both domestic and foreign markets, depends directly on the availability of effective mechanisms to protect software innovations. Without such means, the full value of American innovation cannot be realized.

Intellectual property systems provide the means through which software innovations can be both encouraged and protected. The present framework of intellectual property laws provides three basic forms of legal protection that are most relevant to the development and protection of software; namely, copyrights, patents and trade secret protection. Detailed reviews of each of these forms of protection can be found in the 1992 Office of Technology Assessment report entitled Finding a Balance: Computer Software, Intellectual Property and the Challenge of Technological Change (OTA-TCT-527), and in the Final Report of the Advisory Commission on Patent Law Reform to the Secretary of Commerce (1992). A brief synopsis of these three forms of protection follows.

Software code is protected under copyright law as an original work of authorship. Copyright protection stems automatically from the act of fixation of a work onto a tangible medium. A copyright gives its owner the ability to control the reproduction, adaptation, public distribution, public display and public performance of the software code. Copyrights can be used to prevent others from copying the software program, either through direct duplication or through appropriation of the software’s expressive (as opposed to functional) elements. Under U.S. law, copyright owners can also prevent the unauthorized rental of software. Copyright protection cannot be used to prevent the use by others of the functional aspects of software, nor can it be used as a basis for action against independently developed software. In addition, the fair use doctrine under copyright law provides third parties some flexibility in their use of copyrighted works.

Patents can be used to protect processes implemented using software, as well as computer based systems. The statutory definition of inventions that are eligible to receive patent protection is found in section 101 of title 35, United States Code. This section makes patents available for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." To obtain patent protection, the inventor must apply for protection and proceed through an examination process before the Patent and Trademark Office (PTO). The examination process is used to assess whether the invention for which protection is sought meets all of the statutory criteria for patentability; namely, that the invention is eligible for protection, that it is new, that it is not obvious to a person familiar with the technical field of the invention, and that the invention has been adequately described in the patent application. Patent protection allows the patent holder to preclude others from making, using or selling the patented invention, as it has been defined in the patent claims, for a period of seventeen years measured from the date the patent is granted. Importantly, the party granted a patent must take action to enforce rights provided under the patentthe issuance of a patent does not automatically preclude infringing activity. In addition, the Federal courts have developed a limited exception to liability for infringement for non-commercial experimental use of inventions described in patents. Additional information on the patent process is available in the Manual of Patent Examining Procedure (MPEP), in particular, chapters 600, 700 and 100.

Finally, certain aspects of software can be protected through use of trade secrecy and contractual licensing agreements. Protection of trade secrets in the United States is governed by state, rather than Federal, law. Trade secret laws typically require the party asserting a trade secret right to take reasonable steps to prevent the public disclosure of the information held as a trade secret. Accidental or other public disclosure of a trade secret will eliminate the protection. Absent such disclosure, the trade secret rights will remain effective indefinitely. Trade secret rights can be enforced against parties that unlawfully obtain the information held as a trade secret.

The question of patent protection for software-related inventions has engendered a significant amount of public debate. For example, concern has been expressed over the appropriate scope of eligible subject matter (e.g., which aspects of software-related inventions should be eligible for patent protection for inventions in which the main distinguishing characteristic is a software component). Some guidance on the question of patent eligibility has been provided by the Federal courts. First, the Supreme Court has instructed the lower courts to interpret the eligibility standards for patent protection broadly. In Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980), the Court stated:

The committee reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to "include anything under the sun that is made by man." The subject matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting "the progress of science and the useful arts". Congress employed broad language in drafting Section 101 precisely because such inventions are often unforeseeable.

Second, the Supreme Court has held that the mere presence of a computer software-implemented mathematical algorithm in an invention does not automatically preclude the invention from being eligible to receive patent protection. Diamond v. Diehr, 450 U.S. 175 (1981). Finally, through interpretation of the exclusions from patentable subject matter under section 101 of title 35, United States Code, the Supreme Court and the lower federal courts have provided guidance in determining which aspects of software-related inventions are eligible for patent protection. There are three general categories of exclusion to patent eligibility that are particularly relevant to software-related inventions. The first, and most commonly applied exclusion, is the exclusion of mathematical algorithms, per se, from patent eligibility. For a summary of the law governing this exclusion, and for guidance on how the PTO applies this exclusion in the context of its examination procedures, see Patentable Subject Matter, Mathematical Algorithms and Computer Programs, 1066 O.G. 5 (Sept. 6, 1989), and Note Interpreting In re Iwahashi, 1112 O.G. 16 (March 13, 1990).

Second, methods of doing business are excluded from patent protection. While no cases have directly applied this exclusion to deny patent protection for software-related inventions, the exclusion is relevant for questioning the patent eligibility of processes that are modeled upon existing business processes but are implemented through a software-based system. See, e.g., Paine, Webber, Jackson & Curtis, Inc., v. Merrill Lynch, Pierce, Fenner & Smith 564 F. Supp. 1358, 218 U.S.P.Q. 212 (D. Del. 1983).

Finally, printed matter, per se, is not eligible for protection under the patent laws. This exclusion has relevance in the context of software code "written" onto non-paper media (e.g., magnetic or optical media capable of storing the software code). See, e.g., In re Miller, 164 U.S.P.Q. 439 (C.C.P.A. 1969); In re Jones, 153 U.S.P.Q. 77 (C.C.P.A. 1967).

Note

The 1993 views of the PTO on exclusions from patent eligibility relevant to software-related inventions were already under challenge by 1993. As will appear from materials found in later pages, all three of the exclusions listed here (algorithms, business methods, printed matter) came under serious attack by the middle of the 1990s. None retained much vitality by the end of the decade. By the end of the 1990s, attention of courts (under the leadership of the Federal Circuit) had largely shifted away from exclusions from patentability to issues of scope of claims, based on disclosure and prosecution history. Within the PTO, attention shifted to how much of a documentary showing the Examining Staff would have to make to justify its rejection of claims as obvious. Considerations of procedure displaced those of software policy. To the extent any policy issue remained, it was about how broad a patent could issue on a software-related invention rather than whether any patent would issue. After 2000, however, the tide began to change.




"Software Patent" Policy Issues
Excerpt from U.S. Cong./Off. Technol. Assessment, Finding a
Balance: Computer Software, Intellectual Property, and the
Challenge of Technological Change
, ch. 4 (1992)
http://www.wws.princeton.edu/cgi-bin/byteserv.prl/~ota/disk1/1992/9215/921506.PDF

There is an excerpt from the OTA Report near the end of chapter 1C. Consider it and the Notes following it.



Technology Background for
Software-Patent Cases (Tutorial)

Excerpt from Brief of United States in
Dann v. Johnston, 425 U.S. 219 (1976)

The issues in this case are (1) whether respondent's claimed invention concerning a new use of existing general-purpose digital computers constitutes patentable subject matter, and (2) whether that new use was unobvious to one skilled in the art of devising such uses. The questions are interrelated, for the determination of what constitutes patentable subject matter establishes a framework within which the question of obviousness may be assessed, and delineation of the assertedly non-obvious aspect of the claimed invention can focus more precisely the analysis of whether it involves patentable subject matter. Therefore we will begin by considering what it is that respondent claims he has invented that is sufficiently novel and unobvious to be entitled to a patent monopoly against all others who would use such computers in like fashion. Because respondent's claims are cast in not only the specialized language of patent applications but the esoteric terminology used to describe even a routine operation of a general-purpose digital computer, they may be more readily explained if we first describe such computers and programs briefly.

A digital computer, for present purposes is an electronic device that, pursuant to appropriate controls, can perform specified arithmetical and logical operations so as to process data stored in its "memory" or presented as part of the "input" to the computer, and to present results in a designated form of "output." The particular operations to be performed by a computer are governed by the state and configuration of its electronic circuitry and other apparatus. Such circuitry can be fully built into the computer through wires and other physical elements (i.e., as part of the "hardware"), in which case, unless it is physically rewired, the computer will ordinarily serve only a specific purpose or application.

Alternatively, the computer may be designed so that the state or configuration of its circuitry can readily be changed without rewiring or other visible physical changes. Such changes are accomplished by the use of different "programs" which through various means (e.g., punched cards, tapes, disks) transmit instructions and data to the computer, in a code or "language" that the computer has been designed or programmed to "understand," for conversion to electronic impulses.

Some programs, called "system software," are directed only to certain standard essential operations of the computer itself (e.g., translating, sorting) that are required to serve virtually any end use of the computer. Others, called "applications software" or "applications programs," are designed to make the computer perform specified data processing operations for particular users. It is the latter type of program that is involved in this case and is generally denoted by references to computer programs in common parlance.

A general-purpose digital computer is designed to operate under a variety of different programs to perform diverse data processing operations. Flexibility is its essence. As the Court observed in Gottschalk v. Benson, the end uses of such computers "vary from the operation of a train to verification of drivers' licenses to researching the law books for precedents." But such tasks are simply different uses for a machine that is specifically designed to perform a wide variety of tasks involving the processing of complex or voluminous data, in some cases implementing different applications programs virtually simultaneously. Simply put, the difference between a general-purpose digital computer (with which we will be concerned hereafter), and a fixed-wire computer is like the difference between a player piano and a music box, respectively.

In considering claims to inventions involving the use of existing general-purpose digital computers, it is useful to focus on three successive modes of activity: (1) formulating the ultimate purpose to be served by a computer operation; (2) implementing that purpose or idea by determining what data should be stored in the computer's memory or be included in the input to the computer, and what steps the computer should be instructed to take in processing the data; and (3) translating those instructions into a special form and language that the computer can read. The term "program," while in a sense referring only to the product of the third phase, which may involve no more than a rather routine or mechanical operation, is also used generically to encompass the second phase as well.* In some cases, moreover, the implementation of the purpose to be served may require the use of other apparatus in conjunction with the computer.

  *     We do not suggest that every issue concerning the application of the existing patent laws to computer programs can and must be analyzed by reference to this tripartite framework, although we believe that it usefully characterizes the broad range of computer programming.

Theoretically, inventiveness could be claimed for any of these steps. Thus one might claim to have invented, singly or in combination: a new use for a known computer, a new set of instructions to a computer to accomplish a specified operation, a new language to instruct the computer, or a new device (or combination of a computer with an existing device).

As we shall see, the alleged inventiveness or novel discovery supporting the respondent's claim to a patent resides only in the first, and most abstract, mode: the general idea or purpose that the computer would be programmed to implement. This idea as such is what respondent asserts to be sufficiently novel and unobvious to be patentable.

More specifically, respondent's alleged "invention" consists of the idea of having banks program and use their existing computers, through conventional programming techniques, to perform for their customers simple bookkeeping services that the customers either perform for themselves, hire a bookkeeper to perform, or else forego. The service consists of preparing balance statement subtotals for credits and debits in categories designated by the customer, such as rent payments, fuel payments, dividends received, sales income and the like. As conceded by respondent, the "invention" is marketed to banks in the form of an appropriate computer program, which the banks can then use on their conventional general-purpose digital computers (e.g., the IBM 1400).

Although the respondent characterizes his invention as consisting of the "machine system" that results when a conventional digital computer is programmed to implement the idea, he does not claim to have invented a computer, nor does he claim that the instructions to the computer to implement the idea are themselves sufficiently inventive to be a patentable "Discovery" contemplated by the patent clause of the Constitution and by the Patent Code. Indeed, respondent's application acknowledges that a typical program would embody "known" and "standard techniques."



English Statute of Monopolies §§ 1 and 6
21 Jac. 1, c. 3 (1623)

BE IT ENACTED, that all monopolies and all commissions, grants, licenses, charters, and letters patents heretofore made or granted, or hereafter to be made or granted to any person or persons, bodies politic or corporate whatsoever, of or for the sole buying, selling, making, working, or using of anything within this realm or the dominion of Wales, or of any other monopolies, or of power, liberty, or faculty, to dispense with any others, or to give licence or toleration to do, use, or exercise anything against the tenor or purport of any law or statute; or to give or make any warrant for any such dispensation, licence, or toleration to be had or made; or to agree or compound with any others for any penalty or forfeitures limited by any statute; or of any grant or promise of the benefit, profit, or commodity of any forfeiture, penalty, or sum of money that is or shall be due by any statute before judgment thereupon had; and all proclamations, inhibitions, restraints, warrants of assistance, and all other matters and things whatsoever, any way tending to the instituting, erecting, strengthening, furthering, or countenancing of the same, or any of them, are altogether contrary to the laws of this realm, and so are and shall be utterly void and of none effect, and in no wise to be put in ure or execution.

. . . 6. (a). Provided also, that any declaration before mentioned shall not extend to any letters patents (b) and grants of privilege for the term of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm (c) to the true and first inventor (d) and inventors of such manufactures, which others at the time of making such letters patents and grants shall not use (e), so as also they be not contrary to the law nor mischievous to the state by raising prices of commodities at home, or hurt of trade, or generally inconvenient . . . .

Boulton v. Bull
Court of Common Pleas
126 Eng. Rep. 651 (C.P. 1795)

Before Eyre, C.J., Heath, Buller, and Rooke, JJ.

Rooke, J.

. . . It is objected, that he [Watt] professes to set forth principles only; but we are not bound by what he professes to do, but by what he has really done. If he had professed to set forth a full specification of his improvement, and had not set it forth intelligibly, his specification would have been insufficient, and his patent void. It seems therefore but reasonable, that if he sets forth his improvement intelligibly, his specification should be supported, though he professes only to set forth the principle.

The term principle is equivocal; it may denote either the radical elementary truths of a science, or those consequential axioms which are founded on radical truths, but which are used as fundamental truths by those who do not find it expedient to have recourse to first principles. The radical principles on which all steam engines are founded, are the natural properties of steam, its expansiveness and condensibility. Whether the machines are formed in one shape or another, whether the cylinder is kept hot or suffered to cool, whether the steam is condensed in one vessel or another, still the radical principles are the same. When the present patentee set his inventive faculties to work, he found fire engines [steam engines] already in existence, and the natural qualities of steam already known and mechanically used. He only invented an improvement in the mechanism, by which they might be employed to greater advantage. There is no newly discovered natural principle as to steam, nor any new mechanical principle in his machine; the only invention is a new mechanical employment of principles already known.

As to the specification, some part of it, so much as represents the future intentions of the patentee, may be considered, according to the language of the specification, as merely theoretical; but the greater part describes a practical use of improved mechanism, the basis on which the improvement is founded. The object of the patentee was to condense the steam without cooling the cylinder: the means adopted to effectuate this were to enclose the cylinder in a case which will confine the heat or transmit it slowly, to surround it with steam or other heated bodies, and to suffer neither water nor any other substance colder than the steam, to enter or touch it during that time. These means are set forth. . . . The mechanical improvement, and not the form of the machine, is the object of the patent; and if this mechanical improvement is intelligibly specified, of which a jury must be the judges, whether the patentee call it a principle, invention, or method, or by whatever other appellation, we are not bound to consider his terms, but the real nature of his improvement, and the description he has given of it, and we may I think protect him without violating any rule of law. As to the articles of the specification which denote intention only, and do not state the thing to which it is to be applied, I do not think he could maintain an action for breach of these articles; for he cannot anticipate the protection, before he is entitled to it by practical accomplishment.

. . . I therefore consider the most essential part of the patent, the keeping the cylinder hot, inclosing it in a case, and surrounding it with steam, as carried into practical effect at the time of granting the patent; this the Defendant has infringed; and I will presume after verdict, where nominal damages only are given, that the evidence was applied to, and the damages given for those articles only which are well specified. Now if he has infringed those articles which are well specified, he shall not be excused from an action, because he has been guilty of an additional infringement on that which is specified as matter of intention only.

. . . [The jury] have added, that the specification is sufficient to enable a mechanic acquainted with the fire-engines previously in use, to construct fire-engines producing the effect of lessening the consumption of fuel and steam, upon the principle invented by the Plaintiff. For these reasons I think the . . . objection . . . is not of sufficient weight to destroy the effect of the patent.

Heath, J.

. . . His [Boulton’s, Watt’s partner and assignee] counsel have contended for the exclusive monopoly of a method of lessening the consumption of steam and fuel in fire-engines, and that therefore would better answer the purposes of the patentee, for the method is a principle reduced to practice; it is in the present instance the general application of a principle to an old machine. There is no doubt that the patentee might have obtained a patent for his machinery, because the act of parliament he obtained acknowledged his patent, and he himself in 1782 procured a patent for his invention of certain new improvements upon steam and fire engines for raising water &c., which contained new pieces of mechanism, applicable to the same.

Upon this statement the following objections arise to the patent, which I cannot answer: namely that if there may be two different species of patents, the one for an application of a principle to an old machine, and the other for a specific machine, one must be good and the other bad. The patent that admits the most lax interpretation should be bad, and the other alone conformable to the rules and principles of common law, and to the statute on which patents are founded. The statute 21 Jac. 1 prohibits all monopolies, reserving to the king by an express proviso so much of his ancient prerogative, as shall enable him to grant letters patent and grants of privilege, for the term of fourteen years or under, of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures.

What then falls within the scope of the proviso? Such manufactures as are reducible to two classes. The first class includes machinery, the second substances formed by chemical and other processes. To pursue this train of reasoning still further, I shall consider how far the arguments in support of this patent will apply to the invention of original machinery founded on a new principle. The steam engine furnishes an instance. The Marquis of Worcester discovered in the last century, the expansive force of steam, and first applied it to machinery. As the original inventor he was clearly entitled to a patent. Would the patent have been good applied to all machinery, or to the machines which he had discovered? The patent decides the question. It must be for the vendible matter, and not for the principle. Another objection may be urged against the patent, upon the application of the principle to an old machine, which is, that whatever machinery may be hereafter invented would be an infringement of the patent, if it be founded on the same principle. If this were so it would reverse the clearest positions of law respecting patents for machinery, by which it has been always holden, that the organization of a machine may be the subject of a patent, but principles cannot. If the argument for the patentee were correct, it would follow, that where a patent was obtained for the principle, the organization would be of no consequence. Therefore the patent for the application of the principle must be as bad as the patent for the principle itself.

It has been urged for the patentee, that he could not specify all the cases, to which his machinery could be applied. The answer seems obvious, that what he cannot specify, he has not invented. The finding of the jury that steam engines may be made upon the principle stated by the patentee, by a mechanic acquainted with the fire-engines previously in use, is not conclusive. This patent extends to all machinery that may be made on this principle, so that he has taken a patent for more than he has specified; and as the subject of his patent is an entire thing, the want of a full specification is a breach of the conditions, and avoids the patent. Indeed it seems impossible so specify a principle, and its application to all cases, which furnishes an argument that it cannot be the subject of a patent.

It has been usual to examine the specification, as a condition on which the patent was granted. I shall now consider it in another point of view. It is a clear principle of law that the subject of every grant must be certain. The usual mode has been for the patentee to describe the subject of it by the specification; the patent and the specification must contain a full description. Then in this, as in most other cases, the patent would be void for the uncertain description of the thing granted.

Buller , J.

Few men possess more ingenuity, or have greater merit with the public, than the Plaintiffs on this record; and if their patent can be sustained in point of law, no man ought to envy them the profits and advantages arising from it. Even if it cannot be supported, no man ought to envy them the profits which they have received; because the world has undoubtedly derived great advantages from their ingenuity. We are called upon to deliver our opinions on the dry question of law, whether upon the case disclosed to us, this patent can or cannot be sustained. And I shall deliver my opinion first upon the case itself, and secondly on the arguments which have been urged at the bar.

. . . There is another objection to the case, which I think more important, and that is, that the jury have not told us wherein the invention consists, whether it be in an additional cylinder, or other vessel to the old machine, or what the addition is, or whether it be only in the application of the old parts of the machine, or in what is called at the bar, the principle only, or in what that principle consists. These defects have opened a great field of argument, and have driven the Plaintiffs’ counsel to the necessity of endeavouring to support his case on all possible grounds.

The old engine consisted of a cylinder, a boiler, a pipe which occasionally communicated between them, an injection cistern, and pumps. The two material parts of the new engine, as mentioned in the specification, are the old cylinder, now called the steam vessel, and the vessel now called the condenser, which it is said must be distinct from the steam vessel, though occasionally communicating with it. The old boiler did occasionally communicate with the cylinder. The pumps, grease and other things are admitted to be trifling circumstances, and not worthy any observation. Upon this state of the case, I cannot say that there is anything substantially new in the manufacture; and indeed it was expressly admitted on the argument, that there were no new particulars in the mechanism: that it was not a machine or instrument which the Plaintiffs had invented: that mechanism was not pretended to be invented in any of its parts: that this engine does consist of all the same parts as the old engine: and that the particular mechanism is not necessary to be considered. The fact of there being nothing new in the engine drove the counsel to argue on very wide grounds, and to touch on the possibility of maintaining a patent for an idea or a principle, though I think it was admitted that a patent could not be sustained for an idea or a principle alone.

The very statement of what a principle is, proves it not to be a ground for a patent. It is the first ground and rule for arts and sciences, or in other words the elements and rudiments of them. A patent must be for some new production from those elements, and not for the elements themselves. The Plaintiffs' case is considerably distressed in many parts of it, and as it seems to me, the arguments which have been adduced were very much calculated to keep clear of difficulties, which the counsel foresaw might be introduced into the case; as first, that unless the principle can be supported as the ground of the patent, there may be some danger of confirming the Defendant’s objection to it: secondly, that unless the principle can be supported, it may open a fatal objection to the specification, because that does not state in what manner the new machine is to be constructed, how it varies from the old one, or in what way the improvements are to be added: or thirdly, because the patent embraces the whole principle, and is founded on that alone; but the invention is taken to consist of an improvement or addition only.

Another objection may arise both to the patent and specification, viz. that the patent is granted for the whole engine, and not for the addition or improvement only. Perhaps it may be convenient and judicious to keep these objections as much as possible in the background, and out of the view of the court. But it is our duty to sift and dive into the facts and circumstances of the case, and the bearings and consequences of them, as far as our abilities or knowledge of the subject will admit.

There is one short observation arising on this part of the case, which seems to me to be unanswerable, and that is, that if the principle alone be the foundation of the patent, it cannot possibly stand, with that knowledge and discovery which the world were in possession of before. The effect, the power, and the operation of steam were known long before the date of this patent; all machines which are worked by steam are worked on the same principle. The principle was known before, and therefore if the principle alone be the foundation of the patent, though the addition may be a great improvement, (as it certainly is,) yet the patent must be void ab initio.

But then it was said, that though an idea or a principle alone would not support the patent, yet that an idea reduced into practice, or a practical application of a principle was a good foundation for a patent, and was the present case. The mere application or mode of using a thing, was admitted in the reply not to be a sufficient ground; for on the court putting the question, whether if a man by science were to devise the means of making a double use [new use] of a thing known before, he could have a patent for that, it was rightly and candidly admitted that he could not. The method and the mode of doing a thing are the same: and I think it impossible to support a patent for a method only, without having carried it into effect and produced some new substance. But here it is necessary to inquire, what is meant by a principle reduced into practice. It can only mean a practice founded on principle, and that practice is the thing done or made, or in other words the manufacture which is invented.

This brings us to the true foundation of all patents, which must be the manufacture itself; and so says the statute 21 Jac. 1, c. 3. All monopolies except those which are allowed by that statute, are declared to be illegal and void; they were so at common law, and the sixth section excepts only those of the sole working or making any manner of new manufacture: and whether the manufacture be with or without principle, produced by accident or by art, is immaterial. Unless this patent can be supported for the manufacture, it cannot be supported at all.

I am of opinion that the patent is granted for the manufacture, and I agree . . . that verbal criticisms ought not to avail, but that principle in the patent and engine in the act of parliament mean and are the same thing. Besides, the declaration is founded on a right to the engine, and therefore, unless the Plaintiffs can make out their right to that extent, they must fail.

. . . Mechanical and chemical discoveries all come within the description of manufactures: and it is no objection to either of them that the articles of which they are composed were known and were in use before, provided the compound article which is the object of the invention, is new. But then the patent must be for the specific compound, and not for all the articles or ingredients of which it is made. The first inventor of a fire-engine [made of iron] could never have supported a patent for the method and principle of using iron. . . . [T]the patent must have been for the fire-engine, eo nomine. . . .

The true question in this case is, whether the Plaintiffs’ patent can be supported for the engine. I have already said I consider it as granted for the engine, and if that be the right construction of the patent, that alone lays all the arguments about ideas and principles out of the case. . .  . [T]he fact which the Plaintiffs’ counsel were forced to admit, and did repeatedly admit in the terms which I mentioned, viz. that there was nothing new in the machine, is decisive against the patent.

. . . A fire-engine of any considerable size, I take it, would cost about 1200£ and suppose the alteration made by the Plaintiff, with a fair allowance for profit would cost 50 or 100£ is it to be maintained, that all the persons who already have fire-engines must be at the expence of buying new ones from the Plaintiffs, or be excluded from the use of the improvement? So in the case of the watch, may not other persons in the trade buy the new movement, and work it up in watches made by themselves? Where men have neither fire-engines nor watches, it is highly probable that they will go to the inventor of the last and best improvements for the whole machine; and if they do, it is an advantage which the inventor gets from the option of mankind, and not from any exclusive right or monopoly vested in him.

But here the Plaintiffs claim the right to the whole machine. To that extent their right cannot be sustained, and therefore I am of opinion that there ought to be judgment for the Defendant.

Lord Chief Justice Eyre.

Upon this case two questions are reserved for the opinion of the court; the first, whether the patent is good in law, and continued by the act of parliament mentioned in the case; the second, whether the specification stated in the case is in point of law sufficient to support the patent? As I take it, the facts of the case are stated with a view to the application of them to these questions, and not to any other question which may be thought to arise upon them. Perhaps indeed, if the court saw that another material question might arise out of these facts which had escaped the attention of the court and jury at Nisi Prius, they might direct the case to be amended or a new trial to be had in order to introduce it.

These two questions were thus stated in order to bring before the court the points of law insisted on upon the part of the Defendant, and also to give an opportunity for considering a doubt which occurred to me upon my first view of the case at the trial, which was, whether a patent right could attach upon anything not organized, and capable of precise specification.

. . . Patent rights are nowhere that I can find accurately discussed in our books. Sir Edward Coke discourses largely, and sometimes not quite intelligibly, upon monopolies, in his chapter of monopolies, 3 Inst. 181. But he deals very much in general[itie]s, and says little or nothing of patent rights, as opposed to monopolies. He refers principally to his own report of the case of monopolies. 11 Co. 86 b.; he also mentions a resolution of all the judges in 2 & 3 Eliz. from a MS. of Dyer, condemning a grant to the corporation of Southampton by Phillip and Mary, for the sole right of importing malmsey wine, and that no malmsey wine should be landed at any other place, upon pain to pay treble customs. He also mentions Bircot’s case in the Exchequer Chamber, 15 Eliz., for a privilege concerning the preparing and melting of lead ore, but he states no particulars; and the principle on which that case was determined has been, as my Brother Buller observes, not adhered to; namely, that an addition to a manufacture cannot be the subject of a patent. There is also a case in Godbolt 6, and there are a few others condemning particular patents, which were beyond all doubt mere monopolies. The modern cases have chiefly turned upon the specifications, whether there was a fair disclosure.

. . . Deriving so little assistance from our books, let us resort to the statute itself, 21 Jac. 1, c. 3. We shall there find a monopoly defined to be “the privilege of the sole buying, selling, making, working or using any thing within this realm,” and this is generally condemned as contrary to the fundamental law of the land. But the 5th and 6th sections of that statute save letters patent, and grants of privileges of the sole working or making of any manner of new manufacture within this realm, to the first and true inventor or inventors of such manufactures, with this qualification, “so they be not contrary to the law, nor mischievous to the state,” in these three respects: first, “by raising the prices of commodities at home; secondly, “by being hurtful to trade”; or, thirdly, by being “generally inconvenient.”

According to the letter of the statute, the saving goes only to the sole working and making; the sole buying, selling and using, remain under the general prohibition; and with apparent good reason for so remaining, for the exclusive privilege of buying, selling and using, could hardly be brought within the qualification of not being contrary to law, and mischievous to the state, in the respects which I have mentioned. I observe also, that according to the letter of the statute, the words "any manner of new manufacture" in the saving, fall very short of the words “any thing” in the first section.

But most certainly the exposition of the statute, as far as usage will expound it, has gone very much beyond the letter. In the case in Salkeld, the words . . . “new devices” . . . are substituted and used as synonymous with the words . . . “new manufacture”. . . . It was admitted in the argument at the bar, that the word “manufacture” in the statute was of extensive signification, that it applied not only to things made, but to the practice of making, to principles carried into practice in a new manner, to new results of principles carried into practice.

Let us pursue this admission. Under things made, we may class, in the first place, new compositions of things, such as manufactures in the most ordinary sense of the word; secondly, all mechanical inventions, whether made to produce old or new effects, for a new piece of mechanism is certainly a thing made. Under the practice of making we may class all new artificial manners of operating with the hand, or with instruments in common use, new processes in any art producing effects useful to the public. When the effect produced is some new substance or composition of things, it should seem that the privilege of the sole working or making, ought to be for such new substance or composition, without regard to the mechanism or process by which it has been produced, which, though perhaps also new, will be only useful as producing the new substance.

. . . In the list of patents with which I have been furnished, there are several for new methods of manufacturing articles in common use, where the sole merit and the whole effect produced are the saving of time and expence, and thereby lowering the price of the article, and introducing it into more general use. Now I think these methods may be said to be new manufactures, in one of the common acceptations of the word, as we speak of the manufactory of glass, or any other thing of that kind. The advantages to the public from improvements of this kind, are beyond all calculation important to a commercial country, and the ingenuity of artists who turn their thoughts toward such improvements, is in itself deserving of encouragement; and in my apprehension it is strictly agreeable to the spirit and meaning of the statute Jac. 1, that it should be encouraged.

The patent cannot be for the effect produced, for it is either no substance at all, or what is exactly the same thing as to the question upon a patent, no new substance, but an old one, produced advantageously for the public. It cannot be for the mechanism, for there is no new mechanism employed. It must then be for the method; and I would say, in the very significant words of Lord Mansfield (4 Burr. 2397) in the great case of the copy-right, it must be for method detached from all physical existence whatever. And I think we should well consider what we do in this case, that we may not shake the foundation upon which these patents stand. Probably I do not over-rate it when I state that two-thirds, I believe I might say three-fourths, of all patents granted since the statute passed, are for methods of operating and of manufacturing, producing no new substances and employing no new machinery. If the list were examined, I dare say there might be found fifty patents for methods of producing all the known salts, either the simple salt, or the old compounds. The different sorts of ashes used in manufactures are many of them inventions of great merit, many of them probably mere speculations of wild projectors: the latter ought to fall, the former to stand.

If we wanted an illustration of the possible merit of a new method of operating with old machinery, we might look to the identical case now in judgment before the court. If we consider into what general use fire-engines are come, that our mines cannot be worked without them, that they are essentially necessary to the carrying on many of our principal manufactures, that these engines are worked at an enormous expence in coals, which in some parts of the kingdom can with difficulty be procured at all in large quantities, it is most manifest that any method found out for lessening the consumption of steam in the engines, which by necessary consequence lessens the consumption of coals expended in working them, will be of great benefit to the public, as well as to the individual who thinks fit to adopt it.

And shall it now be said, after we have been in the habit of seeing patents granted, in the immense number in which they have been granted for methods of using old machinery, to produce substances that were old, but in a more beneficial manner, and also for producing negative qualities by which benefits result to the public, by a narrow construction of the word manufacture in this statute, that there can be no patent for methods producing this new and salutary effect, connected, and intimately connected as it is, with the trade and manufactures of the country? This, I confess, I am not prepared to say.

An improper use of the word principle in the specification set forth in this case has, I think, served to puzzle it. Undoubtedly there can be no patent for a mere principle, but for a principle so far embodied and connected with corporeal substances as to be in a condition to act, and to produce effects in any art, trade, mystery, or manual occupation, I think there may be a patent. Now this is, in my judgment, the thing for which the patent stated in the case was granted, and this is what the specification describes, though it miscalls it a principle. It is not that the patentee has conceived an abstract notion that the consumption of steam in fire-engines may be lessened but he has discovered a practical manner of doing it; and for that practical manner of doing it he has taken this patent. Surely this is a very different thing from taking a patent for a principle; it is not for a principle, but for a process. I have dwelt the more largely upon this part of the case because, in my apprehension, this is the foundation upon which the whole argument will be found to rest. If upon the true construction of the statute there may be a patent for a new method of manufacturing or conducting chemical processes, or of working machinery, so as to produce new and useful effects, then I am warranted to conclude that this patent was in its original creation good.

. . . The substance of the invention is a discovery that the condensing the steam out of the cylinder, the protecting the cylinder from the external air, and keeping it hot to the degree of steam-heat, will lessen the consumption of steam. This is no abstract principle, it is in its very statement clothed with practical application. It points out what is to be done in order to lessen the consumption of steam. Now the specification of such a discovery seems to consist in nothing more than saying to the constructer of a fire-engine, “for the future condense your steam out of the body of the cylinder, instead of condensing it within it, put something round the cylinder to protect it from the external air, and to preserve the heat within it, and keep your piston air-tight without water.”

Any particular manner of doing this one should think would hardly need to be pointed out, for it can scarcely be supposed, that a workman capable of constructing a fire engine would not be capable of making such additions to it as should be necessary to enable him to execute that which the specification requires him to do. But if a very stupid workman should want to know how to go about this improvement, and in answer to his question was directed to conduct the steam which was to be condensed from the cylinder into a close vessel, by means of a pipe and a valve, communicating with the cylinder and the close vessel, to keep the close vessel in a state of coldness sufficient to produce condensation, and to extract from it any part of the steam which might not be condensed by the pump; and was also told to enclose the cylinder in a wooden case, and to use a resinous substance instead of water to keep the piston air-tight, can it be imagined that he would be so stupid as not to be able to execute this improvement, with the assistance of these plain directions? If any man could for a moment imagine that this was possible, I observe that this difficulty is put an end to, because the jury have found that a workman can execute this improvement in consequence of the specification. Some machinery it is true must be employed, but the machinery is not of the essence of the invention but incidental to it. The steam must pass from the cylinder to the condensing vessel, for which purpose there must be a valve to open a pipe to convey, and a vessel to receive the steam. But this cannot be called new invented machinery, whether considered in the parts or in the whole, and therefore there can be no patent for this addition to the fire-engines.

Suppose a new invented chemical process, and the specification should direct that some particular chemical substance should be poured upon gold in a state of fusion, it would be necessary, in order to this operation, that the gold should be put into a crucible, and should be melted in that crucible, but it would be hardly necessary to state in the specification the manner in which, or the utensils with which the operation of putting gold into a state of fusion was to be performed. They are mere incidents with which every man acquainted with the subject [a person of ordinary skill in the art] is familiar.

Some observations were made in the course of the argument at the bar, on its being left unascertained both in the specification and case, to what extent the consumption of steam would be lessened by the invention; but the method does not profess to ascertain this: it professes to lessen the consumption; and to make the patent good, the method must be capable of lessening the consumption to such an extent as to make the invention useful. More precision is not necessary, and absolute precision is not practicable. The quantity of steam which will be saved in each machine must depend upon a great variety of circumstances respecting each individual fire-engine, such as the accuracy of casting or boring the cylinder, or the dimensions of it, the accuracy of the workman in putting his apparatus together, the care in keeping the cylinder in a proper degree of heat, and the more or less perfect order for working, in which the engine is kept. All these circumstances will affect the quantity of steam to be lessened.

Some weighty observations have been made upon parts of this specification, but those parts appear to me not properly to relate to the method described in the patent; they are rather intimations of new projects of improvement in fire-engines, and some of them, I am very ready to confess, either very loosely described or not very accurately conceived. I do not undertake to pronounce which, but one or the other is pretty clear. They are the fourth and fifth articles: the first, second, third and sixth appear to me to belong to this method, and very clearly to point out and explain the method to every man who has a common acquaintance with the subject, and to be intelligible even to those who are unacquainted with it. If there be a specification to be found in that paper, which goes to the subject of the invention as described in the patent, I think the rest may very well be rejected as superfluous. . . .

But I would observe here, that with regard to this and some other difficulties, there is no question reserved in this case respecting the infringement of the patent. The general fact only is stated; that it has been infringed by the Defendant and in the consideration of a case reserved, we are not to search for difficulties upon which the parties have not proposed to state any point to us for our judgment, and into which I think we are not at liberty to go. . . . But this cause was instituted to try the merits of the patent: I thought therefore that a formal objection was wisely overlooked. Supposing then the difficulty upon the patent itself and the specification to be got over, the act of parliament remains to be considered.

The objection stated in the strongest manner would amount to this, that the act continues a patent for a machine, when in fact the patent is for a process. It is to be observed that there is nothing technical in the composition or the language of an act of parliament. In the exposition of statutes the intent of parliament is the guide. It is expressly laid down in our books, I do not here speak of penal statutes, that every statute ought to be expounded not according to the letter, but the intent. 2 Roll. Abr. 118, Plowd. 350, 363. This doctrine has been carried into effect by cases. . . . The objection on the act of parliament is of the same nature as one of the objections to the specification: the specification calls a method of lessening the consumption of steam in fire-engines a principle, which it is not; the act calls it an engine, which perhaps also it is not; but both the specification and statute are referable to the same thing, and when they are taken with their correlative are perfectly intelligible. Upon the wider ground I am therefore of opinion that the act has continued this patent.

A narrower ground was taken in the argument, which was to expound the word engine in the body of this act, in opposition to the title of it, to mean a method; and I am ready to say I would resort to that ground if necessary in order to support the patent, ut res magis valeat quàm pereat [it is better for a thing to have effect than to be made void]. But it is not necessary: for let it be remembered, that though monopolies in the eye of the law are odious, the consideration of the privilege created by this patent, is meritorious, because, to use the words of Lord Coke, “the inventor bringeth to and for the commonwealth a new manufacture by his invention, costs and charges.” I conclude therefore that the judgment of the court ought to be for the Plaintiff.

[The court being thus equally divided, no judgment was given.]



Notes

1. Counsel for Bull argued:

. . . In Sir Richard Arkwright’s case the learned judge before whom it was tried, stated in his suming up, that for a principle alone a patent could not be obtained, for which he gave very convincing reasons. And independent of authorities, the reason of the thing shews that such a patent could not be obtained within the meaning of the statute. By obtaining a patent for principles only, instead of one for the result of the application of them, the public is prevented, during the term from improving on those principles, and at the end of the term is left in a state of ignorance as to the best, cheapest and most beneficial manner of applying them to the end proposed.

126 Eng. Rep. at 656. This argument often recurs in later cases. Do you agree with Arkwright’s counsel and the “learned judge”? Isn’t the problem limited to the term of the patent, and afterwards the public gets the benefit of the invention?

2. Other recurrent questions that arose in this case are whether a process, as contrasted with a tangible physical object, can be patented; and whether the inventor’ words should limit his rights, or whether their spirit should govern. (Watt’s patent at issue in this case asserted that he claimed a principle.)

3. A considerable role in this and the following case is played by the interpretation to be given the term “manufacture”, as used in the Statute of Monopolies. The U.S. Constitution does not limit patents to manufactures. It speaks in terms of “Discoveries” (meaning “inventions”) by “Inventors”, while the U.S. statutes refer to machines, compositions, manufactures, etc.

4. Justice Rooke says (as do others to the same effect): “[W]e are not bound by what he professes to do, but by what he has really done. ” Do you agree? What would the Federal Circuit or Supreme Court say?



 

Hornblower v. Boulton
Court of King’s Bench
101 Eng. Rep. 1285 (K.B. 1799)

[This was an action on the case, brought in the Court of Common Pleas by the defendants in error, against the plaintiffs in error, for infringing a patent. The declaration alleged that the defendants below unlawfully and unjustly, and without the licence of the plaintiffs, constructed divers, to wit, ten fire engines [steam engines] according to, and in, and with a method of lessening the consumption of steam and fuel, in such fire-engines, in imitation and resemblance of the method of lessening the consumption of steam and fuel in fire-engines so invented by Watt, and secured to him and his assigns. The defendants below pleaded not guilty; and a general verdict having been found for the plaintiffs below, and judgment given for them by the Court of Common Pleas, the defendants brought a writ of error, and assigned for error that the invention for which the letters patent were granted is of mere principles only, for which no such letters patent could by law be granted.]

Before Lord Kenyon, Ch. J., Ashhurst, Grose, and Lawrence, JJ.

Lord Kenyon, Ch.J.

It was rather from a deference to the very respectable opinions given in the Court of Common Pleas on the former occasion [Boulton v. Bull], than from any doubt we entertained on the subject, that a second argument was awarded here: but the case having been most ably argued, and every argument advanced at the Bar that bears upon it, I wish to deliver my opinion now, to prevent any farther delay to the parties interested.

I confess I am not one of those who greatly favour patents; for though, in many instances, and particularly in this, the public are benefited by them, yet on striking the balance upon this subject, I think that great oppression is practised on inferior mechanics by those who are more opulent. The principal objection made to this patent by the plaintiffs in error is, that it is a patent for a philosophical principle only, neither organized or capable of being organized; and if the objection were well founded in fact, it would be decisive: but I do not think that it is so.

No technical words are necessary to explain the subject of a patent; as Lord Hardwicke said upon another occasion, there is no magic in words. The questions here are, whether by looking at the patent, explained as it is by the specification, it does not appear to be a patent for a manufacture and, whether the specification is not sufficient to enable a mechanic to make the thing described. The jury have not indeed answered those questions in the affirmative, in terms; but they have impliedly done so by finding a general verdict for the plaintiffs below. By comparing the patent and the manufacture together, it evidently appears that the patentee claims a monopoly for an engine or machine, composed of material parts, which are to produce the effect described; and that the mode of producing this is so described, as to enable mechanics to produce it. Having said thus much, it appears that the subject, as far as we have to treat of it, is exhausted. I have great respect for the contrary opinions that were given in the Common Pleas [Boulton v. Bull?]; and, probably, if I had been called upon on a sudden to determine this case, I should have been at a loss how to decide: but having now heard everything that can be said on the subject, I have no doubt in saying, that this is a patent for a manufacture, which I understand to be something made by the hands of man.

Ashhurst, J.

Every new invention is of importance to the wealth and convenience of the public; and when they are enjoying the fruits of an useful discovery, it would be hard on the inventor to deprive him of his reward. In this case the jury have found, by their verdict, that all the allegations in the declaration were proved; one of which was, that the inventor had by his specification particularly described the nature of his invention, and the manner in which it was to be performed; and having thus complied with the terms of his patent, I think he is, in point of law as well as justice, entitled to the benefit which the patent and the Act of Parliament intended to confer on him.

Grose, J.

The question then is, whether the patent be good in law – in other words, whether it be conformable to the statute of 21 Jac. 1, c. 3, s. 6, under which the plaintiff or any party can alone claim the privilege of a monopoly. The defendants below pleaded not guilty; and a general verdict having been found for the plaintiffs below, and judgment given for them by the Court of Common Pleas, the defendants brought a writ of error, and assigned for error that the invention for which the letters patent were granted is not an invention of any formed or organized machine, instrument, or manufacture, but of mere principles only, for which no such letters patent could by law be granted.

The power thereby reserved to the King is, “That any declaration [against monopolies] before mentioned, shall not extend to any letters patent and grants of privilege for the term of 14 years or under, thereafter to be made, of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures, which others, at the time of making such letters patent and grants, shall not use; so as also they be not contrary to the law, nor mischievous to the State, by raising prices of commodities at home, or hurt of trade, or generally inconvenient.” The questions then upon this patent are, whether it be a patent for the sole working or making of any manner of new manufacture; whether the patentee were the first inventor; and whether it be contrary to law, mischievous to the State, or to trade, or generally inconvenient.

By a proviso in the patent, the patentee is bound particularly to describe and ascertain the nature of his invention, and in what manner the same was to be performed, by an instrument in writing under his hand and seal; and to cause the same to be enrolled in the Court of Chancery. On which another question arises, namely, whether the specification enrolled be sufficient. The aim of the Legislature is obvious. On the one hand, it was to encourage ingenious artificers and able and studious men to invent and bring forward for the use of the public new manufactures, the produce of their own ingenuity, by holding out to them the reward of the 14 years’ monopoly; on the other hand, to secure to the public the benefit of the discovery, by causing to be enrolled a complete description of the thing to be done, and the manner of doing it, that others might be fully informed of it; and at the end of 14 years to be enabled to work or make the manufacture of which the patentee was the inventor.

. . . The important question is, whether it be a patent “for the making or working of any manner of new manufacture.” It is argued by the plaintiffs in error, first, that it is a patent for a mere principle, and not for a new manufacture; and that nothing can be the object of a patent but a manufacture. 2dly, that if it be a patent for a new manufacture, namely, the steam engine, it is not new, and that the patent should have been for the addition only, and not for the whole engine. As to the first of those propositions, that under the Statute of James, there cannot be a patent for a mere principle, which this is contended to be, it is not necessary for me, in my way of considering the case, to form a decided opinion on that point; for if I can shew that this is a patent for a new manufacture, whether a patent for a mere principle be good or not will be immaterial. Upon that point I shall only say, that having very much turned the question in my mind, and weighed and considered again and again the words of the statute specifying what patents the Crown may grant, upon which alone I conceive the question must ultimately depend, I am not prepared to say that a patent for a mere principle was intended to be comprehended within those words. It is, indeed, difficult to conceive that the Legislature, in giving power to the Crown to grant patents for the sole working or making of any manner of new manufacture, intended a power to grant patents for any other purpose than those expressly mentioned.

But, as I said before, this is not material for me to determine, inasmuch as it seems to me, upon the best consideration, that this is not a patent for a mere principle, but for the working and making of a new manufacture within the words and meaning of the statute. I have been led to adopt this opinion by considering the words and description of the invention in the patent, as referring to and explained by the specification; and the specification itself as part of the patent. The ground on which I have felt myself at liberty so to do is this: the benefit to the public is from the specification disclosing to the world how others may make and use the same manufacture; without the specification the public have not that information; and by the condition of the letters patent, without the specification, the patentee is not entitled to his monopoly: providing, therefore, by the patent, that there must be a specification, and there being necessarily one in consequence of that proviso, I consider the patent and specification so connected together as to make a part of each other; and that to learn what the patent is, I may read the specification, and consider it as incorporated in the patent.

Now the patent recites, that Mr. Watt had invented a method of lessening the consumption of steam and fuel in fire engines; it grants to him the sole use and exercise of that invention, upon condition that he would disclose the nature of the invention, and in what manner the same was to be performed by an instrument enrolled. He does so, and that instrument describes the principles of the method, and the method by which those principles are to be carried into effect. The method is founded on the principle of keeping the steam vessel, the whole time the engine is at work, as hot as the steam that enters it: this is to be done by the manufacture of a case of wood, or some other material that transmits heat slowly, and by surrounding it with steam or other heated bodies, and suffering neither water nor any substance colder than steam to touch it.

Secondly, he points out a mode of condensing the steam by vessels to be used distinct from the steam vessels at some times; at others they are to communicate with them, which he calls condensers; and these are new, at least not part of the old engine, and are to be kept as cold as the air in the neighbourhood of the engines.

Thirdly, he gives directions, as to drawing out the air not condensed by the cold of the condenser. Fourthly, he states how he means to employ steam to press on the piston in given cases. Fifthly, he directs how steam vessels should be formed, where rotatory motions, or motions round an axis, are required, namely, with weights and valves; and directs how in such case the steam vessels shall be supplied with steam, and how that which has done its office shall be discharged; and he also states a method by which the engine may be worked by the alternate expansion and contraction of the steam.

This method, however, if not effected or accompanied by a manufacture, I should hardly consider as within the Statute of James. But it seems to me that, in this specification, he does describe a new manufacture, by which his principle is realized; that is, by which his steam vessel is kept as hot as the steam during the time the engine is at work; by which means the consumption of steam and fuel is lessened. Thus he specifies the particular parts requisite to produce the effect intended, and states the manner how they are to be applied. He describes the case of wood in which the steam vessel is to be enclosed, the engines that are to be worked wholly or partially by condensation of steam, the vessels that he denominates condensers, and the steam vessels where rotatory motions are required. Can it then be said that the making and combining of these parts is not some manner of new manufacture? I cannot say that it is not. But if that had been doubtful, the verdict ascertains the fact.

But then it is objected that the patent should have been for that manufacture; whereas it is for principles which the specification describes. To which I answer, that the patent is not merely for principles, nor does the specification describe principles only. The patent states the principles on which the inventor proceeds, and shews in his specification the manufacture by means of which those principles are to take effect; which effect is to be the lessening of the consumption of steam and fuel by keeping the steam vessel of one uniform heat with the steam so long as the engine is worked.

Taking it however as a patent for an engine, it is objected: that the thing was made before, and that the patent should have been for the addition only, and not for the whole engine. But I do not consider it as a patent for the old engine, but only for the addition to or improvement of the old engine; and so the Act of Parliament considers it. The old engine consumed too much steam and fuel, and it was considered that by a case of wood, or of other material that would transmit heat slowly, surrounding it with steam by the use of condensers, and doing that which was not done in the old engine but is in this, the defects in the old engine might be corrected, and the new one by its additions made more useful. Experiments were tried, as appears by the Act of Parliament; and the purpose for which these additions were made is ultimately found to be completely attained by the methods pointed out in the specification.

It possibly occurred to the inventor, that if the patent were to be obtained for the whole engine, it might be open to cavil, and therefore he took out his patent not for the engine, but for his invention of a method of lessening the consumption of steam and fuel in fire engines. The method is disclosed in the specification, and it is by the addition of what is there disclosed, and by managing it in the way described. The patent therefore is only for that additional improvement as described in the specification; and there is no pretence to say that he claims or could claim the sole making of the old engine.

But a doubt is entertained, whether there can be a patent for an addition to an old manufacture. . . . The Statute 15 Geo. 3 (I observe) secures to the patentee the privilege of constructing and selling the engines in words; on which account it has been objected that it falsely recites the patent, and therefore cannot operate in support of it; but the statute must have a reasonable construction, to support rather than defeat the intention of the Legislature and their grant; and by attending to every part of the statute, it is obvious that the engines secured to the patentee are such as are improved in the manner stated in the specification, and not the original fire engines; for the statute reciting the patent, recites it as a grant of the benefit and advantage of making and vending “certain engines by him invented for lessening the consumption of steam and fuel in fire engines.” Now those were not the original fire engines but the improved ones; and those that were so improved, were the only ones invented for lessening the consumption of steam and fuel in fire engines; which shews that the Legislature considered the patent as a patent for the improvement of the engine described in the specification, and not as a patent for a mere method, or for the original fire engine.

The subject is new to me, not affecting to be a mechanic; and I have had great difficulties in making up my mind upon it. I am inclined however to think that a patent cannot be granted for a mere principle; but I think that, although in words the privilege granted is to exercise a method of making or doing anything, yet if that thing is to be made or done by a manufacture, and the mode of making that manufacture is described, it then becomes in effect (by whatever name it may be called) not a patent for a mere principle, but for a manufacture for the thing so made, and not merely for the principle upon which it is made. Where then is the mischief to the public, or how in this case is the intention of the Legislature defeated? They intended that, after 14 years, the public should from the specification be in possession of the manufacture and the art of making it; and that for those 14 years the patentee should have the monopoly of it as his reward.

The patent is nothing without the specification; and the patentee can gain no advantage by it. It is also useless, unless the specification be such from which the public may gain information; therefore, whether the patent call the manufacture by its name, or style it an invention, a mode, a method, or in any other manner, it signifies nothing; for the specification describing the thing as required by the patent must be resorted to, and may fairly be deemed a part of the patent itself. If that be so, I read this patent, and find that it is for a method to be pursued according to the directions of the specification; and looking to the specification, I see that by pursuing the method pointed out, a manufacture is produced by the ingenuity of the inventor, and of which the public are to have the benefit. Then the intention of the Legislature is fulfilled; the public enjoy the fruits of the author’s ingenuity, and the author gets the monopoly for a certain term. It signifies nothing to either whether the patent be for the engine so made, or for the method of making it, if that method be sufficiently described in the specification. Upon these grounds, with that deference which I ought to feel upon a subject with which I do not profess myself to be much conversant, my opinion is that the judgment of the Court of Common Pleas ought to be affirmed.

Lawrence, J.

Two objections have been made by the plaintiffs in error; 1st, that this is not an invention for any formed or organized machine, instrument, or manufacture, but of mere principles only; 2dly, that the specification is bad.

As to the first, the claim of the plaintiffs below is founded on the proviso in the Statute of James, which allows the Crown to grant patents in favour of new manufactures; and therefore it must rest on the ground of Watt’s having invented some new manufacture. If it were necessary to consider whether or not mere abstract principles are the subject of a patent, I should feel great difficulty in deciding that they are: but that consideration is unnecessary on the present occasion, because by looking at the patent and the recital in the Act of Parliament, it appears that Watt applied for and obtained a patent for an engine or mechanical contrivance for lessening the consumption of steam in fire engines.

The letters patent recite that he had invented a method of lessening the consumption of steam, and grant to him the sole right of using the said invention for 14 years. In order to see what the invention was, it is necessary to refer to the specification; that states what the invention is, and that the method consists in certain principles, as they are called, which are described in the specification. Then followed the statute, which, after reciting that the King had granted to Watt the sole benefit of making and vending certain engines invented by him for lessening the consumption of steam in fire engines, and that he had enrolled in the Court of Chancery a description of the said engine, vests in him the sole right of making and selling the said engines for 25 years. From this therefore it is clear that the Legislature understood that the patent was for an engine for some mechanical contrivance; and the form of the patent and the specification does not contradict this. Engine and method mean the same thing, and may be the subject of a patent.

“Method”, properly speaking, is only placing several things and performing several operations in the most convenient order: but it may signify a contrivance or device; so may an engine, and there I think it may answer the word “method.” So “principle” may mean a mere elementary truth, but it may also mean constituent parts; and in effect the specification is this: “The contrivance by which I lessen the consumption of steam consists in the following principles, that is, constituent or elementary parts; a steam vessel, in which the powers of steam are to operate, to be kept as hot as the steam by a case; a distinct vessel to condense the steam; and pumps to draw off such vapour as is likely to impede the motion of the fire engine,” &c. That is the description of the thing when put into different language.

. . . The patent must be supported as granted for an improvement and addition to old engines known and in use; and I think that the patent is good in this point of view: for Watt claims no right to the construction of engines for any determinate object except that of lessening the consumption of steam and fuel in fire-engines. His patent supposes the existence of such engines; and his contrivance, method, or engine is for lessening the consumption of fuel in such pre-existing engines, and for nothing else. . . .



Notes

1. Jonathan Hornblower invented the compound steam engine (→) and patented it in 1781. This type of steam engine has two cylinders, a high-pressure and a low-pressure steam cylinder. The steam first expands in the smaller high-pressure cylinder and then expands again in the larger low-pressure cylinder, which more efficiently extracts further energy from the hot steam and, by more fully extracting the energy from the steam, uses less fuel. The judgment in this suit prevented Hornblower from exploiting his invention until after 1804, when Watt’s patent expired. Hornblower was imprisoned for not paying royalty to Boulton for the infringement, and was fined. Hornblower died in poverty and disappointment. The original Hornblower system was impractical, but a modified system using high-pressure steam was more successful. Eventually, the compound steam engine with a condenser became a standard for steam engines.

2. For a further account of steam-engine technology, see The Development of the Modern Steam-Engine. James Watt and His Contemporaries.



Joseph Story, Note, On the Patent Laws
16 U.S. (3 Wheat.) app. n.(ii) (1818)
Note II to Evans v. Eaton, 16 U.S. (3 Wheat.) 454 (1818)

The patent acts of the United States are, in a great degree, founded on the principles and usages which have grown out of the English statute on the same subject. It may be useful, therefore, to collect together the cases which have been adjudged in England, with a view to illustrate the corresponding provisions of our own laws; and then bring in review the adjudications in the courts in the United States.

. . . A patent cannot be for a mere principle, properly so called; that is, for an elementary truth.


Neilson v. Harford
Exchequer of Pleas
151 Eng. Rep. 1266, 8 M. & W. 806, Web. Pat. Cases 295 (1841)

Before Barons Alderson and Parke.

Baron Parke.

This was an action on the case for the infringement of a patent, dated 11th September, 1828, granted to the plaintiff James Beaumont Neilson for a term of fourteen years, the title of which was “An invention for the improved application of air to produce heat in fires, forges, and furnaces, where bellows or other blowing apparatus are required.”

The defendants pleaded not guilty, and also several special pleas, of which the fourth only is material to this report. In that plea the defendants set out the specification of the invention enrolled by the plaintiff Neilson, as follows: “I, James Beaumont Neilson, do hereby declare, that the nature of my said invention for the improved application of air to produce heat in fires, forges, and furnaces, where bellows or other blowing apparatus are required, and the manner in which the same is to be performed, is particularly described and ascertained as follows: that is to say:– A blast or current of air must be produced by bellows or other blowing apparatus, in the ordinary way, to which mode of producing the blast or current of air this patent is not intended to extend. The blast or current of air so produced is to be passed from the bellows or blowing apparatus into an air-vessel or receptacle, made sufficiently strong to endure the blast, and from that vessel or receptacle, by means of a tube, pipe, or aperture, into the fire, forge, or furnace. The vessel or receptacle must be air-tight, or nearly so, except the apertures for the admission and emission of the air; and at the commencement and during the continuance of the blast, it must be kept artificially heated to a considerable temperature. It is better that the temperature be kept to a red heat, or nearly so; but so high a temperature is not absolutely necessary to produce a beneficial effect. The air-vessel or receptacle may be conveniently made of iron, but as the effect does not depend upon the nature of the material, other metals or convenient materials may be used. The size of the air-vessel must depend upon the blast, and upon the heat necessary to be produced. For an ordinary smith’s fire or forge, an air-vessel or receptacle capable of containing 1200 cubic inches will be of proper dimensions; and for a cupola of the usual size for cast-iron founders, an air-vessel capable of containing 10,000 cubic inches will be of a proper size. . . . [Ed. Note: The receptacle is, in effect, a metal box, located under the word “air” at the lower right of the figure shown above. The metal box is heated in order to heat the air that travels through it from the right via the pipe to the cupola.]

The judgment of the Court was delivered by Baron Parke.

In the case of Neilson v. Harford, at the request of my Lord Abinger, I proceed to deliver his Lordship’s judgment, and that of the rest of the Court, on this question.

. . . Then we come to the question itself, which depends on the proper construction to be put on the specification. It was contended that of this construction the jury were to judge. We are clearly of a different opinion. The construction of all written instruments belongs to the Court alone, whose duty it is to construe all such instruments, as soon as the true meaning of the words in which they are couched, and the surrounding circumstances, if any, have been ascertained as facts by the jury: and it is the duty of the jury to take the construction from the Court, either absolutely, if there be no words to be construed as words of art, or phrases used in commerce, and no surrounding circumstances to be ascertained; or conditionally, when those words or circumstances are necessarily referred to them. Unless this were so, there would be no certainty in the law; for a misconstruction by the Court is the proper subject, by means of a bill of exceptions, of redress in a Court of Error; but a misconstruction by the jury cannot be set right at all effectually.

Then, taking the construction of this specification on ourselves, as we are bound to do, it becomes necessary to examine what the nature of the invention is which the plaintiff has disclosed by this instrument. It is very difficult to distinguish it from the specification of a patent for a principle, and this at first created in the minds of some of the Court much difficulty; but, after full consideration, we think that the plaintiff does not merely claim a principle, but a machine embodying a principle, and a very valuable one. We think the case must be considered as if, the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention then consists in this – the interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated, by the application of heat externally to the receptacle, and thus he accomplishes the object of applying the blast, which before was of cold air, in a heated state to the furnace.

[The court concluded by affirming the judgment below.]

Notes

  1. The question in this case, as Baron Alderson posed it (Neilson, 151 Eng. Rep. at 1272, 8 M & W at 820, Web. Pat. Cases at 371), was “[W]here is the difference between claiming a principle, which is to be carried into effect any way you will, and claiming a mere principle?” What’s the answer?

  2. The Neilson court simply assumes, and the parties do not challenge it, that a patent cannot be granted on a principle. Is that proposition self evident?

Baron Alderson, during the Exchequer appeal proceeding in Neilson, remarked:

I have always thought that the real test was this; that in order to discover whether it is a good or a bad patent, you should consider that what you cannot take out a patent for must be considered to have been invented pro bono publico—that is to say, the principle must be considered as having had an anterior existence before the patent.

Web. Pat. Cases at 342 n.c. Does it matter fundamentally whether the patentee or an earlier worker in the field first discovered the principle? Was Einstein any more entitled to a patent on E = mc2 than, say, Homer Simpson?

  3. What is the principle that Neilson’s invention implemented? At one level of generality, it was that blowing hot air into a furnace made “better iron.” There was some confusion in the opinions about why a hot air blast made better iron than a cool air blast. The Neilson court and the Morse court both seemed to have thought it was because the hot air blast made the fuel burn better: see Neilson, 151 E.R. at 1273; Morse, 56 U.S. (15 How.) at 116 (“the discovery that hot air would promote the ignition of fuel better than cold”; “Undoubtedly the principle that hot air will promote the ignition of fuel better than cold was embodied in this machine.”). But the air blast is directed into the molten iron, not into the fuel, so that cannot be the case. It is also unclear from the opinions how the iron was “better.”

  The true answer would seem to be that keeping up the temperature of the molten iron (by injecting heated rather than cool air) promoted the rate of reaction inside the iron in the furnace, whereby oxygen made the carbon in the iron (undesirable when excessive, because it made the iron brittle) oxidize to carbon monoxide and carbon dioxide, while the resulting carbon monoxide helped reduce any remaining iron oxide to iron. The greater the temperature, the more kinetic energy the molecules have, the faster they move, and the more collisions occur per second between molecules. That speeds up the foregoing reactions, because reactions occur only when molecules collide, and it pushes the result toward the right sides of the equations 2 C + O2 → 2 CO and C + O2 → CO2 ↑, which provides “better iron.” This was beyond the scope of early 19th-century science. There is a more detailed discussion of the chemistry in Wikipedia: “Blast furnace”. It is also said that the hot air blast permitted use of less and cheaper fuel (coal rather than coke). (But that is not better iron; it is cheaper iron, although that may well be better for the iron monger.)

  Do you think the courts’ confusion about the details of the invention affects the validity of the legal principle? Doubtful. It does show, however, that what the natural principle is (or is thought to be) is relative: it depends on time and place.

  4. Neilson is a landmark case. But its treatment of the fact issues is hardly definitive. The enduring rationale of Neilson is that the patent must be on an apparatus or machinery implementing the natural principle, rather than on the principle itself. The decision does not judge the difficulty or complexity of the implementing device. It does not consider whether the implementation is trivial, once one is in possession of the principle. It does not consider whether that makes any difference. At first blush, heating a receptacle or its equivalent to get the air hot seems the natural, perhaps the only sensible, way to heat the air.

  5. What the scope of Neilson’s patent should be was an issue. What constituted a receptacle or reservoir? Some infringers used a network of pipes, which they claimed worked better than Neilson’s receptacle, because it had greater surface area which facilitated better heat transfer. See Web. Pat. Cases at 304 (defendant’s argument at trial, describing defendant’s apparatus). Baron Alderson said that Neilson’s patent covered use of an “intermediate reservoir between the blast furnace and the bellows.” Therefore, “surely anybody else may apply the same principle, provided he does not do it by a reservoir intermediately between the blast furnace and the bellows.” It then became a fact question as to what constituted a “reservoir”. It was for the jury to decide, Baron Alderson said, “whether or not a long spiral pipe is a reservoir,” for “if it be not a reservoir, or a colourable imitation of a reservoir, it is no infringement.” See Neilson, Web. Pat. Cases at 342. Neilson himself apparently thought (erroneously) that it made no difference what the shape of the receptacle was. His specification said that the shape and form of the receptacle was immaterial. See id. at 371. (The statement in the Morse opinion – “And this effect was always produced, whatever might be the form of the receptacle or the mechanical contrivances for heating it or for passing the current of air through it and into the furnace.” – is incorrect.)

It might seem, therefore, that Neilson disclosed an obvious implementation of the underlying principle and also did not understand very well how to implement it. (The accused infringers so argued.) Still, this is 170 or more years later. Perhaps we are in no position to judge that. But the question of triviality of implementations of principles came to the fore in the 20th century, as will appear in such later cases as Funk and Flook, in chapter 8A, and still later in the 21st century in Mayo and Alice, in chapter 8D.

  6. For a detailed discussion of the trial and the opposing strategies of the parties’ lawyers, see David P. Miller, Of Patents, Principles, and the Construction of Heroic Invention: The Case of Neilson’s Hot Blast in Iron Production (2016).




Le Roy v. Tatham
United States Supreme Court
55 U.S. (14 How.) 156 (1852)

[The inventors had discovered the principle that hot, but congealed, lead under pressure would re-unite as an unbroken solid material, thereby permitting manufacture of a superior lead pipe. The apparatus to make lead pipe was old and obvious: the inventors, by making slight changes in the old machinery to provide sufficient heat and pressure to remelt the lead, in effect, invented a new use of an old machine (perhaps of dubious patentability at that time if claimed as a method). The specification stated that the inventors “do not claim any of the parts—the cylinder, core, die, or bridge, but that they claim the combination when used to form pipes of metal, under heat and pressure, in the way they have described.” The claim, because that was how claims were then typically written, claimed the old or obvious apparatus (as an apparatus) “when used to form pipes of metal under heat and pressure in the manner set forth or in any other manner substantially the same.”

The trial court charged the jury that “the originality did not consist in the novelty of the machinery, but in bringing a newly discovered principle into practical application by which an useful article of manufacture is produced, and wrought pipe made, as distinguished from cast pipe.” That is, the charge to the jury gave effect to the claim words “or in any other manner substantially the same.”

The defendants excepted to the charge. The jury returned a verdict for the plaintiffs for $11,394 damages and six cents costs. The defendants appealed.]

Mr. Justice McLean delivered the opinion of the Court.

The patentees say of their pipe, “The essential difference in the character of this pipe, which distinguishes it, as well as that contemplated by all other heretofore known or attempted pipe, is that it is wrought under heat, by pressure and constriction, from set metal, and that it is not a casting formed in a mould.”

And they declare, “We do not claim as our invention and improvement, any of the parts of the above-described machinery independently of its arrangement and combination above set forth. What we do claim as our invention and desire to secure is the combination of the following parts above described, to-wit, the core and bridge or guide piece, with the cylinder, the piston, the chamber and the die, when used to form pipes of metal under heat and pressure in the manner set forth or in any other manner substantially the same.”

It is admitted that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery, a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself under the patent laws. The same may be said of electricity and of any other power in nature, which is alike open to all and may be applied to useful purposes by the use of machinery.

A patent is not good for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means whatsoever. This, by creating monopolies, would discourage arts and manufactures, against the avowed policy of the patent laws.

In the case before us, the court instructed the jury that the invention did not consist “in the novelty of the machinery, but in bringing a newly discovered principle into practical application, by which a useful article of manufacture is produced, and wrought pipe made as distinguished from cast pipe.”

A patent for [seamless] leaden pipes would not be good, as it would be for an effect, and would consequently prohibit all other persons from using the same article, however manufactured. Leaden pipes are the same, the metal being in no respect different. Any difference in form and strength must arise from the mode of manufacturing the pipes. The new property in the metal claimed to have been discovered by the patentees belongs to the process of manufacture, and not to the thing made.

But we must look to the claim of the invention stated in their application by the patentees. They say: “We do not claim as our invention and improvement any of the parts of the above described machinery, independently of their arrangement and combination above set forth. . . . What we claim as our invention and desire to secure by letters patent is the combination of the following parts above described, to-wit, the core and bridge or guide piece, the chamber, and the die, when used to form pipes of metal, under heat and pressure, in the manner set forth, or in any other manner substantially the same.”

The patentees have founded their claim on this specification, and they can neither modify nor abandon it in whole or in part. The combination of the machinery is claimed through which the new property of lead was developed as a part of the process in the structure of the pipes. But the jury were instructed “that the originality of the invention did not consist in the novelty of the machinery, but in bringing a newly discovered principle into practical application.”

The patentees claimed the combination of the machinery as their invention in part, and no such claim can be sustained without establishing its novelty—not as to the parts of which it is composed, but as to the combination.

[As a circuit judge], Mr. Justice Story said: “He [the patentee] says that the same apparatus stated in this last claim has been long in use, and applied, if not to chairs, at least in other machines, to purposes of a similar nature. If this be so, then the invention is not new, but, at most, is an old invention or apparatus or machinery applied to a new purpose. Now I take it to be clear that a machine or apparatus or other mechanical contrivance, in order to give the party a claim to a patent therefor, must in itself be substantially new. If it is old and well known, and applied only to a new purpose, that does not make it patentable.”

We think there was error in the [trial court’s] instruction, and that on that ground, the judgment must be reversed.

Mr. Justice Nelson dissented, with whom Justices Wayne and Grier concurred.

The patentees in this case discovered by experiment that lead, when recently set and solid but still under heat and extreme pressure in a close vessel, would reunite after a separation of its parts and “heal,” in the language of the patentees, as completely as though it had not been divided.

Upon the discovery of this property of lead, which had never before been known, but, on the contrary, had been supposed and believed, by all men of science skilled in metals, to be impossible, the patentees made an alteration in the known apparatus founded upon this new property discovered in the metal, and succeeded completely in making wrought pipe out of solid lead by means of the hydraulic pressure. The product was so much superior in quality to that made according to the old mode that it immediately wholly superseded it in the market. The pipe was also made much cheaper.

The patentees state that they do not intend to confine themselves to the arrangement of the apparatus thus particularly specified, and point out several other modes by which the same result may be produced, all of which variations would readily suggest themselves, as they observe, to any practical engineer without departing from the substantial originality of the invention, the remarkable feature of which, they say, is that lead, when in a set state, being yet under heat, can be made by extreme pressure to reunite perfectly around a core after separation, and thus be formed into strong pipes or tubes. Pipes thus made are found to possess great solidity and unusual strength, and a fine uniformity such as had never before been attained by any other mode. The essential difference in its character, and which distinguishes it from all other theretofore known, they add, is that it is wrought under heat, by pressure and constriction, from set or solid metal.

Now on looking into the specification, we see that the leading feature of the invention consists in the discovery of a new property in the article of lead and in the employment and adaptation of it, by means of the old machinery described, to the production of a new article, wrought pipe, never before successfully made. Without the discovery of this new property in the metal, the machinery or apparatus would be useless, and not the subject of a patent. It is in connection with this property and the embodiment and adaptation of it to practical use that the machinery is described and the arrangement claimed. The discovery of this new element or property led naturally to the apparatus by which a new and most useful result is produced. The apparatus was but incidental and subsidiary to the new and leading idea of the invention. And hence the patentees set forth as the leading feature of it, the discovery that lead in a solid state, but under heat and extreme pressure in a close vessel, will reunite after separation of its parts as completely as though it had never been separated. It required very little ingenuity, after the experiments in a close vessel, by which this new property of the metal was first developed, to construct the necessary machinery for the formation of the pipe. The apparatus essential to develop this property would at once suggest the material parts, especially in the state of the art at the time. Any skillful mechanic, with Burr's machine before him, would readily construct the requisite machinery.

The patentees therefore, after describing their discovery of this property of lead and the apparatus by means of which they apply the metal to the manufacture of pipe, claim the combination of the [old] machinery only when used to form pipes under heat and pressure in the manner set forth or in any other manner substantially the same. They do not claim it as new separately, or when used for any other purpose, or in any other way, but claim it only when applied for the purpose and in the way pointed out in the specification. The combination, as machinery, may be old; may have been long used; of itself, what no one could claim as his invention, and may not be the subject of a patent. What is claimed is that it never had been before applied or used in the way and for the purpose they have used and applied it&emdash;namely in the embodiment and adaptation of a newly discovered property in lead by means of which they are enabled to produce a new manufactureseamless, wrought pipe.

The patentees have certainly been unfortunate in the language of the specification if, upon a fair and liberal interpretation, they have claimed only the simple apparatus employed; when they have not only set forth the discovery of this property in the metal, as the great feature in their invention, but, as is manifest, without it the apparatus would have been useless. Strike out this new property from their description and from their claim and nothing valuable is left. All the rest would be worthless. This lies at the foundation upon which the great merit of the invention rests, and without a knowledge of which the new manufacture could not have been produced, and, for aught we know, the world would have been deprived of it down to this day.

The combination of these parts is claimed only when used to form pipes of lead under heat and pressure in the manner set forththat is, when used for the embodiment and adaptation of this new property in the metal for making wrought pipe out of a solid mass of lead. This guarded limitation of the use excludes the idea of a claim to the combination for any other, and ties it down to the instance when the use incorporates within it the new idea or element which gives to it its value, and by means of which the new manufacture is produced. How then can it be consistently held that here is a simple claim to the machinery, and nothing more, when a reasonable interpretation of the words not only necessarily excludes any such claim, but in express terms sets forth a different one—one not only different in the conception of the invention, but different in the practical working of the apparatus, to accomplish the purpose intended?

I conclude therefore that the claim in this case is not simply for the apparatus employed by the patentees, but for the embodiment or employment of the newly discovered property in the metal and the practical adaption of it by these means to the production of a new result—namely, the manufacture of wrought pipe out of solid lead.

Then is this the proper subject matter of a patent?

[In my view, the proper principle is this:] Where a person discovers a principle or property of nature, or where he conceives of a new application of a well known principle or property of nature and also of some mode of carrying it out into practice so as to produce or attain a new and useful effect or result, he is entitled to protection against all other modes of carrying the same principle or property into practice for obtaining the same effect or result.

I think that a person having discovered the application for the first time of a well known law of nature or well known property of matter by means of which a new result in the arts or in manufactures is produced and has pointed out a mode by which it is produced is entitled to a patent, and if he has not tied himself down in the specification to the particular mode described, he is entitled to be protected against all modes by which the same result is produced by an application of the same law of nature or property of matter. And a fortiori if he has discovered the law of nature or property of matter and applied it is he entitled to the patent and aforesaid protection.

And why should not this be the law? The original conceptionthe novel idea in the one case, is the new application of the principle or property of matter, and the new product in the arts or manufacturesin the other, in the discovery of the principle or property and application, with like result. The mode or means are but incidental, and flowing naturally from the original conception, and hence of inconsiderable merit. But, it is said, this is patenting a principle or element of nature. And what if the principle is incorporated in the invention and the inventor protected in the enjoyment for the fourteen years? He is protected only in the enjoyment of the application for the special purpose and object to which it has been newly applied by his genius and skill. For every other purpose and end, the principle is free for all mankind to use. And where it has been discovered as well as applied to this one purpose, and open to the world as to every other, the ground of complaint is certainly not very obvious. Undoubtedly, within the range of the purpose and object for which the principle has been for the first time applied, piracies are interfered with during the fourteen years. But anybody may take it up and give to it any other application to the enlargement of the arts and of manufactures without restriction. He is only debarred from the use of the new application for the limited time which the genius of others has already invented and put into successful practice. The protection does not go beyond the thing which for the first time has been discovered and brought into practical use, and is no broader than that extended to every other discoverer or inventor of a new art or manufacture. I own I am incapable of comprehending the detriment to the improvements in the country that may flow from this sort of protection to inventors.

To hold in the case of inventions of this character that the novelty must consist of the mode or means of the new application producing the new result would be holding against the facts of the case, as no one can but see that the original conception reaches far beyond these. It would be mistaking the skill of the mechanic for the genius of the inventor.

Upon this doctrine [rest] some of the most brilliant and useful inventions of the day by men justly regarded as public benefactors, and whose names reflect honor upon their country—the successful application of steam power to the propulsion of vessels and railroad cars, the application of the electric current for the instant communication of intelligence from one extremity of the country to the other. It would be found on consulting the system of laws established for their encouragement and protection that the world had altogether mistaken the merit of their discovery; that instead of the originality and brilliancy of the conception that had been unwittingly attributed to them, the whole of it consisted of some simple mechanical contrivances which a mechanician of ordinary skill could readily have devised. Even Franklin, if he had turned the lightning to account, in order to protect himself from piracies must have patented the kite, and the thread, and the key, as his great original conception, which gave him a name throughout Europe as well as at home for bringing down this element from the heavens and subjecting it to the service of man. And if these simple contrivances, taken together and disconnected from the control and use of the element by which the new application and new and useful result may have been produced, happen to be old and well known, his patent would be void; or if some follower in the tract of genius, with just intellect enough to make a different mechanical device or contrivance for the same control and application of the element and produce the same result, he would, under this view of the patent law, entitle himself to the full enjoyment of the fruits of Franklin's discovery.

For these reasons, I am constrained to differ with the judgment a majority of my brethren have arrived at, and am in favor of affirming that of the court below.

Notes

1. In the United States, one cannot successfully claim an old machine or other product as applied to a new use. It has been possible, however, at least since the passage of the 1952 patent act, to claim as a method or process a new use of an old machine or other product. But how broadly may one so claim?

What if the claim in this case were: A method for making seamless lead pipe comprising subjecting recently set and solid seamed pipe to sufficient heat and extreme pressure in a close vessel as to reunite the seamed pipe into an integral and seamless pipe? Must there be a further limitation, such as: by using the specific apparatus hereinbefore described? What about something in between? (Assume the specification states the required pressure and temperature.)

2. In Corning v. Burden, 15 How. 252, 56 U. S. (15 How.) 252 (1853), the Court said, “One may discover a new and useful improvement in the process of tanning, dyeing, etc., irrespective of any particular form of machinery or mechanical device.” Id. at 267-68. The examples given were the “arts of tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores.” Id. at 267. Does it matter that those are instances in which the use of chemical substances or physical acts, such as temperature or pressure control, changes articles or materials from one form into another?

3. Cochrane v. Deener, 94 U. S. 780 (1876), involved a process for manufacturing flour so as to improve its quality. The process first separated the superfine flour and then removed impurities from the middlings by blasts of air, reground the middlings, and then combined the product with the superfine. Id. at 94 U. S. 785. The claim was not limited to any special arrangement of machinery. Id. The Court said, “That a process may be patentable, irrespective of the particular form of the instrumentalities used, cannot be disputed. If one of the steps of a process be that a certain substance is to be reduced to a powder, it may not be at all material what instrument or machinery is used to effect that object, whether a hammer, a pestle and mortar, or a mill. Either may be pointed out; but if the patent is not confined to that particular tool or machine, the use of the others would be an infringement, the general process being the same. A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.” Id. at 787-88. Does that mean that transformation and reduction of an article “to a different state or thing” is the clue to the patentability of a process claim that does not include particular machines?

4. What do you think of the legal rule for which Justice Nelson contends in his dissent:

I think that a person having discovered the application for the first time of a well known law of nature or well known property of matter by means of which a new result in the arts or in manufactures is produced and has pointed out a mode by which it is produced is entitled to a patent and . . . he is entitled to be protected against all modes by which the same result is produced by an application of the same law of nature or property of matter.

Consider the rule for which Justice Nelson contends, as applied to Franklin’s “invention” (as Justice Nelson imagines it) of electricity. How would you determine whether someone infringed Franklin’s hypothetical patent on electricity? Would the inventor of the electric chair be an infringer? Does television infringe? If on a dry winter day you walk across a rug and touch a metal radiator, do you infringe?




O'Reilly v. Morse
United States Supreme Court
56 U.S. (15 How.) 62 (1853)

Mr. Chief Justice Taney delivered the opinion of the Court.

In proceeding to pronounce judgment in this case, the court is sensible, not only of its importance, but of the difficulties in some of the questions which it presents for decision. The case was argued at the last term, and continued over by the court for the purpose of giving it a more deliberate examination. And since the continuance, we have received from the counsel on both sides printed arguments, in which all of the questions raised on the trial have been fully and elaborately discussed.

The main dispute between the parties is upon the validity of this patent; and the decision upon it will dispose of the chief points in controversy in the other.

It is obvious that, for some years before Professor Morse made his invention, scientific men in different parts of Europe were earnestly engaged in the same pursuit. Electro-magnetism itself was a recent discovery, and opened to them a new and unexplored field for their labors, and minds of a high order were engaged in developing its power and the purposes to which it might be applied.

Professor Henry, of the Smithsonian Institute, states in his testimony that, prior to the winter of 1819-20, an electro-magnetic telegraph that is to say, a telegraph operating by the combined influence of electricity and magnetism, was not possible; that the scientific principles on which it is founded were until then unknown; and that the first fact of electro-magnetism was discovered by Oersted, of Copenhagen, in that winter, and was widely published, and the account everywhere received with interest.

It is unnecessary, however, to give in detail the discoveries enumerated by him either his own or those of others. But it appears from his testimony that very soon after the discovery made by Oersted, it was believed by men of science that this newly discovered power might be used to communicate intelligence to distant places. And before the year 1823, Ampere of Paris, one of the most successful cultivators of physical science, proposed to the French Academy a plan for that purpose. But his project was never reduced to practice. And the discovery made by Barlow, of the Royal Military Academy of Woolwich, England, in 1825, that the galvanic current greatly diminished in power as the distance increased, put at rest, for a time, all attempts to construct an electro-magnetic telegraph. Subsequent discoveries, however, revived the hope; and in the year 1832, when Professor Morse appears to have devoted himself to the subject, the conviction was general among men of science everywhere that the object could, and sooner or later would be, accomplished.

The great difficulty in their way was the fact that the galvanic current, however strong in the beginning, became gradually weaker as it advanced on the wire; and was not strong enough to produce a mechanical effect, after a certain distance had been traversed. But, encouraged by the discoveries which were made from time to time, and strong in the belief that an electro-magnetic telegraph was practicable, many eminent and scientific men in Europe, as well as in this country, became deeply engaged in endeavoring to surmount what appeared to be the chief obstacle to its success.

Early in the spring of 1837, Morse had invented his plan for combining two or more electric or galvanic circuits, with independent batteries for the purpose of overcoming the diminished force of electro-magnetism in long circuits, although it was not disclosed to the witness until afterwards; and that there is reasonable ground for believing that he had so far completed his invention, that the whole process, combination, powers, and machinery, were arranged in his mind, and that the delay in bringing it out arose from his want of means. For it required the highest order of mechanical skill to execute and adjust the nice and delicate work necessary to put the telegraph into operation, and the slightest error or defect would have been fatal to its success.

Regarding Professor Morse as the first and original inventor of the Telegraph, we come to the objections which have been made to the validity of his patent. We perceive no well-founded objection to the description which is given of the whole invention and its separate parts, nor to his right to a patent for the first seven inventions set forth in the specification of his claims. The difficulty arises on the eighth. It is in the following words:

Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.

It is impossible to misunderstand the extent of this claim. He claims the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing intelligible characters, signs, or letters at a distance.

If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicatedless liable to get out of orderless expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.

Nor is this all, while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light. For he says he does not confine his claim to the machinery or parts of machinery, which he specifies; but claims for himself a monopoly in its use, however developed, for the purpose of printing at a distance. New discoveries in physical science may enable him to combine it with new agents and new elements, and by that means attain the object in a manner superior to the present process and altogether different from it. And if he can secure the exclusive use by his present patent he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery, upon the records of the patent office. And when his patent expires, the public must apply to him to learn what it is. In fine, he claims an exclusive right to use a manner and process which he has not described 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.

No one, we suppose will maintain that Fulton could have taken out a patent for his invention of propelling vessels by steam, describing the process and machinery he used, and claimed under it the exclusive right to use the motive power of steam, however developed, for the purpose of propelling vessels. It can hardly be supposed that under such a patent he could have prevented the use of the improved machinery which science has since introduced; although the motive power is steam, and the result is the propulsion of vessels. Neither could the man who first discovered that steam might, by a proper arrangement of machinery, be used as a motive power to grind corn or spin cotton, claim the right to the exclusive use of steam as a motive power for the purpose of producing such effects.

Again, the use of steam as a motive power in printing-presses is comparatively a modern discovery. Was the first inventor of a machine or process of this kind entitled to a patent, giving him the exclusive right to use steam as a motive power, however developed, for the purpose of marking or printing intelligible characters? Could he have prevented the use of any other press subsequently invented where steam was used? Yet so far as patentable rights are concerned both improvements must stand on the same principles. Both use a known motive power to print intelligible marks or letters; and it can make no difference in their legal rights under the patent laws, whether the printing is done near at hand or at a distance. Both depend for success not merely upon the motive power, but upon the machinery with which it is combined. And it has never, we believe, been supposed by any one, that the first inventor of a steam printing-press, was entitled to the exclusive use of steam, as a motive power, however developed, for marking or printing intelligible characters.

Many cases have been referred to in the argument which have been decided upon this subject in the English and American courts. We shall speak of those only which seem to be considered as leading ones. And those most relied on, and pressed upon the court in behalf of the patentee, are the cases which arose in England upon Neilson's patent for the introduction of heated air between the blowing apparatus and the furnace in the manufacture of iron. It was elaborately argued, and appears to have been carefully considered by the court. The Neilson case was this:

Neilson, in his specification, described his invention as one for the improved application of air to produce heat in fires, forges, and furnaces where a blowing apparatus is required. And it was to be applied as follows: the blast or current of air produced by the blowing apparatus was to be passed from it into an air vessel or receptacle made sufficiently strong to endure the blast, and through or from that vessel or receptacle by means of a tube, pipe, or aperture into the fire, the receptacle be kept artificially heated to a considerable temperature by heat externally applied. He then described in rather general terms the manner in which the receptacle might be constructed and heated and the air conducted through it to the fire, stating that the form of the receptacle was not material nor the manner of applying heat to it. In the action above-mentioned for the infringement of this patent, the defendant, among other defenses, insisted that a patent for throwing hot air into the furnace instead of cold was a patent for a principle, and that a principle was not patentable.

Baron Parke, who delivered the opinion of the court, said: “It is very difficult to distinguish it from the specification of a patent for a principle, and this at first created in the minds of the court much difficulty, but after full consideration we think that the plaintiff does not merely claim a principle, but a machine embodying a principle, and a very valuable one. We think the case must be considered as if, the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces, and his invention then consists in this: by interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated by the application of heat externally to the receptacle, and thus he accomplishes the object of applying the blast, which was before cold air, in a heated state to the furnace.”

It seems that the court at first doubted whether it was a patent for anything more than the discovery that hot air would promote the ignition of fuel better than cold. And if this had been the construction, the court, it appears, would have held his patent to be void because the discovery of a principle in natural philosophy or physical science is not patentable.

But after much consideration it was finally decided that this principle must be regarded as well known, and that the plaintiff had invented a mechanical mode of applying it to furnaces, and that his invention consisted in interposing a heated receptacle between the blower and the furnace, and by this means heating the air after it left the blower and before it was thrown into the fire. Whoever, therefore, used this method of throwing hot air into the furnace used the process he had invented, and thereby infringed his patent, although the form of the receptacle or the mechanical arrangements for heating it might be different from those described by the patentee. For whatever form was adopted for the receptacle or whatever mechanical arrangements were made for heating it, the effect would be produced in a greater or less degree if the heated receptacle was placed between the blower and the furnace and the current of air passed through it.

Undoubtedly the principle that hot air will promote the ignition of fuel better than cold was embodied in this machine. But the patent was not supported because this principle was embodied in it. He would have been equally entitled to a patent if he had invented an improvement in the mechanical arrangements of the blowing apparatus or in the furnace while a cold current of air was still used. But his patent was supported because he had invented a mechanical apparatus by which a current of hot air, instead of cold, could be thrown in. And this new method was protected by his patent. The interposition of a heated receptacle in any form was the novelty he invented.

We do not perceive how the claim in the case before us can derive any countenance from the Neilson decision. If the Court of Exchequer had said that Neilson’s patent was for the discovery that hot air would promote ignition better than cold, and that he had an exclusive right to use it for that purpose, there might perhaps have been some reason to rely upon it. But the court emphatically denied this right to such a patent. And his claim, as the patent was construed and supported by the court, is altogether unlike that of the patentee before us.

For Neilson discovered that by interposing a heated receptacle between the blower and the furnace and conducting the current of air through it, the heat in the furnace was increased. And this effect was always produced, whatever might be the form of the receptacle or the mechanical contrivances for heating it or for passing the current of air through it and into the furnace.

Original Morse Relay
But Professor Morse has not discovered that the electric or galvanic current will always print at a distance, no matter what may be the form of the machinery or mechanical contrivances through which it passes. You may use electro-magnetism as a motive power, and yet not produce the described effect, that is, print at a distance intelligible marks or signs. To produce that effect, it must be combined with, and passed through, and operate upon, certain complicated and delicate machinery, adjusted and arranged upon philosophical principles, and prepared by the highest mechanical skill. And it is the high praise of Professor Morse, that he has been able, by a new combination of known powers, of which electro-magnetism is one, to discover a method by which intelligible marks or signs may be printed at a distance. And for the method or process thus discovered, he is entitled to a patent. But he has not discovered that the electro-magnetic current, used as motive power, in any other method, and with any other combination, will do as well.

The provisions of the acts of Congress in relation to patents may be summed up in a few words: Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.

Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands, that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above-mentioned were a sufficient description, and entitled him to a patent in terms equally broad. In our judgment the act of Congress cannot be so construed.

Mr. Justice Wayne, Mr. Justice Nelson, and Mr. Justice Grier, dissent from the judgment of the court. Mr. Justice Grier.

I entirely concur with the majority of the court that the appellee and complainant below, Samuel F. B. Morse, is the true and first inventor of the Recording Telegraph, and the first who has successfully applied the agent or element of nature, called electro-magnetism, to printing and recording intelligible characters at a distance; and that his patent of 1840, finally reissued in 1848, and his patent for his improvements as reissued in the same year, are good and valid; and that the appellants have infringed the rights secured to the patentee by both his patents. But, as I do not concur in the views of the majority of the court, in regard to two great points of the case, I shall proceed to express my own. . . .

The other point, in which I cannot concur with the opinion of the majority, arises in the construction of the eighth claim of complainant's first patent, as finally amended. The first claim, as explanatory of all that follow, should be read in connection with the eighth. They are as follows:

1st. Having thus fully described my invention, I wish it to be understood, that I do not claim the use of the galvanic current or currents of electricity, for the purpose of telegraphic communications generally; but what I specially claim as my invention and improvement, is making use of the motive power of magnetism, when developed by the action of such current or currents substantially as set forth in the foregoing description of the first principal part of my invention, as means of operating or giving motion to machinery which may be used to imprint signals upon paper or other suitable material, or to produce sounds in any desired manner for the purpose of telegraphic communication at any distances. The only ways in which the galvanic current had been proposed to be used prior to my invention and improvement, were by bubbles resulting from decomposition, and the action or exercise of electrical power upon a magnetized bar or needle; and the bubbles and the deflections of the needles thus produced, were the subjects of inspection, and had no power or were not applied to record the communication. I therefore characterize my invention as the first recording or printing telegraph by means of electro-magnetism.

There are various known modes of producing motions by electro-magnetism, but none of these had been applied prior to my invention and improvement to actuate or give motion to printing or recording machinery, which is the chief point of my invention and improvement.

8th. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims, the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer.

The objection to this claim is that it is too broad, because the inventor does not confine himself to specific machinery or parts of machinery, as described in his patent, but claims that the essence of his invention consists in the application of electro-magnetism as a motive power, however developed, for printing characters at a distance. This being a new application of that element or power, of which the patentee claims to be the first inventor or discoverer.

In order to test the value of this objection, as applied to the present case, and escape any confusion of ideas too often arising from the use of ill-defined terms and propositions, let us examine, 1st. What may be patented; or what forms a proper subject of protection, under the Constitution and acts of Congress, relative to this subject.

2d. What is the nature of the invention now under consideration? Is it a mere machine, and subject to the rules which affect a combination of mechanical devices to effect a particular purpose.

3d. Is the claim true, in fact? And if true, how can it be too broad, in any legal sense of the term, as heretofore used, either in the acts of Congress, or in judicial decisions?

1st. The Constitution of the United States declares that "Congress shall have the power to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries."

The act of Congress of 1836, confers this exclusive right for a limited time, on "any person who has discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements on any art, machine, manufacture, or composition of matter, not known or used by others, before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use," &c.

A new and useful art or a new and useful improvement on any known art is as much entitled to the protection of the law as a machine or manufacture. The English patent acts are confined to "manufactures" in terms; but the courts have construed them to cover and protect arts as well as machines; yet without using the term art. Here we are not required to make any latitudinous construction of our statute for the sake of equity or policy; and surely we have no right, even if we had the disposition, to curtail or narrow its liberal policy by astute or fanciful construction.

It is not easy to give a precise definition of what is meant by the term "art," as used in the acts of Congress. Some, if not all, the traits which distinguish an art from the other legitimate subjects of a patent, are stated with clearness and accuracy by Mr. Curtis, in his Treatise on Patents. "The term art, applies," says he, "to all those cases where the application of a principle is the most important part of the invention, and where the machinery, apparatus, or other means, by which the principle is applied, are incidental only and not of the essence of his invention. It applies also to all those cases where the result, effect, or manufactured article is old, but the invention consists in a new process or method of producing such result, effect, or manufacture."

A machine, though it may be composed of many parts, instruments, or devices combined together, still conveys the idea of unity. It may be said to be invented, but the term "discovery" could not well be predicated of it. An art may employ many different machines, devices, processes, and manipulations, to produce some useful result. In a previously known art a man may discover some new process, or new application of a known principle, element, or power of nature, to the advancement of the art, and will be entitled to a patent for the same, as "an improvement in the art," or he may invent a machine to perform a given function, and then he will be entitled to a patent only for his machine.

That improvements in the arts, which consist in the new application of some known element, power, or physical law, and not in any particular machine or combination of machinery, have been frequently the subject of patents both in England and in this country, the cases in our books most amply demonstrate. The great art of printing, which has changed the face of human society and civilization, consisted in nothing but a new application of principles known to the world for thousands of years. No one could say it consisted in the type or the press, or in any other machine or device used in performing some particular function, more than in the hands which picked the types or worked the press. Yet if the inventor of printing had, under this narrow construction of our patent law, claimed his art as something distinct from his machinery, the doctrine now advanced, would have declared it unpatentable to its full extent as an art, and that the inventor could be protected in nothing but his first rough types and ill-contrived press.

He who first discovers that an element or law of nature can be made operative for the production of some valuable result, some new art, or the improvement of some known art; who has devised the machinery or process to make it operative, and introduced it in a practical form to the knowledge of mankind, is a discoverer and inventor of the highest class. The discovery of a new application of a known element or agent may require more labor, expense, persevering industry, and ingenuity than the inventor of any machine. Sometimes, it is true, it may be the result of a happy thought or conception, without the labor of an experiment, as in the case of the improvement in the art of casting chilled rollers, already alluded to. In many cases, it is the result of numerous experiments; not the consequence of any reasoning a priori, but wholly empirical; as the discovery that a certain degree of heat, when applied to the usual processes for curing India rubber, produced a substance with new and valuable qualities.

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 element or power, as yet useless, from the laboratory of the philosopher, and makes it the servant of man; who applies it to the perfecting of a new and useful art, or to the improvement of one already known, is the benefactor to whom the patent law tenders its protection. The devices and machines used in the exercise of it may or may not be new; yet, by the doctrine against which I contend, he cannot patent them because they were known and used before. Or, if he can, it is only in their new application and combination in perfecting the new art. In other words, he may patent the new application of the mechanical devices, but not the new application of the operative elements which is the essential agent in the invention. He may patent his combination of the machinery, but not his art.

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 invention or discovery is entitled to the denomination of a "new and useful art." The statute gives the inventor of an art a monopoly in the exercise of it as fully as it does to the inventor of a mere machine. And any person who may exercise such new art without the license of the inventor is an infringer of his patent, and of the franchise granted to him by the law as a reward for his labor and ingenuity in perfecting it. A construction of the law which protects such an inventor, in nothing but the new invented machines or parts of machinery used in the exercise of his art, and refuses it to the exercise of the art itself, annuls the patent law. If the law gives a franchise or monopoly to the inventor of an art as fully as to the inventor of a machine, why shall its protection not be coextensive with the invention in one case as well as in the other? To look at an art as nothing but a combination of machinery, and give it protection only as such, against the use of the same or similar devices or mechanical equivalents, is to refuse it protection as an art. It ignores the distinction between an art and a machine; it overlooks the clear letter and spirit of the statute; and leads to inextricable difficulties. It is viewing a statute or a monument through a microscope.

The reason given for thus confining the franchise of the inventor of an art to his machines and parts of machinery is, that it would retard the progress of improvement, if those who can devise better machines or devices, differing in mechanical principle from those of the first inventor of the art, or, in other words, who can devise an improvement in it, should not be allowed to pirate it.

To say that a patentee, who claims the art of writing at a distance by means of electro-magnetism, necessarily claims all future improvements in the art, is to misconstrue it, or draws a consequence from it not fairly to be inferred from its language. An improvement in a known art is as much the subject of a patent as the art itself; so, also, is an improvement on a known machine. Yet, if the original machine be patented, the patentee of an improvement will not have a right to use the original. This doctrine has not been found to retard the progress of invention in the case of machines; and I can see no reason why a contrary one should be applied to an art.

The claim of the patentee is, that he may be protected in the exercise of his art as against persons who may improve or change some of the processes or machines necessary in its exercise. The court, by deciding that this claim is too broad, virtually decides that such an inventor of an improvement may pirate the art he improves, because it is contrary to public policy to restrain the progress of invention. Or, in other words, it may be said that it is the policy of the courts to refuse that protection to an art which it affords to a machine, which it is the policy of the Constitution and the laws to grant.

2d. Let us now consider what is the nature of the invention now under consideration.

It is not a composition of matter, or a manufacture, or a machine. It is the application of a known element or power of nature, to a new and useful purpose by means of various processes, instruments and devices, and if patentable at all, it must come within the category of "a new and useful art." It is as much entitled to this denomination as the original art of printing itself. The name given to it in the patent is generally the act of the commissioner, and in this, as in many other cases, a wrong one. The true nature of the invention must be sought in the specification.

The word telegraph is derived from the Greek, and signifies "to write afar off or at a distance." It has heretofore been applied to various contrivances or devices, to communicate intelligence by means of signals or semaphores, which speak to the eye for a moment. But in its primary and literal signification of writing, printing, or recording at a distance, it never was invented, perfected, or put into practical operation till it was done by Morse. He preceded Steinheil, Cook, Wheatstone, and Davy in the successful application of this mysterious power or element of electro-magnetism to this purpose; and his invention has entirely superseded their inefficient contrivances. It is not only "a new and useful art," if that term means any thing, but a most wonderful and astonishing invention, requiring ten fold more ingenuity and patient experiment to perfect it than the art of printing with types and press, as originally invented.

3d. Is it not true, as set forth in this eighth claim of the specification, that the patentee was the first inventor or discoverer of the use or application of electro-magnetism to print and record intelligible characters or letters? It is the very ground on which the court agree in confirming his patent. Now the patent law requires an inventor, as a condition precedent to obtaining a patent, to deliver a written description of his invention or discovery, and to particularly specify what he claims to be his own invention or discovery. If he has truly stated the principle, nature and extent of his art or invention, how can the court say it is too broad, and impugn the validity of his patent for doing what the law requires as a condition for obtaining it? And if it is only in case of a machine that the law requires the inventor to specify what he claims as his own invention and discovery, and to distinguish what is new from what is old, then this eighth claim is superfluous and cannot affect the validity of his patent, provided his art is new and useful, and the machines and devices claimed separately, are of his own invention. If it be in the use of the words "however developed" that the claim is to be adjudged too broad, then it follows that a person using any other process for the purpose of developing the agent or element of electro-magnetism, than the common one now in use, and described in the patent, may pirate the whole art patented.

But if it be adjudged that the claim is too broad, because the inventor claims the application of this element to his new art, then his patent is to be invalidated for claiming his whole invention, and nothing more. If the result of this application be a new and useful art, and if the essence of his invention consists in compelling this hitherto useless element to record letters and words, at any distance and in many places at the same moment, how can it be said that the claim is for a principle or an abstraction? What is meant by a claim being too broad? The patent law and judicial decisions may be searched in vain for a provision or decision that a patent may be impugned for claiming no more than the patentee invented or discovered. It is only when he claims something before known and used, some thing as new which is not new, either by mistake or intentionally, that his patent is affected.

Assuming it to be true, then, for the purpose of the argument, that the new application of the power of electro-magnetism to the art of telegraphing or printing characters at a distance, is not the subject of a patent, because it is patenting a principle; yet as it is also true, that Morse was the first who made this application successfully, as set forth in this eighth claim, I am unable to comprehend how, in the words of the statute, we can adjudge "that he has failed to sustain his action, on the ground that his specification or claim embraces more than that of which he was the first inventor."

Notes

1. The importance of O’Reilly v. Morse, the Telegraph Patent Case, to the patent law concerning computer-software-related inventions cannot be overstated. It is to patents as Baker v. Selden is to copyrights. Why do you suppose that Baker and Morse are so important?

2. The problem that would-be telegraphers faced in the early 19th Century is explained by the Court: “The great difficulty in their way was the fact that the galvanic current, however strong in the beginning, became gradually weaker as it advanced on the wire; and was not strong enough to produce a mechanical effect, after a certain distance had been traversed.” To send a signal from Baltimore to Washington would require thousands of volts and high currents – not feasible at a time when managing to make a pickled frog’s legs twitch was a major achievement of the electro-galvanic force.
Morse Circuit Dgm.

The Problem:   Voltage vs. Distance

Morse’s “plan for combining two or more electric or galvanic circuits, with independent batteries for the purpose of overcoming the diminished force of electromagnetism in long circuits” is illustrated in the accompanying figure at the right. Consider it with the figure at the left, illustrating decrease in signal voltage (dark curve) and noise (red) graphed against distance. Morse inserted the relays (or “repeaters” as the opinion terms them) at intervals sufficiently short (say, every 20 miles) that the signal was restored regularly to substantially its initial level before the noise could swamp it out.

The Problem Solved:   Voltage vs. Distance



Professor Gayle, a friend of Morse and a witness at trial in this case, testified that Morse explained the principle of the repeater circuit to him early in 1836. At the time, both Morse and Gayle were professors at the University of the City of New York (now NYU), and Morse demonstrated his apparatus to Gayle there. Morse had recognized that

the magnetism to be obtained from the electric current would diminish in proportion as the circuit was lengthened, so as to be insufficient for any practical purpose at great distances, and to remove that probable obstacle to his success, he conceived the idea of combining two or more circuits together, each with an independent battery, making use of the magnetism of the first to close and break the second; that of the second to close and break the third, and so on.

56 U.S. at 72. Professor Gayle went on to describe Morse’s “confidence of success in propagating magnetic power through any distance of electric conductors which circumstances might render desirable.” Morse told Gayle:

Suppose . . . that in experimenting on twenty miles of wire, we should find that the power of magnetism is so feeble that it will but move a lever with certainty a hair’s breadth, that would be insufficient, it may be, to write or to print, yet it would be sufficient to close and break another, or a second circuit 20 miles further, and this second circuit could be made in the same manner, to close and break a third circuit, and so on around the globe.

56 U.S. at 73. Professor Gayle then described a circuit like that shown in the accompanying figure above at the right. Id.

The figure illustrates the great question, "What did Morse invent?" Did he invent the depicted apparatus and no more? Did he invent the more generic and abstract formulation of claim 8 — the use of electromagnetism, however developed, for marking intelligible characters at any distance? How does a court properly delimit the scope of an inventor's patent, short of the frontiers of the prior art? This is a recurrent question in patent law, particularly in respect of algorithms and similar abstractions. (For example, in a later section of these materials — the In re Alappat decision — the en banc Federal Circuit divides over whether Alappat, who disclosed a procedure for smoothing out the appearance of jagged lines on an oscilloscope display, should receive a patent grant extending to the use of the procedure in laser printers or other perhaps as yet unknown non-oscilloscope applications. In another part of these materials, the Supreme Court holds that Benson, who disclosed a method of converting binary-coded decimal information to binary information, for use in telephone switching systems, is not entitled to patent protection for such an untaught and unenabled use of the method as in Shepardizing case citations or running trains.)

3. Justice Grier, dissenting in Morse, asks, "What is meant by a claim [specifically, Morse's claim 8] being too broad?" What's the answer? Grier said, "It is only when he claims something before known and used, something as new which is not new, either by mistake or intentionally." That is, only if the claim encroaches beyond the frontiers of the prior art (that is, covers prior art devices). Do you agree with Grier? What's Taney's response to this? What does section 112(a) of the patent code say about this?

4. In a part of the opinion in this case, the Court rejected an argument that the English Court of the Exchequer had approved the grant of a patent on a natural principle in the case of Neilson's patent for the blast furnace (Neilson v. Harford, 151 Eng. Rep. 1266, 8 M & W 806, Web. Pat. Cases 295 (1841)). The Court explained that the Exchequer had said: “[A]fter full consideration we think that the plaintiff does not merely claim a principle, but a machine, embodying a principle, and a very valuable one. We think the case must be considered as if the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces, and his invention then consists in this: by interposing a receptacle for heated air between the blowing apparatus and the furnace.” The concept of the discovery of a new principle being treated as if the principle were well known, and the question being whether the plaintiff had first invented a novel and unobvious mode of applying it by a mechanical apparatus, will appear again, in the next chapter. Moreover, the importance of apparatus limitations, such as the receptacle interposed between the blowing apparatus and the furnace, will recur.



Sections 101 and 112, ¶¶ 1-2 of the Patent Act,
35 U.S.C. §§ 101 and 112, ¶¶ 1-2

§ 101.   Inventions patentable

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

§ 112.   Specification

(1) The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

(2) The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Notes

1. § 101 provides one way to deal with the problems of claims like Morse's 8th claim. It may be said that Morse did not "invent" or "discover," within the meaning of Art. I, § 8, cl. 8, the use of EMF to communicate intelligible signs at any distance. Or it may be said that the process, if it is one, of claim 8 is not the kind of process that § 101 covers. Do you see any difficulties with either approach?

2. § 112 ¶ 1 provides another way to deal with claim 8 and similar claims. Did Morse describe and enable the fax machine? Television? Therefore, does claim 8 cover them?

3. § 112 ¶ 2 requires the applicant to provide claims that particularly point out and distinctly claim the subject matter which the applicant regards as his invention. Did Morse's claim 8 lack specificity, so that you cannot ascertain what it covers? Did it cover what Morse invented? Anything else as well? Did Morse regard the use of EMF to communicate intelligible signs at any distance to be his invention? Is § 112 ¶ 2 drafted in terms that adequately address the problem of the inventor with Napoleonic delusions? The CCPA, a court predecessor to the Federal Circuit, maintained that, unless "some material submitted by the applicant, other than his specification, shows that a claim does not correspond in scope with what he regards as his invention," it must be presumed that the claim states what the applicant "regards as his invention." In re Conley, 490 F.2d 972, 976 (CCPA 1974); see In re Miller, 441 F.2d 689, 692 (CCPA 1971). How would you argue for an interpretation of § 112 ¶ 2 that the claim must be construed to cover only what a reasonable person would regard as his invention?



Problems With Standards and Practices Used in Examination of
Patent Applications for Software-Related Inventions

Excerpt from PTO Notice, 58 Fed. Reg. 66,347 (Dec. 20, 1993)

Different sectors of the software industry have expressed concern over the ability of the PTO to examine patent applications for software-related inventions effectively. Much of the discussion involves the lack of availability of printed documents, patents, and other evidence of public use of the invention before the application was filed ("prior art") that can be used by examiners as a basis for denying the grant of a patent. Factors contributing to this problem include:

Concerns other than access to and use of prior art have also been cited. For example, some concern has been expressed that the standards used by examiners to assess novelty and/or obviousness over prior art are not reflective of industry standards, with the effect that patents are granted for well known or obvious software techniques. Others have questioned the closed nature of the examination process, with no public intervention prior to grant, while some have criticized the current options for contesting the validity of granted patents (e.g., the PTO reexamination process or litigation in the Federal courts). In view of this, the PTO is interested in public input on how to improve the examination process for patent applications for software-related inventions. Interested members of the public are invited to offer comments on the following:


Link to section A of chapter 8

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