“Preemption is no longer necessary or appropriate as a doctrine of patent eligibility. Rather, its purpose of prohibiting protection beyond the scope of any given invention was long ago absorbed by statutory provisions that put the policies against inordinately broad patent protection on more reliable ground than the test now applied.”
In Part I of this article, we briefly summarized how O’Reilly v. Morse was relied upon in the denial for rehearing in the recent case of AAM v. Neapco to assert that a patent claim to a method of making a motor vehicle axle failed to qualify as patent eligible subject matter under 35 U.S.C. § 101. The concurring opinions concluded that claim 22 of the patent at issue, U.S. 7,774,911, “merely invoked” natural law, and did not describe what had been obtained in the patent. Consequently, as in O’Reilly v. Morse, the claim was “too broad, and not warranted by law.” We also noted an apparent paradox in that, while claims cannot preempt natural law and must be supported by an enabling specification, they necessarily must be able to read on embodiments that incorporate later-developed technology. The key to resolving this dilemma is the notion of invention, which was the basis for the holding by the Court of the King’s Bench in Hornblower v. Boulton that a method of use of a known steam engine qualified as a “manufacture” under the Statute of Monopolies because, while “principles” in and of themselves were not subject to protection, their application could be. In short, a new and useful application of a law of nature, a naturally-occurring phenomenon, or an abstract idea became the foundation for “invention.”
In 1952 “obviousness” became the touchstone of patentable distinction beyond bare novelty. As stated by Judge Learned Hand of the 2nd Circuit in Lyon v. Bausch & Lomb Optical in 1955, “the definition of invention…[is]…now expressly embodied in § 103.” “Obviousness” supplanted various vague notions of “invention” that underlay certain previous tests (e.g., “spark of genius”) for patentable distinction, as well as two earlier doctrines, “new use” and “aggregation,” both of which were based on preemption in that they were bulwarks against broad patent protection in the absence of invention.
“New use,” in particular, had been particularly problematic, being a vestige of the idea derived from Boulton v. Bull and Hornblower v. Boulton that “manufactures” embodied all principles employed by methods to which they could be put. Hornblower v. Boulton held that a method of use could qualify for patent protection under the Statute of Monopolies if the method (such as Watt’s new use of the known Newcomen steam engine) employed a principle not previously known to be associated with an existing manufacture. In effect, the holding in Hornblower v. Bolton carved new application of principle out from the bar against preemption of bare principle as a basis for patentability. Thereafter, “discovery” of a new application of principle, whether in the form of an “art, machine, manufacture, composition of matter, or new and use improvement thereof,” became the test for patentable distinction, as contrasted with “simply changing the form or proportion” of known subject matter. With the advent of claims in the mid-nineteenth century, the patentability of known devices for new uses was prohibited, while the patentability of new uses of known devices was not, provided that the new use was “non-analogous” to uses of the same device that were known. A use was non-analogous if it was “inventive.” Likewise, “aggregations” of known components were, by definition, unpatentable, and the path to patent protection for such combinations was discovery of a new application of principle that united components of those combinations in cooperation with each other to achieve a “single purpose” that was considered to be “inventive.” Both doctrines were grounded in application of a principle to obtain a benefit as an exception to the general prohibition against patent exclusivity for a principle itself.
Even though “preemption” was not expressly addressed in the Patent Act of 1952, in testimony during hearings in 1951 prior to passage the 1952 Act, P.J. Federico, one of the drafters of the Act, stated that patent eligibility extended to “anything under the sun that is made by man.” However, in the Supreme Court case of Gottschalk v. Benson in 1972, the idea of preemption again became a central issue, and it was only as a consequence of interjecting preemption as a limit on eligibility under Section 101 that “invention” became a test outside of patentable distinction under Section 103. Nevertheless, since that time, the meaning of “invention,” especially apart from patentable distinction, appears to have confounded the courts, and has become a trap for those attempting to parse eligible subject matter from ineligible laws of nature, naturally-occurring subject matter, and abstract ideas.
It may be, however, that there is a unifying message among the concurring and dissenting opinions of the Federal Circuit denying rehearing of AAM v. Neapco. For example, if statutory ineligibility is ignored for a moment, a common theme can be found among the various opinions. Judge Dyk stated that the “omission of needed specifics in the claim was the problem, not a reason to find eligibility.” Judge Chen commented that “simply reciting a functional result at the point of novelty poses serious risks under section 101.” Judge Newman, in her dissent, summarized that the “[b]readth of claiming is a matter of scope and content of the description and enablement in the specification, considered in light of the prior art….” Judge Stoll, in her dissent from the denial for rehearing, accused the majority of “blurring the line between patent eligibility and enablement,” and Judge Moore dissented from the majority’s “chimeric approach to § 101” that, in effect, put “enablement on steroids.” The point is that, had statutory eligibility in the form of the judicial construct of preemption not been a consideration, patentability of the subject matter of claim 22 of the ‘911 patent might have been decided under another statutory provision, in this case the enablement requirement of 35 U.S.C. § 112(a).
This brings us back to O’Reilly v. Morse, where the Court stated that “[i]t is impossible to misunderstand the extent of his claim,” namely “the use of motive power of the electric or galvanic current, which I call electro-magnetism” to print “intelligible characters, signs, or letters at a distance.” If “extent,” as intended by the Court, went to the scope of the invention claimed, then the eighth claim of Morse’s patent had no limit other than employment of a law of nature. The point of O’Reilly v. Morse was not that validity of the exclusionary rights hinged on the fact that the specification must not read on later, patentable improvements, but that where the scope of patent protection is limited only by the agency of a law of nature, naturally-occurring phenomenon, or abstract idea, then it must be presumed that the description supporting that invention as claimed is not enabling. Extending this logic, whether a claimed invention meets the statutory requirements of utility, novelty, and non-obviousness, and whether that invention, as claimed, can be understood and is enabled in view of the written description of the specification, can be decided in all cases without invoking the judicial bar against patenting laws of nature, naturally-occurring phenomena, and abstract ideas.
The Message is Clear
The overarching message sent by the various opinions of the Federal Circuit that caused the recent split on such a facially plain question of whether a method for manufacturing a motor vehicle axle is a “process” under 35 U.S.C. § 101 is clear: preemption is no longer necessary or appropriate as a doctrine of patent eligibility. Rather, its purpose of prohibiting protection beyond the scope of any given invention was long ago absorbed by statutory provisions that put the policies against inordinately broad patent protection on more reliable ground than the test now applied. Lower courts are unlikely to dissuade the Supreme Court from its current stance of having turned application of principle from its historical place as the foundation of patent protection into an indecipherable and unpredictable trap for the unwary.
An alternative would be a statutory prohibition against application of the legal doctrine of preemption under Gottschalk v. Benson to determine patent eligibility under 35 U.S.C. § 101. It appears that only such a blunt legislative act, going to the heart of the patent protection, can force courts to rely instead on the requirements of novelty, non-obviousness, utility, written description, enablement and particularity, all of which were derived from the fundamental understanding that laws of nature, naturally-occurring phenomena, and abstract ideas cannot be taken from the public domain.
Further reading on AAM v. Neapco on IPWatchdog:
New Enablement-Like Requirements for 101 Eligibility: AAM v. Neapco Takes the Case Law Out of Context, and Too Far – Part I
AAM v. Neapco Misreads Federal Circuit Precedent to Create a New Section 101 Enablement-like Legal Requirement – Part II
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