the-courts

that it exemplified "a progressive tendency to forget all of the belief except the formularies, or to give it a dull and torpid assent, as if accepting it on trust dispensed with the necessity of realising it in consciousness, or testing it by personal experience".

It is, of course, correct that Congress, not the courts, must define the limits of patentability; but it is equally true that once Congress has spoken it is “the province and duty of the judicial department to say what the law is.” Marbury v. Madison,1 Cranch 137, 177 (1803). Congress has performed its constitutional role in defining patentable subject matter in §101; we perform ours in construing the language Congress has employed. In so doing, our obligation is to take statutes as we find them, guided, if ambiguity appears, by the legislative history and statutory purpose. Here, we perceive no ambiguity. 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” with all that means for the social and economic benefits envisioned by Jefferson. Broad general language is not necessarily ambiguous when congressional objectives require broad terms.

It is argued that this Court should weigh these potential hazards in considering whether respondent’s invention is <447 U.S. 317> patentable subject matter under §101. We disagree. The grant or denial of patents on microorganisms is not likely to put an end to genetic research or to its attendant risks. The large amount of research that has already occurred when no researcher had sure knowledge that patent protection would be available suggests that legislative or judicial fiat as to patentability will not deter the scientific mind from probing into the unknown any more than Canute could command the tides. Whether respondent’s claims are patentable may determine whether research efforts are accelerated by the hope of reward or slowed by want of incentives, but that is all. What is more important is that we are without competence to entertain these arguments – either to brush them aside as fantasies generated by fear of the unknown, or to act on them. The choice we are urged to make is a matter of high policy for resolution within the legislative process after the kind of investigation, examination, and study that legislative bodies can provide and courts cannot. That process involves the balancing of competing values and interests, which in our democratic system is the business of elected representatives. Whatever their validity, the contentions now pressed on us should be addressed to the political branches of the government, the Congress and the Executive, and not to the courts.

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I'm linking to article number 4 of 4 in a series delivered by Kirby J at the University of Cardiff in 2003. I'm linking to this one because it's got the quote I've lifted for the article I'm writing at the moment.

"The peace and order of Australian society
is built on the legal system. It can be modified to bring it into conformity
with contemporary notions of justice and human rights, but it cannot be
destroyed. It is not possible, a priori, to distinguish between cases that
express a skeletal principle and those which do not, but no case can command
unquestioning adherence if the rule it expresses seriously offends the values
of justice and human rights (especially equality before the law) which are
aspirations of the contemporary Australian legal system. If a postulated rule
of the common law expressed in earlier cases seriously offends those
contemporary values, the question arises whether the rule should be maintained
and applied. Whenever such a question arises, it is necessary to assess
whether the particular rule is an essential doctrine of our legal system and
whether, if the rule were to be overturned, the disturbance to be apprehended
would be disproportionate to the benefit flowing from the overturning."

At [39]:

"The theory that the indigenous inhabitants of a "settled"
colony had no proprietary interest in the land thus depended on a
discriminatory denigration of indigenous inhabitants, their social
organization and customs. As the basis of the theory is false in fact and
unacceptable in our society, there is a choice of legal principle to be made
in the present case. This Court can either apply the existing authorities and
proceed to inquire whether the Meriam people are higher "in the scale of
social organization" than the Australian Aborigines whose claims were "utterly
disregarded" by the existing authorities or the Court can overrule the
existing authorities, discarding the distinction between inhabited colonies
that were terra nullius and those which were not."

At [42]:

"Whatever the justification advanced in earlier days for refusing to recognize
the rights and interests in land of the indigenous inhabitants of settled
colonies, an unjust and discriminatory doctrine of that kind can no longer be
accepted. The expectations of the international community accord in this
respect with the contemporary values of the Australian people. The opening up
of international remedies to individuals pursuant to Australia's accession to
the Optional Protocol to the International Covenant on Civil and Political
Rights (68) See Communication 78/1980 in Selected Decisions of the Human
Rights Committee under the Optional Protocol, vol.2, p 23 brings to bear on
the common law the powerful influence of the Covenant and the international
standards it imports. The common law does not necessarily conform with
international law, but international law is a legitimate and important
influence on the development of the common law, especially when international
law declares the existence of universal human rights. A common law doctrine
founded on unjust discrimination in the enjoyment of civil and political
rights demands reconsideration."

• http://www.marxists.org/archive/marx/works/1867-c1/ch32.htm

• "Private property, as the antithesis to social, collective property, exists only where the means of labor and the external conditions of labor belong to private individuals.... The private property of the laborer in his means of production is the foundation of petty industry, whether agricultural, manufacturing, or both; petty industry, again, is an essential condition for the development of social production and of the free individuality of the laborer himself. Of course, this petty mode of production exists also under slavery, serfdom, and other states of dependence. But it flourishes, it lets loose its whole energy, it attains its adequate classical form, only where the laborer is the private owner of his own means of labor set in action by himself: the peasant of the land which he cultivates, the artisan of the tool which he handles as a virtuoso. This mode of production pre-supposes parcelling of the soil and scattering of the other means of production. As it excludes the concentration of these means of production, so also it excludes co-operation, division of labor within each separate process of production, the control over, and the productive application of the forces of Nature by society, and the free development of the social productive powers."
• "[T]he transformation of the individualized and scattered means of production into socially concentrated ones, of the pigmy property of the many into the huge property of the few, the expropriation of the great mass of the people from the soil, from the means of subsistence, and from the means of labor, this fearful and painful expropriation of the mass of the people forms the prelude to the history of capital".
• "Along with the constantly diminishing number of the magnates of capital, who usurp and monopolize all advantages of this process of transformation, grows the mass of misery, oppression, slavery, degradation, exploitation; but with this too grows the revolt of the working-class, a class always increasing in numbers, and disciplined, united, organized by the very mechanism of the process of capitalist production itself."

[i]n many proceedings, especially in recent years, [the High Court] has granted leave to governmental and non-governmental organisations to make submissions as amici curiae where their interests have suggested a capacity to provide submissions from a specialised viewpoint, an industry perspective or in the public interest.

Citation

Jurisdiction

Facts

"the prior art teaches all the claimed steps except that drawn to computing the porosity of a formation. The essence of the appellant's invention lies in using data already available to one of ordinary skill in the art to compute the values of a parameter known to be of value in determining the geophysical properties of a formation... [T]he Appellant's point of departure from the teachings of the prior art lies in his applying his new formula to told data to calculate values of a known parameter. While this discovery of the appellant may constitute an important contribution to the art of geophysical prospecting, unless it falls within the four statutory subjects matter of 35 USCC 101 it cannot be protected by the patent laws." (cited at 1392)

Outcome

Ratio

• Mathematical formulae are unpatentable subject matter under ß101
• The addition of the old and necessary antecedent steps of establishing values for the variables in the equation cannot convert the unpatentable method to patentable subject matter

Relevance

Quotes

Lane J

Rich J

Citation

In the Matter of the Application of Calvin L. Fox (1973) 471 F.2d 1405; 1973 CCPA LEXIS 430

Jurisdiction

US Court of Customs and Patent Appeals

Facts

Relates to a patent application for a process for audio information distribution, namely the making of a tape recording, transmitting the master tape to a distribution point, making a plurality of copies and letting the users bring back their tape when they are through. The application was rejected by the examiner and board of appeals based on 35 USC ß101 as a method of doing business, and on 35 USC ß103 on the grounds of obviousness.

Outcome

The court agreed the invention was not patentable due to obviousness.

Ratio

• The court declined to consider the non-statutory subject matter issue.
• The claims were essentially a tape lending library operation wherein the library made copies as demand warrants.
• All of the equipment and technical knowledge was old, and "anyone desiring to carry out the process would know of the equipment and techniques to be used, none being specifically described." (per Rich J at 1407)
  

Relevance

Not much relevance really, except that the examiner and board rejected on the basis that it was a "method of doing business". The court sidestepped that issue however.

Citation

Gottschalk, Acting Commissioner for Patents v Benson et al (1972) 409 U.S. 63; 93 S.Ct. 253

Jurisdiction

US Supreme Court

Facts

Patent for the "programmed conversion of numerical information in general purpose digital computers", more specifically "a method for converting binary-coded decimal (BCD) numerals into pure binary numerals. The claims were not limited to any particular art or technology, to ary particular apparatus or machinery, or to any particular end use" ( per Douglas J at 64)

Outcome

The claimed invention was held to be non-patentable subject-matter as an attempt to patent an idea, rather than a process.

Ratio

• the method was so abstract as to cover both known and unknown uses
• the end use could vary and could be performed through any machinery, existing or future or without any apparatus at all
  
• the mathematical formula involved had no substantial practical application except in connection with a digital computer
• the result of granting the patent would be to improperly grant a patent for an idea

Relevance

This was the first, and fundamental in many ways, case to deal with the patentability of computer programs in the Supreme Court. It is of central relevance both because almost all subsequent jurisprudence built from here onwards. It launched the difficult "mathematical algorithm" test for patentability.

Quotes

Douglas J

References

• Benrey, R Understanding Digital Computers 4 (1964)
• Wild, "Computer Program Protection: The Need to Legislate a Solution," 54 Corn. L. Rev. 586 (1969)
• Bender, "Computer Programs: Should They Be Patentable?" 68 Col. L. Rev. 241 (1968)
• Buckman, "Protection of Proprietory Interest in Computer Programs," 51 J. Pat. Off. Soc. 135 (1969)
  

Citation

Jurisdiction

Facts

Outcome

Ratio

• Machine implementation vs. mental implementation is not a determinative dichotomy in deciding whether a method is non-statutory. (at 1249)
  
• A process having practical value other than enhancing the internal operation of digital computers was in the technological arts and hence statutory under ß101. (at 1249)
  

Relevance

Citation

Jurisdiction

Facts

Outcome

Ratio

• The patent office appellant tribunals, where it is found necessary, may take notice of facts beyond the record which, while not generally notorious, are capable of such instant and unquestionable demonstration as to defy dispute... Assertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as standard in the pertinent art, and the appellant given, in the patent office, the opportunity to challenge the correctness of the assertion or the notoriety or repute of the cited reference.
• Allegations concerning specific "knowledge" of the prior art, which might be peculiar to a particular art should also be supported and the appellant similarlyl given the opportunity to make a challenge.
  

Relevance

Citation

Jurisdiction

Facts

Outcome

Ratio

• The present case was distinguishable from Prater in that the language of the claims made it clear that protection of a machine-implemented process was sought. (per Stone J at 945)
  
• The term "bit" when used in conjunction with "bit stream" has a meaning in the art which precludes reading the claims on a mentally performed process. (per Stone J at 945)
  

Relevance

Citation

Jurisdiction

Facts

Outcome

Ratio

• Patentee was not confined to the particular mode of use of the method patent described in the specifications, since the claims of the patent, not its specifications, measure the invention.

Relevance

Quotes

At 11: "We may take it that, as the statute requires, the specifications just detailed show a way of using the inventor's method, and that he conceived that particular way described was the best one. But he is not confined to that particular mode of use, since the claims of the patent, not its specifications, measure the invention."

Citation: Dolbear et al v American Bell Tel. Co.; Molecular Tel. Co. v Same; Americal Bell Tel. Co. et al v Molecular Tel. Co. et al; Clay Commercial Tel. Co. et al v American Bell Tel. Co. et al; People's Tel. Co. et al v Same; Overland Tel. Co. et al v Same (1888) 126 U.S. 1; 8 SS.Ct. 778.

Jurisdiction: US Supreme Court

Facts: All cases were bills for infringement of Alexander Graham Bell's 1876 patent for 'improvements in telegraphy' and 1877 patent for 'improvements in electric telephony'.

Outcome: The decree in all cases except Molecular was in favour of the patents. In Molecular, the decision was adverse only in relation to the 5th claim of the 1877 patent.

Ratio:

• Held that the discovery in finding the art , and invention in devising the means of making it useful, were both involved, and that the patent was properly issued.
• The fact that the particular instrument which Bell had tried did not reproduce spoken words so that they could be clearly understood, did not invalidate the patent, as other instruments made in accordance with the specifications would operate successfully.
• The claim was not for the mere use of electricty, as distinct from the particular process with which it is connected in the patent.
  

Quotes:

Waite CJ

Citation: In re Prater and Wei (1969) 56 CCPA 1381; 415 F.2d 1393

Jurisdiction: US Court of Customs and Patent Appeals

Facts: This was a rehearing of the earlier Prater & Wei case, relating to a method and apparatus for the processing, or analysis, of conventionally obtained spectrographic data to produce a quantitative spectrographic analysis with minimum error.

Outcome: The method claims were revoked for failure to properly point out and distinctly claim the subject matter regarding as the invention, but the apparatus claims were upheld over the objection that it was obvious.

Ratio: Decided that the mental steps doctrine has no basis in precedent and no rational basis. The patent was however rejected on the basis that it failed to adequately specify the invention because they claimed more than the mere machine-implemented process.

Relevance: The decision supersedes and in part overrules the earlier case, but the court upholds the earlier rejection of the patentability of computer-related subject matter. The decision also gives better detail of the history of the case than its earlier counterpart.

Note their limited interpretation of the mental steps doctrine: "[I]t would appear that the disclosure of apparatus for performing the process wholly without human intervention merely shows that the disclosed process does not fall within the so-called 'mental steps' exclusion." This is the basis on which Abrams and Yuan are distinguished. Is this really consistent with the doctrine as outlined in earlier cases?

Quotes:

 Baldwin J

At 1387: "[T]he examiner restated the objection of the process claims for failure to comply with 35 USC ßß101, 102 and 112."

At 1388: "The board further stated: 'It (is) beside the point that the solution of the mathematical problem can be done by machine. The claims have set forth nothing which cannot be performed purely as a mental exercise using appellants' discovery that the equations having the largest determinant are the ones to use.'"

At 1391: "We are in agreement with appellants that this case is not controlled by Abrams, Yuan or Cochrane v Deneer, as we view those cases."

At 1391: "In Abrams, no prior [1392] art reference was cited in the application..., the claims being rejected as failing to define subject matter properly ... in that 'the steps of the claims which constitute the heart of the invention are purely mental in character.'

The court referred to Abrams' specification in interpreting the steps of the claims, but Abrams had disclosed no means whatever for performing, without human intervention, two claimed steps of calculation and comparison. No analog device for carrying out the steps was disclosed in the Abrams specification; and at the time Abrams filed (April 28, 1944), general-purpose digital computers were still in the future. Thus, Abrams disclosed and claimed a process which could only be performed in the mind insofar as the teachings of the application were concerned. Abrams therefore presents a significant factual difference from the factual situation in the present case in which the teachings of the specification provide a full disclosure of at least analog apparatus for carrying out the claimed steps without requiring any steps to be performed in the human mind."

At 1392: "[A]s appellants point out, 'Yuan's disclosure was the use made of equations by pencil-and-paper with the mind of the operator at work to interpret the results.' Again, as in Abrams, insofar as the disclosure was concerned, the process (or the critical step thereof) was one that required the use of the human mind-- indeed, a purely mental process or step."

At 1393: "[The Cochrane quote (that certain this should be done with certain substances...but the tools to be used in doing this may be of secondary importance)] has  sometimes been misconstrued as a 'rule' or 'definition' requiring that all processes, to be patentable, must operate physically upon substances. ... To deduce such a rule from the statement would be contrary to its intendment that which was not to limit process patentability but to point out that a process is not limited to the means used in performing it. See In re Ernst 71 F.2d 169, 21 CCPA 1235 (1934)."

At 1393: "Appellants feel that, since they have disclosed apparatus for performing the process wholly without human intervention and since they are seeking [1394] coverage only for the machine-implemented process, they have avoided the so-called 'mental steps' doctrine. ... [I]t would appear that the disclosure of apparatus for performing the process wholly without human intervention merely shows that the disclosed process does not fall within the so-called 'mental steps' exclusion. ...

However, that is quite another question from the one before us, namely, whether appellants are entitled to claims of the breadth of those they seek here."

At 1394: "Viewed apart from the appellants' disclosure this claim is broad enough to cover the method if practiced by the use of pencil and paper by an operator, the operator directing the pencil."

At 1395: "In our view, appellants would like us to read a limitation of the specification into the claims, not merely interpret the claims in light od the specification. When read in the light of the specification, claim 9 does read on a mental process augmented by pencil and paper markings. We find no express limitation in claim 9 which, even when interpreted in the light of the specification, would support the conclusion that the claim is limited to a 'machine process' or 'machine-implemented process'. ...

Inasmuch as claim 9, thus interpreted, reads on subject matter for which appellants do not seek coverage, and therefore tacitly admit to be beyond that which 'applicant regards as his invention,' we feel that the claim fails to comply with 35 USC ß112 which requires that 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.' This is true notwithstanding appellants' disclosure of a machine-implemented process."

At 1397: "We have carefully considered the basic position of the Patent Office that it would be obvious to program a general purpose digital computer to practice appellants' invention and that apparatus claim 10 reads on such a computer... We find that position fatally defective in that it, in effect, assumes the existence as prior art of appellants' discovery..."

At 1398: "We do not perceive of any 'mental steps' issue in regard to apparatus claim 10. It is quite clear that claim 10, in typical means-plus-function language as expressly permitted by the third paragraph of 35 USC ß112, does not encompass the human being as the 'means' or any part thereof.

Worley CJ

At 1398: "One of the more interesting points raised is how far congress inteded to go in conferring patentable status on mental steps as they are intertwined in computer programs generally. It is questionable whether prior decisions denying patentability of purely mental steps, or the statute, read singly or together, can support a broad rule either sanctioning or prohibiting the patentability of such steps in relation to computer programs. Where the line will be drawn can only be determined on a case by case basis in buildings, as best we can, sound and intelligible precedent...

Congress, of course, had no way of knowing in 1952 what lay in the test tube then or what would become a reality tomorrow. But it devised a statute -- a model of legislative craftsmanship and foresight -- broad enough to anticipate and nourish the technological [1399] explosion we have witnessed. Our patent system is a delicate balance of interests; it protects the fruits of the extraordinary efforts it demands of inventors compatibly with the public interest. It has largely fostered the favourable climate resulting in the tremendous strides this country has made in reaching the pinnacle in the worldwide competition in the arts and sciences -- from atomic energy to antihistamines, computers to catalysts, lasers to lunar landings.

So it is with no little surprise and concern that one learns of proposed patent 'reforms'... I have grave misgivings concerning the desirability or need for any substantive change in a system that has worked so well in following the constitutional mandate 'to promote the Progress of Science and useful Arts.'"