However, the Court need not reach a patent decision on the basis of only the patent statute, for the Supreme Court has the constitutional power to decide cases that arise from contested views either of the "Constitution" or of the "laws of the United States."39 In particular, the Court has the power to decide a case based on the law of the "Constitution" even if the parties argue the case on the basis of only the "laws of the United States."40 Thus, for example, where the parties argue about only the contrasting interpretations of the Patent Statute, the Court has the power to introduce the patentability standards that the Constitution requires.41
The following exposition argues that, though ostensibly applying the patent statutes of Congress, the Court has assumed a duty42 to supplement the statutory standards for patentability when the statutory standards lack sensitivity to the constitutional purpose of promoting progress.43 As a result of considering what standards promote progress, the Court has attended to society's reaction to the Court's non-interference.44 At the same time, when interfering, the Court has not attempted to solve the underlying substantive problem that workers in the society must solve. Rather, the Court has acted to protect the resources that the "inventor" requires for the "discovery" of solutions to technical problems.45
B. Construing the Constitutional Terms
1.
"Inventor"
An inventor who
deserves a patent right is one who solves an unsolved problem in producing
a useful physical change.46
Thus, a patent application must fail if the applicant: 1) solves a problem
that does not add to prior art47
or 2) fails to produce a useful physical change.48
Though an inventor must manifest ingenuity compared to others who have faced the same problem, the inventor's effort may be minimal and may consist of a mere sudden insight.49 At the other extreme, a laborious and plodding effort with the invention does not detract from patentability.50 What matters is that the inventor has 1) faced an unsolved problem51 and 2) solved the problem by the method described in the patent specification.52
Under the idea of progress that the Court applies to patent law,53 reality shackles society with unwanted limitations and threats.54 However, technology can bring increasing areas of reality under human control.55 In particular, an ongoing process of discovery can accumulate a storehouse of prior art consisting of all previously developed solutions to a range of problems.56
In creating a monopoly on new technology, patent law interferes with the free market.57 But the interference is temporary since the society is free to use the prior art inventions after the patents expire.58 And patent law interferes only with the problem-solving that the free market neglects, namely the full disclosure of new technical solutions that likely would remain secret or undiscovered in a free market without a patent law.59
Accordingly, a patentable discovery is a new solution to a problem encountered in producing a useful physical change.60 That is, each patentable discovery permits control over a new and heretofore unconquered area of reality.61 As an incentive, the patent right is greater if the inventor has conquered a more difficult area.62 While pioneer discoveries may provide the first solutions to long-standing problems and thus merit a broad scope of patent protection, lesser discoveries merit patents as well, though perhaps with lesser rights when providing merely minor improvements.63
3.
"Exclusive Right"
The beneficial effect of patent law derives
from protecting the resources that problem-solvers in the society have.64
Hence, the Court must attend to whether or not the society will react to
the Court's opinion by reducing the resources available to problem-solvers.65
In particular, the Court must attend to the Court's effects on the resources of two classes of problem-solvers: 1) skilled mechanics working within the prior art66 and 2) inventors that create new solutions to problems.67 For example, to benefit the skilled mechanics, the Court must ensure that the inventor describes the method and means of working the invention sufficient to enable a skilled mechanic to duplicate the benefit of the invention.68 Furthermore, for future inventors, the Court must ensure that the patent does not extend beyond what the applicant has accomplished because the claim over an unconquered area would deter later problem-solvers from working the unconquered area.69
Whatever the patent statute might say, the Court must proceed with an eye to the constitutional purpose when the case implicates the constitutional purpose of promoting progress.70 In particular, though the governing statute might state a proper legislative action, given the constellation of interests that played out in the formation of the statute, the legislation may miss the actual constellation of competing interests apparent in the case at bar.71
Furthermore, the constitutional purpose for the patent provision is not to dictate the technological solution but rather to provide an authoritative framework where the people can negotiate their own solution.72 Thus, the grant of a first patent assumes that the first patent will provide the basis for a further discovery that will out-perform the first patent.73 Hence, the patent right must be temporary to provide for the emergence of new solutions.74
Accordingly, in 1852, the Supreme Court defined the patent law "exclusive right" as the "right to exclude everyone from making, using, or vending the thing patented" contrary to the express wording of the patent statute that defined the patent right as "the exclusive right to make, use, and vend the invention."75 Thus, the Court recognized that, though a pioneer patent might lay claim to a wide area of a technology, particular applications within a new technology require further discoveries that those skilled in the art cannot identify at the time of the granting of the pioneer patent.76
What follows is that when crucial improvements to a new technology appear, the resources of the inventor making the improvement should also qualify for protection.77 Thus, the Court may allow both the earlier and the later patentees a patent right, a "right to exclude," over a particular technological discovery.78 In this way, the Court avoids imposing a substantive bargain but rather compels the problem- solvers to negotiate the substantive bargain for themselves.79
4.
"To Promote Progress"
Progress in technology requires that
the society, not just the inventor, learn to face and accommodate a previously
limiting reality.80
Thus, a patent does not issue for a wonderful machine unless the inventor
discloses in the patent specification the method by which others in the
society can solve the technical problem that the inventor mastered in making
the wonderful machine.81
Accordingly, progress requires that an entire class of problem-solvers
in the society may learn the inventor's secrets. In particular,
progress requires that the inventor enable the person of average skill
in the pertinent art to duplicate the innovative solution.82
The mere market availability of a new, useful, and inventive product is
not enough for progress.83
Furthermore, an enforceable patent must specify a manipulation of reality that holds up under an empirical test when artisans attempt to duplicate the invention.84 Though a patentee may assert a view of reality that counters the canons of prior art, the purpose of patent law is not to settle disputes between opposing views of reality.85 Rather, patent law protects the resources of inventors and business people who offer products and services that will be reality-tested in the market.86
Moreover, a patentable invention must pass a reality test by usefully altering physical reality as claimed.87 A mere idea is not patentable, even if the idea is a breakthrough in understanding.88 Moreover, even if a revolutionary idea gives rise to a new machine, only the machine is patentable, not the underlying idea.89 While ideas cannot be reality-tested for all possible situations, a patentable invention passes a reality test when the invention alters reality according to the invention's stated function.90
Thus, progress consists of society learning new adaptations to reality.91 Accordingly, where views of reality compete, the court's proper role consists of protecting the resources of the competitors, not in deciding the dispute.92
NOTES
36 See U.S. CONST. art. I, § 8, cl. 8 ("The Congress shall have 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 . . . ."); U.S. CONST. art. I, § 8, cl. 18 ("The Congress shall have Power . . . To make all Laws which shall be necessary and proper for carrying into Execution the
foregoing Powers . . . ."). (back to text)
37 Graham v. John Deere Co., 383 U.S. 1, 6-7 (1966). (back to text)
38 E.g., Act of Apr. 10, 1790, ch. 7, 1 Stat. 109 (1845); Act of Feb. 21, 1793, ch. 11, 1 Stat. 318 (1845); Act of July 4, 1836, ch. 357, 5 Stat. 117 (1846); Act of July 8, 1870, ch. 230, 16 Stat. 198 (1871); Act of July 19, 1952, ch. 950, 66 Stat. 792, 798 (1953) (current version of statutory patentability requirements codified at 35 U.S.C. §§ 101-104 (1994)). (back to text)
39 See U.S. CONST. art. III, § 2, cl. 1 ("The judicial Power shall extend to all Cases . . . arising under this Constitution, the Laws of the United States, and . . . ."); Graham, 383 U.S. at 5, 10-11 (asserting that the Court must ensure that the execution of the patent statute fulfills the constitutional goal of promoting progress, and interpreting Hotchkiss v. Greenwood as furthering progress by preventing monopolies in mere routine mechanical work); Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248, 267 (1851) (establishing that, in addition to the novelty and utility stated in the patent statute, the successful patent applicant must show that the "improvement" required "more ingenuity" than that of a merely "skilful mechanic"). Instead of referring to the Constitution, the Hotchkiss opinion asserts that the applicant's claim lacked "that degree of skill and ingenuity which constitute essential elements of every invention". Id. (emphasis added). (back to text)
40 See, e.g., Marbury v. Madison, 5 U.S. (1 Cranch) 137, 177-78, 180 (1803) (dismissing the case because the statute forming the basis of the controversy obligated the Court to decide what the Constitution did not authorize); Graham, 383 U.S. at 6, 11 (implying that the Constitution requires the Court to impose new patentability criteria if the statutory criteria causes patents to issue on technology that existed before the applicant's effort). (back to text)
41 See Marbury, 5 U.S. (1 Cranch) at 178 (arguing that the "very e[ss]ence of judicial duty" is to decide cases by constitutional standards if there is a conflict between statutory law and constitutional standards); Graham, 383 U.S. at 11 (contending that the Courts must evolve the criteria for patentability to address the foreseeable effects from "the inducement of a patent"). Whether the Supreme Court should be constrained to the statutory patentability criteria is an open question of policy and political power. William N. Eskridge, Jr. & Philip P. Frickey, The Supreme Court 1993 Term: Foreword: Law as Equilibrium, 108 HARV. L. REV. 26, 38-39 (1994) (noting that the Court may introduce new legal criteria but that the Court often bends its decisions to avoid "overrides" by other branches of government). In any case, historically the Court has been able to sustain patentability criteria substantially at variance with the patent statute. See Graham, 383 U.S. at 11-12 (asserting that from 1852 to 1952 the Court maintained a standard of "more ingenuity and skill than that possessed by an ordinary mechanic," thereby causing the denial of many patents that would have been granted under the statutory standards); id. at 17 (stating that the nonobviousness standard of the Patent Act of 1952 amounted to a "codification of judicial precedents"). But see William W Beckett, Judicial Construction of the Patent Act of 1952--Codification v. Substantive Change, 37 J. PAT. OFF. SOC'Y 467, 476 (1955) (arguing that Section 103 of the Patent Act of 1952 at least intended to eliminate the "flash of genius" requirement that the lower courts had imposed); R.M. Palmer v. Luden's, Inc., 104 U.S.P.Q. (BNA) 246 (E.D. Pa. 1955) (interpreting Section 103 of the 1952 Patent Act as eliminating the judicially imposed "flash of genius" requirement). (back to text)
42 See Graham, 383 U.S. at 6 (stating that it is the "duty" of the courts to apply the patent statute so as to fulfill the constitutional command to promote progress in discovering new and useful technology). Hence, the Court cannot merely apply the statutory criteria when foreseeably the society will respond to defeat the constitutional purpose. Id. (arguing that the Court's duty consists of refining the statutory criteria to deny a patent where the society likely would respond to the patent "to restrict free access to materials already available"). (back to text)
43 See id. at 10 (stating that, between 1790 and 1952, throughout more than 50 changes to the patent statute, Congress had specified only two statutory criteria for patentability, novelty and utility); id. at 17 (stating that Section 103 of the 1952 Patent Act codified and validated the Court's 1851 assertion that patents should not issue for the improvements that required merely a skilful mechanic). But see Reiner v. I. Leon Co., 285 F.2d 501, 503 (2d Cir. 1960) (expressing the opinion that, with the Patent Act of 1952, Congress "meant to change the slow but steady drift of judicial decisions that had been hostile to patents"). (back to text)
44 See Graham, 383 U.S. at 11 (suggesting that the Court's non-interference with patents for obvious improvements would be used by the society to obstruct day-to-day problem- solving of mechanics). In 1851, the Court assumed an active role in refining the patentability criteria to fulfill the constitutional purpose of promoting progress. See id. (reviewing the origins of the nonobviousness requirement for patentability).
Early courts had reached patent decisions by assessing merely the product, not the "process" of discovery. See, e.g., Earle v. Sawyer, 8 F. Cas. 254, 255-56 (C.C.D. Mass. 1825) (No. 4,247) (affirming the grant of a patent even if the discovery was "obvious to mechanics," and stating that the "law looks to the fact [of discovery], and not to the process by which it is accomplished"). However, in 1851 the Court began evolving criteria to discern the effects of the Court's decisions on progress. See Hotchkiss, 52 U.S. (11 How.) at 266-67 (denying the validity of a patent for a "better and cheaper" door knob if the improvement resulted merely from the first manufacture in a more durable material using only known technology). The Court looked to the foreseeable effects on inventors who attempted to solve problems that those skilled in the current arts could not solve. See Graham, 383 U.S. at 10-11 (stating that, while the Court's approach prior to Hotchkiss had been judging the inventor's product, the Court's approach after Hotchkiss was a broader inquiry of conditions in the society, including the Court's effect on inducing the development and disclosure of solutions to problems that had not yet been solved). (back to text)
45 See Graham, 383 U.S. at 27, 36-37 (declaring invalid the patent which would have given the patentee the right to exclude the infringer from manufacturing and selling a finger-operated pump sprayer that solved a serious problem in packaging bottled insecticides, but where both the patented sprayer and the infringing sprayer differed from prior art only by advances that "would have been obvious to a person reasonably skilled" in the technology related to pump sprayers). Determining "nonobviousness" requires considering: 1) "prior art," 2) differences between the discovery and the prior art, 3) "level of ordinary skill" in the art regarding the discovery, and 4) other factors, such as, "long felt but unsolved needs". See id. at 17-18 (stating the criteria for determining "nonobviousness" under the Patent Act of 1952).
As advances add to available technology, solving understood problems becomes easier. But the problem-solving that leads to progress advances to the envelope and outer edge of what is known. Hence, in attending to "progress," the Court must consider the Court's effects from the viewpoint of an ever-wiser expert of "ordinary skill in the pertinent art." See id. at 19 (insisting that the Patent Act of 1952 does not relax the constitutional standard of requiring that patents shall issue for the solution of only heretofore unsolved problems); id. at 6 (asserting that the Constitution prohibits patents that make obvious extensions of prior art less available to problem- solvers). (back to text)
46 See In re Bergy, 596 F.2d 952, 960-63 (C.C.P.A. 1979) (summarizing the Court's interpretations of the 1952 Patent Act). A successful patent applicant must show that the discovery has: 1) statutory subject matter, 2) utility, 3) novelty, and 4) nonobviousness. Id. "Statutory subject matter" includes any "process, machine, manufacture, or composition of matter." 35 U.S.C. § 101(a) (1994). To be statutory subject matter, a "process" must "be in the technological arts." In re Musgrave, 431 F.2d 882, 893 (C.C.P.A. 1970). On the other hand, a law of nature, though being a process in the ordinary sense, is not statutory subject matter. See Parker v. Flook, 437 U.S. 584, 593-94 (1978) (stating that a mathematical algorithm amounts to a law of nature and is prior art and unpatentable subject matter even if newly discovered); Arrhythmia Research Tech. v. Corazonix Corp., 958 F.2d 1053, 1056 (Fed. Cir. 1992) (stating that, if the only new element in a device is a new algorithm, "once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention." (quoting Parker, 437 U.S. at 594)). However, applying a new law to produce a change in a physical condition would be statutory subject matter. See Diamond v. Chakrabarty, 447 U.S. 303, 309-10 (1980) (holding that a synthetic bacterium for dissolving oil spills was a "nonnaturally occurring manufacture or composition of matter" and thus patentable even if the synthesis of the bacterium resulted from unforeseeable discoveries of fundamental laws in physics and biology). (back to text)
47 See Great Atl. & Pac. Tea Co. v. Supermarket Equip. Co., 340 U.S. 147 (1950) (concluding that a frame for periodically advancing grocery items at a checkout counter was unpatentable because the device, though new, could have been assembled from existing technologies). The Court denies patentability if the applicant has merely made an obvious extension of prior art. See Graham, 383 U.S. at 25 (deciding that a discovery for attaching a plow blade to the bottom instead of the top of a support was unpatentable because "a person having ordinary skill in the prior art . . . would immediately see that the thing to do was what Graham did"). (back to text)
48 See In re Abele, 684 F.2d 902, 908 (C.C.P.A. 1982) (denying the validity of patent claims for an improved calculation method critical to producing an improved x-ray image from lower radiation, but allowing claims for the physical process of producing the improved x-ray). Mere mental steps for solving a mathematical equation are not patentable, even though important physical benefits might follow from pure mathematical advances. See Parker, 437 U.S. at 595 (denying the patentability of a manufacturing process where an improved method of calculation was the only novel feature). The Court has indicated the possibility that computer programs may be patentable by specific statute. See Gottschalk v. Benson, 409 U.S. 63, 72 (1972) ("It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak."); Parker, 437 U.S. at 595 (stating that patenting some programs might promote progress in the useful arts); In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (asserting that programming a general computer "creates a new machine" that may be patentable if the "new machine" satisfies the patentability criteria). (back to text)
49 See 35 U.S.C. § 103 (1994) (historical and revision notes, para. 2) (stating that the length of the inventor's effort does not affect patentability, whether the discovery "resulted from long toil and experimentation or from a flash of genius") (cited with approval in Graham, 383 U.S. at 16 n.8). (back to text)
50 See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (stating that a discovery is obvious if the average person skilled in the art would have a "reasonable expectation that the beneficial result will be achieved"); In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990) (maintaining that a discovery as a result of long experimentation would fail patentability for obviousness if a person skilled in the art would consider the experimentation mere "routine optimization in the pertinent art"). (back to text)
51 See 2 DONALD S. CHISUM, PATENTS: A TREATISE ON THE LAW OF PATENTABILITY, VALIDITY AND INFRINGEMENT § 5.01 (rel. 51, 1994) ("New problems arise and call for new solutions. A patent monopoly may issue only for those literally new solutions that are beyond the grasp of the ordinary artisan who had a full understanding of the pertinent prior art."); Loctite Corp. v. Ultraseal, 781 F.2d 861, 874 (Fed. Cir. 1985) (stating that a discovery is nonobvious if not readily apparent to "one of ordinary skill in the art" even if the inventor immediately "thought the idea would be successful"). The inventor has addressed a solved problem if the prior art references give a reasonable expectation to the average person skilled in the art that a particular approach would solve the problem. In re O'Farrell, 853 F.2d 894, 902-03 (Fed. Cir. 1988) (denying patentability for obviousness where a technical journal article suggested the combination of prior art that the applicant used and implied that the combination would be successful, even if there was "uncertainty as to whether this could be done"). (back to text)
52 Even early Courts considered the difficulties that problem-solvers might have in following the procedure described in the patent specification. See Wood v. Underhill, 46 U.S. (5 How.) 1, 5 (1847) (stating that a patent is void if the specification "gives only the names of the substances which are to be mixed together, without stating any relative proportion" because "no one could use the invention without first ascertaining by experiment the exact proportion of the different ingredients required to produce the result intended to be obtained"). That is, the inventor does not qualify for a patent until the inventor has described the discovery so that the average person skilled in the art can apply the problem-solution that the inventor discovered. See 35 U.S.C. § 112 (1994) (requiring a written description sufficient to "enable any person skilled in the art . . . to make and use" the invention). (back to text)
53 See U.S. CONST. art. I, § 8, cl. 8 (providing the authorization for a patent system to promote progress in technology). (back to text)
54 See Diamond v. Chakrabarty, 447 U.S. 303, 316-18 (1980) (asserting that the purpose of the patent system is to protect unanticipated inventions, and declaring that a synthetic bacterium to digest oil spills and produce harmless water-soluble waste is patentable subject matter); id. at 316 n.10 (listing selected inventions that reduced the physical limitations on individuals and society, including the telegraph, telephone, electric lamp, airplane, transistor, reactor, and laser). (back to text)
55 See Great Atl. & Pac. Tea Co. v. Supermarket Corp., 340 U.S. 147, 154 (1950) (Douglas, J., concurring) (noting that the greatest benefits to society result from the inventions that "push back the frontiers of chemistry, physics, and the like"). (back to text)
56 See United States v. Adams, 383 U.S. 39, 45-48 (1966) (summarizing the prior art in battery manufacture from 1795 to the present); id. at 43 (noting that the applicant had discovered a means of manufacturing a battery that could be transported dry and then activated by the mere addition of water); id. at 51-52 (recognizing that the discovery required contradicting the basic tenets of the prior art, and, therefore, finding that the applicant's discovery was nonobvious). (back to text)
57 Throughout this Article, the term "free market" includes the totality of non-governmental problem-solving. (back to text)
58 See Graham v. John Deere Co., 383 U.S. 1, 5-6 (1966) (asserting that the Constitution prohibits the Congress from authorizing a patent monopoly to "remove existent knowledge from the public domain," and stating that the constitutional requirement for progress follows only from enlarging, not restricting, the public domain). (back to text)
59 See id. at 10-11 (stating that the Court must oversee the congressional and executive development of the patentability criteria to ensure patents for only those discoveries "which would not be disclosed or devised" without the grant of patent monopolies). (back to text)
60 See In re Bergy, 596 F.2d 952, 960-63 (C.C.P.A. 1979) (summarizing the 1952 Patent Act patentability criteria for statutory subject matter, utility, novelty, and nonobviousness). To show "utility," the applicant must demonstrate: 1) a useful purpose and 2) actual achievement of that useful purpose. See Brenner v. Manson, 383 U.S. 519, 534-35 (1966) (denying the validity of a patent because merely showing the synthesis of a new steroid did not amount to a useful purpose even if the synthesis opened up new areas to research); Ex parte Heicklin, 16 U.S.P.Q.2d (BNA) 1463 (Bd. Pat. App. & Interferences 1990) (denying the validity of a patent, where the applicant stated the purpose of retarding the aging process, but did not show achievement of that purpose). (back to text)
61 See MOKYR, supra note 3, at 11-12 (asserting that technological progress consists of solving appropriate "technical problems" to bring increasing areas of the physical environment under the conscious control of people). (back to text)
62 See Autogiro Co. of Am. v. United States, 384 F.2d 391, 400-01 (Ct. Cl. 1967) (stating that a pioneer patent, which is a major departure from the prior art and is thus the first patent in a field, should obtain greater protection against imitations than a patent that is merely an improvement on the pioneer patent). Under the equitable doctrine of equivalents, the court may extend the pioneer patentee's rights to include unclaimed variations that perform "substantially the same function in substantially the same way to obtain the same result." Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929) (quoting Machine Co. v. Murphy, 97 U.S. (7 Otto) 120, 125 (1877)); see also Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 684 (Fed. Cir. 1990) (explaining that the doctrine of equivalents does not enlarge the scope of the literal claims, but "expands the right to exclude to 'equivalents' of what is claimed"); Miles Lab., Inc. v. Shandon Inc., 997 F.2d 870, 877 (Fed. Cir. 1993) ("To allow [the defendant] to escape infringement simply because it used separate cabinets, as opposed to a single cabinet, is the exact type of injustice the doctrine of equivalents prevents."). (back to text)
63 Even early patent commissioners prevented the patent procedures from pre-judging the practicality of an invention. See Ex parte Cheesebrough, 1869 Dec. Comm'r Pat. 18, 19 (reversing the denial of a patent for a method of heating canals with steam pipes to prevent freezing even though the method manifestly was impractical because of the cost). Any patented method is expected to compete for costs within the free market. Hence, the "utility" criterion need not exclude impractical solutions as long as they would perform as specified. See Ex parte McKay, 200 U.S.P.Q. (BNA) 324, 326 (P.T.O. Bd. App. 1975) (authorizing a patent for a method of extracting oxygen from rocks on the moon and stating that "[commercial exploitation on earth] is not a standard by which the statutory requirement of utility is to be assured"). (back to text)
64 Resources protected include: costs of invention, technical advantage of the invention over prior art, investments to bring the invention to market, enablement from prior patents, and freedom to use the art of prior patents after the patents expire. Innovation is encouraged when patent law will keep competitors from merely copying the invention without compensating the inventor. See Graham, 383 U.S. at 9 (stating that the patent right intends to induce new discoveries, not merely reward for past discoveries). Inventors need not only the financial resources from a patent royalty to recoup costs but also technological resources such as access to the techniques of prior art, including the techniques described in earlier patents. See Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1158-59 (6th Cir. 1978) (stating that, absent court intervention, the infringer "which made no investment in research and development of the invention" could take away the patentee's sales without sharing in the costs of developing the patent); Gould v. Mossinghoff, 229 U.S.P.Q. (BNA) 1, 14 (D.D.C. 1985) (asserting that the patent specification must contain a description of the invention with sufficient detail to enable one "skilled in the art" to duplicate and use the invention, even though the average lay person may not understand the instructions); Graham, 383 U.S. at 11 (suggesting that the patent system must seek to obtain disclosure of techniques that become part of the common domain of freely accessible knowledge after the patent expires). (back to text)
65 See, e.g., Graham, 383 U.S. at 10-12 (asserting that the Court must consider the likely reactions of public and patentees when formulating the patentability standards). If the patentability criteria in the statute allow new patents to restrict the use of known technology, then the Court must impose additional criteria to protect problem-solving resources. Id. at 12 (reviewing the Court's role for one hundred years in rejecting patents for obvious improvements, even though the statute authorized patents for obvious variations on prior art). (back to text)
66 See id. at 36-37 (considering the likelihood that applicants would use the Court's decision to patent obvious extensions of prior art); In re Wands, 858 F.2d 731, 740 (Fed. Cir. 1988) (evaluating whether the court's decision would ensure that persons of "ordinary skill" in the art of antibody research had sufficient documentation and starting material to repeat the applicant's invention without engaging in "undue experimentation"). (back to text)
67 See, e.g., Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607 (1950) (considering that, if the Court does not examine the problems that substitutions solve, the Court will encourage infringers to defraud a patentee of patent rights by substituting merely inconsequential elements of an invention). To determine the Court's effect, even early Courts have considered the reality that the problem-solver faced in discovering the problem-solution at issue in the case. See Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 572-73 (1898) (finding that the defendant's patent should be valid even if the defendant "solved" the same "problem" as the plaintiff, but in the "simplest manner" making "a more perfect brake"); London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991):
Although designing or inventing
around patents to make new inventions is encouraged, piracy is not.
Thus, where an infringer, instead of inventing around a patent by making
a substantial change, merely makes an insubstantial change, essentially
misappropriating or even "stealing" the patented invention, infringement
may lie under the doctrine of equivalents.
Id. (back to text)
68 See Act of Apr. 10, 1790, ch. 7, 1 Stat. 109, 110 (1845) (current version at 35 U.S.C. § 112 (1994)) (stating that the patentee must disclose the method of working the invention "that the public may have the full benefit thereof, after the expiration of the patent term"). The description of the invention need not enable the general public, but only those artisans who would have financial incentives to reduce the invention to a product for the free market. See Wands, 858 F.2d at 740 (holding that the failure rate of an inexperienced researcher did not show lack of enablement where someone skilled in antibody technology could produce from the specification a success rate that compared favorably with other methods in the art). (back to text)
69 Even early Courts considered possible deterrent effects on future inventors. See McClain v. Ortmayer, 141 U.S. 419, 424 (1891) (stating that the patent specification must describe in sufficient detail the unclaimed areas that later inventors could exploit for a patent); In re Fisher, 427 F.2d 833 (C.C.P.A. 1970) (affirming the rejection of a patent claim for high concentrations of a hormone where the patent specification disclosed procedures only for low concentrations and where producing high concentrations would require inventivity beyond the capability of a person of ordinary skill in hormone technology, given the current state of the art). (back to text)
70 See Graham, 383 U.S. at 11-12 (reviewing the Court's one-hundred year assertion that, in addition to the statutory requirements, patentability under the Constitution required solving a problem that a "skilful mechanic" could not solve). (back to text)
71 See Diamond v. Chakrabarty, 447 U.S. 303, 315-16 (1980) (stating that the Court must imply patentability rules for "unanticipated inventions" according to the purpose of the statute where the statute does not provide for the situation at bar). (back to text)
72 See Graham, 383 U.S. at 10-11 (stating that the invention is to be induced from the "inventor" in the public and asserting that the Court's role is to develop the criteria of the "inducement"). Even early Courts sought to avoid unintentionally deciding the direction of technology efforts in the private sector. Thus, the Court has considered whether the Court's decision is likely to warp the direction of future technology. See O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853) (limiting the scope of a patent claim to ensure that inventors in the private sector rather than the courts would determine the direction of technology efforts to improve alphanumeric displays of writing). Hence, the people are to do the inventing, not the Court. And the people in the market are to decide whether an invention is more desirable than the prior art.
However, by sustaining infringement actions, the Court ensures that anyone using a patented invention must transact the business of a licensing agreement with the patentee if the patentee seeks to protect the patented right. And the Court will enforce the terms of a licensing agreement. See, e.g., Sun Studs, Inc. v. ATA Equip. Leasing , Inc, 872 F.2d 978, 992-93 (Fed. Cir. 1989) (applying state contract law to determine whether one party's breach of the contract obligation to not use a computer program would excuse the other party's contract obligation to pay royalties on the patent for commercializing the computer program). But see Lear, Inc. v. Adkins, 395 U.S. 653 (1969) (refusing to enforce a licensing agreement after the patent had issued if licensee could show the patent was invalid, but remanding to the state court to determine contract claims for the use of the trade secret before the patent would have issued revealing the inventor's method). (back to text)
73 Even early Courts have affirmed patents for improvements made to prior patents. See Imhaeuser v. Buerk, 101 U.S. 647, 655 (1879) (permitting a patent on a mere improvement of an existing patent). The patent on an improvement to an existing patent results in blocking patents. That is, the existing- patent holder is excluded from using the improvement while the improvement-patent holder is excluded from using the existing patent. See Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 COLUM. L. REV. 839, 865-66 & n.118 (1990) (explaining that United States patent law expects the two patent holders to reach an agreement of royalties or cross-licensing and that United States patent law provides no compulsory licensing requirement). If the blocking-patent holders cannot reach agreement, no one can commercialize the technology. Id.; see also Robert Cooter et al., Bargaining in the Shadow of the Law: A Testable Model of Strategic Behavior, 11 J. LEGAL STUD. 225, 226 (1982) (asserting that even optimal bargaining procedures cannot always avoid deadlock if the courts will not intervene). (back to text)
74 See Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 572-73 (1898) (Shirass, J., dissenting) (asserting that a later inventor can take a patent free of an earlier patent if the later inventor's work "solved . . . in the simplest manner the problem of quick action" even if the later inventor used basic elements of the earlier patent, together with innovative features, to achieve the same result); Merges & Nelson, supra note 73, at 866 n.118 (justifying the "reverse doctrine of equivalents" as a means of protecting the resources of later inventors where the later inventors and earlier inventors cannot reach a bargain on royalties or cross-licensing). As of June 1996, the Federal Circuit had yet to affirm a finding that the reverse doctrine of equivalents has excused infringement. But see Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1581 (Fed. Cir. 1991) (reaffirming the theoretical validity of the reverse doctrine of equivalents and remanding for factual assessment of the magnitude of the later inventor's innovation). (back to text)
75 See In re Bergy 596 F.2d 952, 959 n.3 (1979) (summarizing the continued conflict between the Court's doctrine and the literal wording of the patent statute between 1852 and 1952, when Congress relented to adopt the Court's definition of "exclusive right"). Compare Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 549 (1852) (defining the patent right as the "right to exclude") with Act of Feb. 21, 1793, ch. 11, 1 Stat. 318, 321 (1845) (defining the patent right as the "right and liberty of making, constructing, using, and vending to others"). (back to text)
76 See Merges & Nelson, supra note 73, at 866 n.117 (summarizing the potential outcomes when a later patent improves on the technology of an earlier patent). In most cases, the conflicting patentees will negotiate a royalty or cross-licensing arrangement. See ROBERT P. MERGES, PATENT LAW AND POLICY: CASES AND MATERIALS 773-75 (1992) (categorizing the benefits and risks for licensor and licensee in negotiating a patent licensing agreement). However, if the conflicting patentees cannot reach an agreement without the court's assistance, the patentees can sue for the tort of infringement. See Atlas Powder Co. v. E.I. DuPont de Nemours & Co., 750 F.2d 1569, 1580 (Fed. Cir. 1984) (holding that, even if having a patent, the improver can be liable for infringement if the improver does not have a licensing agreement with the other patentees holding rights to the patented subject matter that the improver has made, used, or sold). The court's decision depends on the relative difficulty of the problems that the two patentees solved. Compare id. at 1580 n.3 (finding infringement by the improvement patentee, even where the improvement contributed a significant advance over the preceding patent) with Westinghouse, 170 U.S. at 573 (declaring that the improver might take free of the claims of the preceding patentee where the preceding patent "would scarcely have suggested the method" of the improving patent). (back to text)
77 See SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1123 (Fed. Cir. 1985) (en banc) (recognizing the "reverse doctrine of equivalents" as a defense against literal infringement "when a product precisely described in a patent claim is in fact 'so far changed in principle' that it performs in a 'substantially different way,'" and remanding for a consideration of the reverse doctrine of equivalents defense); Scripps Clinic, 927 F.2d at 1581 (declaring that obtaining a patent for a mere improvement to a previous patent does not constitute "inequitable conduct," and remanding to determine whether the extent of improvement warranted a patent right free of claims by the earlier patentee). Though the Federal Circuit theoretically has recognized the availability of the reverse doctrine of equivalents as a defense, the invocation is unlikely to succeed in a practical situation because the Federal Circuit as of June 1996 had not affirmed an actual case where the doctrine excused infringement. See, e.g., United States Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1253 & n.10 (Fed. Cir. 1989) (sustaining the rejection of a reverse doctrine of equivalents defense, where the defendant had produced a crystalline polypropylene of higher molecular weight than the infringed patentee, but where the infringed patent claimed the first production of "crystalline polypropylene" without limitation to a particular molecular weight range). (back to text)
78 See Atlas Powder Co., 750 F.2d at 1580 (asserting that holding a patent on a technology does not excuse the patentee from infringement of earlier patents for elements in the technology). Where the parties cannot negotiate a royalty or cross- licensing, the court should consider, not only the abstract rights, but also the texture of the negotiation that the parties faced. See Foster v. American Mach. & Foundry Co., 492 F.2d 1317, 1324 (2d Cir. 1974) (illustrating a rare case of refusing to order a halt to infringement, but ordering the infringer to pay a royalty, in effect working a "compulsory license" where the infringer was an on-going business and the patentee attempted to stop the business altogether), cited with approval in Stickle v. Heublein, Inc., 716 F.2d 1550, 1562-63 (Fed. Cir. 1983) ("Injunctions and damages must be tailored to the circumstances and be correlatively determined."); Guido Calabresi & A. Douglas Melamed, Property Rules, Liability Rules and Inalienability: One View of the Cathedral, 85 HARV. L. REV. 1089, 1118 (1972) (suggesting that the court should order a halt to infringement only where the infringer is "in a better position to balance the costs" of infringing versus not infringing; otherwise the court should merely assess damages for the infringement); William A. Morrison, Note, The Impact of the Creation of the Court of Appeals for the Federal Circuit on the Availability of Preliminary Injunctive Relief Against Patent Infringement, 23 IND. L. REV. 169, 186-87 (1990) (reporting that, since the "effective date of creation" of the Court of Appeals for the Federal Circuit in 1982, the "success rate of preliminary injunctions against patent infringement" was 52%). (back to text)
79 See MERGES, supra note 76, at 775 (suggesting that, when the court assigns and protects overlapping patent rights, the court encourages the parties to reach a solution that represents a more realistic valuation than the court assignment of the bargain as a third-party observer). Where the transaction costs are high, the court may hinder rather than promote progress by completing the transaction to settle rights. See MERGES, supra note 76, at 774 (asserting that the realities underlying technology valuation often are unknowable).
Generally, courts will force the patentee and the infringer to negotiate with each other by ordering the infringer to cease making, using, and selling the infringing product. See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1247 (Fed. Cir. 1989) ("It is the general rule that an injunction should issue when infringement has been adjudged.") (citing to W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275 (Fed. Cir. 1988); Windsurfing Int'l, Inc. v. AMF Inc., 782 F.2d 995, 1003 n.12 (Fed. Cir. 1986) ("One who elects to build a business on a product found to infringe cannot be heard to complain if an injunction against continuing infringement destroys the business so elected.")
Before the establishment of the Federal Circuit, in rare cases, some courts denied patentees permanent injunctions on the basis of a strong public interest. See City of Milwaukee v. Activated Sludge, Inc., 69 F.2d 577, 593 (7th Cir. 1934) (recognizing the patentee's rights, but denying the right to a permanent injunction where the injunction would deplete the resources that problem-solvers required to treat the sewage flowing into Lake Michigan); Nerney v. New York, N.H. & H.R. Co., 83 F.2d 409, 411 (2d Cir. 1936) (affirming the patentee's rights, but denying the right to a permanent injunction where the injunction would hinder transportation and decrease the capabilities for safely stopping railroad cars).
Unlike other patent systems, the United States patent system does not provide for compulsory cross-licensing. Merges & Nelson, supra note 73, at 866 n.118. But the court can award infringement damages, including a lost- profits surcharge, against the infringer that refuses to negotiate. See Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1158 (6th Cir. 1978) (implying that the court's measure of reasonable damages for infringement is not to "impose a 'compulsory license' policy" but rather to induce the parties to negotiate, while allowing the patentee to enjoin infringing competitors; hence, "reasonable damages" might include an estimation of the higher prices that the patentee could have sustained if the infringers had not competed in the market); Bic Leisure Products Inc. v. Windsurfing Int'l Inc., 27 U.S.P.Q.2d 1671, 1674 (Fed. Cir. 1993) (applying the lost profits test of Panduit, 575 F.2d at 1156, and asserting that, for a lost profits award, the infringer and the patentee must market similar products that compete in the same market segment). The lost-profits surcharge serves to inhibit infringement by making infringement a higher-cost alternative for negotiating a licensing agreement. Panduit, 575 F.2d at 1158-59. (back to text)
80 See THOMAS P. HUGHES, AMERICAN GENESIS: A CENTURY OF INVENTION AND TECHNOLOGICAL ENTHUSIASM 1870- 1970, at 53 (1989) ("Invention can be seen as the process of solving new problems."); In re Strahlevitz, 668 F.2d 1229, 1232-34 (C.C.P.A. 1982) (requiring the applicant to bear the burden of showing that the patent specification "would have enabled a person of ordinary skill in the art to make and use" the invention where the patent specification omitted many preparation details, such as the fabrication of the dialysis membranes used in the invention); Graham v. John Deere Co., 383 U.S. 1, 6 (1966) (stating that the Constitution requires a patented invention to show the potential of increasing the "sum of useful knowledge" in the society). (back to text)
81 Contrary to a literal reading of the patent statutes, early Courts barred patents where the patentee attempted to sell the invention without enabling the society to duplicate the invention. See Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 23 (1829) (asserting that, even though not stated in the patent act, the inventor forfeits any claim on a patent if the inventor offers an embodiment of the invention for sale prior to applying for the patent); 35 U.S.C. § 102(b) (1994) (providing the modern inventor with a one-year grace period to exploit the invention before filing the patent). The constitutional purpose for the patent is to enable ordinary mechanics in new techniques. As the price for the exclusive right of the patent, the inventor is asked to disclose the secret of the invention. If the inventor sells an embodiment of the invention without timely filing of a patent to reveal the inventor's secret method, the inventor has abandoned the claim to a patent right. See Pennock, 27 U.S. (2 Pet.) at 19 (asserting that "progress" requires not only private discovery and public use but also public enablement to "make, construct, use, and vend"). (back to text)
82 See 35 U.S.C. § 112 (1994) (requiring that the patent specification "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"); In re Borkowski, 422 F.2d 904, 908 (C.C.P.A. 1970) (stating that a written description of an invention is complete if the average person skilled in the art could derive the missing details in a "few hours" of experimentation). (back to text)
83 See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) ("Early public disclosure is a linchpin of the patent system."). Public disclosure of the inventor's secret method is more important than commercial availability of the benefit from the invention. See id. (stating that the inventor to first file and thereby disclose the method takes the patent over an inventor who invented earlier and sold while keeping the method secret). (back to text)
84 See Newman v. Quigg, 877 F.2d 1575, 1577 (Fed. Cir. 1989) (affirming the denial of a patent for a perpetual motion machine where following the applicant's instructions did not produce what the applicant claimed, a machine giving higher energy output than input). (back to text)
85 See Diamond v. Chakrabarty, 447 U.S. 303, 315-16 (1980) (arguing that the value of an invention derives from the emergence of technology that those skilled in the chemistry and physics of the day did not foresee); id. at 314-15 (rejecting the argument that patent law requires a legislative determination of the balance of "competing economic, social, and scientific considerations" before granting the first patent to an artificial life- form). Concerns other than progress should prevail in special circumstances where the society cannot deal with the expanded reality that progress brings. See id. at 316-17 (admitting that society may not be able to negotiate successfully the "risks" accompanying genetic research but asserting that patent law assumes legislative forums will establish sufficient controls on risks). However, if the Court's concern is progress, then the Court must refrain from striking the bargain among competing interests while protecting the resources that the competing interests require to compete. See id. at 317 (limiting the Court's concern under patent law to whether "research efforts" are accelerated or slowed). (back to text)
86 See MERGES, supra note 76, at 769 (stating that, without the intervention of patent law, the infringer is the "more efficient producer" because the infringer does not carry the development costs). Patent law is concerned not only with the personal incentives for discovery but also with the resources available for new technology to compete in the marketplace. See Picard v. United Aircraft Corp., 128 F.2d 632, 642-43 (2d Cir. 1942) ("But if we never needed, or do not now need, patents as bait for inventors, we may still need them, in some instances, as a lure to investors."). (back to text)
87 See Newman, 877 F.2d at 1577 (denying patentability where the inventor stated the purpose of generating higher energy output than input but the device failed to perform as stated); Brenner v. Manson, 383 U.S. 519, 534-35 (1966) (requiring that a patent applicant show not only synthesis of the intended compound but also demonstration of social utility for the synthesized compound); In re Ziegler, 992 F.2d 1197, 1203 (Fed. Cir. 1993) (affirming a new plastic as unpatentable where the specification failed to state a "practical utility," and stating that the "utility of a chemical compound may not reside in its 'potential role as an object of use-testing'" (quoting Brenner, 383 U.S. at 535)). (back to text)
88 See Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) ("While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be."). (back to text)
89 See Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (asserting that ideas are unpatentable as part of prior art even "though just discovered"; however, a new and useful application may be patentable). (back to text)
90 See RICHARD FEYNMAN, THE CHARACTER OF PHYSICAL LAW 156-58 (MIT Press 1967) (1965) (describing the process of discovering new physical laws). Though an idea can be proved wrong by a single counter-example, an idea can never be proved right because all the possible experimental tests of an idea can never be completed. Id. at 158. In contrast to an abstract theory, a patent claim asserts a limited technological transformation that one skilled in the art can duplicate by following the disclosure in the patent specification. See The Incandescent Lamp Patent, 159 U.S. 465, 477 (1895) (denying validity to a patent where the specification omitted details of manufacture and, thus, the claims were "too indefinite to be the subject of a valid monopoly"). Due to the closed assertions in a patent claim, the claim can be tested on the reality that the invention proposes to transform. See id. at 474 (stating that if a person skilled in the art cannot construct and use the device as claimed, the patent is void). (back to text)
91 See Richard H. Day, Adaptive Processes in Economic Theory, in ADAPTIVE ECONOMIC MODELS 3 (Richard H. Day & Theodore Groves eds., 1975) (defining adaptation as a response to a manifestation of physical, economic, or social reality, such as a threat to survival). To survive in the environment of international competition, an enterprise must solve not only the accepted problems of routine production but also the new threats from improved quality and efficiency of competing producers. See id. at 5 (proposing that, when competition increases, successful enterprises must devote increased attention to discovering new ways of responding to new challenges). If an enterprise does not adapt to resolve competitive threats, the enterprise will die. See id. at 10 (noting that bankruptcy results when the firm does not respond adequately to competitive threats). During the bankruptcy pro- ceedings, the court often manages a proper reorganization so that the resulting firm adapts more effectively to competitive threats. Id. In contrast, some enterprises adapt or reorganize to meet competition without going through bankrupt- cy. See id. at 12 (recognizing that thoughtful managers can modify strate- gies and tactics before business failure forces a change).
When the court states the substantive bargain between competing points-of-view, the court allows the competing factions to avoid facing the elements of reality that would compete in negotiating for the bargain. See id. at 3 (stating that the firm's competitive environment consists of a threatening reality that the firm must face and resolve in order to survive); id. at 15 (noting that a firm's failure to adapt might derive either from wrongly analyzing the threat or from ineffective action to the threat); Bedford v. Hunt, 3 F. Cas. 37 (C.C.D. Mass. 1817) (No. 1,217) (stating that the court should not determine the value of a discovery and suggesting that only the market should negotiate to determine relative value). (back to text)
92 See Bedford, 3 F. Cas. at 37 (C.C.D. Mass. 1817) (No. 1,217) (stating that patent law should not look to the "degree of utility" and asserting that the market will assess proper value so that the less valuable discoveries "will sink into utter neglect"); Diamond v. Chakrabarty, 447 U.S. 303, 315-16 (1980) (asserting that the patent law intends to encourage inventors to surpass the solutions that courts, legislators, and experts could anticipate). (back to text)
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