Natural laws and inevitable infringement

Minnesota Law Review

Volumn 93, Issue 3, 2009, Pages 933-997

  Durham, Alan L ^a  

^a UNIVERSITY OF ALABAMA   (United States)

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EID: 64849099630     PISSN: 00265535     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (538)

1. Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 126 S. Ct. 601, 601 (2005) (mem.) (granting certiorari limited to a single question).
2. 126 S. Ct. 2921 (2006) (per curium) (mem.).
3. Id. at 2921 (Breyer, J., dissenting).
4. Id. at 2926-27.
5. See, e.g., Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948) ("[These discoveries] are manifestations of laws of nature, free to all men and reserved exclusively to none.").
6. Diamond v. Diehr, 450 U.S. 175, 185 (1981).
7. Id. at 187-88;
8. see Funk Bros., 333 U.S. at 130 (linking invention to the development of an application for "a new and useful end");
9. see also 35 U.S.C. § 101 (2000) (granting patents to "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter").
10. See 35 U.S.C. § 271(a) (2000) (defining infringement as making, using, selling, offering to sell, or importing a patented invention without the patent owner's authority).
11. Lab. Corp., 126 S. Ct. at 2924 (Breyer, J. dissenting).
12. See id. at 2922-23.
13. See id at 2924, 2927.
14. See infra Part H.A.
15. See infra Part IIB.
16. See infra Part U.C.
17. U.S. CONST. art. I, § 8, cl. 8.
18. See Alan L. Durham, "Useful Arts" in the Information Age, 1999 BYU L. REV. 1419, 1437-44 (1999);
19. Karl B. Lutz, Patents and Science: A Clarification of the Patent Clause of the U.S. Constitution, 18 GEO. WASH. L. REV. 50, 54 (1949) ("The term 'useful arts' as used in the Constitution and in the titles of the patent statutes is best represented in modern language by the word 'technology.'").
20. 35 U.S.C. § 154(a)(2) (2000).
21. See Lutz, supra note 16, at 51-55.
22. EDWARD C. WALTERSCHEID, TO PROMOTE THE PROGRESS OF USEFUL ARTS: AMERICAN PATENT LAW AND ADMINISTRATION, 1787-1836, at 60-61 (1998)
23. (citing RICHARD C. DE WOLF, AN OUTLINE OF COPYRIGHT LAW 15 (1925));
24. Lutz, supra note 16, at 51 (citing DE WOLF, supra).
25. See, e.g., Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 154-58 (1950) (Douglas, J., concurring).
26. See generally WALTERSCHEID, supra note 19, at 19 ("[T]he intellectual property clause clearly encompassed two separate powers packaged together; one to promote the progress of science . . . through the exclusive grant known as a copyright, and the other to promote the useful arts through the exclusive grant known as a patent.").
27. See 35 U.S.C. §§ 102-103 (2000 & Supp. 2006);
28. KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007) (quoting Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17-18 (1965)).
29. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1390 (Fed. Cir. 1988);
30. see also 35 U.S.C. § 101 (2000).
31. 35 U.S.C. § 112 (2000);
32. see All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002).
33. 35 U.S.C. §101.
34. Id. Versions of the Patent Act before 1952 employed similar language, but used the term "art" in place of "process." See Diamond v. Chakrabarty, 447 U.S. 303, 308-09 (1980). The change is not substantive, and "art" maintains a presence in the definition of "process" as a "process, art or method." 35 U.S.C. § 100(b) (2000).
35. See J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124, 130 (2001).
36. 447 U.S. 303 (1980).
37. Id. at 308.
38. S. REP. NO. 82-1979, at 5 (1952), reprinted in 1952 U.S.C.CA.N. 2394, 2398-99;
39. H.R. REP. NO. 82-1923, at 6 (1952). Senate Report 82-1979 repeats in substance House Report 82-1923. 1952 U.S.C.CA.N. 2394, 2394.
40. See Chakrabarty, 447 U.S. at 309 (listing cases).
41. See generally Robin C. Feldman, The Inventor's Contribution, 2005 UCLA J.L. & TECH. 6, 6 ("In exchange for the sphere of rights conferred with the patent, society requires inventors to reveal their inventions. The disclosure requirement is frequently described as the quid pro quo, the inventor's contribution [to society] in exchange for the powerful patent grant.").
42. See Chakrabarty, 447 U.S. at 307 ("The authority of Congress is exercised in the hope that '[the] productive effort thereby fostered will have a positive effect on society through the introduction of new products and processes of manufacture into the economy, and the emanations by way of increased employment and better lives for our citizens."' (quoting Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974))).
43. See SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1351 (Fed. Cir. 2005) (Gajarsa, J., concurring) ("[A]ll patents are capable of discouraging at least some innovation .... This discouragement, however, is simply part of the cost that the public bears to promote an overall patent system whose goal is to motivate more innovation than it deters.").
44. An example of such a problematic distinction is the scope of patent claims under the "doctrine of equivalents." A literal reading of patent claims would expose patentees to minor variations that rob them of their monetary reward; on the other hand, disregarding claim limitations may stifle innovation through uncertainty. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabu-shiki Co., 535 U.S. 722, 732-33 (2002).
45. See discussion infra Part I.A.
46. See O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854) (Samuel Morse); The Telephone Cases, 126 U.S. 1 (1887) (Alexander Graham Bell).
47. See generally Winans v. Denmead, 56 U.S. (15 How.) 330, 343 (1854) ("The exclusive right to the thing patented is not secured, if the public are at liberty to make substantial copies of it, varying its form or proportions.").
48. See Festo, 535 U.S. at 734-44 (discussing the importance of the inventor's choice to use broad or narrow language in describing the claim).
49. 55 U.S. (14 How.) 156, 174-75 (1853).
50. See id. at 172.
51. Id.
52. Id. at 176-77.
53. Id. at 174-75.
54. Id. at 174.
55. Id. at 174-75.
56. Id. at 175.
57. Id.
58. Id.
59. Id.
60. Id. at 175-76.
61. In dissent, Justice Nelson argued that the patentee had discovered a new and valuable "property of lead." Id. at 178 (Nelson, J., dissenting).
62. The patentee did not claim the property as such, but a mode of applying that property to produce superior manufactures. Id. at 178-79.
63. Under this analysis, although a principle could not be patented in the abstract, a practical application of a principle could be; unless the patentee had "tied himself down" to the particulars of the mode he employed, the patentee should be entitled to claim "all modes by which the same result is produced, by an application of the same law of nature or property of matter." Id. at 186.
64. 56 U.S. (15 How.) 62, 120-21 (1854).
65. Id. at 112.
66. Id. at 113.
67. Id.
68. The "specification" is the part of a patent including a detailed disclosure of the inventor's preferred embodiments. See ALAN L. DURHAM, PATENT LAW ESSENTIALS: A CONCISE GUIDE § 3.3 (2d ed. 2004).
69. Morse, 56 U.S. (15 How.) at 113.
70. Id. at 119.
71. Id. at 132 (Grier, J., dissenting on the question of costs).
72. Id. at 132-33.
73. Id. at 132.
74. Id. at 133-34.
75. See id. at 114-15 (majority opinion).
76. Neilson v. Hartford, (1841) 151 Eng. Rep. 1266, 1266 (Exch.).
77. Id.
78. Id.
79. Id. at 1273.
80. Id. at 1273-74.
81. Id. at 1273.
82. O'Reilly v. Morse, 56 U.S. (15 How.) 62, 116 (1854).
83. Id.
84. Id. at 116-17.
85. Id. at 117.
86. Alternative means include the requirements that the patent specification describe the patented invention and enable its practice. See 35 U.S.C. § 112 (2000);
87. see also Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007) ("[T]he applicant's specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention." (emphasis omitted) (quoting AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003)));
88. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991) ("[The written description requirement] guards against the inventor's overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation." (citing Rengo Co. v. Molins Mach. Co., 657 F.2d 535, 551 (3d Cir. 1981))).
89. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 67-68 (1972).
90. See, e.g., Diamond v. Diehr, 450 U.S. 175, 185 (1981).
91. See, e.g., Benson, 409 U.S. at 67.
92. See, e.g., Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996).
93. See, e.g., Schering Corp. v. Gilbert, 153 F.2d 428, 432 (2d Cir. 1946).
94. See, e.g., AT&T Corp. v. Excel Commc'ns, Inc., 172 F.3d. 1352, 1356-58 (Fed. Cir. 1999) (noting attempts by various courts to adapt natural-phenomena principles to computer technology).
95. 409 U.S. 63 (1972).
96. 437 U.S. 584 (1978).
97. 450 U.S. 175 (1981).
98. Benson, 409 U.S. at 64-65.
99. See id. at 65 ("The patent sought is on a method of programming a general-purpose digital computer . . . .").
100. Id. at 64.
101. Id. at 73.
102. See id. at 68 (characterizing the applicant's claims as "abstract and sweeping").
103. See id. (noting that the applicant's process might "be performed through any existing machinery or future-devised machinery or without any apparatus"). The cryptic aspects of the opinion include the nearly contradictory statements on whether a patentable "process" must involve a physical transformation. Id. at 64, 68.
104. Id. at 67.
105. Id. at 68 ("Here the 'process' claim is so abstract and sweeping as to cover both known and unknown uses of the [algorithm]. The end use may [] vary from the operation of a train to verification of drivers' licenses to researching the law books for precedents .. . .").
106. Id. at 72.
107. See id. at 67-68 ("He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. . . . We dealt there [Funk Bros.] with a 'product' claim, while the present case deals with a 'process' claim. But we think the same principle applies." (citation omitted) (internal quotation marks omitted)). In Flook, the Court interpreted Benson as treating a mathematical formula or algorithm "like a law of nature." Parker v. Flook, 437 U.S. 584, 589 (1978) (emphasis added).
108. Benson, 409 U.S. at 67.
109. See, e.g., Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874) ("An idea of itself is not patentable .. . .").
110. 409 U.S. at 71.
111. The warning is ambiguous because every patent claim expresses an idea. In Rubber-Tip Pencil, the idea was that one could attach a rubber eraser to the end of a pencil. In spite of its practical application, the Court reduced the invention to an "idea" about the natural ability of rubber to adhere - an idea that was useful but not novel. 87 U.S. (20 Wall.) at 507.
112. Flook, 437 U.S. at 585-86.
113. Id. at 585.
114. See id.
115. Id.
116. Id. at 585-86, 588.
117. See id. at 586.
118. See id. at 594-96.
119. Id. at 589 (quoting Le Roy v. Tatham, 55 U.S. (14 How.) 156, 174-75 (1853)).
120. Id. at 589.
121. Neilson v. Harford, (1841) 151 Eng. Rep. 1266, 1272 (Exch.).
122. See Flook, 437 U.S. at 592.
123. Id. at 595.
124. See id. at 593 ("The rule that the discovery of a law of nature cannot be patented rests ... on the more fundamental understanding that they [natural phenomena] are not the kind of 'discoveries' that the statute was enacted to protect.").
125. Diamond v. Diehr, 450 U.S. 175, 177 (1981).
126. Id. at 178.
127. Id. at 179.
128. Id. at 191-92.
129. Id. at 186-87.
130. Id. at 187.
131. See id. at 191-92.
132. See infra Part II.C for a discussion of § 102.
133. See Diehr, 450 U.S. at 185-87.
134. Id. at 185.
135. Id. (quoting Le Roy v. Tatham, 55 U.S. (14 How.) 156, 174 (1853)).
136. Id. at 188 n.11 (quoting Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948)).
137. See, e.g., State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1375 (Fed. Cir. 1998) (rejecting the traditional business methods exception to patentable subject matter).
138. See, e.g., id. at 1373 ("The Supreme Court has identified three categories of subject matter that are unpatentable, namely 'laws of nature, natural phenomena, and abstract ideas."'
139. (quoting Diehr, 450 U.S. at 185)).
140. Ex parte Latimer, 1889 Dec. Comm'r Pat. 123.
141. Id. at 125 ("Nature made them so and not the process by which they are taken from the leaf or needle.").
142. Id.
143. Id.
144. Id. at 126.
145. The discovery of an entirely new species would also fail to qualify as a patentable discovery. See id. at 127 ("I am not aware of any instance in which it has been held that a natural product is the subject of a patent, although it may have existed from creation without being discovered.").
146. See J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124, 127 (2001) (holding that plants are patentable subject matter under § 101).
147. See Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (stating that bacteria qualify as "manufacture[s]" and "composition[s] of matter" under § 101).
148. In 1988, the Patent Office allowed Harvard University researchers to patent a mouse genetically engineered to be susceptible to cancer. See U.S. Patent No. 4,736,866 (filed June 22, 1984).
149. J.E.M., 534 U.S. at 130 (quoting Chakrabarty, 447 U.S. at 313).
150. See Chakrabarty, 447 U.S. at 309 ("[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter."). Judge Newman of the Federal Circuit may hold a contrary view. See Schering Corp. v. Geneva Pharm., Inc., 348 F.3d 992, 994 (Fed. Cir. 2003) (Newman, J., dissenting) ("It was and is well understood that an inventor may discover something that already existed. ... [A] previously unknown product does not become unpatentable simply because it existed before it was discovered.").
151. See Chakrabarty, 447 U.S. at 309-10 ("His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter - a product of human ingenuity 'having a distinctive name, character [and] use.'" (alteration in original) (citation omitted)).
152. 333 U.S. 127 (1948).
153. Id. at 131.
154. Id.
155. Id.
156. See, e.g., In re Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992).
157. See id. (holding that an inventor of a new use for a known compound is only entitled to patent the method of use).
158. Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996) ("A claim covers and secures a process, a machine, a manufacture, a composition of matter, or a design, but never . . . the scientific explanation of their operation."' (quoting 6 ERNEST BAINBRIDGE LIPSCOMB III, LIPSCOMB'S WALKER ON PATENTS § 21:17, at 315-16 (3d ed. 1985)));
159. In re King, 801 F.2d 1324, 1328 (Fed. Cir. 1986) (stating that applicant is not "entitled to a patent [merely] because he sets out the scientific formulae [for] explaining what happens").
160. Parker v. Flook, 437 U.S. 584, 593 n.15 (1978) (citation omitted).
161. Id. As a New York district court expressed it, "the Constitution grants monopolies to inventors, not to analysts." CTS Corp. v. Electro Materials Corp. of Am., 469 F. Supp. 801, 821 (S.D.N.Y. 1979).
162. 412 F.3d 1319 (Fed. Cir. 2005).
163. Id. at 1321.
164. See id.
165. Id. at 1323.
166. Id.
167. Id.;
168. see also EMI Group N. Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1351 (Fed. Cir. 2001) (origin of the fire/oxygen analogy).
169. Upsher-Smith Labs., 412 F.2d at 1323.
170. See Schering Corp. v. Gilbert, 153 F.2d 428, 432 (2d Cir. 1946).
171. If one could not patent a new molecule because "the inevitable result of the action of so-called laws of nature which are immutable by man and remain free for the use of all," then no processes or machines could be patented either, because forces such as gravity and friction always play a role; "[o]bviously, such an advanced position cannot be maintained in the face of the patent statute and the multitude of authoritative decisions to the contrary." Id.
172. Merck & Co. v. Olin Mathieson Chem. Corp., 253 F.2d 156, 161-62 (4th Cir. 1958) ("All of the tangible things with which man deals and for which patent protection is granted are products of nature in the sense that nature provides the basic source materials. The 'matter' of which patentable new and useful compositions are composed necessarily includes naturally existing elements and materials.").
173. See In re Bergy, 596 F.2d 952, 992-93 (C.C.P.A. 1979) (Baldwin, J., concurring) (noting that Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923), in which the patentee improved a papermaking machine by raising one end of the apparatus to improve flow through the force of gravity, "is often cited approvingly as an example of the proper use of a natural phenomenon to produce a new and useful end result"), dismissed as moot sub nom. Diamond v. Chakrabarty, 444 U.S. 1028 (1980).
174. See Dickey-john Corp. v. Int'l Tapetronics Corp., 710 F.2d 329, 348 n.9 (7th Cir. 1983) ("[A]ll inventions that work can be explained in terms of basic truths.").
175. 306 U.S. 86 (1939).
176. See id. at 92-93.
177. Id. at 93-94.
178. Id.
179. Id. at 94.
180. 2.").
181. See id. ("Newton [could not] have patented the law of gravity.").
182. See Katz v. Horni Signal Mfg. Corp., 145 F.2d 961, 961 (2d Cir. 1944) ("[T]he great discoveries of . . . Faraday could not have been rewarded with such a grant of monopoly.").
183. See Parker v. Flook, 437 U.S. 584, 590 (1978) ("[T]he Pythagorean theorem would not have been patentable ....").
184. See Schering Corp. v. Gilbert, 153 F.2d 428, 435 (2d Cir. 1946) (Frank, J., dissenting) ("No Prometheus is welcome in the Patent Office.").
185. Katz, 145 F.2d at 961.
186. Id.
187. 17 F. Cas. 879 (C.C.S.D.N.Y. 1862) (No. 9865).
188. Id. at 882.
189. Id. at 883.
190. Id. ("At this point the patent breaks down; for the specification presents nothing new except the effect produced by well-known agents, administered in well-known ways on well-known subjects.").
191. Id. ("The fact that the surgeon can operate upon the body in the condition to which it is thus reduced forms no part of the invention or discovery. It simply furnishes evidence that it can be applied to at least one useful purpose; a fact quite independent of the other elements necessary to make a discovery patentable.").
192. Id. ("This new or additional effect is not produced by any new instrument by which the agent is administered, nor by any different application of it to the body of the patient. It is simply produced by increasing the quantity of the vapor inhaled. And even this quantity is to be regulated by the discretion of the operator, and may vary with the susceptibilities of the patient to its influence.").
193. Id. at 881 ("It is only where the explorer has gone beyond the mere domain of discovery, and has laid hold of the new principle, force, or law, and connected it with some particular medium or mechanical contrivance by which, or through which, it acts on the material world, that he can secure the exclusive control of it under the patent laws.").
194. Id. at 882.
195. Id. at 884.
196. Id.
197. See Donald F. Turner, The Patent System and Competitive Policy, 44 N.Y.U. L. REV. 450, 455 (1969) (arguing that the patent system "would appear to worsen . . . the allocation of research resources as between applied research on the one hand and basic research on the other").
198. 17 F. Cas. at 882.
199. U.S. CONST, art. I, § 8, cl. 8.
200. See id.
201. 35 U.S.C. § 101 (2000) (emphasis added).
202. Id.
203. See, e.g., Diamond v. Chakrabarty, 447 U.S. 303, 315 (1980) ("Congress has performed its constitutional role in defining patentable subject matter in § 101; we perform ours in construing the language Congress employed. .. . Broad general language is not necessarily ambiguous when congressional objectives require broad terms.").
204. See S. REP. NO. 82-1979, supra note 30, at 5 (emphasis added);
205. H.R. REP. NO. 82-1923, supra note 30, at 6 (emphasis added).
206. See Dickey-john Corp. v. Int'l Tapetronics Corp., 710 F.2d 329, 348 n.9 (7th Cir. 1983) (noting that it has never "been considered that the lure of commercial reward provided by a patent was needed to encourage such contributions [as Einstein's]");
207. Katz v. Horni Signal Mfg. Corp., 145 F.2d 961, 961 (2d Cir. 1944) ("Interestingly enough, apparently many scientists like Faraday care little for monetary rewards; generally the motives of such outstanding geniuses are not pecuniary. Perhaps (although no one really knows) the same cannot be said of those lesser geniuses who put such discoveries to practical uses." (footnote omitted)). Universities, where much theoretical research takes place, may be less affected by the profit motive than other institutions. See Turner, supra note 176, at 452.
208. Dickey - john, 710 F.2d at 348 n.9.
209. Satava v. Lowry, 323 F.3d 805, 813 (9th Cir. 2003).
210. 1889 Dec. Comm'r Pat. 123 (1889).
211. Id. at 126.
212. VI THE WRITINGS OF THOMAS JEFFERSON, 180-81 (H.A. Washington ed., 1871)
213. quoted in Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 8 n.2 (1966).
214. Id. at 9 n.2.
215. Id.
216. 35 U.S.C. § 102 (2000 & Supp. 2006).
217. Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453-54 (Fed. Cir. 1984).
218. Gen. Elec. Co. v. De Forest Radio Co., 28 F.2d 641, 641-44 (3d Cir. 1928).
219. Id. at 642.
220. Id. at 643 ("What he discovered were natural qualities of pure tungsten. Manifestly he did not create pure tungsten, nor did he create its characteristics. These were created by nature . . . .").
221. Id. Today a court may well grant a patent on a purified form of a natural substance if that purified form does not occur in nature. See Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1381 (Fed. Cir. 2003) (citing In re Bergstrom, 427 F.2d 1394, 1401-02 (C.C.P.A. 1970)). In such cases the subject matter of the claim is novel.
222. See, e.g., Parker v. Flook, 437 U.S. 584, 593 n.15 (1978) (citing PETER D. ROSENBERG, PATENT LAW FUNDAMENTALS 13 (1975));
223. see also Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1066 n.3 (Fed. Cir. 1992) (Rader, J., concurring) ("A law of nature, even if a process, is not 'new' within the meaning of § 101.");
224. In re Meyer, 688 F.2d 789, 795 (C.C.P.A. 1982) ("The Supreme Court has recognized that scientific principles and laws of nature, even when for the first time discovered, have existed throughout time, define the relationship of man to his environment, and, as a consequence, ought not to be the subject of exclusive rights of any one person." (citing Leroy v. Tatham, 55 U.S. (14 How.) 155, 175 (1852))).
225. 35 U.S.C. § 101 (2000) (emphasis added).
226. See, e.g., Diamond v. Diehr, 450 U.S. 175, 190 (1981) ("The question therefore of whether a particular invention is novel is 'wholly apart from whether the invention falls into a category of statutory subject matter."' (quoting In re Bergy, 596 F.2d 952, 961 (C.C.P.A. 1979)) (emphasis omitted)).
227. See Gen. Elec. Co., 28 F.2d at 642-43 ("Coolidge took tungsten as it 'existed' . . . and by his process converted it into pure tungsten or tungsten that is substantially pure, and, doubtless, was first to discover that when pure it has characteristics . . . which are wholly different from the characteristics of the impure oxid of tungsten, notable among which is extreme brittleness.").
228. Flook, 437 U.S. at 593 n.15 (citing PETER D. ROSENBERG, PATENT LAW FUNDAMENTALS 13 (1975)).
229. O'Reilly v. Morse, 56 U.S. (15 How.) 62, 112-13 (1854) ("[Morse] claims the exclusive right to every improvement where the motive power is the electric or galvanic current.").
230. Id. at 113.
231. See Gottschalk v. Benson, 409 U.S. 63, 68 (1972) ("Here the 'process' claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion.").
232. See id. at 71 ("It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case.").
233. With some sense of irony, courts often contrast groundbreaking, invaluable, but unpatentable discoveries in natural science with humble, incremental, but patentable advancements in technology. See, e.g., Katz v. Horni Signal Mfg. Corp., 145 F.2d 961, 963 (2d Cir. 1944) ("[The] plaintiff has achieved a real invention . . . which satisfied the strictest standards employed by the Supreme Court.");
234. Morton v. N.Y. Eye Infirmary, 17 F. Cas. 879, 884 (C.C.S.D.N.Y. 1862) (No. 9865) (noting that patents may be granted to "very humble contrivances, of limited usefulness, the fruits of indifferent skill, and trifling ingenuity," but not to a discovery as "brilliant and useful" as anesthesia).
235. See 35 U.S.C. § 112 (2000) ("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.").
236. See Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 987 (Fed. Cir. 1989) ("The concept of the 'pioneer' arises from an ancient jurisprudence, reflecting judicial appreciation that a broad breakthrough invention merits a broader scope of equivalents than does a narrow improvement in a crowded technology.").
237. 35 U.S.C. § 154 (providing the duration of a patent term).
238. Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948).
239. Gottschalk v. Benson, 409 U.S. 63, 67 (1972);
240. see also Nippon Elec. Glass Co. v. Sheldon, 539 F. Supp. 542, 545 (S.D.N.Y. 1982) (applying the "basic tools" language in a case where the patentee had discovered unsafe levels of radiation emitted by some television sets).
241. Section 101 states that a patentable invention must be "new and useful." See 35 U.S.C. § 101 (emphasis added).
242. 383 U.S. 519 (1966).
243. Id. at 522.
244. Id.
245. Id. at 531 ("[Plaintiff] begins with the . . . argument that his process has a specific utility which would entitle him to a declaration of interference even under the Patent Office's reading of § 101 ... . We do not accept any of these theories as an adequate basis for overriding the determination of the Patent Office that the 'utility' requirement has not been met.").
246. Id. at 534.
247. Id.;
248. see also In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005) ("[I]n addition to providing a 'substantial' utility, an asserted use must also show that that claimed invention can be used to provide a well-defined and particular benefit to the public").
249. In re Fisher, 421 F.3d at 1380-82 (Rader, J., dissenting).
250. Id.
251. Id. at 1381 ("[T]he microscope ... has 'utility' under § 101. Why? Be- cause it takes the researcher one step closer to answering . . . [important] questions. Each step, even if small in isolation, is nonetheless a benefit to society sufficient to give a viable research tool 'utility' under § 101.").
252. See 383 U.S. at 537-39 (Harlan, J., concurring in part and dissenting in part).
253. O'Reilly v. Morse, 56 U.S. (15 How.) 62, 132 (1854) (Grier, J., dissenting).
254. 35 U.S.C. § 101 (2000).
255. Id. § 100(b).
256. Id.
257. See, e.g., Tilghman v. Proctor, 102 U.S. 707, 722 (1881) ('That a patent can be granted for a process there can be no doubt. The patent law is not confined to new machines and new compositions of matter, but extends to any new and useful art or manufacture. A manufacturing process is clearly an art, within the meaning of the law.").
258. See id. at 724-27.
259. Id. at 728.
260. Id. The opinion includes a number of statements that are difficult to fathom, including the observation that "[a] new process is usually the result of a discovery; a machine of invention." Id. at 722.
261. See id. at 722.
262. See In re Yuan, 188 F.2d 377, 381 (C.C.P.A. 1951) (noting that a process "is so far abstract that it is capable of contemplation by the mind apart from any one of the specific instruments by which it is performed" (citation omitted)).
263. See id. A patent claim describing a machine is also an abstraction - a description of a class of machines that satisfy the claim language. By contrasting the concrete nature of a machine as an embodiment and the abstract nature of a process as an idea, Tilghman understates the abstractness of the former.
264. 94 U.S. 780 (1877).
265. Id. at 787-88.
266. Id. at 788.
267. Id.
268. See, e.g., In re Yuan, 188 F.2d at 381 (noting that a process "consists in the application of physical force through physical agents to physical objects" (citation omitted)); Halliburton Oil Well Cementing Co. v. Walker, 146 F.2d 817, 821 (9th Cir. 1944), aff'd, 326 U.S. 696 (1946), reh'g granted, 327 U.S. 812 (1946), opinion set aside by 329 U.S. 1 (1946);
269. Ex parte Meinhardt, 1907 Dec. Comm'r Pat. 237, 238.
270. E.g., In re Prater (Prater II), 415 F.2d 1393, 1403 (C.C.P.A. 1969).
271. In Benson, the Supreme Court added to the confusion. At one point, the Court stated that "[t]ransformation 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." Gottschalk v. Benson, 409 U.S. 63, 70 (1972).
272. Later, in response to the argument that a process claim, not linked to particular machines, must perform a transformation, the Court employed this triple-negative: "[w]e do not hold that no process claim could ever qualify if it did not meet the requirements of our prior precedents." Id. at 71.
273. See infra Part II.D.
274. In re Comiskey, 499 F.3d 1365, 1376 (Fed. Cir. 2007).
275. Id. at 1377.
276. See 409 U.S. at 71-72.
277. See 1 DONALD S. CHISUM, CHISUM ON PATENTS § 1.03[6] (2006).
278. 150 F.2d 554 (C.C.P.A. 1945).
279. Id. at 554-55.
280. Id. at 556.
281. Id.
282. 146 F.2d 817, 818 (9th Cir. 1944).
283. Id. at 821.
284. Id.
285. Id.
286. 63 U.S.P.Q. (BNA) 131 (Pat. Off. Bd. App. 1944).
287. Id. at 132.
288. See In re Yuan, 188 F.2d 377, 380 (C.C.P.A. 1951) (noting that it has been "thoroughly established by decisions of various courts that purely mental steps do not form a process which falls within the scope of patentability as defined by statute").
289. 188 F.2d 165 (C.C.P.A. 1951).
290. Id. at 165.
291. Id. at 166.
292. Id.
293. Id.
294. Id.
295. Id. at 167.
296. In re Prater (Prater I), 415 F.2d 1378 (C.C.P.A. 1968), reh'g granted, 160 U.S.P.Q. (BNA) 230 (C.C.P.A. 1969), opinion superseded by 415 F.2d 1393 (C.C.P.A. 1969).
297. Id. at 1387 (referring to Don Lee, Inc. v. Walker, 61 F.2d 58 (9th Cir. 1932)).
298. Id. at 1387-88.
299. Id. at 1387 (quoting Cochrane v. Deener, 94 U.S. 780, 787 (1877)).
300. Id. at 1387-88.
301. Id. at 1386.
302. Id. at 1371 (viewing the Abrams rules adopted by the court as a "misreading" of the case that leads to "confusion").
303. Id. at 1389.
304. See id. at 1379.
305. Id. at 1389.
306. Id.
307. Prater II, 415 F.2d 1393 (C.C.P.A. 1969).
308. See id. at 1396-97.
309. Id. at 1404 (citation omitted) (emphasis omitted) (internal quotation marks omitted).
310. Id.
311. Today this seems an odd use of the definiteness requirement. A claim is indefinite under § 112 of the Patent Act if persons skilled in the art cannot understand its scope. See Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1319 (Fed. Cir. 2003).
312. Here the court understood the claim perfectly well and found that it read on mental activity. See Prater II, 415 F.2d at 1405.
313. The claim might have failed the written description requirement if the applicant had not been in possession of such a broad invention when the application was filed. See Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1320 (Fed. Cir. 2003).
314. But the applicant in Prater II seemed to have known all along that, theoretically, the method could be performed mentally; it simply argued, unsuccessfully, that the claims were narrower than that. See 415 F.2d at 1404.
315. Prater II, 415 F.2d at 1403.
316. Id. at 1401-02.
317. Id. at 1403.
318. 35 U.S.C. §112(2000).
319. Prater II, 415 F.2d at 1402 n.23.
320. 431 F.2d 882 (C.C.P.A. 1970).
321. Id.
322. Id. at 888.
323. Id. at 890.
324. Id. at 890-91.
325. Id. at 893.
326. Id. at 889.
327. See id.
328. Id.
329. See id. at 889 n.4.
330. Id. at 893.
331. Diamond v. Diehr, 450 U.S. 175, 200 (1981) (Stevens, J., dissenting).
332. Musgrave, 431 F.2d at 894 ("[T]here is now only a very narrow scope to this 'fearful' mental steps doctrine.").
333. Id. at 894.
334. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
335. In dicta, the Benson Court did list "mental processes" as one of the ex- eptions to § 101, perhaps signaling that the mental steps doctrine had life in it still. 409 U.S. at 67.
336. The similar list in Diehr includes only "laws of nature, natural phenomena, and abstract ideas." 450 U.S. at 185.
337. In re Abrams, 188 F.2d 165, 168 (C.C.P.A. 1951).
338. See Prater I, 415 F.2d 1378, 1378-88 (C.C.P.A. 1968);
339. Prater II, 415 F.2d 1393, 1403 (C.C.P.A. 1969).
340. Some of the mental processes identified in Musgrave as "peculiarly human" might defy description, raising issues of definiteness. See 431 F.2d at 893 ("Of course, to obtain a valid patent the claim must also comply with all the other provisions of the statute, including definiteness under 35 U.S.C. § 112. A step requiring the exercise of subjective judgment without restriction might be objectionable as rendering a claim indefinite, but this would provide no statutory basis for a rejection under 35 U.S.C. § 101."). Many claims based on mental steps would pose no such difficulty.
341. Cf. Prater I, 415 F.2d at 1388-89 ("[A]lthough appellants' novel calculations performed in the mind of a man might possibly be considered to be in nature, performance of the process of these novel calculations on a computer is by 'a means which had never occurred in nature."' (citation omitted)).
342. Benson, 409 U.S. at 67.
343. See Prater II, 415 F.2d at 1400 n.20 ("The solicitor . . . argues that the grant of a patent containing process claims of such breadth as to confer upon a patentee the right to exclude others from thinking in a certain manner would run afoul of the First, Ninth, and Tenth Amendments to the Constitution. He urges that Article I, Section 8 must be construed in the light of the other constitutionally assured rights and that freedom of mind or thought may not be abridged by the patent laws.").
344. 499 F.3d 1365 (Fed. Cir. 2007).
345. See id. at 1368.
346. Id. at 1377 ("[M]ental processes - or processes of human thinking -standing alone are not patentable even if they have practical application.").
347. See id.; see also Benson, 409 U.S. at 67.
348. See In re Comiskey, 499 F.3d at 1374, 1378-79 ("[T]he patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone, a field of endeavor that both the framers and Congress intended to be beyond the reach of patentable subject matter.").
349. In re Musgrave, 431 F.2d 882, 892 (C.C.P.A. 1970).
350. See, e.g., Parker v. Flook, 437 U.S. 584, 594 (1978).
351. See In re Abrams, 188 F.2d 165, 166, 169 (using suggested "rules of law" for the specifics of appellant's claims).
352. See, e.g., Diamond v. Diehr, 450 U.S. 175, 188-89 (1981).
353. See Techsearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1371 (Fed. Cir. 2002) (citing Cole v. Kimberly-Clark Corp., 102 F.3d 524, 532 (Fed. Cir. 1996)).
354. See 35 U.S.C. § 101 (2000).
355. Id. § 112.
356. Id. § 103(a)-(b).
357. Id.
358. See Parker v. Flook, 437 U.S. 584, 594 n. 16 (1978) ("Section 103, by its own terms, requires that a determination of obviousness be made by considering 'the subject matter as a whole.' Although this does not necessarily require that analysis of what is patentable subject matter under § 101 proceed on the same basis, we agree that it should." (citation omitted)).
359. See, e.g., In re Comiskey, 499 F.3d 1365, 1377 (Fed. Cir. 2007) (stating that mental processes alone are not patentable).
360. 437 U.S. at 588.
361. Id.
362. Id. at 591.
363. Id. at 590.
364. Id. at 594.
365. The Court found a distinction between patentable subject matter and novelty. The Court assumed that the algorithm was novel, but still rejected the claim for lack of a patentable invention. See id. at 588, 594.
366. See id. at 594 ("Here it is absolutely clear that respondent's application contains no claim of patentable invention.").
367. In re Bergy, 596 F.2d 952, 959 (C.C.P.A. 1979), dismissed as moot sub nom. Diamond v. Chakrabarty, 444 U.S. 1028 (1980).
368. The Bergy court found in Flook "an unfortunate and apparently unconscious . . . commingling of distinct statutory provisions which are conceptually unrelated .. . ." Id.
369. Id. at 960.
370. But cf. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1350-51 (Fed. Cir. 2002) (recognizing that cancer-fighting properties inherent in cruciferous sprouts are not the invention of something new, as required by § 101).
371. Diamond v. Diehr, 450 U.S. 175, 190 (1981) ("The question therefore of whether a particular invention is novel is 'wholly apart from whether the invention falls into a category of statutory subject matter."' (quoting In re Bergy, 596 F.2d at 961) (emphasis omitted)).
372. Id. at 188-89;
373. cf. In re Musgrave, 431 F.2d 882, 893 (1970) ("In considering the patentability of a process consisting of a plurality of steps we think it is immaterial to the question whether the combination is a statutory 'process' that individual steps are old. The whole process could be old and yet be statutory; a fortiori, it matters not that one or more steps are old." (emphasis omitted)).
374. See Diehr, 450 U.S. at 188.
375. See id. at 184 ("[W]e think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter .... Industrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws.").
376. In re Comiskey, 499 F.3d 1365, 1380 (Fed. Cir. 2007).
377. Parker v. Flook, 437 U.S. 584, 588-89, 593-95 (1978).
378. See 450 U.S. at 191-93.
379. See id. at 182-84.
380. 33 F.3d 1526 (Fed. Cir. 1994) (en banc).
381. Id. at 1537-38.
382. Id. at 1538-39.
383. See id. at 1538-39, 1565 (Archer, J., concurring in part and dissenting in part);
384. see also 33 U.S.C. § 112 (2000) ("An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.").
385. In re Alappat, 33 F.3d at 1545 (majority opinion).
386. See id. ("[A] computer operating pursuant to software may represent patentable subject matter . . . .").
387. See id. In its concluding statements, the court observed that, "a computer, like a rasterizer, is apparatus not mathematics." Id. Judge Archer deplored the majority's "simplistic" approach.
388. Id. at 1554 (Archer, C.J., concurring in part and dissenting in part).
389. Every § 101 analysis, he wrote, "must begin with this question: What, if anything, is it that the applicant for a patent 'invented or discovered?"' Id. at 1557 (citation omitted).
390. In that statement, Judge Archer meant something more than "What does the applicant's claim say?" Judge Archer's opinion in In re Grams, 888 F.2d 835 (Fed. Cir. 1989), similarly resists the idea that the claim alone determines the nature of the invention. See id. at 839 ("[I]n answering this inquiry [what did the applicant invent?] '[e]ach invention must be evaluated as claimed: yet semantogenic considerations preclude a determination based solely on words appearing in the claims."' (quoting In re Abele, 684 F.2d 902, 907 (C.C.P.A. 1982))).
391. 149 F.3d 1368, 1370 (Fed. Cir. 1998).
392. Id. at 1370.
393. Id. at 1371-72.
394. Id. at 1372.
395. See 35 U.S.C. § 101 (2000);
396. cf. id. § 112 (spawning the separate requirements of enablement, best mode, and written description).
397. See Brenner v. Manson, 383 U.S. 519, 528-30, 532-36 (1966).
398. See In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994).
399. State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d at 1373 (Fed. Cir. 1998) ("Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces 'a useful, concrete and tangible result' - a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.").
400. 172 F.3d 1352 (Fed. Cir. 1999).
401. See id. at 1358.
402. Id. ("The notion of 'physical transformation' .... is not an invariable requirement, but merely one example of how a mathematical algorithm may bring about a useful application." (emphasis added)).
403. In re Comiskey, 499 F.3d 1365, 1379 (Fed. Cir. 2007) ("[T]he application of human intelligence to the solution of practical problems is not in and of itself patentable.").
404. See Diamond v. Chakrabarty, 447 U.S. 303, 314-18 (1980).
405. See Diamond v. Diehr, 450 U.S. 175, 182 (1981).
406. State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1375 (Fed. Cir. 1998) ("We take this opportunity to lay this ill-conceived [business method] exception to rest. . . . Since the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method.").
407. U.S. CONST, art. I, § 8, cl. 8;
408. see Ex parte Lundgren, 76 U.S.P.Q.2d (BNA) 1385, 1386-88 (B.P.A.I. 2005).
409. See 499 F.3d at 1378-79.
410. See id. 1378-81.
411. See Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 126 S. Ct. 2921, 2926-28 (2006) (Breyer, J., dissenting).
412. See Diamond v. Diehr, 450 U.S. 175, 177-79 (1981).
413. 688 F.2d 789 (C.C.P.A. 1982).
414. See id. at 790.
415. Id. at 793, 795.
416. Id. at 796.
417. See In re Musgrave, 431 F.2d 882, 893 (C.C.P.A. 1970).
418. See In re Meyer, 688 F.2d at 795-96.
419. 888 F.2d 835 (Fed. Cir. 1989).
420. Id. at. 836.
421. Id. at 836-37.
422. Id. at 840-41.
423. Id. at 839-40.
424. The court noted, "Given that the method of solving a mathematical equation may not be the subject of patent protection, it follows that 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." Id. at 839 (quoting In re Christensen, 478 F.2d 1392, 1394 (C.C.P.A. 1973)).
425. 958 F.2d 1053 (Fed. Cir. 1992).
426. Id. at 1054-55, 1060-61.
427. Id. at 1059.
428. Id.
429. Id.
430. 126 S. Ct. 2921, 2921 (2006) (Breyer, J., dissenting).
431. Id. at 2924.
432. Id. at 2921.
433. Id. at 2922.
434. Id. at 2921.
435. Id.
436. See id. at 2929.
437. Id. at 2922.
438. Id.
439. Id.
440. Id. at 2923 (citations omitted).
441. Id. at 2922-23 (citing WILLIAM M. LANDES & RICHARD POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 305 (2003)).
442. Id. at 2922.
443. Id. at 2926.
444. Id.
445. Id. at 2927 (stating that the invention in this case was "not at the boundary").
446. Id.
447. Id.
448. Id. at 2928.
449. If one took "tangible" literally, the standard would be consistent with Flook and Benson. In each case the result of the process was a number - an intangible thing - and the Court denied the patent. Parker v. Flook, 437 U.S. 584 (1978);
450. Gottschalk v. Benson, 409 U.S. 63 (1972).
451. In Morse, the description of the invention in the broadest, vaguest claim was less than "concrete." O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854).
452. The cases where a literal reading of "useful, concrete and tangible" actually seems inconsistent with the result are some of the very cases relying on the phrase. See, e.g., AT&T Corp. v. Excel Commc'ns, Inc., 172 F.3d 1352 (Fed. Cir. 1999);
453. State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368 (Fed. Cir. 1998).
454. Lab. Corp., 126 S. Ct. at 2928.
455. Id.
456. Diamond v. Diehr, 450 U.S. 175, 188 (1981).
457. Lab. Corp., 126 S. Ct. at 2928.
458. Id. at 2921.
459. See N. Scott Pierce, A New Day Yesterday: Benefit as the Foundation and Limit of Exclusive Rights in Patent Law, 6 J. MARSHALL REV. INTELL. PROP. L. 373, 450-51 (2007) (arguing that a diagnosis based on elevated levels of homocysteine is not a natural phenomenon but a novel technique with a specific benefit).
460. Lab. Corp., 126 S. Ct. at 2924.
461. Most states have adopted a version of the Uniform Trade Secrets Act. UNIF. TRADE SECRETS ACT (amended 1985), 14 U.L.A. 529 (2005 & Supp. 2008).
462. See id. § 1(4), 14 U.L.A. 538 (2005). The subject matter of trade secret law overlaps with the subject matter of patent law; a product formula, for example, might be protected as a trade secret or as a patented invention. It cannot be both, however, because one of the obligations of a patentee is to disclose the invention in detail through the patent specification, after which the information loses its status as a secret.
463. See id. § 1(2), 14 U.L.A. 537.
464. 54 F.3d 1262 (7th Cir. 1995).
465. Id. at 1263.
466. Id. at 1264.
467. Id. at 1272.
468. Id. at 1270.
469. 1 ROGER M. MILGRIM, MILGRIM ON TRADE SECRETS § 5.02[3][d] (2007) ("The mischief engendered by PepsiCo is hard to exaggerate.").
470. See, e.g., Whyte v. Schlage Lock Co., 125 Cal. Rptr. 2d 277, 281 (Cal. Ct. App. 2002).
471. See Wexler v. Greenberg, 160 A.2d 430, 434-35 (Pa. 1960) ("Society as a whole greatly benefits from technological improvements. Without some means of post-employment protection to assure that valuable developments or improvements are exclusively those of the employer, the businessman could not afford to subsidize research or improve current methods.").
472. See id. at 435.
473. Id.
474. See Earthweb, Inc. v. Schlack, 71 F. Supp. 2d 299, 313 (S.D.N.Y. 1999) ("Once the term of an employment agreement has expired, the general public policy favoring robust and uninhibited competition should not give way merely because a particular employer wishes to insulate himself from competition. . . . Important, too, are the powerful considerations of public policy which militate against sanctioning the loss of a man's livelihood." (citations omitted) (internal quotation marks omitted)).
475. See Whyte, 125 Cal. Rptr. 2d at 281 ("As a result of the inevitable disclosure doctrine, the employer obtains the benefit of a contractual provision it did not pay for, while the employee is bound by a court-imposed contract provision with no opportunity to negotiate terms or consideration.").
476. Earthweb, 71 F. Supp. 2d at 310 ("[T]he inevitable disclosure doctrine treads an exceedingly narrow path through judicially disfavored territory. Absent evidence of actual misappropriation by an employee, the doctrine should be applied in only the rarest of cases.").
477. 403 F.3d 1331, 1334 (Fed. Cir. 2005).
478. Id.
479. Id. at 1335.
480. Id. at 1335-36.
481. See id. at 1336.
482. The district court noted that "[I]f Apotex . . . built a new plant in Antarctica where no hemihydrate seeds had ever been and started manufacturing anhydrate there, and a depressed worker in the plant dropped a Paxil on the floor, the result might be to seed the plant and make it impossible from then on to produce pure anhydrate there." Id. at 1358 (citing SmithKline Beecham Corp. v. Apotex Corp., 247 F. Supp. 2d 1011, 1020-21 (N.D. Ill. 2003)).
483. Id. at 1342.
484. Id. at 1342-44.
485. Id. at 1358.
486. Id.
487. The meaning of the claim, however, was perfectly clear. It included only four words, each having a definite significance to chemists: "1. Crystalline paroxetine hydrochloride hemihydrate." Id. at 1349.
488. Id. at 1359 ("A paroxetine anhydrate manufacturer, such as Apotex, could exert reasonable efforts to manufacture only products already in the public domain, could direct its entire production process toward developing only products that scrupulously respected all patent rights, and could nevertheless infringe because a natural physical process acting upon its legitimate anhydrous product 'made' new hemihydrous crystals that Apotex then 'sold' to the public").
489. Id.
490. Id. at 1360.
491. Id. at 1361.
492. For an extended analysis of the problem of pollen drift in creating unwitting infringers, see Paul J. Heald & James Charles Smith, The Problem of Social Cost in a Genetically Modified Age, 58 HASTINGS L.J. 87 (2006).
493. SmithKline, 403 F.3d at 1361.
494. VI THE WRITINGS OF THOMAS JEFFERSON 180-81 (H.A. Washington ed., 1871)
495. quoted in Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 8 n.2 (1966).
496. SmithKline, 403 F.3d at 1364.
497. Id.
498. Id. at 1361.
499. Id.
500. Lab. Corp. of Am. Holdings Co. v. Metabolite Labs., Inc., 126 S. Ct. 2921, 2922-23 (2006).
501. Id.
502. See id.
503. See 6 CHISUM, supra note 245, § 19.04.
504. See, e.g., Ill. Tool Works, Inc. v. Indep. Ink, Inc., 126 S. Ct. 1281, 1292 (2006).
505. See Atari Games Corp. v. Nintendo of Am., Inc., 897 F.2d 1572, 1576 (Fed. Cir. 1990) ("[A] patent owner may not take the property right granted by a patent and use it to extend his power in the marketplace improperly, i.e., beyond the limits of what Congress intended to give in the patent laws.").
506. See Ill. Tool Works, 126 S. Ct. at 1286.
507. Lab. Corp., 126 S. Ct. at 2923.
508. See Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1526 (9th Cir. 1992).
509. See, e.g., Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 700 (2d Cir. 1992).
510. See Brenner v. Manson, 383 U.S. 519, 533 (1966) ("[O]ne of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions.").
511. 35 U.S.C. § 112(2000).
512. Id.;
513. Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999) (arguing that experimentation must not be "undue");
514. Nat'l Recovery Tech., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999) ("The enablement requirement ensures that public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.").
515. 35 U.S.C. § 112.
516. See Pfaff v. Wells Elec., Inc., 525 U.S. 55, 63 (1998) ("[T]he patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.");
517. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1209-10 (Fed. Cir. 1991) (stating that disclosure is a quid pro quo for the right to exclude others).
518. 35 U.S.C. § 271(c).
519. 448 U.S. 176 (1980).
520. Id. at 176.
521. Id.
522. Id. at 186.
523. Id. at 177.
524. Id.
525. Id. at 201.
526. See supra Part II.B.
527. See Diamond v. Diehr, 450 U.S. 175, 188 (1981).
528. See, e.g., In re Grams, 888 F.2d 835, 839 (Fed. Cir. 1989).
529. See supra Part II.C.
530. 450 U.S. at 192 n. 14.
531. See Heald & Smith, supra note 436, at 141-42.
532. See Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627, 645 (1999) ("Actions predicated on direct patent infringement ... do not require any showing of intent to infringe."); Heald & Smith, supra note 436, at 89 ("Patent law ... is based on the concept of strict liabili-ty.").
533. See SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1328, 1336 (Fed. Cir. 2005).
534. See Heald & Smith, supra note 436, at 142-46 (considering in the case of pollen drift both volenti non fit injuria and unclean hands defenses).
535. See SmithKline, 403 F.3d at 1361.
536. See generally, Heald & Smith, supra note 436.
537. An extension of a patent beyond its intended scope may be the basis of a defense of patent misuse. Some have suggested that suing farmers who, because of pollen drift, cannot avoid growing some patented crops would constitute patent misuse. See Heald & Smith, supra note 436, at 147. It would, however, seem odd to base a defense of patent "misuse" solely on making the disclosures required by the patent statutes and suing those who infringe. In the case of pollen drift, some potential infringers might be innocent and others opportunists. In the case of "knowledge drift," it would be hard to differentiate.
538. See Cynthia M. Ho, Lessons from Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 23 SANTA CLARA COMPUTER & HIGH TECH. L.J. 463, 464 (2007) ("The world of patentable subject matter may soon be subject to a seismic shift.").