The levels of abstraction problem in patent law

Northwestern University Law Review

Volumn 105, Issue 3, 2011, Pages 1097-1152

  Chiang, Tun Jen ^a  

^a GEORGE MASON UNIVERSITY   (United States)

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EID: 79955117782     PISSN: 00293571     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (140)

1. See Universal Oil Prods. Co. v. Globe Oil & Refining Co., 322 U.S. 471, 484 (1944) ("As a reward for inventions and to encourage their disclosure, the United States offers a seventeen-year monopoly to an inventor who refrains from keeping his invention a trade secret. ").
2. See In re Nuijten, 500 F.3d 1346, 1356 (Fed. Cir. 2007) (holding that patentable products must be tangible).
3. 35 U.S.C. § 101 (2006).
4. Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874) ("An idea of itself is not patentable, but a new device by which it may be made practically useful is. ").
5. See U.S. Patent No. 223,898 (filed Nov. 4, 1879) (Edison's electric lamp patent). In fact, Edison's original lamp used carbon wire, and carbonized bamboo was itself a later improvement. See U.S. Patent No. 251,540 (filed Aug. 6, 1880).
6. See U.S. Patent No. 821,393, at col. 1 ll. 103-04 (filed Mar. 23, 1903) ("[S]pars, bows, and ribs are preferably constructed of wood.... ").
7. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998) ("The primary meaning of the word 'invention' in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea. ").
8. See, e.g., Cont'l Paper Bag Co. v. E. Paper Bag Co., 210 U.S. 405, 418-19 (1908) ("The principle of the invention is a unit, and invariably the modes of its embodiment in a concrete invention may be numerous and in appearance very different from each other. " (quoting 2 William C. Robinson, The Law of Patents for Useful Inventions § 485, at 75 (Bos., Little, Brown & Co. 1890); Winans v. Denmead, 56 U.S. (15 How.) 330, 343 (1853) ("[I]t is the duty of courts and juries to look through the form for the substance of the invention-for that which... the patent was designed to secure.... "); see also Mazer v. Stein, 347 U.S. 201, 217 (1954) (noting that copyrights protect only expression whereas patents protect the idea itself).
9. See Robin C. Feldman, The Inventor's Contribution, 2005 UCLA J.L. & Tech. 6, 24, http://www. lawtechjournal.com/articles/2005/06_051223_Feldman.pdf ("A patent holder need only identify a single use and a single embodiment for the product to receive rights to a wide range of embodiments and all uses.").
10. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002) ("What is claimed by the patent application must be the same as what is disclosed in the specification.... ").
11. See Peter D. Rosenberg, Patent Law Fundamentals 39 (1975) ("A claim is an abstraction and generalization of an indefinitely large number of concrete, physical objects. ").
12. See Robert P. Merges & Richard R. Nelson, Market Structure and Technical Advance: The Role of Patent Scope Decisions, in Antitrust, Innovation and Competitiveness 185, 198-99 (Thomas M. Jorde & David J. Teece eds., 1992) ("Wide patent scope that exceeds the enablement of the disclosure makes anyone who attempts to invent in that area beholden to the patent owner. ").
13. See Martin J. Adelman et al., Cases and Materials on Patent Law 459 (2d ed. 2003) ("If courts strictly limit the scope of patent protection to the specific examples disclosed in the specification, competitors could readily circumvent the patent through minor changes in design. ").
14. See Dan L. Burk & Mark A. Lemley, Quantum Patent Mechanics, 9 Lewis & Clark L. Rev. 29, 51 (2005) (arguing that there is no right level of abstraction in defining claims vis-à-vis accused products).
15. See, e.g., Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (Hand, J.) (describing the levels of abstraction problem in copyright law); Herman Oliphant, A Return to Stare Decisis,
16. A.B.A. J. 71 (1928) (discussing the levels of abstraction at which a case's holding can be characterized); Laurence H. Tribe & Michael C. Dorf, Levels of Generality in the Definition of Rights, 57 U. Chi. L. Rev. 1057, 1065-71 (1990) (discussing the problem of abstraction in defining rights).
17. See, e.g., Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001) ("The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose. "); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991) ("The invention is, for purposes of the 'written description' inquiry, whatever is now claimed. " (emphasis omitted).
18. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (holding that the patent scope defined by claims is a legal question); see also Jeffrey A. Lefstin, The Measure of the Doubt: Dissent, Indeterminacy, and Interpretation at the Federal Circuit, 58 Hastings L.J. 1025, 1071 tbl. X (2007) (finding that claim construction was addressed in 51% of Federal Circuit opinions relating to patents between 1998 and 2005).
19. See, e.g., James Bessen & Michael J. Meurer, Patent Failure 46-72 (2008); Gretchen Ann Bender, Uncertainty and Unpredictability in Patent Litigation: The Time Is Ripe for a Consistent Claim Construction Methodology, 8 J. Intell. Prop. L. 175, 202-17 (2001).
20. See, e.g., Craig Allen Nard, A Theory of Claim Interpretation, 14 Harv. J.L. & Tech. 1, 4 (2000) (characterizing the two schools of scholarship as "hypertextualism" and "pragmatic textualism"); Kristen Osenga, Linguistics and Patent Claim Construction, 38 Rutgers L.J. 61, 84 (2006).
21. See Giles S. Rich, Principles of Patentability, 28 Geo. Wash. L. Rev. 393, 402 (1960) ("That is one of the beauties of the patent system. The reward is measured automatically by the popularity of the contribution. ").
22. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002) ("What is claimed by the patent application must be the same as what is disclosed in the specification.... "); Bates v. Coe, 98 U.S. 31, 38 (1878).
23. Strictly speaking, the specification includes both the written description and the claims. In common parlance, however, the specification is used to refer only to the written description component of a patent, and I do so in this Article. See Craig Allen Nard, The Law of Patents 39 (2008).
24. See 35 U.S.C. § 131 (2006) (stating that "if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor" (emphasis added); Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1336 (Fed. Cir. 2010) ("The PTO lacks substantive rulemaking authority. ").
25. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1480 (Fed. Cir. 1998) (emphasis added and emphasis omitted) (quoting In re Rasmussen, 650 F.2d 1212, 1214 (C.C.P.A. 1981).
26. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc) ("An infringement analysis involves two steps. First, the court determines the scope and meaning of the patent claims asserted.... ").
27. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991) ("[T]he two standards, while complementary, approach a similar problem from different directions. " (quoting Rengo Co. v. Molins Mach. Co., 657 F.2d 535, 551 (3d Cir. 1981).
28. at 1565 (finding the claimed "invention is what the '081 drawings show").
29. Even if no physical embodiment is built, and the specification is also just a paper description, the specification description will always be considerably more detailed and concrete than the claim language.
30. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc).
31. See Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008).
32. David L. Schwartz, Courting Specialization: An Empirical Study of Claim Construction Comparing Patent Litigation Before Federal District Courts and the International Trade Commission, 50 Wm. & Mary L. Rev. 1699, 1708 (2009).
33. A claim may also describe a process with one or more required steps. See 35 U.S.C. §§ 100-101 (2006) (defining patentable inventions to include processes). The infringement inquiry with process claims is not materially different.
34. See TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1379 (Fed. Cir. 2008) ("Under the 'all elements' rule, to find infringement, the accused device must contain 'each limitation of the claim, either literally or by an equivalent.'" (quoting Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005).
35. Dan L. Burk & Mark A. Lemley, Fence Posts or Sign Posts? Rethinking Patent Claim Construction, 157 U. Pa. L. Rev. 1743, 1760 (2009) ("The process of claim construction itself presumes that the words of the claims are insufficiently precise to delineate those boundaries. The solution that claim construction offers is to substitute theoretically clearer words for the unclear words of the patent claim. "); see Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991) ("[T]he construction of claims is simply a way of elaborating the normally terse claim language: in order to understand and explain, but not to change, the scope of the claims. ").
36. See, e.g., Gen. Mills v. Hunt-Wesson, Inc., 917 F. Supp. 663, 667 (D. Minn. 1996) (noting that "proper construction of a claim can make short work of the question of infringement" because a feature of the accused product was undisputed).
37. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 989 (Fed. Cir. 1995) (en banc) (Mayer, J., concurring) ("[T]o decide what the claims mean is nearly always to decide the case. ").
38. Mark A. Lemley, The Limits of Claim Differentiation, 22 Berkeley Tech. L.J. 1389, 1390 (2007).
39. Autogiro Co. of Am. v. United States, 384 F.2d 391, 396 (Ct. Cl. 1967) ("Courts can neither broaden nor narrow the claims to give the patentee something different than what he has set forth. No matter how great the temptations of fairness or policy making, courts do not rework claims. " (footnote omitted); see Abtox, Inc. v. Exitron Corp. 122 F.3d 1019, 1023 (Fed. Cir. 1997) ("Claim interpretation is the process of giving proper meaning to the claim language.... Therefore, the language of the claim frames and ultimately resolves all issues of claim interpretation. ").
40. Thermalloy, Inc. v. Aavid Eng'g, Inc., 121 F.3d 691, 693 (Fed. Cir. 1997) ("[T]hroughout the interpretation process, the focus remains on the meaning of claim language. ").
41. Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-89 (1996) (characterizing claim construction as another instance of "construction of written instruments"); see Cimiotti Unhairing Co. v. Am. Fur Ref. Co., 198 U.S. 399, 410 (1905) (holding that courts "may not add to or detract from the claim").
42. SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc) (identifying consideration of the accused product as outside the scope of permissible claim construction).
43. See Hanoch Dagan, The Realist Conception of Law, 57 U. Toronto L.J. 607, 613 (2007) ("The indeterminacy of legal doctrine derives first and foremost from the available leeway in choosing the applicable rule rather than from the ambiguity of that rule once chosen. "); Duncan Kennedy, Form and Substance in Private Law Adjudication, 89 Harv. L. Rev. 1685, 1700 (1976).
44. Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940).
45. See, e.g., Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001) ("The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose. ").
46. 554 F.3d 1010 (Fed. Cir. 2009).
47. at 1018 (quoting Stedman's Medical Dictionary 1964 (26th ed. 1995).
48. Russell B. Hill & Frank P. Cote, Ending the Federal Circuit Crapshoot: Emphasizing Plain Meaning in Patent Claim Interpretation, 42 IDEA 1, 2 (2002) (describing judicial uncertainty); Kimberly A. Moore, Markman Eight Years Later: Is Claim Construction More Predictable?, 9 Lewis & Clark L. Rev. 231, 233, 239 (2005) (reporting a 34.5% reversal rate for claim construction). Another sign that claim construction is particularly unpredictable is that experienced district court judges appear to do no better in avoiding reversal. David L. Schwartz, Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases, 107 Mich. L. Rev. 223 (2008).
49. Jeffrey A. Lefstin, Claim Construction, Appeal, and the Predictability of Interpretive Regimes, 61 U. Miami L. Rev. 1033, 1041-42 (2007) ("[P]redictability is paramount... when participants in the patent system decide whether to invest resources in developing inventions, whether to pursue patent protection, whether to embark upon potentially infringing business ventures, or whether to initiate infringement litigation. ").
50. See Tun-Jen Chiang, Fixing Patent Boundaries, 108 Mich. L. Rev. 523, 536 (2010) (arguing that ex post determination allows patentees to game claim construction to their advantage).
51. See SRAM Corp. v. AD-II Eng'g, Inc., 465 F.3d 1351, 1359 (Fed. Cir. 2006) (holding that a court may interpret claims more broadly than the PTO).
52. See SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985).
53. Mark A. Lemley & Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev. 63, 64 (2004).
54. E.g., Patterson v. McLean Credit Union, 491 U.S. 164, 172-73 (1989).
55. Cf. William N. Eskridge, Jr., Interpreting Legislative Inaction, 87 Mich. L. Rev. 67, 98-100 (1988) (describing the structural tendency towards legislative inaction); Trevor W. Morrison, Stare Decisis in the Office of Legal Counsel, 110 Colum. L. Rev. 1448, 1481 n.134 (2010) ("[T]he fact that Congress can in theory correct the Court's statutory errors does not mean it is easy to do so as a practical matter. ").
56. See John F. Hanieski, The Airplane as an Economic Variable: Aspects of Technological Change in Aeronautics, 1903-1955, 14 Tech. & Culture 535, 543-44 (1973) (noting that the Wright brothers' twelve-horsepower engine was first used in flight in December 1903).
57. See Kevin Emerson Collins, Enabling After-Arising Technology, 34 J. Corp. L. 1083, 1086 (2009) (distinguishing prior art doctrines that scope over pre-filing knowledge from enablement and written description, which limit scope "prospectively").
58. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1371-72 (Fed. Cir. 2008) ("Our case law allows for after-arising technology to be captured within the literal scope of valid claims that are drafted broadly enough. ").
59. See, e.g., The Incandescent Lamp Patent, 159 U.S. 465, 472-74 (1895) (finding Sawyer and Man's patent invalid due to its failure to teach Edison's later-developed bamboo filament); Auto. Techs. Int'l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1284 (Fed. Cir. 2007) (finding invalidity due to failure to teach later-developed electronic sensor).
60. Of course, if no working embodiment is disclosed, everyone can agree that the patent is invalid because it has no utility. See Brenner v. Manson, 383 U.S. 519, 535 (1966).
61. See Lizardtech, Inc. v. Earth Res. Mapping, Inc., 433 F.3d 1373, 1376 (Fed. Cir. 2006) (Rader, J., dissenting from denial of rehearing en banc) ("[A]n issue common to many patent disputes [is] claims that are broader than the disclosed embodiments. ").
62. Such a claim would fail the PTO's procedural requirements for claim form. Ex parte Fressola, 27 U.S.P.Q.2d 1608, 1612 (B.P.A.I. 1993). However, these procedural requirements have never been judicially endorsed. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 n.4 (1997) (stating that the PTO's modern claiming practice "is not of statutory origin" and abandonment of prior forms "may be overstated").
63. Emerson Stringham, Double Patenting 209 (1933) ("This primitive confusion of 'invention' in the sense of physical embodiment with 'invention' in the sense of definition of the patentable... survives to the present day, not only in the courts, but among some examiners in the Patent Office. ").
64. See, e.g., Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 922, n.5 (Fed. Cir. 2004) ("[W]hile the role of the claims is to give public notice of the subject matter that is protected, the role of the specification is to teach, both what the invention is (written description) and how to make and use it (enablement). "); SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121, n.14 (Fed. Cir. 1985) (en banc) ("Specifications teach. Claims claim. ").
65. Howard T. Markey, Why Not the Statute?, 65 J. Pat. Off. Soc'y 331, 333 (1983) ("Ideas are never patentable. Only an embodiment of an idea, i.e., an invention, may be patented. ").
66. Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 552 (1870).
67. See In re Comiskey, 554 F.3d 967, 978 (Fed. Cir. 2009) (holding that a process is only patentable if it "is embodied in, operates on, transforms, or otherwise involves" a product); In re Nuijten, 500 F.3d 1346, 1356 (Fed. Cir. 2007) (holding that tangibility is required for products to be patentable). But cf. Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010) (plurality opinion) ("The machine-ortransformation test may well provide a sufficient basis for evaluating... inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. ").
68. See, e.g., Winans v. Denmead, 56 U.S. (15 How.) 330, 343 (1853) ("[I]t is the duty of courts and juries to look through the form for the substance of the invention-for that which entitled the inventor to his patent, and which the patent was designed to secure.... " (emphasis added).
69. Gill v. United States, 160 U.S. 426, 434 (1896) ("In every case the idea conceived is the invention. "); see Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998) ("The primary meaning of the word 'invention' in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea. "); see also Mazer v. Stein, 347 U.S. 201, 217 (1954) ("Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea-not the idea itself. ").
70. See In re Comiskey, 554 F.3d at 979 (holding that a pure mental process is not patentable); Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1354 (Fed. Cir. 2005) (holding that a claim to an "aesthetically pleasing" appearance was invalid because it was impossible to objectively determine infringement); see also Kevin Emerson Collins, Constructive Nonvolition in Patent Law and the Problem of Insufficient Thought Control, 2007 Wis. L. Rev. 759, 799 (arguing for a "constructive nonvolition" defense to infringement by mental processes).
71. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002) ("What is claimed by the patent application must be the same as what is disclosed in the specification.... ").
72. Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 552 (1870).
73. 35 U.S.C. § 101 (2006).
74. 35 U.S.C. § 112.
75. Giles S. Rich, The Relation Between Patent Practices and the Anti-Monopoly Laws-Part II, 24 J. Pat. Off. Soc'y 159, 171 (1942).
76. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998); see Gill v. United States, 160 U.S. 426, 434 (1896) ("In every case the idea conceived is the invention. ").
77. See John F. Duffy, Rules and Standards on the Forefront of Patentability, 51 Wm. & Mary L. Rev. 609, 645 (2009) (arguing that "abstraction is the very antithesis of the precision required by the disclosure provisions of the Patent Act").
78. 35 U.S.C. § 101.
79. 35 U.S.C. § 112.
80. See generally Ronald D. Slusky, Invention Analysis and Claiming: A Patent Lawyer's Guide 5 (2007) ("[A]n invention is an abstraction. ").
81. Stringham, at 209 ("In patent law there is no possibility of clear thinking until it is understood that an 'invention' as protected... is an abstraction, an idea of means. ").
82. See Introduction.
83. See 35 U.S.C. §§ 101-103 (requiring novelty, usefulness, and nonobviousness).
84. Cf. Karl N. Llewellyn, Remarks on the Theory of Appellate Decision and the Rules or Canons About How Statutes Are to Be Construed, 3 Vand. L. Rev. 395, 401-06 (1950) (arguing that, because the canons of statutory construction contradict each other, decisions are made according to "[t]he good sense of the situation").
85. Cf. Kenneth W. Dam, The Economic Underpinnings of Patent Law, 23 J. Legal Stud. 247, 261 (1974) (stating that to classify the denial of a patent as an extreme form of scope reduction would be a "semantic trick").
86. See Merrill v. Yeomans, 94 U.S. 568, 573 (1876) (reasoning that there is "no excuse for ambiguous language or vague descriptions"); In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) ("An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible.... "). Of course, all else is not always equal, and perfect clarity might entail excessive transaction costs. Doug Lichtman, Substitutes for the Doctrine of Equivalents: A Response to Meurer and Nard, 93 Geo. L.J. 2013, 2016 (2005) (arguing that drafting perfect claims is too difficult).
87. Kinetic Concepts, 554 F.3d at 1019.
88. See Christopher A. Cotropia, Patent Claim Interpretation Methodologies and Their Claim Scope Paradigms, 47 Wm. & Mary L. Rev. 49, 105-09 (2005) (discussing the scope effect of using the specification to interpret claims).
89. Cf. Phillips v. AWH Corp., 376 F.3d 1382, 1383 (Fed. Cir. 2004) (en banc) (order granting rehearing en banc to determine whether the public notice function of patent claims [is] better served by referencing primarily to technical and general purpose dictionaries and similar sources to interpret a claim term or by looking primarily to the patentee's use of the term in the specification").
90. Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1378-80 (Fed. Cir. 2007).
91. See Part II.A.
92. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930).
93. Jacob Grimm & Wilhelm Grimm, Schneewittchen (Snow White), in The Grimms' German Folk Tales 192 (Francis P. Magoun, Jr. & Alexander H. Krappe trans., 1960).
94. Nichols, 45 F.2d at 121.
95. See Burk & Lemley, at 35; Joshua D. Sarnoff, Abolishing the Doctrine of Equivalents and Claiming the Future After Festo, 19 Berkeley Tech. L.J. 1157, 1160 (2004); Richard H. Stern, Scope-of-Protection Problems with Patents and Copyrights on Methods of Doing Business, 10 Fordham Intell. Prop. Media & Ent. L.J. 105, 110 (1999).
96. Nichols, 45 F.2d at 121; see also Peter Lee, The Evolution of Intellectual Infrastructure, 83 Wash. L. Rev. 39, 68 n.155 (2008) ("[A]n invention, if subjected to a 'great number of patterns of increasing generality,' could be conceptualized as a combination of scientific principles and mechanical forces. " (quoting Nichols, 45 F.2d at 121).
97. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607 (1950).
98. One response might be that X-radiation is what is novel about the machine. The point is that beyond the requirements of novelty, usefulness, and nonobviousness, there remains an infinite spectrum of abstractions. A machine that cures AIDS using any other type of radiation would still be new, useful, and nonobvious.
99. See Royal Typewriter Co. v. Remington Rand, Inc., 168 F.2d 691, 693-94 (2d Cir. 1948) (Hand, J.) (applying a similar analysis in a patent case and concluding that permissible abstraction is "always a question of degree, and courts have differed, and always will differ, as to the allowable latitude in a given instance").
100. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d. Cir. 1960) ("Obviously, no principle can be stated as to when an imitator has gone beyond copying the 'idea,' and has borrowed its 'expression.' Decisions must therefore inevitably be ad hoc. "). See generally Amy B. Cohen, Copyright Law and the Myth of Objectivity: The Idea-Expression Dichotomy and the Inevitability of Artistic Value Judgments, 66 Ind. L.J. 175 (1990) (arguing that copyright law lacks any objective basis to determine the proper level of abstraction and that artistic value judgments are inevitable).
101. See Burk & Lemley, at 52-54; see also Alfred C. Yen, A First Amendment Perspective on the Idea/Expression Dichotomy and Copyright in a Work's "Total Concept and Feel, " 38 Emory L.J. 393, 405 (1989) (contending that "the Nichols opinion never stated any principle which tells the court where to draw the line between idea and expression").
102. Jane C. Ginsburg, No "Sweat"? Copyright and Other Protection of Works of Information After Feist v. Rural Telephone, 92 Colum. L. Rev. 338, 346 (1992).
103. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971); see also Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 696 (2d Cir. 1992) (creating an "abstractionfiltration-comparison" approach based on "the necessary balance between creative incentive and industrial competition").
104. Alan L. Durham, Copyright and Information Theory: Toward an Alternative Model of "Authorship, " 2004 B.Y.U. L. Rev. 69, 96-97.
105. 35 U.S.C. § 131 (2006).
106. Paul Klemperer, How Broad Should the Scope of Patent Protection Be?, 21 RAND J. Econ. 113, 113-14 (1990).
107. See, e.g., Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607 (1950) ("[C]ourts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. "); Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1071 (Fed. Cir. 2005).
108. John W. Schlicher, Patent Law: Legal and Economic Principles § 5:36 (2d ed. 2006).
109. See Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 Va. L. Rev. 1575, 1615 (2003) (arguing that optimal rules will vary by industry).
110. See Richard Gilbert & Carl Shapiro, Optimal Patent Length and Breadth, 21 RAND J. Econ. 106, 108-11 (1990); Kitch, at 285-86 (arguing for broader patents to pioneers that allow them to direct subsequent development in an orderly manner); Klemperer, at 116-19; Merges & Nelson, at 198-99 (arguing for narrower scope since "[w]ide patent scope that exceeds the enablement of the disclosure makes anyone who attempts to invent in that area beholden to the patent owner").
111. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971).
112. Nash v. CBS, Inc., 899 F.2d 1537, 1540 (7th Cir. 1990); see also Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983) ("[T]he line must be a pragmatic one. ").
113. See generally Justin Kruger & David Dunning, Unskilled and Unaware of It: How Difficulties in Recognizing One's Own Incompetence Lead to Inflated Self-Assessments, 77 J. Personality & Soc. Psychol. 1121 (1999). As Socrates observed, the wise know what they do not know. See Plato, The Apology of Socrates 39-40 (D.F. Nevill trans., 1901) (c. 399 B.C.E.).
114. For example, one persistent problem in criminal law is disagreement about the underlying normative goals: is the goal of criminal law to deter, to punish, or to rehabilitate? Even with perfect information, judges will disagree about the optimal criminal sentence because they are seeking to achieve different normative ends. See George P. Fletcher, The Nature and Function of Criminal Theory, 88 Calif. L. Rev. 687, 689 (2000) ("The field of criminal theory should be thought of more as a humanist inquiry than as a social science. The questions that concern us are not empirical. ").
115. Yochai Benkler, Siren Songs and Amish Children: Autonomy, Information, and Law, 76 N.Y.U. L. Rev. 23, 59 (2001); F. Scott Kieff, Property Rights and Property Rules for Commercializing Inven tions, 85 Minn. L. Rev. 697, 697-98 (2001); see Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480-81 (1974) ("The stated objective of the Constitution... is to 'promote the Progress of Science and useful Arts.' The patent laws... have a positive effect on society... by way of increased employment and better lives for our citizens. "); Graham v. John Deere Co., 383 U.S. 1, 5-6 (1966) ("Congress in the exercise of the patent power may not... enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. ").
116. Dennis Crouch, The Patent Lottery: Exploiting Behavioral Economics for the Common Good, 16 Geo. Mason L. Rev. 141, 149-50 (2008).
117. See Tun-Jen Chiang, The Rules and Standards of Patentable Subject Matter, 2010 Wis. L. Rev. 1353 (arguing that patent law has, and should have, this type of layered analysis).
118. See generally Isaac Ehrlich & Richard A. Posner, An Economic Analysis of Legal Rulemaking, 3 J. Legal Stud. 257, 257-58 (1974) ("discuss[ing] the conditions under which greater specificity or greater generality is the efficient choice" in legal rulemaking); Duncan Kennedy, Form and Substance in Private Law Adjudication, 89 Harv. L. Rev. 1685 (1976); Pierre Schlag, Rules and Standards, 33 UCLA L. Rev. 379 (1985).
119. Oskar Liivak, Rethinking the Concept of Exclusion in Patent Law, 98 Geo. L.J. 1643 (2010) (suggesting that patents be limited to copying); Samson Vermont, Independent Invention as a Defense to Patent Infringement, 105 Mich. L. Rev. 475 (2006) (arguing that patent scope should be limited to copies and derivative works).
120. See Jeanne C. Fromer, The Layers of Obviousness in Patent Law, 22 Harv. J.L. & Tech. 75, 77 (2008) (arguing that the patent system aims to "offer an incentive to create those inventions deemed to be beneficial to society that otherwise would not exist").
121. Mark A. Lemley, Should Patent Infringement Require Proof of Copying?, 105 Mich. L. Rev. 1525, 1532-35 (2007) (suggesting a modified willfulness test and prior user rights).
122. The discretion is currently vested in the courts rather than the PTO, as the determination of patent scope is largely a legal question. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-91 (1996) (holding that claim construction is a legal issue for judges); In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991) ("Enablement, like obviousness, is a question of law which we independently review.... ").
123. See Matthew D. Henry & John L. Turner, The Court of Appeals for the Federal Circuit's Impact on Patent Litigation, 35 J. Legal. Stud. 85, 113 (2006) (arguing that a stronger presumption of validity caused more focus to be placed on the infringement inquiry).
124. See Jeanne C. Fromer, Claiming Intellectual Property, 76 U. Chi. L. Rev. 719, 731-35 (2009) (describing the history of claiming).
125. This freestanding discretion has been cabined somewhat after Warner-Jenkinson Co. v. Hilton Davis Chemical Co., which required analysis of substantial similarity to follow the structure of a claim even if not its literal language. 520 U.S. 17, 29 (1997).
126. Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 569 (1898) (describing the reverse doctrine of equivalents).
127. Janice M. Mueller, The Evolving Application of the Written Description Requirement to Biotechnological Inventions, 13 Berkeley Tech. L.J. 615, 620-23 (1998) (describing the operation of written description to prevent retroactive changes).
128. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560 (Fed. Cir. 1991) ("[T]he 'written description' requirement most often comes into play where claims not presented in the application when filed are presented thereafter. ").
129. Robert P. Merges, Software and Patent Scope: A Report from the Middle Innings, 85 Tex. L. Rev. 1627, 1653-54 (2007) (describing the problem of "misappropriation by amendment").
130. Restatement (Second) of Torts § 431 (1965).
131. See, e.g., Restatement (Third) of Torts: Liability for Physical Injury §§ 26-36 (2005) (Proposed Final Draft No. 1) (distinguishing between "factual cause" and "scope of liability (proximate cause)").
132. In addition to the problems with the enablement and written description doctrines, the other doctrines suffer from their own shortcomings. Patentable subject matter tests exclude products of nature and other prohibited categories, regardless of abstraction. Funk Bros. Seed Co. v. Kalo Inoculant Co.,
133. U.S. 127, 130 (1948). Thus, a single moon rock specified down to its last atom is not patentable even though it is not abstract. Failure to claim under 35 U.S.C. § 112 paragraph 2 is primarily directed to insolubly vague claims like claims to "aesthetically pleasing" objects. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1345-46 (Fed. Cir. 2005). Vagueness and undue abstraction are distinct problems and should not be confused. See text accompanying.
134. See In re Mayhew, 527 F.2d 1229, 1235 (C.C.P.A. 1976) (Baldwin, J., concurring) ("Beginning in 1970, we departed from a vast line of authority which permitted the PTO to reject claims... for 'undue breadth.' Up to that time, examiners quite frequently determined what they felt the invention was and rejected all claims which were broader than their conception of the invention.... ").
135. In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983); In re Borkowski, 422 F.2d 904, 908-10 (C.C.P.A. 1970).
136. Jeffrey A. Lefstin, The Constitution of Patent Law: The Court of Customs and Patent Appeals and the Shape of the Federal Circuit's Jurisprudence, 43 Loy. L.A. L. Rev. 843, 858 (2010). Notwithstanding their formalist rhetoric, the CCPA judges could be very pragmatic when they perceived important policy issues at stake. ("[CCPA Judge Giles Rich] was enough of a pragmatist to rely on common law development when he sought to implement a particular policy, notwithstanding the lack of a foundation in the statutory text. ").
137. In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988).
138. See In re Cook, 439 F.2d 730, 734 (C.C.P.A. 1971) (creating "a dichotomy between predictable and unpredictable factors in any art" when analyzing enablement).
139. See Sean B. Seymore, Heightened Enablement in the Unpredictable Arts, 56 UCLA L. Rev. 127, 136-38 (2008) (contrasting "the predictable arts" of the applied sciences with the "the unpredictable arts" of the experimental sciences).
140. I concede that this is an imprecise statement because we can, of course, imagine a truly revolutionary table that would require huge investments to design.