Patent Eligibility: The Historical Cases

By: Robert R. Sachs

There are three 19th century cases that form part of the canon of Supreme Court caselaw on patent eligibility: Le Roy v. Tatham, 55 U.S. 156 (1852), O'Reilly v. Morse, 15 How. 62 (1853) and Tilghman v. Proctor, 102 U.S. 707 (1880).

Le Roy v. Tatham

I'll begin our historical tour with Le Roy v. Tatham, which is cited and quoted in just about every recent Supreme Court and Federal Circuit decision for nothing more than this singular statement: "A principle, in the abstract, is a fundamental truth; an original cause; a motive; and these cannot be patented, as no one can claim in either of them an exclusive right." Given the ubiquity with which Le Roy is cited, one can be forgiven for believing that this case was indeed about whether a 'principle,' etc. was patent-eligible. It is not.

In this case, Tatham, the assignee of Charles Hanson's process patent for joining lead pipes charged Le Roy with infringement. The patent's claim was thus:

What we do claim as our invention and desire to secure is the combination of the following parts above described, to-wit, the core and bridge or guide piece, with the cylinder, the piston, the chamber and the die, when used to form pipes of metal under heat and pressure in the manner set forth or in any other manner substantially the same.

Le Roy urged that the patent was invalid in view of the prior art and under what would be today § 101. They requested these jury instructions:

Proposition VI. That the state of the lead, when used as described in the plaintiffs' specification, being a principle of nature, is not the subject of a patent, either alone or in combination with the machine mentioned in that specification.

Proposition VII. That the using of a metal in a certain state, or at a certain temperature, alone or in combination with a machine, was not the subject of a patent.

The trial court essentially refused these instructions, and Le Roy noted its objection.The patent was held valid and infringed, and Le Roy appealed. However, instead of addressing the issue of whether the claim recited a patent on a principle, the Court took a much narrower approach. The Court expressly stated that it was not considering the issue of patentable subject matter: "The newly discovered principle, to-wit, that lead could be forced by extreme pressure, when in a set or solid state, to cohere and form a pipe was not in the patent, and the question whether it was or was not the subject of a patent was not in the case." (55 U.S. at 177, emphasis added). The Court's refusal to address the question is interesting because Le Roy squarely put the question in the case by taking exception to the trial court's refusal of the jury instruction.

Instead, the Court focused on the issue of novelty. The Court first construed the claim as to require the combination of the machine parts recited for the particular purpose: "The patentees claimed the combination of the machinery as their invention in part, and no such claim can be sustained without establishing its novelty — not as to the parts of which it is composed, but as to the combination." From here, the Court ruled that the trial court erred in its jury instruction:

That the originality did not consist in the novelty of the machinery, but in bringing a newly discovered principle into practical application by which an useful article of manufacture is produced, and wrought pipe made, as distinguished from cast pipe.

That is, the Court held that the jury should have considered whether "combination of the following parts above described, to-wit, the core and bridge or guide piece, with the cylinder, the piston, the chamber and the die" were novel. In short, the Court ruled on the narrow issue—novelty—rather than on the question of patent eligibility. This alone demonstrates that from the earliest, the Court did not consider patent eligibility a "threshold" or "gateway" question that must be addressed prior to any other validity or infringement issues.

Now what makes this case even more interesting is Justice Nelson (joined by two others) in dissent argued that the Court too narrowly read the claim. "They suppose that the patentees have claimed only the combination of the different parts of the machinery described in their specification, and therefore, are tied down to the maintenance of that as the novelty of their invention. I have endeavored to show that this is a mistaken interpretation." 55 U.S. 189. Nelson asserted that the invention was not limited the particular mechanical combination:

[We] see that the leading feature of the invention consists in the discovery of a new property in the article of lead and in the employment and adaptation of it, by means of the machinery described, to the production of a new article, wrought pipe, never before successfully made. Without the discovery of this new property in the metal, the machinery or apparatus would be useless, and not the subject of a patent. 55 U.S. 180

I cannot but think that the thing really discovered, and intended to be described, and claimed by these patentees cannot well be mistaken. That they did not suppose the novelty of their invention consisted simply in the arrangement of the machinery described, is manifest. They state distinctly that the leading feature of their discovery consisted of this new property of lead and some of its alloys—this, they say, is the remarkable feature of their invention—and the apparatus described is regarded by them as subordinate. 55 U.S. 181.

Given this broader reading of the claim, Nelson then asks the big question: "Then is this the proper subject matter of a patent?" The dissent reviews a series of older U.S. and English cases—including the Neilson v. Harford case much adored by the current Supreme Court—and comes to precisely the opposite conclusion of the current Court:

I shall not pursue a reference to one authorities on this subject any further. The settled doctrine to be deduced from them, I think, is that a person having discovered the application for the first time of a well known law of nature or well known property of matter by means of which a new result in the arts or in manufactures is produced and has pointed out a mode by which it is produced is entitled to a patent, and if he has not tied himself down in the specification to the particular mode described, he is entitled to be protected against all modes by which the same result is produced by an application of the same law of nature or property of matter. And a fortiori if he has discovered the law of nature or property of matter and applied it is he entitled to the patent and aforesaid protection. 55 U.S. 187-188.

Nelson ultimately concludes then, that the broader claim, for the "newly discovered principle" was indeed eligible for patent and would have upheld the judgment below.

Now let's put the icing on this cake. Recall that Le Roy gets cited for the statement "A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented." But that sentence follows right after a very cautionary statement: "The word "principle" is used by elementary writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application as to mislead." 55 U.S. 174 (emphasis added). Thus, the citation to Le Roy by the current courts as somehow supporting a holding of the patent ineligibility of a merely applied "principle" is a perfect example of a statement taken out of its syntactic, factual and jurisprudential context. It is the purest form of dicta.

Let's start keeping score, with respect to whether these cases support the current § 101 propositions:

O'Reilly v. Morse

Let's move on to O'Reilly v. Morse. This is another case which is often quoted and completely misunderstood, and the larger lesson—which claims were found valid—is utterly ignored. O'Reilly is typically cited for the sawhorse that "Laws of nature, natural phenomena and abstract ideas are not patentable," and, as the Supreme Court tells us in Prometheus, it supposedly cautions against preemption by "warn[ing] us against upholding patents that claim processes that too broadly preempt the use of a natural law." Alas, these statements are entirely out of context.

First, in O'Reilly, Morse' patent asserted eight different claims, and only one of them was held invalid by the Court:

[T]the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances.

The very first thing the Court did was consider the language of the claim itself, not some "plain English" gloss: "It is impossible to misunderstand the extent of this claim. He claims the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing intelligible characters, signs, or letters at a distance." 56 U.S. 112.

The Court then addresses the validity of the claim, and it is unmistakably on the grounds that we today would consider a lack of enablement, not patent eligibility:

And if he can secure the exclusive use by his present patent, he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery upon the records of the patent office.…In fine, he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law. 56 U.S. at 113 (emphasis added).

Whoever discovers that a certain useful result will be produced in any art, machine, manufacture, or composition of matter by the use of certain means is entitled to a patent for it, provided he specifies the means he uses in a manner so full and exact that anyone skilled in the science to which it appertains can, by using the means he specifies, without any addition to or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more.…Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification further than to say that he had discovered that by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside of it, and the patentee claims beyond it. 56 U.S. at 119 (emphasis added).

Now in this case there is no description but one of a process by which signs or letters may be printed at a distance. And yet he claims the exclusive right to any other mode and any other process, although not described by him, by which the end can be accomplished if electro-magnetism is used as the motive power. That is to say he claims a patent for an effect produced by the use of electro-magnetism distinct, from the process or machinery necessary to produce it. The words of the acts of Congress above quoted show that no patent can lawfully issue upon such a claim. For he claims what he has not described in the manner required by law. And a patent for such a claim is as strongly forbidden by the act of Congress as if some other person had invented it before him. 56 U.S. at 120 (emphasis added).

To those of us who draft patents day in and day out, these statements are unequivocally about enablement, not about whether Morse's claim was to a law of nature or an abstract idea. That the Court said that the claim was too "broad" is not to be mistaken as concluding that it was an abstract idea. It is a statement that it was too broad relative to what was "described." The context shows that the Court was considering whether Morse did in fact describe or discover the mechanisms to achieve the desired printing of intelligible characters at a distance—not whether the invention was some "abstract idea." Thus, deciding patent eligibility was not a gateway consideration for this Court.

Further evidence that the Court was considering enablement and not eligibility is found in a very sophisticated argument based on Morse's later patent. The Court notes that in 1846, six years after the 1840 patent in suit, Morse patented a "local circuit" for the telegraph, where "the electric or galvanic current was the motive power, and writing at a distance the effect." The Court notes:

[b]ut if his eighth claim could be sustained, this improvement would be embraced by his first patent. And if it was so embraced, his patent for the local circuits would be illegal and void. For he could not take out a subsequent patent for a portion of his first invention, and thereby extend his monopoly beyond the period limited by law. 56 U.S. 114.

That is, if Morse's original patent claim was valid, then the 1840 patent specification would have covered the local circuits described in the 1846 patent, and that later patent would be invalid as essentially double patenting. Again, no issue here about abstractness or laws of nature. These are purely concerns about the scope of disclosure and enablement.

Finally, nowhere in the Court's analysis of invalidity is there any discussion that could be remotely construed as testing whether any part of the claim recites "routine, conventional, well understood" activities of the relevant community, the most recent eligibility criteria announced by the Supreme Court in Prometheus.

Now this was all very easy to show and makes immediately suspect any reliance on O'Reilly for the "laws of nature, etc." mantra. But again, like Le Roy, what makes this case a real showstopper for the current Court's § 101 theory are the claims that its predecessor Court found valid. Consider this claim:

I specially claim as my invention and improvement is making use of the motive power of magnetism, when developed by the action of such current or currents substantially as set forth in the foregoing description of the first principal part of my invention, as means of operating or giving motion to machinery which may be used to imprint signals upon paper or other suitable material or to produce sounds in any desired manner for the purpose of telegraphic communication at any distances.

I'll take this claim! Under Prometheus, "motive power of magnetism, when developed by the action of such current or currents" is the law of nature, and "making use… as means of operating or giving motion to machinery which may be used to imprint signals" is simply "applying" it. Yet, the O'Reilly Court was not concerned. "But," you counter, "this is a 'means for' claim and so really narrow." Fine. Then I'll take this claim:

Sixth. I also claim as my invention the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, substantially as herein set forth and illustrated, in combination with machinery for recording them, as signals for telegraphic purposes. 56 U.S. 86.

That's right: Morse was the first to patent a purely symbolic language used with the 19th century equivalent of a "general purpose computing device," e.g., a recording machine. Stunning. Under Benson-Flook-Bilski, "dots and spaces" etc. are "conventional" ways of communicating and clearly abstract ideas. The machinery for recording them is simply post-solution, and "for telegraphic purposes" is merely an irrelevant field of use limitation, which the Court expressly rejects: "Flook established that limiting an abstract idea to one field of use or adding token post-solution components did not make the concept patentable." Bilski 561 U.S. 2010 (op. cit. at 15). According to Mayer, such as general claim would preempt "social and commercial interaction," but the Supreme Court here was not concerned.

Let's update the score:

Tilghman v. Proctor

It's especially instructive at this time to consider another misunderstood case, Tilghman v. Proctor. Tilghman's invention was directed to a process for separating fatty acids into their constituent chemical components. The issue before the Court was whether Tilghman's claim for the process per se, not limited by any apparatus, could be sustained. The Court found that it could.

We'll compare Tilghman's valid claim to Morse's invalid one:

The color coding here is as follows: a result obtained by a generic mode of operation.

It is clear that Tilghman's claim is structurally identical to Morse's claim: both broadly recite a desired result achieved by a generically stated mode of operation. If Morse's claim was struck down for being an abstract idea—as it is now commonly asserted—then Tilghman's should have been as well.

So what saved Tilghman? In a word: enablement. The Court quotes extensively from Tilghman's specification, showing the particular details of various embodiments. The Court then discusses O'Reilly and specifically quotes the selection above from 56 U.S. 119 regarding the need for the patentee to "specif[y] the means he uses in a manner so full and exact that any one skilled in the science to which it appertains can, by using the means he specifies, without any addition to or subtraction from them, produce precisely the result he describes." In short, the Court distinguished Tilghman not by whether his claim was less abstract than Morse's but by the quality of his patent disclosure.

The Court then makes an observation which should be heeded today: "It seems to us that this clear and exact summary of the law affords the key to almost every case that can arise." Thus, instead of putting forth a rule that patent eligibility is supervenient, this Court is saying that most every case at the margin can be resolved based on enablement. Judicial economy at its best.

Further, this Court has nothing like Prometheus' concern about merely applying a "law of nature." Certainly, by 1854 when Tilghman applied a stream of hot water to a "fatty body," it was known in most kitchens to use hot water to rinse grease off of cooking pans and racks; it was "well understood, routine, conventional activity previously engaged in" by cooks and housewives (but apparently not Supreme Court jurists). And certainly, while the chemistry underlying this process may not have been known, it necessarily occurred as a result of the chemical composition of fatty bodies reacting to water (i.e., it was a law of nature applied). And if not a law of nature in action, it was arguably a "natural phenomena." But none of these questions were of concern to the Court.

Nor was the Court in any way concerned with preemption. Certainly, the process claimed was to be essential in a "vast swath" of industrial and manufacturing enterprises (not to mention cooking). The Court was aware of the commercial significance: "The stearic and margaric acids form a whitish, semi-transparent, hard substance, resembling spermaceti, which is manufactured into candles. They are separated from the oleic acid, which is a thin oily fluid, by hydrostatic or other powerful pressure, the oleine being used for manufacturing soap and other purposes. The base, glycerine, when purified, has come to be quite a desirable article for many uses." Thus, this would seem to have been a perfect case for the court to invoke patent ineligibility to prevent Tilghman from a "monopoly" on a "basic tool" of science and commerce.

One of the more interesting aspects of the Tilghman decision is how scientifically detailed and nuanced it is. The Court details at length the chemistry involved—"two different processes for effecting a decomposition of fats into their component elements had been in practical operation prior to his invention. These processes were called respectively the alkaline saponification process and the sulphuric acid distillation process…"—and gives a fine-grained summary of the historical developments of the science in this area, discussing prior inventions and patents by scientists in France, England and the U.S. It's fair to say that Tilghman's Court familiarity with the primary sciences was central to the correct outcome. A solid understanding of the subject matter that comes before the Supreme Court today remains fundamental to a scientifically valid development of the patent law.

Finally, contrary to Mayer, the Court was perfectly aware that the claimed process used "conventional" mechanisms to perform the method, but again this was not a problem: "But it is evident, and indeed is expressly announced, that the process claimed does not have reference to this particular device, for the apparatus described was well known, being similar to that used for producing the hot blast and for heating water for the purpose of warming houses." What Tilghman did was to repurpose an existing mechanism to perform a different operation for a desired end—no different in kind from the programming of an existing general purpose computer by software to perform a desired function. The Court did not evaluate the claim by its result, but instead by the scope of its terms, as described.

Time to tally the score again:

In summary, a detailed analysis of some of the most widely cited Supreme Court cases demonstrates that they do not stand for the "conventional" Normativist view of Mayer and the Supreme Court, but quite the opposite. They support a more restrained and limited approach to patent eligibility, one that does not imbue the analysis with a normative overlay of what "ought" to be patentable—there is never a mention of "human ingenuity" or contribution or significance in any of these decisions—but instead relies on more discrete and focused analysis of what is claimed.

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.