The thought for the day comes from the US Supreme Court decision in Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336 (1961). In that case, the Court explained what an “invention” is in the context of 35 U.S.C. Sec. 271. Namely, it is the totality of the elements of the claim. You might ask yourself if the Federal Circuit is creating a double-standard with respect to the meaning of “invention” under 35 U.S.C. sec. 271 and under 35 U.S.C. sec. 101. Moreover, is the court backsliding to a “gist of the invention” analysis for section 101 purposes?
Under 35 U.S.C. sec. 271 as explained by Aro I a patentee must show that an infringer meets all the elements of a claim. However, under some recent decisions with respect to 35 U.S.C. sec. 101, some might argue that a judge is free to take a more leisurely approach by discounting various claim elements and attempting instead to divine the underlying idea from the patent specification.
Aro I stated:
For if anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim, and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U.S. at 320 U. S. 667; 320 U.S. at 320 U. S. 684. [Footnote 10] The basic fallacy in respondent’s position is that it requires the ascribing to one element of the patented combination the status of patented invention in itself. Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent. In Mercoid Corp. v. Mid-Continent Co., supra, the Court said:
“That result may not be obviated in the present case by calling the combustion stoker switch the ‘heart of the invention’ or the ‘advance in the art.’ The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them, when dealt with separately, is protected by the patent monopoly.”
320 U.S. at 320 U. S. 667. And in Mercoid Corp. v. Minneapolis-Honeywell Regulator Co., supra, the Court said:
“The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.”
Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336, 344-45 (1961).