Updated 9/25/16 to correct reference to “Aro I” instead of Aro II.
The Federal Circuit heard oral arguments in recent months where the “gist” or “heart” of the invention was discussed. The fact that appellants/appellees, district court judges, and Federal Circuit judges are now openly using the term “gist” and “heart” rather than euphemistic phrases such as “directed to,” “basic idea,” etc. takes on heightened interest because the Supreme Court in its Aro I case back in the 1960’s rejected characterizing claims based on a “gist” or “heart” of the invention:
[I]f 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 667;320 U. S., at 684. The basic fallacy in respondent’s position is that it requires the ascribing to one element of the patented combination 345*345 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 667.
And in Mercoid Corp. v. Minneapolis-Honeywell 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.” 320 U. S., at 684.No element, not itself separately patented, that constitutes one of the elements of a combination patent is entitled to patent monopoly, however essential it may be to the patented combination and no matter how costly or difficult replacement may be.
Aro Mfg. v. Convertible Top Replacement Co., 365 U.S. 336, 344-45 (1961).
Therefore, forcing the Supreme Court to come to terms with Aro I would be a good thing.
The two recent Federal Circuit oral arguments referenced above are: Jericho Systems Corp. v. Axiomatics and Essociate v. Clickbooth. You can listen to those oral arguments [here] and [here], respectively.
Judge Reyna happened to sit on both panels. One might gather that he rejects a “gist” or “heart” of the invention analysis from this sound bite in the Essociate oral argument. [Listen]. I’ve added this sound bite to the audio key page.