In yesterday’s opinion in Medicines Co. v. Hospira, Inc., __ F.3d __ (Fed. Cir. 2016) (en banc), the Federal Circuit relied upon the Uniform Commercial Code in establishing a test for when an “offer for sale” has been made. The Supreme Court has relied upon the UCC in the past, for example, in Pfaff v. Wells Electronics. Since the unanimous Federal Circuit looked to the U.C.C. as authority in Medicines Co. v. Hospira, Inc., I wonder if litigants will begin seizing upon the U.C.C.’s definition of “goods” for 35 U.S.C. §101 purposes.
I think one argument might go as follows. If a patent claim, such as a Beauregard claim, satisfies the U.C.C.’s definition of a “good,” then the claimed subject matter is subject to the U.C.C. A good is defined by section 2-105 of the U.C.C., as follows.
(1) “Goods” means all things (including specially manufactured goods) which are movable at the time of identification to the contract for sale other than the money in which the price is to be paid, investment securities (Article 8 ) and things in action. “Goods” also includes the unborn young of animals and growing crops and other identified things attached to realty as described in the section on goods to be severed from realty (Section 2-107).
The Supreme Court has said that abstract ideas are “free to all men.”
The Court’s precedents provide three specific exceptions to § 101’s broad patent-eligibility principles: “laws of nature, physical phenomena, and abstract ideas.” Chakrabarty, supra, at 309, 100 S.Ct. 2204. While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years. See Le Roy v. Tatham, 14 How. 156, 174-175, 14 L.Ed. 367 (1853). The concepts covered by these exceptions are “part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none.” Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948).
Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010).
The U.C.C. does not state that there are any goods that are abstract ideas and thus free to all men. So, if claimed subject matter falls under the definition of good, then it must necessarily be non-abstract.
If this is not the case, then the ALI will need to revise the UCC to except those goods that are “abstract,” as any abstract good would necessarily need to be free to all people and reserved exclusively to none.
You can read the Medicines Co. v. Hospira, Inc. en banc decision here: [Read the opinion].
You can listen to the recording of the en banc oral argument here: [Listen].