Archive for July, 2016

Supreme Court patent case of the week: Carver v. Hyde

Saturday, July 30th, 2016

The Supreme Court “patent case of the week” for this week is Carver v. Hyde, 41 U.S. 513 (1842). Readers of this case will find it interesting for several reasons.  First, the language used by the Court sounds very similar to modern day Doctrine of Equivalents cases.  Second, from a functional claiming perspective, it includes a statement that one cannot patent a desired result: “Now the end to be accomplished is not the subject of a patent. The invention consists in the new and useful means of obtaining it.” Carver v. Hyde, 41 U.S. 513, 519 (1842).  Third, the patent was written in a problem-solution format.  And, fourth, to some degree the Court looked to the advantages and object of the invention stated in the specification.  The Court also looked to the “summing” section of the patent; but, that summing section is the modern day equivalent of the”claims” section.

The Carver v. Hyde case, along with other authority, was later cited by the Court for the proposition that the end or purpose sought to be accomplished is not the subject of a patent.  Rather, an invention is the new and useful means of obtaining that end:

The use and purpose sought to be accomplished by the Hall patent was the radial expansion of the dress form, but it is well settled by the authorities that the end or purpose sought to be accomplished by the device is not the subject of a patent. The invention covered thereby must consist of new and useful means of obtaining that end. In other words, the subject of a patent is the device or mechanical means by which the desired 228*228 result is to be secured. Carver v. Hyde, 16 Pet. 513, 519; LeRoy v. Tatham, 14 How. 156; Corning v. Burden, 15 How. 252; Barr v. Duryee, 1 Wall. 531; Fuller v. Yentzer, 94 U.S. 288.

Knapp v. Morss, 150 U.S. 221, 227-28  (1893).

It is interesting to contrast that statement from Knapp v. Morss with modern day subject matter eligibility analyses, where courts characterize detailed claim language as being “directed to” abstract ideas.  For example, one could imagine that a modern day subject matter eligibility analysis would begin by characterizing the Knapp v. Morss claim as being directed to “radial expansion of a dress form”– exactly what the Knapp v. Morss court instructed was not the invention in that case.

You can read Carver v. Hyde below:

41 U.S. 513 (____)16 Pet. 513


Supreme Court of United States.

The case was submitted to the Court, on printed arguments, by Dexter, for the plaintiff in error; and by Messrs. Fletcher and Phillips, for the defendants.

Mr. Chief Justice TANEY delivered the opinion of the Court.

This case is brought here by writ of error, directed to the Circuit Court of the United States for the district of Massachusetts. It is an action by the plaintiff in error against the defendants, to recover damages for the infringement of a patent right, obtained by the plaintiff on the 16th of November, 1839. The patent is in the usual form, and the questions before us depend upon the construction of the specification, which is in the following words,

“Be it known, that I, Eleazer Carver, of Bridgewater, in the county of Plymouth, and state of Massachusetts, have invented a certain improvement in the manner of forming the ribs of sawgins, for the ginning of cotton; and I do hereby declare that the following is a full and exact description thereof.

“In the cotton-gin, as heretofore known and used, the fibres of the cotton are drawn by the teeth of circular saws, through 514*514 a grating formed of a number of parallel bars, or ribs, having spaces between them sufficient to allow the saws to pass, carrying the fibres of the cotton with them, (which are then brushed off by a revolving brush,) but not wide enough to let the seeds, and other foreign substances, pass through. Above the saws the ribs come in close contract, thus forming a shoulder at the top of the space between them. Various forms have been given to the bars or ribs, with a view to procure a free passage of the cotton; but the cotton-gin, as heretofore made, has been always subject to the inconvenience of the grate becoming choked by hard masses of cotton and motes, or false seeds, collecting in the upper part of the spaces between the ribs, and impeding the action of the saws, and also preventing the mass of cotton which is drawn by the saws up to the top of the spaces, but not drawn through them, from rolling back freely, so as to pass again over the saws, as it should do.

“My improvement, which I am about to describe, is intended to obviate these difficulties; and it consists in giving a new form to the ribs composing the grate. Instead of making the ribs of a bar of iron of equal thickness throughout, so that the upper and under surfaces shall be parallel, I so form the rib, that at the part where the saws pass through, carrying the cotton with them, the space, or depth between the upper and outer surface, and the lower, or inner surface, shall be grater than the thickness of the rib in other parts has heretofore been, or needs to be, and so great as to be equal to the length of the fibre of the cotton to be ginned, so that the fibre shall be kept extended between the ribs for about its full length, while it is drawn through them by the saws. This mill, of course, requires, either that the rib should be as thick at that part as the length of the fibre, or that the rib should be forked, or divided, about that part, so that the upper, or outer surface, and the under, or inner surface, shall diverge to that distance of each other, instead of being parallel as formerly, when the rib was made of one bar of uniform thickness. This under, or inner surface, then takes a new direction upwards, and slopes towards the upper, or outer surface, until the two surfaces meet above the periphery of the saw. This last described part of the under surface is fastened against the framework of the gin. The operation of this improvement is, that those fibres of 515*515 the cotton which are so firmly caught by the teeth of the saws as to be disengaged from the mass of the cotton to be ginned, are drawn out to their full length, and pass clear through the grate, and are then brushed off by the revolving brush, while the fibres that are drawn into the grate, but not caught by the teeth of the saws firmly enough to be carried quite through, are disengaged, and pass up to where the under surface meets the upper surface, above the saws, and finding no obstruction there, pass back out of the grate without choking it, and roll down again with the mass of unginned cotton, and are caught below by the saws, and carried up again, and so on until all the fibres are drawn through.”

The specification then proceeds to describe the invention more particularly, by referring to and explaining the drawings annexed to it, showing the advantages of his improvement, the manner of arranging the ribs in the gin, and the mode of inserting and fastening them in the framework. This description could not be comprehended without an exact drawing; nor is it necessary, in order to understand the questions of law in dispute between the parties. It is therefore omitted. After giving this description, the specification states the improvement, of which the patentee claims to be the inventor, as follows.



Monday, July 25th, 2016

Oral arguments debating the meaning of the claim limitation “real-time” are always interesting.  Here’s a recent one: [Emblaze Ltd. v. Apple, Inc.].

You can read the court’s Rule 36 Judgment here: [Link].

Post-Prosecution Pilot (P3) Program

Friday, July 15th, 2016

Here is a link to the Federal Register Notice for the USPTO’s new Post-Prosection Pilot (P3) Program [Link].

Here is a link to the USPTO page [Link].

USPTO Issues New §101 Memo in Response to CellzDirect

Thursday, July 14th, 2016

The USPTO posted a new memorandum to its patent subject matter eligibility page today in regard to the Federal Circuit’s recent CellzDirect case.

The memo is available [HERE].

What impact should the UCC as authority have on patent eligible subject matter?

Tuesday, July 12th, 2016

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].

Forty-four Percent of All Financial Expert Reports Excluded

Friday, July 1st, 2016

I was listening to a recording of a recent Federal Circuit oral argument where one of the advocates mentioned that a PWC study reports that forty-four percent of all financial expert reports are excluded under Daubert.  Quite an interesting statistic.  PWC notes:

  • 44% of financial experts were excluded in 2015. This is consistent with the 16-year average.
  • Across the 16-year timespan, the most common reason for financial expert exclusions has been lack of reliability. Exclusion rates have been highest in intellectual property and product liability cases.
  • Testimony “based on sufficient facts or data” is a common stumbling block for financial experts and is the most frequent reason for reliability exclusions.
  • In 2015, accountants faced the highest number of challenges and experienced the highest exclusion rate.
  • In a majority of cases (78%), appellate courts agree with lower court Daubert rulings on financial experts.

Here’s a link to the PWC study: [Link].