No. 15-1182
`
`
`
`SEQUENOM, INC.,
`
`In the Supreme Court of the United States
`
`V.
`
`ARIOSA DIAGNOSTICS, INC., ET AL,
`
`Petitioner,
`
`Respondents
`
`
`On Petition for Certiorari
`To The United States Court Of Appeals
`For The Federal Circuit
`
`BRIEF FOR AMICI CURIAE
`ELI LILLY AND COMPANY, EISAI INC.,
`UPSHER-SMITH LABORATORIES, INC.,
`PFIZER INC., AND ETIOMETRY, INC.
`IN SUPPORT OF PETITIONER
`
`
`
`Steven P. Caltrider
`James J. Kelley
`Lilly Corporate Center
`Eli Lilly and Company
`Indianapolis, IN 46285
`
`Robert A. Armitage
` Counsel of Record
`320 Seaview Court
`Marco Island, FL 34145
`raarmitage@aol.com
`(703) 801-6334
`
`April 1, 2016
`
`
`
`
`
`
`
`
`
`
`
`

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`- i -
`
`QUESTION PRESENTED
`The Patent Act contains a set of statutory pa-
`tentability requirements. In addition to these statu-
`tory requirements, the Court has imposed a non-
`statutory “implicit exception” to patentability. This
`implicit exception was judicially imposed in part to
`assure that patents cannot be granted for concepts—
`or afford exclusive rights that may dominate or oth-
`erwise preempt access to concepts. Concepts, in this
`sense, refer to laws of nature, natural phenomena, or
`ideas, including abstract ideas. The implicit excep-
`tion similarly bars patents directed or relating to
`natural products and entirely mental processes.
`The Court has applied the implicit exception as
`part of a “threshold test” for patentability that oper-
`ates before other patentability requirements may be
`considered. The exception, however, does no more
`than duplicate the statute’s effects when statutory
`provisions would also invalidate the same patent.
`As a threshold test, it has not taken account of
`the manner in which today’s statutory requirements
`have evolved to fully address any policy justification
`for maintaining the exception. When other patent-
`limiting laws fully vindicate the policies that under-
`lie the implicit exception, judicial restraint might
`demand outright abrogation of the exception.
`Given the current explicit statutory limitations on
`patenting in the Patent Act—and the proper interpre-
`tation of those limitations—should the Court’s judi-
`cially imposed implicit exception to subject matter
`considered to be eligible for patenting be abrogated,
`such that patentability and patent validity are to be
`determined solely under such explicit statutory provi-
`sions?
`
`
`
`
`
`

`
`- ii -
`
`TABLE OF CONTENTS
`
`
`QUESTION PRESENTED ......................................... i 
`TABLE OF CONTENTS ............................................ ii 
`TABLE OF AUTHORITIES ..................................... iv 
`I. 
`INTEREST OF AMICI CURIAE ...................... 1 
`II.  SUMMARY OF THE ARGUMENT ................... 1 
`III.  ARGUMENT ...................................................... 3 
`A.  Explicit Statutory Patentability
`Requirements Prevent Valid Patents
`From Protecting A Law Of Nature,
`Natural Phenomenon, Or Abstract Idea. .... 7 
`1.  35 U.S.C. § 101 Requires That
`Valid Patent Claims Must Be
`Limited To Applications—In The
`Form Of Physical Embodiments—
`Of Any Concept To Which A
`Patented Invention Relates. .................. 7 
`2.  35 U.S.C. §§ 103 and 112(a) Limit
`Valid Patent Claims To Inventive
`And Useful Applications Of Any
`Related Concept. .................................. 10 
`B.  Explicit Statutory Provisions Negate
`Drafting Techniques That Might
`Produce Valid Patent Claims
`Dominating A Law, Phenomenon, Or
`Idea. ............................................................ 11 
`1.  The 35 U.S.C. § 112(a) “Written
`Description” Requirement
`Invalidates Patent Claims When
`
`
`
`
`
`

`
`- iii -
`
`The Patent’s Disclosure Fails To
`Sufficiently Describe What The
`Claimed Invention Is Rather
`Than What It Does. ............................. 13 
`2.  35 U.S.C. § 112(f), Interpreted In
`A Manner Consistent With
`Halliburton v. Walker, Limits The
`Protection Available For
`Combination Claims To
`Structures, Materials, Or Acts
`Disclosed In The Patent. ..................... 16 
`C.  Patents Should Be Confined to Non-
`Conceptual Subject Matter Through
`Tying The “Mental Step” Doctrine To
`35 U.S.C. § 112(f). ...................................... 18 
`D.  Under The Statutory Novelty
`Requirement, Valid Patent Claims
`Cannot Cover Or Otherwise Preclude
`Access To Any Naturally-Occurring
`Subject Matter. .......................................... 21 
`E.  The Court Should Abrogate The
`“Implicit Exception” In Deference to the
`Explicit Statutory Framework .................. 23 
`IV.  CONCLUSION ................................................. 24 
`
`
`
`
`
`

`
`- iv -
`
`TABLE OF AUTHORITIES
`
`
`Cases 
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) .............................. 4, 5, 9, 12
`
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) ....... 14, 15
`
`Ass’n for Molecular Pathology v. Myriad Genetics,
`Inc.,
`133 S. Ct. 2107 (2013) ............................................ 3
`
`Bilski v. Kappos,
`561 U.S. 593 (2010) .................................... 5, 18, 19
`
`Biomedino, LLC v. Waters Techs. Corp.,
`490 F.3d 946 (Fed. Cir. 2007), cert. denied,
`552 U.S. 1039 (2007) ............................................ 21
`
`Brenner v. Manson,
`383 U.S. 519 (1966) .............................................. 10
`
`Cochrane v. Deener,
`94 U.S. 780 (1877) ............................................ 8, 19
`
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) ............................. 20
`
`Diamond v. Diehr,
`450 U.S. 175 (1981) .............................................. 19
`
`
`
`
`
`

`
`- v -
`
`Gottschalk v. Benson,
`409 U.S. 63 (1972) .................................................. 3
`
`Halliburton Oil Well Cementing Co. v. Walker,
`329 U.S. 1 (1946) ................................. 16, 17, 19, 20
`
`Hotchkiss v. Greenwood,
`52 U.S. 248 (1851) ................................................ 10
`
`In re Fisher,
`421 F.3d 1365 (Fed. Cir. 2005) ............................. 11
`
`In re Slayter,
`276 F.2d 408 (C.C.P.A. 1960) ............................... 22
`
`Lewmar Marine, Inc. v. Barient, Inc.,
`827 F.2d 744 (Fed. Cir. 1987), cert. denied,
`484 U.S. 1007 (1988) ............................................ 21
`
`LizardTech, Inc. v. Earth Res. Mapping, Inc.,
`424 F.3d 1336 (Fed. Cir. 2005),
`reh’g en banc denied, 433 F.3d 1373
`(Fed. Cir. 2006) ..................................................... 14
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) ................................... passim
`
`O’Reilly v. Morse,
`56 U.S. 62 (1854) ...................................... 13, 14, 16
`
`Peters v. Active Mfg. Co.,
`129 U.S. 530 (1889) .............................................. 21
`
`
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`

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`- vi -
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc),
`cert. denied, 546 U.S. 1170 (2006) ....................... 17
`
`Regents of the Univ. of Cal. v. Eli Lilly & Co.,
`119 F.3d 1559 (Fed. Cir. 1997), cert. denied,
`523 U.S. 1089 (1998) ............................................ 14
`
`Schering Corp. v. Geneva Pharms., Inc.,
`339 F.3d 1373 (Fed. Cir. 2003),
`reh’g en banc denied, 348 F.3d 992 (Fed. Cir. 2003)
` ............................................................................... 22
`
`Tilghman v. Proctor,
`102 U.S. 707 (1881) ................................................ 8
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) (en banc) ............. 17
`
`Statutes 
`35 U.S.C. § 100(b) ....................................................... 8
`
`35 U.S.C. § 101 .................................................. passim
`
`35 U.S.C. § 102 .................................................. passim
`
`35 U.S.C. § 112(a) .............................................. passim
`
`35 U.S.C. § 112(b) ................................................. 2, 21
`
`35 U.S.C. § 112(f) .............................................. passim
`
`
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`

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`- vii -
`
`Patent Act of 1793, Ch. 11, 1 Stat. 318-323
`(February 21, 1793) ............................................ 7, 8
`
`Patent Act of 1952, Ch. 950, 66 Stat. 792
`(July 19, 1952) ............................................... passim
`
`Other Authorities 
`Anthony S. Volpe & Jonathan Lombardo, “U.S.
`Supreme Court’s ‘Alice’ Decision Opens a Rabbit
`Hole,” Intellectual Property, THE LEGAL
`INTELLIGENCER (Online) (Dec. 3, 2014), available
`at https://advance.lexis.com/ .................................. 4
`
`Bernard Chao, “USPTO Is Rejecting Potentially Life-
`Saving Inventions,” LAW360 (Dec. 18, 2014),
`available at
`http://www.law360.com/articles/604808/uspto-is-
`rejecting-potentially-life-saving-inventions .......... 3
`
`Brief of Amicus Curiae Paul Gilbert Cole, Ariosa
`Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371
`(Fed. Cir. 2015) (Nos. 2014-1139 and 2014-1144) . 3
`
`Julia Angwin, “‘Business Method’ Patents Create
`Growing Controversy,” THE WALL STREET JOURNAL
`(Oct. 3, 2000), available at
`http://www.wsj.com/articles/SB9705296731849225
`7 ............................................................................. 18
`
`P.J. Federico, Commentary on the New Patent Act,
`75 J. PAT. & TRADEMARK OFF. SOC’Y 161 (1993) .. 14
`
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`

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`- viii -
`
`Steven Seidenberg, “New Laws of Nature Law:
`Ruling Questions Scientific Patents,” ABA
`JOURNAL (Jul. 1, 2012), available at
`http://www.abajournal.com/magazine/article/new_l
`aws_of_nature_law_ruling_questions_scientific_pa
`tents/ ....................................................................... 4
`
`
`
`
`
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`

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`- 1 -
`
`I. INTEREST OF AMICI CURIAE 1
`Amici curiae Eli Lilly and Company, Eisai, Inc.,
`Upsher-Smith Laboratories, Inc., Pfizer Inc, and Eti-
`ometry, Inc. (“Amici”) have a strong interest that
`U.S. patent laws be interpreted to protect innovation
`to the fullest possible extent, consistent with the rig-
`orous conditions and requirements for patenting
`Congress has legislated. Amici have grave concerns
`that invalidating patent claims that clearly meet in-
`ternational norms for patent-eligible subject matter,
`as the appellate court did below, profoundly under-
`mines the core function of the patent system to pro-
`vide reliable incentives to translate inventions and
`discoveries into innovations—products and services
`that can be of great benefit to humanity.
`Amici have no financial interest in the parties to
`this litigation or in the outcome of this specific case.
`
`II. SUMMARY OF THE ARGUMENT
`The Patent Act contains a set of statutory pa-
`tentability requirements limiting the subject matter
`that valid patent claims can protect. In addition to
`these explicit requirements set out in the statute,
`the Court has imposed a non-statutory “implicit ex-
`ception” to subject matter that can be validly patent-
`
`1 This brief was not authored, in whole or in part, by counsel
`for any party. No person or entity other than Amici curiae,
`their members, and their counsel made a monetary contribu-
`tion to the preparation or submission of this brief. Counsel of
`record for each of the parties received timely notice of the in-
`tent to file this brief. Each party filed a blanket consent for all
`amicus briefs.
`
`
`
`
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`

`
`- 2 -
`
`ed. The implicit exception was imposed to assure
`that patents cannot validly protect—or preempt ac-
`cess to—laws of nature, natural phenomena, or ab-
`stract ideas.
`The implicit exception operates as part of a
`“threshold test” for patentability that is to be applied
`before consideration is given to other patentability
`requirements. Whenever so applied, it precludes
`consideration of the explicit statutory requirements
`that might also have invalidated the same patent
`claims and it fails to account for the manner in
`which today’s statutory requirements fully address
`any policy justification for maintaining the implicit
`exception. If this exception operates today to accom-
`plish nothing more than to invalidate patent claims
`that are otherwise invalid under the explicit statuto-
`ry criteria, then judicial restraint may dictate that
`the implicit exception be abrogated because no justi-
`fication for it would remain.
`Today, explicit statutory provisions of the con-
`temporary Patent Act found in 35 U.S.C. §§ 101, 102,
`103, 112(a), 112(b), and 112(f) serve to preclude se-
`curing a valid patent on the same subject matter
`that the policy justification for the implicit exception
`sought to bar from patenting. Therefore, the Court
`should now consider abrogating the implicit excep-
`tion in deference to the explicit patentability re-
`quirements that Congress imposed.
`
`
`
`
`
`
`
`
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`

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`- 3 -
`
`III. ARGUMENT
`The Court has long applied an implicit exception
`to patent eligibility, irrespective of whether a patent
`for an invention would be valid under the statutory
`requirements for patentability.2 Recent decisions
`implementing this jurisprudence have come under
`harsh criticism.3 The most pointed criticism of the
`Court’s implicit exception is that the Court’s recent
`jurisprudence has expanded the reach of the excep-
`tion such that today it applies to invalidate U.S. pa-
`tents that would be clearly eligible for patenting un-
`der international norms.4
`
`2 “The Court has long held that [35 U.S.C. § 101] contains an
`important implicit exception. ‘[L]aws of nature, natural phe-
`nomena, and abstract ideas’ are not patentable.” Mayo Collab-
`orative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
`(2012) (alteration in original). See also Gottschalk v. Benson,
`409 U.S. 63, 67 (1972) (“[M]ental processes, and abstract intel-
`lectual concepts are not patentable, as they are the basic tools
`of scientific and technological work.”) and Ass’n for Molecular
`Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2111 (2013)
`(“[W]e hold that a naturally occurring DNA segment is a prod-
`uct of nature and not patent eligible.”).
`3 See, e.g., Bernard Chao, “USPTO Is Rejecting Potentially
`Life-Saving Inventions,” LAW360 (Dec. 18, 2014), available at
`http://www.law360.com/articles/604808/uspto-is-rejecting-
`potentially-life-saving-inventions (discussing the consequences
`of recent Supreme Court patent-eligibility decisions).
`4 See, e.g., Brief of Amicus Curiae Paul Gilbert Cole, Ariosa
`Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir.
`2015) (Nos. 2014-1139 and 2014-1144) at 10 (discussing the
`Federal Circuit panel’s decision: “This case is an example of an
`internationally discordant, not harmonious, result, contrary to
`the eligibility requirements of TRIPS Article 27. Eligibility of
`the corresponding European patent was never disputed and it
`was held unobvious for solving the technical problem of detect-
`
`
`
`
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`

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`- 4 -
`
`Other criticisms of the Court’s recent jurispru-
`dence have centered on the mechanics of the analy-
`sis that the Court has established for determining if
`a claimed invention in a patent is to be rendered in-
`valid because it is directed to a law of nature, natu-
`ral phenomenon, or abstract idea.5 The current
`analysis consists of two steps. First, it requires a
`distillation of the claimed invention to establish
`whether the claim to the invention is based upon an
`underlying concept and, if so, whether the claim
`adds significantly more to the concept—namely some
`“inventive concept”—to qualify the invention for pa-
`tenting.6 While its generalized nature serves to
`blunt patent drafting techniques that otherwise
`
`
`ing fetal nucleic acid with higher sensitivity, see EPO Appeal
`decision T 0146/07 Prenatal diagnosis/ISIS. It is wrong that a
`patent that survived obviousness challenge in Europe should be
`held ineligible in the U.S.”).
`5 See, e.g., Steven Seidenberg, “New Laws of Nature Law: Rul-
`ing Questions Scientific Patents,” ABA JOURNAL (Jul. 1, 2012),
`available
`at
`http://www.abajournal.com/magazine/article/new_laws_of_natu
`re_law_ruling_questions_scientific_patents/ and Anthony S.
`Volpe & Jonathan Lombardo, “U.S. Supreme Court’s ‘Alice’ De-
`cision Opens a Rabbit Hole,” Intellectual Property, THE LEGAL
`INTELLIGENCER
`(Online)
`(Dec. 3, 2014), available at
`https://advance.lexis.com/.
`6 “We have described step two of [the implicit exception] anal-
`ysis as a search for an ‘“inventive concept”’ — i.e., an element
`or combination of elements that is ‘sufficient to ensure that the
`patent in practice amounts to significantly more than a patent
`upon the [ineligible concept] itself.’” Alice Corp. Pty. Ltd. v. CLS
`Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (alterations in original)
`(quoting Mayo, 132 S. Ct. at 1294).
`
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`- 5 -
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`might circumvent a bar to patents dominating con-
`cepts,7 the result is a bar to patenting that is poten-
`tially wide ranging—since nearly all inventions have
`associated ideas upon which they are based.
`The Court’s analytical framework is intended to
`operate as a surrogate for the broader policy ques-
`tion of whether a patent claim is so conceptual that
`rights under the patent might dominate or otherwise
`preempt access to a law or product of nature, a natu-
`ral phenomenon, or an abstract idea.8 The Court has
`expressed concerns that the assertion of such a pa-
`tent claim, by impairing access to basic tools of sci-
`ence and technology, could impede, rather than pro-
`mote, progress in the useful arts.9
`Like many surrogate tests, it risks overreaching
`its policy objectives. This risk is magnified when the
`implicit exception is applied as a “threshold test.”10
`Not knowing if one or more of the remaining statuto-
`ry patentability requirements would invalidate a pa-
`tent claim, the tendency is to stretch the threshold
`
`7 “A claim that recites an abstract idea must include ‘addi-
`tional features’ to ensure ‘that the [claim] is more than a draft-
`ing effort designed to monopolize the [abstract idea].’” Alice,
`134 S. Ct. at 2357 (alternations in original) (quoting Mayo, 132
`S. Ct. at 1297).
`8 “[T]he Court’s precedents . . . warn us against upholding pa-
`tents that claim processes that too broadly preempt the use of a
`natural law.” Mayo, 132 S. Ct. at 1294.
`9 “[M]onopolization of [the basic tools of scientific and techno-
`logical work] through the grant of a patent might tend to im-
`pede innovation more than it would tend to promote it.” Id. at
`1293.
`10 Bilski v. Kappos, 561 U.S. 593, 602 (2010).
`
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`- 6 -
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`test’s application to assure a potentially problematic
`claim is invalidated—lest such a claim might other-
`wise survive as valid under the explicit statutory re-
`quirements. Moreover, in applying such a non-
`statutory limitation as a threshold consideration, it
`inherently operates without considering whether or
`how the present, explicit statutory framework, taken
`as a whole, may operate to routinely invalidate con-
`ceptual patent claims.
`Indeed, while the Court’s jurisprudence assumes
`some overlap between the implicit exception and the
`statutory doctrines limiting patents, the Court has
`never considered whether the proper interpretation
`of the current statutory requirements, considered to-
`gether rather than piecemeal, would fully address
`the policy considerations that caused the Court to
`mandate the non-statutory implicit exception.11 As
`detailed below, the explicit statutory requirements
`now present in the Patent Act, when properly inter-
`preted and applied, bar securing valid patents that
`might prevent access to a law or product of nature,
`natural phenomenon, or abstract idea. For these
`reasons, it is now essential as an exercise of judicial
`restraint for the Court to consider whether to abro-
`gate the implicit exception in deference to the pre-
`sent explicit statutory scheme.
`
`
`11 “[T]he § 101 patent eligibility inquiry and, say, the § 102
`novelty inquiry might sometimes overlap. But that need not
`always be so. And to shift the patent eligibility inquiry entirely
`to these later sections risks creating significantly greater legal
`uncertainty, while assuming that those sections can do work
`that they are not equipped to do.” Mayo, 132 S. Ct. at 1304.
`
`
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`

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`- 7 -
`
`A. Explicit Statutory Patentability Re-
`quirements Prevent Valid Patents From
`Protecting A Law Of Nature, Natural
`Phenomenon, Or Abstract Idea.
`1. 35 U.S.C. § 101 Requires That
`Valid Patent Claims Must Be
`Limited To Applications—In The
`Form Of Physical Embodi-
`ments—Of Any Concept To
`Which A Patented Invention Re-
`lates.
`The Patent Act bars patentability of an invention
`not claimed as an application of any concept to
`which the invention relates because valid patent
`claims must be expressed in terms of the physical
`embodiments of the invention. Thus, the Patent Act
`by itself leaves no possibility for a valid patent claim
`to be directed to a law, phenomenon, or idea as such.
`The foregoing limitations on patenting arise under
`explicit provisions in 35 U.S.C. § 101.
`Section 101 requires that a valid claim must be
`drafted in terms of a “process, machine, manufac-
`ture, or composition of matter” or an improvement
`thereto.12 The statutory limitation on patenting to
`these four categories has remained essentially un-
`changed since the 1793 Patent Act, when Congress
`provided that patents would be available only for
`“any new and useful art, machine, manufacture or
`composition of matter, or any new and useful im-
`
`
`12 Patent Act of 1952, Ch. 950, 66 Stat. 792 (July 19, 1952);
`35 U.S.C. § 101.
`
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`- 8 -
`
`provement on any art, machine, manufacture or
`composition of matter . . . .”13
`When the words “machine, manufacture, or com-
`position of matter” were used by Congress in the
`1793 Patent Act, there can be no doubt that they ref-
`erenced physical things. Moreover, to the extent an
`invention might be based upon an idea or other con-
`cept, the machines, manufactures, or compositions of
`matter were the things that physically embodied
`such concepts.
`The same is the case for an “art” or “process.” As
`applied to patenting, the earliest definition of the
`statutory term “process” offered in a decision of the
`Court set out a like notion of physicality—“[a] pro-
`cess is a mode of treatment of certain materials to
`produce a given result. It is an act, or a series of acts,
`performed upon the subject-matter to be trans-
`formed and reduced to a different state or thing.”14
`The act or acts constituting a “process” under the pa-
`tent law were, thus, of a like physical nature to the
`other statutory categories.”15 To perform a process
`
`13 Patent Act of 1793, Ch. 11, 1 Stat. 318-323 (February 21,
`1793). 35 U.S.C. § 101 employs the term “process” in place of
`the word “art.” (“In the language of the patent law, [a process]
`is an art.” Cochrane v. Deener, 94 U.S. 780, 788 (1877);
`35 U.S.C. § 100(b) of the 1952 Patent Act defines the term “pro-
`cess” to mean “process, art, or method.”)
`14 Cochrane v. Deener, 94 U.S. at 788 (emphasis added).
`15 “The process requires that certain things should be done
`with certain substances, and in a certain order . . . .” Id.; see
`also Tilghman v. Proctor, 102 U.S. 707, 728 (1881) (stating that
`“[a] machine is a thing. A process is an act, or a mode of acting.
`The one is visible to the eye, — an object of perpetual observa-
`tion. The other is a conception of the mind, seen only by its ef-
`
`
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`- 9 -
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`under the patent laws means carrying out one or
`more acts that are the physical embodiment(s) of any
`idea or concept to which a process invention relates.
`These four statutory categories, by forcing valid
`patent claims to be expressed in terms of the appli-
`cations that physically embody an invention, repre-
`sent subject matter that is mutually exclusive with
`respect to mere concepts—such as laws, phenomena,
`and ideas. Therefore, the § 101 requirement that
`claims be directed to a statutory category excludes
`any possibility for securing a valid patent for an as-
`sociated concept rather than for its embodiments.
`In sum, the patent statute explicitly limits pa-
`tenting to physical embodiments, things and act-
`based processes that can only ever be applications of
`any related concept and can never be the concept it-
`self. No reliance on an “implicit exception” is neces-
`sary to prevent patents from covering concepts per
`se.
`The application requirement in § 101 is, however,
`merely one of several statutory provisions of the Pa-
`tent Act that operate together for “distinguishing pa-
`tents that claim laws of nature, natural phenomena,
`and abstract ideas from those that claim patent-
`eligible applications of those concepts.”16 And, it is
`through these other requirements that the statute
`assures valid patent claims further distinguish be-
`tween an invention’s concept and the patentable ap-
`plications of such concepts—by confining valid pa-
`tent claims to inventive, practically useful applica-
`
`fects when being executed or performed.” (emphasis added)).
`16 Alice, 134 S. Ct. at 2355.
`
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`

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`- 10 -
`
`tions of any related concept.
`2. 35 U.S.C. §§ 103 and 112(a) Limit
`Valid Patent Claims To In-
`ventive And Useful Applications
`Of Any Related Concept.
`In Hotchkiss v. Greenwood, the Court held that
`the patent laws contained an implicit requirement
`that valid patent claims must be sufficiently in-
`ventive, in addition to meeting the then-existing
`statutory
`requirements.17
`
`In
`enacting
`35 U.S.C. § 103 as part of the 1952 Patent Act, Con-
`gress superseded this implicit requirement with an
`explicit statutory requirement for non-obviousness; a
`valid patent cannot be granted if “the claimed inven-
`tion as a whole would have been obvious.”18
`In Brenner v. Manson, the Court interpreted the
`§ 101 statutory requirement that a patented inven-
`tion be “useful.”19 The Court addressed “whether the
`practical utility . . . is an essential element in estab-
`lishing a prima facie case for the patentability” of a
`claimed invention by holding that “substantial utili-
`ty” was required for which “specific benefit exists in
`currently available form.”20 The Federal Circuit has
`consistently applied the Court’s holding, further
`clarifying that the required practical and substantial
`utility must be fully enabled based upon the patent
`
`
`17 Hotchkiss v. Greenwood, 52 U.S. 248, 267 (1851).
`18 35 U.S.C. § 103.
`19 Brenner v. Manson, 383 U.S. 519, 534 (1966).
`20 Id. at 520, 534-535 (1966).
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`disclosure, i.e., under 35 U.S.C. § 112(a).21
`The contemporary statutory requirements under
`§ 101, § 103 and § 112(a) together operate to limit
`valid patent claims to inventive and practically use-
`ful applications of any law, phenomenon, or idea to
`which a claimed invention relates. Thus, as de-
`manded by this Court’s most recent “implicit excep-
`tion” precedents, patent claims meeting these explic-
`it validity requirements under the patent statute
`must be limited to subject matter that represents
`“significantly more” than any concept on which the
`invention is based.
`While these various statutory provisions address
`whether valid patent claims can literally cover a law,
`phenomenon or idea, they do not necessarily fore-
`close resort to patent drafting techniques that might
`be used to craft valid patent claims preempting ac-
`cess to such concepts. Other statutory requirements
`under the contemporary patent statute do, however,
`bar an inventor from securing a valid patent claim
`that has been drafted as nothing more than an at-
`tempt to preempt access to a stated law, phenomena,
`or other idea.
`B. Explicit Statutory Provisions Negate
`Drafting Techniques That Might Produce
`Valid Patent Claims Dominating A Law,
`Phenomenon, Or Idea.
`As noted above, the Court’s most recent jurispru-
`dence makes clear that the prohibition against a val-
`id patent dominating or otherwise preempting access
`
`21 See In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005).
`
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`for a law, phenomenon, or idea should not be evaded
`by patent drafting techniques.22 Its justification
`rests in part on a drafting-related concern, i.e., that
`“transformation [of an abstract idea] into a patent-
`eligible application requires
`‘more than simply
`stat[ing] the [abstract idea] while adding the words
`‘apply it.’”23
`The Patent Act of 1952 contains two provisions
`that, if properly interpreted and applied, fully negate
`the potential effectiveness of such drafting tech-
`niques: § 112(a)24 and § 112(f).25
`
`
`22 The Court has observed that a mechanism is needed that is
`able to “provide practical assurance that the [claimed inven-
`tion] is more than a drafting effort designed to monopolize the
`law of nature itself.” Mayo, 132 S. Ct. at 1297; see also Alice,
`134 S. Ct. at 2358-359 (warning against making “the determi-
`nation of patent eligibility depend simply on the draftsman’s
`art.”) (internal quotation marks omitted).
`23 Alice, 134 S. Ct. at 2357 (alterations in original) (quoting
`Mayo, 132 S. Ct. at 1294).
`24 “The specification shall contain a written description of the
`invention.” 35 U.S.C. § 112(a).
`25 “An element in a claim for a combination may be expressed
`as a means or step for performing a specified function without
`the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding struc-
`ture, material, or acts described in the specification and equiva-
`lents thereof.” 35 U.S.C. § 112(f).
`
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`1. The 35 U.S.C. § 112(a) “Written
`Description” Requirement Inval-
`idates Patent Claims When The
`Patent’s Disclosure Fails To Suf-
`ficiently Describe What The
`Claimed Invention Is Rather
`Than What It Does.
`In O’Reilly v. Morse,26 the Court invalidated the
`eighth claim of the Morse patent. The invalidated
`claim had defined the Morse invention as the appli-
`cation of a natural phenomenon, specifically, “the
`use of the motive power of . . . electro-magnetism,
`however developed, for marking or printing intelligi-
`ble characters, signs, or letters, at any distances.”27
`The patent failed to further identify what the inven-
`tion was. The Court held such a claim could not pos-
`sibly be valid under the statutory test requiring a
`sufficient description.28
`Under the 1952 Patent Act, the requirement for
`such a sufficient description of a patented invention
`appears in § 112(a). It is commonly called the “writ-
`ten description” requirement. The Federal Circuit’s
`interpretation of the contemporary “written descrip-
`tion” requirement aligns with O’Reilly v. Morse.
`Federal Circuit precedents require that the physical
`embodiments of each claimed invention or each ele-
`
`26 O’Reilly v. Morse, 56 U.S. 62 (1854).
`27 Id. at 112.
`28 Id. at 120 (stating “[a]nd if [the eighth claim] stands, it must
`stand simply on the ground that the broad terms above-
`mentioned were a sufficient description . . . . In our judgment
`the act of Congress cannot be so construed.”).
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`ment or other limitation29 must be identified other
`than in conceptual terms, i.e., other than in terms of
`the function that the invention or element or other
`limitation of the invention performs.30 As in O’Reilly
`v. Morse, Federal Circuit precedents, such as Ariad
`v. Lilly, dictate that a valid patent claim cannot en-
`compass all applications for performing a described
`
`