Save the Funk Brothers!
With the recent advent of cases exploring the scope of patentable subject matter under 35 USC Sec. 101, an old, potentially forgotten Supreme Court case has received some glorious attention. Unfortunately, its exposure to the limelight has not been very flattering.
Funk Brothers Seed Co. v. Kalo Inoculant Co. is oft-cited by opponents of a very broad scope of patentable subject matter because it has a great money quote:
The qualities [of the invention at issue] are the work of nature. Those qualities are, of course, not patentable. For patents cannot issue for the discovery of the phenomena of nature. (333 U.S. 130) (emphasis added)
Yesterday’s decision in Association for Molecular Pathology v. USPTO (the Myriad case), striking down patents claiming isolated DNA sequences, cited to exactly this phrase. (See Myriad at 109). Briefs in the Bilski v. Kappos case (among others) did the same.
Unfortunately, reliance on this quote as a holding against a broad scope of patentable subject matter goes to the heart of a problem that the Federal Circuit has dubbed the “cite bite”: “the great one liner – often without regard to whether the cited or quoted case has a holding that supports the position of the advocate.” (See extended comments by Hal Wegner here, ppg. 49-51).
Citing to Funk Bros. for its alleged holding regarding patentable subject matter is a classic cite bite because the Funk Bros. court was actually addressing the question of whether the claims at issue recited an “invention or discovery” under 35 USC 31:
Petitioner filed a counterclaim asking for a declaratory judgment that the entire patent be adjudged invalid. The District Court held the product claims invalid for want of invention, and dismissed the complaint. It also dismissed the counterclaim. Both parties appealed. The Circuit Court of Appeals reversed, holding that the product claims were valid and infringed and that the counterclaim should not have been dismissed. 161 F.2d 981. The question of validity is the only question presented by this petition for certiorari. (333 U.S. 128) (emphasis added).
As noted in this quote, the issue in Funk Bros. crystallized as whether the patent-at-issue was invalid for “want of invention,” not whether the claimed invention lacked patentable subject matter.
To be sure, Funk Bros. contains some great patentable-subject-matter language:
The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end. (333 U.S. 130) (emphasis added).
However, this language is dicta in the purest sense; Justice Douglas was waxing eloquent, as he so often did. But Justice Douglas then got to the point:
[W]e think that that aggregation of species fell short of invention within the meaning of the patent statutes…[A] product must be more than new and useful to be patented; it must also satisfy the requirements of invention or discovery. (333 U.S. 131).
And what did it mean to “fall short of invention” in the Patent Act as it stood in 1948? How can we tell that this case was really directed to the concept of obviousness, and not to patentable subject matter?
First, we can look to the language of Funk Bros.: the “product must be more than new and useful…it must also satisfy the requirements of invention or discovery.” That recitation is a strong parallel to today’s common understanding that an invention under the Patent Act must be new, useful, and nonobvious. As well, former 35 U.S.C. Sec. 31 began with the following language:
Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, not known or used by others in this country, before his invention or discovery thereof,…
In other words, former Section 31 included language directed to the concept of “invent[ion] or discover[y]” and language directed to the types of patentable subject matter (“art, machine, manufacture, or composition of matter”); Funk Bros. was clearly directed to the former, and not the latter.
Second, if there remained any doubt, the supporting citation for the concept of “invention or discovery” is to “Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84, 314 U. S. 90-91, and cases cited; 35 U.S.C. § 31.” (333 U.S. 132).
The Cuno citation goes right to the classic statements of obviousness with which all patent attorneys should be familiar: an invention is obvious when it requires no more than the application of routine skill in the art.
Under the statute, 35 U.S.C. § 31, R.S. § 4886, the device must not only be “new and useful,” it must also be an “invention” or “discovery.” Thompson v. Boisselier, 114 U. S. 1, 114 U. S. 11. Since 52 U. S. 267, decided in 1851, it has been recognized that, if an improvement is to obtain the privileged position of a patent, more ingenuity must be involved than the work of a mechanic skilled in the art. Hicks v. Kelsey, 18 Wall. 670; Slawson v. Grand Street R. Co., 107 U. S. 649; Phillips v. Detroit, 111 U. S. 604; Morris v. McMillin, 112 U. S. 244; Saranac Automatic Machine Corp. v. Wirebounds Patents Co., 282 U.S. 704; Honolulu Oil Corp. v. Halliburton, 306 U. S. 550. “Perfection of workmanship, however much it may increase the convenience, extend the use, or diminish expense, is not patentable.” Reckendorfer v. Faber, 92 U. S. 347. The principle of the Hotchkiss case applies to the adaptation or combination of old or well known devices for new uses. Phillips v. Detroit, supra; Concrete Appliances Co. v. Gomery, supra; Powers-Kennedy Contracting Corp. v. Concrete Mixing & Conveying Co., supra; Electric Cable Joint Co. v. Brooklyn Edison Co., 292 U. S. 69; Altoona Publix Theaters, Inc. v. American Tri-Ergon Corp., supra; Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 302 U. S. 490; Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U. S. 350. That is to say, the new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. (emphasis added).
By using the technique of a “cite bite,” Judge Sweet missed this in deciding the Myriad case.
Ironically, Justice Frankfurter, concurring in Funk Bros., foresaw exactly such mischief as Justice’s Douglas opinion would bring:
It only confuses the issue, however, to introduce such terms as “the work of nature” and the “laws of nature.” For these are vague and malleable terms infected with too much ambiguity and equivocation. Everything that happens may be deemed “the work of nature,” and any patentable composite exemplifies in its properties “the laws of nature.” Arguments drawn from such terms for ascertaining patentability could fairly be employed to challenge almost every patent. On the other hand, the suggestion that, “if there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end” may readily validate Bond’s claim…. Surely the Court does not mean unwittingly to pass on the patentability of such products by formulating criteria by which future issues of patentability may be prejudged. In finding Bond’s patent invalid, I have tried to avoid a formulation which, while it would in fact justify bond’s patent, would lay the basis for denying patentability to a large area within existing patent legislation. (emphasis added).
Unfortunately, Judge Sweet, in deciding the Myriad case, fell victim to the ambiguity of Douglas’s language, just as Justice Frankfurter predicted would someday occur. Judge Sweet’s citation to Funk Bros. missed the holding of Justice Douglas’s opinion and ignored the underlying concepts of obviousness derived from Cuno, thus rendering a decision which would “lay the basis for denying patentability to a large area within existing patent legislation.”
If the Federal Circuit is paying attention, Judge Sweet’s decision should not last.
More commentary can be found here:
IPWatchdog (by Eric Guttag)
[Updated to add links to Kalo and Cuno. Thanks Steven Nipper for the reminder. Steven has a great compilation of Supreme Court patent cases listed at his site (though I didn’t link to his versions here)]