Parroting Dicta

In my last post on this topic, I introduced the basic argument that any type of invention should be patentable, so long as it falls into one of the statutory categories – process, machine, manufacture, or composition of matter – and so long as it meets all of the other requirements of patentability.

Understanding why it is considered unorthodox to propose that we follow the statute requires a bit of history of Supreme Court precedent.  I like to think of that history is a string of (for the most part) the right outcomes reached for the wrong reasons.  A by-product of the history is what I call "parroting dicta" - the Court makes a statement that is not necessary (or even related to) the holding, and that statement gets repeated in every case, even though it is not necessary for that case either.  Eventually, lower courts and even the Supreme Court start believing the dicta despite the fact that it has never actually been helpful in resolving a case.

In this post I will explain what I mean.

Patentability Criteria

But first, a short diversion into the specifics of patentability.  In order to receive a patent, the invention (as defined by a patent claim) must be:

• Useful: it must have some practical utility
• Novel: it must be new
• Non-obvious: it cannot be obvious to someone with skill in the subject area
• Described: the patent specification must describe the patent with sufficient detail to show that the patentee really “possesses” the full scope of the claimed invention
• Enabled: the patent specification must enable one with ordinary skill to make and use the full scope of the claimed invention

These criteria underlay nearly every Supreme Court case on patentable subject matter.  One of the first is O'Reilly v. Morse.

Morse and the Telegraph

Samuel Morse is well known as an inventor of the telegraph, though he was hardly the only player in the game.  He did, however, file a patent application on a good version of the system, as well as on his Morse Code.  However, he went a step further – he attempted to claim any process that transmitted printed communications via an electric signal, regardless of the means used.

The Supreme Court considered this claim, and stated:

In fine he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent.

In other words, Morse failed to meet the description, enablement, and novelty requirements of patent law. Indeed, Craig Nard leads the enablement section of his new casebook with this case.

The case does have some dicta about patenting natural phenomena.  In describing a different case, the Court stated:

And if this had been the construction, the court, it appears, would have held his patent to be void; because the discovery of a principle in natural philosophy or physical science, is not patentable. 

Not exactly deep analysis, and the patent the Court was discussing was easily as broad as Morse's - it covered the idea of blowing hot air instead of cold in order to stoke the fire of a furnace.  The Court said that because the principle was put into effect by a heater, then it was patentable and not a natural phenomenon.  As further evidence that this was dicta, the very next sentence brought the issue of heating cold air right back to novelty:

But after much consideration, it was finally decided that this principle must be regarded as well known, and that the plaintiff had invented a mechanical mode of applying it to furnaces.

In other words, the natural principle was not new, and thus could not be patented, but any implementation of the principle could be patented.

Parroting Dicta

As discussed above, the narrow holding of O'Reilly v. Morse was that one must fully enable a broad invention - the courts will invalidate patents that attempt to claim more than the inventor can show was invented.  Here, Morse did not invent all means of communication by electric current. 

Despite the narrow holding, the case quickly became associated with the inability to patent natural phenomena.  Only a few years later, it is discussed as much in The Telephone Cases, a case that both parroted the dicta but then went on to hold that a patent claiming all means of transmitting voice by modulating a signal was valid, despite its similarity to a claim for all methods of transmitting printed characters by electric signal. 

O'Reilly v. Morse shows how dicta in one case can become “law” in another –  without any real analysis.  The lack of analysis poses a real problem, as shown in the Lab Corp. v. Metabolite example in the last post - even now, no one really knows how to determine what one of these unpatentable natural principles is. 

In my next post in this series, I'll discuss how parroted dicta has failed to yield any consistent answers in computer software cases.