{"id":6587,"date":"2017-05-19T20:43:17","date_gmt":"2017-05-20T00:43:17","guid":{"rendered":"http:\/\/jolt.richmond.edu\/?p=6587"},"modified":"2019-03-08T19:52:07","modified_gmt":"2019-03-09T00:52:07","slug":"volume23_issue4_pierce","status":"publish","type":"post","link":"https:\/\/blog.richmond.edu\/jolt\/2017\/05\/19\/volume23_issue4_pierce\/","title":{"rendered":"Patent Eligibility as a Function of New Use, Aggregation, and Preemption Through Application of Principle"},"content":{"rendered":"

\"DownloadPierce Publication Version PDF<\/a><\/p>\n

Cite as: N. Scott Pierce, Patent Eligibility as a Function of New Use, Aggregation, and Preemption Through Application of Principle<\/em>,\u00a023 Rich. J.L. & Tech. 11 (2017),\u00a0http:\/\/jolt.richmond.edu\/2017\/05\/19\/volume23_issue4_pierce\/.<\/p>\n

\u00a0<\/u><\/strong><\/p>\n

By: N. Scott Pierce*<\/a><\/p>\n


\nAbstract<\/u><\/strong><\/h4>\n

By long-standing judicial precedent, laws of nature, natural phenomena, and abstract ideas are excepted from eligibility for patent protection. The Supreme Court recently promulgated a two-part test that excludes from eligibility subject matter that is directed to any of these judicial exceptions unless there is something \u201csignificantly more,\u201d namely \u201cinvention\u201d or an \u201cinventive concept.\u201d The test is intended to bar patent protection that would preempt use of any of the judicial exceptions themselves. \u201cPreemption,\u201d however, is related to two earlier, and now obsolete, doctrines of \u201cnew use\u201d and \u201caggregation\u201d in that all three derived from eighteenth-century English case law that viewed inventive methods to be applications of principle within the meaning of eligible \u201cmanufactures\u201d under the Statute of Monopolies. When the Patent Act of 1952 recast the language of its predecessor statutes and earlier jurisprudence into separate provisions under Title 35 of the United States Code (U.S.C.) for eligibility (\u00a7101), novelty (\u00a7102) and non-obviousness (\u00a7103), \u201cnew use\u201d and \u201caggregation\u201d were no longer considerations of eligibility because, as stated most succinctly by Judge Learned Hand, \u201cthe definition of invention [is] now expressly embodied in \u00a7 103.\u201d For the same reason, the doctrine of \u201cpreemption\u201d and its attendant \u201ctwo-part test\u201d should follow suit.<\/p>\n

 <\/p>\n

\u00a0<\/u><\/p>\n

TABLE OF CONTENTS<\/span><\/strong><\/h4>\n

 <\/p>\n

I. \u00a0Introduction. \u00a03<\/a><\/p>\n

II. \u00a0The Beginnings of Modern Patent Eligibility. \u00a08<\/a><\/p>\n

A. \u00a0Boulton<\/em> and Watt v. Bull.\u00a0<\/em> 8<\/a><\/p>\n

    \n
  1. Justice Buller\u2019s Opinion. \u00a010<\/a><\/li>\n
  2. Lord Chief Justice Eyre\u2019s Opinion. \u00a012<\/a><\/li>\n<\/ol>\n

    B. \u00a0Hornblower and Maberly v. Boulton and Watt.<\/em>\u00a0 16<\/a><\/p>\n

      \n
    1. Justice Grose\u2019s Opinion. \u00a016<\/a><\/li>\n
    2. Justice Lawrence\u2019s Opinion. \u00a018<\/a><\/li>\n<\/ol>\n

      C. \u00a0Summary and Comparison of Opinions by Chief Justice Eyre,<\/a>\u00a0and Justices Buller, Grose, and Lawrence. \u00a020<\/a><\/p>\n

      III. \u00a0New Uses of Known Machines, Manufactures and Compositions of Matter. \u00a023<\/a><\/p>\n

      A. \u00a0The Inherency of Benefit. \u00a023<\/a><\/p>\n

      B. \u00a0Non-Analogous Use. \u00a035<\/a><\/p>\n

      C. \u00a0Non-Obvious Use. \u00a044<\/a><\/p>\n

      D. \u00a0The Patent Act of 1952: Splitting Invention from Eligibility. \u00a050<\/a><\/p>\n

        \n
      1. Statutory and Judicial Conflation Prior to the Patent Act of
        \n1952. \u00a050<\/a><\/li>\n
      2. General Understanding of New Uses Based on In re:<\/em> Thuau<\/em>. \u00a055<\/a><\/li>\n
      3. The Split. \u00a056<\/a><\/li>\n<\/ol>\n

        E. \u00a0The Demise of New Use Doctrine. \u00a060<\/a><\/p>\n

        IV. \u00a0Aggregation of Applied Principles. \u00a066<\/a><\/p>\n

        A. \u00a0\u201cSomething More than an Aggregate\u201d. \u00a066<\/a><\/p>\n

          \n
        1. Cooperation and Single Purpose. \u00a066<\/a><\/li>\n
        2. Invention as the \u201cVital Spark\u201d. \u00a069<\/a><\/li>\n<\/ol>\n

          B. \u00a0The Demise of Aggregation Doctrine. \u00a070<\/a><\/p>\n

          V. \u00a0Preemption of Laws of Nature, Natural Phenomena and<\/a>\u00a0Abstract Ideas. \u00a074<\/a><\/p>\n

          A. \u00a0Setting the Stage. \u00a075<\/a><\/p>\n

          B. \u00a0\u201cMere Principle\u201d and its Application. \u00a076<\/a><\/p>\n

          C. \u00a0The Two-Part Eligibility Test. \u00a080<\/a><\/p>\n

          D. \u00a0\u201cPreemption\u201d in the Absence of Something \u201cSignificantly\u00a0<\/a>More\u201d than \u201cMere Principle\u201d. \u00a081<\/a><\/p>\n

          E. \u00a0Treatment of Patent Eligibility Since Diamond v. Diehr<\/em>, and an Alternative. \u00a086<\/a><\/p>\n

          VI. \u00a0Conclusion. \u00a0101<\/a><\/p>\n

           <\/p>\n

           <\/p>\n

          <\/a><\/a><\/a><\/a>I. \u00a0<\/strong>Introduction<\/strong><\/h4>\n

          \u00a0<\/strong><\/p>\n

          [1]\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 Patent eligibility under 35 U.S.C. \u00a7 101[1]<\/a>\u2013as interpreted by the Supreme Court in Alice v. CLS Bank Int\u2019l<\/em>., and as applied by the United States Patent and Trademark Office under recent guidelines[2]<\/a>\u2013is a tiered algorithm.[3]<\/a> The first tier addresses the language of the statutory provision by asking whether the claim is for \u201ca process, machine, manufacture or composition of matter.\u201d[4]<\/a> It is followed by a second tier that includes a two-step analysis which asks if the subject matter is directed to any of three judicial exceptions, namely a law of nature, a natural phenomenon or an abstract idea, and disqualifies claims directed to any of those exceptions in the absence of something \u201csignificantly<\/em> more.\u201d[5]<\/a><\/p>\n

           <\/p>\n

          [2]\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 It has been argued that the Statute of Monopolies \u201cplayed, at best, a minimal role in pre-modern patent law.\u201d[6]<\/a> Nevertheless, at least one thread of modern jurisprudence stems from the sixth section of the Statute, which authorized patent protection for \u201cthe sole working or making of any manner of new manufactures<\/em> within this realm[], to the true and first inventor[] and inventors\u2026.\u201d[7]<\/a> Specifically, the eighteenth-century English cases of Boulton v. Bull[8]<\/strong><\/a> <\/em>and Hornblower v. Boulton[9]<\/strong><\/a> <\/em>encompassed methods within the term \u201cmanufactures\u201d as applications of principle. By doing so, they laid the foundations for some of the most fundamental current questions surrounding patent eligibility.<\/p>\n

           <\/p>\n

          [ 3]\u00a0\u00a0\u00a0\u00a0\u00a0 While both manufactures and methods of use were considered eligible for patent protection under Boulton <\/em>and Hornblower<\/em>, for many years afterward new methods of use of known<\/em> manufactures were not. Manufactures were understood to embody all applications of principle to which they could be put; therefore, new methods generally could only be patented if they were conducted by use of manufactures having an additional, patentably distinct feature. Even then there was a question as to whether the whole manufacture was patentable or only the additional improvement feature. This issue became moot with the advent of claims, whereby exclusionary rights required that the combination<\/em> of elements of a claim be patentably distinct, so that the patentability of any individual element became unnecessary.[10]<\/a><\/p>\n

           <\/p>\n

          [4]\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 Eventually, a new method of use of a known device was considered eligible, but only if the new use was non-analogous<\/em> to known uses of the device. More particularly, a new use of an old device must include \u201cinvention.\u201d[11]<\/a> The patentability of a new use of a known product, and of a known product for a new intended use, both of which were considered a \u201cdual use,\u201d became the topics of heated debate in the late nineteenth and early-to-mid twentieth centuries, culminating in substitution of the term \u201cprocess\u201d for that of \u201cart\u201d in the statutory provision for patent eligibility under the Patent Act of 1952.[12]<\/a> The revised statutory language did not immediately settle the matter.[13]<\/a> Ultimately, claims directed to known products having new intended uses were considered to lack novelty, while new uses of known machines generally became questions of \u201cobviousness.\u201d[14]<\/a><\/p>\n

           <\/p>\n

          [5]\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 \u201cAggregation\u201d came into use as a doctrine proscribing patent protection for \u201cnew combinations\u201d of devices \u201cwithout producing a new and useful result [of] the joint product of the elements of the combination and something more<\/em> than an aggregate of old results.\u201d[15]<\/a> As with a new use, patent eligibility was denied because there was no new underlying application of principle. Rather, aggregation was \u201c[m]erely bringing old devices into juxtaposition, and \u2026 allowing each to work out its own effect without production of something novel.\u201d[16]<\/a> In neither the case of new use nor of aggregation was there \u201cinvention\u201d and, as with new use, aggregation ultimately became essentially a matter of \u201cstatutory obviousness\u201d under the Patent Act of 1952.[17]<\/a> Where aggregation was not subsumed under statutory obviousness, it was recast as \u201cindefiniteness\u201d under 35 U.S.C. \u00a7 112, second paragraph,[18]<\/a>in that the affected claims failed to \u201cpositively recite structural relationships\u201d of the elements.[19]<\/a> Even here, however, the lack of any new application of principle by the combination of known but unrelated components was apparent.<\/p>\n

           <\/p>\n

          [6]\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 \u201cPreemption\u201d as \u00ad\u2013a legal term to justify barring the eligibility of claimed subject matter was first invoked by the Supreme Court in Gottschalk v. Benson.<\/em>[20]<\/a> The Court relied on the \u201clongstanding rule that \u2018an idea of itself is not patentable,\u2019\u201d[21]<\/a> which in this case was a mathematical formula for converting \u201cbinary-coded-decimal (\u201cBCD\u201d) numerals into pure binary numerals.\u201d[22]<\/a> Reciting earlier Supreme Court cases dating back to Le Roy v. Tatham,[23]<\/strong><\/a> <\/em>the Court also embraced within this maxim a prohibition against patenting a \u201cprinciple, in the abstract,\u201d[24]<\/a> or \u201c[p]henomena of nature.\u201d[25]<\/a><\/p>\n

           <\/p>\n

          [7]\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 As with new use and aggregation, the guard against preemption mandated that only an inventive<\/em> \u201capplication of the law of nature to a new and useful end\u201d[26]<\/a> was eligible for protection. Preemption thereafter became the pivot point for eligibility under 35 U.S.C. \u00a7 101 of claimed subject matter reciting a law of nature, a natural phenomenon or an abstract idea, and was the basis for the test articulated by the Supreme Court in Alice Corp. v. CLS Bank Int\u2019l.<\/em>, in 2014.[27]<\/a><\/p>\n

           <\/p>\n

          [8]\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 There has never been a satisfactory explanation by the Supreme Court as to why current analyses of patent eligibility cannot be couched within other portions of the statutory framework, such as novelty under 35 U.S.C. \u00a7 102 or non-obviousness under 35 U.S.C. \u00a7 103. This was a common complaint among dissenting justices in Supreme Court cases during the first few decades under the 1952 Patent Act.[28]<\/a> The Court\u2019s more recent explanation\u2013that \u201c\u00a7\u00a7 102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections,\u201d[29]<\/a>\u2013 <\/em>falls flat at least for the simple reason that there also is no such language in section 101.<\/p>\n

           <\/p>\n

          [9]\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 Part II of this article summarizes dicta in the eighteenth-century English cases of Boulton and Watt v. Bull<\/em> and Hornblower v. Boulton<\/em>. Part III traces the legal doctrine of \u201cdual\u201d or \u201cnew\u201d use from its origins in the dicta of Boulton <\/em>and Hornblower<\/em> to its assimilation into statutory provisions for novelty under 35 U.S.C. \u00a7 102 and non-obviousness under 35 U.S.C. \u00a7 103 following the Patent Act of 1952. Part IV addresses \u201caggregation\u201d and its parallels with \u201cnew use\u201d as a matter of non-obviousness. Part V analyzes legal \u201cpreemption\u201d and its relation to earlier doctrines\u2013 of \u201cnew use\u201d and \u201caggregation,\u201d arguing that, for the same reasons that \u201cnew use\u201d and \u201caggregation\u201d are no longer viable doctrines in their own right, the doctrine of \u201cpreemption\u201d also should be foregone in favor of non-eligibility portions of the statute other than that of eligibility under 35 U.S.C. \u00a7 101.<\/p>\n

           <\/p>\n

           <\/p>\n

          <\/a><\/a><\/a><\/a><\/a>II. \u00a0<\/strong>The Beginnings of Modern Patent Eligibility<\/strong><\/h4>\n

           <\/p>\n

          [10]\u00a0\u00a0\u00a0\u00a0 The Statute of Monopolies of 1623 was generally intended to bar patents in England, with the exception of those for new \u201cmanufactures,\u201d as prescribed under the sixth section. However, the meaning of \u201cmanufactures\u201d under the statute was the subject of great debate, most notably in the famous eighteenth-century cases of Boulton and Watt v. Bull <\/em>and Hornblower v. Boulton<\/em>.[30]<\/a> Ultimately, in Hornblower v. Boulton<\/em>, patent protection for methods as \u201cmanufactures\u201d was permitted. Part II-A discusses the contrasting, influential opinions of Justice Buller and Lord Chief Justice Eyre in Boulton<\/em>, and Part II\u2013B discusses Justices Grose and Lawrence\u2019s opinions in Hornblower<\/em>, which if not directly cited, were often reflected in later jurisprudence. <\/em>Both Boulton<\/em> and Hornblower<\/em> set the stage for so-called \u201cnew use\u201d and \u201caggregation\u201d doctrines that developed during the nineteenth and twentieth centuries under American jurisprudence.<\/p>\n

           <\/p>\n

          <\/a><\/a><\/a><\/a><\/a>A. \u00a0<\/strong>Boulton<\/em><\/strong> and Watt v. Bull<\/em><\/strong><\/h4>\n

           <\/p>\n

          [11]\u00a0\u00a0\u00a0\u00a0 The patent at issue in Boulton and Watt v. Bull<\/em> was a conceded improvement on the Newcomen steam engine (which had been in use for almost one-hundred years, primarily for the purpose of pumping water out of mines).[31]<\/a> James Watt discovered that the efficiency of such steam, or \u201cfire\u201d engines as they were known at that time could be significantly improved by condensing spent steam in a chamber separate from the cylinder and piston producing the work.[32]<\/a> This change eliminated the need to cool the cylinder between strokes of the piston, thereby significantly reducing lost work and, consequently, the cost of operation.[33]<\/a><\/p>\n

           <\/p>\n

          [12]\u00a0\u00a0\u00a0\u00a0 The Drafting of the patent specification, however, posed a difficulty for Watt, if he was to obtain the broadest possible patent protection. If the invention was described in great detail, his patent might be limited to only those particular embodiments. Alternatively, if only broad principles of operation were presented, then the patent might be considered invalid as failing to provide sufficient instruction to enable the public to practice the invention once the patent expired. Watt ultimately took the advice of his friend, William Small, drafting the application to intentionally avoid \u201cdescriptions of any particular machinery, but specifying in the clearest manner that you have discovered some principles.\u201d[34]<\/a> Watt obtained his patent and, along with his business partner, Matthew Boulton, was able to obtain, by a private act of parliament and by characterizing the invention as an \u201cengine,\u201d a term of twenty-five years from an initial patent date of January 5, 1769.[35]<\/a><\/p>\n

           <\/p>\n

          [13]\u00a0\u00a0\u00a0\u00a0 Boulton <\/em>was an enforcement action, against infringement of Watt\u2019s patent, that ultimately resulted in no judgment because the court was split.[36]<\/a> According to Lord Chief Justice Eyre in Boulton<\/em>, there were two issues: \u201cthe first, whether the patent is good in law, and continued by the act of parliament mentioned in the case; the second, whether the specification stated in the case is in point of law sufficient to support the patent?\u201d[37]<\/a> Though ostensibly distinct, the two questions were related. The exposition of \u201cdiscovered\u201d principles in the specification spoke directly to the question of whether the patent was good in law, since it was generally well-accepted that \u201cthere can be no patent for a mere principle.\u201d[38]<\/a> For example, the defendants in Boulton <\/em>stated:<\/p>\n

           <\/p>\n

          By obtaining a patent for principles only, instead of one for the result of the application of them, the public is prevented, during the term from improving on those principles, and at the end of the term is left in a state of ignorance as to the best, cheapest, and most beneficial manner of applying them to the end proposed.[39]<\/a><\/p>\n

           <\/p>\n

          [14]\u00a0\u00a0\u00a0\u00a0 On the other hand, it was unanimously agreed by the Justices that Watt\u2019s invention was useful and, as found by the jury and recited by the defendants:<\/p>\n

           <\/p>\n

          [T]he specification made by Watt, is of itself sufficient to enable a mechanic acquainted with fire-engines previously in use, to construct fire-engines, producing the effect of lessening the consumption of fuel and steam in fire-engines, upon the principle invented by Watt.[40]<\/a><\/p>\n

          <\/a><\/a><\/a><\/a>1. \u00a0<\/strong>Justice Buller\u2019s Opinion<\/strong><\/h4>\n

           <\/p>\n

          [15]\u00a0\u00a0\u00a0\u00a0 If the specification, then, did not identify any particular apparatus for the principles \u201cdiscovered\u201d by Watt, but, nevertheless, was sufficient to \u201cenable a mechanic acquainted with fire-engines previously in use\u201d to practice that method, and thereby benefit from that discovery, on what basis did patent eligibility lie?[41]<\/a> For Justice Buller, another of the justices hearing the case, the answer was clear: \u201c[T]he true foundation of all patents, \u2026 must be the manufacture itself; and so says the Statute [of Monopolies] 21 Jac. I, c.3<\/em>.\u201d[42]<\/a> The Statute of Monopolies, in other words, was the \u201cfoundation\u201d for patent protection. Eligibility for such protection under the Statute of Monopolies depended upon the ability to classify the subject of a patent as a \u201cmanufacture,\u201d as summarized by Justice Buller:<\/p>\n

           <\/p>\n

          All monopolies except those which are allowed by that statute, are declared to be illegal and void; they were so at common law, and the sixth section excepts only those of the sole working or making any manner of new manufacture<\/em>: and whether the manufacture be with or without principle, produced by accident or by art, is immaterial. Unless this patent can be supported for the manufacture<\/em>, it cannot be supported at all.[43]<\/a><\/p>\n

           <\/p>\n

          [16]\u00a0\u00a0\u00a0\u00a0 For Justice Buller, the subject matter of the patent must be within the scope of the meaning of the statutory term, \u201cmanufacture.\u201d Nevertheless, Justice Buller considered a \u201cprinciple<\/em> in the patent, and engine<\/em> in the act of parliament [to] mean \u2026 the same thing.\u201d[44]<\/a> The discrepancy between the qualification of a new \u201cmanufacture\u201d and a \u201cprinciple\u201d was resolved by considering the statutory word \u201cmanufacture,\u201d to be a threshold requirement for facial patent eligibility, and beneficial utility to be evidence of the existence of the principle embodied in the manufacture.[45]<\/a> Once established as a new and beneficial embodiment of principle, the exclusionary right of the patentee extended to all<\/em> uses of that manufacture.[46]<\/a><\/p>\n

           <\/p>\n

          [17]\u00a0\u00a0\u00a0\u00a0 From these general observations, Justice Buller concluded that, while patents of addition or improvements on an old machine may be good, the scope of protection must be limited to the improvement alone, and not extended to include the old machine already in the public domain.[47]<\/a> Justice Buller found that there was nothing new in the steam engine described in Watt\u2019s patent,[48]<\/a> therefore, the steam engine\u2019s manner of use\u2013according to the principles discovered by Watt\u2013must be no more than an application of principle already inherent in known steam engines.[49]<\/a> Consequently, the claim was to the \u201cwhole machine,\u201d which was known and, as such, Watt\u2019s patent must be void.[50]<\/a><\/p>\n

           <\/p>\n

          <\/a><\/a><\/a><\/a>2. \u00a0<\/strong>Lord Chief Justice Eyre\u2019s Opinion<\/strong><\/h4>\n

           <\/p>\n

          [18]\u00a0\u00a0\u00a0\u00a0 Whereas Justice Buller relied on the negative implications of extending protection beyond the literal confines of the Statute of Monopolies, Lord Chief Justice Eyre looked to broaden the meaning of \u201cmanufacture,\u201d recognizing that many cases had already been decided in favor of new uses of known devices.[51]<\/a> Like Justice Buller, Chief Justice Eyre posited that, \u201cif the machinery itself is not newly invented, but only conducted by the skill of the inventor, so as to produce a new effect, the patent cannot be for the machinery.\u201d[52]<\/a> He concluded that patent protection cannot be granted to things known in the art simply on the basis that a new use for that machinery has been discovered.[53]<\/a> Eyre also agreed with Justice Buller\u2019s statement that: \u201cif the principle alone be the foundation of the patent, it cannot possibly stand, with that knowledge and discovery which the world were in possession of before.\u201d[54]<\/a><\/p>\n

           <\/p>\n

          [19]\u00a0\u00a0\u00a0\u00a0 Chief Justice Eyre believed, however, that the language of the Statute of Monopolies should not be so strictly interpreted as to bar all methods of use of known devices, stating that, \u201c[n]ow I think these methods<\/em> may be said to be new manufactures<\/em>, in one of the common acceptations of the word, as we speak of the manufactory of glass, or any other thing of that kind.\u201d[55]<\/a> Eyre employed the example of David Hartley\u2019s method of using iron plates to fireproof buildings, stating that Hartley\u2019s patent could not be for the effect obtained, namely, \u201cthe absence of fire,\u201d[56]<\/a> nor could it be for the plates or the method of their manufacture, both of which were commonly known.[57]<\/a> Rather, as Chief Justice Eyre stated: \u201c[b]ut the invention consisting in the method of disposing <\/em>of those plates of iron<\/em>, so as to produce their effect, and that effect being a useful and meritorious one, the patent seems to have been very properly granted to him for his method<\/em> of securing buildings from fire.\u201d[58]<\/a> \u201cIt [the patent] must be for [the] method<\/em> detached from all physical existence whatever<\/em>.\u201d[59]<\/a><\/p>\n

           <\/p>\n

          [20]\u00a0\u00a0\u00a0\u00a0 Patentability must be, as stated by Chief Justice Eyre, \u201cfor a principle so far embodied and connected with corporeal substances as to be in a condition to act<\/em>, and to produce effects<\/em> in any art, trade, mystery, or manual occupation\u2026.\u201d[60]<\/a> This was \u201cthe thing for which the patent stated in the case was granted, and this is what the specification describes, though it miscalls it a principle<\/em>.\u201d[61]<\/a> Eyre asserted:<\/p>\n

           <\/p>\n

          It is not that the patentee has conceived an abstract notion that the consumption of steam and fire engines may be lessened but he has discovered a practical manner<\/em> of doing it; and for that practical manner of doing it he has taken this patent. Surely this is a very different thing from taking a patent for a principle; it is not for a principle<\/em>, but for a process<\/em>.[62]<\/a><\/p>\n

           <\/p>\n

          [21]\u00a0\u00a0\u00a0\u00a0 While Watt, as he had been advised to do, stated \u201cin the clearest manner\u201d[63]<\/a> that he had \u201cdiscovered some principles,\u201d[64]<\/a> and Justice Buller had taken the language of Watt\u2019s specification at face value in this regard, Lord Chief Justice Eyre viewed the invention as being \u201cnot for a principle<\/em>, but for a process<\/em>\u201d albeit by use of no new machinery.[65]<\/a> As stated by Eyre, \u201cthe machinery is not the essence of the invention but incidental to it\u201d[66]<\/a> and, therefore, the method as described in the specification need only \u201cbe capable of lessening the consumption to such an extent as to make the invention useful.\u201d[67]<\/a> \u201cMore precision is not necessary, and absolute precision is not practicable.\u201d[68]<\/a><\/p>\n

           <\/p>\n

          [22]\u00a0\u00a0\u00a0\u00a0 Eyre summarized that, while the act of parliament characterized the invention as an \u201cengine\u201d and the specification described the invention as a discovered principle, in effect, the patent specification described neither.[69]<\/a> Rather, Chief Justice Eyre saw the invention as a \u201cprocess.\u201d[70]<\/a> As a method, or \u201cprocess,\u201d it was the proper subject of a patent wholly apart from whether the device itself was, separately, new or patentable:<\/p>\n

           <\/p>\n

          The objection on the act of parliament is of the same nature as one of the objections to the specification: the specification calls a method<\/em> of lessening the consumption of steam in fire-engines a principle<\/em>, which it is not; the act calls it an engine<\/em>, which perhaps also it is not; but both the specification and the statute are referable to the same thing, and when they are taken with their correlative are perfectly intelligible. Upon the wider ground I am therefore of opinion that the act has continued this patent.[71]<\/a><\/p>\n

           <\/p>\n

          [23]\u00a0\u00a0\u00a0\u00a0 Therefore, while it was true that the Statute of Monopolies provided only for the exception of \u201cthe sole working or making of any manner of new manufactures,\u201d according to Chief Justice Eyre patents had routinely been granted under the Statute for new methods of use of known manufactures.[72]<\/a> Moreover, for Eyre, equivalency of the terms \u201cmethod\u201d and \u201cmanufacture\u201d was not contingent upon embodiment of a new application of principle. Rather, a new application of principle was independent of the existence of a new \u201cmanufacture,\u201d despite his conclusion that \u201cmethod\u201d and \u201cmanufacture\u201d were understood to mean the same thing under the Statute. Therefore, Chief Justice Eyre did not need to address whether the improvement in a machine must be separable from the machine it improved in order to be eligible for patent protection.[73]<\/a> Nor did he need to address the patentability of old devices intended for new and beneficial uses. For Eyre, manufacture and method meant the same thing, not because they were both embodiments of the same new application of principle, but rather, because they were each, independently, capable<\/em> of embodiment of a<\/em> new application of principle, and that the idea of a new application of principle was the root meaning of the term \u201cmanufacture\u201d in the Statute of Monopolies.[74]<\/a> Where a new combination of components did not result in some new application of principle, there would be no \u201cmanufacture\u201d under the Statute.<\/p>\n

           <\/p>\n

          [24]\u00a0\u00a0\u00a0\u00a0 For Justice Buller, although terming something as a \u201cmanufacture\u201d was a necessary condition for patent eligibility, it was an insufficient condition for patentable distinction. The condition for patentable distinction was, instead, for Buller an embodiment of a new application of principle, for which a new \u201cmanufacture\u201d was necessary. For Chief Justice Eyre, on the other hand, patent eligibility and patentable distinction were wrapped up in the term \u201cmanufacture\u201d under the Statute, and the meaning of the word embraced both devices and their uses independently of each other, so long as they each embodied a new application of principle. Ultimately, no judgment in Bolton <\/em>was given because the court was split, with Justices Buller and Heath holding Watt\u2019s patent invalid, and Chief Justice Eyre and Justice Rooke holding in favor of the patent.<\/p>\n

           <\/p>\n

          <\/a><\/a><\/a><\/a><\/a>B. \u00a0<\/strong>Hornblower and Maberly v. Boulton<\/em><\/strong> and Watt<\/em><\/strong><\/h4>\n

           <\/p>\n

          [25]\u00a0\u00a0\u00a0\u00a0 Boulton and Watt\u2019s patent was again challenged, but unanimously upheld as valid at the Court of King\u2019s Bench in the 1799 case of Hornblower and Maberly v. Boulton and Watt<\/em>.[75]<\/a> While the justices at the Court of King\u2019s Bench, like those at the Court of Common Pleas in Boulton<\/em>, differed as to the nature of Watt\u2019s invention, they all agreed that the term \u201cmanufacture\u201d was broad enough to embrace the application of principle described in Watt\u2019s specification, and that the specification was sufficient to enable its practice by ordinary mechanics.[76]<\/a> Further, while Justices Kenyon and Amherst summarily upheld the validity of the patent as a manufacture that was sufficiently described in the specification, Justices Grose and Lawrence took up many of the themes laid out by Justice Buller and Chief Justice Eyre in Boulton<\/em>.[77]<\/a><\/p>\n

           <\/p>\n

          <\/a><\/a><\/a><\/a>1. \u00a0<\/strong>Justice Grose\u2019s Opinion<\/strong><\/h4>\n

           <\/p>\n

          [26]\u00a0\u00a0\u00a0\u00a0 Justice Grose, for example, following Justices Buller and Eyre in the Court of Common Pleas, asked whether the patent was \u201cfor a mere principle, and not for a new manufacture\u201d[78]<\/a> and, like Justice Buller, questioned whether the patent, if for a manufacture, was new and, if new, whether it should have been \u201cfor the addition only, and not for the whole engine.\u201d[79]<\/a> Also like Justice Buller, Justice Grose reasoned that, even though Watt had adequately described a new method, it \u201cshould hardly\u201d fall within the Statute of Monopolies if it was \u201cnot affected or accompanied by a manufacture.\u201d[80]<\/a> However, he differed from Justice Buller by finding that Watt did, indeed, describe a \u201cnew manufacture, by which his principal is realized; that is, by which his steam vessel is kept as hot as the steam during the time the engine is at work; by which means the consumption of steam and fuel is lessened.\u201d[81]<\/a> Whereas Buller found \u201cnothing new in the machine,\u201d[82]<\/a> Grose found several distinctions:<\/p>\n

           <\/p>\n

          [H]e specifies the particular parts requisite to produce the effect intended, and states the manner how they are to be applied. He describes the case of wood in which the steam vessel is to be inclosed, the engines that are to be worked wholly or partially by condensation of steam, the vessels that he denominates condensers, and the steam vessels where rotary motions are required. Can it then be said that the making and combining of these parts is not some manner of new manufacture? I cannot say that it is not.[83]<\/a><\/p>\n

           <\/p>\n

          [27]\u00a0\u00a0\u00a0\u00a0 On the other hand, Grose and Buller both conditioned patentable distinction on whether the patent was broad enough to cover the old, unimproved engine, or \u201conly for the addition to or improvement of the old engine.\u201d[84]<\/a> Implicit in this analysis is that any device must inherently embody all physical applications of principle to which that device could be put. However, drawing from both Lord Chief Justice Eyre and Justice Buller in the previous case, Justice Grose resolved the difficulty associated with patenting improvements inextricably linked with old machines by limiting patent protection to devices that embodied the improvement. Specifically, as stated by Justice Grose, \u201c[i]f indeed a patent could not be granted for an addition, it would be depriving the public of one of the best benefits of the Statute of James.\u201d[85]<\/a> Therefore, the act of parliament granting to Watt his exclusive right in his invention, according to Grose, by \u201creciting the patent, recites it as a grant of the benefit and advantage of making and vending \u2018certain engines by him invented for lessening the consumption of steam and fuel in fire engines<\/em>.\u2019\u201d[86]<\/a> Therefore, the \u201cLegislature considered the patent as a patent for the improvement of the invention described in the specification, and not as a patent for a mere method . . .\u201d as contended by Chief Justice Eyre, \u201c. . . or for the original fire engine[,]\u201d as contended by Justice Buller.[87]<\/a> For Justice Grose, a \u201cmanufacture\u201d under the Statute of Monopolies had to be a device. Also like Justice Buller, Justice Grose implicitly viewed a device as being a physical embodiment of all applications of principle to which it could be put and, therefore, only an improvement on a device embodying a new application of principle could be a basis for an exclusionary right. However, unlike Justice Buller, and drawing from Chief Justice Eyre, Justice Grose did not see the inability to separate an improvement, from a device it improves, as a fatal flaw. Rather, like Chief Justice Eyre, Justice Grose based entitlement to patent protection on the benefit accrued by the improvement.<\/p>\n

           <\/p>\n

          <\/a><\/a><\/a><\/a>2. \u00a0<\/strong>Justice Lawrence\u2019s Opinion<\/strong><\/h4>\n

           <\/p>\n

          [28]\u00a0\u00a0\u00a0\u00a0 Justice Lawrence borrowed from Justice Grose the criteria, recited in the act of parliament, for granting Watt his patent (for \u201cthe sole benefit of making and vending certain engines invented by him for lessening the consumption of steam in fire engines,\u201d).[88]<\/a> But, like Chief Justice Eyre, he considered \u201c[e]ngine and method [to] mean the same thing\u201d[89]<\/a> and therefore, either \u201cmay be the subject of a patent.\u201d[90]<\/a> Justice Lawrence also, like Chief Justice Eyre, recognized the terms \u201cengine\u201d and \u201cmethod\u201d to be \u201cconvertible,\u201d implying that an improvement could be embodied in a new use of an unimproved machine. Therefore, a \u201cmechanical contrivance\u201d did not necessarily embody all applications of principal entitled to patent protection.[91]<\/a> For example, as stated by Justice Lawrence:<\/p>\n

          [S]ome of the difficulties in the case have arisen from considering the word engine<\/em> in its popular sense, namely, some mechanical contrivance to effect that to which human strength, without such assistance, is unequal: but it may also signify device; and that Watt meant to use it in that sense, -and that the Legislature so understood it, is evident from the words engine and method being used as convertible terms. Now there is no doubt but that for such a contrivance a patent may be granted, as well as for a more complicated machine: it equally falls within the description of a manufacture; and unless such devices did fall within that description, no addition or improvement could be the subject of a patent.[92]<\/a><\/p>\n

           <\/p>\n

          [29]\u00a0\u00a0\u00a0\u00a0 In other words, understanding that the legislature intended the terms \u201cengine\u201d and \u201cmethod\u201d to be \u201cconvertible\u201d meant that, so long as the method was effected by mechanical means, Watt\u2019s invention was within the meaning of the statute, and could be embodied in an \u201caddition\u201d to or an \u201cimprovement\u201d of a known \u201cmachine.\u201d Significantly, however, Justice Lawrence stated that, \u201cWatt claims no right to the construction of engines for any determinate object<\/em>, except that of lessening the consumption of steam and fuel in fire-engines[,]\u201d[93]<\/a> thereby leaving open the possibility that Watt would, in fact, have a right to exclude others from the \u201cconstruction of engines\u201d[94]<\/a> for the purpose<\/em> of \u201clessening the consumption of steam and fuel and fire engines[,]\u201d[95]<\/a> regardless of whether those engines included additions or improvements intended to effect that result.[96]<\/a> At any rate, Justice Lawrence did not need to opine on whether Watt\u2019s invention was valid as a method alone, or whether his exclusionary right extended to the construction, use, or vending of old engines with a new intended purpose, because he concluded that Watt had described an \u201cimprovement of fire-engines . . . with sufficient accuracy . . ., which may be made in all fire-engines, in such a way as to enable a workman to execute it. . . .\u201d[97]<\/a> Specifically, Justice Lawrence stated that Watt had included in the specification a vessel for the condensation,<\/em> distinct from that in which the powers of steam operate; and to convey the steam, as occasion requires, from the cylinder to the condensing vessel; to keep the cylinder hot by means distinctly described, and to extract, by pumps, the vapour which may impede the work.[98]<\/a><\/p>\n

           <\/p>\n

          [30]\u00a0\u00a0\u00a0\u00a0 Having articulated the improvement as a specification providing \u201cdirections for the purpose,\u201d[99]<\/a> Watt again left open, under Justice Lawrence\u2019s analysis, the possibility of patent protection for a vessel and pumps described in the specification that may have been present in previously known steam engines, but not employed as directed by Watt\u2019s specification. If so, then Justice Lawrence, by accepting convertibility of the term \u201cengine\u201d and \u201cmethod,\u201d was forced to introduce the concept of \u201cintended use\u201d as a criterion for an exclusionary right in the case of Watt\u2019s patent. It didn\u2019t matter whether his invention was characterized as an \u201cengine\u201d or \u201cmethod,\u201d so long as the \u201cdeterminate object\u201d was \u201clessening the consumption of steam and fuel in fire engines.\u201d<\/p>\n

           <\/p>\n

          <\/a><\/a><\/a><\/a>C. \u00a0<\/strong>Summary and Comparison of Opinions by Chief Justice Eyre, and Justices Buller, Grose, and Lawrence<\/strong><\/h4>\n

           <\/p>\n

          [31]\u00a0\u00a0\u00a0\u00a0 Justices of the courts in each of Boulton<\/em> and Hornblower<\/em>, therefore, set up a dichotomy under the meaning of \u201cmanufacture\u201d in the Statute of Monopolies. In Boulton<\/em>, Justice Buller insisted that a \u201cmanufacture\u201d was just that, whether it be \u201cwith or without principle,\u201d and that the exception under the sixth section of the Statute was to any manner of \u201cnew manufacture.\u201d[100]<\/a> The implication, of course, was that it was only a \u201cnew manufacture\u201d that could embody a new application of principle necessary to entitle the \u201ctrue and first inventor and inventors of such manufactures\u201d to \u201cany letters patent and grants of privilege\u201d under the Statute. A corollary of this reasoning extended such entitlement to all uses of new manufactures, since it was only a new manufacture that could embody a new application of principle. Patents of addition were circumscribed to exclude from patent protection known devices so improved. Lord Chief Justice Eyre, on the other hand, while agreeing that \u201cprinciple alone [cannot] be the foundation of the patent,\u201d[101]<\/a> determined the meaning of \u201cmanufacture\u201d under the Statute to be the \u201cpractical manner\u201d of producing the \u201ceffect\u201d of a newly discovered principle in \u201cany art, trade, mystery, or manual occupation\u2026.\u201d[102]<\/a><\/p>\n

           <\/p>\n

          [32]\u00a0\u00a0\u00a0\u00a0 A \u201cmanufacture,\u201d then, for Chief Justice Eyre, was not limited to \u201cthe thing for which the patent stated in the case was granted.\u201d Rather, it could be the manner in which it was employed to embody the \u201cabstract notion\u201d conceived by the inventor, in which case the \u201cmachinery,\u201d or \u201cthing,\u201d would only be incidental to the \u201cessence of the invention.\u201d[103]<\/a> For Eyre, a \u201cnew manufacture\u201d under the Statute was not \u201cwith or without principle,\u201d[104]<\/a> as it was for Buller, but a new embodiment of principle, \u201cas to be in a condition to act,\u201d regardless of whether by virtue of new machinery, or strictly as a process.[105]<\/a> In Hornblower<\/em>, Justice Grose adopted Justice Buller\u2019s requirement that any protection under the Statute must be \u201ceffected or accompanied by a manufacture,\u201d but resolved the problem of improvements by \u201caddition\u201d to known devices by limiting protection to devices and their applications that embodied the improvement.[106]<\/a><\/p>\n

           <\/p>\n

          [33]\u00a0\u00a0\u00a0\u00a0 Justice Lawrence, on the other hand, like Chief Justice Eyre in Boulton<\/em>, considered \u201cprocess\u201d and the means by which it was effected under the Statute to be \u201cconvertible.\u201d In doing so, however, he imputed intent by limiting the scope of the exclusionary right to only those means obtaining the benefit. In the case of Watt\u2019s invention this was \u201clessening the consumption of steam and fuel in fire engines.\u201d[107]<\/a><\/p>\n

           <\/p>\n

          [34]\u00a0\u00a0\u00a0\u00a0 Therefore, whereas Buller concluded in Boulton<\/em> that the Statute of Monopolies mandated that a new \u201cmanufacture\u201d be a new device regardless of whether it embodied any new principle, and that a new device would embody the principle of any application to which it could be put, Eyre imputed new application of principle under the Statute, and broadened \u201cnew manufacture\u201d to independently embrace \u201cmachinery\u201d and \u201cprocess.\u201d Buller\u2019s view required that \u201cadditions\u201d be separable from the known devices they improved in order to qualify under the Statute\u2013lest they deprive the public, or patentees, of existing rights. Eyre was not so restrictive, instead only limiting the term, \u201cnew manufacture,\u201d to machinery and processes that actually embodied new applications of principle.[108]<\/a><\/p>\n

           <\/p>\n

          [35]\u00a0\u00a0\u00a0\u00a0 In Hornblower<\/em>, on the other hand, Grose found that a method \u201cnot effected or accompanied by a manufacture\u201d did not qualify for protection under the Statute, and limited exclusionary rights to embodiments of improvements consequent to additions to known manufactures. This eliminated the need in Buller\u2019s analysis to afford protection only to inventions that could be separated from known manufactures they improved.[109]<\/a> Lawrence, like Eyre in Boulton<\/em>, equated machinery to their methods of their use and held them subject to protection as a \u201cnew manufacture\u201d under the Statute of Monopolies. However, Eyre did not link machinery and their potential uses, and so was not concerned with patents of addition. Lawrence, unlike Eyre, foresaw the problems associated with granting exclusionary rights to machines and processes that would subsume benefits obtained by unimproved machines and processes. For Lawrence, this was addressed by limiting exclusionary rights to machinery intended for uses that obtained the benefits of the invention.<\/p>\n

           <\/p>\n

          [36]\u00a0\u00a0\u00a0\u00a0 The positions of Chief Justice Eyre and Justices Buller, Grose, and Lawrence are itemized below:<\/p>\n

           <\/p>\n