Method Patent Exceptionalism

• Author: Timothy R. Holbrook
• Position: Professor of Law, Emory University School of Law
• Pages: 1001-1062

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1001

Method Patent Exceptionalism

Timothy R. Holbrook*

ABSTRACT: Inventive methods and processes have long received hostile

treatment by the patent system. Courts have been skeptical of these claims

because of the potential for overbreadth of the patent, particularly if the

method is delineated in functional terms. This categorical skepticism,

however, fails to consider the technological specificity of such concerns. For

example, the pharmaceutical industry views method claims, particularly

methods of use and treatment, as weaker, second-tier forms of protection.

Patents on the chemical compound itself offers greater downstream protection

over all uses of the compound.

Nevertheless, process claims have received differential treatment in patent law.

Congress has adopted process-specific provisions. Notwithstanding that

Congress has often legislated specific provisions for process claims, the Federal

Circuit has gone further, affording patented processes exceptional—and

usually detrimental—treatment, even though the patent statute is neutral as

to the nature of the invention. Moreover, the exceptional treatment creates

inconsistencies in the law. For example, the Federal Circuit has stated that it

would not be possible to infringe a patent on a method by selling or offering

to sell the invention, even though the law is clear that method claims are

subject to patent exhaustion (the “first sale” doctrine) and to the on-sale bar.

Similar exceptional treatment arises for the extraterritorial protection for U.S.

patents and the manner courts handle “divided infringement” scenarios,

where more than one party is involved in the act of infringement. Ironically,

the one area where treating methods differently would be most appropriate—

assessing patent eligible subject matter under 35 U.S.C. § 101—is the one

place where the Supreme Court has conflated patented methods with other

types of inventions.

This Article offers the first comprehensive exploration of method patent

exceptionalism and posits ways to eliminate the differential treatment of

method claims to put them on equal footing with other types of inventions.

*

Professor of Law, Emory University School of Law. My thanks for helpful comments and

criticism of this Article from Dmitry Karshtedt, Lucas Osborn, Sean Seymore, and the attendees

at the 15th Annual Intellectual Scholars Property Conference at DePaul University College of Law,

and at the Symposium on The Future of Innovation and Intellectual Property, Tsai Center for

Law, Science, and Innovation Inaugural Symposium at SMU School of Law.

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1002 IOWA LAW REVIEW [Vol. 102:1001

I. INTRODUCTION ........................................................................... 1003

II. THE UNIQUE NATURE OF PATENT CLAIMS ON PROCESSES

AND METHODS ............................................................................ 1009

III. THE EXPRESS EXCEPTIONAL TREATMENT OF METHOD CLAIMS

IN THE PATENT ACT .................................................................... 1013

A. INFRINGEMENT FOR IMPORTING, SELLING, OFFERING TO SELL,

OR USE THE PRODUCT OF A PATENTED PROCESS UNDER

35U.S.C. § 271(G) .............................................................. 1014

B. BURDEN SHIFTING FOR PROVING INFRINGEMENT OF PATENTED

PROCESSES ............................................................................ 1017

C. BIOTECHNOLOGICAL PROCESS PATENTS ACT OF 1995

CREATES A UNIQUE STANDARD OF NON-OBVIOUSNESS FOR

BIOTECHNOLOGY PROCESSES ................................................. 1019

D. MEDICAL AND SURGICAL PROCEDURE INFRINGEMENT

DEFENSE ............................................................................... 1021

E. FIRST INVENTOR DEFENSE ACT OF 1999 ................................. 1023

F. COVERED BUSINESS METHOD PROCEDURE ............................... 1025

IV. THE COURTS’ EXCEPTIONAL AND INCONSISTENT TREATMENT

OF METHOD CLAIMS ................................................................... 1029

A. THE PATENT MARKING STATUTE ........................................... 1029

B. THE INCONSISTENT TREATMENT OF “SALES” OF PROCESS

PATENTS FOR INFRINGEMENT, EXHAUSTION, AND VALIDITY

PURPOSES ............................................................................. 1031

1. No Infringement of Method Claims by Selling or

Offering to Sell ............................................................ 1033

2. Methods Can Be Sold for Purposes of Exhaustion

and the On-Sale Bar .................................................... 1036

C. THE FEDERAL CIRCUIT AFFORDS METHOD CLAIMS NARROW

EXTRATERRITORIAL TREATMENT UNDER SECTION 271(A) AND (F),

IN CONTRAST WITH APPARATUS CLAIMS ................................. 1040

1. Extraterritorial Protection Under Section 271(a) for

Sales of, and Offers to Sell, the Patented

Invention ...................................................................... 1040

2. Extraterritorial Protection for Uses Under Section

271(a) .......................................................................... 1043

3. Extraterritorial Protection Under Section 271(f) .... 1044

D. DIVIDED INFRINGEMENT SCENARIOS ....................................... 1047

E. IGNORING PATENT CLAIM LIMITATIONS FOR DETERMINING

SUBJECT MATTER ELIGIBILITY ............................................... 1049

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2017] METHOD PATENT EXCEPTIONALISM 1003

V. PROPOSAL: TREAT METHODS LIKE OTHER CLAIMED

INVENTIONS ................................................................................ 1052

A. SHIFTING PATENT DOCTRINE TO TREAT METHODS AND

PROCESSES LIKE OTHER CLAIMED INVENTIONS ....................... 1052

1. Infringement by Making, Importing, Selling, or

Offering to Sell the Claimed Process ......................... 1052

2. Consistent Treatment for Extraterritorial Reach ..... 1056

3. Consistent Treatment for Divided Infringement

Scenarios ...................................................................... 1057

4. Paying Attention to Patent Claims for Eligibility

Analysis ......................................................................... 1058

B. IN DEFENSE OF THE STATUS QUO AND POSSIBLE OBJECTIONS

TO THIS PROPOSAL ................................................................ 1059

VI. CONCLUSION .............................................................................. 1061

I. INTRODUCTION

Patents generally are about intangibles. The rights afforded by patents

do not attach to any particular, physical embodiment of the invention.

Instead, the inventor describes her invention within the patent document

itself. It is this written description and the attendant claims that govern what

the patent holder’s exclusive rights cover.

Patents on processes and methods, however, complicate this dynamic

even more. They are somewhat strange creatures in patent law. These

inventions relate to the performance of particular steps, as opposed to a

machine or object that could perform the process.1 In fact, a patent covering

a method does not necessarily cover something physical. Instead, the steps of

the process are covered. So, the intangibility dynamic is magnified—the

intangible patent covers acts that, even in the real world, are fairly intangible.

For example, a company could build a massive plant to use a patented

method of producing a chemical. Under current law, the plant itself does not

infringe upon the patent on the method.2 Only when someone hits the switch

and turns it on—resulting in the steps of the method being performed—

would there be infringement.3 Building the plant alone would not be

sufficient.

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1. Gottschalk v. Benson, 409 U.S. 63, 70 (1972) (“A process 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 transformed and reduced to a different state or thing.” (quoting Cochrane

v. Deener, 94 U.S. 780, 788 (1876))).

2. Joy Techs., Inc. v. Flakt, Inc. 6 F.3d 770, 773 (Fed. Cir. 1993) (“[T]he sale of equipment

to perform a process is not a sale of the process within the meaning of section 271(a).”).

3. CRAIG ALLEN NARD, THE LAW OF PATENTS 522 (4th. Ed. 2016) (“For infringement of a

method claim, the patentee must prove that the accused infringer perfo rms each and every step