Method Patent Exceptionalism

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

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... (see full summary)

 
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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
35 U.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.
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

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