In re Dane K. Fisher: an exercise in utility.

• Author: Pierce, N. Scott

Cite as: 6 J. High Tech L. 1

ABSTRACT

Article I, Section 8, Clause 8 of the United States Constitution provides for exclusive rights to inventors in order to "promote the Progress of Science and useful Arts." The United States Court of Appeals for the Federal Circuit in the recent decision of In re Dane K. Fisher and Raghunath V. Lalgudi, 421 F.3d 1365 (Fed. Cir. 2005) denied patentability to expressed sequence tags (ESTs) because they were "only tools to be used along the way in the search for a practical utility" and, therefore, lacked "an immediate real world benefit" requisite to a finding of "substantial" utility considered mandatory under 35 U.S.C. [section] 101. This holding misconstrues legal precedent and threatens the patentability of many inventions, the benefit of which may be immediate but not fully appreciated until much later. Instead, where the application includes "an assertion of utility and an indication of the use or uses intended" as tools for research, statutory utility should be acknowledged. Patentability based on the benefit of such subject matter should be evaluated under the statutory requirement of non-obviousness under 35 U.S.C. [section] 103, which has its roots in early, broad interpretations of the phrase "new and useful" that first appeared in Section 1 of the Patent Act of 1793.

TABLE OF CONTENTS I. THE HISTORICAL REQUIREMENT OF UTILITY A. Early Jurisprudence B. In re Bremner and Its Legacy: Assertion of Utility and Indication of Use C. Brenner v. Manson: The Modern Standard for Statutory Utility II. FISHER A. Ex parte Fisher B. In re Fisher C. The Relevance of In re Deuel III. ANALYSIS OF FISCHER: OF ELEPHANT PITS AND MICROSCOPES IV. CONCLUSION INTRODUCTION

Utility, or usefulness, has existed as a statutory requirement in patent law since the Patent Act of 1790. (1) Distinct notions of "substantial novelty," also referred to as "comparative or relative utility," as a measure of the merit of invention, and "positive utility," that connoted only capability of use not contrary to "sound morals or policy," developed from the phrase "new and useful" that appears in Section 1 of the Patent Act of 1793. (2)

Upon enactment of the Patent Act of 1952,3 "substantial novelty" became codified as separate requirements of novelty under 35 U.S.C. [section] 102, and non-obviousness under 35 U.S.C. [section] 103. The phrase "new and useful" continued under 35 U.S.C. [section] 101 and questions of compliance generally were limited to assertions of intended use as understood by one skilled in the art reading the specification. Several decisions by the Court of Customs and Patent Appeals prior to Brenner v. Manson (4) held that statements of use of a chemical compound as an object of research were adequate to meet the requirement under 35 U.S.C. [section] 101. As argued strenuously by Judges Rich and Smith, in dissenting opinions to In re Kirk (5) and In re Joly, (6) respectively, the Supreme Court in Brenner, despite broad dicta, decided only that a specification supporting a claim to a process must make a disclosure or "showing" of utility of the product formed by the claimed process, and expressly reserved the question of usefulness in research as a valid utility. Nevertheless, based on the language of the Brenner opinion, usefulness in research subsequently was deemed to be an inadequate basis for establishing "substantial" utility, absent demonstration of a "specific benefit in currently available form," or an "immediate real world benefit."

The United States Court of Appeals for the Federal Circuit, in In re Dane K. Fisher and Raghunath V. Lalgudi, (7) reaffirmed the general understanding of Brenner by holding that expressed sequence tags (ESTs), which are short sequences of nucleic acids derived from a particular genomic source, are "only tools to be used along the way in the search for a practical utility." (8) Consequently, the claimed ESTs lacked a "specific benefit" that "exists in currently available form" which is the "basic quid pro quo contemplated by the Constitution and the Congress for granting the patent monopoly [as] the benefit derived by the public for an invention with substantial utility." (9) Despite the holding by the Federal Circuit, the court acknowledged Fisher's ESTs as "noteworthy contributions to biotechnology research." (10)

In his dissent from the majority opinion in Fisher, Judge Randall Rader argued that the utility requirement should not be used "to reject inventions that may advance the 'useful arts,' but not sufficiently to warrant the valuable exclusive right of a patent." (11) Moreover, as noted by Judge Rader, there was never any contention by the board that Fisher's ESTs were "unable to perform" the utilities asserted. (12) Judge Rader requested the United States Patent and Trademark Office to "seek ways to apply the correct test... , namely inventive step or obviousness." (13)

Judge Rader is not alone in believing that technological advancements should be assessed as a function of obviousness. Scholarship dating back to the early nineteenth century cautioned against confusing "positive utility" and its "degree." (14) Also, Judge Rich, in his extensive dissent from the majority decision in Kirk, stated that "one must be alert, in order to escape mental elephant pits, to avoid being confused by opinions which are dealing not with utility per se, but with the non-obviousness issue... in terms of degree of utility as an indication thereof." (15) Properly construed, under the standard provided for determining obviousness by the Supreme Court and advocated by a recent petition for writ of certiorari and briefs by amici in Teleflex v. KSR Int'l.Co., (16) whereby invention is assessed, not according to the so-called "teaching-suggestion-motivation test" of the Federal Circuit, but in consideration of "one having ordinary skill in the art," ESTs, as well as other inventions, the "immediate real world benefit" of which may not currently be appreciated, can be evaluated in a manner that is capable of acknowledging in a meaningful way Fisher's contribution to the "useful Arts."

1. The Historical Requirement of Utility

   A. Early Jurisprudence

   Bedford v. Hunt et al., (17) is an early case making explicit a threshold requirement of practical utility of a patented invention. Circuit Justice Story, paraphrasing Section 1 of the Patent Act of 1793 (18) stated: "No person is entitled to a patent under the act of congress unless he has invented some new and useful art, machine, manufacture, or composition of matter, not known or used before." (19) Justice Story then specified the meaning of "useful" under the statute:

   By useful invention, in the statute, is meant such a one as may be applied to some beneficial use in society, in contradistinction to an invention, which is injurious to the morals, the health, or the good order of society. It is not necessary to establish, that the invention is of such general utility, as to supersede all other inventions now in practice to accomplish the same purpose. It is sufficient, that it has no obnoxious or mischievous tendency, that it may be applied to practical uses, and that so far as it is applied, it is salutary. If its practical utility be very limited, it will follow, that it will be of little or no profit to the inventor; and if it be trifling, it will sink into utter neglect. (20) Justice Story concluded that satisfaction of the statutory threshold does not rely upon a degree of utility, but rather that it be "capable of use," and not contrary to "sound morals and policy." (21)

   Justice Story employed the same reasoning in Lowell v. Lewis, (22) which, in turn, was relied upon in Kneass v. Schuylkill Bank. (23) Kneass was an infringement suit challenging the patentability of a method for printing both sides of bank notes. (24) The court in Kneass, in response to defendant's allegation that the invention was not patentable because it was worthless, posed the question in reverse: "If the plaintiff's invention correspond substantially with the thing used by the defendants, how can the latter be permitted to say, that the thing so discovered and used is worthless?" (25) Therefore, use by defendants was evidence of utility. The court then recited Justice Story's criteria for utility, whereby an invention meets the statutory requirement if it is not "frivolous or injurious to the well being, good policy, and sound morals of society." (26) Accordingly, early interpretation of the word "useful," as a qualification for patentability, required only that the invention not be frivolous, mischievous or immoral, and use by the public was evidence that the invention was not, in fact, worthless.

   Through the nineteenth century, jurisprudence was essentially in accord with the standard for statutory utility set forth by Justice Story. For example, Phillips, in his 1837 treatise, compared Justice Story's construction of statutory utility with that of Justice Washington, whom Phillips quoted as stating:

   Admit, for the sake of argument, that Perkins's machine, (the one infringed upon,) in the form in which it came from his hands, was so far inferior to the nail machines then in use as to deprive it of all intrinsic value; yet if another person can superadd to that invention something which will remove all its defects, and render it useful, it immediately becomes valuable, not on account of its own qualities, but because of its capacity to receive the improvement, and with its aid to become useful. The original discovery and the improvement become articles of traffic between the two discoverers as soon as the improvement was made, which it was their mutual object to give value to. (27) However, in Justice Story's "more restrained sense," which Phillips cast as "now universally adopted in the United States," (28) an invention that is "pernicious," cannot be made useful absent the presence of an improvement that "diverts the invention...