O'REILLY V. MORSE AND CLAIMING A "PRINCIPLE" IN ANTEBELLUM ERA PATENT LAW.

AuthorMossoff, Adam

CONTENTS INTRODUCTION I. MORSE TODAY: SAMUEL MORSE AS TELECOMMUNICATIONS MONOPOLIST II. A CLAIMED PRINCIPLE IN ANTEBELLUM PATENTS AND IN MORSE A. Claiming the Principle of an Invention in Early U.S. Patent Law B. Morse Used Principle Claiming in his Patents to Secure His Invention III. A CLAIMED PRINCIPLE IN ANTEBELLUM PATENT LITIGATION AND IN MORSE A. Infringement of a Principle in Antebellum Era Patent Cases B. Morse Sought to Secure the Principle of His Invention in His Lawsuit Against O'Reilly C. The Motivation and Meaning of Claim Eight in Morse's Reissue Patent 117 IV. JUDICIAL OPPORTUNISM IN MORSE, NOT INVENTOR OPPORTUNISM A. Lack of Legal Support for Chief Justice Taney's Opinion in Morse B. Chief Justice Taney's Reputation for Policy-Driven Judicial Decision-Making CONCLUSION INTRODUCTION

Samuel Finley Breese Morse initiated the telecommunications revolution with his invention of the first functional electro-magnetic telegraph in the 1830s. (1) For the first time in human history, communication of information over long distances was no longer inexorably tied to the speed of horses or ships, or clumsily telegraphed short distances by smoke or flags. (2) Information traveled as fast as electricity. Morse's telegraph was heralded at the time as the "Lightning Line" and Morse himself was called the "Lightning Man." (3) But Morse also casts a long shadow over the United States patent system, or, more precisely, Chief Justice Roger B. Taney casts this shadow with his 1854 opinion in the seminal case of O'Reilly v. Morse. (4)

In Morse, Chief Justice Taney invalidated a portion of Morse's primary patent on his invention of the electro-magnetic telegraph on the ground that Morse aggrandized control over communications technologies in his patent far beyond what he had in fact invented. (5) Similar to the telecommunications revolution born of Morse's invention, Chief Justice Taney's Morse opinion has been a fountainhead decision in U.S. patent law whose effects are felt to this day. (6)

Judges and scholars largely agree that Morse was correctly decided. There is a legalistic dispute about what specific rule in patent law was applied in the case, whether it was a problem with Morse claiming an unpatentable abstract idea or his failing the enablement requirement, (7) but this is what William Blackstone would call a debate of "scholastic refinement." (8) Morse is recognized as a foundational case that reached the right decision. (9) It is in law school casebooks (10) and treatises. (11) Modern courts continue to cite it as authoritative precedent. (12) Morse was extensively discussed and debated by the Court of Appeals for the Federal Circuit in a decision that applied its rule to a patent on a new method of making an automobile axle, holding that it was an invalid claim to abstract idea. (13) The Supreme Court continues to cite Morse as controlling precedent in patent eligibility cases, especially in its recent decisions addressing the patentability of modern innovations such as computer software programs and biotech-based medical tests. (14)

Such universal approbation obscures an important truth: It is an anachronism. It is anachronistic for at least two reasons. First, it fails to account for significant differences in U.S. patent law between the Antebellum Era and today, especially in the key difference in the nature and function of how an inventor claimed in a patent what was one's invention. Second, once this legal context is established, it then fails to account for how Chief Justice Taney did not follow this settled legal practice in patent law in the Antebellum Era, even given the evolving, embryonic nature of U.S. patent law in the early nineteenth century. In sum, there is a profound misunderstanding of the denouement of the "Telegraphic War in the West" in Chief Justice Taney's Morse opinion in 1854. (15)

In reviewing rediscovered primary source materials, including the Supreme Court's case record for Morse, this article places Chief Justice Taney's Morse opinion within its proper historical and legal context. First, it describes the conventional wisdom that Morse was a would-be monopolist who attempted to aggrandize to himself telecommunications technologies far beyond the electro-magnetic telegraph he invented in the 1830s. Second, it details the early nineteenth-century legal practice in patent law in which patent claims secured the essential "principle" of an invention, as distinguished from the peripheral claims today that define the boundaries of the property right in an invention. Once this legal context is established, it is clear that Morse's patents on the electro-magnetic telegraph followed this legal practice in securing the principle of his invention. This article identifies this as "principle claiming," as opposed to the anachronistic label of "central claiming" used by lawyers today. Third, it identifies how principle claims were asserted in patent infringement cases in the Antebellum Era, and how Morse again followed these practices. Finally, the Article concludes by identifying the legal, historical, and political evidence, including related telegraph patent cases decided by Supreme Court Justices and other patent cases, such as Winans v. Denmead, (16) in showing how Chief Justice Taney departed from legal norms in invalidating Claim Eight of Morse's patent. The historical and legal record suggests that judicial opportunism, not inventor opportunism, may be the real lesson of Morse.

  1. MORSE TODAY: SAMUEL MORSE AS TELECOMMUNICATIONS MONOPOLIST

    Morse is more famous today for his invention of a telegraphic transmission code--the dots and dashes known as Morse Code--than for his invention of the electro-magnetic telegraph. The simplicity of both Morse Code and the components comprising his electro-magnetic telegraph were innovative achievements that complemented each other, producing the first functional and successful telegraphic system for transmitting information over long distances. The fruits of Morse's inventive labors were an advance over competing telegraph systems consisting of either complicated machines that malfunctioned or complicated signaling systems that were slow and prone to errors, none of which were desirable features for a long-distance communications system. (17) What Morse invented and what he described and claimed in his patent as his invention are not necessarily the same thing, and this is the crux of Morse and the narrative today--Morse's failure was one of law and policy, not of his rightful claim as the inventor of the electro-magnetic telegraph he developed in his tenement in New York City in the 1830s.

    Chief Justice Taney is clear in Morse that the problem is Claim Eight in Morse's patent. Chief Justice Taney affirms in a single sentence Morse's first seven claims, (18) including Claim Five, which covered Morse's invention of the binary, dot-and-dash communication language eponymously identified as Morse Code. It is Claim Eight that becomes the subject of Chief Justice Taney's focus in Morse. It is the only claim that he quotes in the opinion:

    Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electromagnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer. (19) Chief Justice Taney's negative reaction is palpable. "It is impossible to misunderstand the extent of this claim," he writes. (20) He further explains:

    [Morse] shuts the door against inventions of other persons.... For he says he does not confine his claim to the machinery or parts of machinery, which he specifies; but claims for himself a monopoly in its use, however developed, for the purpose of printing at a distance.... The court is of opinion that the claim is too broad, and not warranted by law. (21) His condemnation of Morse as a would-be monopolist whose too-broad Claim Eight encompassed within his legal control more than what he had invented has been the patent law equivalent of the face that launched a thousand ships. It is the foundation for the rule in patent eligibility doctrine that inventors may not receive a patent on an abstract idea, (22) which has been applied in recent years in hundreds of cases in which hundreds of patent claims have been invalidated. (23)

    Some judges and scholars argue that Morse was not applying the legal rule prohibiting the patenting of abstract ideas. Rather, they contend that Chief Justice Taney's concern about a claim being "too broad" meant that Morse did not effectively describe and teach others how to make and use all of the inventions covered by Claim Eight. (24)

    This separate view of Morse is a distinction without a difference. Regardless whether Morse is viewed as precedent for enablement doctrine or patentable eligibility doctrine, the major premise is the same: the case was correctly decided. All agree that Morse was attempting to monopolize in his patent the field of electronic telecommunications far beyond what he had actually invented himself.

    The conventional wisdom about Morse--Morse as monopolist--is usually framed in one of two ways. On the one hand, some claim that Morse's "eighth claim would have covered analog and digital data transmissions, telephonic and satellite communications--indeed, electronic communications of all types." (25) Professors Christina Bohannam and Herbert Hovencamp proclaim that "Morse was trying to commandeer all future technologies for accomplishing something." (26) On the other hand, some scholars reject exaggerated allegations about the scope of Claim Eight, if only because the express terms used in Claim Eight limit it to only telecommunications...

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