The 'Essence' of an Invention Is as Important as the Claims

• Author: Jerry A. Riedinger
• Pages: 42-64

Published in Landslide® magazine, Volume 13, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

42 LANDSLIDE n November/December 2020

By Jerry A. Riedinger

The

“Essence”

of an

Invention

Is as

Important

as the

Claims

Image: Blanca Vinas Alcoz, GettyImages

Published in Landslide® magazine, Volume 13, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

“

It is a bedrock principle of patent law,” says the Federal Cir-

cuit Court of Appeals, that “the claims of a patent dene

the invention.”1 And the U.S. Supreme Court agrees: “the

claims made in the patent are the sole measure of the grant.”2

In the words of Judge Giles Rich, an author of the U.S. Patent

Act of 1952, “the name of the game is the claim.”3

But it is not so. Time and again, district courts, the Fed-

eral Circuit, and even the Supreme Court have disregarded

claim language in favor of a concept variously termed the

“essence,” “gist,” “heart,” or “thrust” of the invention; the

“essential features” of the invention; or a patent’s “inventive

concept.” All such terms refer to a fundamental notion: a pat-

ent has at least one central idea representing the patent’s core

advancement. Saying “there is no legally recognizable or pro-

tected ‘essential’ element, ‘gist’ or ‘heart’ of the invention”4

thus obscures the reality that the “essence” of the invention

permeates the patent world. Indeed, evaluating a patent’s

essence or “inventive contribution” is not merely common,

but sometimes required by the law. Understanding the role of

a patent’s “essence” is therefore indispensable for effective

patent practice, whether as a litigator, prosecutor, or advisor.

The Heart of Patentable Subject Matter

Abridging the claims is central to modern patentable subject

matter analysis. Virtually all patent practitioners have rst-

hand experience with the revolution created by Mayo5 and

Alice6 and the wreckage of issued patents resulting from those

cases. That destruction means virtually every defendant will

include a § 101 review in their initial case analysis, and virtu-

ally every patent prosecutor will consider patentable subject

matter questions in planning an application. Each such analy-

sis requires disregard of much of the language and features of

a patent’s claims, and focusing on their crux.

The foundation of modern § 101 law is a court’s ability

to reduce claims to a shorthand description of an underly-

ing abstract “concept.” Hence, every § 101 review begins not

by looking at a claim’s elements, but by distilling a patent’s

entire set of claims into their “heart”7: a truncated phrase that

removes nearly all claim features, leaving a residue bear-

ing little resemblance to the language chosen by the patent

drafter. The Federal Circuit thus looks at “their character as

a whole” when reviewing the claims for § 101 compliance.8

The patent is then probed for an “inventive concept,” indeed,

a “transformative” inventive concept,9 in only partial consid-

eration of claim elements—the Federal Circuit requires the

“abstract concept” and “inventive concept” to be separate,

and mandates unpatentability if an “inventive concept” is

found solely in the claims’ “abstract concept.”10

This approach undermines decades of anticipation and

obviousness law founded on consideration of every claim ele-

ment.11 Indeed, § 101 is a shortcut that allows patents lacking

an inventive concept to be invalidated at the pleading stage,

often without any claim construction determining the mean-

ing—or importance—of individual claim elements. The core

of that process is the ability to ignore the plethora of terms,

phrases, and other limitations in the claims by recasting the

claims as “directed to” an abstract idea. Once the baggage of

multiple limitations is cast aside and the claims are reduced

to a suitably simple idea, little effort is required to declare an

absence of an inventive concept, a result that is achieved with

far less effort than if every claim limitation were considered.

And not just individual claim limitations are ignored. Sec-

tion 101 law allows a single claim to be “representative” of every

other claim in a patent, in disregard of the long-standing prin-

ciple that different claims have separate meanings.12 Should the

representative claim be found to lack an inventive concept, that

deciency may then invalidate all other disputed claims. And

should a method claim be deemed representative and found de-

cient under § 101, even supposedly represented product claims

may be invalidated.13 Claims are not just secondary in § 101 law,

but often irrelevant. Any § 101 analysis failing to focus on the

advance, i.e., the inventive contribution, will be decient.

The Gist of Patent Exhaustion

Section 101 cases are far from the sole example of courts studi-

ously disregarding claim language. The Supreme Court’s 1942

Univis14 decision analyzed alleged antitrust violations by evalu-

ating whether a product “embodied the essential features” of a

patent. When Univis was embraced more recently in Quanta,15

the Supreme Court proclaimed exhaustion of patent rights

through sale of a product that could not infringe the patent, but

which again “embodied the essential features” of the patent.

The protection sought by crafting details into claims can thereby

be vitiated by sale of a product having less than all the care-

fully selected elements. Understanding potential exhaustion thus

requires determining what features are essential—in disregard

of the “all elements rule”16—and how those features can be sub-

stantially “embodied” in a product lacking some of the claimed

elements. While the Supreme Court’s explanation of exhaustion

has been less than Delphic, the “essential features” of a patent

are nevertheless a form of the “gist” of the invention, mak-

ing detection of a patent’s essence a critical skill. Only then can

exhaustion be accurately predicted or avoided.

The Heart of the Federal Circuit

Despite expressly and repeatedly condemning the “essence,”

“gist,” and “heart” of the invention, the Federal Circuit has

used those exact terms in multiple decisions throughout its

existence.17 The phrases were used to analyze wide-ranging

subjects, including obviousness,18 claim construction,19 pre-

amble interpretation,20 and various validity-related topics.21

The court in each case found the condensed phrase useful to

explain its reasoning. Even Chief Judge Markey, a staunch

opponent of the “gist” of an invention, stated that review of

“the ‘gist’ or ‘essence’ of the invention may be appropriate,” at

least to determine priority of invention.22 The U.S. Patent and

Trademark Ofce’s use of the “essence” of the invention in the

MPEP23 supports such decisions, and the Supreme Court may

have spurred an acceleration of such cases when it found the

“heart” of the invention a useful concept in Markman.24

Jerry A. Riedinger is a partner in the Seattle, Washington, ofce of Perkins Coie LLP. He has focused his practice on patent litigation

since 1982 and has practiced in more than 100 different technologies. He can be reached at jriedinger@perkinscoie.com.