THE MYTH OF WELL-SETTLED RULES IN MERRILL V. YEOMANS.

• Author: Duffy, John F.

CONTENTS INTRODUCTION I. MERRILL V. YEOMANS AND THE PROPER FORMAT FOR COMPOSITION OF MATTER CLAIMS II. DEVELOPMENTS AFTER MERRILL: CONTINUED UNCERTAINTY IN CLAIMING III. A CONTEMPORANEOUS SOLUTION TO UNCERTAINTY: THE MULTIPLICITY OF CLAIMS CONCLUSION: MATCHING PATENT RIGHTS TO WHAT WAS "REALLY INVENTED" INTRODUCTION

The Supreme Court's decision in Merrill v. Yeomans (1) is widely and correctly viewed as a watershed case in which the Court first announced that the "distinct and formal claim" has "primary importance" in determining "precisely what it is that is patented." (2) But the reasoning of the case relied on a pernicious myth that the patent system of the era contained such "well-settled rules" as to "leave no excuse for ambiguous language or vague descriptions" in textual descriptions of inventions. (3) Merrill's myth has had unfortunate consequences, with courts occasionally placing unrealistic demands upon inventors--and, really, inventors' attorneys--to write claims with a degree of clarity that is often impossible given the technological and legal knowledge at the time of patenting.

Merrill was an early Supreme Court patent decision in which the outcome turned on a proper construction of the language in a patent claim, which was then a relatively new legal innovation for demarcating intellectual property rights that had been required by statute for less than a half century. (4) The claim asserted by the patentee may have been inartfully drafted (though more on that later), and patentee argued that the Court should give the claim "a liberal construction" that might counterbalance the deficiencies in its drafting. (5) The Court refused to do so, and as one reason, it expressly relied on the progress achieved in patent law in prior years. (6)

"The growth of the patent system in the last quarter of a century in this country has reached a stage in its progress where," the Court believed, "[i]t is no longer a scarcely recognized principle, struggling for a foothold, but it is an organized system, with well-settled rules, supporting itself at once by its utility, and by the wealth which it creates and commands." (7) That "developed and improved condition of the patent law" left "no excuse for ambiguous language or vague descriptions" in patents. (8) The Court believed that the "progress" in, and "improved condition of," patent law and its "well-settled rules" justified, the limiting construction that it gave to the patentee's claim. (9)

This essay reexamines the claim of "progress" and "well-settled rules" in patent law and advances three points. First, at a basic level, the Merrill Court was clearly correct that the law in general does exhibit progress, and in patent law, that progress has been particularly rapid in the last two centuries. Patent claims are but one example. Two hundred years ago, patent claims were optional curiosity--a recent innovation of patentees' attorneys who were seeking to define their clients' rights broadly, beyond the particulars of the inventive embodiments disclosed in the drawings and descriptions of the rest of the patent document. Today, claims are a requirement of patent documents worldwide, and they serve an important role in defining the scope of the intellectual property rights granted by a patent. The practice of claim writing is now sufficiently developed that identical or nearly identical claims help demarcate rights across multiple countries. (10)

Second, the Merrill Court was clearly wrong to the extent it was asserting that the patent system at that time had "well-settled rules" about the precise issue before the Court in the case. The Patent Office had literally no rules relevant to the claiming issue relevant in Merrill. The Patent Office's "Rules and Regulations" of the era did not even bother to list "claims" as a distinct part of the patent application, even though the rules did contain distinct rules for the "Drawings," the "Model," and the "Specification" generally. Moreover, to the extent the Patent Office's rules addressed the formatting of claims--which was the center of the controversy in Merrill--they did so only in a short appendix of exemplary claims, and the example most relevant to the issue in Merrill had the same structural issue that the Court faulted the patentee in Merrill for having. In sum, while correct in thinking that patent law was developing and progressing, the Court badly overestimated the degree of progress that the law had made by the time that the patent in Merrill had issued.

A third conclusion is that progress in the law of claiming has occurred only slowly and in a highly decentralized manner. Finding well-settled rules in the nineteenth-century law on patent claiming is difficult because almost every aspect of claiming, or at least every substantive aspect of claiming, was still in flux for decades after the Court's decision in Merrill. The development of patent claiming practice appears to have been driven in the first instance by practitioners themselves experimenting with different stylistic and substantive formats. The Patent Office may have had the power to enforce uniformity, but it rarely did. And, even where the Patent Office did guide the practice, that guidance was not immune from being later upset by judicial decisions (quite possibly including the Merrill decision). The multiplication of claims--a development frequently, and to some extent correctly, decried as undermining the certainty of property rights that claims were supposed to provide--is a predictable and rational response by attorneys to the uncertainty surrounding claiming practice that both preceded and followed Merrill.

1. MERRILL V. YEOMANS AND THE PROPER FORMAT FOR COMPOSITION OF MATTER CLAIMS.

   The patent in Merrill v. Yeomans was issued on May 18, 1869. (11) The first sentence in the patent declares that the inventor Joshua Merrill has "invented a new and improved Manufacture of Deodorized Heavy Hydrocarbon-Oils, suitable for lubricating-oils, or for curriers' use." (12) The key ambiguity in that portion of the sentence lies in the word "Manufacture," which could mean either the product manufactured or the process for manufacturing. That ambiguity continues throughout the patent into the patent's first claim, which reads:

   I claim-- [t]he above-described new manufacture of deodorized heavy hydrocarbon-oils, suitable for lubricating and other purposes, free from the characteristic odors of hydrocarbon-oils, and having a slight smell like fatty oil, from heavy hydrocarbon-oils, by treating them substantially as hereinbefore described. (13) In the litigation, which commenced on March 25, 1870 (less than a year after the patent was issued), the plaintiff asserted that "manufacture" referred to a product. (14) The defendants claimed it was directed only to a process for making the deodorized oil and that they could not be held liable for infringement because they were not using that process. (15)

   The Court began its analysis with the correct observation that "[t]he word 'manufacture' in this sentence is one which is used with equal propriety to express the process of making an article, or the article so made." (16) The Court also noted that, "if all which is described as new in these specifications is really so," the inventor had made sufficient advances to have "a right to a patent for three inventions:-

   1. For a modification or improvement in the distilling apparatus.

   2. For a new process or mode of distilling heavy hydrocarbon oils, by which they are deprived of their offensive odors.

   3. For the product of this new process of distillation; namely, the deodorized heavy hydrocarbon oils fitted for use in the arts." (17)

   The first of these three potential inventions (the improved distilling aparatus) was covered the patent's second claim, but that claim was not asserted as being infringed. The difficulty in the case was whether the patent's first claim to the "manufacture" covered the second or third of the Inventions listed by the Court--i.e., covered the process or the product.

   To resolve the ambiguity, the Court relied mainly on three arguments, which will be covered here in descending order of persuasiveness. The Court's first and best point concerned the language of the claim itself, which concludes with what appears to be a process step--"by treating [the hydrocarbon oils] substantially as hereinbefore described." (18) The Court thought that the inclusion of such a process step resolved the ambiguity so that "the most natural meaning" of the claim language was "I claim this new mode of manufacturing hydrocarbon oils, by treating them as hereinbefore described." (19) That is the Court's best point, although the language could more naturally be read to mean that the patentee was trying to claim what modern patent practitioners call a "product-by-process" claim, which is a claim directed to a product but only if that product is made by a certain specified process. (20) The trial court in Merrill had adopted that interpretation, (21) but because the oils sold by the defendants in the case "were produced by a process very different from that described [in the patent]," (22) Merrill still lost his infringement case at trial. Thus, on appeal to the Supreme Court, Merrill's counsel "disclaim[ed]" the trial court's interpretation that the claim covered only a product produced by the process described in the patent. (23) That disclaimer forced the Court to choose between reading the claim as a pure product claim or a pure process claim, and given that choice, the Court was probably correct that the latter reading is supported the inclusion of the process step in the claim language.

   The Court next advanced contextual arguments based on the language in the rest of the specification. One sentence in the specification declared that Merrill's "invention will be used ... to produce the deodorized heavy oils above described." (24) In that sentence, the...