By Jason Rantanen
In preparing for a talk on recent developments in patent law that I’m giving in a few days at the Salishan Patent Conference, I went back and reread Judge Dyk’s opinion concurring in the Federal Circuit’s denial of rehearing en banc in Sequenom v. Ariosa (available here: 14-1139.Order.11-30-2015.1). In my view, he hits the nail on the head with this one, framing the patent eligible subject matter issue as an issue of claim breadth. I find his discussion particularly appealing because unlike many conventional critiques of the Supreme Court’s Mayo/Alice framework, Judge Dyk acknowledges that patent law is not limitless, and that patentable subject matter should not be completely unbounded, subject only to the constraints of §§ 102, 103 & 112. Accepting this proposition frees Judge Dyk to articulate a conceptually coherent approach to patentable subject matter in the context of discoveries of natural laws, one that allows for valid claims in this space but which still imposes limits on what can be claimed. When discovery of a natural law supplies the innovative aspect of the invention, Judge Dyk writes, claims should be limited to what the inventor has actually done:
This approach appears also to be supported by Morse. The Supreme Court established in Morse that the extent to which a patentee can claim is the extent to which he has actually made some concrete use of the discovery and reduced it to practice. “The specification of this patentee describes his invention or discovery, and the manner and process of constructing and using it; and his patent … covers nothing more.” Morse, 56 U.S. at 119. Limiting patentees to narrow applications they have actually developed and reduced to practice would be in keeping with Mayo ‘s commandment that “simply appending *1292 conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.” Mayo, 132 S.Ct. at 1300 (emphasis added).
This proposed approach, limiting the scope of patents based on new discoveries to narrow claims covering applications actually reduced to practice, would allow the inventor to enjoy an exclusive right to what he himself has invented and put into practice, but not to prevent new applications of the natural law by others.5 This would ensure that the scope of the patent claims would not “foreclose[ ] more future invention than the underlying discovery could reasonably justify.” Id. at 1301. Limiting the scope of the patent also would avoid the problem that “the more abstractly [a process patent’s] claims are stated, the more difficult it is to determine precisely what they cover.” Mayo, 132 S.Ct. at 1302 (quoting Christina Bohannan & Herbert Hovenkamp, Creation without Restraint: Promoting Liberty and Rivalry in Innovation 112 (2012)).”