Wyeth v. Stone: Art or Principle in the Abstract

by Dennis Crouch

In ChargePoint, the Federal Circuit discussed the 19th Century patent case of Wyeth v. Stone, 30 F. Cas. 723 (C.C.D. Mass. 1840) (Justice Story).

The case involved a patented ice-cutting invention created by Nat Wyeth who was known to have invented “practically every implement and device used in the ice business.” The disputed patent in the case issued in 1829 and is now identified as No. X5,405. The drawings appear to be lost to history, probably in the 1836 Patent Office Fire. By 1840, Joseph Story had been on the Supreme Court for almost 30 years.  At that time, however, the Justices “rode circuit” to hear local cases such as this one.

According to Justice Story, the patent document describes a new and useful invention whose closest relative may be a carpenter’s plough.  Story walks through some of the differences that he found sufficient to distinguish the two.  However, the patent itself asserts a much broader claim.

‘It is claimed, as new, to cut ice of a uniform size, by means of an apparatus worked by any other power than human.’

As Justice Story explains, that claim is for “exclusive title to the art of cutting ice by means of any power, other than human power.”  Such a broad claim — abstracted from “any particular method or machinery” — is not patentable but rather is an unpatentable “art or principle in the abstract.”

No man can have a right to cut ice by all means or methods, or by all or any sort of apparatus, although he is not the inventor of any or all of such means, methods, or apparatus. A claim broader than the actual invention of the patentee is, for that very reason, upon the principles of the common law, utterly void, and the patent is a nullity.

Notice the explanation that Justice Story used here — no one can have a claim this broad – to all means or methods — unless the person invented “any or all of such means, methods, or apparatus.”  Thus, although the courts have cited Wyeth on eligibility grounds, the case might be better seen as a source for written description doctrine.

In addition to the abstract principle claim, the patent document further claims the “particular method of the application of the principle” described in the specification.  Applying the latin maxim “ut res magis valeat, quam pereat,” Justice Story interpreted the patent to more narrowly cover the machines described (the cutter and saw).  “Although inartificial”, the specification could be “reasonably interpreted” so in a court of equity (although not upon the principles of common law).

The Federal Circuit has written about Wyeth in a number of cases — focusing upon the “results oriented” claims that end up encompassing an abstract principle. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. 2018); ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019).

48 thoughts on “Wyeth v. Stone: Art or Principle in the Abstract

  1. 9

    Anyone else feel like Dennis intentionally buries eligibility related posts?

    1. 9.1

      Are you kidding?

      1. 9.1.1

        Remember when Bildo was obsessed with “perception of biss”?

        I do.

        For what it’s worth, I don’t feel like Dennis buries his eligibility posts. I do wish he would bury some of them, though, because they are awful takes on the subject with misleading titles that feed into the worst narratives out there.

        [shrugs]

        1. 9.1.1.1

          For what it’s worth, I don’t feel like Dennis buries his eligibility posts

          So… you agree with me.

          Funny it is the way that you do so.

  2. 8

    Isn’t this decision here about what the Sup. Ct. now calls “preemption” claiming? Note Bilski v. Kappos and Mayo v. Prometheus. In Bilski, the Court pointed out that to allow “petitioners to patent risk hedging would pre-empt use of this approach in all fields.” And in Prometheus, the Court at the outset found the claims at issue failed the “inventive concept” test, yet went on to invoke preemption by stating that “upholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries.”
    Reportedly some Federal Circuit panels since Bilski have relied on preemption as a test for delineating the boundaries of subject matter eligibility.

    1. 8.1

      Friendly reminder that the “pre-emption” issue isn’t about the effect of the specific claim at issue but rather about the problem created in general by permitting abstract concepts (i.e., fundamental building blocks of knowledge) to be protected in tangible prior art contexts.

      This is not a difficult concept. At least it shouldn’t be difficult for an attorney, assuming the attorney didn’t spend the entiret of law school being tongue-bathed by a know-nothing Federalist Society g-o-o-n.

      1. 8.1.1

        the problem created in general by permitting abstract concepts (i.e., fundamental building blocks of knowledge) to be protected in tangible prior art contexts

        What are you smoking?

        1. 8.1.1.1

          Nothing. I did have some good barbecued ribs last night, though.

      2. 8.1.2

        … the « pre-emption » issue … is about the problem created in general by permitting abstract concepts (i.e., fundamental building blocks of knowledge) to be protected in tangible prior art contexts.

        How do you distinguish a fundamental block of knowledge from a block of knowledge that is not fundamental?

        In Parker v. Floor, what would have been the problem with letting the applicant obtain patent protection on something as narrow as updating alarm limits with a linear law in the context of catalytic converters? (Other than selecting a particular known law could be obvious)

        The fact that a ball can roll on irregular surfaces could be considered fundamental by some. Does this imply that the ball pen should not have been eligible for patent protection ?

        1. 8.1.2.1

          What was that Supreme Court about how at their respective core, every invention “invokes” or “involves” a Law of Nature…?

          Show me an invention that does not, and I will show you an invention that cannot exist in this universe.

  3. 7

    The reality is that functional claiming is the only way to claim an invention with all the solutions available today.

    The fact is that every real person that works in these technologies will tell you this.

    The fact is that scope of enablement is the proper scope.

    The fact is that patent law for a long time has a way to deal with the situation where an accused device falls within the literal scope of the claims, but operates in quite a different way.

    There simply is no problem but the ones that are generated by the judiciary to weaken patents.

    1. 7.1

      The other thing about this is that the starting point has to be that functional claiming is how people in the art fields work. Full stop.

      As I have said and as I have provided detailed examples it is not possible to put all the possible solutions that are enabled by the application into the specification or the claims.

      Anything that does not acknowledge these fundamental truths is disingenuous and worthless as anything other than a way to try and weaken patents.

    2. 7.2

      The fact is that every real person that works in these technologies will tell you this.

      This is… not true. Read what the actual engineers working in the field have to say about software patents.

      1. 7.2.1

        The engineers are talking about patents. Not functional claiming or descriptions. Go to elance and look at how the programs are specified. By functional means.

        Read books. Talk to engineers. Etc.

        The coin of the realm is functional descriptions that correspond to enabled solutions. That is how engineers think and write about machines. Mechanical engineers do the same thing.

        1. 7.2.1.1

          “That is how engineers think and write about machines.”

          To me it sounds more like how sales/management talks to engineers.

          1. 7.2.1.1.1

            Well, Night Wiper is definitely trying to sell you something.

        2. 7.2.1.2

          Most more-than-halfway-intelligent engineers understand that most software patents are total g-a-r-b-a-ge.

          Most of the rest of them don’t even know what a claim is, or how to understand them. (<— definitely NW is in this category)

  4. 6

    Do you have a link to the case itself, Dennis?

  5. 5

    Thus, although the courts have cited Wyeth on eligibility grounds, the case might be better seen as a source for written description doctrine.

    As I’ve mentioned before, WD is a relatively recent “discovered” requirement of 112(a) and hasn’t been endorsed by the Supreme Court. The common thing to do in the past was to trap the claims between the “point out and particularly claim” requirement of what is now 112(b) and the judicial exceptions to 101.

    Consider the instant claimset – this was a pre-means-plus claim, but assume the argument was “The claim should be construed to cover the machinery described in the specification.” In that case, the claim fails under 112(b), because the language of the claim fails to point out and particularly claim the invention described in the spec. Conversely, when the construction of “all machinery, regardless of means” is asserted it becomes a function claim unbounded by particular means which is (even though the federal circuit has not yet identified this) inherently ineligible.

    Instead, the federal circuit created the WD test, which is inherently inferior to achieve the purposes explained here and in Morse. Using the WD test, it is insufficient to point out that the claim is not limited by means, and instead there has to be an analysis about whether the disclosed spec examples “fill the breadth” or “fill the scope” of the claimed genus. The problem with this analysis is that it requires one to know what one does not know. A person who invents the bow may honestly believe that they have invented all means of firing a projectile. It is only the later distinct means of the gun that proves the bow as insufficient to fill the breadth. Consequently, unless the office counter-invents within the scope, the claim will issue and be imbued with presumptive validity, which now makes it even harder to put forward facts which meet the WD test.

    Conversely, when the claim is analyzed under 101 its entirely discernable within the specification itself whether the claim is valid (“Does the spec foreclose the possibility of any other distinct means that would fall within the claim scope?” An answer that is, for practical purposes, always “No”) and the burden is placed where it should be – on the inventor to show that the scope claimed has some bearing to what was actually invented.

    WD has its uses – largely as a handholding device for people incapable of grasping one of the functions of the judicial exception test – but its not a very good test. Everyone agrees that an inventor should only get the scope of what the inventor invented, but the WD test does not actually protect against an inventor simply boiling down the invention to describing the utility of the invention in a novel manner and expanding their scope beyond the invention.

    1. 5.1

      As I’ve mentioned before, WD is a relatively recent “discovered” requirement of 112(a) and hasn’t been endorsed by the Supreme Court.

      And? It is relatively recently “discovered” because it was relatively recently codified. In O’Reilly v. Morse the Supreme Court articulated a very good and sensible limitation to what a patent can cover. In 1952 the Congress—recognizing the salutary nature of this common-law limitation—codified it in the first paragraph of §112. Now that the statutory text “written description” has become the focus by which Congress maintained this limitation in the warp and weave of U.S. patent law, that is the means by which this limitation must be (can be) enforced.

      The common thing to do in the past was to trap the claims between the “point out and particularly claim” requirement of what is now 112(b) and the judicial exceptions to 101.

      Great. That was the common thing to do before the 1952 Act retained certain features of the earlier common law of patents and excised other features. Now that the law has been codified, the old ways are relevant insofar as the codification carried them over, and irrelevant insofar as the codification excluded them. “Written description” in §112(a) is the text by which the Morse restriction was carried through the 1952 bottle neck, and therefore “written description” (and enablement) are the means by which this restriction should be applied (when relevant, or not applied where not relevant, according to the statutory text).

      Consider the instant claimset – this was a pre-means-plus claim, but assume the argument was “The claim should be construed to cover the machinery described in the specification.” In that case, the claim fails under 112(b), because the language of the claim fails to point out and particularly claim the invention described in the spec.

      I do not really disagree with your analysis of the claim set here, but I would suggest that it is not particularly helpful to transpose claims from an age when the U.S. had a “central claiming” regime, and then analyze them according to our modern, “peripheral claiming” laws. Indeed, at the time that this patent granted, there was not even a legal requirement for claims at all, so to speak of “claims” in this patent is problematically anachronistic.

      Instead, the federal circuit created the WD test, which is inherently inferior to achieve the purposes explained here and in Morse.

      Inferior or not, the CCPA “created” the WD test in recognition of the fact that the Congress codified a written description test for the CCPA to apply. I happen to think that WD is actually a better test than “abstract idea,” but better or worse is almost irrelevant. It is the Congress who is entrusted by our agreed-upon constitutional allocation of powers to set the standards. The Congress wrote “written description,” but did not write “abstract idea,” so there is adequate legal warrant to apply a “written description” test and not adequate legal warrant to apply an “abstract idea” test.

      Using the WD test, it is insufficient to point out that the claim is not limited by means, and instead there has to be an analysis about whether the disclosed spec examples “fill the breadth” or “fill the scope” of the claimed genus.

      Hm, if you say so. The test works fine in my end of the technology space. Seems to me that it would work fine in your end as well, if only people wanted to make it work. In other words, the problem is not with the test, but rather with the arbiters. Meanwhile, the new Iancu guidance shows that even your putatively preferable test can be bent out of all recognition if the arbiters want to do so. In other words, it looks to me less that the WD test is inherently inferior to the “abstract idea” test, and rather that the arbiters of compliance just want the rules of both tests to bend for one particular art field.

      1. 5.1.1

        In 1952 the Congress—recognizing the salutary nature of this common-law limitation—codified it in the first paragraph of §112. Now that the statutory text “written description” has become the focus by which Congress maintained this limitation in the warp and weave of U.S. patent law, that is the means by which this limitation must be (can be) enforced.

        Except it wasn’t “discovered” in 1952. It was “discovered” around 2000 when the federal circuit realized that it was entirely untenable to have enablement be the sole mechanism by which overbreadth was policed, which is what their ignorance of the proper role of 112(b) and the judicial exceptions caused. Besides, even if you’re correct that the WD language was caused by the Morse logic, that would suggest that the WD test should be the test articulated in Morse. Instead it became a “Look if defendants ignore the patent and are willing to risk infringement with a means that we post-hoc decide is ‘distinct’, we might let them cancel the claims.”

        Now that the law has been codified, the old ways are relevant insofar as the codification carried them over, and irrelevant insofar as the codification excluded them.

        The language between pre-1952 and post-52 112(b) is virtually the same, so under this logic, 112(b) should still operate to invalidate claims that claim functionality absent particular means (i.e. means-plus is not only permissible, but mandatory), so preserved codification is not a strong argument against invalidating novel functional claiming.

        Inferior or not, the CCPA “created” the WD test in recognition of the fact that the Congress codified a written description test for the CCPA to apply.

        This is neither here nor there. If you want the Supreme Court to take the Alice test, rebrand it as “The Written Description Test”, and say there’s textual support for it because “WD was codified” then you’ll end up with the same complaints from the same people. The underlying question is “Who bears the burden of supporting the inductive leap between a described species and a claimed genus?” and the Supreme Court has always placed that burden on the patent applicant, and no act of Congress has ever said otherwise. Not so of the WD formulation by the federal circuit, which requires the public provide extrinsic evidence of overbreadth at every stage of the patent process.

        The test works fine in my end of the technology space.

        Only because your technology space thinks it knows its basic rules – which it may or may not – and which is kind of arrogant considering we can’t even get gravity right, let alone more particular relationships. If tomorrow it was discovered that bonds could be made in a manner previously unknown or connecting elements previously unconnectable, every independent claim in your *entire field* would be overbroad. You’re a bunch of bow users waiting for the gun to possibly drop. My field is only “not fine” because it is more blatantly obvious that people haven’t thought of all logic that could ever exist.

        I will agree that my field could be improved by actually, you know, applying one of the overbreadth tests, even if it is the inferior one. But I don’t see why we should metaphorically toss our claims in the river to see if they are witches when we have a perfectly fine courthouse sitting right down the road.

        1. 5.1.1.1

          Except it wasn’t “discovered” in 1952. It was “discovered” around 2000 when the federal circuit realized that it was entirely untenable to have enablement be the sole mechanism by which overbreadth was policed, which is what their ignorance of the proper role of 112(b) and the judicial exceptions caused.

          Appellants refer to 35 U.S.C. § 112 as the presumed basis for this rejection and emphasize language therein about enabling one skilled in the art to make the invention, arguing therefrom that one skilled in the art would be enabled by the specification to make chlorpropamide. We find the argument unpersuasive… [W]e doubt that the rejection is truly based on section 112, at least on the parts relied on by appellants. If based on section 112, it is on the requirement thereof that “The specification shall contain a written description of the invention.” (Emphasis ours.)

          In re Ruschig, 379 F.2d 990, 995 (C.C.P.A. 1967) (emphases in original).

          In other words, the written description requirement has been recognized as a separate requirement from the enablement requirement, and used to police overbroad claims since at least 1967.

        2. 5.1.1.2

          The language between pre-1952 and post-52 112(b) is virtually the same, so under this logic, 112(b) should still operate to invalidate claims that claim functionality absent particular means (i.e. means-plus is not only permissible, but mandatory), so preserved codification is not a strong argument against invalidating novel functional claiming.

          Correct. The 112(b) language should function that way, if the courts were rightly applying the statutory text. You are presently taking the anomalous position that because the courts have gotten one part of the statute wrong, they should start getting other parts wrong to balance out the mistake (a point against which you have been known to inveigh elsewhere).

          I would rather that they simply unwork the mistake, and apply the whole codification properly. I expect that this is really what you prefer as well.

        3. 5.1.1.3

          But I don’t see why we should metaphorically toss our claims in the river to see if they are witches when we have a perfectly fine courthouse sitting right down the road.

          Why should we do the hefting, let the judges at the courthouse do the “it’s a witch” test…

      2. 5.1.2

        When did Congress say that you could protect an abstraction with a patent claim?

        1. 5.1.2.1

          What is an abstraction?

          Or perhaps better, what is NOT an abstraction?

          (especially since we are talking about written words in a legal document)

    2. 5.2

      “the WD test does not actually protect against an inventor simply boiling down the invention to describing the utility of the invention in a novel manner and expanding their scope beyond the invention.”

      Is that because the WD test itself is flawed or because of the accoutrements developed by the CAFC and PTO? I think a naive application of the WD test would be extremely effective in stopping those problematic claims.

  6. 4

    “focusing upon the “results oriented” claims that end up encompassing an abstract principle.”

    Results oriented means reciting functions, which are enabled by the specification and what is known by a person skilled in the art. I have quoted from textbooks used at MIT that state expressly that functional language must be used to express solutions to functions because there are so many enabled solutions to the functions.

    1. 4.1

      Results oriented means reciting functions, which are enabled by the specification and what is known by a person skilled in the art.

      Nobody ever enables the full scope of a function. Enabling the full scope of a function requires proof that no other means of performing the function could ever be made.

      I have quoted from textbooks used at MIT that state expressly that functional language must be used to express solutions to functions because there are so many enabled solutions to the functions.

      And yet still not fully enabled. The scope is to ALL WAYS of doing something. The fact that they are teaching students the current known ways of doing something suggests that they recognize that other, better ways of doing something may be discovered in the future. If there was nothing else to discover, there’d be no point in teaching the content of the solutions, you’d simply point to the function command and say “use this.”

      1. 4.1.1

        You are setting some strange false choice.

        The reverse doctrine of equivalents is there to deal with issues of whether or not a solution is not covered within the scope.

        The fact is that in practice the claims cover what is enabled and what is current possible. It may be that someone comes along with another invention that is not an improvement, but rather a different way of doing it that satisfies 102/103, and in that case the claims were too broad. Otherwise they fairly cover what was invented.

        1. 4.1.1.1

          The reverse doctrine of equivalents? What? Where is that in the statute?

          LOL

        2. 4.1.1.2

          The fact is that in practice the claims cover what is enabled and what is current possible. It may be that someone comes along with another invention that is not an improvement, but rather a different way of doing it that satisfies 102/103, and in that case the claims were too broad. Otherwise they fairly cover what was invented.

          This is exactly the problem with your thinking – you *assume* enablement is met over the entire scope and allow the claims. Those claims issuing chills research into other ways of achieving the function. Only when someone else braves infringement do we get proof that the claims were too broad all along. That’s the exact definition of overbreadth and chilling advancement. Rather than requiring the applicant to prove *up front* that they’re entitled to the scope they claim, you chill *all other advancement* to unjust enrich the applicant. Under your view, we never get the gun because the person who invents the bow claims the function of firing a projectile, and nobody is interested in researching a gun because their 20 year term is going to be cut short in infringement litigation; which they might lose and make nothing.

          That makes no sense at all. Isn’t a vastly more logical thing to do is say that you show me a bow, you get a bow. You only get the function if you can prove that no non-bows can ever exist. Then the bow inventor gets the enrichment from the bow, the gun inventor gets the enrichment from the gun, the public gets both researches and both disclosures, and everyone is happy.

          1. 4.1.1.2.1

            The “over the entire scope” is a serious error in your “thinking” Random.

            To its logical ends, one then must eliminate ALL improvement patents – quite at odds with 35 USC 101’s “and any improvement thereof.”

      2. 4.1.2

        … suggests that they recognize that other, better ways of doing something may be discovered in the future

        True of ALL things.

        Thus, by your “logic,” Random, ALL items patents are overbroad and invalid (ineligible…?).

        Improvement patents — by their very nature (and certainly relative abundance) — d00m your rather odd way of looking at Ladders with only two rungs.

        1. 4.1.2.1

          Thus, by your “logic,” Random, ALL items patents are overbroad and invalid (ineligible…?).

          Not at all. If I posit a structure, I’ve clearly posited that structure. What I have thought of and what I grasp are one and the same. But if I posit a manner of achieving the function, I can’t say that I’ve posited that function, or even a large fraction of that function, because I have no idea how vast the breadth of the function is. Its one thing to say you can describe the land you’re standing on. Its another to say that you know what the land that stretches beyond the horizon looks like merely because it has some tangential connection to the land you are standing on.

          Improvement patents — by their very nature (and certainly relative abundance) — d00m your rather odd way of looking at Ladders with only two rungs.

          An improvement patent is a different structure, so there’s no problem. It only includes the base structure when people claim poorly. If you build an improved engine the only thing you need to limit your claim to is the substitute structure that causes the improvement. Regardless, there’s no equivalence at all between “coming up with something inventive and putting it into a known context” and “suggesting that because you came up with something inventive you also invented everything else that can share any grouping or quality with what you invented.”

          1. 4.1.2.1.1

            The “structure” is a canard and reduces the Ladders of Abstraction down to a single rung.

            Eminently p00r form for what patents are for.

    2. 4.2

      Can you name any function whatsoever where the first person to do something was also the last word on the subject such that no other means of achieving the function were ever created by anyone else? Can you name one single thing that is achieved using the same means as was originally thought up?

      1. 4.2.1

        I know I still communicate by my Morse machine rather than, you know, SMS text or networked printing, so clearly Morse enabled the full scope of that function, hahaha.

        I prefer to evenly cut my ice with Longclaw, the ancestral blade of House Mormont, but I’ve always been told I know nothing.

        1. 4.2.1.1

          And would you say that Morse enabled a person of ordinary skill in the art to build a machine for SMS text?

          1. 4.2.1.1.1

            Of course not. The difference between your test and the law is that the law doesn’t need the SMS text to know the claim is overbroad. The claim was overbroad as soon as Morse failed to exclude the possibility of the SMS text being developed.

            1. 4.2.1.1.1.1

              How do you NOT fail to exclude the possibility of any additional development?

              Sorry Random, but your “logic” is flawed at its foundation and patents for only those things that it would be impossible to improve upon would be allowed in your “world view.”

              That is simply not what the law is.

      2. 4.2.2

        Can you name any function whatsoever where the first person to do something was also the last word on the subject such that no other means of achieving the function were ever created by anyone else?

        Why limit this question to “functions?”

        ALL subject matter that falls to ANY one or more of the statutory groupings suffer the same issue.

        It’s kind of why 35 USC 101 explicitly includes “or any improvement thereof”

  7. 3

    >>A claim broader than the actual invention of the patentee is, for that very reason, upon the principles of the common law, utterly void, and the patent is a nullity.

    Scope of enablement is the right test.

    1. 3.1

      It seems to me that scope of enablement is a good test, but merely necessary, not independently sufficient. The problem for the patent system (and this is an unavoidable problem in a VII amendment regime) is that the claims are to be interpreted and applied according to the understanding of a “person skilled in the art,” but the actual work of construing and enforcing claims lies with judges and jurors who are almost scientifically illiterate.

      If—in addition to “scope of enablement”— we assess validity according to “scope of description,” then the work of construing and enforcing claims can be made fairly predictable and certain. The judge—when asked to construe Dr. K’s claims to cover Dr. P’s machine—can say to Dr. K “show me where in your application you described Dr. P’s machine.” The judge does not even really need to understand much science in order to follow along with this exercise.

      By contrast, in a world in which the rule requires nothing more than “scope of enablement,” you need to take a judge—who likely only barely scraped through ‘rocks for jocks’ back in undergrad 30 years ago and has not touched a science article since—and bring him or her up to the level of a “person skilled in the art.” Realistically, this never happens, so instead what you get in a pure “scope of enablement” regime is a battle of the experts, wherein the goal is to see who can snowjob the trier of fact more effectively (whose experts is more affable, better looking, less likely to remind the trier of fact of that annoying physics teacher who gave them a D back in 8th grade, etc).

      Rule of law principles are much more consonant with a “scope of enablement and description” regime than with a pure “scope of enablement” regime.

      1. 3.1.1

        I think that is fine, anon. WD is not a problem as long as it is also viewed from the perspective of one skilled in the art.

  8. 2

    Paul F. Morgan
    If it is, then it shouldn’t be. Notice the wording “although he is not the inventor”. Compare with 112(b).

  9. 1

    Is this Wyeth v. Stone, 30 F. Cas. 723 (C.C.D. Mass. 1840) (Justice Story) the source and original definition of the now so often attacked word “abstract” in Alice 101 cases?

    P.S. Line 7 – fix “1920”

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