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).