Funk Brothers Seed Co v Kalo Inoculant Co (1948) 333 US 127

Posted by Anton Hughes on Tuesday, January 03, 2006 with No comments
Citation: Funk Brothers Seed Co v Kalo Inoculant Co (1948) 333 US 127

Jurisdiction: US Supreme Court

Facts: The appellant brought a patent infringement suit against the respondent, in relation to a patent for mixed cultures of root-nodule bacteria capable of inoculating the seeds of leguminous plants. The respondent counter-claimed alleging the patent was invalid.

Outcome: The patent was held invalid for want of invention.

Ratio: The subject matter of the patent was merely a discovery of the laws of nature in action and therefore lacked invention. "He who discovers a hitherto unknown phenomenon of nature as no claim to a monopoly of it which the law recognises."

Relevance: This case supports the discovery/invention dichotomy in the patentable subject matter enquiry, and was relied on in Benson.

Quotes:

Douglas J

At 130: "We do not have presented here he question whether the methods of selecting  and testing the non-inhibitive strains are patentable. We have here only product claims. [The patent applicant] does not create a state of inhibition or of non-inhibition in the bacteria. Their qualities are the work of nature. Those qualities are of course not patentable. For patents cannot issue for the discovery of the phenomena of nature. See Le Roy v Tatham 14 How 156, 175. The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of the laws of nature, free to all men and reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature as no claim to a monopoly of it which the law recognises. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end. See Telephone Cases, 126 US 1, 435-533; DeForest Radio Co v General Electric Co, 283 US 664, 684-685; Mackay Radio and Tel Co v Radio Corp, 306 US 86, 94; Cameron Septic Tank Co v Saratoga Springs 159 F 435, 462-463."

At 131: Discovery of the fact that certain strains of each species of these bacteria can be mixed without harmful effect to the properties of either is a discovery of their qulities of non-inhibition. It is no more than the discovery of some of the handiwork of nature and hence is not patentable. The aggregation of select strains of the several species into one product is an application of that newly-discovered natural principle. But however ingenious the discovery of that natural principle may have been the application of it is hardly more than an advance in the packaging of the innoculants... They serve the ends nature originally provided and act quite independently of any effort of the patentee.

There is, of course, an advantage in the combination... But a product must be more than new and useful to be patented; it must also satisfy the requirements of invention or discovery. [132] Cuno Engineering Corp v Automatic Devices Corp, 314 US 84, 90, 91 and cases cited; 35 USC ß31, R.S. ß4886."

At 132: "The application ... may well have been an important commercial advance. But once nature's secret ... was discovered, the state of the art made the production of a mixed innoculant a simple step. Even though it may have been the product of skill, it certainly was not the product of invention. There is no way in which we could call it such unless we borrowed invention from the discovery of the natural principle itself."

Frankenfurter J (concurring)

At 133: "Insofar as the court below concluded that the packaging of a particular mixture of compatible strains is an invention and as such patentable, I agree, provided not only that a new and useful property results from their combinatino, but also that the particular strains are identifiable and adequately defined. I do not find that Bond's combination of strains satisfies these requirements."

At 134: "It only confuses the issue ... to introduce such terms as 'the work of nature' and the 'laws of nature'. [135] For these are vague and malleable terms infected with too much ambiguity and equivocation. Everything that happens may be deemed 'the work of nature,' and any patentable composite exemplifies in its properties 'the laws of nature.' Arguments drawn from such terms for ascertaining patentability could fairly be employed to challenge almost every patent. On the other hand, the suggestion that 'if there is to be invention from such discovery, it must come from the application of the law of nature to a new and useful end' may readily validate Bond's claim... Surely the Court does not mean unwittingly to pass on the patentability of such products by formulating criteria by which future issues of patentability may be prejudged. In finding Bond's patent invalid I have tried to avoid a formulation which, while it would in fact justify Bond's patent, would lay the basis for denying patentability to a large area within existing patent legislation."

Burton and Jackson  JJ (dissenting)

At 136: "[W]e agree with Mr Justice Frankenfurter that the combinations so produced satisfy the statutory requirements of invention or discovery. These products were a prompt and substantial commercial success, filling a long-sought and important agricultural need."

At 136: "However, we do not agree that the patent issued for such products is invalid for want of a clear, concise description of how the combinations were made and used."

At 136: "The completeness and character of the description must vary with the subject to be described."

At 137: "[I]t may be that a combination of strains of bacterial species, which strains are distinguished from one another and recognized in practice soly by their observed effects, can be deifnable reasonably only in terms of those effects... The identification of the strains stated in the patent is that which the patentee used in making the novel combinations of them that have been shown to be highly useful. There appears to be no question but that the petitioners are now able to identify and use the strains in the manner described in the patent. The record thus indicates that the description is sufficiently full, clear, concise and exact to enable persons skilled in the art or science to which this discovery appertains or with which it is most nearly connected to make, construct, compound and use the same."

At 138: "An inventor should not be denied a patent upon an otherwise patentable discovery merely because the nature of the discovery defies description in conventional terms."