O'Reilly et al v Morse et al 56 US 62 (1854)

Posted by Anton Hughes on Tuesday, January 03, 2006 with No comments
Citation: O'Reilly et al v Morse et al (1854) 56 US 62

Facts: Morse (as in code) held a series of patents on the electric telegraph. O'Reilly had constructed an electric telegraph without a licence, claiming inter alia that:
  • Morse was not the first inventor;
  • His telegraph was substantially different;
  • That the patent was void; or
  • That the patent term had expired.

The judgement as reported includes a detailed history of the invention.

Outcome: Held that Morse was the first inventor; that the patent was valid, except for the eighth claim (void for being overbroad); that O'Reilly's telegraph was not substantially different and was thus infringing.

Ratio: An overbroad claim should be construed as invalid because of its negative effect on science in the area, and the unjust advantage which such a claim gives the patentee over future improvements which they did not invent.

Relevance: Of little direct relevance to software patenting, although the history of the case outlines the traditional notion of invention for which patents are awarded (the solitary inventor, locked away for many years perfecting his invention, and the patent's issue as a just reward for his hard work).

The telegraph itself is also cited as an example of a new application of known properties and hence is the great grandfather of modern process patents.

The court in the case directly consider the policy considerations of the effect of a patent's progress on the 'onward march of science'.

The dissenting judgement also covers some quotable material on the nature of the arts and the application of known principles. Note also the use of the concept of 'pirating' of an invention - as far back as 1853!

Quotes:

Taney CJ (majority)

At 113: "If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicated -- less liable to get out of order -- less expensive in construction, and in operation. But yet if it is covered by this patent, the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.

Nor is this all, while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light... And if he can secure the exclusive use by his present patent he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery, upon the records of the patent office... In fine he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent."

At 115 (quoting Baron Parke in Neilson and others v Harford and others): "It is very difficult to distinguish it from the specification of a patent for a principle, and this at first created in the minds of the court much difficulty; but after full consideration we think that the plaintiff does not merely claim a principle, but a machine, embodying a principle, and a very valuable one."

At 119: "Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more... And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described."

Grier J (dissenting):

At 130: "A new and useful art or a new and useful improvement on any known art is as much entitled to the protection of the law as a machine or manufacture. The English patent acts are confined to 'manufactures' in terms; but the courts have construed them to cover and protect arts as well as machines, yet without using the term art. Here we are not required to make any latitudinous construction of our statute for the sake of equity or policy; and surely we have no right, even if we had the disposition, to curtail or narrow its liberal policy by astute or fanciful construction.

It is not easy to give a precise definition of what is meant by the term "art," as used in the acts of Congress -- some, if not all, the traits which distinguish an art from the other legitimate subjects of a patent, art stated with clearness and accuracy by Mr Curtis, in his Treatise on Patents. 'The term art applies,' says he, 'to all those cases where the application of a principle is the most important part of the invention, and where the machinery, apparatus, or other means, by which the principle is applied, are incidental only and not of the essence of his invention. It applies also to all those cases where the result, effect, or manufactured article is old, but the invention consists in a new process or method of producing such result, effect or manufacture." Curt on Pat 80.

At 130: "An art may employ many different machines, devices, processes, and manipulations, to [131] produce some useful result. In a previously known art a man may discover some new process, or new application of known principle, element or power of nature, to the advancement of that art, and will be entitled to a patent for the same, as 'an improvement in the art,' or he may invent a machine to perform a given function, and then he will be entitled to a patent only for his machine."

At 131: "In England, were their statute does not protect an art in direct terms, they have made no clear distinction between an art or an improvement in an art, and a process, machine or manufacture. They were hampered and confied by the narrowness of the phraseology of their patent acts. In this country, the statute is as broad as language can make it."

At 132: "The mere discovery of a new element, or law, or principle of nature, without any valuable application oof it to the arts, is not the subject of a patent. But he who takes this new element or power, as yet useless, from the laboratory of the philosopher, and makes it the servant of man; who applies it to the perfecting of a new and useful art, or to the improvement of one already [133] known, is the benefactor to whom the patent law tenders its protection."

At 133: "When a new and hitherto unknown product or result, beneficial to mankind, is effected by a new application of any element of nature, and by means of machines and devices, whether new or old, it cannot be denied that such invention or discovery is entitled to the denomination of a 'new and useful art'. The statute gives the inventor of an art a monopoly in the exercise of it as fully as it does to the inventor of a mere machine".

At 132: "The court, by decided that this claim is too broad, virtually declares that such an inventor of an improvement may pirate the art he improves, because it is contrary to public policy to restrain the progress of invention."