Lessons from Amgen v. Sanofi

July 5, 2023

Amgen provides a window on the Supreme Court approach to patent issues - look to history and established policy as our patent law is not code based but rather common law based. The Court noted that the “enablement requirement” is found essentially unchanged in every version of the patent law since 1790. While Amgen concerned the enablement provision, the same approach applies to patent eligibility, the “judicial exceptions,” which have existed in our case law since the early 19th century.  In deciding Amgen the Supreme Court did not consider previous Federal Circuit decisions but looked to history of the enablement provision which involved Court decisions from the 19th and early 20th century.  While Amgen was the Court’s first antibody case, it found analogous cases which provided guidance as to how the enablement requirement had been interpreted.  Since U.S. patent law is based on common law, this is the appropriate approach to provide the needed predictability.  Without understanding the policy behind the exceptions, one will continue to wander aimlessly from one case to the next.

This is the first of a series of posts applying our common law precedents to understand judicial exceptions and the policy behind them. Without understanding the policy one will wander aimlessly from one case to the next.

Abstract Idea

The Federal Circuit Judges have called out for help with abstract idea exception. However, such help exists in British cases interpreting the Statute of Monopolies[1], 19th century cases, the Curtis and Robinson mid- and late 19th century patent treatises , and the respective 20th century Court decisions when read as a whole, not in pieces. Reading the cases individually misses the common characteristics of abstract ideas. Further, since these cases build on each other to provide a cohesive body of law, one needs to consider their teachings together. By looking at them as individual events, one loses sight of the policy behind the exception and the common characteristics all abstract ideas have in common.

The concept that one could not patent an abstract idea began with the British courts interpretation of the term “manufacture” used in the Statute of Monopolies.  The courts considered scientific principles to be ideas, and natural laws were not “manufacture”, technology[2].  The constitution’s reference to “useful arts” is synonymous with today’s term “technology.”  The initial U.S. patent laws were “founded on the principles and usages which have grown out of the English statute.[3]”  The English and U.S. Courts expressed two concerns with patents for new discoveries of nature, science, and ideas (today abstract ideas).  The first concern was their functional nature that was not tied to any means for attaining the result.  The second, was the abstract nature of the inventions -- they have no concrete embodiments and would interfere with the development of practical implementation.[4]  The concept of patenting an effect only without description of the apparatus or operation providing the effect is not patentable.[5]  It is the means which is the patentable invention, not the result.[6]  That is, the claims do not monopolize the result achieved but only the specifically claimed means for achieving it.[7]

By the mid 19th century, the law was settled in the U.S., abstract ideas were simply not patentable, or in today’s vernacular, not patent eligible. Curtis stated:

The consequences of allowing a patent for an abstract art or a principle, instead of allowing it only for a principle as applied to the production of a particular thing, or a particular result in matter are apparent, when it is considered that principles are the elements of science, and if a patent could be taken for a newly-discovered principle in science, it would cover therefore, every object to which the principle could be applied, and the whole field of arts would thus at once be occupied by a few monopolists.[8]

Curtis cited two cases by Justice Story to illustrate the difference between an abstract idea and a concrete implementation.  The first involved a patent for cutting ice blocks into a uniform size with an apparatus that worked by power other than human power.  Justice Story, in holding the claim not maintainable in point of law, i.e., patent ineligible, stated:

It is plain, then, that here the patentee claims atitle to the art of cutting ice by means of any power, other than human power. Such a claim is surely un-maintainable in point of law.  It is a claim for an art or principle in the abstract and not for any particular method or machinery by which ice is to be cut.  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.[9]

Justice Stone opined that a specific method described in the patent would be patentable if a disclaimer of the improper part had been disclaimed. It is important to remember that patents did not have claims until after the introduction of the 1836 patent act.

In a second case for a patent for an improvement on looms, the invention claimed was the communication of motion from the reed to the yarn beam by the connection of the one with the other. It was held that the invention was limited to the specific machinery and mode of communicating the motion, specifically described in the specification; otherwise it would be a claim for the abstract principle of communicating motion in all possible modes.[10]

From the historical case law there are two takeaways.  First, an abstract idea is a function only with no means recited.  Second, it is claiming a monopoly on all methods of achieving the function.  In other words, it is preempting the function. This preemption concept is expressed in both Bilski[11] and Alice[12].  In Bilski the Court cited Benson, 409 U.S., at 67, 93 S.Ct. 253, for the concept that the judicial exceptions, if patented, would stifle innovation and O'Reilly v. Morse, 15 How. 62, 113, 14 L.Ed. 601 (1854) for the concept that Morse's patent on electromagnetism for writing would preempt a wide swath of technological developments. The preemption prevented anyone from developing a new technique of using electromagnetism to send messages without infringing on Morse’s patent.

A claim to an abstract idea is characterized by expressing a function with no means recited for achieving the function, and by preempting the development on non-infringing means since all means for accomplishing the function would infringe. 

[1]Statute of Monopolies, 1623, 21 Jac. 1, c. 3, § 6.

[2] The King v» Wheeler, 2 B. & Aid« 349, 350.

[3]Evans v. Eaton, 16 U.S. (3 Wheat.) 454, 519 (1818) (Story, J., app. Note II, On the Patent Laws).

 [4] Ibid. at 519. Also, Rex v. Wheeler, 2 B. & Ald. 345, 354(1819) (Abbot, C.J.)., where the court expressed the fear “that patenting a principle would give inventors the sole rights to all future improvements.” O’Reilly, 56 U.S. (15 How.) 62 at 113;

[5] Whitmore v. Cutter, 1 Gallison 478, (1813), Story J.

[6] Electric Railroad Signal Co. v. Hall Railway Signal Co. (1885), 114 U. S. 87, Matthews, J.: (96) “The thing patented is the particular means devised by the inventor by which that result is attained, leaving it open to any other inventor to accomplish the same result by other means.”

[7] See Curtis on Patents (1849 ed) at § 76.

[8] Ibid. at § 77.

[9] Wyeth v Stone 1 Story R. 273, 285 (30 F. Cas. 723, 727 (C.C.D. Mass. 1840) (No. 18,107)).

[10] Stone v. Sprague, 1 Story’s R .270.

[11] Bilski v. Kappos, 561 U.S. 593, 130 S.Ct. 3218 (2010).

[12] Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 573 U.S. 208, 134 S.Ct. 2347 (2014).