第23回：基本～特許主題適格性（２）～（2023年6月6日）

O’Reilly v. Morse, 56 U.S. 62, 119 (1853)
"[I]f [the result he describes in his patent] can be done [by the means he describes in the patent], then the patent confers on him the exclusive right[.] ... [I]t makes no difference[] whether the effect is produced ... by the application of discoveries or principles in natural philosophy known or unknown before his invention[.]" (emphasis added)

Le Roy v. Tatham, 55 U.S. 156, 174-175 (1852)
"That the discovery of a new principle is not patentable, but it must be embodied and brought into operation by machinery, so as to produce a new and an useful result."

"A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself, under the patent laws. The same may be said of electricity, and of any other power in nature, which is alike open to all, and may be applied to useful purposes by the use of machinery." (emphasis added)

Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 507 (1874)
"An idea of itself is not patentable[.]" (emphasis added)

Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948)
"He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. 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." (emphasis added)

Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
"Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." (emphasis added)

Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)　
"Congress intended statutory subject matter to "include anything under the sun that is made by man."^(注1) ... This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable." (emphasis added)

注1：Cf. Bilski v. Kappos, 561 U.S. 593, 642 (2010) (Stevens, J., concurring in the judgment) ("Taken in context, it is apparent that the quoted language has a far less expansive meaning. The full sentence in the Committee Reports reads: "A person may have ‘invented’ a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of [this] title are fulfilled." S.Rep.1979, at 5; H.R. Rep.1923, at 6. Viewed as a whole, it seems clear that this language does not purport to explain that "anything under the sun" is patentable. Indeed, the language may be understood to state the exact opposite: that "[a] person may have ‘invented’ ... anything under the sun," but that thing "is not necessarily patentable under section 101." Thus, even in the Chakrabarty opinion, which relied on this quote, we cautioned that the 1952 Reports did not "suggest that § 101 has no limits or that it embraces every discovery." 447 U.S., at 309, 100 S.Ct. 2204.") (emphasis added)

Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 71 (2012)
""Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972). And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it. The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law." (emphasis added)

Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)
"[W]ithout this exception, there would be considerable danger that the grant of patents would "tie up" the use of such tools and thereby "inhibit future innovation premised upon them."" (emphasis added)

Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014)
"We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable. ... We have described the concern that drives this exclusionary principle as one of pre-emption." (emphasis added)

Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)　
"Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry."

Id., at 593 (2013)　
"[E]xtensive effort alone is insufficient to satisfy the demands of § 101."

Id., at 589-590　
""[A]ll inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas," and "too broad an interpretation of this exclusionary principle could eviscerate patent law.""

Id., at 590　
"[P]atent protection strikes a delicate balance between creating "incentives that lead to creation, invention, and discovery" and "imped[ing] the flow of information that might permit, indeed spur, invention."" (emphasis added)

Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77 (2012)　
"Prometheus' patents set forth laws of nature—namely, relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm. Claim 1, for example, states that if the levels of 6–TG in the blood (of a patient who has taken a dose of a thiopurine drug) exceed about 400 pmol per 8×10⁸ red blood cells, then the administered dose is likely to produce toxic side effects. While it takes a human action (the administration of a thiopurine drug) to trigger a manifestation of this relation in a particular person, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.

The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws? We believe that the answer to this question is no." (emphasis added)

Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 217-218 (2014)　
"In [Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)], we set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. Id., at 77. If so, we then ask, "[w]hat else is there in the claims before us?" Id., at 78. To answer that question, we consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application. Id., at 79, 78. We have described step two of this analysis as a search for an " `inventive concept' "—i. e., an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Id., at 72–73." (emphasis added)

注2：See, e.g., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016); Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016); Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, 915 F.3d 743, 753 (Fed. Cir. 2019).

Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 74-75 (2012)

"[C]laim 1 of the ’623 Patent[] describes one of the claimed processes as follows:
"A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

"(a) administering a drug providing 6–thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

"(b) determining the level of 6–thioguanine in said subject having said immune-mediated gastrointestinal disorder,

"wherein the level of 6–thioguanine less than about 230 pmol per 8x10⁸ red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

"wherein the level of 6–thioguanine greater than about 400 pmol per 8x10⁸ red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.” ’623 patent, col.20, ll.10–20, 2 App. 16."

Id., at 77　
"Prometheus' patents set forth laws of nature—namely, relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm. Claim 1, for example, states that if the levels of 6–TG in the blood (of a patient who has taken a dose of a thiopurine drug) exceed about 400 pmol per 8x10⁸ red blood cells, then the administered dose is likely to produce toxic side effects. While it takes a human action (the administration of a thiopurine drug) to trigger a manifestation of this relation in a particular person, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law." (emphasis added)

Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 224 (2014).　
"The representative method claim in this case recites the following steps: (1) "creating" shadow records for each counterparty to a transaction; (2) "obtaining" start-of-day balances based on the parties' real-world accounts at exchange institutions; (3) "adjusting" the shadow records as transactions are entered, allowing only those transactions for which the parties have sufficient resources; and (4) issuing irrevocable end-of-day instructions to the exchange institutions to carry out the permitted transactions. See n. 2, supra. Petitioner principally contends that the claims are patent eligible because these steps "require a substantial and meaningful role for the computer." Brief for Petitioner 48. As stipulated, the claimed method requires the use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions; in other words, "[t]he computer is itself the intermediary." Ibid. (emphasis deleted)."

Id., at 221　
"In any event, we need not labor to delimit the precise contours of the "abstract ideas" category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of "abstract ideas" as we have used that term."

Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77-78 (2012)　
"If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself. A patent, for example, could not simply recite a law of nature and then add the instruction "apply the law." Einstein, we assume, could not have patented his famous law by claiming a process consisting of simply telling linear accelerator operators to refer to the law to determine how much energy an amount of mass has produced (or vice versa). Nor could Archimedes have secured a patent for his famous principle of flotation by claiming a process consisting of simply telling boat builders to refer to that principle in order to determine whether an object will float." (emphasis added)

注3：連邦巡回区控訴裁判所は、訴訟の対象特許又は特許出願を説明する際、"directed to"なる用語を用いることがある。See, e.g., Applied Materials v. Advanced Semiconductor, 98 F.3d 1563, 1571 (Fed. Cir. 1996) ("The '389 patent is directed to the reduction or elimination of static electricity during the CVD process."); Kustom Signals, Inc. v. Applied Concepts, 264 F.3d 1326, 1328-29 (Fed. Cir. 2001) ("The '246 patent, filed on June 30, 1994, is directed to a traffic radar system incorporating digital signal processing having user-selectable modes of operation, whereby the operator selects whether to identify and display the speed of either the strongest target or the fastest target vehicle."); Honeywell International, Inc. v. ITT Industries, Inc., 452 F.3d 1312, 1314-15 (Fed. Cir. 2006) ("The '879 application, as initially filed, was entitled "Electrostatically Dissipative Fuel Filter" and contained one independent claim directed to a "moldable material for fuel system components.""); Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1370 (Fed. Cir. 2014) ("The patents-in-suit, which claim priority to the same parent application, are directed to systems and methods for enabling hospital personnel to remotely monitor the status of hospital beds. '038 patent col. 1 l. 61–col. 2 l.38.") (emphasis added).

Id., at 226-227　
"Petitioner's claims to a computer system and a computer-readable medium fail for substantially the same reasons. Petitioner conceded below that its media claims rise or fall with its method claims. ...

Put another way, the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long "warn[ed] . . . against" interpreting § 101 "in ways that make patent eligibility `depend simply on the drafts-man's art.' ... Holding that the system claims are patent eligible would have exactly that result.

Because petitioner's system and media claims add nothing of substance to the underlying abstract idea, we hold that they too are patent ineligible under § 101."

Laboratory Corp. of America Holdings v. Metabolite, Inc., 548 U.S. 124, 134-135 (2006) (Breyer, J.,, dissenting)　
"I concede that the category of non-patentable "phenomena of nature," like the categories of "mental processes," and "abstract intellectual concepts," is not easy to define. See Flook, supra, at 589[] ("The line between a patentable ‘process' and an unpatentable ‘principle’ is not always clear"); cf. Nichols, 45 F.2d, at 122 ("[W]e are as aware as any-one that the line [between copyrighted material and non-copyrightable ideas], wherever it is drawn, will seem arbitrary"). After all, many a patentable invention rests upon its inventor's knowledge of natural phenomena; many "process" patents seek to make abstract intellectual concepts workably concrete; and all conscious human action involves a mental process. See generally 1 Chisum § 1.03, at 78-295. Nor can one easily use such abstract categories directly to distinguish instances of likely beneficial, from likely harmful, forms of protection. ... But this case is not at the boundary. It does not require us to consider the precise scope of the "natural phenomenon" doctrine or any other difficult issue."

Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 221 (2014)　
"In any event, we need not labor to delimit the precise contours of the "abstract ideas" category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of "abstract ideas" as we have used that term." (emphasis added)

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)　
"Because the claims are not directed to an abstract idea under step one of the Alice analysis, we do not need to proceed to step two of that analysis. See id. at 2355. We recognize that, in other cases involving computer-related claims, there may be close calls about how to characterize what the claims are directed to. In such cases, an analysis of whether there are arguably concrete improvements in the recited computer technology could take place under step two. Here, though, we think it is clear for the reasons stated that the claims are not directed to an abstract idea, and so we stop at step one. We conclude that the claims are patent-eligible." (emphasis added)

Parker v. Flook, 437 U.S. 584, 589-590 (1978)　
"Respondent correctly points out that [the preemption as taught in Benson] does not apply to his claims. He does not seek to "wholly preempt the mathematical formula," since there are uses of his formula outside the petrochemical and oil-refining industries that remain in the public domain. And he argues that the presence of specific "post-solution" activity-the adjustment of the alarm limit to the figure computed according to the formula-distinguishes this case from Benson and makes his process patentable. We cannot agree.

The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patent-able, or partially patentable, because a patent ap-plication contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.[] The concept of patentable subject matter under § 101 is not "like a nose of wax which may be turned and twisted in any direction . . . ." White v. Dunbar, 119 U.S. 47, 51, 7 S.Ct. 72, 74, 30 L.Ed. 303." (emphasis added)

Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 223-224 (2014)　
"[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea "while adding the words `apply it' " is not enough for patent eligibility. ... Nor is limiting the use of an abstract idea "`to a particular technological environment.' " ... Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implemen[t]" an abstract idea "on . . . a computer" ... that addition cannot impart patent eligibility. This conclusion accords with the pre-emption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers,[] wholly generic computer implementation is not generally the sort of "additional featur[e]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself."" (emphasis added)

注4：Parker v. Flook, 437 U.S. 584, 589 (1978) ("Respondent correctly points out that [the preemption as taught in Benson] does not apply to his claims. He does not seek to "wholly preempt the mathematical formula," since there are uses of his formula outside the petrochemical and oil-refining industries that remain in the public domain.").

Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948)　
"He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. 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." (emphasis added)

Parker v. Flook, 437 U.S. 584, 590 (1978)　
"The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patent-able, or partially patentable, because a patent ap-plication contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.[] The concept of patentable subject matter under § 101 is not "like a nose of wax which may be turned and twisted in any direction . . . ." White v. Dunbar, 119 U.S. 47, 51, 7 S.Ct. 72, 74, 30 L.Ed. 303."

Id., at 595　
"[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory."

"Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application." (emphasis added)

Diamond v. Diehr, 450 U.S. 175, 188 (1981)　
"In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The "novelty" of any element or steps in a process, or even of the *189 process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." (emphasis added)

Parker v. Flook, 437 U.S. 584, 600 (1978) (Stewart, J., dissenting)　
"The Court today says it does not turn its back on these well-settled precedents[], but it strikes what seems to me an equally damaging blow at basic principles of patent law by importing into its inquiry under 35 U.S.C. § 101 the criteria of novelty and inventiveness. Section 101 is concerned only with subject-matter patentability. Whether a patent will actually issue depends upon the criteria of §§ 102 and 103, which include novelty and inventiveness, among many others. It may well be that under the criteria of §§ 102 and 103 no patent should issue on the process claimed in this case, because of anticipation, abandonment, obviousness, or for some other reason. But in my view the claimed process clearly meets the standards of subject-matter patentability of § 101."

Diamond v. Diehr, 450 U.S. 175, 214 (1981) (Stevens, J., dissenting)　
"As a practical matter however, the postsolution activity described in the Flook application was no less significant than the automatic opening of the curing mold involved in this case. For setting off an alarm limit at the appropriate time is surely as important to the safe and efficient operation of a catalytic conversion process as is actuating the mold-opening device in a synthetic rubber-curing process. In both cases, the post-solution activity is a significant part of the industrial process. But in neither case should that activity have any legal significance because it does not constitute a part of the inventive concept that the applicants claimed to have discovered.39"

Justice John Paul Stevens, The Making of a Justice: Reflections on My First 94 Years, pp. 182-183 (2019)　
"During the 1980 term the Court decided an important patent case that led to a significant increase in the number of granted patents in later years. The case, Diamond v. Diehr,[] involved the patentability of a process for molding uncured synthetic rubber into permanent products under heat and pressure. The process measured the temperature inside the mold and, applying a familiar formula, used a computer to ascertain the precise time when all parts of the object would be cured and it was time to open the molding device. Recognizing that laws of nature, natural phenomena, algorithms, and abstract ideas are excluded from patentable subject matter, by a five-co-four vote the Court nevertheless held that the patent on the rubber-curing process was valid.

I had written many patent decisions as a Seventh Circuit judge, and had authored the opinion for the Court in Parker v. Flook[] - a case invalidating a somewhat similar patent - two years earlier. I felt strongly that the majority was taking an important step in the wrong direction. I therefore dissented at some length, beginning with a description of the then relatively young computer industry and the fact that prior to 1968 "well-established principles of patent law probably would have prevented the issuance of a valid patent on almost any conceivable computer program."[]

I noted that in 1965 the president's Commission on the Patent System had recommended that computer programs should be expressly ineligible for patent coverage, and I explained in detail why a correct interpretation of our decision in Flook required the same result in this case.

The disagreement between the majority and the dissenters stemmed from their differing understandings of what the inventors claimed to have discovered: the majority thought that the inventors had discovered a method of constantly measuring the actual temperature inside a rubber molding press whereas I read the patent as claiming the discovery of an improved method of calculating the time that the mold should remain closed during the curing process. Among my reasons for rejecting the majority's understanding was the fact that an ordinary back porch thermometer　qualified as a device "for constantly measuring actual temperatures.""

Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 81 (2012)　
"Unlike the process in Diehr, [the process in Flook] did not "explain how the variables used in the formula were to be selected, nor did the [claim] contain any disclosure relating to chemical processes at work or the means of setting off an alarm or adjusting the alarm limit." ... And so the other steps in the process did not limit the claim to a particular application."

Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 90 (2012)　
"We recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap. But that need not always be so. And to shift the patent-eligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do." (emphasis added).

Id., at 90-91.　
"What role would laws of nature, including newly discovered (and "novel") laws of nature, play in the Government’s suggested "novelty" inquiry? Intuitively, one would suppose that a newly discovered law of nature is novel. The Government, however, suggests in effect that the novelty of a component law of nature may be disregarded when evaluating the novelty of the whole. See Brief for United States as Amicus Curiae 27. But §§ 102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections. Cf. Diehr, 450 U.S., at 188 (patent claims "must be considered as a whole"). And studiously ignoring all laws of nature when evaluating a patent application under §§ 102 and 103 would "make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious." Id., at 189, n. 12. ...

Section 112 requires only a "written description of the invention . . . in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same." It does not focus on the possibility that a law of nature (or its equivalent) that meets these conditions will nonetheless create the kind of risk that underlies the law of nature exception, namely, the risk that a patent on the law would significantly impede future innovation. ...

These considerations lead us to decline the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101." (emphasis added)