June 23, 1880
WASHINGTON D.C. In a unanimous panel ruling, the Federal Circuit invalidated a patent owned by Salem, Massachusetts inventor A. G. Bell. On February 14, 1876, Mr. Bell was granted Letters Patent No. 174,465 to an "Improvement in Telegraphy." This patent was challenged in various proceedings by Mr. Elisha Gray of Highland Park, Illinois as allegedly entailing subject matter ineligible for patenting. In a long-awaited ruling, the Federal Circuit held that Mr. Bell's claims were directed to an abstract idea without significantly more and therefore invalid.
The claims of the '465 patent recite:
1. A system of telegraphy in which the receiver is set in vibration by the employment undulatory currents of electricity, substantially as set forth.
2. The combination, substantially as set forth, of a permanent magnet or other body capable of inductive action, with a closed circuit, so that the vibration of the one shall occasion electrical undulations in the other, or in itself, and this I claim, whether the permanent magnet beset in vibration in the neighborhood of the conducting-wire form simultaneously be set in vibration in each others neighborhood.
3. The method of producing undulations in a continuous voltaic current by the vibration or motion of bodies capable of inductive action, or by the vibration or motion of the conducting-wire itself, in the neighborhood of such bodies, as set forth.
4. The method of producing undulations in a continuous voltaic circuit by gradually increasing and diminishing the resistance of the circuit, or by gradually increasing and diminishing the power of the battery, as set forth.
5. The method of, and apparatus for, transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sound, substantially as set forth.
The Court began its analysis by inferring the scope of the claimed invention. To do so, it considered the specification of the '465 patent, writing "[o]ur cases have found the specification helpful in illuminating whether a claim is truly focused on an ineligible abstract idea or significantly more than just that." To that point, the Court observed that:
The eligibility inquiry may involve looking to the specification to understand the problem facing the inventor and, ultimately, what the patent describes as the invention. The problem identified by Mr. Bell, as stated in the specification, is that intermittent electrical currents sent along a telegraphic wire become effectively continuous when subjected to numerous transmissions of different rates of vibration, making this technique unsuitable for accurately transmitting sounds. Mr. Bell's solution is to represent sounds by transmitting undulatory currents instead, which are physical phenomenon mathematically similar to sinusoidal motions of air caused by these sounds.
The Court then found that "looking at the problem identified, as well as the way the inventor describes the invention, the specification suggests that the invention is nothing more than the abstract idea of communicating sounds over a wire." The Court noted that humans have communicated audibly since time immemorial -- that such vocalization was a fundamental aspect of and long prevalent in the human experience. Further, the use of various types of audible and non-audible waveforms for communication over a distance -- such as those involved in or generated by drumming, shouting, signal fires, mirrors, semaphores, and so-called optical telegraphs -- have been used for centuries, if not millennia.
Notably, the Court made an analogy between Mr. Bell's claims and those found invalid by the Supreme Court in O'Reilly v. Morse. Mr. Morse's invention was directed to using electromagnetism to telegraphically transmit intelligible signals, and was found to be an abstraction -- an "idea" rather than a practical application thereof. In that case, the Justices expressed concern that Mr. Morse's broad claims would cover any possible application of communicating at a distance via electromagnetism. Similar to those of Morse, Mr. Bell's claims are sufficiently broad enough to be directed to a principle ("all solutions for attaining a desired result") rather than a specific implementation of that principle ("a specific embodiment that produces the desired result in a particular fashion").
While the Court acknowledged that Mr. Bell described such communication in the context of telegraphy using undulatory currents, "[t]he prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the idea to a particular technological environment." Again, the language of the claims supported the Court's determination, as they were "recited at such a high level of generality that the claimed scope encompasses representing sounds of all types with electrical undulations." In support of this determination, the Court pointed to the specification where Mr. Bell wrote "I desire here to remark that there are many other uses to which these instruments may be put, such as the simultaneous transmission of musical notes, differing in loudness as well as in pitch, and the telegraphic transmission of noises or sounds of any kind."
Thus, the Court concluded that "the claims clearly involve an abstract idea -- namely, the abstract idea of transmitting representations of sounds over a telegraphic wire."
Moving on to the next step of the patent eligibility inquiry, the Court sought to determine whether the additional elements of the claims included an "inventive concept" that would limit their coverage to be significantly more than the abstraction therein. The Court explained this step as involving "consideration of the additional elements of the claim both individually and as an ordered combination to determine whether these elements transform the nature of the claim into a patent-eligible application." Such additional elements cannot be "well-understood, routine, or conventional articles previously known in the relevant art." Thus, "transformation into a patent-eligible application requires more than simply stating the abstract idea while adding the words 'apply it.'"
The Court determined that the additional claim elements above and beyond those reciting the abstract idea were "a receiver, a telegraphic line, and various mechanisms for generating electrical undulations in said line." But each of these elements fell under the "well-understood, routine, or conventional" rubric. The Court quickly observed that receivers and telegraphic lines have been used in communication systems for decades, and included those of Mr. Morse.
Moreover, the Court noted that not all of the claims explicitly recited mechanisms for generating electrical undulations, and that Mr. Bell had made admissions in the specification that any such mechanisms were already known. For example, Mr. Bell disclosed that it was well-understood that a permanent magnet could be used for this purpose:
It has long been known that when a permanent magnet is caused to approach the pole of an electro-magnet a current of electricity is induced in the coils of the latter, and that when it is made to recede a current of opposite polarity to the first appears upon the wire. When, therefore, a permanent magnet is caused to vibrate in front of the pole of an electromagnet an undulatory current of electricity is induced in the coils of the electro-magnet.
Mr. Bell went on to state that:
There are many ways of producing undulatory currents of electricity, dependent for effect upon the vibrations or motions of bodies capable of inductive action. A few of the methods that may be employed I shall here specify. When a wire, through which a continuous current of electricity is passing, is caused to vibrate in the neighborhood of another wire, an undulatory current of electricity is induced in the latter. When a cylinder, upon which are arranged bar magnets, is made to rotate in front of the pole of an electromagnet, an undulatory current of electricity is induced in the coils of the electro-magnet.
In the Court's view, these additional elements were, by Mr. Bell's own admission, pre-existing articles. Further, they were merely being used "for their intended purpose with no improvement made thereto." Indeed, "Mr. Bell did not invent electro-magnets, wires, or cylinders of bar magnets, nor was he the first to observe that these items can induce undulatory currents." Particularly, "electromagnetic induction had been discovered by the Englishman Michael Faraday nearly half a century ago, and was a well-understood phenomenon at the time of the patent's filing."
Therefore, the Court found that "[t]hese conventional components, all recited functionally at a high level and in a generic way, are no better equipped to save the claims from abstractness." Furthermore, "when considered as an ordered combination, these elements add nothing that is not already present when looking at the elements taken individually . . . [t]here is no indication that the combination of elements improves the functioning of a receiver, the wires, or any magnets used in various claims."
Consequently, the Federal Circuit concluded that the '465 patent was invalid due to being directed to patent-ineligible subject matter, and Mr. Bell has lost exclusive rights to his invention.
