T.J. Chiang: Levels of Abstraction

What is an "invention"? The Wright brothers received a patent for building one embodiment of an "invention" ("a single glider that could barely fly"), but the scope of their patent claims covered a much broader idea of their "invention," which might be interpreted at different levels of abstraction, ranging from all flying machines to only airplanes very similar to the original embodiment. In The Levels of Abstraction Problem in Patent Law (forthcoming in the Northwestern University Law Review), Tun-Jen Chiang (George Mason Law) argues that courts do not even acknowledge that this problem exists; rather, they select a level of abstraction "arbitrarily and silently." Chiang's goal is "to demonstrate that the problem exists and current doctrine fails to acknowledge it" and to "provide the [legal realist] foundation for a more transparent analysis of the problem."

Don't the disclosure requirements solve this problem, so that the Wright brothers could not claim flying machines at such a high level of abstraction that they are not enabled by the specification? For example, the Supreme Court invalidated patents for claiming more than was disclosed in O'Reilly v. Morse (where Morse attempted to claim all communication through electromagnetism) and The Incandescent Lamp Patent (where Edison's competitors attempted to claim all light filaments). But Chiang notes that "a literal application of the 'full scope' rule [that the specification must disclose every embodiment covered by the claim] would invalidate every patent in existence. . . . because, as Jeffrey Lefstin has pointed out, every patent claim covers an infinite array of embodiments, which cannot all be taught by the specification."

In contrast with the "full scope" rule, Chiang describes the "one-embodiment-enables-everything" rule, which stems from a second line of cases like Invitrogen v. Clontech and Durel v. Osram (click for highlighted quotes). Although "courts have attempted to reconcile these two lines of cases [by] hold[ing] that 'after-arising' technology need[] not be taught," Chiang argues that this distinction makes little sense: "the cases are utterly irreconcilable" and "[a] citation to one or the other line of cases can justify any outcome."

Chiang notes that "courts usually reach sensible results anyway," but argues that "outcomes are largely sensible precisely because there is judicial discretion." He is not troubled by this discretion, but he wants courts to be more honest about it: "the masking of the true decision-making process behind formalist rhetoric makes it more difficult to resolve the many cases that are never litigated, ultimately forcing more litigation and expense." Instead of engaging in futile debates over dictionaries and textual meaning, Chiang argues that courts should openly make "an assessment of the social benefits of the pioneer’s work; the incentives necessary to achieve this breakthrough; the cost of monopoly in terms of what later research has been or will be hampered; and the extent to which subsequent research is derived from the pioneer’s work."

I think The Levels of Abstraction Problem in Patent Law does a nice job pointing out some inconsistencies in patent doctrine, but even if courts resolve to be more open in addressing this problem, it isn't clear what they should be openly doing. Chiang joins scholars like Abramowicz and Duffy and Burk and Lemley in arguing that courts should play an active role in shaping patent law to meet utilitarian ends. And I think Chiang is right in suggesting that this approach "is less prone to arbitrariness in intellectual property law than other areas, because there is widespread consensus on the normative framework—economics-based utilitarianism," so that "disagreement about patent outcomes is largely empirical." But this empirical disagreement has not been resolved by scholars—there are still serious debates about whether patents even provide a net benefit in some technological fields, and specific questions like the efficient scope of a given patent are even harder—so I'm not convinced that a judge committed to Chiang's approach would be able to figure out how to decide a given case. Still, even describing the question judges should be asking is a useful contribution, and this article has made me think much more carefully about what "invention" really means. It is one of the more interesting patent articles to come out in the past year, so I recommend downloading it.