The Quest to Patent Perpetual Motion

Those familiar with my work will know that I am a big fan of utility doctrine. I think it is underused and misunderstood. When I teach about operable utility, I use perpetual motion machines as the type of fantastic (and not in a good way) invention that will be rejected by the PTO as inoperable due to violating the laws of thermodynamics.

On my way to a conference last week, I watched a great documentary called Newman about one inventor's quest to patent a perpetual motion machine. The trailer is here, and you can stream it pretty cheaply (I assume it will come to a service at some point):

The movie is really well done, I think. The first two-thirds is a great survey of old footage, along with interviews of many people involved in the saga. The final third focuses on what became of Newman after his court case, leading to a surprising ending that colors how we should look at the first part of the movie. The two acts work really well together, and I think this movie should be of interest to anyone, and not just patent geeks.

That said, I'd like to spend a bit of time on the patent aspects, namely utility doctrine. Wikipedia has a pretty detailed entry, with links to many of the relevant documents. The federal circuit case, Newman v. Quigg, as well as the district court case, also lay out many of the facts. The claim was extremely broad:

38. A device which increases the availability of usable electrical energy or usable motion, or both, from a given mass or masses by a device causing a controlled release of, or reaction to, the gyroscopic type energy particles making up or coming from the atoms of the mass or masses, which in turn, by any properly designed system, causes an energy output greater than the energy input.

Here are some thoughts:

First, the case continues what I believe to be a central confusion in utility. The initial rejection was not based on Section 101 ("new and useful") but on Section 112 (enablement to "make and use"). This is a problematic distinction. As the Patent Board of Appeals even noted: "We do not doubt that a worker in this art with appellant's specification before him could construct a motor ... as shown in Fig. 6 of the drawing." Well, then one could make and use it, even if it failed at its essential purpose. Now, there is an argument that the claim is so broad that Newman didn't enable every device claimed (as in the Incandescent Lamp case), but that's not what the board was describing. The section 101 defense was not added until 1986, well into the district court proceeding. The district court later makes some actual 112 comments (that the description is metaphysical), but this is not the same as failing to achieve the claimed outcome. The Federal Circuit makes clear that 112 can support this type of rejection: "neither is the patent applicant relieved of the requirement of teaching how to achieve the claimed result, even if the theory of operation is not correctly explained or even understood." But this is not really enablement - it's operable utility! The 112 theory of utility is that you can't enable someone to use and invention if it's got no use. But just about every invention has some use. I write about this confusion in my article A Surprisingly Useful Requirement.

Second, this leads to another key point of the case. The failed claim was primarily due to the insistence on claiming perpetual motion. Had Newman claimed a novel motor, then the claim might have survived (though there was a 102/103 rejection somewhere in the history). One of the central themes of the documentary was that Newman needed this patent to commercialize his invention, so others could not steal the idea. He could not share it until it was protected. But he could have achieved this goal with a much narrower patent that did not claim perpetual motion. That he did not attempt a narrower patent is quite revealing, and foreshadows some of the interesting revelations from the end of the documentary.

Third, the special master in the case, William Schuyler, had been Commissioner of Patents. He recommended that the Court grant the patent, finding sufficient evidence to support the claims. It is surprising that he would have issued a report finding operable utility here, putting the Patent Office in the unenviable position of attacking its former chief.

Fourth, the case is an illustration in waiver. Newman claimed that the device only worked properly when ungrounded. More important, the output was measured in complicated ways (according to his own witnesses). Yet, Newman failed to indicate how measurement should be done when it counted: "Dr. Hebner [of National Bureau of Standards] then asked Newman directly where he intended that the power output be measured. His attorney advised Newman not to answer, and Newman and his coterie departed without further comment." The court finds a similar waiver with respect to whether the device should have been grounded, an apparently key requirement. These two waivers allowed the courts to credit the testing over Newman's later objections that the testing was improperly handled.

I'm sure I had briefly read Newman v. Quigg at some point in the past, and the case is cited as the seminal "no perpetual motion machine" case. Even so, I'm glad I watched the documentary to get a better picture of the times and hooplah that went with this, as well as what became of the man who claimed to defy the laws of thermodynamics.

Sean O'Connor: What happened to the "art" in "useful arts"?

The constitutional justification for patents and copyrights is "[t]o promote the Progress of Science and useful Arts." In the late eighteenth century, "science" included all knowledge, and "useful arts" referred to technological rather than liberal arts. In The Lost 'Art' of the Patent System, Professor Sean O'Connor argues that although the modern patent system retains some "art"-based terminology—prior art, person having ordinary skill in the art, state of the art—the traditional conception of "art" has largely been displaced by modern conceptions of technology or science. He laments the implications of these developments, such as the increase in "upstream patenting" and a prejudice against non-technological inventions, and he argues that we must "recover the lost 'art' of the patent system."

The primary doctrinal lever O'Connor points to for addressing this issue is the utility requirement. He argues that "its current diluted interpretation (anything that does anything likely has substantial utility) may stem from its separation from the underlying art," and that courts should recognize that utility is, in my co-blogger Michael Risch's words, "A Surprisingly Useful Requirement." It might seem unlikely that courts will revive utility from its current "diluted" form, but commentators probably thought the same thing about patentable subject matter ten years ago. In a 2014 talk at Stanford, Federal Circuit Judge Dyk noted: "Strangely, we don't generally ask whether a utility patent has the utility that is required by the patent statute," and he criticized the patent bar for being "too timid and too lacking in creativity" about raising novel arguments like this. I don't know that O'Connor's vision of utility is the one he had in mind, but there are some parallels between O'Connor's work and Judge Dyk's history-focused concurrence in Bilski (which was cited by the majority and Stevens's concurring opinion in Bilski, and by Justice Sotomayor's concurrence in Alice). Perhaps creative litigants attempting to breathe more life into utility will meet a more welcome reception at the Federal Circuit than they might expect.

Sean Seymore on Utility

In patent cases, the term “hindsight bias” refers to fact-finders’ tendency to use their knowledge of the invention at issue in their analysis of whether that invention would have been obvious. This error occurs when fact-finders ignore the rule that obviousness of a claimed invention must be evaluated at the time of patent filing rather that at the time of litigation. Professor Sean Seymore’s latest article, Foresight Bias in Patent Law, deals with an error that implicates the future rather than the past. Seymore is concerned with the utility requirement, which denies patents on chemical compounds that lack a demonstrated consumer end use, such as a therapeutic use, and on methods of making such compounds. Foresight Bias builds on Seymore’s earlier article, Making Patents Useful, which criticizes the utility requirement for being too subjective and calls for its elimination. Seymore’s work may be contrasted to that of Professor Michael Risch, who sees a greater role for the utility requirement (see also here).

Michael Risch on Patent Trolls and Utility

Michael Risch (Villanova Law) has posted two new articles on SSRN that are related to recent Written Description posts. The first is Patent Troll Myths (forthcoming in the Seton Hall Law Review), which compares results with Patent Quality and Settlement Among Repeat Patent Litigants by John Allison, Mark Lemley, and Joshua Walker. Risch begins with a provocative claim: "It turns out that just about everything we thought about patent trolls—good or bad—is wrong." Risch started with the ten "most litigious" non-practicing entities (NPEs)—including Acacia Technologies, General Patent Corp., and Ronald A. Katz—and searched for all cases involving these NPEs from 1986 and 2009, resulting in a dataset involving 1011 cases and 400 patents.

Michael Risch: Reinventing Usefulness

Few academics have recently been able to offer a novel (or useful?) take on the utility requirement, but I enjoyed Reinventing Usefulness by Michael Risch (Villanova Law), which has just been posted in its edited version (for the BYU Law Review). Risch makes the thought-provoking argument that we should introduce a "commercial utility" requirement (pp. 1240-41): "The proposed test would find commercial utility present with sufficient evidence to convince a person with skill in the art that a) there is a market for the invention, and that b) the invention can be manufactured at a cost sufficient to fulfill market demand. Given that more than 50% of patents wind up being worthless, an initial review to determine which patents are most likely to be worthless should be practically achievable." For a nice review of an earlier draft of this article, see John Duffy's post at Jotwell: Patent Utility Reduxit.