O’Reilly v. Morse
56 U.S. 62, 14 L. Ed. 601 (1853)
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Rule of Law:
A patent for a new and useful art or machine is valid for the specific process or machinery described, but a claim for the exclusive use of a natural force or scientific principle to achieve a certain result, regardless of the method or machinery used, is too broad and therefore void.
Facts:
- In 1832, while on a voyage, Professor Samuel F.B. Morse conceived of an apparatus for using electro-magnetism to communicate over distances.
- Morse spent several years developing his invention, facing pecuniary embarrassments but continuing his research.
- By early 1837, Morse had developed his plan for combining two or more electric circuits with independent batteries to overcome the problem of the signal weakening over long distances.
- Morse filed a caveat with the Patent Office on October 6, 1837, and a formal patent application on April 7, 1838.
- His patent, reissued in 1848, contained eight claims; the eighth claim asserted the exclusive right to use 'the motive power of the electric or galvanic current... however developed for marking or printing intelligible characters, signs, or letters, at any distances.'
- Henry O’Reilly began using a telegraph system which Morse alleged infringed upon his patents.
Procedural Posture:
- Samuel F. B. Morse sued Henry O’Reilly in the U.S. Circuit Court for the District of Kentucky, alleging patent infringement.
- The Circuit Court found in favor of Morse, holding that his patents were valid and that O'Reilly had infringed upon them.
- The Circuit Court granted an injunction prohibiting O'Reilly from using his telegraph.
- O’Reilly, the defendant, appealed the decision of the Circuit Court to the Supreme Court of the United States.
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Issue:
Does a patent claim for the exclusive right to use a natural force, like the electric or galvanic current, to produce a specific result, such as printing intelligible characters at a distance, however that force is developed, exceed the scope of what is legally patentable?
Opinions:
Majority - Mr. Chief Justice Taney
Yes, the claim exceeds patentable scope. A patent claim for the exclusive use of a principle of nature is too broad and not warranted by law. While Professor Morse is entitled to a patent for the specific machinery and process he invented to print characters at a distance, he cannot claim a monopoly over the natural force of electro-magnetism itself for that purpose. Patent law protects the specific means an inventor creates to achieve a result, not the natural principle used or the result itself. Allowing such a broad claim would stifle future innovation, as a subsequent inventor could discover a completely different and superior method of using electricity for communication but would be blocked by Morse's patent. To be patentable, an invention must consist of a specific method or apparatus, fully described, and the patent's protection extends only to those specified means and their substantial equivalents.
Dissenting - Mr. Justice Grier
No, the claim does not exceed patentable scope. A patent claim should not be deemed too broad when it accurately describes the inventor's discovery of a new and useful 'art,' which consists of the new application of a known element of nature. Morse did not merely invent a machine; he invented the art of recording intelligible characters at a distance by means of electro-magnetism. To limit his protection to only the specific machinery described is to deny him protection for the core of his invention. The law allows for the patenting of a 'new and useful art,' and Morse's claim to the application of electro-magnetism for this purpose is a legitimate claim to that art, not an abstract principle. The majority's narrow construction wrongly denies the inventor the full scope of protection that the patent laws are intended to provide for groundbreaking discoveries.
Analysis:
This landmark decision established the fundamental patent law doctrine that laws of nature, natural phenomena, and abstract ideas are not patentable. It created a crucial distinction between the unpatentable discovery of a scientific principle and the patentable invention of a specific process or machine that applies it. By invalidating Morse's overly broad eighth claim, the Court prevented inventors from monopolizing an entire field of technology, thereby ensuring that future innovators could develop new and different applications of the same scientific principles. This precedent remains a cornerstone of patent eligibility jurisprudence, profoundly influencing modern cases involving software, business methods, and biotechnology.
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