The recent increase in the price of gasoline has captured attention. The Federal Trade Commission is currently investigating the situation. If one looks toward the bottom of many of the news stories, one will find a reference to a certain patent to Union Oil (Unocal) as at least part of the problem. These stories suggest that the patent dispute is obscure or esoteric. In fact, the dispute in the Union Oil case reveals a rather basic, and easily understood, point of United States Patent Law.
Central to the patent law is a simple quid pro quo exchange. In return for the disclosure, by the inventor, of a well-defined, working invention (which is separately useful, novel, and nonobvious), the United States government will grant to the inventor a right to exclude others from making, using, selling or offering to sell the invention for a limited period of time. After the limited period of time has expired, the well-defined, working invention passes into the public domain, meaning that anyone is free to use it.
The U.S. patent statute expressly imposes the obligations on the inventor of a well-defined and working invention, with these requirements respectively termed "the written description requirement" and "the enablement requirement." Of the first, adequate description of the invention guards against the inventor's overreaching by requiring that he describe his invention in
such detail that his future claims can be determined to be encompassed within his initial disclosure to the Patent Office. That is, by requiring the inventor to record, at the time of filing, what invention was in possession, the law ensures that, at some later date, the inventor cannot claim something that he did not invent.
Of the second, the law requires the inventor must teach one of ordinary skill in the art how to make and use the invention. One of ordinary skill knows what is well known in the art. Enablement is not precluded by the necessity of some experimentation to make the invention work, although such experimentation should not be undue.
The two requirements are distinct. Suppose the inventor discloses item A and B, but not C, and has no broadening language to suggest C. However, routine experimentation would show C. Item C would be "enabled" but would not be described.
United States Patent No. 5,288,393 ("the '393 patent") to Union Oil Company of California claims automotive gasoline compositions that reduce automobile tailpipe emissions. The objective was to reduce the levels of carbon monoxide (CO), nitrogen oxides (NOx), and hydrocarbons (HC) emitted, most directly to conform to California state requirements. The issued claims, none of which were present in the application as filed but instead were created by amendment during prosecution, do not describe each gasoline product in terms of molecular structures or lists of ingredients. Rather, the claims specify the chemical and physical properties of the gasolines, reflecting a functional approach to claiming. Oil refiners of ordinary skill in the art change the properties of gasoline by varying the proportions of different petroleum stocks. The disclosure of the '393 patent correlated the lowering of carbon monoxide with certain properties of the streams, and similarly for nitrogen oxides and hydrocarbons.
Union Oil sued several other refiners for infringement, and in a jury trial on the above, and other issues, the jury answered 223 individual questions, finding the '393 patent was valid and infringed. In a 2-1 vote, a panel of the Court of Appeals for the Federal Circuit upheld the jury verdict. The majority found there was general language in the patent disclosure ("specification") pointing to the specific claims ("It will also follow that one can increase or decrease any combination of the eight properties listed above...") The issue was that there was no language in the specification pointing to the combinations specifically given in the claims.
The U.S. patent statute expressly imposes the obligations on the inventor of a well-defined and working invention, with these requirements respectively termed "the written description requirement" and "the enablement requirement." Of the first, adequate description of the invention guards against the inventor's overreaching by requiring that he describe his invention in
such detail that his future claims can be determined to be encompassed within his initial disclosure to the Patent Office. That is, by requiring the inventor to record, at the time of filing, what invention was in possession, the law ensures that, at some later date, the inventor cannot claim something that he did not invent.
Of the second, the law requires the inventor must teach one of ordinary skill in the art how to make and use the invention. One of ordinary skill knows what is well known in the art. Enablement is not precluded by the necessity of some experimentation to make the invention work, although such experimentation should not be undue.
The two requirements are distinct. Suppose the inventor discloses item A and B, but not C, and has no broadening language to suggest C. However, routine experimentation would show C. Item C would be "enabled" but would not be described.
United States Patent No. 5,288,393 ("the '393 patent") to Union Oil Company of California claims automotive gasoline compositions that reduce automobile tailpipe emissions. The objective was to reduce the levels of carbon monoxide (CO), nitrogen oxides (NOx), and hydrocarbons (HC) emitted, most directly to conform to California state requirements. The issued claims, none of which were present in the application as filed but instead were created by amendment during prosecution, do not describe each gasoline product in terms of molecular structures or lists of ingredients. Rather, the claims specify the chemical and physical properties of the gasolines, reflecting a functional approach to claiming. Oil refiners of ordinary skill in the art change the properties of gasoline by varying the proportions of different petroleum stocks. The disclosure of the '393 patent correlated the lowering of carbon monoxide with certain properties of the streams, and similarly for nitrogen oxides and hydrocarbons.
Union Oil sued several other refiners for infringement, and in a jury trial on the above, and other issues, the jury answered 223 individual questions, finding the '393 patent was valid and infringed. In a 2-1 vote, a panel of the Court of Appeals for the Federal Circuit upheld the jury verdict. The majority found there was general language in the patent disclosure ("specification") pointing to the specific claims ("It will also follow that one can increase or decrease any combination of the eight properties listed above...") The issue was that there was no language in the specification pointing to the combinations specifically given in the claims.
Symbolically, although the patent separately disclosed elements A, B, and C in the specification, it did not teach A + B + C as a combination as was claimed, or as the dissent stated: "There surely is a description of most of the particular claim limitations of the various claims, but that is not the same as a description of a specific composition described by a particular
selection of those characteristics."
The royalty in question is 5.75 cents per gallon, and hundreds of millions of dollars are at stake. The losing defendants talk about an appeal to the U.S. Supreme Court. "There is scarcely any subject out of which grows more lawsuits than that of patents. Every one therefore interested should know what to avoid and what to do." That advice, given in 1851 in The American Whig Review, remains true today.
Lawrence B. Ebert is counsel at Reed Smith LLP. He may be reached at (609)-514-5951 or at email ebert@prodigy.net. He is a frequent contributor to Intellectual Property Today, which is opening a new website at www.iptoday.com. Text of U.S. patents is available at www.uspto.gov. Ebert has a J.D. from the University of Chicago, has a Ph.D. in physical chemistry from Stanford, and worked as a research scientist at Exxon Corporate Research Laboratories in Clinton Township, New Jersey.