Markman for §101 Eligibility

April 18, 2019
Post by Kirk M. Hartung

Patent attorneys know the importance of Markman as applied to interpret patent claims. Claim interpretation is critical to infringement and validity analysis, and often is decisive in patent litigation. It is axiomatic that claim terms be construed using the common, ordinary meaning of the words, as understood by a person having ordinary skill in the art, at the time of the invention, and in view of the specification.

The U.S. Constitution, Article I, section 8, clause 8, gives Congress the sole power to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the “exclusive right” to their respective writing and “discoveries”. With this authority, Congress enacted the first patent statute in 1790 to codify patentable subject matter. The 1790 Act provided that whomever “invented or discovered” any useful art, manufacture, engine, machine, or device, or any improvements thereon not previously known or used was entitled to a patent. Thus, since the very first Patent Act, discoveries were considered patent eligible.

Except for a period from 1793-1836, “invention or discovery” has always been used in every patent statute revision to describe patentable subject matter.

The major revisions of the 1952 Patent Act added a definition:

            The term ‘invention’ means invention or discovery.    

The legislative history clearly shows Congress’ intent in maintaining discoveries as being patent eligible. While the Department of Justice sought to remove “discoveries” from the definition of invention since it was allegedly inconsistent with Supreme Court precedent and not patentable, Congress declined this suggestion for the 1952 Act. Thus, for the past 183 years, “inventions or discoveries” have been eligible for patent protection by the words of Congress.

Patent attorneys also know that the U.S. Supreme Court has issued decisions that greatly complicate what subject matter is patent eligible.

In Diamond v. Chakrabarty, 447 U.S. 303 (1980), the Court cited the legislative history of the 1952 Patent Act, concluding that Congress intended that “anything under the sun that is made by man” was statutory subject matter. However, the Court also declared that laws of nature, physical phenomena, and abstract ideas have been held not patentable, citing its own precedent. These judicially created exceptions are not found anywhere in the patent statutes.

More recently, the Supreme Court concluded that “ground breaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry”. Association of Molecular Pathology v. Myriad Genetics, 569 U.S. 576 (2013).

Then came Alice in 2014, where the Supreme Court set forth a two-step analysis for determining whether patent claims were directed to an abstract idea, so to be ineligible for patent protection. Alice Corp. V. CLS Bank Int’l, 134 S. Ct. 2347. This test has led to much confusion among the courts, the Patent Office, patent applicants, and patent practitioners.

The problems with patent eligibility can be resolved by simply doing a Markman construction of the §101 statutory language. The statutory terms are analogous to patent claim terms, and the legislative history is analogous to the patent specification. What do the words mean to a PHOSITA (i.e., representatives of Congress, not Supreme Court justices), at the time they were written (at least in 1952 when “invention” was defined), given their common, ordinary meaning, and in view of the legislative history? The conclusion seems straight forward: discoveries that are applied to promote the progress of science are patentable eligible.

Kirk Hartung is Chair of the Mechanical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information, please visit or contact Kirk directly via email at

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