O'Reilly v. Morse

O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1853), also known as The Telegraph Patent Case, is an 1854 decision of the United States Supreme Court that has been highly influential in the development of the law of patent-eligibility in regard to claimed inventions in the field of computer-software related art. It holds, essentially, that an abstract idea, apart from its implementation, is not patent-eligible.

Background
The problem that would-be telegraphers faced in the early 19th century is explained in the Court's opinion:"The great difficulty in their way was the fact that the galvanic current, however strong in the beginning, became gradually weaker as it advanced on the wire; and was not strong enough to produce a mechanical effect, after a certain distance had been traversed.” (See figure at right illustrating problem Court describes.) To send a signal from Baltimore to Washington would require thousands of volts and high currents – not feasible at a time when managing to make a pickled frog’s legs twitch, as Luigi Galvani and Alessandro Volta did, was the major achievement of the electro-galvanic force. Samuel Morse’s “plan [was] combining two or more electric or galvanic circuits, with independent batteries for the purpose of overcoming the diminished force of electromagnetism in long circuits.” The concept is illustrated in the figure shown at the right. Morse inserted the relays (or “repeaters” as the opinion terms them) at sufficiently short intervals (say, every 15 to 20 miles) so that the signal was regularly restored to its initial level before noise could swamp it out.

The effect of Morse's use of "repeaters" is shown in the figure at the left, a graph of signal amplitude (with noise) vs. distance. The signal decays between repeaters, but Morse restores the signal to a predetermined level before it falls into the noise. That permits the message to be sent to great distances, which was previously not feasible.

Daniel Broadbent (Jun. 30, 1811 in Dukinfield, England - Apr. 11, 1879 in Bryn Mawr, Pennsylvania), a prominent Philadelphia Patent Attorney represented Morse, and William McConnell (Apr. 17, 1812 in Louisville, Kentucky - Jun. 28, 1870 in New Orleans, Louisiana), a prominent Louisville Patent Attorney represented Henry O'Reilly. Broadbent was a graduate of Princeton University and the University of Pennsylvania, and later became a Colonel in the Union Army during the American Civil War, being wounded at the Battle of Gettysburg. McConnell was a graduate of Georgetown University, in addition to being a lawyer, McConnell also owned a large plantation near Glasgow, Kentucky, which led to him being financially ruined by the Civil War, this led to McConnell killing himself in his New Orleans Hotel Room on June 28, 1870.

Morse's claim 8
While the case concerned a number of other issues, such as whether Morse was indeed first to invent the telegraph, the issue of lasting importance concerned Morse's eighth claim, which was directed to a method of communicating intelligible information to any distance by means of exploiting the electro-magnetic force:

Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.

What did Morse invent?
As Justice Taney, speaking for the majority of the Court, explained it, "He claims the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing intelligible characters, signs, or letters at a distance." Although "it required the highest order of mechanical skill to execute and adjust the nice and delicate work necessary to put the telegraph into operation," Morse did not "invent" what he claimed: "Professor Morse has not discovered that the electric or galvanic current will always print at a distance, no matter what may be the form of the machinery or mechanical contrivances through which it passes." Morse did not enable others to do more than make the repeater system that he described. Other persons may discover and disclose to the public other ways to use electromagnetic force to transmit messages, and the other ways may be cheaper or work better. "In fine, he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law."

Enablement and "abstract idea"
In reaching the conclusion that Morse's claim 8 was too broad and thus not subject to patent protection, the Court considered not only the fact that Morse did not teach and enable other ways to communicate information at a great distance by using the electromagnetic force, but also whether the claim was at such a high level of generality and abstraction that it claimed an "idea" rather than a practical application and implementation of an idea. In analyzing this aspect of the case, the Court looked to a recent English decision, Neilson v. Harford. Neilson upheld a patent on using heated air to oxidize carbon in cast iron in a Bessemer Converter against the claim that it was just a patent on the idea or principle that heating the injected air makes a blast furnace work better. The court pointed to the apparatus that Neilson used to preheat the air, which made the patent one on an implementation of the principle, not one on the principle itself. Morse, of course, disclosed apparatus only for the repeater system and no other. The language of the English court, picked up by the Supreme Court, was important in 20th century computer software cases: We think the case must be considered as if, the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention then consists in this – the interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated, by the application of heat externally to the receptacle, and thus he accomplishes the object of applying the blast, which before was of cold air, in a heated state to the furnace.

Dissent
Justice Grier, dissenting in Morse, asked, "What is meant by a claim [specifically, Morse's claim 8] being too broad?" Grier said, "It is only when he claims something before known and used, something as new which is not new, either by mistake or intentionally." That is, a claim is overbroad only if it encroaches beyond the frontiers of the prior art (covers prior art devices). Of course, that completely ignores the enablement requirement of what is now section 112 of the patent code.