Those who don’t deal with the patent system on a regular basis are often surprised to learn that the morality, social utility and even legality of an invention don’t enter into the question of whether it is patentable. Thus, patents are routinely granted on ideas that would certainly raise eyebrows among most decent people if actually put into practice. I was reminded of this while reading the decision handed down by the Federal Circuit today in Matthew Stevens v. Tech International, Inc.

What’s fascinating about the decision is not so much the legal issues involved as what the subject patent covers, namely “a method of removing unwanted substances from human urine.” (I kid you not.) Now if you’re like me, your first reaction is probably, “Huh? Why would anyone want to do that?” Well, if we read on a bit, we discover exactly what types of “unwanted substances” the inventors have in mind. Let’s see: “anabolic steroids…amphetamine, tetrahydrocanabinol, cocaine, morphine, codeine, nicotine, ethyl alcohol, and acetaldehyde.” Hmmm…

Now why would anyone be concerned about such things turning up in a urine sample? And why would anyone want to remove them while leaving other properties of the urine, such as pH, nitrogen content, saccharide content, red blood cell count and color, “substantially unaffected”? Gee, I wonder what use anyone could possibly make of this invention. (The fact that this invention was apparently made in Nevada gets my mind working too.)

What’s interesting, but not really surprising, is that the decision nowhere discusses how the invention is actually used or what it might be used for. Legally, that’s irrelevant — at least insofar as patent infringement is concerned. Again, whether an invention has social utility or value or should even be on the market in the first place are matters to be addressed outside the sphere of the patent statutes. That’s what the law is and I’m happy to see the Federal Circuit follow it.

As to the actual legal issue decided, that’s interesting too. The Federal Circuit actually expanded the scope of the relevant claim beyond its literal language to include salts of the acid expressly recited in the claim. Again, any move by the Federal Circuit to avoid the narrowest claim constructions possible is welcome in my book.

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Photo of Philip P. Mann Philip P. Mann

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.
Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to…

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.
Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to the court (a judge) as well as before juries. In addition to trial court work, Mann has performed appellate work before the United States Court of Appeals for the Federal Circuit.
Mann began his legal career in Chicago and Milwaukee before heading to Seattle where some of America’s most innovative companies were developing new technologies at breakneck speed. Before founding his own firm, he was a member of the Seattle Intellectual Property Law Firm, Christensen O’Connor Johnson Kindness.
Mann is an “AV” rated lawyer by Martindale Hubbell, indicative that he has reached the height of professional excellence and is recognized for the highest levels of skill and integrity.
He holds a degree in Electrical Engineering from the University of Illinois (Urbana) and received his law degree from the Washington University School of Law in St. Louis, Missouri. He is admitted to practice in the States of Illinois and Washington, as well as before the United States Patent and Trademark Office, and in various courts around the country.