Interpretation of the word "discovers" in 35 USC 101

The differences between an “invention” and “discovery “ are well known in the IP fraternity. Discoveries that fall under the laws of nature, physical phenomena, and abstract ideas have been held not patentable. There have been many famous case laws that discuss the difference between an invention and a discovery (See Funk Brothers Seed Co. v. Kalo Inoculant Co. - 333 U.S. 127 (1948)).  However, none (maybe) that discuss how to interpret the word “discovers” in light of 35 USC 101 or discuss the difference between the words invents and discovers in 35 USC 101. Are they different in meaning or analogous to each other? What was the intention of the congress to include the word discovers in 35 USC 101?

35 USC 101 discloses what can be patented. 35 USC 101 states:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

The 101 section clearly specifies the various statutory classes under which an application for a patent can be made. Further, it is very clear that in order to develop a good understanding and correctly interpret each and every word in the law, the complete title (35 USC 101 in the present scenario) needs to be read in its entirety.

As 35 USC 101 uses both the words, invention and discovery, how does one interpret the meaning of discovery in light of 35 USC 101?  Is there a possibility that certain inventions (that are also patentable) may not be covered under 101 if one were to delete the word “discovery” from 35 USC 101? 

In other words, discovering the property of electromagnetism will not lead to the grant of a patent. The application of this discovery may get you a patent for which one will have to come up with an inventive step that falls under the statutory classes. So exactly what does the word “discovers” tell us about 35 USC 101?

Consolidation of Multiple Patent Infringement Lawsuits into a Single Lawsuit

One of the common practices employed by plaintiffs in patent infringement suits to reduce litigation costs is to consolidate multiple defendants in a “single lawsuit” as opposed to filing a “separate lawsuit” against each defendant. This practice of consolidation has been often critiqued by industry observers who have attributed the increase in patent litigation in the recent years to this practice. If you observe the litigation suits filed in the various district courts in the United States, you will observe two parallel, yet completely tangential stories. While some plaintiffs are consolidating multiple defendants in the same lawsuit in some specific district courts, other plaintiffs are filing separate lawsuits for each defendant when the trail is happening in other district courts. Surprisingly enough, I found out that the process of consolidating multiple defendants in a single lawsuit is not straight-forward. 

Traditionally, the consolidation of multiple defendants in a single lawsuit was allowed only when any right to relief is asserted against the defendants jointly, severally or when the infringement of the accused product arises out of the same transaction, occurrence or series of transaction (299 (a)). In addition to the above factors, the consolidation was allowed when questions of fact common to all defendants or counterclaim defendants will arise in the action (299 (b)).

The first clause of section 299 is also known as “same transaction or occurrence” test which was used by courts for deciding on consolidation of defendants. However, it has been observed based on case studies that different courts have different interpretation of the “same transaction or occurrence” test. For example, when multiple defendants are accused of infringing the same patent through different acts of infringement, some courts have allowed for consolidation stating that there is a definite logical or relational dependency in the acts thereby satisfying the test while other courts have refused to allow consolidation stating that different acts of infringement does not satisfy the “same occurrence or transaction” test. The second clause of section 299 is not as twisted as the first clause as courts found out that question over the validity of patent claims were common to all accounts (read: acts) of infringement. With the enactment of the Leahy-Smith America Invents Act (AIA), few amendments were made to Section 299 to bring clarity to the overall process of consolidation. Post AIA, the defendants cannot be consolidated into one suit for trial solely based on allegations that each defendant has infringed the patent(s).  

The AIA act will certainly bring down the number of multi-defendant lawsuits, however, it may result in an increase in the number of lawsuits that would translate into added burden and load on the courts. Moreover, there may be still ways to beat the system and reduce the costs. For example, plaintiffs may file a patent infringement lawsuit covering the same patent in different district courts against different parties thereby forcing the courts themselves to consolidate the lawsuits into one single lawsuit. Even if the lawsuits are filed in the same court, the judges themselves may consolidate the lawsuits during the trial.