Top 10 Patent Cases: 1891 to 1951 | Patently-O

2022-05-29 00:58:10 By : Ms. Jazzy Zhang

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Prior to 1891, appeals in patent cases went directly to the Supreme Court, and the Court decided lots of patent cases.  In 1891, Congress created the regional circuit courts of appeals as a buffer between the trial courts and the Supreme Court and the number of high-court patent cases began to fall.  The court decided a number of big  patent cases during the period of 1891-1952, although many of them have been rejected or are no longer followed.  Many are also primarily anti-trust cases involving the use (or misuse) of patent rights.

The following are the most cited Supreme Court patent cases during this period:

Note here, I ranked these according to the number of citations by courts.  We would get a different sorting if ranked by law review citations — a case such as Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), would rise up toward the top of the list and the Barbed Wire case would fall off.

I've been looking at pre-1952 patent cases (1891-1951). The following are the top-ten most often relied upon in law review articles:

1. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) (function-way-result test for the doctrine of equivalents);

— Dennis Crouch (@patentlyo) January 12, 2022

Law Professor at the University of Missouri School of Law. View all posts by Dennis Crouch →

I wrote my unpublished Law Review note about this, but Barbed Wire is one of the most misapplied cases by the Federal Circuit. It’s been used by the Federal Circuit as essentially a per se rule requiring either physical evidence or a second witness to corroborate an invalidity defense when really it was a case reviewing a bench trial under the clear error standard. Now it’s been used to overturn jury verdicts (or prevent juries from hearing issues) by determining a witness is per se not credible as a matter of law, which is a violation of the reexamination clause. The per se corroboration rule is something that the Federal Circuit invented out of the case that’s just not really supported by it. Patent invalidity and treason are the only things in the law that per se require a second witness.

The issue is rarely going to come up again in our modern era with as much documentation as we have, but it’s been applied in a grossly incorrect way by the Federal Circuit.

The “clear and convincing evidence” requirement unique to patent validity challenges arose from a witness oral testimony credibility [or weight of evidence?]issue in the old Sup. Ct. “Barbed Wire” cases [not as a presumption or burden of proof issue]. It has always been strongly enforced in inventorship challenges. It was re-affirmed in recent years in the i4i Sup. Ct. case. It does not require a second witness but can require some datable invention documentation when the only offered evidence is the oral testimony of the self-interested alleged-inventor. [That little evidence, from a biased source, unless unrebutted, would seem insufficient even absent the “clear and convincing evidence” requirement.]

Ron Katznelson has provided a different — and far more in-depth expose of the C&C nature.

This is, of course, in addition to the statutory presumption of patent validity.

The A & P case became familiar to me in about 1973, early in my career. Prior to that, I found the concept of invention somewhat nebulous and inventions difficult to identify. Then I came across the immortal words of Mr Jusice Jackson:

“Neither court below has made any finding that old elements which made up this device perform any additional or different function in the combination than they perform out of it. This counter does what a store counter always has done — it supports merchandise at a convenient height while the customer makes his purchases and the merchant his sales. T he three-sided rack will draw or push goods put within it from one place to another — just what any such a rack would do on any smooth surface — and the guide rails keep it from falling or sliding off from the counter, as guide rails have ever done. Two and two have been added together, and still they make only four.

Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”

I immediately realized that if a change in function or a new result could be identfied, then that was evidence of invention, and this was an essential clue that gave a huge positive impetus to my professional work. It will be appreciated that this reasoning effectively underpins the technical problem test at the EPO, because the new function or result achieved with reference to the closest prior art is the basis for reconstructing the technical problem solved by the invention.

Washburn & Moen Mfg. Co. v. Beat ‘Em All Barbed-Wire Co is also interesting insofar as it concerns the historuc Glidden patent on barbed wire. It has inspired a question put to students at Bournemouth University amongst other things to consider whether the fields of endeavour are sufficiently identified (five such fields can usefully be found) and to identify missing information in the specification (What are the barbs made of? What range of diameter is suitable? Would it not be useful to specify that the wire is galvanised, which differentiates the coiled barb from a coil of piano wire?)

Old decisions can be very instructive. And on my gravestone, the following words should appear: “He diminished the resources available to skilful men!”

Nice to see you active on the A&P case, Paul. Are you old enough to remember the advent of the three-sided tray in UK grocery shops. I am, and remember as a student being impressed how much they speeded up the task of getting successive laden supermarket trolley loads of goods through the check out. Less time spent kicking my heels in the check-out queue was very gratifying for me.

If I were writing the patent application now, with the benefit of knowledge of the EPO’s Problem-Solution Approach to obviousness, I would have identified the objective technical problem as how to speed up passage of goods from trolley to shopping bag, including the number of price items through the till per minute, per customer. The solution is manifested in the method as much as in the device, the method involving successive reciprocations of the tray, with simultaneity of i) customer loading up the tray while at the same time ii) the cashier puts through the till the batch of items delivered to the cashier immediately previous to the batch being assembled by the shopper in the tray.

Not much the court of appeal could have done, of course, given sub-optimal drafting and sub-optimal advocacy in the lower courts. The Jackson quote might well be spot on, and just as relevant today, but I still hang on to the view that the tray invention deserved a patent.

A quick few minutes of research reveals that the prior art relevant to the three sided tray was “the well-known pool rack”. I take this to be the triangular closed sided frame used to arrange the set of billiard balls on the green baize ready for the first move in a game of snooker. For me there’s a big difference between a three-sided shuttle and a 3-sided triangular closed frame.

Putting it another way, how does a well-known pool rack help a supermarket operator to speed the flow of customers through the check-out? Was it obvious? I still think not.

I definitely remember them in the UK, and the last occasion I saw one in use was in Marks & Spencer, Kingston upon Thames, Christmas 1987 which was a temporary counter set up to cope with the Christmas rush. It prompted me to write an article on the subject – Supermarket Check-Outs Revisited, Patent World, March 1988, pp. 12-17.

Paul, you never cease to amaze me. So these 3-sided tray check-outs made just as much of an impression on you as they did on me then. I’m pleased about that.

While we are talking, check out the Gene Quinn blog this morning with his unease about the levels of scientific education on display amongst the Justices of the US Supreme Court. It instantly reminded me of CPSnow’s “Two Cultures” lecture in 1959. You too, perhaps.

If you send me an e-mail at Lucas & Co, I can send you a copy of the article. Same for other readers who may be interested.

Dear Paul, Please send me a copy of CPSnow’s “Two Cultures” lecture from 1959. Thank you in advance for you kind offer. Cordially, John Drach Retired Patent Attorney

Having now read the Turnham check-out patent I see that the drafting was not at all “sub-optimal”. All the more appalling, that the Supreme Ct saw fit to reverse the courts below, on the obviousness issue and on the basis of a different sliding frame (necessarily triangular and closed, contradictory to the rectangular 3-sided open shuttle needed for the invention) used for a different purpose, and used exclusively in the remote field of playing pool/snooker/billiards. Of course, any pool player, on seeing the invention, will be reminded of the triangular frame used in the cue game, but for that recognition to cue a revocation of the claim for obviousness is 06sc3ne.

On second thoughts, perhaps the Justices of the Supreme Court should stay well away from the American Axle case, lest they do even more damage to patent law than they’ve done already.

Eibel is always one of my favorites because the invention was to put a 2×4 under two of the legs of the machine (as ‘conventional’ as you can get). Unfortunately, the whole ‘recognizing the problem’ doctrine seems to have fallen by the wayside.

This time period was well before PTO Rule 56.

Having typed in my Comment #1 above, I re-visited the recent “Motivation to Combine” thread and was troubled by Random Guy’s words on how predictability of technical effects affects the obviousness of claims to mechanical devices. This reinforces my uneasy feeling that, under the ruling US case law, the obviousness determination is irredeemably subjective. With hindsight knowledge of a contribution to a field of engineering, anybody can prove that the technical performance is something that could easily have been “predicted”, even something that, in any PHOSITA’s book is a flash of genius, a Grade 1 candidate for a Shoo-in immediate recognition of high merit patentability.

The obviousness enquiry doesn’t have to be subjective though, does it?

I conclude that folks prefer it that way. Why though? Perhaps because it affords zealous lawyers infinitely more opportunity endlessly to argue about it?

Case #5, the A&P supermarket check-out sliding tray device, distresses me, the more so that it served as a trailfinder for the KSR court. As Dennis observes, it is with mechanical devices, engineering cases and the “predictable” arts rare that the claimed combination of features deliversa surprising result, more than the (expected) sum of its parts and so, to set that up as a test of patentability is, for me, greatly to be regretted. There should be instead an objective TSM obviousness enquiry, to shut out hindsight-biassed and subjective thinking.

Or am I (and also Dennis?) misunderstanding what the court had in mind with is “more than the sum” utterance?

Dennis Crouch Associate Professor, University of Missouri School of Law SSRN Articles Jason Rantanen Professor, University of Iowa College of Law SSRN Articles Occasional guest posts by IP practitioners and academics

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