Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.

Mr. Justice Douglas,

with whom Mr. Justice Black agrees, concurring.

It is worth emphasis that every patent case involving validity presents a question which requires reference to a standard written into the Constitution. Article I, § 8, contains a grant to the Congress of the power to permit patents to be issued. But, unlike most of the specific powers which Congress is given, that grant is qualified. The Congress does not have free rein, for example, to decide that patents should be easily or freely given. The Congress acts under the restraint imposed by the statement of purpose in Art. I, § 8. The purpose is “To promote the Progress of Science and useful Arts . . . The means for achievement of that end is the grant for a limited time to inventors of the exclusive right to their inventions.

Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science — to push back the frontiers of ehemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. That is why through the years the opinions of the Court commonly have taken “inventive genius” as the test. * It *155 is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end — the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance. Mr. Justice Bradley stated in Atlantic Works v. Brady, 107 U. S. 192, 200 , the consequences of a looser standard:

“It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious account-ings for profits made in good faith.”

The standard of patentability is a constitutional standard; and the question of validity of a patent is a question of law. Mahn v. Harwood, 112 U. S. 354, 358 . The Court fashioned in Graver Mfg. Co. v. Linde Co., 336 U. S. *156 271, 275 , a rule for patent cases to the effect that this Court will not disturb a finding of invention made by two lower courts, in absence of a very obvious and exceptional showing of error. That rule, imported from other fields, never had a place in patent law. Having served its purpose in Graver Mfg. Co. v. Linde Co., it is now in substance rejected. The Court now recognizes what has long been apparent in our cases: that it is the “standard of invention” that controls. That is present in every case where the validity of a patent is in issue. It is that question which the Court must decide. No “finding of fact” can be a substitute for it in any case. The question of invention goes back to the constitutional standard in every case. We speak with final authority on that constitutional issue as we do on many others.

The attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent. The Patent Office, like most administrative agencies, has looked with favor on the opportunity which the exercise of discretion affords to expand its own jurisdiction. And so it has placed a host of gadgets under the armour of patents — gadgets that obviously have had no place in the constitutional scheme of advancing scientific knowledge. A few that have reached this Court show the pressure to extend monopoly to the simplest of devices:

Hotchkiss v. Greenwood, 11 How. 248 : Doorknob made of clay rather than metal or wood, where different shaped door knobs had previously been made of clay.

Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498 : Rubber caps put on wood pencils to serve as erasers.

Collar Co. v. Van Dusen, 23 Wall. 530 : Making collars of parchment paper where linen paper and linen had previously been used.

*157 Brown v. Piper, 91 U. S. 37 : A method for preserving fish by freezing them in a container operating in the same manner as an ice cream freezer.

Reckendorfer v. Faber, 92 U. S. 347 : Inserting a piece of rubber in a slot in the end of a wood pencil to serve as an eraser.

Dalton v. Jennings, 93 U. S. 271 : Fine thread placed across open squares in a regular hairnet to keep hair in place more effectively.

Double-Pointed Tack Co. v. Two Rivers Mfg. Co., 109 U. S. 117 : Putting a metal washer on a wire staple.

Miller v. Foree, 116 U. S. 22 : A stamp for impressing initials in the side of a plug of tobacco.

Preston v. Manard, 116 U. S. 661 : A hose reel of large diameter so that water may flow through hose while it is wound on the reel.

Hendy v. Miners’ Iron Works, 127 U. S. 370 : Putting rollers on a machine to make it moveable.

St. Germain v. Brunswick, 135 U. S. 227 : Revolving cue rack.

Shenfield v. Nashawannuck Mfg. Co., 137 U. S. 56 : Using flat cord instead of round cord for the loop at the end of suspenders.

Florsheim v. Schilling, 137 U. S. 64 : Putting elastic gussets in corsets.

Cluett v. Claflin, 140 U. S. 180 : A shirt bosom or dickey sewn onto the front of a shirt.

Adams v. Bellaire Stamping Co., 141 U. S. 539 : A lantern lid fastened to the lantern by a hinge on one side and a catch on the other.

Patent Clothing Co. v. Glover, 141 U. S. 560 : Bridging a strip of cloth across the fly of pantaloons to reinforce them against tearing.

Pope Mfg. Co. v. Gormully Mfg. Co., 144 U. S. 238 : Placing rubber hand grips on bicycle handlebars.

*158 Knapp v. Morss, 150 U. S. 221 : Applying the principle of the umbrella to a skirt form.

Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U. S. 425 : An oval rather than cylindrical toilet paper roll, to facilitate tearing off strips.

Dunham v. Dennison Mfg. Co., 154 U. S. 103 : An envelope flap which could be fastened to the envelope in such a fashion that the envelope could be opened without tearing.

The patent involved in the present case belongs to this list of incredible patents which the Patent Office has spawned. The fact that a patent as flimsy and as spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.

“Inventive genius” — Mr. Justice Hunt in Reckendorfer v. Faber, 92 U. S. 347, 357 ; “Genius or invention” — Mr. Chief Justice Fuller in Smith v. Whitman Saddle Co., 148 U. S. 674, 681 ; “Intuitive genius”— Mr. Justice Brown in Potts v. Creager, 155 U. S. 597, 607 ; “Inventive *155 genius” — Mr. Justice Stone in Concrete Appliances Co. v. Gomery, 269 U. S. 177, 186 ; “Inventive genius” — Mr. Justice Roberts in Mantle Lamp Co. v. Aluminum Products Co., 301 U. S. 544, 546 ; Cuno Corp. v. Automatic Devices Corp., 314 U. S. 84, 91 , “the flash of creative genius, not merely the skill of the calling.”