Respondents Brief — Hazeltine Research, Inc. v. Brenner

oehkhinwce

Ricodecsiisi and s 8

“Tl. Prior to the "gee Patent Act, sagiaaaig

patonts were unquestionably relevant refer- _

ences in determining alate subsequent

table advance

inventions disclosed a

II, The Patent Act of 1952 did not limit the use

of copenditig patents as Teferences relevant.

to patentability

. CITATIONS

a i sender Milburn Co. v. "Davis Bournoncile Co.,

"7 « 1270 U.S. 390

a 9, 11, 12, 13, 14, 16, 17, 19, 20, 21, 22, 23, 27; 2, ‘a9

Deemer Products Corporation v. Universal Slide .

Fastener Co., 172 F. 2d 150

oe pegetaaeey iF. 2d 227.

E Denaro v. Maryland Baking Co., 50 F. 24/1074

E Devola Corp.v. Haseltine Corp., 313 US. 259

14, 15, 20, 21, 23,27

Gregg, Application of, 244 F. 24 316

: Harry, Application of, 333 F. 2d 920

. 5

Cases—Continued

Helene Curtis Industries v. Sales Affiliates, 233 F. 2d

Hotchkiss v. Greenwood, 11 How, 248 6, 9, 15, 16, 22, 23

yon v. Dempster Mill Mig. Co., 275 F. 2d

fake iene at 2d 834

L. Sonneborn Sons, Inc. v. Coe, 104 F. 2d 230

: Minnesota Mining & Myo. Co. v. Coe, 100 F. 2d 429...

Old Town Ribbon & Carbon Co. v. Columbia Ribbon &

Carbon Mfg. Co., 159 F. 2d 379--

Ottinger v. Ferro Stamping & Mfg. Co., 59 F. 2d 640-_-.

Permo, Ine. v. Hudson-Ross, Inc., 179 F. 2d 386

Radio Corporation.of America, et al. v. Radio Engineer-

ing Laboratories, Inc., 293 U.S. 1_...-------------

Seid, Application of, 161 F, 2d 229

Sewall v. Jones, 91 U.S. 171

Sherwin Williams Co. v. Marzali, 190 F. 2d 606

Spencer, In re, 47 F. 2d 806

United Specialties Co. v. Industrial Wire Clo'h Products

Corp., 186 F. 2d 426

Walker, In re, 99 F. 2d 976

Weatherhead v. Drillmaster Supply Co., 227 F. 2d 98_- 26

Western States Mach. Co. v. S. S. Hepworth Co., 147

F. 2d 345, certiorari denied, 325 U.S. 873 16, 17,21

Williams, In re, 62 F. 2d 86

Youker, In re, 77 F. 2d 624

Statute:

Patent Act of 1952:

35 U.S.C. 101

35 USC.

35 U.S.C.

35 US.C.

35 U.S.C.

35 U.S.C.

35 U.S.C.

35 U.S.C.

35 U.S.C.

Miscellaneous:

37 C.F.R. 1.131

Federico, Commentary on the New Patent Act, 35

RE ea ie 24, 28.

Miscellaneous—Continued

Hearings Before Subcommittee No. 3 of the House

Committee on the Judiciary, 82d Cong., Ist Sess., Page

ee 25

‘HLR. 3760, 82d Cong., Ist Sess____......--.- 2-2 - 24

H. Rep. No. 1923, 82d Cong., 2d Sess., p. 7 (1952)__. 24,28

Reviser’s Note to 35 U.S.C. 103__._-....._._______- 23

S. Rep. No. 1979, 82d Cong., 2d Sess., p. 6 (1952)... 24, 28

Senate Subcommittee on Patents, Trademarks and

Copyrights, Efforts to Establish a Statutory Standard

of Invention, Study No. 7, 85th Cong., Ist Sess.,

jn ie t Sure ono aed stu

jae em al

HazELTINE ReEseaRcH, INC., ET AL., PETITIONERS

v. xr t6

COMMISSIONER OF PATENTS:

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF

APPEALS FOR THE DISTRICT OF COLUM3IA CIRCUIT

BRIEF FOR THE COMMISSIONER OF PATENTS

OPINIONS BELOW ©

The opinion of the district court (R. 69-74) is re-

ported at 226 F'. Supp. 459. The opinion of the court

of appeals (R. 82-83) is reported at 340 F. 2d 786.

JURISDICTION

The judgment of the court of appeals was entered

on November 25, 1964 (R. 83). The petition for a

writ of certiorari was filed on February 18, 1965 and

granted on April 5, 1965 (R. 85). The jurisdiction

of this Court is invoked under 28 U.S.C. 1254(1).

QUESTION PRESENTED

. Whether a ‘“‘copending patent’’—+.¢., a patent ap-

plied for before the invention and application in issue

but granted after the application in issue—is a relevant

(1)

2

_Yeference in determining whether there has been a

patentable advance in the art under Section 103 of the

died | shdwors Invotvep! 9

Title 35 of the, United States. QGode provides in

pertinent part:

§ 101: Inventions patentable.

_ Whoever invents or discovers any new and

useful process, machine, manufacture, or com-

position of matter, or any new and useful im-

provement thereof, may obtain a patent there-

for, subject to the conditions and requirements

of this title.

§ 102: Conditions for patentability ; novelty and

loss of right to patent.

A person shall be entitled to a patent unless—

(a) the invention was known or used by oth-

ers in this country, or patented or described in

a printed, publication in this or a foreign zoun-

try, before the invention thereof by the appli-

cant for patent, or

* * * * *

(e) the invention was described in a patent

granted on an application for patent by an-

other filed in the United States before the in-

vention thereof by the applicant for patent * * *.

§ 103: Conditions for patentability ; non-obvious

subject. matter.

A patent may not be obtained though the in-

vention is not identically disclosed or described

as set forth in section 102 of this title, if the

differences between the subject matter sought

to be patented ard the prior art are such that

the subject matter as a whole would have been

obvious at the time the invention was made to

a person having ordinary skill in the art to

which said subject, matter pertains. Patent-

ability shall not be negatived by the manner in

which the invention was made, ,

STATEMENT

On December 23, 1957, petitioner Robert Regis filed

an application for a patent on a microwave switch

(R. 9-15)." The application was denied by the patent

examiner on June 24, 1959, on the ground that the

elaims set forth therein were ‘‘unpatentable over’’ a

patent (No, 2,822,526) issued to Wallace in 1958, “‘in

view of” a 1949 patent issued to Carlson (No. 2,491,-

644) (R. 23). It is conceded that if Regis’ applica-

tion is judged against the Wallace and Carlson pat-

ents, it. does not disclose a patentable advance within

Section 103 of the Act (35 U.S.C. 103) (precluding

patents on developments “‘obvious’”’ in light of the

“prior art” ‘‘to a person having ordinary skill in the

art”); the question presented is whether the Wallace

patent was, in fact, properly employed as a refer-

ence relevant to the patentability of Regis’ claims.

The Carlson patent had been issued on December 20,

1949, well before Regis’ application and invention,

and was thus indisputably part of the art in light

of which Regis’ claim to a patent was to be judged.

The Wallace patent, however, was a “copending pat-

\? Three days before Regis filed his application, he assigned

his entire interest in the invention and the application to

petitioner Hazeltine Research, Inc. (R. 47).

4

ent” with Regis; that is, although Wallace had ap-

plied. for a patent prior to the Regis mvention and

application, Wallace’s patent | ‘was not issued until

after the Regis’ application was filed.” ‘Petitioners

dtgued before the Patent Office that such a “co-

pending patent” was an improper reference to deter-

mine whether Regis’ invention was a patentable

advance in the art under Section 103. (R. 22, 26-32),

The examiner rejected this contention (R. 23) and his

decision was upheld by the Board of Appeals of the

Paterit Office (R. 42-45).

Petitioners then instituted the sstehieht action in the

district court pursuant to Section 145 of the Act (35

U.S.C. 145), seeking to compel the Commissioner of

Patents to issue a patent on the invention described

in Regis’ application (R: 1-4). The district court

dismissed petitioners’ complaint (R. 75). After not-

ing petitioners’ concession that, if the Wallace patent

was a relevant reference, the combination of Wallace

* The Wallace application was filed on March 24, 1954. The

Regis application was filed on December 23, 1957. A patent

was issued on the Wallace application on February 4, 1958

(R. 34).

With regard to. Regis’ invention date, his complaint (R. 2)

alleged merely that it had been “[p]rior to December 23,

1957” (the date of his application). However, the Exam-

iner’s Answer before the Patent Office Board of Appeals

(R.. 35). reveals that: Regis “has not sworn back of either

reference under the provision of Rule 131 [37 C.F.R. 1.131],”

giving an applicant whose claim is rejected upon the basis

of a reference to a domestic patent an opportunity to al-

lege “a completion of the invention in this country before

the filing date of the application on which the domestic patent

issued. * * *” Hence it is assumed throughout (which peti-

tioners do not dispute) that Regis’ alleged invention, as well as

Regis’ application, was made after Wallace’s application.

5

with Carlson would negate the patentability of Regis

under Section 108 (R. 69), the court held that “copend-

ing patents” were ‘‘ineluded in the ‘prior art’, as that

ternn in ws6d ih'35. 0.8.0: 103.” The court based its

decision upon two considerations: (1) prior ‘to the

enactment of the Patent’ Act’ of 1952, a copending

patent would have clearly been a reference relevant

to show that claims were unpatentable for failure to

make a significant advance in the art; (2) the 1952

Act, as shown by its legislative history: did not

change the law in this respect (R. 70-74). The

court of appeals affirmed, per curiam (R. 82-83).

ARGUMENT

Introduction and Summary

The single question raised by petitioners in this case

concerns the use which may be made, in judging the

patentability of an alleged invention under Section

103 of the Patent Act (35 U.S.C. 103), of disclosures

of prior inventions contained in “copending patents.”

A copending patent, for this purpose, is a patent on

a prior invention which was already applied for at

the time of the invention and application in issue, but

which is not isswed until after the filing date of the ap-

plication in issue; a period of time exists, therefore,

when the two applications are ‘‘copending’’ before

the Patent Office and neither has been granted. The

Wallace patent in this case was, for a short time,

such a copending, patent with respect to the Regis

application which is the subject matter of the litiga-

tion. The Wallace application was filed in 1954—

788-679 —_65—_—2

before Regis’ alleged invention.’ The Wallace patent

did, not issue, however, until February, 1958, a little

more than one month, after ‘Regis’ patent applica-

tion, was filed in December, 1957. The two patents

were thus copending for the short period between

Regis’ filing date in December, 1957, and Wallace’s

patent, date in February, 1958,

In. these, circumstances, the Patent Office, the dis-

trict court and the, court of appeals have held that

the patentability of Regis’ alleged invention must

be judged in light of. the disclosures of the copend-

ing; Wallace patent. just as. if Wallace’s patent had

issued before, rather than a few weeks after, Regis’ in-

vention. It is conceded that, so judged, the Regis in-

vention is not patentable, since the differences between

it and the Wallace patent, viewed in light of a 1949

patent issued to Carlson, would have been obvious “to a

person having ordinary skill in the art’’ within the

doctrine of Hotchkiss v. Greenwood, 11 How. 248,

codified in Section 103 of the 1952 Patent Act. Thus

the sole question is whether Wallace was correctly used

as a reference relevant in judging the patentability of

Regis under Section 103. We submit that it was.

The Patent Office and the courts below invoked the

principle—established by this Court’s 1926 decision

in Alexander Milburn Co. v. Davis-Bournonville Co.,

270 U.S. 390—that, for the purpose of judging the

* See footnote 2, supra, p. 4.

7

patentability of a subsequent, inyention, a, copending

and.ultimately issued United States patent dates from

the time when the application was filed rather than

from the date when the patent is ultimately, issued,

The instant case comes within this rule because Wal-

lace invented and: filed before Regis did, although

Wallace’s application was not finally processed until

after Regis had applied for a patent, The principle

of the. Milburn case, originally a judicial gloss npon

the patent statute, has since been explicitly codified

in Section 102(e) of the 1952. Patent Act (35 U.S.C.

102(e)), providing that a patent shall not issue if

‘the invention was described in a patent granted on

an application for patent by another filed in the

United States before the invention thereof by the

applicant for patent.” The 1952 Act thus treats co-

pending patents as equivalent to previously issued

patents, which are relevant references under Section

102(a) (35 U.S.C, 102(a)).

Although petitioners appear to concede the general

validity of the Milburn principle under the 1952

Patent Act, they seek to limit its applicability to a

special class of cases. Specifically, petitioners urge

that while the Milburn rule applies when a copending

patent discloses the exact invention claimed in an ap-

plication on a subsequent “invention,’’ the rule does

not apply when the subsequent application contains

some difference from, or variation upon, the eopend-

ing patent. This is so, petitioners argue, even though

the difference or variation, asin this ease, is an in-

significant one which would not constitute a patentable

advance over the copending patent under Section 103,

Petitioners’ argument rests principally upon the

language used by Congress in 1952 in codifying the rule

precluding patents upon variations obvious “to a per-

son having ordinary skill in the art.”” Congress stated

in Section 103 that the relevant references in judging

such obviousness were those in the “prior art” at the

date of the invention in issue. In petitioners’ view, the

words “prior art’? must be taken to refer only to pat-

ents already issued as described in Section 102(a) of

the Act, and cannot refer to copending patents as

described in Section 102(e). Thus petitioners urge

that copending patents are not “prior art’”’—-and hence

are not relevant—for purposes of judging patentability

under Section 103.

We show below that the limitation which petitioners

would thus place upon the use of copending patents

is novel and wholly unwarranted. While there was—

and there remains—some confusion in the use of the

term “prior art” in judicial opinions in the lower

courts, it was, as we show, entirely clear before

the 1952 Act that disclosures of prior inventions in ¢o-

pending patents (whether or not such patents were

technically labelled ‘‘prior art’’) were competent,

)

under the rule of this Court’s Milbarn. decision, to

negate patentability for lack of a significant advance

in the art under Hotchkiss v. Greenwood. When the

Milburn and Hotchkiss rules were codified in Sections

102(e) and 103 of the 1952 Act there was no suggestion

in either the statute or the legislative history that a

limiting change in this use of copending references was

intended; nor has any casé or commentary since the

1952 Act suggested such a purpose. Thus the result

which obtained before 1952 continues to govern today,

as several decisions of the lower courts have held. In

short, copending patents remain relevant references in

determining whether an application discloses a signifi-

eant advance in the art. Indeed, any other rule would

create a danger of numerous overlapping patents

prejudicial to the public and to legitimate prior

inventors.

Finally, Congress’ use of the term ‘‘prior art’”’ in

Section 103 of the 1952 Act, upon which petitioners

principally rely, is fully consistent with the use of

copending patents in Section 103 cases. Whatever

eonfusion once existed in the lower courts, this Court

had made it clear in 1941 that copending patents “con-

stituted prior art,’’ Detrola Corp. v. Hazeltine Corp.,

313 U.S. 259, 265, and it is reasonable to suppose that

Congress so understood the term when it ineorporated

it in Section 108. Hence “prior art’’ in Section 103

includes copending references as described in Section

10

102(e) as well as’ previously ‘issued ——— as

ngry od in Section woes re ef

I

PRIOR TO THE 1952 PATENT. ACT, COPENDING PATENTS

WERE UNQUESTIONABLY RELEVANT REFERENCES IN DE-

TERMINING ‘WHETHER SUBSEQUENT INVENTIONS DIs-

CLOSED A PATENTABLE ADVANCE IN THE ART

It has always been assumed, as petitioners acknowl-

edge, that an invention is unpatentable if the identical

invention, achieved at a prior time by another inven-

tor, is claimed in a copending patent application. This

result follows not from any special rule as to copend-

ing patents, but from the basic and guiding principle

that priority is determinative. This rule of prior

invention is now codified in Section 102(¢) of the

Patent Act (35 U.S.C. 102(g)), which provides that

an applicant shall not be entitled to a patent if, ‘‘he-

fore the applicant’s invention thereof the invention

was made in this country ‘by another who had not

abandoned, suppressed, or concealed it.’? Section 135

of the Act (35 U.S.C. 135) provides for ‘so-called in-

terference proceedings to determine the factual issue

of priority when a question is raised in that regard.

While the problem of copending identical patents ©

has thus always been solved in principle by: a straight-

forward application of the rule of priority of inven-

tion, the answer was not always so clear in cases

where the copending applications did not claim a

patent on exactly the same invention, but where the

11

disclosures in the ‘prior ¢opending patent neverthe-

less would, if considered to be’ part of the relevant

art, affect the patentability of the’ subsequent’ patent

by showing it to be an insignificant ‘advance’ in the

art. A rule- for ‘such ¢ases—similar to the’ rule

applied to identical claims—was, however, established

by this Court in 1926 in Alexander Milburn Co. v.

Davis-Bournonville Co., 270 U.S. 390. It is this rule,

now codified in Section 102(e) of the Act, Whieh’ dis-

poses of the present case.

In the Milburn case, the copending patentees were

Clifford and Whitford. (Both patents were issued

by the Patent Office, the question of the validity of

Whitford’s patent being raised against his assignee

in infringement proceedings). Clifford, thé - prior

inventor and applicant, “gave a complete and adequate

description of the thing patented to Whitford [the

subsequent inventor and applicant], but * * * did not

claim it.’’ 270 U.S. at 399. Clifford’s disclosures

were not revealed prior to Whitford except in Clifford’s

patent application ; hence they did not come within the

tule now codified in Section 102(a) of the Act (35

U.S.C. 102(a)), that patentability must be judged in

light of disclosures actually patented or published be-

fore the invention in question. In the district court,

Judge Learned Hand held: Whitford’s patent valid

despite the disclosures in Clifford’s prior copending

patent. In Judge Hand’s view, copending applications

were properly used only to show that a prior inventor

was entitled to the patent claimed. Since Clifford did

12

not claim the disclosures later ¢laimed by Whitford

(although, he described, Whitford’s claims) Clifford.

was not a prior inventor competing for the same pat-

ent and his copending disclosures, not otherwise part

of the known art prior.to Whitford’s invention, could

not bear upon the patentability of Whitford. See 297

Fed. 846, 851-854. . The court of appeals affirmed. 1

FY, 2d..227,., OBE sb

In ‘a, unanimous opinion written by Mr. Justice

Holmes, this Court reversed. The Court held that

copending patents were relevant not .only to resolve

competing. claims between inventors claiming the

same invention, but also, to determine whether a sub-

sequent. inventor has made a patentable invention—

regardless of the identity of his claims with those

made by other inventors, The Court reached this

result by considering as immaterial the delays oc-

casioned in the Patent Office between the filing and

issuing date of a patent application. | It observed that

if Clifford’s patent had actually issued before Whit-

ford applied, his disclosures would have been part of

the relevant art by which’ Whitford’s claims would

be judged, even though Clifford did not claim Whit-

ford’s “‘inyention.’’? This being true, “a sound dis-

tinction cannot. be taken. between that case and a pat-

ent applied for before but not granted until after a

* second patent is sought: } The delays of the patent

office ought not to cut down the effect of what has

been done., * * * Clifford had done all that he could

do to make his description public. * * * We see no

reason in the words or policy of the law for allowing

13

Whitford to profit by the delay and make himself

out to be the first inventor when he was not so in fact,

when Clifford had shown knowledge inconsistent with

the allowance of Whitford’s claim * * *’’ (270 US.

at 400-401). Thus, the Court concluded, since the

prior Clifford patent ultimately issued, the question

whether to issue an additional subsequent patent to

Whitford must be decided in light of Clifford.

As stated in the Reviser’s Note accompanying the

incorporation of the Milburn decision into the 1952

Act (as Section 102(e)), Milburn means that, “for the

purpose of anticipating a subsequent inventor,” “a

United States patent disclosing an invention dates

from the date of filing the application.” Under this

standard, the Regis invention in this case was unpat-

entable, since it disclosed no patentable advance over

Wallace, which had been previously filed in the Pat-

ent Office.

Although there is a factual difference between

the Milburn case and the present one, the cases are not

distinguishable. The prior Clifford application (in-

volved in Milburn) did not claim the subject mat-

ter of Whitford’s patent, but did give ‘‘a complete

and adequate description of the thing patented to

Whitford” (270 U.S. at 399). In the imstant case,

Wallace and Carlson did not thus completely describe

the Regis invention; they did, however, make claims, in

light of which Regis’ invention is unpatentable as an

insignificant advance in the art. The theory of the

Milburn case applies equally to both situations. Delays

788-679—65——8

14

within the Patent Office are to be ignored and the Wal-

lace patent deemed prior to Regis’ invention. Regis

is, consequently, unpatentable whether identically dis-

closed by Wallace and Carlson or merely an insignifi-

eant advance over those two patents.

That the Milburn doctrine of copending patents

thus applies to the present case was demonstrated

beyond doubt by the Court’s express holding, in 1941,

in Detrola Corp. v. Hazeltine Corp., 313 U.S. 259,

that “‘eopending patents,” regardless of whether they

partially or completely disclose the claimed subject

matter, constitute a part of the prior art by which

patentability must be judged. The Detrola case in-

volved the alleged infringement of a patent issued to

Wheeler on a radio circuit. In an infringement

proceeding instituted by Hazeltine, Wheeler’s assignee,

this Court stated (313 U.S. at 264-265; emphasis

added) :

The defendant insisted that the [Wheeler]

patent involved no invention in view of the

prior art and cited patents issued before

Wheeler’s date of conception and others issued

before the patent in suit on applications ante-

dating his. date of invention and pending when

his application was. filed [1.e., copending pat-

ents |.

He of these were for transmission systems

and some for receiving systems. Several dis-

closed automatic amplification control. All

_ | constituted prior art. [Footnote citing Alez-

(ander Milburn Co. v. Davis-Bournonville Co.,

270 U.S. 390.]

15

Indisputably, the copending patents referred to in

Detrola were of the type involved in the instant case,

i.e, patents not identical with the subsequent inven-

tion, but in light of which that invention would have

been obvious to one skilled in the art within the doc-

trine of Hotchkiss v. Greenwood, supra, and Section

103 of the Act. For, after analyzing in detail the re-

lationship between Wheeler’s patent and the prior

art cited against Wheeler, including copending pat-

ents, the Court coneluded, with special emphasis upon

the copending elements in the prior art, that (313 U.S.

at 269; emphasis added) :

Wheeler accomplished an old result by a com-

bination of means which, singly or in similar

combination, were disclosed by the prior art

and that, xotwithstanding the fact he was

ignorant of the pending applications which an-

tedated his claimed date of invention and even-

tuated into patents, he was not tn fact the first

inventor, since his advance over the prior art,

if any, required only the exercise of the skill of

the art.*

* Petitioners contend that the question whether copending

patents which partially disclose the claimed subject matter

constitute prior art was neither presented to, nor decided by the

Court, in Detrola (Pet. Br., pp. 17-18). While the briefs filed

with the Court did not specifically raise the question, it is never-

theless clear that the issue was raised by the facts of the case

and: that the Court explicitly passed on this issue in considering

copending patents revealing only partial elements of Wheeler’s

“invention.” Moreover, shortly after Detrola, in Cuno Engi-

neering Corp. v. Automatic Devices Corp., 314 U.S. 84, 89, the

Court again made explicit use of a copending patent which, it

said, “differed from Mead [the application in question] in

several respects.”

16

The same result was also reached in lower court

decisions prior to 1952. In the footnote, we list four

teen cases which we have found in the courts of ap:

peals and the United States Court of Customs and

Patent Appeals, decided after the Milburn case, which

clearly used one or more copending patents to deter-

mine patentability in situations where the individual

copending patents were recognized as not completely

disclosing the subsequent invention, but as only par-

tially disclosing it so as to negate patentability under

the rule of Hotchkiss v. Greenwood.’

The language of many of these cases reads directly

upon the present case. Indeed, in Western States

Mach. Co. vy. S. 8S. Hepworth Co., supra, at 348-349

Judge Learned Hand addressed himself directly to—

5 Sherwin Williams Co. vy. Marzall, 190 F. 2d 606 (C.A.D.C.) ;

United Specialties Co. v. Industrial Wire Cloth Products Corp.,

186 F. 2d 426 (C.A. 6); Permo, Inc. v. Hudson-Ross, Inc., 179

FP. 2d 386 (C.A. 7); Conmar Products Corporation v. Univer-

sal Slide Fastener Co., 172 F. 2d 150 (C.A. 2); Application of

Seid, 161 F. 2d 229 (C.C.P.A.); Western States Mach. Co. v.

S. S. Hepworth Co., 147 F. 2d 345, 348-349 (C.A, 2), certiorari

denied, 825 U.S. 873; Dyer v. Coe, 125 F. 2d 192 (C.A.D.C.);

L. Sonneborn Sons, Inc. vy. Coe, 104 F. 2d 230 (C.A.D.C.);

Minnesota Mining & Mfg. Co. v. Coe, 100 F. 2d 429, 430-431

(C.A.D.C.); In ve Walker, 99 F. 2d 976 (C.C.P.A.); In re

Youker, 77 F. 2d 624 (C.C.P.A.); Zn re Williams, 62 F. 2d 86

(C.C.P.A.) ; Ottinger v. Ferro Stamping & Mfg. Co., 59 F. 2d

640 (C.A. 6); Denaro v. Maryland Baking Co., 50 F. 2d 1074

(C.A. 4) (adopting the opinion of the district court reported

at 40 F. 2d 5138 (D. Md.)). See also Old Town Ribbon &

Carbon Co. v. Columbia Ribbon & Carbon Mfg. Co., 159 F. 2d

379 (C.A. 2) where it is not clear from the opinion whether

or not the disclosures in the copending patent were identical or

partially anticipatory, but where the opinion clearly shows that

that factor is irrelevant.

17

and explicitly rejected—the distinction which peti-

tioners now seek to create—that: copending ‘patents

may only be used to show an identical prior invention,

but not to show’a non-patentable advance in the art.

At the outset, Judge Hand notes that the Milburn

decision (reversing his decision as district judge)

now “makes it proper to speak of a prior applica-

tion as ‘prior art’ ” (147 F. 2d at 348). Judge Hand

then recognizes the contention—made here by peti-

tioners—that “no application will serve to invalidate

the later invention except one that contains in its

disclosure all that is in the later application’’; that:

a copending application, in other words, “could not

be used merely as an encroachment upon the field

which the later invention occupied, even although it

left unoccupied too little to support a patent’’ (tbid.).

Judge Hand goes on (at 348-349):

It is of course possible to reason in this way,

but it appears to us to involve the same pre-

supposition which the Supreme Court overruled

in Alexander Milburn Co. v. Davis-Bournonville

Co., supra * * *. That decision—as we under-

stand it—meant to disregard the fact that an

earlier application did not at the moment en-

rich the art; it proceeded upon the assump-

tion—perhaps not fully expressed, but im-

plied—that since its disclosure would eventually

fall into the public demesne quite as much as

though it were presently published, the interval

during which it remained secret should be dis-

regarded. True, that was not necessary for

the protection of the first inventor, who needed

only that his own claims should be valid; but

18

once the first application ts treated as prior art

when tt. fully anticipates, there seems to be no

reason to deny it whatever effect it could have

as prior art, if it were literally such. [Empha-

sis added.]

* Detitignars on the other hand, point to no case

prior to 1952 where a copending patent was rejected

as a reference on. the ground which they now urge,

namely, that it contained only a partial, rather

than a complete, disclosure of the patent in issue.

They do suggest that, prior to 1952, a number of

eases “held that a copending patent is not embraced

within the prior art as of its filing date but only

as of the issue date.’”’ (Pet. Br. p. A-4). From

this, petitioners reason that copending patents are

not. ‘‘prior art”—that is, are not valid references—

in judging patentability under Section 103, which

makes an invention nonpatentable ‘‘if the differences

between the subject matter sought to be patented and

the prior art are such that the subject matter as a

whole would have been .obvious at the time the in-

vention was made to a person having ordinary skill

in the art * * *.’’ [Emphasis added. ]

While most of the cases cited by petitioner do con-

tain general statements that copending patents are

not ‘prior art,” it is clear from a study of the com-

plete opinions cited that these dicta represent merely

a confusion of terminology in the use of the words

‘‘prior art’’ and not a recognition of rule limiting

the use of copending patents as relevant references in

judging the patentability of subsequent inventions.

Indeed in all but one of the cases upon which peti-

19

tioners rely, the copending patents involved. were, in

fact, actually used to: judge patentability despite the

courts’ statements. that they. were not,.part of the

‘prior art.’’? The one exception is In re Spencer, 47

F, 2d 806 (C0.C:P.A.). which does not contain the

general statement that copending patents are not part

of the prior art, and which, although it rejects a

reference as relevant in judging patentability, ap-

parently does so on the ground that the reference was

filed after, rather than before, the patent in issue.

See 47 F', 2d at 807. In all the remaining cases, one or

more copending patents were used as relevant refer-

ences. In some cases, e.g., United Specialties Co. v. In-

dustrial Wire Cloth Products Corp., 186 F. 2d 426

(C.A. 6), this was done without explicit recognition

that use of a copending reference raised any issue of

law.’ In other cases, the opinions contain express rec-

ognition that copending references are valid in judging

patentability. In Old Town Ribbon & Carbon Co, v.

Columbia Ribbon & Carbon Mfg. Co., 159 F. 2d 379, 382

(C.A. 2), for example, Judge Learned Hand, after

citing the Milburn case, states that “[a]ecordingly

we are to treat the disclosure in Foster’s [copending]

specifications * * * precisely as though it had ap-

peared in a printed publication. before Lewis and

Menihan [the patent in issue] had filed their applica-

tion. The validity of the claims in suit therefore

depends upon whether they can survive this disclosure

***,” Finally, five of the cases cited by petitioners

© Thus, in the United Specialities case, the copending Hinkle

reference (186 F. 2d at 428) was used in a group along with

other, clearly prior, references,

as stating’ that copending patents are not. “prior art’

under the doetrine of Section 103, are included in the

citations, compiled’ above in footnote 5, wherein

copending patents were used prior to 1952 although

they contained only partial, ‘rather than identical, dis-

closures of the patent ‘in suit, thus directly. rebutting

petitioners’ argument. (United Specialities Co. v.

Industrial Wire Cloth Products Corp., 186 F. 2d 426

(0.A. 6); Permo, Inc. vi Hudson-Ross, Inc., 179 F. 2d

386 (C.A. 7); Conmar Products Cor poration v. Univer-

sal Shde Fastener Co., 172 F. 2d 150 (C.A. 2); In re

Walker, 99 F. 2d 976 (C.C.P.A.); In re Youker, 77 F.

2d 624 (C.C.P.A.)).

Hence it is clear that statements in the opinions

cited by petitioners, that copending patents are not

“prior art,” are not directed toward the use of co-

pending patents as references relevant to patent-

ability. Any such view would, indeed, be inconsist-

ent with the uniform course of decisions in this

and the lower courts. These statements merely reflect,

we submit, the view that, as a matter of terminology,

copending references are not prior art since they are

not made public until after the patent in issue; they

are, neverthéless relevant art since, under Milburn,

they are constructively deemed issued on their appli-

cation dates. ‘Prior art’? was not a statutory term

prior to 1952 (it appears only in Section 103, which

was added in 1952) and this verbal confusion there-

fore was wholly irrelevant to the decision of the cases

where it occurs. In any event, the verbal uncertainty

was resolved by this Court’s explicit decision in Detrola

Corp. v. Hazeltine Corp., 313 U.S. 259, 265, that co-

21

pending patents were to be viewed as “prior art.’’ See

also, ¢.9., Western States Mach. Co. v. SoS. Hepworth

Co., 147 F. 24345, 349 (C.A. 2), supra, pp. 16-18.

II

THE PATENT ACT OF 1952 DID NOT LIMIT THE USE OF

COPENDING PATENTS AS REFERENCES RELEVANT 10

PATENTABILITY

We have shown above that, prior to the Patent Act

of 1952, it was clear beyond doubt that copending

patents were relevant references, as of their filing

dates, in determining the patentability of subsequent

inventions whether or not competing inventors were

involved in a contest for the same patent. This was

true whether the copending prior reference disclosed

the exact invention in the application. in issue (as

in Alexander Milburn Co. v. Davis Bournonville Co.,

270 U.S. 390) or whether it merely disclosed matter,

in light of which the application in issue failed to

disclose an advance beyond what would have been

obvious to one skilled in the art (as in Detrola Corp,

V. Hazeltine Corp. 313 U.S. 259). Although some

confusion existed as to whether the then non-statu-

tory term, ‘‘prior art,” was properly used in referring

to such relevant copending patents (since such pat-

ents were not in the public domain prior to the sub-

sequent invention), there was no doubt of their rele-

vance and this Court, in the Detrola case, had indeed

included. copending patents within the label, ‘‘prior

art.”

We believe it clear, moreover, that no change was

made by the 1952 Patent Act. Urging the contrary,

petitioners rely upon Section 103 of the 1952. Act,

which, for: the first time, expressly incorporated into

the statiite' the rule of Hotchkiss v.' Greenwood, 11

How. 248; under which changes within the ordinary

skill of the art are not en Section 103 reads

as follows:

A patent may not be obtained though the in-

vention is not identically disclosed or described

as set’ forth in section 102 of this title, if the

differences between the subject. matter. sought

to be patented and the prior art are such that

the subject, matter as a whole would have been

obvious at the time the invention was made to

a. person having ordinary skill in the art to

which said subject matter pertains. Patent-

ability shall not be negatived by the manner in

which the invention was made.

Petitioners are mindful of the fact that, in addition

to codifying the Hotchkiss rule for the first time in

1952, Congress also codified, in Section 102(e), the

rule of Alexander Milburn Co. v. Davis-Bournonville

Co., supra, under which copending patents had uni-

formly been used as relevant references in cases fall-

ing under the Hotchkiss rule. As part of Section

102, subsection (e) is, indeed, one of a group of ref-

erences made specifically relevant in judging patent-

ability. Petitioners argue, despite the explicit incor-

poration of copending patents among these references,

that Section 103 must be considered separately and

that’ it looks only to “prior art” in determining

whether an advance is patentable. ‘Prior art’ in

petitioners’ view, cannot be deemed as a matter of

language to refer to all the references listed in Sec-

23

tion 102, but only to those prior public references in

Seetion 102(a), t.e., matter “known or used by others

in the country, or patented or described in a printed

- publication in this or a foreign co , before the

invention thereof by the applicant patent.”

The short answer to petitioners’ argument is that,

in codifying Milburn and Hotchkiss in 1952, Congress

showed no purpose, either within the statute or in the

legislative history, to: decrease the role of copending

patents under those decisions; hence their previous

use as relevant references was retained. That codifi-

cation ‘alone was intended is apparent: Thus the Re-

viser’s Note to Section 102(e), codifying Milburn,

states that “Paragraph (e)-is new and enacts the rule

of Milburn v. Davis-Bournonville, 270 U.S. 390, by

reason of which a United States patent disclosing an

invention dates from the date of filing the applica-

tion for the purpose of anticipating a subsequent

inventor.”” The Reviser’s Note to Section 103, eodify-

ing Hotchkiss, states that the section incorporates a

rule as to “lack of invention or lack of patentable

Novelty’? which “has been followed since at least as

early as 1850.’’ If, as petitioners argue, the 1952

Act—for the first time—meant to exclude the use of

copending patents in Section 103 cases, the Reviser

surely would have noted the change.

- We conclude, therefore, that “prior art” in Section

103 means to refer—as this Court held in Detrola

Corp. v. Hazeltine Corp., 313 U.S, 259—to copending

references as well as to all of the other references

set forth in the subsections of Section 102. There is no

basis for limiting the reference to subsection (a) of Sec-

24

tion 102: alone. Explicit confirmation of this eonely-

sion that “prior art’’ refers generally to all of the ref-

erences described in Section 102 is contained in the

Committee Reports accompanying Section 103, where .

it is stated that the section, “refers to the difference he-

tween the subject matter to be patented and the prior

art, meaning what was known before as described in

section: 102’? (emphasis added), H. Rept. No. 1923,

82d Cong., 2d Sess., p. 7 (1952) ; S. Rep. No. 1979, 824

Cong., 2d Sess., p. 6 (1952). Indeed; P. J. Federico,

Examiner-in-Chief of the Patent Office and an

active participant in the 1952 vision, could not

have made this clearer when he stated, with regard to

this question, that “[t]he antecedent of the words

‘the prior art’? * * * lies in the phrase ‘disclosed or

described as set forth in Section 102’ and hence these

words refer to material specified in Section 102 as the

basis for comparison.’’ (Commentary on the New

Patent Act, incorporated in Title 35, United States

Code Annotated, at pp. 1, 20; emphasis added.)

Henee “prior art,’’ as that term is used in Section 103,

refers to all of the references described in Section 102,

including the copending references defined in sub-

section (e).”

*An additional element in the legislative history supports

the conclusion that “prior art” in Section 103 refers to all the

references described in Section 102, including the copending

references defined in subsection. (e). The version of Section

103 originally introduced into the First Session of the Eighty-

Second Congress (H.R. 8760) would have provided that (em-

phasis added): fy

A patent may not be obtained though the invention is not

identically disclosed or described in the prior art set forth

in section 102 of this title, if the differences between the

subject matter sought to be patented and that prior art are

such that the subject matter as a whole would have been

25

.Dhe cases decided since the 1952 Act where the, ques-

tion has been fully considered uniformly adopt. this

construction. For example, in Application, of Harry,

333, F. 2d 920, 923 n. 1, the Court of Customs and

Patent Appeals said that ‘‘the legislative history of

the 1952 Act makes it clear that, ‘copending patents’

were intended to be part of the, ‘prior, art’ [within

the meaning of Section 103].” See also, A pplication

of Kander, 312 F. 2d 834 (C,C.P.A.) ; Application of

Gregg, 244 F. 2d 316, 319 (C.C.P.A.). and the decision

obvious at the time the invention was made to a person

having ordinary skill in the art to which said subject. matter

; s**#*

Had this version directly become law, it would have been clear

beyond doubt from the face of the statute that the “prior art”

by which advances in the art were to be judged under Section

103 was “the prior art set forth in section 102”—hence, that it

included the copending art described in Section 102(e). —

The changes made in Section 108 before enactment, however,

indicate that the final version of the bill was meant to broaden

even further—rather than to narrow—the “prior art” relevant

under that section. These changes were made in response to a

suggestion by the Bar Association of the City of New York

that the language of the proposed Section 103 be changed so as

“to make it clear that all prior art is here meant and not

merely the prior art referred to in section 102 which is limited

to anticipatory art.” Senate Subcommittee on Patents, Trade-

marks and Copyrights, Effects To Establish a Statutory Stand-

ard of Invention, Study No. 7, 85th Cong., 1st Sess. p, 15. Specifi-

cally, the Association recommended that this be accomplished

through the substitution of the word “as” for the phrase “in

the prior art” in. the original bill and by the substitution of

the word “the” in place of the word “that” immediately follow-

ing the conjunction “and” in the original. Hearings Before

Subcommittee No. 3 of the House Committee on the Judiciary,

82d Cong., Ist Sess., p. 221 (1951). These changes were made

and incorporated into the final bill as enacted. Thus “the prior

at? in Baotion 103 indubitably means to include copending

references as described in Section 102(e)

26

of the district court in this case (226 F. Supp. 459;

R. 69; 73), with which the ae of appeals, acting

per curiam, agreed:

‘Petitioners cite three cases allegedly to the con:

trary: Weatherhead v. Drillmaster Supply Co., 227 ¥.

2d 98° yore 1); Helene Curtis Industries v. Sales

Affiliates, 233 F: 2d 148 (C.A. 2); and John Blue Co. y.

Dempster Mill Mfg: Co.; 275 F. 2d 668 (C.A. 8) (see

Petitionér’s Brief at p. A-4 and pp. 15-20). The John

Blue case reveals nothing in petitioner’s favor beyond

some continuing confusion regarding terminology ; the

copending patent there involved was, in fact, used as a

relevant reference to judge patentability. Thus after

noting that the Blue Patent, cited against the patent in

issue, was copending, the court said: ‘‘ It is true that the

application for the Blue Patent cannot be considered

as prior art in the technical sense, but it is a widely

recognized rule that the application for such patent

ean nevertheless be used as defense material to prove

that Blue and Johnson were not the original and first

inventors or discoverers * * *’’ (275 F. 2d at 672),

Weatherhead, it is true, does contain a statement that

a copending patent ‘‘could be shown to prove a prior

inventor but not to show the state of the art for the

purpose of determining whether the second patent

disclosed invention’’ (227 F’, 2d at 101) and similar lan-

guage appears in Helene Curtis (see 233 F. 2d 156).

These statements are dicta since, in both cases, the

claims at issue were ultimately held unpatentable

in the light of the prior art. In addition the Weather-

head case involved a situation of double patenting

27

by ‘a single inventor, where special considerations

apply which are inapplicable when different. copend-

ing patentees are involved; and Helene Curtis con-

tains the statement, seemingly in contradiction to the

dictum relied upon by petitioners, that copending

patents were ‘anticipatory under the doctrine of

Alexander Milburn Co. vv... Davis-Bournonville

0o.,* * * now codified in 35 U.S.C.A. §.102(e)”’ be-

cause ‘‘a portion of each of these patents falls within

the, area of” the invention in issue (233 F. 2d at 158),

Finally, neither of these decisions makes reference

to this Court’s decision in Detrola Corp. v. Hazeltine

Corp., supra, explicitly holding copending patents

“prior art’’ for purposes of showing lack of patentable

invention over the art; nor do they refer to the explicit

legislative history to the same effect accompanying the

1952 Patent Act. To the extent.that these dicta mean to

indicate a preclusion of the use of copending patents

as relevant art under Section 103, therefore, we

submit that they are plainly erroneous.

» Finally, petitioners argue that ‘‘{s]imple principles

of equity and fair play’’ require that copending pat-

ents not be included in the art relevant under

Section 103. (Pet. Br., pp. 23-25). Sinee such

copending patents must “be kept in y the

Patent Office’ (35 U.S.C. 122) petitioners urge that a

worker skilled in the art would not, in fact, be aware

of them before his subsequent invention and, hence,

that his invention should not be judged in their light.

It is true that under the rule applied to copending

patents since the Milburn decision, inventors who may

have everyreason to believe that they have arrived at

a patentable invention may be denied patents because

of’ information: disclosed in copending: patents of

which they could not have known. The test: of -pat:

entability, however, is not whether the ‘applicant be-

lieves: that he has made’ an invention in the subjective

sense (see Radio’ Corporation of America, et al. v.

Radio. Engineering~ Laboratories, Inc., 293 U.S.. 1,

11-14; Sewall.v. Jones, 91 U.S. 471, 180; Evans vy.

Eaton, 3' Wheat.-454, 513-514; see also Federico, Com-

mentary on the New Patent Act, 35 U.8.0.A. 1,

21); it is whether the invention represents a signifi-

cant advance over the art, objectively viewed. (See H.

Rep. No. 1923, 82d Cong., 2d Sess., p. 7 (1952) ;‘S. Rep.

No. 1979, 82d Cong., 2d Sess., p. 6 (1952)). Thus,

whether or not the inventor actually knew, or could

have known, of the ‘‘prior art’? material at the time

he made his invention is irrelevant. The relevant

question is whether his ‘‘invention,’’ if patented, would

constitute a significant contribution in light of other

elements available to the public at the time his patent

would issue, and a prior copending patent which is

ultimately issued would be such a previously publicly

available development.

This preeise situation confronted the Court in Mil-—

burn. ‘There, as here, a copending application, the

existence of which the later applicant could not have

known, disclosed the subject matter of the subsequent

application. Notwithstanding the rule requiring the

secrecy of patent applications, the Court held the

teachings of the prior copending application relevant

in testing the patentability of the later application.

Fe

Petitioners’ suggestion (Pet. Br., p. 24) that “unfair-

ness” in the Milburn case was overbalanced by the

need to reward the prior of two rival inventors, is not

porne out. In Milburn, the prior copending patentee

did not claim the invention elaimed in the subsequent

application, and: the two inventors were not rivals.

It was this factor,whieh led, the district court and

court of appeals to hold the subsequent patent valid

and it was the relevance of the presence of such a

competing prior patentee which this Court explicitly

rejected in reversing those decisions below. See pp.

11-13, supra.

Petitioners, on ‘2 other hand, ignore the unjustifi-

able burdens upon the public and the prior inventor

that would potentially be caused by the issuance of

two or more overlapping patents which, except for

non-patentable variations, would cover the same sub-

ject matter. If both the Wallace and Regis patents

were to issue, for example, a member of the public

wishing to use the single patentable innovation em-

bodied in both might have to obtain licenses from both

patentees, and Wallace, the prior inventor, might

have to obtain a license from Regis in order to make

use of Regis’ non-patentable variation. In addition,

the Regis patent would improperly extend the monopoly

on the basic invention vis-a-vis the general public be-

yond the statutory period previously awarded to

Wallace. For these reasons, as well as those made

explicit in the Milburn decision and the legislative

history of the 1952 Act, the copending and ultimately

issued Wallace patent was properly used to judge the

patentability of Regis’ application under Section 103

of the Patent Act.

‘opyt alt CONCLUSION. )

judgment of the court of appeals should be

« Respectfully submitted.

rs THURGOOD MARSHALL,

Solicitor General.

JoHN W. Dovctas,

Assistant Attorney General.

PavuL BENDER,

Assistant to the Solicitor General.

LAWRENCE R. SCHNEIDER,

Attorney.

OcTOBER 1965.

U.S, GOVERNMENT PRINTING OFFICE: 1968