Petition for Writ of Certiorari — Bausch & Lomb Optical Co. v. Lyon
Supreme Court brief1955
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DEC 24
SUBJECT INDEX
PAGE
Opinions of the Courts Below .................... 2
Statement of Grounds on Which Jurisdiction Is In-
EL dtcta Ceackend Gat tk spicier mnkc lunes ca: 2
Questions Presented for Review .................. 3
INI I ed hy ii EAE are 4
Sr rg Os 8
Federal Jurisdiction of the District Court .......... 14
Reasons and Argument ....................0.000e 14
RNR Garrat ebcs bengekacdcraesiaecebake 14
ME Tha kd dias acu kotard co RRM kd ged caaa kes 19
NE Siac dkechcadndabe ansdee acura 19
STN Ai ha ck die dbieh eta aa ud waine s weanaes 22
ON ise ad dts did db iy ce Oe ee ae a 28
TasBLeE OF AUTHORITIES CITED
American Stainless Steel Co. v. Rustless Iron Corp.,
71 FY. 2d 404 (C. A. 4, 1984) ......... ce eee 26
Ansonia Brass & Copper Co. v. Electrical Supply Co.,
ee We Ws Oe A Bien ccec bascsda Ween bss 21
Atlantic Works v. Brady, 107 U. S. 192 (1882) ...... 15, 19
Avery v. Ever Ready Label Corp., 104 F. Supp. 913
CEs: Daag GEE A.vaca ont nch ik ee iurenbewesat 15
Bancroft, Joseph, & Sons Co. v. Brewster Finishing
Co., 113 F. Supp. 714 (D.C. N.J., 1953), affd. 210
Bc I NG han cd dnc San ccewksiN sone sessdentecs 16, 17
Brown v. Piper, 91 U. S. 37 (1875) .............. 4, 21
Buser v. Novelty Tufting Machine Co., 151 Fed. 478
(C. A. 6, 1907), cert. den. 210 U. S. 482 ........ 25
INDEX
PAGE
Channel Master Corp. v. Video Television, Inc.,
117 F. Supp. 812 (1953) (D.C. E.D.N.Y.), affd.
wep 2. oe Ost (C. A. 2 1968) . 2... eke ciees 13, 16, 22
CORON We SO, Be WO 2 onc cece ne kv euces 27
Concrete Appliances Co. vy. Gomery, 269 U.S.177... 15
Corona Co. v. Dovan Corp., 276 U. S. 358 (1928) .4, 23-4, 27
Cuno Engineering Corp. v. Automatic Devices Cor-
ES Us OR OU icin cin cc eis cates ives 15
DeBurgh v. Kindel Furniture Co., 125 F. Supp. 468
I ee er eee 17
Egbert v. Lippmann, 104 U. S. 333 (1881) .......... 4, 27
Electric Storage Battery Co. v. Shimadzu, 307 U. S.
BREE AS ERS BS GRTRONE Fat YA are rH 4
Gayler v. Wilder, 10 How. 477 (1850) .............. 25-6
General Electric Co. v. Jewel Co., 326 U. S. 242
NE era wins Genus cession chcads eared es 21
General Motors Corp v. Estate Stove Co., 203 F. 2d
912 (C. A. 6, 1953), cert. den. 346 U. S. 822 ...16,17
Gillman v. Stern, 114 F. 2d 28 (C. A. 2, 1940), cert.
Ns MN la WI en bs v's ok kek beeen ens 27
Glitsch, Fritz W., & Sons v. Wyatt Metal & Boiler
Works, 106 USPQ 162 (C. A. 5, 1955) .......... 17
Grasselli Chemical Co. v. National Aniline & Chemi-
eal Co., 26 F. 2d 305 (C. A. 2, 1928) ............ 27
Great Atlantic & Pacifie Tea Co. v. Supermarket
Equipment Corp., 340 U. S. 147 (1950) ......... 15, 19
Hall v. Macneale, 107 U. S. 90 ... 2.2... eee ee cea 27
Hotchkiss v. Greenwood, 11 How. 248 (1850) ..3, 14, 15,18
Interstate Rubber Products Corp., et al. v. Radiator
Specialty Co., et al., 214 F. 2d 546 (C. A. 4, 1954) 17
Lyon v. Bausch & Lomb Optical Co., 119 F. Supp. 52;
100 USPQ 100; 106 USPQ 1; 106 USPQ 240.... 2
gq
INDEX iii
PAGE
Mantle Lamp Co. v. Aluminum Products Co., 301 U.S.
SP AAD ch Sede tutes Gu cise eee ake 15
Minnesota Mining & Mfg. Co. v. Van Cleef, 139 F.
ee Cee AU, BOE ok vc wei ccs ea 26
Modern Art Printing Co. v. Skeels, 123 F. Supp. 426
CR Sig Bh, Bg BORD sn aiins cok eat canis cat oc 0k 17
New Wrinkle, Inc. v. Watson, 204 F. 2d 35 (C. A.
D. C., 1953), cert. den. 346 U. S. 820 ........... 16, 17
O’Keefe, In re, 202 F. 2d 767 (C. C. P. A., 1953) ....16,17
Pacific Contact Laboratories vy. Solex Laboratories,
209 F. 2d 529 (C. A. 9, 1953), cert. den. 348 U. S.
MOODS b wkah Wad CKGA OA RRL An a SRR bee Lhd 15,17
Paramount Publix Corporation v. American Tri-
Ergon Corp., 294 U. S. 464 (1935) ............. 4, 21
Potts v. Creager, 155 1. S. 597 (1895) .............. 15
Pennsylvania R. Co. v. Locomotive Engine & S. T.
Cg SOO. OO soos na ee cee 21
Reckendorfer v. Faber, 92 U. S. 347 (1875) ........ 15
Reed v. Cutter, 20 Fed. Cas. 435 (C. C. D. Mass., 1841) 25
Rosaire v. Baroid Sales Division, National Lead Co.,
218 F. 2d 72 (C. A. 5, 1955), cert. den. 349 U. S.
GED “a ws ane spat va Nebuh weed chmcabiahs ba ceeeiol 27
Smith v. Whitman Saddle Co., 148 U. S. 675 (1893) .. 15
St. John v. Schulze, 57 F. 2d 798 C. C. P. A., 1931) .. 26
Standard Sanitary Mfg. Co. v. Iron City & Mfg. Co.,
222 Fed. 671 (C. A. & 1915) .... ccc ccc ccnass 26
Stanley Works v. Rockwell Mfg. Co., 203 F. 2d 846
(C. A. 3, 1953), cert. den. 346 U. S. 818 ........ 16, 17
Thys Co. v. Oeste, 111 F. Supp. 665 (D.C. N.D. Cal.
N.D., 1953), affd. 219 F. 24131 ................ 17
Toch v. Zibell, ete., 231 Fed. 711 (C. A. 2, 1916) .. 27
Wasserman v. Burgess & Blacher Co., 217 F. 2d 402
CC. Bd, BORG ok. cents cakancauibhede 16
iv INDEX
STaTUTES
PAGE
United States Code:
een ee i es 3
Me ND oss oc wen hi noee ccs nk 14
oss ieee ben, Re geet ar were 14
Me ee UD nok vak sn dandcka csc 3
Act of July 19, 1952, See. 1 (enacting 35 U. S. C. Sees.
1-293, Patent Laws):
i @ SRR Serene ey tender 7
ee A 5
Se oe Sa er 5, 13, 22
2 ae | Re 5, 13, 21, 22
4 5S” Sere 5-6, 13, 21, 22
Mem mee Wee se 6, 13, 22
2 8 RS ere 6, 15
iS 2 2 BNC RR eR Cooks 6-7
Act of July 19, 1952, Sec. 5 ..........0..000000000 19
R. S. 4886; 35 U. S. C., 1946 Ed., 31 .............. 4.5, 29
Rugs
Sec. 1(b) of Rule 19, Revised Rules of the Supreme
Court of the United States .................... 3
Patentability and Validity, by Rivise & Caesar, 1936 25
INDEX v
APPENDIX
PAGE
Opinion of the United States Court of Appeals for
in NE iia rn la
Order of the United States Court of Appeals for the
Second Circuit affirming the judgment of the
United States District Court for the Western
District of New York ........................ 18a
Per Curiam Opinion of the United States Court of
Appeals for the Second Cirenit denying the peti-
suvahimsaticsconmcn., Sere EET ORES 19a
Order of United States Court of Appeals for the
Second Circuit denying petition for rehearing .. 2la
‘
IN THE
Supreme Court of the United States
Ocrosrer TERM, 1954
ek cians
y%
-
Bauscu & Loms Oprican Co.,
Petitioner,
Vv.
Dean A. Lyon,
Respondent.
udp.
a
PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
To tHe Honoraste tHe Cumr J USTICE OF THE UNITED
STaTEs AND THE AssocuTE J USTICES OF THE SUPREME
Court or THE Unrrep Srarzs:
The petitioner above named prays that a writ of cer-
tiorari issue to the United States Court of Appeals for
the Second Circuit to review the decision and judgment
of that Court in this action.
In accordance with Rule 21 (3) (4) of this Court
petitioner files herewith a certified copy of defendant-
appellant’s Appendix filed in the Court below (Vols. I
and II) and plaintiff-appellee’s Appendix filed in the
Court below together with the proceedings in the Court
below (Vol. III) and nine copies of each of said ap-
pendices.
Opinions of the Courts Below
_ The opinion of the Court of Appeals for the Second
' Circuit, dated June 20, 1955, affirmed a judgment holding
_ valid and infringed all claims in suit (st. e., 1, 2, 4, 5, 8
» and 9) of plaintiff’s patent for a Method For Coating
_ Optical Elements. The opinion of the Court of Appeals
appears in the Appendix to this petition at page la and
~ is reported in 106 USPQ 1.
_. That Court’s opinion, dated July 29, 1955, on the peti-
» tion for rehearing filed by petitioner here (defendant-
~ appellant below) denied the same except it held claims
' 1, 2, 4 and 5 invalid but otherwise affirmed the judgment
~ as to claims 3, 3 and 9. The opinion on rehearing appears
~ at page 20a of the Appendix to this petition and is re-
~ ported in 106 USPQ 240.
The opinion of the District Court dated December 31,
» 1953 appears in Volume II D.A., at page 910a and is re-
) ported in 119 F. Supp. 42 and, together with the findings
' of fact, is also reported in 100 USPQ 100.
Statement of Grounds on Which
Jurisdiction is Invoked
The grounds on which jurisdiction of this Court is
invoked are that the United States Court of Appeals
for the Second Circuit by its decision herein has decided
important questions of federal law in a way in conflict
with applicable decisions of this Court and in conflict
with applicable decisions of other United States Courts
of Appeals for other Circuits and with earlier decisions
of its own involving the same basic principles of law.
The judgment of the Court of Appeals sought to be
reviewed was dated and entered on June 20, 1955 and
appears at page 18a in the Appendix to this petition.
3
The order on the petition for rehearing by the defendant-
appellant was dated and entered J uly 29, 1955 and appears
in the Appendix to this petition at page 21a. Plaintiff-
appellee did not file a petition for rehearing under the
leave granted to him by said order.
The jurisdiction of this Court is invoked under the
provisions of 28 U. S. C., Section 1254 (1) and Section
2101 (c), and Section 1 (b) of Rule 19 of this Court.
Questions Presented for Review
1. Did the decisions of this Court and the conforming
decisions of the lower courts, on the test of patentable
invention, during the period of twenty-five years preceding
the Patent Act of July 19, 1952, change ‘‘the classical
test of invention’’ applied by the courts since Hotchkiss
v. Greenwood (1850), 11 How. 248, and, if so, has the 1952
Act, 103, overruled and nullified such decisions by ‘‘re-
storing the law to what it was’’ before such decisions
were ered, so that plaintiff’s patent, which the Court
below found was ‘‘almost certain’’ to ‘‘have been held
invalid’’ before the Act, has now been validated by the
Act?
2. Can a patent as to which the Court of Appeals
found ‘‘it is almost certain that the claims would have
been held invalid’’ prior to the 1952 Act and which the
Court held to be validated by the Act, ex post facto support
an award of damages for infringement which occurred dur-
ing such period of invalidity prior to the Act, in view of See.
5 of the Act which, in repealing the applicable sections of
prior patent acts, provided that ‘Any rights or liabilities
now existing under such sections or parts thereof shall not
be affected by this repeal’’?
4
3. Where the prior art taught, disclosed and used the
process of heating the glass while depositing a vaporized
metal in a vacuum (as found by the District Court and by
the Court of Appeals) for the same purpose of cleaning the
glass for intimate contact with coatings of metals, was it a
new use and invention under Sec. 100 (b) and under Sec.
103 of the 1952 Act, to employ the same process with known
and analogous materials (metal fluorides) to accomplish the
same cleaning function and produce a known coated prod-
uct, under the decisions of this Court, such as Brown v.
Piper et al. (1875), 91 U. 8S. 37; Paramount Publix Corp. v.
American Tri-Ergon Corp. (1935), 294 U. S. 464?
4. Can a successful and commercial practice of a process
be later discarded and disregarded as an abandoned
experiment because not brought ‘‘to light in the art’’
nor ‘‘urged for adoption’’ by widespread publication, or
because that commercial use was of only limited or
‘‘small seale’’ volume, contrary to the uniform decisions
of this Court, such as Egbert v. Lippmann (1881), 104 U. S.
333; Corona Co. v. Dovan Corp. (1928), 276 U. S. 358 and
Electric Storage Battery Co. v. Shimadzu (1939), 307
U.S. 5?
Statutes Involved
Prior Statute, R. 8. 4886, 35 U. 8. C. 31, 1946 ed. In-
ventions Patentable:
*‘Any person who has invented or discovered any
new and useful art, machine, manufacture, or compo-
sition of matter, or any new and useful improvements
thereof, or who has invented or discovered and asexu-
ally reproduced any distinct and new variety of plant,
other than a tuber-propagated plant, not known or
used by others in this country, before his invention or
discovery thereof, and not patented or described in any
printed publication in this or any foreign country,
5
before his invention or discovery thereof or more
than one year prior to his application, and not in pub-
lic use or on sale in this country for more than one
year prior to his application, unless the same is proved
to have been abandoned, may, upon payment of the
fees required by law, and other due proceeding had,
obtain a patent therefor.’’ (R. S. sec. 4886; Mar. 3,
1897, ch. 391, sec. 1, 29 Stat. 692; May 23, 1930, ch.
312, sec. 1, 46 Stat. 376; Aug. 5, 1939, ch. 450, see. 1,
53 Stat. 1212.)
1952 Patent Codification Act, 35 U. S. C. Sec. 100(b).
Definitions—
“‘The term ‘process’ means process, art or method,
and includes a new use of a known process, machine,
manufacture, composition of matter, or material.’
Sec. 101. Inventions Patentable—
**Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of mat-
ter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and
requirements of this title.’’
Sec. 102. Conditions for Patentability; Novelty and Loss
of Right to Patent—
‘*A person shall be entitled to a patent uniess—
**(a) the invention was known or used by others in
this country, or patented or described in a printed
publication in this or a foreign country, before the
invention thereof by the applicant for patent, or
‘*(b) the invention was patented or described in a
printed publication in this or a foreign country or in
6
public use or on sale in this country, more than one
year prior to the date of the application for patent in
the United States, or
‘*(g) before the applicant’s invention thereof the in-
vention was made in this country by another who had
not abandoned, suppressed, or concealed it. In deter-
mining priority of invention there shall be considered
not only the respective dates of conception and reduc-
tion to practice of the invention, but also the reason-
able diligence of one who was first to conceive and
last to reduce to practice, from a time prior to con-
ception by the other.’’
+ Sec. 103. Conditions for Patentability; Non-obvious
Subject Matter—
‘A patent may not be obtained though the inven-
tion is not identically disclosed or described as set
forth in section 102 of this title, if the differences be-
tween 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 inven-
tion 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.”’
Sec. 252. Effect of Retssue—
‘*No reissued patent shall abridge or affect the right
of any person or his successors in business who made,
purchased or used prior to the grant of a reissue any-
thing patented by the reissued patent, to continue the
use of, or to sell to others to be used or sold, the
specific thing so made, purchased or used, unless the
making, using or selling of such thing infringes a valid
claim of the reissued patent which was in the original
7
patent. The court before which such matter is in
question may provide for the continued manufacture,
use or sale of the thing made, purchased or used as
specified, or for the manufacture, use or sale of which
substantial preparation was made before the grant of
the reissue, and it may also provide for the continued
practice of any process patented by the reissue, prac-
ticed, or for the practice of which substantial prepara-
tion was made, prior to the grant of the reissue, to
the extent and under such terms as the court deems
equitable for the protection of investments made or
business commenced before the grant of the reissue.”’
The foregoing Code Sections are parts of Section 1 of
the Patent Act of July 19, 1952, Publie Law 593, Chapter
950, 82 Congress, 2d Session. Sections 4(a), (e) and 5 of
the Act are as follows:
Sec. 4. (a) ‘*This Act shall take effect on January 1,
1953 and shall apply to all applications for patent filed
on or after such date and to all patents granted on
such applications. It shall apply to further proceed-
ings on applications pending on such date and to pat-
ents granted on such applications except as otherwise
provided. It shall apply to unexpired patents granted
prior to such date except as otherwise provided.”’
See. 4. (e) ‘‘Nothing contained in Title 35, as enacted
by section 1 hereof, shall operate to nullify any ju-
dicial finding prior to the effective date of this Act
on the validity of any patent by a court of competent
jurisdiction. ”’
See. 5. ‘*The sections or parts thereof of the Revised
Statutes or Statutes at Large enumerated in the fol-
lowing schedule are hereby repealed. Any rights or
liabilities now existing under such sections or parts
thereof shall not be affected by this repeal.’’ (Sched-
ule including R. S. Sec. 4886)
8
Statement of the Case
The Petitioner and other manufacturers were engaged
before the late war in the commercial production of lenses
coated with light-transmitting films of molecular thickness,
for reducing the reflection and wastage of light at the sur-
face of incidence on the lens (Finding 5). Such films were
applied in an evacuated container by heating and vaporiz-
ing the coating material so that it was condensed and
deposited as a thin film on the lens surface (Vols. I and I,
D. A. 270a, 845a, Deft’s. Exh. D-52). It was known that
a more tenacious and hard film was produced by heating
the lens, before being coated in the vacuum (preheating).
to vaporize and drive off surface impurities and thus
clean it for intimate contact with the coating, and it was
known that heating the coated lens (post-baking) improved
the tenacity and ruggedness of the coating, substantially
as recognized in plaintiff’s patent specification, particu-
larly as originally filed at the Patent Office (Vol. II, D. A.
552a, 559a).
It was known practice also in coating with such light-
transmitting (reflection-reducing) films, as well as with
opaque (light-reflecting) films, to heat the lens while being
coated in the vacuum, for the same purpose of cleaning
it, and this step had been described in printed publications
and used openly in commercial production prior to plain-
tiff’s alleged invention, as hereafter pointed out. This
known step, however, is designated by plaintiff’s specifi-
cation as the invention of his patent, as hereafter referred
to.
Plaintiff was employed as a technician by the Navy De-
partment in January, 1941, to learn such coating technique
and install it among the suppliers of optical elements for
the armed services. He read the literature of the art,
visited the plants of defendant and other manufacturers
of coated optical elements (Vol. ITI, P. A. 2a; Vol. I, D. A.
528a-529a) and, as he stated in a published address at the
9
time (Vol. I, D. A. 531a) he ‘‘stumbled upon that old idea
of heating the elements in a vacuum,’’ as the slow but
most intensive method of cleaning the lens glass to obtain
an intimately contacting and tenacious film, to suit the
severe usage of military field service. The Navy Depart-
ment then required use of this technique by defendant
and all suppliers of Government optics.
Plaintiff’s application (Vol. II, D. A. 549a, 554a) filed
by the Navy Department Nov. 17, 1942, disclosed the
process as applicable to any ‘‘ suitable coating material’’,
for coating mirrors, lenses and the like, specifically dis-
closing both the metal fluorides which form light-transmit-
ting coatings as well as the metal sulfides which form
light-reflecting or opaque coatings. The patent applica-
tion was repeatedly rejected by the Examiner on reference
to several prior patents disclosing the identical process
in use for applying light-reflecting, metallic films, to ‘‘sil-
ver’’ mirrors, and on reference to several other patents
disclosing the application of light-transmitting films (metal
fluorides) by evaporation in vacuum and heating the glass
before the vacuum for the same cleaning purpose and heat-
ing the coated lens to improve the tenacity and hardness
of the coating. The Examiner held that no invention was
required to use the known ‘‘silvering’’ method of coating
on hot glass and substitute a known light-transmitting
material (metal fluoride) as the coating material. He held,
in the alternative, that no invention was required to use the
known process for depositing light-transmitting materials
and to heat the glass in the vacuum, instead of heating it
before and after the vacuum (Vol. IT, D. A. 569a, 578a).
The claims were then restricted by amendment (Vol. ITI,
D, A. 560a, 576a, 582a) to the known process of coating
on hot glass, but in use with ‘‘inorganic salts’’ (claims 1,
2, 4 and 5) and more specifically with light-transmitting
inorganic salts which include the metal fluorides (claims 3,
8 and 9). The claims were thus distinguished from the
10
prior patents; i.e., instead of claiming the use of metal in
the old and known process, the claims claim the known
and analogous coating materials (inorganic salts and
metal fluorides) in that same process to make a known
coated lens product (Cartwright patent 2,207,656, Vol. I,
D. A. 78la). After persistent argument by the Govern-
ment solicitors, and an ‘‘interview’’ with the Examiner,
he withdrew the rejection of the claims but without any
relevant or adequate explanation (Vol. II, D. A. 600a,
602a).
After the war, defendant continued the use of the accused
process, both as required to supply the Government and
its commercial production, without knowledge of any claim
to patent rights. Plaintiff’s patent was issued April 16,
1946, and this suit was begun May 6, 1949. It was tried
without a jury in the District Court for the Western Dis-
trict of New York on July 8, 1952, at which time plaintiff
was allowed to amend to include a claim for breach of
confidential disclosure. Defendant denied any such breach
and denied the validity of the patent on several grounds,
but admitted infringement if the patent should be held
valid.
Defendant relied in part on the prior patents cited by
the examiner, supplemented by others of cumulative effect.
In addition, defendant produced a patent to Cartwright
et al., No. 2,207,656 (not before the Examiner), disclosing
the coating of lenses with light-transmitting, reflection-
reducing films of metal fluorides and teaching the applica-
tion of such coatings ‘‘in the manner now generally well
known in the silvering of mirrors and the like,’’ (Vol. IT,
D. A. 782a, col. 1, line 21) thus suggesting the method of
the Examiner’s patent citations in which the glass is heated
during coating with silver in the vacuum. It was proven
that this silvering process had been in use for years by
Sylvania Electric Products, Inc. in the quantity manufac-
ture of mirror surfaces on lamp bulbs (Vol. I, D. A. 475a-
523a).
ll
The District Court distinguished such patents on the
ground that while some of them disclosed the deposit of
metal films on hot glass, other patents disclosed the deposit
of metal salts on unheated glass and that it required in-
vention to see that the glass could be heated and cleaned
in the same way and for the same purpose when depositing
metal salts (Vol. Il, D. A. 914a). The Court of Appeals
adopted the same view, but mistakenly held that the inven-
tion disclosed by plaintiff’s specification is limited to coat-
ing with light-transmitting materials and thus ‘‘widely
diverged’’ from the prior patents.
In addition, defendant produced an article (not before
the Examiner) published in a scientific magazine in 1931
by Cartwright, the patentee, in which (Vol. IT, D. A. 743a)
he described the identical process of coating on hot glass,
for applying a class of materials including not only metals
but also the light-transmitting, reflection-reducing metal
salts of plaintiff’s patent (‘‘the alkali halides’’ including
‘*fluorite’’ or calcium fluoride). Plaintiff so testified (Vol.
I, D. A. 68a-70a) and that he had previously read this
article (Vol. I, D. A. 67a) which described the use of the
process with such materials, in the usual exemplary way,
by describing the deposit of one of them (silver) on glass
heated in the vacuum to clean it during coating (Vol. IT,
D. A. 746a). The District Court found that this publica-
tion described the identical process (Vol. II, D. A. 915a)
but rejected it because describing its application to only
one of the disclosed matevials and reached the conclusion
that it was not obvious to one skilled in the art, that the
process could be employed to deposit any of the other
materials (including metal fluorides), which the article
expressly designated for use in the same process. The
Court of Appeals avoided any reference to this publication,
although it was briefed and argued as a complete anticipa-
tion, both on the appeal and in the Petition for Rehearing.
Both Courts found that Dr. Cartwright while an instruc-
tor in the physics department at M. I. T. in 1939-1940, had
12
followed up his previous work and publications on coat-
ings, by carrying on a limited commercial business of coat-
ing lenses (Vol. II, D. A. 916a-917a; Appendix 8a-9a) in
the course of which he employed the identical process
ciaimed in plaintiff’s patent, as a side line ‘in a small scale
commercial business of coating optical elements for per-
sons and corporations who had become familiar with his
work’’ (Vol. II, D. A. 939a-940a) with unrestricted dis-
closures to others (Vol. II, D. A. 916a, 920a-921a) including
Dr. Hewlett* of the General Electric Company (Vol. II,
942a) and that as a result of the notoriety of his work in
demonstrating the practical utility of such films, Cart-
wright was so besieged with orders for coatings as to
necessitate the hiring of an assistant to fill them (Vol. II,
D. A. 916a, 917a, 939a-940a).
But the Court of Appeals, notwithstanding such findings,
adopted the conclusions of the District Court that Cart-
wright’s use of the process, ‘‘in his commercial work, had
convinced him that it was inferior in results’’ to other
methods of coatings; that he failed to ‘*properly evaluate’’
the patented method or to conclude that it was “‘the best
method for obtaining hard and rugged coatings’’; that Cart-
wright’s commercial user was only on a ‘‘small seale’’ and
“*sporadic’’ and that he ‘‘did not bring it to light in the
art, nor urge its adoption’? (Vol. II, D. A. 919a, 916a,
939a-942a). The Court of Appeals, adopting such reason-
ing, concluded that Cartwright’s work was not a completed
discovery and reduction to practice, nor prior knowledge
* Both Courts found that Dr. Hewlett of the research staff of
the General Electric Company, corresponded with Dr. Cartwright
and carried on a parallel practice of the claimed invention (Vol. II,
D. A. 920a-921a, 942a). Hewlett, having reduced the method
to practice and evaluated it, concluded that it was an unnecessary
refinement and expense for cover glasses of electrical meters and
decided for that reason not to put it in production (Vol. I, D. A.
357a, 367a-368a, 374a-375a).
=
13
and use, nor public use, but only a discovery which was
abandoned ‘‘as soon as it emerged from the stage of
experiment’’ (App. 9a-10a).
The judgment of District Court was entered January
25, 1954, holding the claims in suit, Nos. 1 to 5, inclusive,
and 8 and 9, valid and infringed and ordering an injunc-
tion and an accounting, but dismissing the claim of breach
of confidential disclosure. The question of the effect of
the 1952 Patent Act was not raised nor decided in the
District Court. Only the defendant appealed.
In the Court of Appeals, it was not contended that the
1952 Act, Sec. 103, had changed the decisional law as to
the test of invention. In fact, plaintiff’s brief cited and
relied on the prior decision of this same Court of Appeals
in Channel Master Corp. v. Video Television Inc. (KE. D.
N. Y., 1953), 117 F. Supp. 812, 815, aff’d 209 F. 2d 511
(C. A. 2, 1953), to the effect that the Act, Sec. 103, did not
change the law. That question was first injected into the
case at bar by that Court at the hearing on appeal and in
its opinion that the decisions of this Court in the twenty-
five years before the Act, changed the decisional law and
that the Act, by ‘‘restoring the law to what it was,’’ now
again authorizes some vaguely greater liberality for the
test of invention than was applied in such decisions (Ap-
pendix, p. 12a). In pursuit of that view, the Court of Ap-
peals brushed aside or ignored the proofs of lack of
novelty and invention (Sec. 103) and failed to apply the
statutory defenses (Secs. 101, 102).
The opinion of the Court of Appeals, filed June 20, 1955,
thus affirmed the judgment of the District Court, holding
all of the claims in suit valid and infringed. The defend-
ant filed a Petition for Rehearing on July 11, 1955, within
the time therefor as extended by the Court. In its de-
cision on the rehearing, the Court modified its opinion,
holding claims 1, 2, 4 and 5 invalid for lack of disclosure.
This petition for a writ of certiorari is timely filed.
14
Federal Jurisdiction of the District Court
This is a civil action under the Acts of Congress relating
to patents and the jurisdiction of the Court of first in-
stance is based upon 28 U. S. C. 1338 (a) and 1400 (b).
Reasons and Argument
Question 1. The decision below has decided an important
federal question with respect to whether or not the Patent
Act of 1952, which took effect on January 1, 1953, effected a
change in the application of the standard of invention
enunciated and applied by this Court and by the lower
Courts in conformity therewith. The opinion below has
decided this question in a way that is in conflict with the
provisions of the Act and the intent of Congress, and is
in direct conflict with the applicable decisions of Courts of
Appeals in other Circuits involving the same question.
The Court of Appeals recognized that the Act, Sec. 103,
by prescribing the test of obviousness to a person having
ordinary skill in the art, merely enacted the classical test
of the decisional law since Hotchkiss v. Greenwood. Thus
the Court below said:
““* * * §103 only restores the original gloss, sub-
stantially in ipsissimis verbis; which has never been
overruled; but on the contrary for seventy or eighty
years had continued to be regarded as authoritative.’’
Such was the law as interpreted and applied in the de-
cisions of this Court, during the twenty-five years before
the Act, which the Court of Appeals has criticized as
changing the law. But the Courts of Appeals of the other
Circuits have held, on the contrary, that such decisions of
this Court did not change the test or standard of invention
but only required a more strict determination of what
would have been obvious to one of ordinary skill in the
15
art; that such decisions of this Court have merely re-
affirmed what this Court said long ago in Atlantic Works
v. Brady (1882), 107 U. S. 192, 200. Even in Cuno Engineer-
ing Corp. v. Automatic Devices Corporation, 314 U. 8. 84,
sometimes construed as requiring the most strict applica-
tion of the standard, this Court stated its adherence to the
principle of Hotchkiss v. Greenwood and any extreme in-
terpretation of the expression ‘‘flash of creative genius”’
in the Cuno decision is unwarranted and has been guarded
against in the second sentence of Section 103.*
Pacific Contact Laboratories v. Solex Laborato-
ries, 209 F. 2d 529, 533 (C. A. 9, 1953), cert. den.
348 U.S. 816.
This Court has said that the standard of patentability
is a Constitutional standard. Great Atlantic ¢ Pacific Tea
Co. v. Supermarket Equipment Corp. (1950), 340 U. 8. 147,
154. In requiring a strict application, this Court was not
deviating from, but reaffirming the Constitutional intent
which is binding upon Congress.
Avery v. Ever Ready Label Corp., 104 F. Supp.
913 (D. C. N. J., 1952).
The 1952 Act, Sec. 103, so far as here pertinent (first
sentence) contains no provision in reference to the stand-
ard of invention beyond the bare enactment of the classical
test of obviousness. It is bare of any support for any in-
ference that Congress disapproved the criticized decisions
of this Court: and such fact supports the conclusion that if
Congress meant so much, it would not have said so little.
* Similar expressions, i. e¢., “inventive genius”, “intuitive
genius”, and the like, had long been used by the Supreme Court.
Reckendorfer v. Faber (1875), 92 U. S. 347, 357; Smith v. Whit-
man Saddle Co. (1893), 148 U. S. 674, 681; Potts v. Creager
(1895), 155 U. S. 597, 607; Concrete Appliances Co. v. Gomery
(1925), 269 U. S. 177, 185; Mantle Lamp Co. v. Aluminum Prod-
ucts Co, (1937), 301 U. S. 544, 546.
16
The legislative history of the Act, furthermore, plainly
establishes that it was not the intent of Congress to over-
rule the decisions of this Court. The Reports of the Sen-
ate and House Committees in reporting the Bill have been
quoted and considered at length in many decisions uni-
formly holding the above conclusion, such as the following:
Stanley Works v. Rockwell Mfg. Co., 203 F. 2d 846
(C. A. 3, 1953), cert. den. 346 U. S. 818;
General Motors Corp. v. Estate Stove Co., 208 F.
2d 912 (C. A. 6, 1953), cert. den. 346 U. S. 822;
Joseph Bancroft & Sons Co. v. Brewster Finishing
-Co., 113 F. Supp. 714, 721 (D. C. N. J., 1953),
aff’d. 210 F. 2d 677;
New Wrinkle, Inc. v. Watson, 204 F. 2d 35, 37
(C. A. D. C., 1953) cert. den. 346 U. S. 820;
In re O’Keefe, 202 F. 2d 767, 771 (C. C. P. A,
1953).
The Court of Appeals said in reference to decisions that
have passed upon the question whether the Act changed
the standard of invention as previously defined by this
Court, ‘‘so far as we have found none of them has held
that §103 did not change the standard of invention.’’
The fact is, on the contrary, that this same Court had pre-
viously affirmed, per curiam, a decision by Judge Inch of
the Eastern District of New York, specifically holding that
the Act did not change the standard of invention.
Channel Master Corp. v. Video Television, Inc.,
117 F. Supp. 812, 815 (D. C. E. D. N. Y., 1953),
aff’d. 209 F. 2d 511 (C. A. 2, 1953).
It has been uniformly so held in the other Circuits and
no decision has been found to the contrary except the de-
cision below in this case:
Wasserman v. Burgess & Blacher Co., 217 F. 2d
402 (C. A. 1, 1954);
17
Stanley Works v. Rockwell Mfg. Co., 203 F. 2d 846
(C, A. 3, 1953), cert. den. 346 U. S. 818;
Joseph Bancroft & Sons Co. v. Brewster Fimish-
ing Co., 113 F. Supp. 714, 721 (D. C. N. J., 1953),
aff’d. 210 F. 2d 677;
Interstate Rubber Products Corp., et al. v. Radia-
tor Co. et al., 214 F. 2d 546 (C. A. 4, 1954) ;
Fritz W. Glitsch & Sons v. Wyatt Metal & Boiler
Works, 106 USPQ 162, 164-165 (C. A. 5, 1955) ;
General Motors Corp. v. Estate Stove Co., 203 F.
2d 912 (C. A. 6, 1953), cert. den. 346 U. S. 822;
Pacific Contact Laboratories vy. Solex Labora-
tories, 209 F. 2d 529 (C. A. 9, 1953), cert. den.
348 U.S. 816;
New Wrinkle, Inc. v. Watson, 204 F. 2d 35, 37
(C. A. D. C., 1953), cert. den. 346 U. S. 820;
In re O’Keefe, 202 F. 2d 767, 771 (C. C. P. A,
1953) ;
Thys Co. v. Oeste, 111 F. Supp. 665, 673 (D. C.
N. D. Cal. N. D., 1953, aff’d. 219 F. 2d 131);
Modern Art Printiixg Uo. v. Skeels, 123 F. Supp.
426, 482 (D. C. D. N. J., 1954) ;
DeBurgh v. Kindel Furniture Co., 125 F. Supp.
468, 474 (D. C. W. D. Mich. S. D., 1954).
In enacting the test of invention as it had been defined
by the decisions of this Court, and without more, it is plain
that Congress did not intend to overrule the decisions of
this Court, but, on the contrary, to confirm them.
In the pursuit of its contrary version and in view of the
lack of novelty or invention, the Court of Appeals was led
inescapably to the conclusion that the patent would have
been held invalid by this Court, stating: ‘‘it must be owned
that, had the case come up for decision within twenty, or
perhaps, twenty-five, years before the Act of 1952 went into
effect on January 1, 1953, it is almost certain that the
18
claims would have been held invalid’? (Appendix lla). Jt
was thus the opinion of the Court below that, but for the
Act and its version thereof as overruling the decisions of
this Court during those twenty to twenty-five years, the
patent would be invalid wnder those decisions of this Court.
The decision sought to be reviewed was turned on the
subject of the proper standard of invention, the most
important question of patent law. The decisions cited
above show that the Courts of and in other Circuits are
uniformly applying the standard of invention of the Act
as defined and applied by the decisions of this Court in
the previous twenty-five years. The decision below, after
stating that the ‘“‘authoritative’’ and ‘original gloss’’ of
Hotchkiss v. Greenwood is embodied in Section 103 of
the Act, implicitly holds that the later applications of this
gloss by this and other Courts have been “‘indefinite”’ **but
indubitably stricter’? than the test of invention defined
in Section 103; have ‘‘obscured [that gloss] by a series of
later comments whose upshot is at best hazy’’; and have
been ‘‘too amorphous’? to provide any assurance the public
might have drawn from earlier decisions—i. e., before the
effective date of the 1952 Act (Appendix lla, 15a).
This creates confusion of the first order for there is
nothing in the Act itself nor in the legislative history
that explicitly or implicitly overrules the decisional law
with respect to the standard of invention or its applica-
tion from the time of Hotchkiss v. Greenwood to the ef-
fective date of the Act.
In any event the opinion below is in direct conflict with
another decision of the same Court and is in direct con-
fliet with other Circuits as to whether the 1952 Act is to
be applied in accordance with the decisions of this Court
of the last twenty-five years or in accordance with some
undefined but less strict application of the standard of in-
vention applied twenty-five years or more before the 1952
19
Act by some of the Courts but repeatedly condemned by
this Court as early as 1882 in Atlantic Works v. Brady,
supra, and as recently as 1950 in the A. € P. case, supra.
Question 2. The decision sought to be reviewed is in
further confusion and conflict in its award of damages
for infringement during the period before the 1952 Act
when the Court concluded the patent would have been
held invalid. Defendant relies on the self-evident proposi-
tion that there can be no infringement of an invalid patent
and that it was necessary for the Court below to either
find that the patent was valid before the Act, or else
deny such damages, to avoid ex post facto enforcement of
the patent, for such is not favored in the eyes of the law.
Defendant contends that such ex post facto enforcement
is expressly prohibited by Sec. 5 of the Act which, in
repealing sections of the prior Statutes, provided:
‘“*Any rights or liabilities now existing under such
sections or parts thereof shall not be affected by this
repeal.’’
Defendant contends also that any such ex post facto en-
forcement is inconsistent with the principle of intervening
rights under reissued patents as now enacted in See. 252
of the Act.
The Court below raised this issue for the first time in
its opinion and resolved it without having the benefit of
a full briefing and argument.
Question 3. Question numbered 3 is directly related
to the first question and necessarily should be considered
along with question numbered 1 because the proper applica-
tion of the standard of patentability and invention under
the 1952 Act is the underlying basis for a proper decision
of Question 3.
[eye ae eee ee
20
The identical steps of the patented process of heating
glass while depositing a vaporized material in a vacuum
for the same purpose of cleaning the glass for intimate
contact with coatings of metals were known and used.
Both Courts below found that several prior patents,
publications and uses disclosed the same process of coat-
ing on hot glass with light-reflecting metals and also that
several other patents disclosed the same process of coat-
ing with plaintiff’s light-transmitting metal salts except
for deposit on cold glass.
It was the Patent Office Examiner’s considered and re-
peated judgments, in view of such patents, that it was obvi-
ous to one skilled in the art to coat hot glass with metal
salts, notwithstanding his unexplained allowance of the
claims at the insistence of the plaintiff’s Navy Department
solicitors. The Examiner rejected claims to the same proc-
ess in the application of the Eastman Company employee,
Beggs, until the issue of plaintiff's patent necessitated
an interference (Vol. II, D. A. 644a, 648a, 651a, 655a). He
rejected claims to the same process in the application of
Osterberg et al. and the rejection was affirmed by the Board
of Appeals (Vol. II, D. A. 872a, 890a). Of these several
applicants, only the plaintiff succeeded in overcoming the
Patent Office resistance.
The Court of Appeals misconstrued plaintiff’s specifica-
tion as ‘‘only for a ‘light-transmitting optical’ element’?
(Appendix 4a). At the rehearing, it was pointed out, on the
contrary, that the plaintiff’s specifications disclosed the
use of the process with any ‘‘suitable coating material’’
including opaque, light-reflecting materials (the metal sul-
fides). As a result, the Court invalidated the claims not
limited to light-transmitting coatings (claims 1, 2, 4 and
5) for lack of adequate disclosure. But the more com-
pelling reasons for invalidating the claims were the dis-
closure by the prior patents and publications of coating
on hot glass, and the indefiniteness and over-claiming of
plaintiff’s claims at the point of novelty, rather than the
lack of disclosure relied on by the Court.
21
‘** * * Cowles has no right to claim the feature of in-
combustibility as his invention, since nothing is better
settled in this court than that the application of an
old process to a new and analogous purpose does not
involve invention, even if the new result had not before
been contemplated.’’ Ansonia Brass. @ Copper Co, v.
Electrical Supply Co., 144 U. S. 11 (1892), citing to
the same effect Pennsylvania R. Co. v. Locomotive
Engine & S. T. Co. (1884), 110 U. S. 490, 494 and
many other decisions.
The adaptation of an old process to a new use does not,
under the decisions of this Court, amount to invention.
Brown v. Piper, et al. (1875), 91 U. S. 87; Paramount Pub-
lix Corp. v. American Tri-Ergon Corp. (1935), 294 U.S.
464; General Electric Co. v. Jewel Co., 326 U. S. 242, 247
(1945). The net result of the opinion and the invalidating
of the broad claims on rehearing clearly exposes the con-
flict of the decision by the Court of Appeals with the fore-
going decisions of this Court with respect to invention in
the remaining claims.
The District Court conceded that the 1931 publication of
Cartwright disclosed the same process, including heat-
ing of the glass while being coated in the vacuum, as in
plaintiff’s patent. The only attempted distinction was
that, in describing the use of the process, reference was
made in an exemplary way to the metal, silver, as one
of the class of coating materials disclosed by the publica-
tion for use in the process. The disclosed materials in-
cluded those of plaintiff’s patent and the Court held that
it was not obvious to one skilled in the art that the glass
could be cleaned in the same way when applying any of the
other materials disclosed for use in the process. Jt ts tm-
possible to understand how a contention so trivial could
be seriously advanced as supporting a patent monopoly, in
the face of the defense of prior publication, before the
plaintiff’s invention and more than a year before his
patent application, as provided in See. 102 (a) and (b).
22
The Court of Appeals avoided any reference to this pub-
lication, although it was urged on appeal and in the peti-
tion for rehearing.
Question 4. The decisions of the courts below, in fail-
ing to apply the rules of law applicable to the findings of
fact, are in confusing conflict with the statutory and deci-
sional law.
Under See. 101 of the Act, the claimed subject matter
must have been ‘‘new’’ at the time of plaintiff’s alleged
invention. Under See. 102 (a), it must not have been
*‘known or used’’ by others, or ‘‘patented or described in
a printed publication’? before the alleged invention. It
has sometimes been contended that ‘‘known’’ should be
taken to mean publicly known, but that has not become the
law. It has not been contended that ‘“‘used’’ means pub-
licly used, because that is the additional provision of See.
102 (b).
Under See. 102 (b), it must not have been ‘‘patented or
described in a printed publication”’ or ‘‘in public use or
on sale’’ more than one year prior to the date of applica-
tion for the patent.
These provisions of Sees. 101 and 102 continne in the
same terms and do not purport to change the prior Statute,
R. S. 4886, as held by this same Court of Appeals in the
Channel Master case, supra,
The courts below failed to apply these rules of law
to their concurrent findings as to the prior use by Cart-
wright.
The District Court found (Vol. II, D. A. 939a, 940a, Find-
ings 27-29, 31) and repeatedly stated in its opinion (Vol. II,
D. A. 915a-917a) that Cartwright knew and used the
claimed invention in 1939, reduced it to practice suc-
cessfully, used and disclosed it to others without secrecy
and used it in the commercial production of coated lenses
for profit. And the District Court said, ‘‘These admis-
sions pose important questions, i. e., whether Cartwright
23
properly estimated the value of heating in the vacuum
* * * whether he brought it to light in the art and urged
its adoption.’’ But these were not the questions required
by the statute and the Court completely ignored the above
statutory requirements as defined by the decisions of this
Court.
The Court of Appeals confirmed the findings of the
District Court and stated even more specifically that the
evidence proved ‘‘beyond cavil that Cartwright did con-
ceive that to coat the glass in a vacuum, while heated,
made the coating ‘very much harder,’ but it also shows not
only that he had practiced it, but that he considered * * *
having it patented.’? Furthermore, that he disclosed such
practice to his sponsor, Research Corporation, and dis-
closed it unrestrictedly to Dr. Hewlett of the General
Electric Co. and that he used it in the coating of many
lenses in a commercial business yielding an income as
high as $3,000 a year. The Court further concluded that
this was a public use of the claimed invention from 1939
on. But the Court then agreed with the conclusion of
the District Court, that since Cartwright did not eventually
prefer such method to that of heating the glass before or
after coating, nor take steps to bring ‘‘it to light in
the art’? he ‘‘abandoned his discovery as soon as it
emerged from the stage of experiment’? (Vol. II, D. A. 923a,
942a; Appendix 9a).
Such a conclusion by the Court of Appeals is not
only in flat contradiction of its own findings of fact;
it is in direct contravention of the above statutory de-
fenses, of the decisions of this Court, and of its own
prior decisions and those of the other Courts of Appeal.
One defect is the failure to observe the distinction be-
tween an abandoned experiment and a completed discovery
which was elaborated by this Court in Corona Co. v. Dovan
Corp. (1928), 276 U. S. 358. In that case the Weiss patent
was held invalid because the invention had been known to
and used by Kratz in the company laboratory, although it
was not published nor brought ‘‘to light in the art’’ until
24
after the invention by the patentee Weiss. This Court said
of Kratz’s laboratory work (pp. 382, 384):
“* * * what he did at Norwalk, supported by * * *
the indubitable records that are not challenged, leaves
no doubt in our minds that he did discover in 1916
the strength of D.P.G. as an accelerator as compared
with the then known accelerators, and that he then
demonstrated it by a reduction of it to practice in
producticn of cured or vulcanized rubber.
“This constitutes priority in this case. It was not
followed by commercial use thereafter, because of the
then cost of D.P.G. But this patent is for the mere
discovery and application in the making of rubber
of a particular accelerator. It was the fact that it
would work with great activity as an accelerator that
was the discovery, and that was all, and the necessary
reduction to use is shown by instances making clear
that it did so work, and was a completed discov-
ery. ** *
“It is a mistake to assume that reduction to use
must necessarily be a commercial use. If Kratz
discovered and completed, as we are convinced that
he did, the first use of D.P.G. as an accelerator * * *
he does not lose his right to use this discovery * * *
because he does not subsequently sell the rubber thus
vuleanized, or use his discovery in trade, or does not
apply for a patent for it. It is not an abandoned
experiment because he confines his use of the rubber
thus produced to his laboratory or to his lecture
room.’’
The facts of the present case are stronger for the defend-
ant than those of the Corona case for Kratz, because when
Cartwright’s discovery “‘emerged from the stage of ex-
periment”’, as a completed discovery, it was immediately
employed in several years of commercial production. The
attempted distinction by the Court of Appeals that ‘‘the
tests of Kratz’’ were not ‘‘ ‘abandoned laboratory experi-
ments’ ’’, is completely irrelevant to the present facts.
25
The well known text, Patentability and Validity by
Rivise & Caesar (The Michie Co., Charlottesville, Va.,
1936), states at Sec. 58, page 90:
*‘A careful distinction must be maintained between
abandoned experiments and abandoned inventions.
As has already been stated and illustrated, a success-
ful invention cannot be defeated by prior experiments
which were abandoned because unsuccessful. Aban-
doned inventions, on the other hand, are just as effec-
tive as references against later developments as if
they had never been abandoned.” (Italics added)
In Buser v. Novelty Tufting Machine Co., 151 Fed. 478,
493 (C. A. 6, 1907), cert. den. 210 U. S. 432, the Court said:
“Tf, then, an alleged invention is in fact an inven-
tion, no subsequent abandonment of it can be said to
be an abandoned experiment. At most, it is an aban-
doned invention. But an invention that has been
abandoned is as much an anticipation, and to as great
an extent negatives novelty, as an invention that has
not been abandoned.’’
A further defect is that in discarding the prior user of
Cartwright, the decisions of both Courts are in head-on
conflict with the above statutory defenses of prior knowl-
edge and use and public use and sale. Commercial use, or
use on a continuous or large scale, or any use at all is im-
material.
“If the invention is perfected, and put into actual
use by the first and original inventor, it is of no con-
sequence, whether the invention is extensively known
or used, or whether the knowledge or use thereof is
limited to a few persons, or even to the first inventor
himself.’’ Reed v. Cutter, et al., 20 Fed. Cas. 435, 437
(C. C. D. Mass., 1841).
**We do not understand the Circuit Court to have
said that the omission of Conner to try the value of
26
his safe by proper tests would deprive it of its prior-
ity; nor his omission to bring it into public use. He
might have omitted both, and also abandoned its use,
and been ignorant of the extent of its value; yet, if it
was the same with Fitzgerald’s, the latter would not
upon such grounds be entitled to a patent.’’ Gayler,
et al. v. Wilder (1850), 10 How. 477, 498.
‘The rule undoubtedly is that a prior use, in order to
negative novelty in a patent, must be something more
than an accidental or casual one. It need not have
been persisted in, and the thing produced need not
have gone into commercial use; but at least the dis-
covery must have gotten beyond the experimental stage
and have become complete, and the inventor must have
understood and appreciated that it was capable of pro-
ducing the results sought to be accomplished.”’ |
American Stainless Steel Co. v. Rustless Iron Corp.,
71 F. 2d 404, 407 (C. A. 4, 1934).
** Appellants rely on Corona Cord Tire Co. v. Dovan
Corp. * * * that the reduction to practice of an inven-
tion can be completed by production of the article
and the testing of it by an inexact practical test show-
ing its operative character to a man skilled in the art,
and of the further proposition that the invention need
not be followed by commercialization to establish its
completion, and that no abandonment can be presumed
merely from the lack of commercialization. With
those principles we are in complete accord.’’ Minne-
sota Mining € Mfg. Co. v. Van Cleef, 139 F. 2d 550,
555-6 (C. A. 7, 1943).
To the same effect, see:
Standard Sanitary Mfg. Co. v. Iron City S. Mfg.
Co., 222 Fed. 671, 678 (C. A. 3, 1915);
St. John v. Schulze, 47 F. 2d 798, 802 (C. C. P. A.,
1931).
27
A single prior use, not proven secret, is a bar to any later
inventor:
‘*The prior knowledge and use by a single person
is sufficient. The number is immaterial.’’ Coffin v.
Ogden, 18 Wall. 120, 124.
**The law is clearly established that a single prior
public use for more than two years prior to the appli-
cation for the patent makes the patent void.’’ Toch
v. Zibell, etc., 231 Fed. 711, 716 (C. A. 2, 1916) (citing
Egbert v. Lippmann, 104 U. S. 336 and Hall v. Mac-
neale, 107 U. 8. 90).
In Grasselli Chemical Co. v. National Aniline & Chemical
Co., 26 F. 2d 305, 309 (C. A. 2, 1928), the Court by Judge
Hand said:
*‘Once the invention has been embodied in goods
which are put in public use it becomes impossible for
a later inventor to secure a patent.’’
Publication of the discovery, or steps to bring ‘‘it to
light in the art’’, or ‘‘urge its adoption’’ are not required
by the statute. In Gillman v. Stern, 114 F. 2d 28, 31
(C. A. 2, 1940), cert. den. 311 U. S. 718, in distinguishing
between ‘‘a public user which does not inform the public’’
and ‘‘a secret user’’, the court by Judge Hand said:
‘** * * it was irrelevant whether the use informed the
public so that they could profit by it.”’
In Rosaire v. Baroid Sales Division, National Lead Co.,
218 F. 2d 72, 75 (C. A. 5, 1955), cert. den. 349 U. S. 916,
the court said:
‘** * * no case we have found requires a holding that,
under the circumstances that attended the work of
Teplitz, the fact of public knowledge must be shown
before it can be urged to invalidate a subsequent
patent.’’ (citing the Corona case)
re eeeeneeenrenesssuneneansnuannsseesseeees
28
After Cartwright’s prior knowledge and use and public use
before plaintiff’s invention and more than a year before
plaintif’’s application, there was no authority in law for
the issue of a patent to plaintiff.
Conclusion
The decision sought to be reviewed places on the act and
its standard of invention an interpretation which chal-
lenges and is in expressed conflict with the decisions of this
Court, with the interpretation of the act by the other
Courts of Appeal and with the interpretation in its own
earlier decision.
Such conflict is created by validating the patent on rea-
soning which flies in the face of the several statutory de-
fenses and their settled application in the decisions of this
Court and of the same and other Courts of Appeal.
Only an authoritative decision by this Court can clear
up such conflict and confusion in the basic principles of the
patent laws.
Respectfully submitted,
Epwarp H. Cumpston,
711 Wilder Bidg.,
Rochester 14, N. Y.
Attorney for Petitioner.
Joun N. Cooper,
233 Broadway,
New York 7, N. Y.
G. A. ELLesrap,
Rochester 2, N. Y.
Of Counsel.
September 9, 1955.
la
APPENDIX
[Volume III 304a]
United States Court of Appeals
For THE Seconp Circvlt.
No. 216 October Term, 1954.
Argued April 6, 1955. Decided June 20, 1955
Docket No. 23345
ap
ad
Dean A. Lyon,
Plaintiff-Appellee,
v.
Bavuscu & Loms Opticat Co.,
Defendant-Appellant.
*
Before:
L. Hand, Swan and Hincks, Circuit Judges.
On appeal from a judgment for the plaintiff of the Dis-
trict Court for the Western District of New York (Burke,
J., presiding), in an action for the infringement of patent
No. 2,398,382, granted to the plaintiff on April 16, 1946.
Edward H. Cumpston (G. A. Ellestad on the brief) for
the appellant.
John W. Malley (C. Willard Hayes and B. E. Shlesinger
on the brief) for the appellee. :
2a
L. Hann, Cireuit Judge:
This is an appeal from a judgment of the District Court
for the Western District of New York (Burke, J., presid-
ing), sustaining the validity of Patent No. 2,398,382,
granted to the plaintiff, Lyon, on April 16, 1946, upon an
application [Volume III 305a] filed November 17, 1942.
Of the nine claims all but 6 and 7 are in suit; the judg-
ment held all seven valid, and the defendant concedes in-
fringement. Judge Burke, in a long and careful opinion
(119 Fed. Sup. 42), has stated the evidence in such detail
that we may, as we shall, assume familiarity with it in
our discussion of the issues involved.
The defendant first challenges the sufficiency of the
specifications to support the claims. Throughout the
specifications the ‘‘coating’’ to be vaporized is described
only as a ‘‘suitable coating * * * such as metallic fluoride,
metallic sulphide, oxide or the like’’ (page 1, col. 2, lines
26-28), or ‘‘mixtures’’ of these (page 2, col. 1, lines 26-
28). The first five claims speak of ‘‘a stable, water in-
soluble, evaporated inorganic salt,’? and of the last two
claims in suit number eight is for a ‘‘metallic fluoride’’
and number nine for ‘‘magnesium fluoride.’’ The defend-
ant complains that ‘‘suitable coatings’’ is too vague a de-
scription, even when accompanied, as the phrase was, by
the specific substances mentioned. Considering the kind
of coatings that the art had been using, an acquaintance
with which the applicant might impute to anyone prac-
ticing the process, this objection appears to us unduly
captious and hostile to the underlying canons of patent
interpretation. In any event, Finding 44 finds facts that
dispose of the objection. Indeed, it cannot at any rate
apply to claims 8 and 9 where the ‘‘inorganie salt’’ is
described as ‘‘metallic fluoride,’ and ‘‘magnesium fluor-
ide.’’ As for the other claims in suit we can see no rea-
son to suppose that when the ‘‘suitable coating’ of the
specifications is limited to a ‘stable, water insoluble,
[Volume IIT 306a] evaporated inorganic salt,’’ anyone
3a
seeking to use the process would be left in doubt. The
claims always measure and limit the scope of the monop-
oly; and the defendant does not, and could not properly,
suggest that anything that Lyon actually invented he did
not disclose when the limitations of the claims are imputed
to the description in the specifications. Therefore we are
not disposed to draw any distinction between claims 8
and 9 and the other five in suit, though, if we did, it would
at most only result in a modification of the judgment not
important in this action. As to the objection that the
claims confuse or combine process and product, it is so
patently untenable that we shall not discuss it.
The important questions are whether the invention had
been disclosed in any earlier patent, or had been publicly
used, before Lyon filed his application on November 17,
1942; and whether his contribution will support a patent.
The process was in two steps: First, to heat the ‘‘optical
surface’’ in a vacuum until ‘‘absorbed water and grease
have been evaporated from the surface,’’ (page two, col.
1, lines 47, 48); and second, to vaporize an ‘‘inorganic
salt’’ within the vacuum, meanwhile keeping the ‘‘ optical
surface’’ heated; ‘‘baking of the opticai element, evacua-
tion of the chamber and vaporization of the coating ma-
terial are continued until a suitable Jayer of the desired
thickness * * * has been deposited,’’ (page 2, col. 1, lines
64-68). None of the earlier patents disclosed this sequence,
and the nearest were as follows. In November, 1925, Fink
and Beers filed the application that issued on December
10, 1929, as Patent No. 1,738,991. It was for a process of
coating the inner surfaces of the vacuum chamber [Volume
IIT 307a] of a thermos bottle with vaporized metal, such
as magnesium. The purpose of such a coating is to main-
tain the temperature in the chamber by excluding the heat
from the air, or the heat from the contents of the bottle.
In April, 1929, Winkler and two others applied in Ger-
many for a patent that issued in this country as Patent
No. 1,982,774 on December 4, 1934. This was for mirrors
made by condensing in a vacuum vaporized metals—e.g.
4a
an alloy of aluminum and silver—upon a polished base.
(‘The adhering capacity of the mirror coatings on metallic
substrata is quite considerably increased by keeping the
polished metallic substrata hot during the deposition of
the mirror coatings.’’) There were three earlier patents
for coating the upper part of the inside of an electric
bulb, so that none of the light should be reflected upwards.
There were also patents for mirrors, designed of course
to reflect the light; and therefore the opposite of the
patented coatings, whose purpose is to transmit through
the ‘‘optical surface’? as much as possible of the light
falling upon it. The defendant indeed insists—relying for
this on line 12, col. 1, page 1, of the specifications in suit—
that ‘‘mirrors’’ are among those *‘optical surfaces’’ or
“‘elements’’ that the invention covers. However, regard-
less of any significance of that word where it appears,
there cannot be the least doubt that the invention is only
for a ‘‘light-transmitting optical’’ element; indeed the
coating itself is spoken of as ‘‘a light-transmitting evap-
orated film’’ (page 1, col. 1, lines 47, 48). The explana-
tion for the inclusion of ‘mirrors’? may be that, as the
reflecting coating of a mirror is usually on the rear sur-
face of a transparent plate, it is desirable to have as little
light as possible [Volume III 308a] reflected from the front
of the plate. so that all would reach the reflecting surface.
The purpose of all these patents so widely diverged from
that of Lyon that under § 100 (b) they would not serve as
anticipations, even if the sequence of steps had more
closely anticipated his process.
On the other hand Cartwright and Turner took out
three earlier patents that were much nearer to Lyon’s,
for they disclosed coating an ‘‘optical surface’? with a
film of ‘‘inorganic salt.’’ The first—No. 2,207,656—was
applied for in December, 1938 and issued on J uly 8,
1940. It disclosed a process of depositing a coating of
non-reflecting substances—‘‘metallic fluorides’’—upon a
lens or the like by vaporizing it in a vacuum “‘in the
manner now generally well known in the silvering of
da
mirrors and the like’’ (page 2, col. 1, lines 21-23). The
second—No. 2,281,474—was applied for in March 1939
and issued on April 28, 1942. It disclosed a method ot
superimposing at least two coatings of different ‘indices
of refraction’’; and presupposed the vaporization of
“‘inorganic substances’ in a vacuum. The third—No.
2,281,475—was applied for in August 1939 and issued
on the same day as the second: it was for a process
(and for its product) of coating a lens with similar sub-
stances by vaporizing them in a vacuum and thereafter
“‘baking’’ at from 350° to 500° C. in order to increase
their resistance to detachment—‘‘ruggedness””—a prac-
tice that became known in the art as **post-baking.”’
The specifications of none of these patents suggested
that the ‘‘optical surface’’ should itself be kept hot while
it was being coated; the nearest approach to this being
in the third patent which did declare it desirable to bake
the “‘surface’’ at between [Volume III 309a] 400° to
450° C. before vaporization (page 1, col. 1, lines 41-45)
~-a step that has come to be known as ‘*preheating,’’
and that is, as we have said, the first step of the patented
process. Thus, although Lyon’s advance lay only in
keeping the ‘‘optical surface’’ itself heated while it was
being coated, this had not appeared in any patent or
printed publication on November 17, 1942. Before con-
sidering whether the patent may depend upon it, we
will consider whether Lyon’s process had been ‘‘in pub-
lic use or on sale’? under § 102 (b); or whether “‘the in-
vention was made * * * by another’’ before Lyon, under
§ 102 (g).
Cartwright was one of the most experienced experts
in this field, and had been active in experiment even
before the year 1938. The military services, and par-
ticularly the Navy, were particularly anxious to find a
practical way of coating binoculars, periscopes and other
“‘light-transmitting’’ glass surfaces, which should make
the film at once tenacious and viable. Indeed, some of
the testimony imputes to the services a scarcely under-
6a
standable estimate of the importance of such a coating.
The trouble had been that all the earlier coatings, though
their proper composition was known, could be readily
scratched or even rubbed off. One condition of success
was well understood: before being coated the glass sur-
face should be made as clean as possible: all water or
grease must be taken off. An accepted way to do this
was Lyon’s first step: heat the glass in a vacuum.
Again, a familiar, perhaps the only practical, way was
to coat the glass after it had been cleaned by vaporizing
the ‘inorganic salt’? in the same vacuum in which the
glass had been ‘‘pre-heated.”’ Finally, it was well under-
stood that to ‘‘posfbake’’ added much to the tenacity
of the bond and the ‘“‘ruggedness”’ of the coating. [Vol-
ume IIT 310a] However, for some reason, apparently still
not quite understood, the art never took Lyon’s second
step, now generally accepted as the way to secure the
optimum bond of the coating to the glass.
Cartwright did indeed fully disclose even this in a
letter, written on November 30, 1939, to one, Wilson,
of the ‘‘Research Corporation,’’ a company engaged in
the exploitation of patents, in whose employ he then
was, though his chief calling was that of instructor in
physics in the Massachusetts Institute of Technology.
This letter described the “‘development made during the
last few months on ‘invisible glass’’’; and the third
and ninth experiments which it describes we quote in
the margin.* [Volume III 3lla, 312a] Not only does the let-
*3. Glass was heated to 150°C, 300°C and 400°C in a vacuum
and treated with evaporated magnesium fluoride and also cryo-
lite. The heating was done by having the glass in contact with
a heavy piece of chromium plated brass which was heated by a
flame before putting on the bell jar. Of course, it could be
heated electrically inside the bell jar. Part of the glass extended
beyond the hot brass in order to control the effect of heating.
At 150°C the cryolite film was noticeably harder where it had
been heated but there was only a very slight difference in the
hardness of the magnesium fluoride film. At 300°C both films
(Footnote continued on following page)
-
ter prove beyond cavil that Cartwright did conceive that
to coat the glass in a vacuum, while heated, made the
coating ‘‘very much harder,’’ but it also shows not only
that he had practiced it, but that he considered the pos-
sibility of ‘‘getting protection on the method’’: i. e.
having it patented. Furthermore, on the day before—
November 29th—he had told one, Hewlett, a physicist
of the General Electric Company, of coating the glass
while it was hot, and on December 4th Hewlett wrote
to his own company describing that process, and adding
that ‘‘the ruggedness of these films is very striking
(see the two samples he gave me). They may be washed
in tap water and even scratched with a knife blade with-
out producing any scratches.’’ Moreover, neither does
the letter, nor any testimony, intimate that Cartwright
imposed any promise of secrecy on Hewlett, although
Hewlett might be regarded as in some sense a competi-
tor. Hewlett experimented with the information he had
7a
(Footnote continued from preceding page)
were very much harder where they had been heated, especially
the cryolite. At 400°C, the hardness of the films was remarkable
» and when they were waterproofed the cryolite seemed almost as
hard as the magnesium fluoride and it was somewhat more trans-
parent. I have been intending to heat the eye-glass lenses that
were obtained from the American Optical Company by radiation
while magnesium fluoride and cryolite was being evaporated.
Dr. Hewlett said he had heated glass in vacuum by radiation
during the evaporation and I do not know if we could obtain
protection. My idea is to have the holder for the glass of polished
metal chromium plated, have a filament heater back of the glass
and surround all this with a polished metal shield. Glasses ab-
sorb radiation longer than 3u and polished metal reflects radia-
tion beyond 3u very well, * * *
9. * * * I have made the equipment for heating the giass by
radiation while the glass was being treated. The results were
most pleasing and, if it is not too late, it would be worth while
getting protection on the method. I have used this method
for depositing cryolite, chiolite, magnesium fluoride and potas-
sium fluorosilicate. * * * This looks like the logical way to treat
photographic lenses during their manufacture as well as eye
glasses.
8a
got, and made a number of coatings in the summer of
1940, but finally decided to abandon the process, because
he concluded that those coatings deposited on heated
glass scratched more easily than those on unheated.
Since his user was not only experimental, but in addi-
tion was abandoned, we disregard it under § 102 (g);
as we also do the work of one, Begg, an employee of
the Eastman Kodak Company, which that company at-
tempted to resuscitate later and to use as an anticipa-
tion of Lyon. But Cartwright’s activities we may not
so summarily dispose of, and to them we turn.
By the fall of 1939 he had already found that his work
on non-reflective coatings took up so much of his time
that he employed a student named Clark to help him,
and Clark kept with [Volume IIT 313a] him until May,
1940. Before he left, Cartwright had enjoined upon him
the strictest secrecy which Clark observed, not only
while he was in Cartwright’s employ, but, also, after he
was employed by another company, the National Research
Corporation. Cartwright himself continued to work for
the Institute until August, 1940, when he went into the
employ of the Navy for that month, during which, al-
though he was engaged in making non-reflecting lenses,
he did not use the patented process; nor does he appear
to have told anyone about it. He gave as his reason for
not using it that he had no apparatus that would pro-
duce a high enough vacuum. On the other hand, already
while he was at the Institute, he made and sold coated
lenses, as a private venture; and, after he left the Navy
and went into the service of the Corning Glass Works
at Corning, New York, he again took up the same busi-
ness with the help of his wife. It resulted in a sub-
stantial income, at times amounting to $3,000 a year,
and many, though not all, of the lenses were coated while
hot.
Were these activities either a “‘public use’”’ or “‘sale’’
under § 102 (b), or was Cartwright a prior inventor under
9a
§102 (g)? True, the fact that the process could not be
deduced from the lenses sold would not alone prevent
their sale from being a ‘‘public use.’’* It is indeed diffi-
cult to see why this should be so, for such sales could
not in fact enlighten the art, especially in the case of a
process, which the product does not [Volume III 31l4a]
ordinarily disclose, unlike a machine which may disclose
its concealed mechanism, if it be dismantled. The law
does not however appear to have made any such dis-
tinction. However, although such a product will be a
“public use,’’ it will be so only on condition that it is
neither experimental, secret, nor abandoned; and we
think that Cartwright abandoned his discovery as soon as
it emerged from the stage of experiment. We do not rely
upon the secrecy that he enjoined upon Clark except in
so far as it goes to confirm the continued lack of finality
of his activities. His disclosure to Hewlett is hardly
consistent with unqualified secrecy, although it too is not
inconsistent with the continued tentative character of what
he was doing. But we agree with what Judge Burke said
in his opinion. ‘‘Whatever experiments he had con-
ducted * * * and whatever occasional use he had made of it
in his commercial work had convinced him that it was
inferior in results to his own patented post-baking method,
and that the results obtained were not worth the effort,
and did not warrant bringing it to light in the art. * * *
His testimony at the trial leaves no doubt about the
fact that he is still uncertain one ‘could not get as hard
a film if you left out the actual heating in the vacuum.’ ”’
The defendant replies that it is not necessary that a third
party who puts the invention in ‘‘public use or sale’? must
understand the value and importance of his discovery.
That is indeed true; a man may conceive a process, put
* Hall v. Macneale, 107 U. S. 90, 97.
Brush v. Condit, 132 U. S. 39, 48, 49.
Electric Storage Battery Co. v. Shimadzu, 307 U. S. 5, 20.
10a
it in ‘“‘tangible form,’’ test it out and fail to exploit
[Volume IIT 315a] it, because he does not see how valu-
able it is. That was not, however, all that Cartwright
did. He did indeed test it out to his satisfaction; and
when he had done so, he concluded it would not do what
he was after. It did not produce a more ‘‘rugged’’ film
and he gave it up. It was in effect an abandonment; it
did more than fail to advance the art; it put the proe-
ess among those efforts that are proved useless. All
the reasons that have made the courts refuse to treat
experimental users as anticipations,* apply even more
convincingly; it is not alone that such activities are not
evidence of anticipation, they are evidence against. We
0 not forget that in Corona Cord Tire Co. v. Dovan
Chemical Corp., 276 U. S. 358, 383, the Supreme Court
said of a process that it is ‘‘reduced to practice when
it is successfully performed’’; but it should be noted
that the Court also declared that ‘the tests of Kratz’’
were not “abandoned laboratory experiments.’’ We con-
clude therefore with Judge Burke that Cartwright neither
put the process to ‘‘public use,’? nor was he its prior
inventor.
Therefore we at length come to the question whether
Lyon’s contribution, his added step, was enough to sup-
port a patent. It certainly would have done so twenty
or thirty years ago; indeed it conforms to the accepted
standards of that time. The most competent workers
in the field had for at least ten years been seeking a
hardy, tenacious coating [Volume TIT 316a] to prevent
reflection; there had been a number of attempts, none
satisfactory; meanwhile nothing in the implementary arts
had been lacking to put the advance into operation; when
it appeared, it supplanted the existing practice and oc-
cupied substantially the whole field. We do not see
* The Corn Planter Patent, 23 Wall. 181, 210, 211.
Electric Storage Battery Co. v. Shimadzu, supra (307 U. S. 3).
lla
how any combination of evidence could more completely
demonstrate that, simple as it was, the change had not
been ‘‘obvious * * * to a person having ordinary skill
in the art’’—§ 103. On the other hand it must be owned
that, had the case come up for decision within twenty,
or perhaps, twenty-five years before the Act of 1952
went into effect on January 1, 1953, it is almost certain
that the claims would have been held invalid. The Courts
of Appeal have very generally found in the recent opin-
ions of the Supreme Court a disposition to insist upon a
stricter test of invention than it used to apply—indefinite
it is true, but indubitably stricter than that defined in
§103.* Indeed, some of the justices themselves have taken
the same view. ** The Act [Volume III 317a] describes
itself as a codification of existing law, as it certainly is
in the sense that the structure of the system remains
unchanged. Moreover those decisions that have passed
upon it have uniformly referred to it as a codification,
Ferg v. Yankee Maid Dress Corp., 77 Fed (2) 274, 276
(C. C. A. 2).
Cleveland Trust Co. v. Srareiber-Schroth Co., 108 Fed (2) 109,
112 (C. C. A. 6).
Picard v. United Aircreft Corp., 128 Fed (2) 632, 636 (C. C. A.
2)
United States Gypsum Co. v. Consolidated Expanded Metal
Co., 130 Fed (2) 889, 892 (C. C. A. 6).
Trabon Engineering Corp. v. Dirkes, 136 Fed (2) 24, 27
(C. C. A. 6).
Cleveland Punch & Shear Works Co. v. E. W. Bliss Co., 145
Fed (2) 991, 999 (C.C. A. 6).
Frank Adam Electric Co. v. Colt’s Pzient Fire Arms Mfg. Co.,
148 Fed (2) 497, 502 (C. C. A. 8).
Browne & Sharpe Mfg. Co. v. Kar Engineering Co., 154 Fed
(2) 48, 52 (C.C. A. 1).
Foxboro Co. v. Taylor Instrument Co., 157 Fed (2) 226, 234
(C. C. A. 2).
oe v. Bernard Edward Co., 175 Fed (2) 427, 429
CA. eh
¢ Alembe Co. v. Jiffy Lubricator Co., 176 Fed (2) 444, 448,
449 (C. A. 8).
** Jungersen v. Ostby & Barton Co., 335 U. S. 560, 568-572.
12a
although so far as we have found none of them has held
that §103 did not change the standard of invention.* And
so the question arises whether we should construe $103
as restoring the law to what it was when the Court an-
nounced the definition of invention, now expressly em-
bodied in $103, or whether we should assume that no
change whatever was intended. To decide that question
it seems desirable to look briefly backward.
From 1793, when the second patent act was passed, **
until the Act of 1952, the enly statutory standard for
invention was that the discovery should be ‘‘new and
useful’’; and indeed the Act of 1952 itself repeats this
Same test in $101. Congress did not try to define it but
left it to the courts to develop by precedent. So far as
we can find, it was not until 1850 that the Supreme Court
made any such attempt; so that, although the disclosure
must be ‘‘new,’’ it was so, provided it had not been pub-
lished or in public use and was original. However, in
Hotchkiss v. Greenwood, 11 How. 248, the Court imposed
an authoritative gloss upon the word, which it put in
the following words (p. 267): ‘‘unless more ingenuity and
skill [Volume III 318a] in applying the old method,’’ were
necessary ‘‘than were possessed by an ordinary mechanic
acquainted with the business, there was an absence of
that degree of skill and ingenuity which constitutes es-
* Stanley Works v. Rockwell Mfg. Co., 203 Fed (2) 846 (C. A.
3)
General Motors Corp. v. Estate Stove Co., 203 Fed (2) 912
C. A. 6).
Posie Contact Laboratories v. Solex Laboratories, 209 Fed
(2) 529 (C. A. 9).
Interstate Rubber Products Corp. v. Radiator S pecialty Co.,
214 Fed (2) 546 (C. A. 4).
Vincent v. Suni-Citrus Products Co., 215 Fed (2) 305 (C. A.
"Wasserman v. Burgess & Blacher Co., 217 Fed (2) 402 (C. A.
1).
** 1 Statutes at Large 318.
13a
sential elements of every invention. In othez words, the
improvement is the work of a skillful mechanic, not that
of the inventor.’’ The instruction to the jury, the ex-
ception to which the court overruled, had been in sub-
stantially the same words, p. 253: if ‘‘no other ingenuity
or skill’ be ‘‘necessary to construct the knob than that
of an ordinary mechanic acquainted with the business,
the patent is void.’’ Thereafter this became the standard
rubric and was applied in many cases. The variants were
numberless; and ‘‘invention’’ became perhaps the most
baffling concept in the whole catalogue of judicial efforts
to provide postulates for indefinitely varying occasions.
However, the Court never formally abjured it; nor has
it ever substituted any other definite test. Even Cuno
Engineering Corp. v. Automatic Devices Corporation, 314
U. S. 84—which in expression probably was the furthest
departure—recognized the continued authority of Hotch-
kiss v. Greenwood, supra (p. 90): ‘‘if an improvement is
to obtain the privileged position of a patent more ingenuity
must be involved than the work of a mechanic skilled in
the art.’’ Again, page 91: ‘‘The principle of the Hotchkiss
case applies to the adaptation or combination of old or
well known devices for new uses.”’
We assume that the usual presumption against retro-
activity would have applied to § 103, had the purpose not
been so explicit to make the Act retroactive; but § 4(a)
leaves no possibility of doubt as to that: It is to ‘fapply
to unexpired patents granted [Volume III 319a] prior to
such date’’ January 1, 1953 ‘‘except as otherwise pro-
vided’’; and all that was ‘‘otherwise provided’’ was in
§ 4(e): ‘‘Nothing contained in Title 35, as enacted by sec-
tion 1 hereof, shall operate to nullify any judicial finding
prior to the effective date of this Act on the validity of
any patent by a court of competent jurisdiction.’ This
* United Mattress Machinery Co. v. Handy Button Machine Co.,
207 Fed. (2) 1 (C. A. 3).
l4a
interpretation is, moreover, confirmed by the report of the
House as to § 103, which we quote in the margin.* There-
fore, we can see no escape from accepting the text as it
reads, except as ‘‘at a later time * * * some criteria * * *
may be worked out.’’ It only remains to ask whether,
if the change is to apply retroactively, the Act is pro tanto
unconstitutional. Arguendo we will accept it as possible
that the decisions of courts may give such an absolute-
ness to the words of a statute as to make a deliberate sub-
stitution of another locution the same as though the prec-
cedents had been incorporated verbatim into the statute;
that, if that were true in the case at bar, the Act would in
effect grant new monopoly; and, finally, that the grant of
a new monopoly restrospectively would be invalid.** We
may accept that hypothesis because the facts [Volume IIT
320a] do not fulfill the premises. In the first place § 103
only restores the original gloss, substantially in ipsissimis
verbis; which has never been overruled; but on the con-
trary for seventy or eighty years had continued to be re-
garded as authoritative. Moreover—and this is the im-
portant consideration—although it may have ceased in
practice to be followed, and had come to enjoy no more
than lip service, there never has been the slightest intima-
tion of any definite substitute; nothing more than an un-
*There is no provision corresponding to the first sentence
explicitly stated in the present statutes, but the refusal of pat-
ents by the Patent Office, and the holding of patents invalid by
the courts, on the ground of lack of invention or lack of patentable
novelty has been followed since at least as early as 1850. This
paragraph is added with the view that an explicit statement in the
Statute may have some Stabilizing effect, and also to serve as a
basis for the addition at a later time of some criteria which may
be worked out.
The second sentence states that patentability as to this require-
ment is not to be negatived by the manner in which the invention
was made, that is, it is immaterial whether it resulted from long
toil and experimentation or from a flash of genius. ene i
** cf. Great Northern Railway v. Sunburst Oil & Refining Co.,
287 U. S. 358.
15a
expressed and unacknowledged misgiving about the in-
creased facility with which patents were being granted.
Such judicial attitudes are indeed the stuff of which much
of the law is made; but we cannot agree that, however con-
trolling upon the lower courts, they are a warrant for that
solid assurance, the disappointment of which will make
a statute invalid. Courts again and again shift their posi-
tion; and, although they are apt to do so under cover of
nice distinctions, they impose the risk of anticipating the
changes upon those who may have acted upon the faith of
the original. Certainly a legislature, whose will the courts
have undertaken to proliferate, must be free to reinstate
the court’s initial interpretation, even though it may
have been obscured by a series of later comments whose
upshot is at best hazy.
Finally, we cannot agree that this retroactivity should
be limited to a recognition of the patent only in the future:
That is, that, although the patentee may enjoin its infringe-
ment after January 1, 1953, he may not recover damares
for any earlier infringement or collect any profits of the
infringer. As a matter of construction § 4(e) seems to us
conclusive; it preserves any [Volume III 32la] ‘‘finding”’
of a court before January 1, 1953; but leaves the court
free thereafter to apply the Act as though it had existed
when the unexpired patent issued. Were we to deny the
patentee the usual remedies, an anomalous situation would
arise ; for it would follow that, although an infringer would
not be liable, quoad the recovery of damages or profits, for
taking his chances in disregarding the patent, he would
nevertheless have no protection for any investment or other
industrial expense that he might have made before the
date when the Act took effect. We should either accept
as an adequate protection such assurance as infringers
might have drawn from the earlier precedents, or we should
find them as we do, too amorphous for that purpose. Be-
lieving that they will not serve, we hold that the patent
should be regarded as valid ab initic for all purposes.
léa
There remains only one other point of encugh im-
portance to demand discussion: i. e. whether what Lyon
had done before November 17, 1941,—a year before his
filing date—forfeited his right to a patent under § 102 (b)
of the Act: that is, [Volume III 322a] whether he had put
it in ‘‘public use or on sale in this country more than one
year prior to the date of application.’’ Lyon began to
work for the Naval Research Laboratory in January, 1941,
trying to find an effective coating. By the middle of J une,
1941, he was assured that he ‘‘had consistent results as far
as hardness and adherence of the film was concerned.’’ He
*‘appeared to be on the right track’’; but much testing had
still to be done. Nevertheless, ‘‘by the first of July’’ he
“‘was reasonably certain that’? he ‘was getting a hard
durable film * * * remarkably consistent in the results.’’
“Many, many tests were made,’’ which, however, by Sep-
tember, 1941 had convinced him ‘“‘that we were in a posi-
tion to try this thing out on some actual simple instru-
ments.’’ There were a number of old binoculars, which
were given to him to coat and it was arranged that these
should be introduced surreptitiously, so that the users
would not know which had been coated by the new process
and which had not. From binoculars he went to other in-
struments, so that by October first the “Optical Shop of
the Naval Gun Factory’’ had ‘‘completed certain experi-
mental work,’’ and ‘‘estimated that $10,000’? was ‘‘required
to provide for equipment and further research.’’ The
“‘experimental work’’ had “developed to such a stage as
to place the product in production.’’ The officer in charge
concluded the letter from which we quote by requesting
that the Bureau of Ordinance should approve a ‘‘project’’
for $20,000 both for ‘‘production equipment in the shop”’
and for five units for ‘‘repair activities afloat.’’ Such an
approval was issued on October 30; but it is to the last
degree unlikely that any production should have taken
place within three weeks, that was not part of the ‘‘further
research’’ deemed necessary on October Ist. [Volume III
17a
323a] At any rate it is clear that the defendant, which had
the burden, did not prove its defence. Its theory is that,
if with Lyon’s consent the Navy exploited the process, it
was the same as though he had done so himself; indeed in
the end the Navy’s exploitation would be far more profit-
able to him than any sales that he could personally make.
It is not necessary to pass upon the legal validity of that
interpretation of § 102 (b), because, though we should ac-
cept it arguendo, it was not proved, as we have just said.
We agree with Judge Burke’s searching and comprehen-
sive analysis, and the judgment will be affirmed.
Judgment affirmed.
[Volurae ITT 3240)
UNITED STATES COURT OF APPEALS
For THE Seconp Ciovuir.
At a Stated Term of the United States Court ot
Appeals, in and for the Second Circuit, held
at the United States Courthouse in the City
of New York, on the 20th day of June one
thousand nine hundred and fifty-five.
Present:
Hon. Learned Hand,
Hon. Thomas W. Swan,
Hon. Carroll C. Hincks,
Circuit Judges.
»
¥
Dean A. Lyon,
Plaintiff-Appellee,
Vv.
Bavuscu & Los Optican Co.,
Defendant-Appellant.
A
i
Appeal from the United States District Court for the
Western District of New York.
This cause came on to be heard on the transcript of
record from the United States District Court for the West-
ern District of New York, and was argued by counsel.
On Consmerration Wuereor, it is now hereby ordered,
adjuc>od, and decreed that the judgment of said District
Court be and it hereby is affirmed.
/s/ A. DANIEL FUSARO
Clerk
[Volume III 360a]
UNITED STATES COURT OF APPEALS
For tue Seconp Circuir
No. 216 October Term, 1954.
Petition filed July 11, 1955 Decided July 29, 1955
Docket No. 23345
..
vv
Dean A. Lyon,
Plaintiff-Appellee,
Vv.
Bauscu & Loms Opricat Co.,
Defendant-Appellant.
a.
» 4
Before: Hanp, Swan and Hincxs, Circuit Judges.
On petition by the defendant-appellant for a rehearing
upon the decision of this court on June 20, 1955, affirming
a judgment of the District Court for the Western Dis-
trict of New York holding valid and infringed claims 1,
2, 3, 4, 5, 8 and 9 of Patent No. 2,398,382.
Edward H. Cumpston, for the Petitioner.
20a
Per Curiam:
The petition for rehearing is denied except as to the
point raised by the first two sentences of Point IV, sub-
division 1, thereof. As to the point thus excepted from
denial further consideration brings us to the conclusion
that the patent specifications fail adequately to support
claims 1, 2, 4 and 5 which describe the coating claimed
therein in terms so broad as to include materials which,
so far as the proofs [Volume III 361a] show, produce
optical surfaces which are not light-transmitting surfaces.
We hold, therefore, that, without disturbing our af-
firmance as to claims 3, 8 and 9, the decree below must
be reversed as to claims 1, 2, 4 and 5 for lack of adequate
disclosure. With leave, however, to the plaintiff, if so
advised, to file a petition for rehearing addressed to the
holding above stated, containing any pertinent argument
not covered in his earlier briefs.
2la
[Volume III 362a]
UNITED STATES COURT OF APPEALS
Seconp Circuir
At a Stated Term of the United States Court of
Appeals in and for the Second Circuit, held
at the United States Court House, in the City
of New York, on the 29th day of July, one
thousand nine hundred and fifty-five.
Present:
Hon. Learned Hand,
Hon. Thomas W. Swan,
Hon. Carroll C. Hincks,
Cireuit Judges.
»S
w
Dean A. Lyon,
Plaintiff-Appellee,
v.
Bauscu & Loms Opticat Co.,
Defendant-Appellant.
Ae
vr
A petition for a rehearing having been filed herein by
counsel for the appellant,
Upon consideration thereof, it is
Ordered that said petition be and hereby is denied ex-
cept as to the point raised by the first two sentences of
Point IV, subdivision 1, thereof.
Further ordered that the previous affirmance of the
judgment below as to claims 3, 8 and ¥ be and it hereby
is confirmed but that as to claims 1, 2, 4, and 5 the judg-
ment below be and it hereby is reversed for lack of
adequate disclosure with leave to the appellee, if so ad-
vised, to file a petition for rehearing limited in accord-
ance with the opinion of this Court.
/s/ A. DANIEL FUSARO
Clerk
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