While these figures would seem to support the view that the Supreme Court has been evolving a more stringent test of patentability," it has been argued that actually there has been no change in judicial attitude and that only the most doubtful patents have come before the courts." Although this position is prob ably somewhat unrealistic," it has merit at least insofar as it recognizes that no accurate conclusions can be drawn by a mere counting of noses.

15

The principal obstacle to ascertaining the judicial standards employed in these cases inheres in the very nature of the problem. Any attempt to formulate a single precise definition of invention to be applied indiscriminately to an amorphous mass of unrelated articles, processes, and improvements must inevitably fail. Thus so-called objective tests are often merely meaningless shibboleths, "rationalization tools used to decorate a decision already made." At best, they can be of aid to judges only to the extent that they systematize what has previously been considered evidence of invention, and even then operate not as affirmative rules but only as a means of classifying those characteristics which negative invention." Nor is it helpful to use such phrases as "flash of creative genius" 16 in describing the requisites of patentability. At most these expressions indicate a "get tough" policy toward the issuance of patents. What must be decided in each case is whether the advance made in the art by the process or article in issue required more than the exercise of the ordinary mechanical skill of a hypothetical person equipped with all the knowledge of the particular art at that particular time." But of what is the "routineer" capable? In answering this the judge has no recourse but to call upon his good sense and experience to make a judgment which is of necessity largely subjective. I fthere has been some significant change in the standard of invention, it must be a change in the attitude of the court concerning the patent and the implications of the patent grant. The primary factor contributing to the apparent hostility toward the patent exhibited by the present Supreme Court is an increasing awareness of the implications of its monopolistic character and its potentiality for abuse. In an economic system dedicated to free and unrestricted competition. it has seemed strangely inconsistent for the Federal Government to grant to one competitor a legally protected monopoly.19 Consequently it is felt that only a substantial contribution to the existent technology can merit such a departure from basic principle.20 This concern about the monopolistic proclivities of a too lenient patent policy would appear to be fully justified in view of the use in certain industries of myriads of improvement patents to maintain a preferential position originally secured by the basic invention."1

18

V. General Electric Co., 283 U. S. 664 (1931); Carbice Corp. of America v. American Patents Development Corp., 283 U. S. 420 (1931) (rehearing on the issue of patentability); Smith V. Springdale Amusement Park, Ltd., 283 U S. 121 (1931); Smith v. Magic City Kennel Club, Inc., 282 U. S. 784 (1931); Saranac Automatic Machine Corp. v. Wirebounds Co., 282 U. S. 704 (1931); Powers-Kennedy Contracting Corp. v. Concrete Mixing & Conveying Co., 282 U. S. 175 (1930). As in note 4 supra, this list does not include related cases involving the same patent and deciding nothing new.

11 See note 3 supra.

12 Allyn, Supreme Court Patent Cases-1875 to 1881-vs. 1935 to 1941, 25 J. Pat. Off. Soc'y 27, 40, 49 (1943); Allyn, Patentable Yardsticks, 25 J. Pat. Off. Soc'y 791, 811 (1943). 13 See text p. 688 infra.

14 Stringham, Outline of Patent Law 222 (1937).

15 Stedman, Patents 88-89 (1939); 1 Walker, Patents § 25 (Deller's ed. 1937).

10 See Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84, 91 (1941) ("... the new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling"). This expression seemed to indicate that the court would take into account the quality of the inventor's mind rather than the quality of his product. If such an interpretation were intended, it has since been repudiated. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U. S. 327, 331 (1945).

17 See, e. g., Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U. S. 464, 473 (1935); Electric Cable Joint Co. v. Brooklyn Edison Co., 292 U. S. 69, 79-80 (1934): DeForest Radio Co. v. General Electric Co., 283 U. S. 664, 685 (1931); Saranac Automatic Machine Corp. v. Wirebounds Co., 282 U. S. 704, 713 (1931); 1 Walker, Patents § 23 (Deller's ed. 1937).

18 See Kirsch Mfg. Co. v. Gould Mersereau Co., 6 F. 2d 793, 794 (2d Cir. 1925); Stedman Invention and Public Policy, 12 Law & Contemp. Prob. 649, 665 (1947).

19 See Smith, Recent Developments in Patent Law, 44 Mich. L. Rev. 899, 900 (1946). 20 See Mr. Justice Murphy in Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324 U. S. 320, 328 (1945) ("Patent monopolies, with all their significant economie and social consequences, are not reserved for those who contribute so insubstantially to that fund of public knowledge").

21 This is illustrated by the situation in the glassware industry as revealed by the Temporary National Economic Committee. The Committee showed how in this industry a single company or tightly knit group of companies could utilize the patent to obtain a stranglehold on the field. By threats of costly infringement suits, the dominant company was able to buy out most of its weaker competitors and create a network of cross-licensing agreements with its stronger competitors who had valid patents of their own. By means of this patent pool the various companies split up the industry among themselves and admitted no other concerns unless they agreed to observe certain conditions. Hartford-Empire Co. v. United States, 323 U. S. 386 (1945) passim; Hamilton, Patents and Free Enterprise 109 et seq. (TNEC Monograph 31, 1941).

22

Furthermore, the Court has felt that patentees too often are not content with the narrow monopoly granted by law, and that the initial competitive advantage afforded by the exclusive right provides a tempting lever to exact additional tribute or stifle competition." One manifestation of this attitude is the severe sanction imposed on those who would extend their patent monopoly to unpatented articles by utilizing tying restrictions, for where a patentee engages in this conduct the courts will deny him any redress for either a direct or contributory" infringement of his patent rights. Similarly, the Court has refused to countenance the extension of the monopoly by the procurement of a patent on the basis of vague and indefinite claims which obfuscate the distinction between the legitimate claim and the public domain as represented by the prior art.2

23

25

The recognition of a strong public interest in the results of patent litigation has led the Supreme Court to modify previously accepted procedural rules, thereby enabling it to take a more active role as overseer of the patent system. Thus the Court has refused to allow the rule of res judicata, which is essentially a policy judgment, to override what it considers the paramount public interest in the correct determination of infringement suits.20 In addition it has held that a licensee is not estopped from contesting the validity of the patent under which he was licensed," and, even more striking, an assignor, when sued for infringement by his assignee, has been permitted to challenge the very patent which he himself had originally obtained." To hear many of these cases the Court has evinced an increasing liberality in granting certiorari where there has been no conflict between circuit courts." Finally, there are indications of an unwillingness on the part of a minority of the Court to accord much weight in this area to concurrent findings of the courts below.30 If adopted, this attitude would allow the issue of patentability always to be resolved in accordance with the dictates of policy as formulated by the Supreme Court.31

It is not difficult to understand the Court's aversion to the perpetuation of monopoly by the patenting of "every shadow of a shade of an idea," " and it would be unrealistic to minimize the importance of such considerations in determining whether the "standards" of invention have been met. Nevertheless, there may be other relevant factors which have not been accorded adequate weight.

33

9 34

This possibility is suggested by the recent case of Jungersen v. Ostby & Barton Co., which, though not entailing serious consequences for a key industry of vital public concern, could be said to raise "basic issues concerning the judiciary's role in the patent system." It was there held, three justices dissenting, that a "method of casting articles of intricate design," enjoying immediate commercial success and replacing two existent methods of jewelry casting, was fully disclosed by the prior art and thus did not constitute patentable invention. Its adoption by the industry was attributed to alertness in exploitation and the necessity of

22 See Mr. Justice Douglas, concurring in United States v. Line Material Co., 333 U. S. 287, 316 (1948).

28 Morton Salt Co. v. G. S. Suppiger, 314 U. S. 488 (1942).

24 Mercoid Corp. v. Mid-Continent Investment Co., 320 U. S. 661 (1944); Carbice Corp. of America v. American Patents Development Corp., 283 U. S. 27 (1931). See Wood, The Tangle of Mercoid Case Implications, 13 Geo. Wash. L. Rev. 61 (1944).

25 Schriber-Schroth Co. v. Cleveland Trust Co., 305 U. S. 47 (1938); General Electric Co. v. Wabash Alliance Corp., 304 U. S. 364 (1938); see Mr. Justice Black, dissenting in Williams Mfg. Co. v. United Shoe Machinery Corp., 316 U. S. 364, 381 (1942) ("Distinct separation of the new would afford guidance to those who wished to use the old when the exclusive rights to it expired. On the other hand, blurring the line of separation places anyone who attempts to use any part of the amalgam in jeopardy of burdensome infringement suits. Where the patent owner has ample resources to bear the costs of repeated litigation, the power of the infringement suit to stifle competition is increased. And where potential competitors are weak and few, it may afford a practically complete protection for the preservation of undeserved monopoly"). 26 Mercoid Corp. v. Mid-Continent Investment Co., 320 U. S. 661 (1944).

MacGregor v. Westinghouse Electric & Mfg. Co., 329 U. S. 402 (1947); Edward Katzinger Co. v. Chicago Metallic Mfg. Co., 329 U. S. 394 (1947); Sola Electric Co. v. Jefferson Electric Co., 317 U. S. 173 (1942).

Scott Paper Co. v. Marcalus Mfg. Co., 326 U. S. 249 (1945).

E. g., Graver Tank & Mfg. Co. v. Linde Air Products. Co., 69 Sup. Ct. 535 (1949); See Smith, Recent Developments in Patent Law, 44 Mich. L. Rev. 899. 911 (1946). 30 See Graver Tank & Mfg. Co. v. Linde Air Products Co., 69 Sup. Ct. 535, 540 (1949) (Justices Black and Douglas concurring): Williams Mfg. Co. v. United Shoe Machinery Corp., 316 U. S. 364, 392 (1942) (Justices Black and Douglas dissenting).

The contrary position takes advantage of the wider patent experience of the judges below. See Evans, Disposition of Patent Cases by the Courts, 24 J. Pat. Off. Soc'y 19, 24 (1942).

32 Atlantic Works v. Brady, 107 U. S. 192, 200 (1882).

69 Sup. Ct. 269 (1949).

24 Id., at 273.

Id. at 269.

supplying an increased popular demand for inexpensive jewelry, rather than to the novelty of the process.

The objection of the minority was that if the sixteenth century writings of Benvenuto Cellini, claimed to be the basic element of the prior art, were so revealing to the "laymen of the appellate bench, it is hard to see why this practical-minded industry failed through all the years to get his message." 36 In short, doubts were raised as to whether, when tested by the retrospective eye of the Court, any patents would be upheld except such like the "project for extracting sunbeams out of cucumbers * * * to be put into phials hermetically sealed, and let out to warm the air in raw inclement summers,' "37 contrivances with no legitimate ancestry.

Should not the Court be wary of a line of reasoning which, 20 years after the event, reduces a momentous advance to the most obvious of natural developments? Since invention is characteristically but an unusual step in an otherwise relatively orderly progression in the art, the "culmination at a particular moment of an antecedent process,' ,"38 undoubtedly sooner or later the step would be taken by someone. If it is long delayed, that fact is clearly evidence of invention. But is delay always necessary? Once the basic premise is accepted that patents can be of utility in promoting the arts and sciences," should not the privilege be granted to one who saves society a few years of development?" Furthermore, it may be argued that the patent is not only intended to provide incentive to the pioneer who probably would invent in the absence of a patent system to stimulate his efforts but should also encourage one whose contribution is beyond the skill of the “routineer” but perhaps falls short of genius.“

44

More important, is a strict monopoly-minded attitude toward patentability truly a protection of the "public interest"? Assertions, which can neither be verified nor disproved, have been made that the patent is the foundation stone of this country's great economic advances," that the public disclosure necessary to a patent grant provides suggestions for further exploration" and that the stimulus for "inventing around" patents provides a source of constant economic progress.* Were the inventive achievements of individuals and industrial concerns afforded no legal protection, they might never be divulged." and in many situations the patent would be replaced by the trade secret. Moreover, it has been suggested that the granting of a patent often acts as an outlet for the publication of new ideas that would not otherwise be available." Were his outlet removed or severely restricted, an inventor wishing to disclose his development probably would have to do so through a scientific journal or other publication, subject to the opinions and prejudices of those in charge of editorial policy at the time. Valuable inventions might be rejected as worthless."

36 Id. at 274 (Mr. Justice Jackson dissenting).

37 Swift, Gulliver's Travels: Voyage to Laputa 135 (Everyman 1902).

38 Mr. Justice Frankfurter, dissenting in Marconi Wireless Telegraph Co. v. United States, 320 U. S. 1, 62 (1943); see Dodds and Crotty, The New Doctrinal Trend, 30 J. Pat. Off. Soc'y 83 (1948).

39 U. S. Const. Art. I, § 8. For a general discussion of its utility in promoting the arts and sciences, see Bennett, The American Patent System 32, 43, 62-63 (1943) and Folk, Patents and Industrial Progress 13-14 (1942). But see Mr. Justice Frankfurter, dissenting in Marconi Wireless Telegraph Co. v. United States, 320 U. S. 1, 63 (1943), discussing the possibility that the whole patent system may be outmoded.

40 See Englehart, Confusion, Unlimited, 34 Geo. L. J. 302, 304 (1946).

41 See Dewey & Almy Chemical Co. v. Mimex Co., 124 F. 2d 986, 990 (2d Cir. 1942). 42 See Mr. Justice Burton, dissenting in United States v. Line Material Co., 333 U. S. 287, 328-41 (1948); Hearings before the Senate Temporary National Economic Committee, 76th Cong., 1st Sess. 841 (1939) (Statement of Conway P. Coe, Commissioner of Patents); Bennett, The American Patent System 249 (1943); Toulmin, Patents and the Public Interest 8 (1939) Letter of President Roosevelt to the Chairman of the Senate Committee on Patents, 17 April 1942: "Patents are the key to our technology; technology is the key to production. 43 Stedman, Invention and Public Policy, 12 Law & Contemp. Prob. 649, 653 (1947). Hearings before the Senate Temporary National Economic Committee, 76th Cong., 1st Sess. 1050 (1939) (Testimony of Clarence C. Carlton, Vice President, Motor Wheel Corp., Lansing, Mich.); Stedman, Invention and Public Policy, 12 Law & Contemp. Prob. 649, 653 (1947).

45 See Folk, Patents and Industrial Progress 13-14 (1942); Toulmin, Patents and the Public Interest 16-17 (1930); Smith, Recent Developments in Patent Law, 44 Mich. L. Rev. 899, 931 (1946).

48 See McCutchen, The Social Psychology of the Patent System, 25 J. Pat. Off. Soc'y 52 (1943).

47 Note, for example, that when first patented, Bell's telephone was considered a mere impractical toy. Woodling, What's a Good Yardstick for Patentability? 26 J. Pat. Off. Soc'y 320, 322 (1944).

48

Even if it is believed that other stimuli would maintain a continuing flow of invention despite the absence of patent protection,* some such protection might still be necessary to encourage the investment of speculative capital to exploit these new improvements." Investment of this sort would not only assure to the public the benefits of worth-while improvements, but could also combat to some extent the monopoly which national policy condemns. For it is conceivable that in many cases the patent, far from tending toward monopoly, affords a company the opportunity to become established in business, where without the patent grant it could easily be eliminated by other companies not burdened with the expense of development and aided by ready-made financial and sales structures. Indeed it has been argued that large corporations would have little difficulty in retaining their dominant position were the patent system to be abolished.51

50

What should or should not be the approach of the Court in patentability cases does not admit of positive conclusions. Answers, if in truth there be answers, can be found here, as in other socio-economic problems, only after experimentation. Thus it is not here contended that it is the function of the Court to abandon its present position as guardian of the public interest by casting a myopic eye upon the various and sundry contrivances which bear the blessing of the Patent Office, nor is it urged that the Court should indulge in the rainbow chasing inherent in an endeavor to formulate a "definite standard" of invention. Indeed, if such standards were possible of achievement there would be little need of judges. What is suggested is a continuing re-examination of the nature of the "public interest" in the patent which is still here for better or for

worse.

[From the American Bar Association Journal, June 1949, vol. 35, pp. 480-483] PATENT LAW: WHY CHALLENGE THE COURT'S VIEW OF "INVENTION"?1

(By W. Houston Kenyon, Jr., of the New York bar, New York City) In a recently published paper2 entitled "Patent Law: Challenging the Court's View of 'Invention,' Drury W. Cooper, of the New York bar, points to what he calls "a serious defect in the patent law, as administered by the courts, which,” in his view, "bids fair unless corrected speedily to emasculate the entire patent system." The Supreme Court is "mistaken," Mr. Cooper declares, in ascribing an "esoteric" meaning to the word "invented" appearing in section 4886 of the Revised Statutes. He urges that it should be enough to sustain a patent, assuming compliance with statutory requirements for issue, that its subject matter is new and useful; that the Supreme Court by its decision in Hotchkiss v. Greenwood in 1850 has written into the statute an added requirement of patentability which Congress never enacted (namely, ingenuity beyond the expected skill of the calling; that in consequence the "slaughter has been terrific" since about 1932 or 1933 when the "favor" in which courts had formerly held patents turned suddenly to "distaste"; and that the 59-percent fall in the number of patents annually issued (comparing 1947 with 1933) shows that "invention is being discouraged and the progress of science and the useful arts is being arrested." As a remedy Mr. Cooper proposes that Congress "eliminate by statute the power of courts to declare patents invalid on grounds other than those of novelty and utility * * *,

48 Among other factors which have been suggested as being possible stimuli for invention are competition, the instinct of contrivance, the desire to enhance one's reputation, and intellectual inquisitiveness. Stedman, Invention and Public Policy, 12 Law & Contemp. Prob. 649, 669 (1947). See also Bennett, The American Patent System 22 et seq. (1943). "Hearings before the Senate Temporary National Economiu Committee, 76th Cong., 1st Segs. 262 (1939) (Testimony of Joseph Farley, Patent Attorney for the Ford Motor Co.); id. at 857 (1939) (Statement of Conway P. Coe; id. at 995 (Testimony of Philo T. Farnsworth, Vice President, Farnsworth Television, Inc., Philadelphia, Pa.).

Hearings before the Senate Temporary National Economic Committee, 76th Cong., 1st Sess. 916 (1939) (Statement of Dr. William D. Coolidge, Director of Research Laboratory, General Electric Co.. Schenectadv. N. Y.).

Toulmin, Patents and The Public Interest 13 (1939).

This article is a reply to an article by Drury W. Cooper which happened in the April issue of the Journal. Mr. Kenyon says that there is nothing new in the attitude toward patents of the present members of the Supreme Court, and declares that the decline in the number of patents granted since 1940 is the result of the war and of a postwar curtailment of Patent Office personnel, not the outcome of a hostile attitude toward inventions on the part of the courts.

235 A. B. A. J. 306; April 1949.

'11 How. 248.

i. e., take away the power to speculate about the degree of genius involved in the creation of any new and useful thing."

It must, with the respect owing to a senior member of the bar, be pointed out that Mr. Cooper's arguments prove too much, and that his "remedy" would be worse than the ills he describes.

If the "mistake" of the courts originated as long ago as 1850, it is, at the outset, somewhat difficult to understand why the patent slaughter did not begin till around 1932 or 1933, and harder yet to comprehend why it should have taken nearly a century to unmask so egregious an error.

Nor was the "mistake" of the Hotchkiss case merely a local aberration peculiar to the American scene. The rule announced in that case seems to have appeared in the English decisions at least as early as 1867 and was formally enacted into the British patent statute in the revision of 1932.5 It also appeared in Canadian patent law in a decision handed down in 1870 and has been adhered to ever since in that Dominion. Evidently the Hotchkiss case expresses something which runs pretty deep in the thinking of lawyers trained to the common law.

GREATEST SLAUGHTER OF PATENTS DID NOT BEGIN IN 1932

The suggestion that judicial favor toward patents turned abruptly to distaste in about 1932 or 1933 is not supported by the statistics of patent adjudication in the Supreme Court. The record, on the contrary, shows that the "slaughter" of patents in the years of that Court's greatest activity in deciding patent casesnamely, the 15 years from 1881 to 1895, inclusive-was statistically greater than in the decade ending with 1945.

A survey of all published Supreme Court patent decisions handed down in the 65 years from 1881 to 1945, both inclusive, indicates that in those years the Supreme Court adjudicated a total of 403 patents. Of these, 58, or 14 percent, were held valid and infringed, the rest invalid or not infringed. Of the entire period of 65 years, by all odds the most informative is the 15 years ending with 1895, for in those years the Supreme Court was the sole court of patent appeals for the entire country and reached the peak of its patent business. During those 15 years the Supreme Court adjudicated 289 patents, more than twice as many as have been brought before it in all the years since 1895. Of these, it sustained 38, or 13 percent. When this 15-year period is further subdivided into 5-year periods, it appears that the percentages of patents sustained were as follows: in the 5 years, 1881-85, 14 percent; in the 5 years 1886-90, 11 percent; in the 5 years 1891-95, 15 percent. Evidently there was also a "slaughter" going on in the gay nineties.

Comparison of these figures with the decade ending in 1945 indicates a recent performance which is, by a hair's breadth, more favorable to patents than it was in the good old days. In the recent decade the Supreme Court adjudicated 36 patents, sustaining 5, or 14 percent.

NOTHING NEW IN COURT'S ATTITUDE TOWARD VALIDITY OF PATENTS

Judges and lawyers of our day who think the Supreme Court is being unprecedentedly tough on patents would do well to harken to the words of Judge Putnam written in 1894

66* * * If I felt at liberty to proceed in this case * * * on my understanding of the tendency and practical effect of the decisions of the Supreme Court during the last few years which have sustained so many decrees in the circuit courts holding patents invalid * * and reversed so many in which the patents have not been held invalid * * * I could not concur in any opinion sustaining the validity of any of these patents."

*

The resemblance between Mr. Cooper's viewing with alarm in 1949 and Judge Putnam's sad reflections of 1894 suggests at least that the years 1932 or 1933 did not mark the beginning of anything new or startling in the Supreme Court's attitude toward patents.

Nor is Mr. Cooper on much better ground when, from the 59-percent fall in the number of patents issued (from 1933 to 1947), he draws the conclusion

White v. Toms, 37 L. J. Ch. 204 (1867). And cf. Horton v. Mabon, 31 L. J. C. P. 255 (1862-63).

22 & 23 Geo. V, c. 32, § 25 (2) (f).

8 Waterous v. Bishop, 20 U. C. C. P. 29 (1870).

Gamewell Fire Alarm Co. v. Municipal Signal Co. (61 Fed. 948, 952-953 (concurring opinion)).