The first case in the US Supreme Court that addressed the concept of non-obviousness as a patentability requirement was Hotchkiss vs. Greenwood, which took place in 1850. Hotchkiss was suing the defendant Greenwood for infringing a patent for new doorknobs that utilized clay as opposed to metal, which was the norm at the time. During the trial, the judge gave a groundbreaking instruction to the jury, which was to invalidate the patent if the only difference between the Hotchkiss doorknobs and the normal ones was the material. If all other components were the same, the jury was instructed to rule against the plaintiff. Because the patent was invalidated, the trial was not further continued.
Although a case of this simplicity is unlikely nowadays, this case shows the historical roots for this requirement, which is now the basis for many patent lawsuits and revoked patents. Although the judge perhaps went too far by essentially telling the jury how to rule in this case, I believe that the judge really affected the course of patent history in a positive way. This case set the precedent that patents will not be approved if there is an obvious lack of ingenuity and has too much obviousness.
Below is an actual excerpt from the approved patent:
"A new and useful improvement in making door and other knobs of all kinds of clay used in pottery, and of porcelain by having the cavity in which the screw or shank is inserted by which they are fastened largest at the bottom of its depth, in form of a dovetail, and a screw formed therein by pouring in metal in a fused state."
(Information obtained from http://supreme.justia.com/cases/federal/us/52/248/)
Although a case of this simplicity is unlikely nowadays, this case shows the historical roots for this requirement, which is now the basis for many patent lawsuits and revoked patents. Although the judge perhaps went too far by essentially telling the jury how to rule in this case, I believe that the judge really affected the course of patent history in a positive way. This case set the precedent that patents will not be approved if there is an obvious lack of ingenuity and has too much obviousness.
Below is an actual excerpt from the approved patent:
"A new and useful improvement in making door and other knobs of all kinds of clay used in pottery, and of porcelain by having the cavity in which the screw or shank is inserted by which they are fastened largest at the bottom of its depth, in form of a dovetail, and a screw formed therein by pouring in metal in a fused state."
(Information obtained from http://supreme.justia.com/cases/federal/us/52/248/)
It is certainly nice to read up about how the cases were handled in the past. I agree that the judge may have went too far at that time, making it seem like he is making the judgement himself.
ReplyDeleteAnyway, it seems slightly strange that the obviousness ruling only came in 1850 since patents had been around for centuries. I thought about it and I feel it could be as a result of industrial revolution which introduced fast mass production, as well as variance of materials. Prior to that, every product may be tied to specific materials and difficult to replicate with another and thus not having any issue with obviousness.
It's pretty incredible to understand how litigation on obviousness began and how the Supreme Court began to develop its long and twisted relationship with the notion of patent novelty. This case, having to do with materials, is an extremely fitting one to set the first precedent on patent rulings, since it was simple and had to do with a clear difference between skill and innovation vs material differences.
ReplyDeleteIt's quite strange the the judge actually intervened in the decision making process to inform the jury, but it makes sense, since there had been no previous rulings to look to on the issue of obviousness. I agree with the judge's decision to place value on ingenuity over material difference.