270 U.S. 390 (1926), 107, Alexander Milburn Co. v. Davis Bournonville Co.

Docket NºNo. 107
Citation270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651
Party NameAlexander Milburn Co. v. Davis Bournonville Co.
Case DateMarch 08, 1926
CourtUnited States Supreme Court

Page 390

270 U.S. 390 (1926)

46 S.Ct. 324, 70 L.Ed. 651

Alexander Milburn Co.

v.

Davis Bournonville Co.

No. 107

United States Supreme Court

March 8, 1926

Argued January 11, 12, 1926

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE SECOND CIRCUIT

Syllabus

1. Where a patent application fully and adequately disclosed, but did not claim, the thing patented to a later applicant alleging a later date of invention, the later applicant was not the "first inventor" within Rev.Stats. § 4920. P. 399.

2. As regards "reduction to practice," a description that would bar a patent if printed in a periodical or in an issued patent is equally effective in an application. P. 401.

1 F.2d 227 reversed.

Certiorari to a decree of the circuit court of appeals which affirmed a decree of the district court (297 F. 846) enjoining an alleged infringement of plaintiff's patent.

Page 399

HOLMES, J., lead opinion

MR. JUSTICE HOLMES delivered the opinion of the Court.

This is a suit for the infringement of the plaintiff's patent for an improvement in welding and cutting apparatus alleged to have been the invention of one Whitford. The suit embraced other matters but this is the only one material here. The defence is that Whitford was not the first inventor of the thing patented, and the answer gives notice that, to prove the invalidity of the patent, evidence will be offered that one Clifford invented the thing, his patent being referred to and identified. The application for the plaintiff's patent was filed on March 4, 1911, and the patent was issued on June 4, 1912. There was no evidence carrying Whitford's invention further back. Clifford's application was filed on January 31, 1911, before Whitford's, and his patent was issued on February 6, 1912. It is not disputed that this application gave a complete and adequate description of the thing patented to Whitford, but it did not claim it. The district court gave the plaintiff a decree, holding that, while Clifford might have added this claim to his application, yet as he did not, he was not a prior inventor. 297 F. 846. The decree was affirmed by the circuit court of appeals. 1 F.2d 227. There is a conflict between this decision and those of other Circuit Courts of Appeal, especially the Sixth. Lemley v. Dobson-Evans Co., 243 F. 391. Naceskid Service Chain Co. v. Perdue, 1 F.2d 924. Therefore a writ of certiorari was granted by this Court. 266 U.S. 596.

The patent law authorizes a person who has invented an improvement like the present, "not known or used by others in this country, before his invention," etc., to obtain a patent for it. Rev.Sts. § 4886, amended by Act March 3, 1897, c. 391, § 1, 29 Stat. 692. Among the defences to a suit for infringement the fourth specified by the statute is that the patentee "was not the original and first inventor

Page 400

or discoverer of any material and substantial part of the thing patented." Rev.Sts. § 4920, March 3, 1897, c. 391, § 2, 29 Stat. 692. Taking these words in their natural sense as they would be read by the common man, obviously one is not the first inventor if, as was the case here, somebody else has made a complete and adequate description of the thing claimed before the earliest moment to which the alleged inventor can carry his invention back. But the words cannot be taken quite so simply. In view of the gain to the public that the patent laws mean to secure, we assume for purposes of decision that it would have been no bar...

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213 practice notes
  • Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act
    • United States
    • Federal Register July 26, 2012
    • 26 Julio 2012
    ...Rec. S.1370 (Mar. 8, 2011). \44\ In re Wertheim, 646 F.2d 527 (CCPA 1981), which relies upon Alexander Milburn Co. v. Davis-Bournonville, 270 U.S. 390 (1926), for its conclusion that the patent must actually be entitled to the benefit of the prior-application for any subject matter in the p......
  • Examination Guidelines for Implementing the First Inventor To File Provisions of the Leahy-Smith America Invents Act
    • United States
    • Federal Register February 14, 2013
    • 14 Febrero 2013
    ...1370 (Mar. 8, 2011). \94\ See In re Wertheim, 646 F.2d 527 (CCPA 1981), which relies upon Alexander Milburn Co. v. Davis-Bournonville, 270 U.S. 390 Page (1926), for its conclusion that the patent must actually be entitled to the benefit of the prior-application for any subject matter in the......
  • Harmonization through condemnation: is New London the key to world patent harmony?
    • United States
    • Vanderbilt Journal of Transnational Law Vol. 40 Nbr. 2, March - March 2007
    • 1 Marzo 2007
    ...reduction to practice, so the date of invention is the date of filing at the latest. Alexander Milburn. v. Davis Bournonville, 270 U.S. 390, 392 (1925); Innovative Scuba Concepts, Inc. v. Feder Indus., Inc., 819 F. Supp. 1487, 1505 (D. Colo. 1993), rev'd on other grounds, 26 F.3d 1112 (Fed.......
  • PRIOR ART IN THE DISTRICT COURT.
    • United States
    • Notre Dame Law Review Vol. 95 Nbr. 2, December 2019
    • 1 Diciembre 2019
    ...springing prior art rule was created judicially, though it has since been codified. See Alexander Milbupi Co. v. Davis-Bournonville Co., 270 U.S. 390, 400-02 (1926); 35 U.S.C. [section] 102(e) (2006). (123) We ust- the term "focal patent" to refer to the patent that is the subject......
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207 cases
  • 248 F.Supp. 402 (D.D.C. 1965), C. A. 2817-64, Eli Lilly & Co. v. Brenner
    • United States
    • Federal Cases United States District Courts District of Columbia
    • 6 Diciembre 1965
    ...Note for 35 U.S.C.A. § 102 reads as follows: 'Paragraph (e) is new and enacts the rule of (Alexander) Milburn (Co.) v. Davis-Bournonville, 270 U.S. 390 (46 S.Ct. 324, 70 L.Ed. 651), by reason of which a United States patent disclosing an invention dates from the date of filing the applicati......
  • United Video Properties, Inc. v. Haier Group Corp., 051614 DEDC, 11-1140 (KAJ)
    • United States
    • Federal Cases United States District Courts 3th Circuit District of Delaware
    • 16 Mayo 2014
    ...or not the disclosed subject matter is claimed." In re Land, 368 F.2d at 876 (citing Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 [39] The Davis declaration was executed on December 9, 2013, a few weeks before the close of discovery and the deadline for filing summary ......
  • 596 F.2d 952 (Fed. Cir. 1979), 76-712, Application of Bergy
    • United States
    • Federal Cases United States Court of Customs and Patent Appeals
    • 29 Marzo 1979
    ...which do make it known to the public, Cf. 35 U.S.C. s 102(e) and the case it codified, Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926), or known to the inventor against whose application it is being applied. See In re Nomiya, 509 F.2d 566, 18......
  • 577 F.2d 610 (9th Cir. 1978), 76-2082, Lee Pharmaceuticals v. Kreps
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Ninth Circuit
    • 29 Junio 1978
    ...States Patent Office, the practice has been discontinued since at least 1879. (Alexander Milburn Co. v. Davis-Bouronville Co. (1926) 270 U.S. 390, 400, 402, 46 S.Ct. 324, 325, 70 L.Ed. 651 (the practice "is convenient if not necessary to the Patent Office, and we are not disposed to di......
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4 books & journal articles
  • Harmonization through condemnation: is New London the key to world patent harmony?
    • United States
    • Vanderbilt Journal of Transnational Law Vol. 40 Nbr. 2, March - March 2007
    • 1 Marzo 2007
    ...reduction to practice, so the date of invention is the date of filing at the latest. Alexander Milburn. v. Davis Bournonville, 270 U.S. 390, 392 (1925); Innovative Scuba Concepts, Inc. v. Feder Indus., Inc., 819 F. Supp. 1487, 1505 (D. Colo. 1993), rev'd on other grounds, 26 F.3d 1112 (Fed.......
  • PRIOR ART IN THE DISTRICT COURT.
    • United States
    • Notre Dame Law Review Vol. 95 Nbr. 2, December 2019
    • 1 Diciembre 2019
    ...springing prior art rule was created judicially, though it has since been codified. See Alexander Milbupi Co. v. Davis-Bournonville Co., 270 U.S. 390, 400-02 (1926); 35 U.S.C. [section] 102(e) (2006). (123) We ust- the term "focal patent" to refer to the patent that is the subject......
  • PATENT PRIOR ART AND POSSESSION.
    • United States
    • William and Mary Law Review Vol. 60 Nbr. 1, October 2018
    • 1 Octubre 2018
    ...of the patent laws in 1952, Congress showed its approval of the holding in Milburn by adopting 35 U.S.C. [section] 102(e)."). (398.) 270 U.S. 390, 400-02 (1926) (holding patent application qualifies as a reference as of its filing date for purposes of assessing novelty). Hazeltine exte......
  • "Secret" prior art: does prior art in a provisional patent application bar future patents?
    • United States
    • Missouri Law Review Vol. 76 Nbr. 3, June 2011
    • 22 Junio 2011
    ...in order to be entitled to a patent.'" In re Giacomini, 612 F.3d at 1384 (quoting Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 400 (1926)). (38.) Id. (39.) Id. (40.) Id. at 1385. (41.) Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. at 402. (42.) See 35 U.S.......
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