Alexander Milburn Co v. Co 11 12, 1926
| Citation | 70 L.Ed. 651,270 U.S. 390,46 S.Ct. 324 |
| Decision Date | 08 March 1926 |
| Docket Number | DAVIS-BOURNONVILLE,No. 107,107 |
| Parties | ALEXANDER MILBURN CO. v. CO. Argued January 11-12, 1926 |
| Court | U.S. Supreme Court |
Mr. James A. Watson, of Washington, D. C., for petitioner.
[Argument of Counsel from pages 390-392 intentionally omitted] Mr. Dean S. Edmonds, of New York City, for respondent.
[Argument of Counsel from pages 393-399 intentionally omitted] 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, 156 C. C. A. 171. Naceskid Service Chain Co. v. Perdue, 1 F.(2d) 924. Therefore a writ of certiorari was granted by this Court. 45 S. Ct. 93, 266 U. S. 596, 69 L. Ed. 459.
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 (Comp. St. § 9430). Among the defences to a suit for infringement the fourth specified by the statute is that the patentee 'was not the original and first in- ventor or discoverer of any material and substantial part of the thing patented.' Rev. Sts. § 4920, amended by Act March 3, 1897, c. 391, § 2, 29 Stat. 692 (Comp. St. § 9466). 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 to Whitford's patent if Clifford had written out his prior description and kept it in his portfolio uncommunicated to anyone. More than that, since the decision in the case of the Cornplanter Patent, 23 Wall. 181, it is said, at all events for many years, the Patent Office has made no search among abandoned patent applications, and by the words of the statute a previous foreign invention does not invalidate a patent granted here if it has not been patented or described in a printed publication. Rev. Sts. § 4923 (Comp. St. § 9469). See Westinghouse Machine Co. v. General Electric Co., 207 F. 75, 126 C. C. A. 575. These analogies prevailed in the minds of the courts below.
On the other hand publication in a periodical is a bar. This as it seems to us is more than an arbitrary enactment, and illustrates, as does the rule concerning previous public use, the principle that, subject to the exceptions mentioned, one really must be the first inventor in order to be entitled to a patent. Coffin v. Ogden, 18 Wall. 120, 21 L. Ed. 821. We understand the Circuit Court of Appeals to admit that if Whitford had not applied for his patent until after the issue to Clifford, the disclosure by the latter would have had the same effect as the publication of the same words in a periodical,...
To continue reading
Request your trial
-
Delco Chemicals v. Cee-Bee Chemical Co.
...patent, or prior to the time the earlier application was filed." 98 U.S. at page 33; see Alexander Milburn Co. v. Davis-Bournonville Co., 1926, 270 U.S. 390, 399-400, 46 S.Ct. 324, 70 L.Ed. 651. Questions as to validity, such as anticipation or other want of invention, as a rule present "ge......
-
United States v. United Mine Workers of America Same v. Lewis, John United Mine Workers of America v. United States Lewis, John v. Same United Mine Workers of America v. Same
...the statute have led this Court to conclude that 'the words cannot be taken quite so simply.' See Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 400, 46 S.Ct. 324, 70 L.Ed. 651. How much more true this is of legislation like the Norris-LaGuardia Act. This Act altered a long ......
-
Application of Bergy
...steps which do make it known to the public, cf. 35 U.S.C. § 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 5......
-
WF & John Barnes Co. v. International Harvester Co.
...art, as distinguished from any other prior art patent." A leading case on this general subject is Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651. There, the defendants relied upon a patent of Clifford to defeat a patent of Whitford, the Clifford pa......
-
Save a Little Room for Me: the Necessity of Naming as Inventors Practitioners Who Conceive of Claimed Subject Matter - David Hricik, Alexandra Geczi, and Zachary Thomas
...must prove from whom the subject matter was derived to succeed on a derivation claim. See Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 401 (1926) ("It is not necessary to show who did invent the thing in order to show Whitford did not."). And while we were also unable to l......
-
Chapter §7.05 Anticipation Under §102(a)
...prior art references cited in ex parte prosecution since the nineteenth century. Cf. Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926) (Lexis electronic version) (reproducing argument of counsel Watson for petitioner that "[t]he practice of rejecting an application claimi......
-
Chapter §7A.03 Prior Art Under Post-AIA 35 U.S.C. §102(a)
...this first application has been published." European Patent Convention art. 60(2) (14th ed. 2010).[142] 35 U.S.C. §102(e) (2006).[143] 270 U.S. 390 (1926). See also P.J. Federico, Commentary on the New Patent Act, 35 U.S.C.A. §1 (1954 ed., discontinued in subsequent volumes), reprinted at 7......
-
Chapter §7.09 Description in Another's Earlier-Filed Published Application or Patent Under 35 U.S.C. §102(e)
...well when used with a solar-powered toothbrush having a particular configuration. B described but did not claim the toothbrush.[763] 270 U.S. 390 (1926). See also P.J. Federico, Commentary on the New Patent Act, 35 U.S.C.A. §1 (1954 ed., discontinued in subsequent volumes), reprinted at 75 ......