83 A.D.2d 505 | N.Y. App. Div. | 1981
Lead Opinion
Judgment, Supreme Court, New York County (Wallach, J.), entered October 27, 1980, which awarded plaintiff the sum of $1,511,054.27 against the defendant, reversed, on the law, and matter remanded for a new trial limited to the issue of whether plaintiff may recover any damages for the materials furnished to the defendant in the course of their negotiations, without costs. The background facts have been fairly stated in the opinion at Trial Term (105 Mise 2d 413; see, also, 473 F Supp 951 [dismissal of antitrust claim]). The trial court dismissed defendant Chesebrough’s affirmative defense that plaintiff Laurie could not recover because the concept for the breath exercise device had been made public with the issuance of the Hanson patent in 1972. It found that plaintiff had a valid cause of action because the information was acquired by the defendant in the course of confidential communications (105 Mise 2d 413, 421). The trial court’s conclusion in this
Dissenting Opinion
I would not order a new trial but would dismiss the complaint. It is a basic principle of patent law that in exchange for the patent monopoly, the patent holder must make a complete disclosure as to the invention, including the basic idea of the invention, its utility, and a physical embodiment of the patent (cf. Ferber v Sterndent Corp., 51 NY2d 782; Platzman v American Totalisator Co., 45 NY2d 910), and the patent holder is the last one in the world who should be permitted to contend there is more to his invention or idea that was not disclosed in the patent. “We would remind them [patent applicants] that if they have in truth invented something which promotes the progress of science and the useful arts, then in exchange for a patent grant they must make a full and complete disclosure of their invention, leaving nothing to speculation or doubt. That Congress so intended is evident from the strong and comprehensive language of Section 112 which appellants here have filed to satisfy.” (Matter of Lorenz, 305 F2d 875, 878.) Section 112 of title 35 of the United States Code provides with respect to patent applications: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” Surely the