Picard v. United Aircraft Corporation, 128 F.2d 632

Picard v. United Aircraft Corporation

128 F.2d 632

2d Cir.

1942

Check Treatment

*1 testimony already serve services been seen, they coulcLnot for which giving his compensated. as a basis for allowance. n filed, brief, per- stated, appealed supplemental with the For the reasons A the-order argument, will cause after be reversed and the mission the Court of which peti- authorities remanded calls attention with direction dismiss Hall, 152, S.Ct. tion. French v. effect that typical,, is to the Reversed. incompetent aas person not rendered is is fact he by witness reason of That rule parties.' attorney one of for settled, does not touch 'it well involved, which whether question here accept .employment attor- as should witness testify, he or ney in a cause which attorney’s an allowance of whether rather PICARD UNITED AIRCRAFT court where him the made fees should be CORPORATION. accepts employment such circum- under he No. to tes- the fact that he is and where stances tify principal reason for is the witness Appeals, Second Circuit Court of Circuit. employment. May 28, 1942. supplemental brief at calls that, trial, the fact after the tention also consulted counsel for Watson was that was settlement receivers as prepared affidavits agreed on and showing that assets photostats had corporation, .which Pennsylvania government, against the suit filed Virginia cor the West transferred to been receivership.. These wefe serv poration and Watson seems character of minor ices tes weight'in his given them little to have employment. Watson and timony. The. court .the not authorized Sisterson showing nois receivership, after the rendered services ren necessary been not have could were attorneys for the re regular by the dered compensated ceivers, have been fully' who services' rendered all other these Certainly, them. made the allowance sad receivership should property in attorneys' for tó serv with allowances dled court authorization ices rendered which could have respect to matters by general coun equally well handled been lat for which the arid receivers sel for the general compensated in have been ter certainly, the made them. allowance ,an to at not make court allowance not been employment has au torneys whose that the receivers appears where thorized .represented by adequately already partic these counsel, appearance of sought in attorneys order -was ular cause, testify willing to might be attorneys to them as that the allowance them,-for compensate sought to their.tes7 prior well timony as. as witnesses *2 Raymond Greist, L. Chicago, III, and J

'Stephen Cox, of City, New York J. plaintiff. p C. Blake Drury Townsend and W. Coop- er, both of City, New York for the defend- ant. HAND, Before L. SWAN, FRANK, Judges. Circuit PIAND, Judge. L. Circuit parties appeal Both from judgment enjoin infringement an action to of claims 3,2, 11, 14, 15, 17, 18, 19 21,031, Patent originally of Reissue No. is- July 21, 1931, sued to Martin Schenk J. (No. 1,815,868)', being granted the reissue March The district original held claims claims— 14— infringed; he 2, .3, held valid claims original 16—likewise claims infringed; and he —not held claims 18, 19 20—reissue claims—invalid be- original claims, over the broadened cause appli- also .because laches appealed from Each side so much cation. against judgment went sit. In take, necessary, not.be it will view appeal, plaintiff’s upon because we pass (cid:127) box at tapping invalid rocker-arm into each suit think that claims in circular pipe to a lowest which leads for lack of invention. by gravity dra manifold. Since the boxes luhricatjng for a *3 each, and run below the manifold has to com- cooling system for “radial” air-cooled it between accomplished passing this primarily; -nor engines, and was bustion case h? the the crank case and the boxr-o “Ra- exclusively, aeroplanes. intended for level of all which are tho boxes aboco ordinary engines like combustion dial” in case, boxes the crank below and the cylinders of the engines except for location level. the case are below ordinary shaft, in which driving the sump from The manifold drains a into V— line” engines “in or in are either set a bacjc-to it pump which scavenging a sucks lines, other. parallel inclined each two the main oil reservoir. set cylinders engine xu'e In “radial” a the train nothing There was the ,,,/okcs driving the around shaft like the new^n ’ n pump .which to the leads from the oiil ordinarily in nui a nine wheel — and the rocker- a,re jofet stpin between valve some c and it then follows that armj, for a “radial” ,/áhown That had been down; heading up «zúlirie or —some vertical — upwards, engiine 1,321,338 No. in soffi,e in Patent Scott’s in- are horizontal and 1919,' pass beyond did not although the /'oil train cline downwards. The elements ,- .,uc Obviously rocker-arm. the' the f operate;, patent-in-suit in which the the - '(cid:127) n sary inv pass it to cylinder starts poppet in each valves "i joxt^t bci.. <1iv> rocker-arm and the the which engages a cam in crank case the Vjhe Moreover, l end s. . valve (divided parts), into a “cam two follower” had.beer-i, fully Simes disclosed for an it upper or surface tappet.” “valve The . line” engine Figure “in British of. end the the “cam follower” a holds Nq. 223,393 However, Patent push in a hollow case-—and rod—enclosed ‘ these rocker-arm its the and disclosures rod abuts upper push the the upon end of joints exposed to the air the so that The end of rocker-arm. one a rocker- could, dirt; joints did, gather and but in journalled housing Oi arm in a ..box Whitney & engine the Pratt “radial” the it; completely its other e>nd .encases joints and ex- rocker-arm actly its were housed valv.e, poppet upon of the abuts the stem disclosure, inas Schenk’s and indeed dislodge spring against tó depressing it a copied & this feature the from Pratt Thus, cylinder head. it from its by in the seat design.' Whitney engine bearing In that the the, the cam means of train this joints and of the rocker-arm its with the fife alternately and unseats case crank seats n push stem, rod and valve were lubricat- the r; valve. All in the art. this was old grease gun ed which had to be used pressure standard pumped Oil is periodically intervals at of from ten follow- in the “cam passages pump through flight, hours of and which not could ^fifteen describe, whence it necessary to er” not -,be during flight difficulty used and push hollow inside of the through the flows clanger. invention, Schenk’s so far the rod, between it and oiling joint the it, the defendant borrowed from can there- emerges passes. It as it “cam follower” fairly fore as substituting stated the push rod of the end upper the oil feed of Scott automatic or Simes rocker-arm, oiling passage enters a Whitney & engine, Pratt making them; passes thence it joint between adjustments necessary to drain back the rocker-arm and bearing through of the drainage It reservoir. is in the oiHj end passage its other through out of invention, the rocker-arm boxes valve, oiling poppet of the stem into if awy, must lie. necessary It is not these. joint between oil any complete further course of the There had never been to describe anticipation valve, cools the because of Schenk’s method of dis oil during which posal art; use it. prior does not vn concededly the defendant the nearest was say passing engine R-14S4 enough after Curtías about which It in, certain'passages largely through very chamber evidence The centered. spills valve, plaintiff relevancy, first, oil into the be rocker-arm challenges oil, infringement having properly part In the cause box. she denies that it is joint and-second, prior between the all; end of the of the lubricated art because valve, is, stem though even rocker-arm the step between spills similarly into the rocker-arm box. Schenk’s required invention. disclosure spilled oil disposes She because it Schenk wishes disregard us to perfect it, period fre experiment.” to quently and such a “abandoned otherwise, spoken “experiment.” do thought and so of as one district un- engines were made Elizabeth v. Pavement we. Three of these 1000; Egbert Lippmann, L.Ed. United States with the der a contract 1926 at Army in 1925 or Thomson-Houston completed L.Ed. Cir., Co., 2 $50,000. They were to be Electric Lorain Steel Co. v. over cost of greater another’s 117 F. 249. It true that put fifty is also hour endurance to a test— experiment, imperfect perfected, never service—and demanded in than would be anticipation was later was. The same one one of them as an serve either art, prior it has not though it does not as plane, installed patented inven definitely ever used served to enrich it. appear that it was *4 by such a “known” any was never tion does not become flight; event it and in sale, which by anything of placed in use or exploited, out and or but was taken it use as time of the hold and make was art cannot take a museum where it trial, an open for stands. But mere fact that earlier accessible to visitors- used, “manufacture,” engines “machine” sold or All these or examination. three of prevent “experimental”; experiment was does not certainly all three an were anticipation part or by becoming prior a is meant that "abandoned” if were the art, provided perfected and was production and it went into model never Wheth publicly known. But that thereafter became became an historical exhibit. by depends upon how er it the issue of does become so conclusive on means knowl designer, part far the stock of novelty. it becomes a is true It Heron, v. edge question. Coffin engine was not suc- of the art that the said 821; 120, Brush surprised Ogden, 18 Wall. L.Ed. that it that he was cessful and 1, 39, 44-48, Condit, all,” speaking 132 U.S. S.Ct. was not v. but he “worked at 251; Fed. Ferguson, v. lubricating system; he Parker the defects L.Ed. 10,733, Stitt v. East case, 1 Blatchf. Cas.No. crank crank referred were in the Co., C.C., Railway 649. Our rod; F. ern connecting these were the shaft and abandonment, Winding Co. Universal any were' own cause of decision 391, Co., Cir., 92 F. Whitney & engine. Willimantic Linen remedied in the Pratt that, however, respect Judge Townsend’s accepting remained in this In the lubrication 228, illus is an C.C., greasing opinion, 82 F. what it had been before—manual being case at bar. extremely apt —automatic lubrication deferred oil tration squawked” until when “the customers standard, Curtiss en by Judged gine plaintiff’s expert for it. is true that the It experiment”; “abandoned was not an Woeltjen engine testified that the Curtiss a perfected; had withstood it had been it cylinders would foul the because the suc- use; neqessary it was severer test than arranged empty as not to tion was so sold; permanently remained been had boxes, perhaps rocker-arm that was art, contribution to accessible to true, though finding made no it went. knowledge so far as sum of may, the the matter. Be that as it mony testi- question go'. how far it did It another does not show the defect—if it the final form which take though Even engine inoperative. was one—made the fifty hour test made before the was was boxes engine completed, were not the rocker-arm showing the On this must gravity by though gravity, con- part prior drained art. To be considered draining which in- those tributed an invention have patentable, cannot be The dis- horizontal. above the by clined used others” in this been “known Schenk’s in that the from closure differed country inventor “invented or before the by from the 31,. suction direct drainage was Title U.S.C.A. it. § discovered” manifold, reason did not which for that “Knowledge” in sense is to be this dis sump. pat- by into Woolson’s second public drain use or sale tinguished from 1,836,637) applied (No. which year was for himself for than a ent inventor years half before Schenk which two and a application, his is about he files before (October 17, application 1929) Alexander filed his ipso abandonment. facto an hiatus; was for a lubrication v. Davis-Bournonville filled the Milburn Co. cylin- engine system V in which the in a L.Ed. boxes which en- year were inverted and the computing inventor be ders In actuating means drained at during the valve time closed for allowed pipes which led to point into honestly lowest publicly invention their used the pas- orderly development following pump. of a machine so com- scavenging 38-41): fragile, may plicated, dangerous lines so and so (page sage so discloses proceed housings, step. We step is .also have to cannot valve from the “oil conduits, and say separate through in the face this that it took uncom- removed ingenuity merely 37.” pump, mon ing to conceive of drain- reservoir delivered to the gravity. been made the rocker-arm That apparently boxes engine had Woolsen’s date, already filing been in done in the Curtiss years his before two and used and; boxes; engine upper filed was common Schenk it and when stood as the art practice in V engines engines; rocker- “in line” from application, oil original had been and we 'have own word' Schenk’s engine of a “radial” arm boxes leading to that the which his invention met difficulties pipes suction drained manifold, inverted were common both the “radial” and by gravity from that, engines. say vertical Nor can we engine. V cylinders'of a conceived, design once. was difficult. always know It .troublesome Woolson had disclosed it the lower what, dis Schenk’s improvements boxes; —for what be remained to done was to improvement— undubitably an closure carry the manifold inventions; as we called deserve “dry below each box A' to be drained. *5 try said, is to to test safest the often have sump” already éngines. was common in such art before history of the reconstruct the Unless we are to mistake the invention judge from appearance and -their and after progress industry slow through but-inevitable an exceptional they demanded how far that error, trial and and confer mo- really that- Unhappily,, .seldom talents. nopoly merely upon per- the exercise of we cannot because an answer much helps to. intelligent improve- sistent and search for plain The contributing factors. the isolate tiff ment, there was no invention in Nor this. - content was art not argues that the weigh heavily will we hortatory the com- repeatedly method laborious with the mendation the defendant’s advertise- in at short rocker-arm the boxes greasing ments—even experts when vouched for quali Heron, exceptionally ; an that tervals —or its procure devious efforts to. the (and we fail not engineer, if he did fied invention Schenk. Even if last the not), least did not did he seen that discreditable, was there is more at stake finally pre-, method which upon the hit vailed; parties; than the issues between the two of automatic need that 'industry and the must not be bitted because more for ten or had existed lubrication years infringer’s one conduct-has not been com- convinced Schenk. This before cannot, moreover, mendable. We ignore force; but its we too feel judge, and Court, that' Supreme fact whose into account us to take not seem.to does final, word is has for a decade or more judged must be Schenk whole situation. increasing disposition shown an to raise dis knowledge of though he had Woolson’s necessary originality the standard of .engine; as of the Curtiss well closure as patent. pronounced In this recognize “a we only years when he old were four and both “duty, new doctrinal trend” which it is our long wait filed; to had had art not cautiously sure, tó be follow not resist.” only evidence change, and the for the Cir., Corp., Perkins v. Endicott Johnson qf importance was occu greater much 128 F.2d 208. We that the hold claims in engine being Curtiss designers. The pying suit are invalid for lack of invention. parts than serious and more in other weak plaintiff . The asserts that com- & also her system, Whit Pratt lubricating its ney plaint alleged second cause engine action supplanted-it; but that engine upon disclosure “in confi- Schenk’s based development-and in course of still itself was vice-president, Wilgoos, defendant’s dence” until 1933. not stabilized was certain details of his en- Tillinghast, of 1934 he and until designer, testified' specifications. The gine not shown his in work engaged “were his associates deposition took before Schenk’s defendant development important the- more much part important trial, of which for this required the entire engines which of our following: “I him asked purpose was the engineering develop our faculties right, that was be I it would whether lubrication pressure -that the group ment was left my confidence him into because I did taking be can well item.” We later as a it, part of any patents on that not-have said, destroys the 'that, Heron lieve organization something that not disclosing was I was factory keep introduc of a ’ else, by any anything or covered innovations, that the ing multitude anything that me that although assured puts issue the disclosure in the public about auto- mention or talk to him would matic lubrication would demesne patent whether the be val- perfectly be not, id or' promisor his surrendered permit it he would not privilege confidence and public as a public. member of the Smith ' way. any He said Corp. become v. Petroleum Co., Cir., Iron Works reputation would not company of their 74 F.2d Shellmar Products Co. v. was way anything any doing consider Allen-Qualley Co., Cir., 87 F.2d right (In an inventor.” alle- 108. not toward Booth v. Stutz Motor Car complaint vague, gations Cir., indeed were 56 F.2d it does appear not they practice modern but under the disclosure of the invalid includ- enough, think, support a cause pirated ed the design.) par- No doubt the implied agreement violating action for ties agree if prom- wish that the ' any not to make use disclosure isor shall not disclosure, use the patents.” At the “covered the pending issue but out to turn parts of the defendant in evidence read Indeed, be invalid. they might agree even of- deposition plaintiff Schenk’s that he shall not use it even if the it, part just including proves the rest of valid; fered e.g. patentee might wish objected on quoted. To this the defendant years’ than protection. seventeen complaint not al- ground expression But the of such an intent should which alone leged the action to explicit, cause of for in most appli- cases relevant. sus- cant protection will not need unless the objection provisionally, de- tained this" issue, does," does not point would take the under clared that he while its issue is prom- undetermined. The final ruling later. advisement make isor should not held interpreta- to an done until he Nothing more was filed extending tion sibility agreement .pos- *6 the opinion findings he admitted and when invalid, may prove the deposition, but ruled that an whole applicant such. because.. the proposing is to to, had Schenk sworn would agreement as broadcast large, the invention to the at world patent, issuance the be- not protection survive reserving as his only the breach, any, had aft- may secure; occurred cause claims which he ,to plaintiff. ordinarily supposé issued. The an- no er the reason that he any means greater protection to exact since details which she swers that against promisor specifications, than he will in the have relies not Schenk were others., against rate, does, any At if he public; they them to the did not dedicate say he agreement should so. Hence if the improvements were and the defendant merely in the case at bar had been might promise not to make of them use general promise disclosure, not to use anc, promise be held to its after certainly right. would have been as well before. issue as says Schenk that it Concerned two general principle As patentee disclosed, matters not spe variants of the ' or surrenders all that he dedicates dis ; tappet” (“cam cifications a “valve fol except far so as the claims reserve closes it. Mahn v. two; lower”) piece, in one not Harwood, 354, 361, 112 U.S. strictly manifold—not a manifold at all 665; 5 6 S.Ct. 28 pipes —consisting series of connect L.Ed. of a Ortmayer, McClainv. 12 S. ing neighbor, rocker-arm box to its each & Roller Bear Ct. Ball sump placed with a between the two lowest Co., Cir., Mfg. ing Co. v. Sanford If these variants had not been boxes. species question F. 168. The has several the, genus covered the claims times arisen if he imparted whether good there would be reason for saying the disclosure to another under an im promise that the was not to end is with plied promise not to use it—i.e. “in con only species sue. But may promisor fidence”—he hold the after them, cover claims did and Schenk did not Clearly issues. he al should be except promise need the in the interim be lowed to hold the secret any him for during breach issue, got fore inor he case no period between the imparting of the Besides, at all. we are not left to con patent. and the issue of the Hoeltke jecture as to his intent for expressly he v. Kemp C. M. Mfg. Co., Cir., F.2d that the said “confidence” which he exact 912, 923. And Sixth and Seventh Cir ed for -matters was “not covered cuits have held that he also him apparently hold patents”; supposed that the he for- a breach after issue on the notion that variants were not covered. that' as it Be gan under- only it, device, have to use may, Tillinghast could his it advertised the disclosure praise, great asking step fulsome stood him as for- so only others, issue after ward. protected Schenk, before should be had it, for protect unsuccessfully not sought would to far as the claims achieve same as- to disclosed, for him device, result. His been absurd once seems asking for simple. was obvious and that Schenk But that na- sume relatively de- trifling important ideas. protection these ture of most creative as to very them, kernel get for the it seems if we than tails was Once we know meaning The natural so. Science en- always have done of his invention. must until was transaction sim- direction of impute in the deavors plicity. move to be was disclosure Newton; (Ptolemy no issue was part which used, Newton, issue after his Einstein. increase We knowl- by any patents.” shaving importantly, speak, “not covered edge razor.) “After with Occam’s claims old ideas invalid hold modified Decree completed, it then invention is affirmed; a new com- otherwise accomplished. was easy how it very to see plaint dismissed. appar- resembling enlightenment, But such hindsight.” (concurring). product FRANK, Judge simplicity, is the Circuit ent Cir., Whisnant, Williams, Scott & Inc. sub- (or the street man on involves 22. Schenk’s device F.2d believe, would, as did think, way) I However, principle. scientific no new patent embodies that Schenk’s judge, application of discovery is not strongly Originally, invention. pat- constitutes principles scientific one For no view. join in inclined are em- elements entable invention. Old substantially ad- that Schenk can doubt that that legion are certainly ployed; but cases Defendant art. vanced preclude invention.1 alone does fact try by stealth did so: Not thought me em- seems to device And Schenk’s be- but, after patent, buy Schenk’s having appearance ness,” ge “the color literature, 1 Certainly, creative fire”; glowing he had and that read imaginative as consists often nius dolphins porpoises. poem about semblage old materials. says 434): “Those, then, (53, (2d Lowes Xanadu Lowes, Road to in The last, raw materials. The result job of trac- 1930), remarkable does ed. *7 them—it a new of and none of is them notebooks, Coleridge’s through ing, fishes Father creation. which long poet before read not books tropical in seas and Bart- Bourzes saw these lines: he wrote Florida, in lake in ram a little ship, “Beyond of the shadow green protozoa which luminous blue and water-snakes: I watched Captain Pacific, in the and1 Cook observed shining white, They in tracks of moved many-hued, ribbon-like creatures that light they reared, the elfish when Richard off Hawkins marvelled at Sir hoary oil in flakes. Fell Dampier’s Azores, and water-snakes ship of the the shadow “Within Seas, in the South Leemius’s coil- their rich attire: I watched rearing ing, serpents marine of green, black, glossy Blue, and velvet North, gamboling porpois- and Falconer’s every swam; They track coiled and dolphins es and them of or some of —all golden fire.” flash of Was a leaped together them—have scattered like shows, Coleridge, had found trumpet Lowes in resurrection, dust at referring readings passages to water- imaginative and been fused flash of into “coils” and of hoary which arched snakes vision into the elfin creatures of a yel- green, colours”; “snakes, deep of always “divers that never was and that will partie-col- black, low, white and shaping spirit imagination be. The of swimming, oured”; fish, of when work, how must have materials on which to track,” memory steeped “a or “kind of arti- left luminous in travel lore was Water,” and how ficial Fire in the in the the reservoir on which it this time drew. (cid:127)* * ship pieces compose were “vortices wake of there Xet the that * * * Lightning”; pattern like Flashes of of are not new. In the world of “swimming shaping spirit, patterns, about” sea-animals in a sea save slime,” nothing of “covered with kind and that new that was there not old. shining of them a white or some appearance,” “had work of the For the creators is the mas- brightest emitting tery reordering “the col- transmutation precious gems,” beauty including shapes given ors the most of into uni- tinged "green gloss,” with a burnished verse within us and without us. The “opaline shapes wrought various of blue” and “tints red- thus uni- are bodybody ingenuity i: Judge effect, farfar than did Hand, moremore opin- suggests in his support pat- MeadMead whichwhich waswas ion held not to applies here. negative He test: .a C* n Corp Nothing ent Corp., v. Automatic Devices 0nnn Cuno is an prod- invention which is the 86 L.Ed. uct of “the slow but progress inevitable * * * through such, and error” and reflections,. Notwithstanding be “the persistent intelligent exercise my colleagues are better versed cause far improvement.” search for Obviously, for am than I in I re passing the intelligent application test, of such a luctantly join in their deci constrained to there needed judgment men who sion, experienced represents since it their experts science, are ordinary since the interpretation trend” to of that “doctrinal man has no means of knowing how which, Judge refers Hand process new or machine was discovered. spelled least since Supreme out has itself very decisions Court sustaining fact, When grasps implications perceives one he percentage patents.2 small the startling Judge Hand’s negative test of invention. I bow “Invention,” patent purposes, his. superior accept wisdom and that test. But cage the been difficult to define. Efforts to point I think desirable to out where we concept proved in words have almost as are heading, recognizing impli- those attempts to im- verbally unsuccessful as prison time, cations. At the sug- same I shall Indeed, concept “beautiful.” gest briefly how less desirable of them when one reads most discussions of “in- might perhaps be through avoided changes vention,” pretty, Kipling’s, “It’s recalls one in the statute. IHere have in mind the aphorism it Art but is ?” and the example by Judge set Hand in 1911 in disputes no sense about matters of Parke-Davis & Co. v. H. Co., K. Mulford that lit- taste. Anatole France once said C.C., 189F. where ap- deemed erary criticism is the adventure the crit- propriate judiciary pub- should call among masterpieces. ic’s soul To the cas- lic attention defects system, in our observer, judicial ual decisions are hope in the that the disclosure of those de- judges’ among the adventures souls in- fects would statutory lead to amendments.3 as. to whether For a decision ventions. thing “value” invention is a place, not a In the first very is clear that judgment. judicial So are other few men qualify bench can provinces, legal judgments experts other scientific catively Judge provo- Hand —as peculiarly elusive is a standard. suggested “invention” in Parke-Davis & Co. sure, those assert there are who To be v. H. K. Mulford supra, page 189 F. at stand- objective art arrive at stop can 115: “I calling cannot without at- judgment the intuitive through noting ards tention to the extraordinary condition arts; (and others experts in the fine possible the law which makes it for a man sceptical. one) somewhat Yet any knowledge am of even the rudi- degree of high that a ob- chemistry pass upon well be ques- ments such *8 m some such jectivity be attained can expense as these. inordinate tions The of way evils, the field of invention. in time is only least of resulting for what, it, as I understand that really And capable chemist is a trained verse; they figures are ‘carved with 56 S.Ct 80 L. sweet, strange patentee All made out of the Ed. had won 299 vic Yet courts, brain.’ that brain the carver’s tories in the lower the Su fragments preme and shattered elements Court held the invalid ex already figures lie, cept and what the carver- as to narrow claims which were not sees, implicit fragments, infringed; perhaps, creator in the sense, in a limited unique lovely validity; is the Form.” was a decision for that on that (as basis, That some trend is not commenta for score that decade is 16 presence imply) due (invalid) tors (valid). on the to 3 Supreme appointed by Cardozo, Court Justices Ministry Justice, Cf. A President Franklin D. (1921). Roosevelt. No Judge Harv.L.Rev. See appointee Hough’s such sat non-statutory court before criticism of May 24, Yet, ten-year pe relating in the rules arbitration in United ending Supreme date, Asphalt Refining riod with that States Co. Trinidad Court, compute it, patents Co., as I D.C.1915, held 17 Petroleum 222 F. invalid and valid. One twice which contributed to the enactment validity valid in held 1935 was denied Act, the United States Arbitration seq. the same Justices in 1937. In Bas § et U.S.C.A. Mfg. Hollingshead sick Co. v. R. M. case facts, this e.g., in passing upon Report Committee’s such fol- reads Furth’s change of Von character compound,’.or lows: “There 'chemical has been enormous ‘ presence technique so-called‘‘zinc practice and commercial *** sys- substances. years. inactive last organic hundred blunder continue to inception shall tem at long contemplated How in- we an unpartisan inventor, monopoly the aid dividual given along a ad- 17.years in the assistance scientific as a for in- authoritative reward and stimulant knows; but vention, no one justice,, ministration of all’fair and to enable funds to obtained by pro-. persons conventionalized not simple sit- commercialization. This ought, I should mind habits of legal vincial uation longer orig- no obtains. What was think, advance.” inally such unite to effect a self-sufficient to an individ- intervening thir- happened in years Little has ty years justify developed pat- for 17 has into ual (cid:127) case was decided since assemblage, ent structure or then, If, today. we view a different giving substantially permanent monopoly forth set test of invention to utilize are in an advancing industry art to an judges should opinion, we foregoing group justification in the of industries. The the Parke- made in adopt suggestion the. country extension in democratic thor- consult with case, monopoly invention, Davis an absolute to an scientists. secret, longer' ap- disinterested oughly maintaining lieu of plies days' generally. these intensified In startling im- tome to the here we development, it research and experience usual yardstick for Judge Hand’s plications of important to' find that advances judges in that the suppose For invention. patent many points. nearly simultaneously arise They "at disinterest- thoroughly rely cases advancing are the result of an knowl- fully of what aware experts ed who are edge technique, and the advent of world. sus- scientific in the going on specific op- human need and commercial report experts will pect those portunity. plays The individual inventor mechan- fraction of very today only a small important part recognizing an the sit- anything are novelties ical or chemical supplying uation the needed combina- “through yielded been than what cases, however, tion. In most he could not persist- “exercise of error” and privately hold wished. with secret if he and use it improve- intelligent search for ent and Moreover, appear if he did not likely words, highly it is ment.” other In invention, long would not percentage of patentable un- infinitesimal in these times before some other intense will be inventions so-called necessary supply inventor would cre- test, ap- informedly Judge der .Hand’s 'exclusively thought. ative not This is surmising are as for so plied. My. reason n ’ situation course. There -still bril- are follows: striking liant and flashes of intellect large-scale modern research Before the startling create inventions which . and modern scientific tech- laboratories perhaps genera- otherwise be made for developed, say it was niques were correct to tion, point inventions is that this “discoveries” of men like Edison that the between, far type are few and genius. creative The. area resulted from compared insignificant in number open thus .made has be- for discoveries nearly 100,000patents now an- issued .severely restricted. For come Moreover, nually. experts: most these brilliant In word *9 Board, Advisory the Science would advances be. disclosed made Committee played who have system of men con- consisting patent not there whether or was a progress spicuous produce in science justifica- roles to a reward. The old arts,4 published Report useful and the tion for the extension opoly exclusive mon- System the Patent The Relation of longer nó As' 'Kaempffert holds.” predict of New 'Industries. The says:5 “It is not difficult

the Stimulation 4 Compton consultant) (industrial Committee consisted of E. The B. and H. (Vice-President, (President Corpo- -of American Jewett Poillon A. Research : Telegraph Company . Telephone ration). & Telephone Report of Bell President Labora be found in T. N. E. Hearings tories), (Chairman, (January 16-20, 1939) p. Vannevar Bush Vice C. Engineering, Dean 1139. President- 5 Kaempffert,- Technology), Society Institute Invention Massachusetts (Chairman p. 30; pp. Board, (1930) 28, also W. H. Carrier see 29.. Engineering Corporation), Carrier D. M.

641 public in- interest-should intolerable-that the research group industrial effect of mercy-of haphazard in- dis- at the scientific invention and organized As vention. repeat, judges. Accordingly, formation of momentum, the revolutionist covery gain judges ought in we as our advisers to have no chance will have [type of inventor] as, (just may he staff of disinterested scientists in Possibly Edison explored field. (cid:127) corporation reorganizations, under invention.” heroes of great the last of Act, Chapter X, 11 Chandler U.S.C.A. 5.01 § appears, basic been, thus There has it seq., judges et the district now .are advised springs mechanical in change by C.).9 by specialists And, the S. E. furnished method And the progress. chemical suit, patentee ought patent in each usually, made now, are which “discoveries” precisely required to how to be disclose precisely those group laboratories device, in order that the arrived at his new court, test, do which, Judge Hand’s according to experts, can tell advised own interpretation His yield inventions. merely “trial whether it was the result of ex- Supreme serves Court decisions persistent “the exercise error” attitude” plain “new that Court’s so-called improvement,” intelligent search for wording of patents. towards For event, Judge according Hand’s is not currently applied by it standard formula, patent not be valid. would When, 1941, the Court said novel: Judge negative criterion is If Hand’s “flash of creative invention involves a genius,” sound, applied .patents. it should be 6 merely repeating, slight- it was stand, But, it will not be. as matters now words, ly said some altered what 50,000 grants Patent Office spoke years earlier, sixty when it 100,000 patents year. each The Commit ingredient thought” of a as a vital “flash of reported Advisory the Science Board tee of that it was one of the Accordingly, may be said of invention.7 primary defects in Supreme that there between is correlation patent system is our Office the Patent patent fundamental Court decisions and the “an number of sues enormous advances; that, technological sources of at ” * * * which should never be issued of That bottom, it is not the Court’s attitude probably means, in the Committee as modified, has been of scien- nature timated, that the standard of inventiveness study. tific employed by is far below Patent Office then, employed pat true, perhaps, by the Yet most with that courts. If all that he pat escape judicial scrutiny, few exceptions, will since exceedingly ents few expense get eye the ents ever into court. For the a member of to the untrained e., defending patent stagger judiciary amateur) that suit is often (i. to a scientific ing And there anything appear If to the small businessman. to be an invention. that, unable, applied, yardstick a valid reason to believe Judge Hand’s is reason, suit, judi- defend a threatened patent will, usually, be a function of capitulate well financed But, to a Judge many persons as ignorance. cial scientific Hand result opinion litigating; points patentee in the case in his out “spurious” bar, many patents, which are “there is more at suit —i. court, par- pro- up in if probably e., not stand stake than the issues between ties”—i. two would ‘ confer, fact, e., public interest needs actual contested— ' effective, for all monopolies practical purposes, Duchess As Lewis Carroll’s which are tection.8 judi- had been say, that is” that it is “the moral of Expand- Infringement Corp. An- Automatic Patent Suits: Cuno Devices Concept, (1942); Corp., Yale L.J. 1012 ed S.Ct. (1942). Note, of Chi.L.Rev. 9 Un. —. 86 L.Ed. given Scofield, C. in advice the S. E. Densmore v. 9 The U.S. disregarded reorganization cases can be 26 L.Ed. Judge judge. Suppiger take Morton Salt Co. v. G. P. case, Hand, Co., 1942, 488, 482-494, was not in the Parke-Davis suggesting —; in a that a suit United States *10 by any expert May 11, 1942, advice. Co., should be bound v. S. Univis Lens 62 subject general expert —; 1088, advice of On Ct. 86 L.Ed. United States the judicial proceedings Beuscher, May 11, Corp., 1942, see The v. Masonite 62 S. Experts —; Courts, 1070, 54 Harv. of the Use Ct. 86 L.Ed. Densmore v. Hand, (1941); Scofield, 1880, 378, Historical 375, 1105 L. 102 L.Rev. 26 U.S. regarding 214; Winsor, 1858, Practical Considerations Kendall L.Ed. 62 Expert Testimony, 328, 329, 322, 322, Harv.L.Rev. 40 15. 21 16 U.S. How. (19011 165; The Clean Defense in L.Ed. Hands 642 an enjoyment Judge recently As remarked Hand The actual dally held valid. is course, case, “Perhaps [patent] system has other the monopoly which, of patent a — ” * * * Almy seems, Dewey & outworn. public may, it often its effect on — 1941, Co., Cir., 2 patent owned Chemical Mimex is Co. v. depend fact that the on the 986, in- wealthy alleged 124 F.2d 990.13 concern a themselves. funds to defend fringers lack patent every If kind of that means that monopoly exploitation of such But system outworn, disturbing. is is idea circum not turn on such fortuitous should For, it, I see there to be room seems still validity determination stances. which, Judicial monopoly patent for some kind of patents which limited to those should not be hope through gained be rewards subject patent litigation happen be monopoly, through such will ven- induce * * * im privately instituted. “It large risk need- turesome investors to sums competition public that portant to the commercially stage bring ed to useful pat repressed by worthless not be should require those new immense ex- ideas ” ** * Pope Gor Mfg. Co. v. ents penditures purpose. for that 632, 1892, 224, 234, 12 S.Ct. mully, 144 U.S. may patents We not need as rewards ex of the 636, “Because 36 414.10 L.Ed. inventors. Modern industrialism owes ** * pat judicial pense, review of Faraday, to the ideas much who cared inade private litigation alone is ents nothing money. Kaempffert for writes: of invalid quate threat as a on the check sure, long “To inventors for wealth. So superficial search arising from patents poets. patent But more do laws no ap the one-sided patent office responsible great for than are inventions decision,” says review from pellate copyright great poems. laws for Watt was thoughtful commentator.11 recent impelled by no the desire make would, then, require seem public interest money separate when he invented the con public be representative of some impelled than dense!- Milton earn was test provoke suit to authorized to equivalent twenty-five dollars Incidentally, suits 14 patent.12 validity writing Many Lost.” Paradise universi staffing courts brought, thus ties and other endowed institutions to have suits, experts in all own with their day large group laboratories in which re cost of much to reduce might do conducted; licenses, pat search under alleged patentees and litigation, both pro ents taken out on inventions thus infringers. are, duced, often, freely granted on royalties, patents basis small being head- we are then, is where this Maybe, primarily stop socially utilized undesira sys- Maybe, adhere to we if ing : ble uses of the inventions.15 giving re- notion founded tem needed, time, But if we now and, never or do not inventors, at the same

wards inventors, need, patents system, we shall dis- bait we streamline instances, them, hand- still need lure tiniest as a be but the cover to investors.16 It such rewards. sometimes said entitled to persons ful matic der istrative Patent 151-152. terprise (T. Supreme other D.C.1929, 17 S.Ct. ever, Bell It ^[10] page 92, That considerable revision is Cf. Woodward, But cf. United (1942). recently Telephone United States Devices grounds, indicated System Hamilton, Law, Court 809, 33 F.2d 62 S.Ct. N. E. C. cited L.Ed. noted that Corp., 55 Harv.L.Rev. as a Problem of A Reconsideration of 1931, Co., 1897, in Cuno by the Patents v. Standard 926. States Monograph fact that 86 L.Ed. —. approval by 144. Corp. 167 U.S. and Free v. American reversed monograph See, v. Auto- Oil 163, No. Admin- in or- 945- how sub- 224, En 31) 51 laws within Taussig, and now stitute), investor Massachusetts in which The Trend veloped. stantial patent commercial also (formerly (1930). 1939) gee testimony Occasionally Loc. cit. Paul countries law T. changes pp. Inventors Each of the President of the Douglas, Dean modern industrialism has de- of Economics N. since Incentives in 19; own Institute E. past the inventor is also an 1836, C. overhauled its cf. devices. of Yannevar Bush Engineering tea Hearings other been made in our 23, during Reality years. (1924) Money Economics, 24, Carnegie major Technology, 33. See (January of Non Makers century at indus- In- cf. *11 investors, problem be is not should be coax whether there need thus to there monopolies, rather, but, monopolies re with what corporations, their giant cause our bait, be, will, laboratories, such much there should they and whether and how search perhaps regulated.19 be The answer should do needful. that those cor history discloses industrial patent monopolies may so still be extent, have porations, and to some at times useful; socially indeed, I they may, as have re undertaking such prodded17, into been said, competition. Co. foster The David improvements developing search and into Goliath, depend- competition Inc. of kind competition from of because the threat ent on investment in David Co.—the small “outsiders,”18 patent armed occasional competitor. new And few men will invest supplied a monopolies, with funds competitor they such unless think it Thus, paradoxi private enterprisers. few potential patent monopoly has sling- as a competition: cally, monopoly may evoke suggestion shot. Accordingly, the —recent- monopolies patent threat from ly endorsed in in so an editorial conserva- may sort hands of create a such “outsiders” tive a newspaper Times as the New York competition versus David Goliath' —a patentees required grant —That all li- be competition reduces inertia of —which might, censes others terms on reasonable huge aggregations some industrial qualified, unless seriously retard industrial might sluggish. be otherwise progress: provision A universal com- who, happen pulsory one inventor may to know of licenses perhaps do no harm — friends, spent together inventors, thou- it will with his do much good may —to many years frighten tend sands of dollars and effort off extensive investment in practical stage utility patents bringing competition a new which induce markedly giant the art in an with advanced industrials.21 components industry major established The controversy between the defenders proc- in new which were uninterested patent system may and assailants of our be large out- financial esses. Without those about a false issue—the stimulus to inven- lays been not have made but would —which tion. The may real issue be the stimulus to hope acquiring for the a valid assumption investment. On that a statu- likelihood, monopoly public, in all —the tory patent system revision of our very deprived would have been real and not be too drastic. We should not throw substantial benefits. It would seem to be baby out the with the A bathwater. apply both unfair and unwise to so severe along following moderate revision lines pat- render test invention as to such sketchily might ' be indicated. There ent invalid. patentable be a classification of devices in- merely patents because categories: To denounce to two super- indulge in monopolies is to create (a) The category first would consist of may still our thinking. We want ficial patents “gadget” those contrivances fundamentally competitive. society to be require which development for their rela- society in which But seldom been there has tively expenditures; them, small as to e., monopolies, i. there have not been might very period brief mo- legal and medical privileges. The special nopoly. respective mo- guild their professions have estate, strategi- (b) category real owner of second would consist nopolies. The monopoly; require so located, those which cally the investment has a mine; relatively large prac- rail- bring sums to them to owner a valuable companies. The power fruition.22 ticable road electric expedient Committee, patents doubtful Resources to assimilate Cf. National copyrights infringement Technological Pol and National Trends so that would knowingly copying icy consist of (1937) the device 39-66. persons By patent. disclosed in a I mean out- “outsiders” corporations. giant Woodward, cit., 967-969, 22 Cf. loc. side the scarcely thing ever such 977. There just monopoly, might “perfect” statute, Someone ask there is whether a

as a competition. scarcely patents “perfect” granted under would be ever minglings monopoly investors, inventors but to can There divers not to competition. clause founded of our Con- May perhaps Times, p. not, could, If New York stitution. like statute, trademark be based on the reason, For that same commerce clause. be a interstate *12 impos patents, monopoly. we the They would type make of second As this tp adapt provisions patents the adopt practice procuring sible might the well of Act, enacted Lloyd George solely the so-called never to acquired be used but improved then England and since in 1906 by blocking competitors25 “fence in” to years, three the end of At amendments: competi right improvements their to sell hearing public at a patentee must show No how wide tive devices. one knows being patented device (1) either that the is; spread practice to that it exists that large quan sufficiently commercially sold undenied; Bag Paper the some extent public at reasonable demand tities to meet case, Paper v Bag Patent Continental Co. an considered) yield prices (the risk 405, Paper Co., 1908, Bag Eastern 210 U.S. n investment, (2) or- adequate return on the 748, 1122, apparently 52 L.Ed. 28 S.Ct. expenditures and bona (that, despite large it;26 have persons sanctioned but efforts, yet in is not diligent the device fide to make that statute be amended urged the commercially adequate stage, (3) practice something unlawful. delay for proper basis other there would English statute27 nature of public If no injurious interest. in possible use prevent also serve to made, showing then either such alleged with the patent cartels patentee ternational be cancelled or the would currently consequences ascribed required issue licenses on reasonableundesirable be would Attorney General provisions them Assistant s.24 Such term (I make no comment as to English an abuse of Arnold. what call prevent text. to be renewed files ent-owning it could mum pulsory our initially stitutional. 1784. See Meyers chise” that a sembles Georgetown Laws of er certain cases under Holding Company applies the Patent asked er federal may Patent Office which are public. courts is ly ' It has 23Any The S. E. part: held. any possible denies) patentee In main For a (not be due to the life after , percentage English and The Antitrust license statute other issued for a public hearing English the South England intended far of 17 been intimated sueli “In purposes company administrative permits publishing person provided L.Rev. summary Hamilton, 0., Office are not To improvements higher Lewis, patents. taking agency, periodically statute hearing years) official avoid statute, (2d properly fact Act; facts instance, grants (nev- (1941) 117, than that of period wrote memo for determinations Carolina statute of The Patent out ed. the Public upon publication) saying such an of a that, should be would be uncon- loe. indicated 1937) to non-user re- notice secure see (with a maxi- agency. proceedings powerful pat- upset interested. open eit., 22-24; unlike those hearings three showing by Laws, patent be competing provisions Halsbury, 731ff. objection, any advising does patents held “Fran- Utility one public- years, com- That oth- It of such an Morton Salt Co. v. G. S. —. similar 1938) ing intimated E. C. that few 283 819; precludes Corp. sary. been 645, Ann.Cas.1913D, Commissioner ute censes. 1912, the foundation for gests der the rule of that case. Bag Dick case asserted that ly referred to a patent machines plications competing forestall our income.” T. N. E. O. machines so as. to ‘fence in’ prevent * * The rule reflect that statute has had When The last sentence of the clauses. case still stands unreversed. 224 U.S. Tet * and the use of completely v. American p. T. protection” provision them We Congressman its 278. The Canadian Patent 778. The which were it was relief N. the basic rule of the of the Act devices which would lessen [Henry just now policy. corporate policy this reaching recently development The Dick others.” The memo also perhaps the suits had been E. 1, made such that effect. might argued Paper memo repudiated against 32 S.Ct. C. which “seems to block procure compulsory S.Ct. Patents v. A. B. the decision in the 880] Hearings' company, however, an told filed Hatton Sumners tying a number of did Bag be before the T. case improved Canadian mere existence Hearings, 771, sustaining ty suits an Suppiger Co., 364, exceptions not accurate- me Corp., 1931, opinion case became brought of “indirect in Carbice clause now Dick has since those and 75 L.Ed. competing infringer. 56 L.Ed. definitely unneces- (Dee. Paper stage. stat- sug- un- ap- N. li- *13 whether, fact, question controversial in any governmental what- control ever, consequences.) public have been such to decide that no should be use made of during the franchise its life or would, further, corpo prevent giant It public franchise-holder, such use as the ration, field, buy given dominant in a utterly its discretion, unregulated deems up ing issued to an “outsider” for wise, fit e-sc- prices as it sees to and at such mothballs, purpose putting act. powers We accord such to improvement order to block the use of1- public holder of franchise bus to run a products corpora own which that power. or to line sell electric might tion consider because it undesirable bring patents To into line with the con- compel scrapping of some of its provision stitutional relating patents, to plants existing equipment. or How wide is worth considering whether should spread practice been, again no one has not, by statute, assimilated, ex- to some knows; but that it has sometimes occurred tent, to certificates of convenience and is undeniable. necessity. For one doubt whether the persons, sure, argue Some to be birth-control arbitrary restrictions on the rapid plant equip too obsolescence of important manufacture of new industrial developments through socially ment new by private persons devices patents owning undesirable.28 ground, That is debatable could have been in the minds of the Found- perhaps, although such retardation of our ing they provided Fathers when Con- technology nation’s now seems of doubtful stitution Congress might pass laws au- preparedness value since it weakens for war patents thorizing “promote Progress country another which has not similar of Science and Useful patent sys- Arts.” A ly, pre-war days, technology. retarded its tem which public stressed obliga- thus Pearl Harbor has shocked us into patentees tions of while, time, at the same And, new particular, orientations. protection furnished investors in has aroused patents. new thinking about would be well worth achieving. 1942, ago, April 17, a few weeks Just wrote President the Chairman of the Senate Committee on Patents: “The problem you studying are is vital. Patents key technology; technology are to our key production; production is the is the key victory. your I trust that Commit * * * help tee will government BARNES COAL CORPORATION v. RE- patent policy formulate a wise guide us TAIL COAL MERCHANTS ASS’N et al. through victory democracy No. 4930. devoutly we all so wish.” surely questionable, then, It Circuit whether Court of Appeals, Fourth Circuit. development, the control of our industrial May 29, 1942. through patents, so far as it exercised patentees; solely should be left as the public involved, deeply interest it would representatives pub seem wise that participate lic should at least in decisions of patents govern- matters. For such monopolies. Supreme mentally created franchises,” “public called them Court granted by government, act 29 is, public. ing It according on behalf of the ly, appropriate to ask whether the holder public permitted, franchise such a J., Brandeis, dissenting, 708; Cf. Winsor, 1858, Kendall New Ed. v. Liebmann, 327, 322, 328, State Ice Co. v. How. 16 L.Ed. 306-316, MeQuewan, 1852, 52 S.Ct. 76 L.Ed. Bloomer v. 14 How. stating arguments pro 539, 549, ap con. 14 L.Ed. cited with Seymour Osborne, 1870, proval 11 Wall. in United States v. Univis Lens 516, 533, May Co., Inc., 20 L.Ed. 33. Cf. United States 62 S.Ct. Machinery Corp., 1922, Meyers -; v. United Shoe Lewis, loc. cit., 42 S.Ct. 451. L. at 125.