1/26/11 : Hotchkiss v. Greenwood

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Case Summary

- A patent granted for 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" was invalid.

- A patent was issued for a knob made of pottery clay and the manufacturing process that creates it (molding, turning, burning, and glazing).

- Nothing was new about the knob except for the material (pottery clay) for that specific type of knob. Pottery clay knobs were not new, thus the patent was considered invalid.

- The product might be better and cheaper, but the new material does not constitute a new mechanical device or patentable idea.

Facts of the case

- "In October, 1845, the plaintiffs in error brought an action in the Circuit Court of the United States for Ohio, against the defendants, for a violation of the patent right."

- Defendent's notice: "[The plaintiffs] were not the original and first inventors and discoverers of making or manufacturing knobs of potter's clay or of porcelain. They will also prove that the making of knobs from potter's clay, and also from porcelain and other clays used by potters, was known and practiced, and such knobs were made, used, and sold, in the Cities of New York, Albany, Troy, and Brooklyn, in the State of New York; also in Jersey City, in the State of New Jersey; also in the City of Philadelphia, State of Pennsylvania..."

- Porcelain knobs were used and sold in the American public well before July 29th, 1841 (date the patent was issued).

- MR. JUSTICE NELSON delivered the opinion of the Court.

     --the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank
     is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different 
     material from that heretofore used in connection with this arrangement.

Class Notes

- New part: create knobs out of different material (clay/porcelain)

- Justice Woodbury dissented: emphasized making the combination as an advance because clay made the product better, more useful, and new, thus warranting a patent.

  - At the time, the fact that it took little skill to make something new and useful is irrelevant in the validity of a patent.  Nowadays, non-obviousness 
    would make sure that novelty and utility are not enough to justify a patent.