Bonito Boats v. Thunder Craft (JWB)
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Facts of the case:
- Bonito Boats (petitioner) developed a fiberglass mold to manufacture boat hulls (no patent application was ever filed). Six years later, Florida Legislature passed a statute prohibiting direct molding process to duplicate unpatented boat hulls, and forbidding the knowing sale of hulls so duplicated. Bonito Boats sued Thunder Craft (respondent) for such an offense.
- In Interpart Corp. v. Italia, 777 F.2d 678 (1985), the Court of Appeals for the Federal Circuit concluded that a California law prohibiting the use of the “direct molding process” to duplicate unpatented articles posed no threat to the policies behind the federal patent laws. In this case, the Florida Supreme Court came to a contrary conclusion.
Purpose of the patent law:
- Goal: balance between public right and private monopoly, to promote certain creative activity
- Florida statute does not prohibit "unfair competition", and offers patent-like protection to unpatented designs, giving it rights against the world
- Florida would give patent-like protection to unpatented products, jeopardizing the uniformity of patentability
- The applicant whose invention satisfies the requirements of novelty, nonobviousness, and utility, and who is willing to reveal to the public the substance of his discovery and “the best mode ... of carrying out his invention,” 35 U.S.C. § 112, is granted “the right to exclude others from making, using, or selling the invention throughout the United States,” for a period of 17 years. 35 U.S.C. § 154
- State law protection for techniques and designs whose disclosure has already been induced by market rewards may conflict with the very purpose of the patent laws by decreasing the range of ideas available as the building blocks of further innovation.
Policy behind patent law:
- A state law that interferes with the enjoyment of the free-trade of publicly known/unpatented designs contravenes the ultimate goal of public disclosure and use that is the centerpiece of federal patent policy
- Patented market products are protected from reverse engineering, but state laws protecting from trade secrets does not protect against reverse engineering
- Congress may not create patent monopolies of unlimited duration, nor may it “authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available.” Graham v. John Deere Co. of Kansas City
- Thomas Jefferson (first Secretary of State): a grant of patent rights in an idea already disclosed to the public as akin to an ex post facto law, “obstruct[ing] others in the use of what they possessed before.”
- Once a product is in the public domain, it can no longer be patented (Sec 102 a and b)
- The nonobviousness requirement extends the field of unpatentable material beyond that which is known to the public under § 102, to include that which could readily be deduced from publicly available material by a person of ordinary skill in the pertinent field of endeavor.
- Confuse consumer to source: “[T]he plaintiff has the right not to lose his customers through false representations that those are his wares which in fact are not, but he may not monopolize any design or pattern, however trifling. The defendant, on the other hand, may copy plaintiff's goods slavishly down to the minutest detail: but he may not represent himself as the plaintiff in their sale.
- As Sears itself makes clear, States may place limited regulations on the use of unpatented designs in order to prevent consumer confusion as to source.
- Through the creation of patent-like rights, the States could essentially redirect inventive efforts away from the careful criteria of patentability developed by Congress over the last 200 years
- Sears and Compco: “when an article is introduced into the public domain, only a patent can eliminate the inherent risk of competition and then but for a limited time.”