Electric Storage Batters Co. V. Shimadzu (901422128)

Read for 3/2/11

Reading Notes

• Decided in the U.S. Circuit Court of Appeals in 1939
  • Held valid and infringed claims of three related patents
  • USSC found two the patents invalid so defendant was entitled to re-examination for the third
• Patents were granted to Shimadzu - citizen of Japan
  • First is for lead powder
  • Second is for a process of manufacturing a fine powder composed of lead suboxide, etc.
  • Third is an apparatus for continuous production of lead oxides
• Answer to filing of infringement
  • Used by the petitioner more than two years prior in the U.S.
  • Earlier patents in Japan for the same things were granted more than a year prior to filing
• District Court and CoA affirmed the validity
• Inventions reduced to practice no later than August 1919
  • Not disclosed in U.S. before application on January 30, 1922, 7/14/23, and 4/27/26
  • Not patented or described in print here or abroad prior to filing of applications
• Electric, without knowledge of the inventions, used a machine involving the method and apparatus of the patents in early 1921
• Petitioner says the date of invention abroad must be the date of application
• Must examine two sections
  • R.S. s 4886 - not known or used bu other in the U.S. and not patented or printed in the U.S. or abroad and not in public use or on sale in the U.S. for two years (application) may obtain a patent
    • History of this statute:

The requirement of the Act of 1790 was that the discovery be ‘not before known or used.’ The Act of 1793 amended this to read ‘not known or used before the application.’ The Act of 1800 altered the provision so that the petitioner had to swear that his invention had not ‘been known or used either in this or any foreign country.’ The Act of 1836 changed the knowledge and use clause to read ‘not known or used by others before his or their discovery or invention thereof.’

• • 4887 aims to allow the filing of applications for the same invention in foreign countries and the U.S.
  • 4923 holds that a patentee cannot be barred if at the time of application he thought he was the first invention if the prior invention in a foreign country was not printed or patented
    • Not relevant here
• Seems illogical that Electric Storage would have been safe if they had gotten a patent but not if they just used the invention publicly
  • In order to correct this must read into the law words that are missing which is not allowed
• Agree that the lower courts were right in allowing Shimadzu to prove an earlier date than that of application
• Cannot hold that his waiting to disclose the important elements convicts him of intentional concealment
  • Did not add this to the answer at an early enough time for it to count
• With regards to being in public use for more than two years prior to application
  • It appears this is true - there is no reasonable distinction between commercial production and public use
  • January 1921 is date of commercial production - later switched to be June as it was thought to be an error
• Hold that the commercial production is a public use under 4886
• Find two patents invalid due to public use for more than two years prior
  • Does not invalidate the first patent filed in 1922
• USSC thinks the petition is entitled to a reexamination of the first patent to determine its validity and infringement

Statutory Bars

• R.S. s 4886 - not known or used bu other in the U.S. and not patented or printed in the U.S. or abroad and not in public use or on sale in the U.S. for two years (application) may obtain a patent
  • This section makes the criterion of novelty the same if the invention was conceived here or abroad
• Place of invention has never been an element
• 4887 aims to allow the filing of applications for the same invention in foreign countries and the U.S.
• A foreign applicant cannot carry the date of his invention back to the date of application in this country as the holder of a later patent for an invention made here would be allowed to do
• Patent is not validly issues if the invention is shown to have been abandoned
• Cannot be valid if in public use for more than two years
• Public use
  • Experimental use is not
  • Single use for profit is a bar