Electric Storage Battery Co. v. Shimadzu (JWB)

The Case

• On certiorari to review decree of Circuit Court of Appeals holding valid and infringed certain claims of three related patents, where Supreme Court determined that two patents, as respects claims in suit, were invalid for prior use, defendant was entitled to re-examination, in District Court, of questions of validity and infringement of third patent, in view of District Court's holding that validity of third patent was not affected by question whether it was for same process as one of patents the claims of which in suit were held invalid by the Supreme Court.
• Shimadzu (citizen and resident of Japan) had three patents
  • Earliest for a method of forming a fine divided (i.e. chemically reactice) lead powder
  • Second for a method of manufacturing a fine powder composed of lead suboxide and metallic lead and for the product of the process.
  • Third is for an apparatus for the continuous production of lead oxides in the form of a dry fine powder. Such powder is useful in the manufacture of plates for storage batteries.
• Shimadzu (respondent) filed a bill, answer denied that he was the first inventor, and that Electric Storage (petitioner) had knowledge and use two years prior to applications
• District Court entered a decree for respondents, Court of Appeals affirmed
• Petitioner sought certiorari to answer three questions:
  • In an infringement suit by the owner of a patent for an invention, made but not patented or published abroad, to restrain an innocent use, the inception of which antedates the application for patent, may the plaintiff prove that his actual date of invention was earlier than the commencement of the asserted infringing use?
  • Is the delay of the patentee in this case in applying for patent a bar to relief for alleged infringement?
  • Does commercial use of the patented process and apparatus in the alleged infringer's plant for more than two years prior to the application for patent preclude redress?
• Timeline
  • Reduced to practice in Japan August 1919
  • Applications 1/1922, 7/1923, 4/1926 (did not disclose anything to anyone in US before applications)
  • Inventions not patented or described publicly in Japan before applications
  • Petitioner (w/o knowledge of patents) began using similar process and machine in early 1921, commercial use in 6/1921
• Electric Storage Battery asserts that the invention abroad much use his application date as the date of invention, unless it had been communicated or described to someone in the US or patented abroad

The Ruling

• R.S. s 4886:
  • ‘not known or used by others (in this country), (before his invention or discovery thereof), and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, (or more than two years prior to his application), and not in public use or on sale (in this country) for more than two years prior to his application’
• Provided the domestic application is within 12 months of foreign application, Act offers same protection as if the application was filed here on the date which it was first filed in the foreign country.
• R.S. s 4923:
  • ‘if the patentee, at the time of his application, believed himself the original or first inventor, his patent shall not be refused or held void by reason of the invention having been known or used in a foreign country’ if it had not been patented or described in publication
• Problem: A domestic inventor could apply for a patent (believing himself to be the first inventor), Section 4923 gives him priority despite foreign use, even though that use is proved by a patent applied for AFTER the domestic invention. However, a domestic inventor who decides to go public (instead of obtaining a patent) will be an infringer because of the later patenting of an invention abroad, which predates use in this country.
  • It is in the domestic inventor’s interest to apply for a patent
• “We are of opinion that the courts below were right in not limiting Shimadzu's date of invention to the date of his application but allowing him to show an earlier actual date.”
• Do not believe that “Shimadzu, with intent, concealed his invention and delayed making applications for the purpose of unduly extending the life of his patents”
• Although the petitioners (Electric Storage) used a machine and process similar to invention two years before application, it was not PERFECTED until 1921. Thus, Jan 1921 is the date of ‘commercial production.’
  • Respondents sought rehearing, and judge amended to middle of 1921 (‘January’ was type-o for ‘June’)
• USSC rules that ‘commercial use’ qualifies for ‘public use’
  • Act of 1839 rendered prior public use bar whether the use was with or without consent of patentee
• The third patent was held valid and infringed

Class Notes

• District Court said Shimadzu patents were valid and infringed
• Supreme Court held that two patents were valid, sent it back down to lower courts

Timeline

• Aug 1919 Shimadzu reduced to practice in Japan (no foreign patent or printed publications)
• Jan 1921 to June 1921 Electric Storage started using invention
• Jan 1922 Shimadzu applies for first patent in the US
• July 1923 Shimadzu applies for second patent
• Apr 1926 Shimadzu applies for third patent
• 1926 appeal

Defense

• As far as the US is concerned, date of invention is the when he applies for patent in the US, not when he invents it abroad (making his patent invalid, because they used it two years before)
• If Electric Storage had filed patent application, things would have happened differently (inconsistent with what DID happen)

Interference Proceedings

• if two patent applications at the same time, they have to find who deserves it
  • who invented it first
• 35 U.S.C. 135:

• “Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent…the Director may issue a patent to the applicant who is adjudged the prior inventor”

Foreign Inventions

• 35 USC 104: can’t use evidence from Japan to prove invented first (because Japan is not NAFTA or WTO – they weren’t around then)
• If Electric Storage had applied, they would have been proven to be the first inventor (because patent application date would have been invention date for Shimadzu – that’s the only evidence he would be able to provide)
• By not filing for patent, date of invention became the ACTUAL invention date in Japan

Ruling

• Law words were missing from statute, but could not rewrite it
• Cannot overrule what Congress plainly wrote
• Second and third patents were found invalid due to public use
• First patent found valid and infringed, sent back down to lower courts