HOTCHKISS v. GREENWOOD, 52 U.S. 11 (1850)

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  • On July 29, 1841 the plaintiff's Hotchkiss, Davenport and Quincy were granted a patent for a "new and useful method of making door and other knobs of all kinds of clay used in potter, and of porcelain" fused into a cavity in a certain way


  • In October 1845, Hotchkiss brought an action against the defendants (Greenwood) for violation of patent rights.
  • Greenwood claims that the invention protected by the patent (the ceramic door knobs) were "made, used and sold" and that the method for creating suck knobs was "known and practiced" well before July 1841. In other words, the plaintiffs were not "the original and first inventors and discoverers of making or manufacturing knobs of potters clay"


  • The court ruled that the "only thing new was the substitution of a knob made out of clay...for a knob of metal or wood," meaning ceramic doorknobs were an obvious extension of the former art of doorknob making - and thus not worthy of a patent.


  • No more "ingenuity and skill" was necessary to make the new doorknob than that possessed by an ordinary mechanic acquainted with doorknob making
  • Jury (in Ohio circuit court)found that the improvement only consisted in the "superiority of the material," and no other ingenuity. This substitution of material cannot be the subject of a patent.
  • U.S. Supreme court affirms the decision.
  • There was one dissenting opinion: the knobs, however "simple and obvious" should be patented because they are new, and provide a better and cheaper alternative (this is not true now!)- he says some inventions are "happy ones...made without the exercise of great skill." Also, he felt the jury may have been instructed in a bias manner (with favor to the defendant).

In Class

  • Overview: Patent involves novelty, utility, and non-obviousness
    • non-obviousness: inventiveness, invention, combination
  • New part of this patent: making new part of the doorknob out of a new material-Hotchkiss argures that it took a lot of skill and some inventiveness to fasten the knob to the shaft (he will be ruled against)
  • Main point of argument is what instructions were given to the jury:
    • If the novelty is just a substitution of materials, then the patent is invalid
    • The improvement is simply in the superiority of the material
  • Burden of proof exists here for the Greenwood: Hotchkiss does not have to re-prove the validity of the patent; it is Greenwood's job to prove that the patent is indeed invalid.