Hotchkiss v. Greenwood (901422128)

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Read for 1/26/11

Reading Notes

  • Case decided in 1850 by USSC
    • Granted patent to Hotchkiss in 1841 deemed invalid
  • Described manufacturing knobs out of clay and porcelain in a specific manner
    • Only new aspect was clay in the fashion or metal or wood
      • Obvious
  • Claim: "manufacturing of knobs, as stated in the foregoing specifications, of potter's clay, or any kind of clay used in pottery, and shaped and finished by moulding, turning, burning, and glazing, and also of porcelain."
  • In 1845 Hotchkiss brought Greenwood to Circuit Court for Ohio for violation of their patent right
    • Defendants claimed the knobs were widely in use and sale in the US, England, and Germany and that Hotchkiss et al were aware of this
    • Plaintiffs claimed that although knobs of these materials and the metal shank and spindle has been used previously the two had never been combined and therefore this invention, being better and cheaper and taking skill to manufacture was indeed novel, useful, and non-obvious
  • Court charged the jury that "if...no more ingenuity or skill required to construct the knob in this was than that possessed by an ordinary mechanic acquainted with the business, the patent was invalid, and the plaintiffs were not entitled to a verdict."
    • USSC claims this instruction is erroneous and a new trial should be granted
  • If the material was also a new discovery, it would likely be proper to patent
  • The improvement consisted only of the superiority of the material which was already known
  • Cites an old case involving buttons with different foundation materials
    • Decided the same way in that instance

Dissenting Judge

  • Dissents in regard to the manner in which facts were submitted to the jury
    • Judge at the original trial proceeded on the ground that patent covered both knob and mode of fastening
  • The judge did not instruct the jury as the plaintiff has requested
    • Determine if it was better and cheaper
      • He considers this the basic test of patentability, not if an ordinary mechanic could have made it
  • Any invention is entitled to a patent if it improves or increases the power, convenience, or wealth of the community
    • Jury should have considered this as well
    • Law has no regard to the process of mind
  • States many precedents
  • Thinks the decision requires another trial with all instruction given to the jury

Process in 1850 for non-obviousness

  • Submitted schedule to Patent office with brief description and image
  • Used the terminology "new and useful"
  • Any machine made of materials better adapted for its purpose than previously used materials cannot be distinguished from the old one and is therefor not entitled to a patent
  • Improvement must be the work of an inventor, no a skillful mechanic
    • Dissenting judge believes the basis should be cheaper and better
  • Law has no regard to the process of mind

Class Notes

  • Novelty: combination of a previously-used material with the previously-used fastening system
    • Plaintiffs argued this took skill
    • USSC had to decide if the combination in itself is patentable
  • Came down to a matter of jury instruction
  • Supreme Court decided that the substitution of a new material was not grounds for a patent
    • The improvement of said material was already known (“it may be better but it is only because of the superiority of the selected material”)

Dissenting Judge

  • Dissented on the basis of the jury instruction
    • Instructed only as to “worked of a skilled mechanic” and not “better and cheaper”
  • Doesn’t matter how it was created, only if it was new and better
    • Relates more to modern standards for patentability based on non-obviousness
  • Cites many precedents which the others did not seem pertinent
    • None were Supreme Court cases

Non-obviousness

  • A patent must be novel, useful, and non-obvious
    • Non-obviousness means inventiveness or invention combinations
  • What characteristics of a combination make it patentable
    • A new use or improvement upon the previous items
    • Succeeding in combining items which other have failed to do
  • Just because someone is granted a patent doesn’t mean the property right will always be upheld