Lyon v. Bausch & Lomb (901422128)

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Read for 1/26/11

Reading Notes

  • Decided in 1955 by the US Court of Appeals Second Circuit
    • Appeal from decision of District Court for the Western District of New York
  • Patent granted in 1946 and upheld in District with the defendant conceding infringement
  • Defendant complains "suitable coatings" is too vague a description
  • Question is whether the invention had been disclosed in an earlier patent or publicly used at the time of application
  • Patent in question here is a process
    • No earlier patents disclosed the same sequence
  • Run through of earlier patents which are related
    • All so widely diverged from Lyon that they would not be anticipations
  • Defendant insists that mirrors are among the elements that the invention covers
  • Cartwright and Turned had very similar patents
    • Disclosed coating an "optical surface" with a film or "inorganic salt"
    • None of these specifies that the "optical surface" should be kept hot while being coated
  • The only new part of Lyon's patent was the heating of surface throughout the whole process
    • Must determine if the patent depended on it and if it was in the public before
    • Did improve the issue of being rubbed or scratched off
  • Cartwright had written a letter describing the method and the possibility of getting it patented before the date of application
    • Similar experiments can be easily disposed of but not this
  • After much deliberation Cartwright's experimentation was also disposed of
    • He believed the process failed at the purpose he intended and thus abandoned further development or patenting
    • Decided he neither put the process to public use nor was the inventor
  • Twenty or thirty years prior Lyon would certainly meet the requirements but not so clearly at present
  • Cites Hotchkiss v. Greenwood on the matter of skillful mechanic or inventor
  • Did Lyon put his process in public use or sale, thus rendering it invalid
    • No, everything he had done within the year falls under the title of "experimental work" and thus he is in the clear
  • Judgment affirmed

Non-obviousness in 1955

  • Does the patent depend on the alterations
  • Courts do not treat experimental users as anticipations
  • Act of 1952
    • Case would have been invalid 25 years prior
    • Before this the only standard was "new and useful"
    • Was supposed to apply retroactively which is unconstitutional
  • The legislature should be free to reinstate the courts' initial representation despite an later obscuration
  • The Act may be applied as if it existing during the application of any patent but any previous court finding must remain

Class Notes

  • Validity of patent granted for lens coating technique
    • If valid, patent had been infringed by defendant
  • Critical step of patent was keeping the lens heating during coating
  • Court upheld the validity
  • Analysis of 102 is a timeline of events related to a patent
    • Determined it was novel
  • Just because the lens may have been in use, the patented process could not be backed out from the product
  • Had to determine if the one step was enough to support a patent
    • Under analysis of 103, yes
  • Prior to Act of 1952, the patent would have likely been invalid

Patent Law Policy

  • Section 102 deals with novelty (new and different)
  • Section 103 deals with non-obviousness
    • In this case, they'd been searching for a good method for ten years with no progress
  • Standards of non-obviousness have loosened
  • Act of 1952 tried to codify previously held conventions


  • In general laws cannot be in effect ex post facto
  • Issue of whether or not the Act of 1952 should apply to patents granted before
    • Congress has implied that section 103 simply codified what the courts had been saying