Talk:Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)

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Courtney

On Petition For Rehearing July 29, 1955.

The first five claims speak of "a stable, water insoluble, evaporated inorganic salt," and of the last two claims in suit number eight is for a "metallic fluoride" and number nine for "magnesium fluoride." The defendant complains that "suitable coatings" is too vague a description, even when accompanied, as the phrase was, by the specific substances mentioned.

The important questions are whether the invention had been disclosed in any earlier patent, or had been publicly used, before Lyon filed his application on November 17, 1942; and whether his contribution will support a patent.

The process was in two steps: first, to heat the "optical surface" in a vacuum until "adsorbed water and grease have been evaporated from the surface," (page two, col. 1, lines 47, 48); and second, to vaporize an "inorganic salt" within the vacuum, meanwhile keeping the "optical surface" heated;

There were also patents for mirrors, designed of course to reflect the light; and therefore the opposite of the patented coatings, whose purpose is to transmit through the "optical surface" as much as possible of the light falling upon it.

On the other hand Cartwright and Turner took out three earlier patents that were much nearer to Lyon's, for they disclosed coating an "optical surface" with a film of "inorganic salt." The first — No. 2,207,656 — was applied for in December, 1938 and issued on July 8, 1940.

Before considering whether the patent may depend upon it, we will consider whether Lyon's process had been "in public use or on sale" under 35 U.S.C.A. § 102(b); or whether "the invention was made * * * by another" before Lyon, under § 102(g).


Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time.

There remains only one other point of enough importance to demand discussion: i. e. whether what Lyon had done before November 17, 1941, — a year before his filing date — forfeited his right to a patent under § 102(b) of the Act: that is, whether he had put it in "public use or on sale in this country, more than one year prior to the date of application".

Maura

The claims always measure and limit the scope of the monopoly; and the defendant does not, and could not properly, suggest that anything that Lyon actually invented he did not disclose when the limitations of the claims are imputed to the description in the specifications.

The important questions are whether the invention had been disclosed in any earlier patent, or had been publicly used, before Lyon filed his application on November 17, 1942; and whether his contribution will support a patent.

Were these activities either a "public use" or "sale" under § 102(b), or was Cartwright a prior inventor under § 102 (g)? True, the fact that the process could not be deduced from the lenses sold would not alone prevent their sale from being a "public use."2 It is indeed difficult to see why this should be so, for such sales could not in fact enlighten the art, especially in the case of a process, which the product does not ordinarily disclose, unlike a machine which may disclose its concealed mechanism, if it be dismantled. The law does not however appear to have made any such distinction.

The defendant replies that it is not necessary that a third party who puts the invention in "public use or on sale" must understand the value and importance of his discovery. That is indeed true; a man may conceive a process, put it in "tangible form," test it out and fail to exploit it, because he does not see how valuable it is.

Finally, we cannot agree that this retroactivity should be limited to a recognition of the patent only in the future: that is, that, although the patentee may enjoin its infringement after January 1, 1953, he may not recover damages for any earlier infringement or collect any profits of the infringer. As a matter of construction § 4(e) seems to us conclusive; it preserves any "finding" of a court before January 1, 1953; but leaves the court free thereafter to apply the Act as though it had existed when the unexpired patent issued.

Judgment affirmed.