LYON v. BAUSCH & LOMB, 224 F.2d 530 (1955)

Situation

• Lyon granted a patent on April 16, 1946 for the invention of a hard, non-scratch/smear coating of light-transmitting glass surfaces (binoculars, periscopes)
• Bausch & Lomb challenge the validity of Lyon's patent
• U.S. Court of Appeals, Second Circuit - on appeal from the Western District Court of NY

Outcome

• The appellate court sustains the patent's validity.

Reasoning

• The question: Was the invention disclosed in any earlier patent, or publicly used before Lyon filed the application on November 17, 1942?
  • The patented process: heat the optical surface in vacuum, vaporize and inorganic salt, while keeping the optical surface heated
  • No other patents disclosed the sequence, although a few were very close. Most of the close patents were sufficiently different so as not to serve as "anticipations"
    • One very close call: Cartwright and Turner - developed similar coatings, and even experimented with keeping the optical surface hot during coating - but in the end, Cartwright was "still uncertain" whether continued heating in the vacuum produced superior hardness
    • Thus, Cartwright was simply and experimenter (who failed) - which does not count as an "anticipation"
    • Court concluded that Cartwright did not put the process into public use and that he cannot be considered a prior inventor
    • Furthermore, Cartwright's failure in conduction the process shows that the invention was NOT obvious
• A final question is whether Lyon had put the process into public use before being granted the patent - evidence shows that he did not.

In Class

• The defendant conceded infringement of the patent, if the patent was indeed valid.
• Second paragraph: defendant is claiming that the patent did not sufficiently disclose the scientific knowledge of the invention - trade off for a patent is that you have to tell the world how you did it - defendant is saying Lyon didn't do this properly
• 35 USC 102=novelty
  • Detailed time line becomes important
• 35 USC 103
  • One way to decide if something is obvious: they had been searching for a solution for a long time (10 years) and hadn't been able to come up with one - thus, it seems like this invention must not have been obvious (if it were obvious someone would have done it long ago, when the need presented itself)
• Side note: in appellate court it is common to have a 3 judge panel (unlike the supreme court which has all 9 listen to the case, typically)
• Judge Hand says that under old rules, this patent would have been thrown out
• Another important point: Hand debates whether the ruling should be retroactive
• Tea and Hotchkiss barred the patentability of many things that we now consider patentable - this case, Lyon, and 35 USC 103 are a little bit more relaxed.