Lorenz v. Colgate-Palmolive-Peet Co. (JWB)

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The Case

  • Lorenz has Patent No. 2,084,446
  • Lorenz brought suit against Colgate, who owns interfering Ittner Patent No. 1,918,603, moving that Lorenz was first/original inventor of the process in patent
  • Colgate counterclaimed that Ittner was the inventor of the process

The Patent

  • process for the manufacture of soap and the recovery of glycerine
  • patents in interference within R.S. Sec 4918 – nineteen claims of Lorenz’ patent were copied verbatim from Ittner’s

The Interference

  • Lorenze filed Jan 24, 1920, then communicated substance of application to Ittner, so that Colgate might exploit process
  • Ittner claimed to be uninterested
  • PTO rejected application and Lorenz abandoned the application
  • Feb 19, 1931 Ittner files
  • July 18, 1933 Ittner receives patent
  • Lorenz petitioned for PTO to revive his original application, which was rejected
  • Nov 8, 1934 Lorenz filed new application with Ittner’s claims – interference declared
  • Examiner of interference decided in favor of Lorenz


The Ruling

  • Originally, District Court decided that it was not proven that Colgate got process from Lorenz, and Court of Appeals reversed, concluding that ruling in favor or Lorenz followed ‘as necessary consequence under the undeniable facts.’
  • On remand (sent back down to District Court), the District Court held that the patent was invalid because of prior public use
    • Lorenz appealed and so did Colgate
  • District Court found that it was undisputed fact that the process was in public use in the factory of the defendant (Colgate) from 11/1931-11/1932, more than two years prior to Lorenz application of 11/8/1934
  • Lorenz argued that the statute to bar those inventions which had been ‘pirated’
  • Colgate asserts that its use was neither fraudulent nor piratical and that the disclosures made by Lorenz to Ittner in 1920 carried no pledge, express or implied, that Ittner or Colgate should not make use of Ittner's invention
  • Ittner immediately rejected Lorenz's disclosures as commercially impractical only to make substantial commercial use of them some eleven years later

Related Cases

  • Pennock case: piracy was not intended to be included in the statutory bar
  • Shaw v. Cooper: ‘But there may be cases, in which a knowledge of the invention may be surreptitiously obtained and communicated to the public, that do not affect the right of the inventor (to a patent).’
  • Pierson v. Eagle Screw: it was never the intention of the clause to give a fraudulent purchaser the right to use a pirated invention
  • Klein v. Russel: ‘decision, therefore, seems to be a ruling to the effect that a public use by a pirate is insufficient to bar the inventor from a patent’
  • Martin case did not find it necessary to decide ‘whether fraudulent use of an invention for more than two years prior to an application for a patent therefore bars the issue of a patent’

Ruling

  • For these reasons we hold, as did the court below, that the Lorenz patent is void by reason of prior public use.

Class Notes

Timeline

  • 1/24/1920 Lorenz application
    • Lorenz disclosed to Ittner
  • c. 1922 Lorenz denied (not unusual) and Lorenz abandoned
  • 2/13/1931 Ittner application
  • 11/1931-11/1932 Colgate uses process in factory
  • 7/18/1933 Ittner granted patent (same as Lorenz)
  • 11/8/1934 filed application for same patent (verbatim from Ittner)

Ruling

  • Ultimately, Ittner’s patent was ruled invalid because he was not the first inventor, and now the courts are determining whether Lorenz’s second application (1934) can go ahead
  • It is the responsibility of the inventor to file his application promptly
    • Cannot abandon application and return years later once you know it’s profitable
  • Even if he did not abandon, it was known or used in the public two years before (Colgate’s use in factory)
  • Neither Colgate nor Lorenz gets patent