Lyon v. Bausch & Lomb (901422128)

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

Nonobviousness 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