19th Century Patent Law: Initial Disclosures for the Defense

by Dennis Crouch

Even if you are not a litigator, you may still remember learning about the R.26(a)(1) initial disclosures required at the start of a lawsuit.  Some areas of law have particular additional disclosure requirements.  One example — old patent law.  The Patent Act of 1836 included a unique disclosure requirement for defendants raising a defense that patent was invalid because the invention was already publicly known or used.  The statutory provision:

Whenever the defendant relies in his defence on the fact of a previous invention, knowledge, or use of the thing patented, he shall state in his notice of special matter the names and places of residence of those whom he intends to prove to have possessed a prior knowledge of the thing, and where the same had been used.

Patent Act of 1836, Section 15.  Thus, the defendant is required to automatically identify the names and residence of the people with prior knowledge as well as the location where the item was used.

In Wise v. Allis, 76 U.S. 737 (1869), the Supreme Court was asked to opine on the  level of specificity required by the statute.  The case involved an improvement in balancing millstones for grinding grain.  The defendant had provided notice that the invention had been previously used in “Utica, Rochester, Buffalo, Albany, New York City, and Brooklyn, in the State of New York.”  At the time, New York City had about 1,000 different mills where the millstone might have been used, and so that part of the notice did not really provide much information.  The plaintiff complained that the notice was thus insufficient and that the defense should be barred.

In its decision, the Supreme Court sided with the defendant and found the disclosures sufficient. In particular, the Court suggested that the provision should be read as a whole, and noted that the defendant had provided the name and address of individual people in each of the cities who had knowledge of the prior use.  That individualized disclosure was sufficient to satisfy the purpose of the rule — that is, to allow the patentee ability to respond and/or cross examine the witness.  The Court explained:

The object of the rule is undoubtedly to enable the other party to make such answer … either by way of pleading or of evidence, or such cross-examination of the witness of the party setting up the plea or notice as the facts of his case may enable him to do. In other words, to apprise him fairly of what he may expect to meet under the plea or notice. . . . If [the defendant] fairly puts his adversary in the way that he may ascertain all that is necessary to his defence or answer.

Wise v. Allis, 76 U.S. 737 (1869). Today, Rule 26(a)(1)(A)(i) operates in parallel to this old patent rule, but for all civil actions.  It requires automatic disclosure of the name and address and phone number “of each individual likely to have discoverable information … that the disclosing party may use to support its claims or defenses,  unless the use would be solely for impeachment.”

11 thoughts on “19th Century Patent Law: Initial Disclosures for the Defense

  1. 3

    Off topic again, but another non-precedential transfer mandamus arrived today in In re Netflix. Judge Gilstrap of ED Tex ordered to transfer the case to ND Cal. Lourie, Prost, and Taranto on the motions panel, but the order was per curiam.

  2. 2

    Probably not now considered an “initial disclosure,” especially after the more recent FRCP 26(a)(1), but 35 USC 282(c) has had for a long time a 30 day pre-trial notice requirement for the specific IDs of any patent or publication or prior inventor or prior-use or on-sale witness.
    PTO Rule 56 could also be considered a type of “initial disclosure” requirement, especially as applied to PTO post-grant proceedings.

      1. 2.1.2

        Agreed Paul, the 30-day notice in Section 282(c), which was in the original 1952 Patent Act, is a much closer analogue to the 1836 statute mentioned in Dennis’ post. In modern patent litigation, though, the 30-day notice is little more than a nuisance because, as a practical matter, the parties would have provided the required notice (in specificity far beyond what the statute requires) much earlier in the case through contentions, interrogatory responses, and/or expert reports.

  3. 1

    Totally off-topic, but I noticed today that for decades, college tuition and college textbook prices have been rising in lock-step. Then, in 2015 textbook prices leveled off, while tuition kept rising. Is it a coincidence that this flattening of textbook prices started just a few years after Kirtsaeng?

    1. 1.2

      From the college kids I know, the major cost-saving change in student textbook practice over the last decade-ish is not importing textbooks but rather renting textbooks.

      1. 1.2.1

        I was renting textbooks back in 2010, so that is a practice that meaningfully predates the curve flattening. I take your point, however, that there are other plausible causes that could be named besides Kirtsaeng. Nor are these individual causes mutually exclusive. I have no idea how much (if any) of the observed effect has to do with Kirtsaeng (or rentals), save to notice that textbook cost and tuition cost were tracking each other very closely right up until 2015, at which point a sharp divergence emerged between the two cost curves.


          The mere existence and threat to the business model (and the publicity of losing a very high profile case) was what created the schism.

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