by Dennis Crouch
Prior to 1891, appeals in patent cases went directly to the Supreme Court, and the Court decided lots of patent cases. In 1891, Congress created the regional circuit courts of appeals as a buffer between the trial courts and the Supreme Court and the number of high-court patent cases began to fall. The court decided a number of big patent cases during the period of 1891-1952, although many of them have been rejected or are no longer followed. Many are also primarily anti-trust cases involving the use (or misuse) of patent rights.
The following are the most cited Supreme Court patent cases during this period:
- U.S. v. U.S. Gypsum Co., 333 U.S. 364 (1948). U.S. Gypsum is an antitrust minimum-price-fixing case. The U.S. Gov’t wanted to show that the patent covering the products was invalid, and therefore that the price fixing was improper. The district court prohibited the Gov’t argument, but the Supreme Court reversed. The case is primarily cited for its explanation of the “clearly erroneous” standard for reviewing factual findings by a judge. A finding can be clearly erroneous even if based on some evidence if the reviewing court “is left with definite and firm conviction that mistake has been committed.”
- Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950). Graver Tank is generally cited for its statement of the function-way-result test for the doctrine of equivalents. “A patentee may invoke [DOE] against … a device if it performs substantially the same function in substantially the same way to obtain same result as patentee’s device.”
- Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806 (1945). Precision describes inequitable conduct as form of unclean hands — holding that the patentee had committed fraud and thus lost access to the court of equity — “closing doors of equity court to one tainted with inequitableness or bad faith relative to matter in which he seeks relief.”
- Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944). Hazel-Atlas is another fraud case. The lower court found that the defendant had not done enough to fully uncover the fraud. However, the Supreme Court found that patents are special because they implicate a great public interest. “The public welfare demands that the agencies of public justice be not so impotent that they must always be mute and helpless victims of deception and fraud.”
- Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). The A&P case is a precursor to KSR v. Teleflex (2007). The Supreme Court explained that a collection of known elements cannot be patented unless “the whole in some way exceeds the sum of its parts” — something that is usually not the case in mechanics.
- The Fair v. Kohler Die & Specialty Co., 228 U.S. 22 (1913). This short decision by Justice Holmes was cited hundreds of times for the principle that a patent infringement lawsuit has proper jurisdiction in Federal Court despite a lack of diversity between the parties, and that the party making the claim decides what law is being asserted.
- American Well Works Co. v. Layne & Bowler Co., 241 U.S. 257 (1916). The defendant had been telling people that plaintiff was an infringer; plaintiff sued for defamation. The Supreme Court confirmed that the patent laws did not create Federal Jurisdiction for the case.
- Keystone Driller Co. v. General Excavator Co., 290 U.S. 240 (1933). In this case, the court explained that the inequitable conduct (unclean hands) only applies when the unconscionable act has “immediate and necessary relation to the equity that he seeks in respect of the matter in litigation.” In the case, the court found that bad acts with regard to two patents in-suit did not tarnish three other asserted patents (despite being from the same “family”).
- Washburn & Moen Mfg. Co. v. Beat ‘Em All Barbed-Wire Co., 143 U.S. 275 (1892). This famous case is most cited for the Supreme Court’s rejection of oral evidence as sufficient to invalidate an issued patent. Rather, proof must be “clear, satisfactory, and beyond a reasonable doubt.”
- Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923). In Eibel, the court found that a continuous-sheet paper machine invention did not rise to the level of a “pioneer patent, creating a new art.” However, the court determined that the improvement was of such merit that it was still “entitled to liberal treatment.” The court also held that the invention’s “immediate and successful use” across the industry was “convincing proof” that the specification was sufficiently detailed and precise.
Note here, I ranked these according to the number of citations by courts. We would get a different sorting if ranked by law review citations — a case such as Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), would rise up toward the top of the list and the Barbed Wire case would fall off.
I've been looking at pre-1952 patent cases (1891-1951). The following are the top-ten most often relied upon in law review articles:
1. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) (function-way-result test for the doctrine of equivalents); pic.twitter.com/DvGjkI1LXL
— Dennis Crouch (@patentlyo) January 12, 2022