by Dennis Crouch
LKQ’s brief for today’s en banc rehearing begins with the following interesting statement: “As with utility patents, the U.S. Constitution and the Patent Act prohibit design patents on ordinary innovations.” It is the Constitutional question that is most interesting and calls forth the concurring opinion by Justice Douglass in the Great A&P Case.
The attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent. The Patent Office, like most administrative agencies, has looked with favor on the opportunity which the exercise of discretion affords to expand its own jurisdiction. And so it has placed a host of gadgets under the armour of patents—gadgets that obviously have had no place in the constitutional scheme of advancing scientific knowledge. . . . The fact that a patent as flimsy and as spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.
Great A&P Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 156 (1950). Although case applied pre-1952 law, the reminder here is poignant. Justice Douglas goes on:
It is worth emphasis that every patent case involving validity presents a question which requires reference to a standard written into the Constitution. . . . The Congress does not have free reign, for example, to decide that patents should be easily or freely given. . . . Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science—to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. That is why through the years the opinions of the Court commonly have taken ‘inventive genius’ as the test. It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end—the advancement of science.
The standard of patentability is a constitutional standard; and the question of validity of a patent is a question of law.
Id. Later, in Deere, the Supreme Court suggests found that the newly written Section 103 was properly seen as statutory codification of the court’s standard “which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts.” And, that standard is derived from the Court’s understanding of the U.S. Constitution’s requirement that the patent laws be designed to “promote the Progress of Science and useful Arts.”
The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. Moreover, Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available. Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must ‘promote the Progress of * * * useful Arts.’ This is the standard expressed in the Constitution and it may not be ignored. And it is in this light that patent validity requires reference to a standard written into the Constitution.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 5–6 (1966).
Bringing this back to design patents and the LKQ case, the patent challenger here does not deeply engage with the constitutional question, but rather appears to use it as a constant interpretative reminder. GM’s brief does not mention the Constitution or its requirement to “promote the Progress.” Likewise, none of the Federal Circuit’s obviousness decisions from the past year discussed the doctrine in light of the Constitutional requirement.
I don’t think I’d ever read the Justice Douglas concurrence.
It’s interesting, but I think it takes purposivism way too far. It’s true that the constitution states a purpose for the patent laws. It’s also true that when you’re confronting difficult legal questions, the stated purpose of the laws might provide a useful clue. But I think it’s wrong to take that a step further and constitutionalize obviousness, or invalidate every patent or every patent law that a judge personally thinks doesn’t promote the progress of science and the useful arts. Eldred v. Ashcroft appears to reject similar reasoning for copyright laws at 211-14 ( link to scholar.google.com ).
And not that it should matter much who the author of an opinion is, but it seems relevant that Justice Douglas also wrote Griswold v. Connecticut, which includes the well-known statement that “specific guarantees in the Bill of Rights have penumbras, formed by emanations from those guarantees that help give them life and substance.” link to scholar.google.com The Great A&P concurrence sounds similar, like Justice Douglas would derive an obviousness standard from the penumbras and emanations of the constitution’s IP clause.
SCOTUS Justices don’t need no stinkin’ gadgets.
Dennis, I interpreted “As with utility patents, the U.S. Constitution and the Patent Act prohibit design patents on ordinary innovations” as just another way of saying that 101 and 103 are the same for both design and utility patents.
I am surprised at quoting, to a patent court, the notoriously anti-patent Justice Douglas Great A&P Tea Co. v. Supermarket Equip. Corp. case. Is Lemley hoping to get to the Sup. Ct. with this?
Paul, I read with astonishment the quotation from the A&P Tea case. I had been supposing that progress in the “useful arts” was to be encouraged just as much as progress in “science”. Was Justice Douglas reading “and” in the Patents Clause as conjunctive (as in “science and therefore inevitably also the useful arts”) rather than disjunctive (as in “one or both of science and the useful arts”) ? As for the claim in A&P, my feeling is that its subject matter (familiar to me from supermarket check-outs in the 1970’s) was very much deserving of a patent, that it was a major contribution to the useful arts, even if it made no contribution to “science”.
That was the notorious 1950 confusion by Justice Douglas of the two subjects of the Constitutional clause for patents AND copyrights, and the meaning at that long ago time of the word “science.” No one well-informed these days is that confused. As for the merits, Douglas is famous for only ever finding one patent valid – on the so-called leakproof flashlight batteries [steel jacketed] he took on his camping dates.
Paul, thanks for that post. I couldn’t help laughing out loud. Justice Douglas making full use of his privileged position as a person “skilled in the art” who knows a good thing when he sees it (even when it’s in the middle of the night).
Except MaxDrei, it is well known to be the opposite.
Privileges? certainly – but in every negative connotation of that word.
Person “skilled in the art?” Most decidedly NOT.
It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end—the advancement of science.
Design patents aren’t intended to advance science or the “useful arts.” They are to protect ornamentation — not utility. Design patents are more akin to trademarks, and the Constitutional basis for trademarks is the Commerce Clause — not the Patent Clause. With that in mind, I would argue that Design Patents shouldn’t be governed by whatever interpretative guidance is associated with the Patent Clause (and Utility Patents).
An argument that that the design patent statute is not even validly based on the Constitutional patent [and copyright] clause, but rather only properly on the commerce clause, is interesting. It would be really Constitutionally gutsy, and with interesting complications. But, of course, not the narrow 103 statutory interpretation change orally argued for here.
At this point, it also might be independently valid via the Hague treaty and the Supremacy Clause (and not otherwise forbidden by the Constitution).
I agree that so-called “design patents” are not based in the patent clause of the Constitution but rather in the commerce clause (or some other clause, or they are simply unconstitutional). Likewise with patents on instructions for computers.
“Likewise with patents on instructions for computers.”
As always Malcolm, please desist your own use of ANY utility provided by computers and software.
Hypocrite.
No one should mistake anything from Douglas – especially merely in a concurrence – as dispositive towards patent law as he has been EASILY one of the top five anti-patent Jurists of all time.
Quite the opposite, as it is on these boars, take what the anti-patents say and do the exact opposite.
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