A Helping Learned Hand
Judge Learned Hand continues to garner citations in U.S. Supreme Court opinions, in patent law and elsewhere. For example, the “ready for patenting” standard the Court adopted for section 102(b) in Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998), comes verbatim from Judge Hand’s opinion in Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 520 (2d Cir. 1946).
With the recent cert grant in KSR v. Teleflex, on the question whether proof of a suggestion to combine is necessary to show an invention would have been obvious, attention may once again turn to Judge Hand’s patent law jurisprudence. Judge Hand was an especially eloquent proponent of using nuanced, careful analysis of (what we now call) “secondary considerations” evidence to help determine whether an invention would have been obvious. I’ve recently had a research assistant cataloguing some of Judge Hand’s opinions about obviousness law (then called “invention,” of course), especially opinions closely focused on longfelt unmet need, the failure of others, and commercial success of the invention. These opinions, which I’ve been reading, are a delight! He often provides lucid, helpful discussion of why “secondary considerations” evidence, especially about the failure of others and longfelt unmet need, can be such a powerful aid in analyzing obviousness questions.
Below the fold, I list some of the more meaty of these opinions from Judge Learned Hand. Enjoy!
Trial court decisions:
- Whire Weel Corp. v. CT Silver, Inc., 266 Fed. 221 (S.D.N.Y. 1919)
- Scott & Williams v. Aristo Hosiery Co., 300 Fed. 622 (S.D.N.Y. 1924)
- Van Heusen Prods. v. Earl & Wilson, 300 Fed. 922 (S.D.N.Y. 1924)
Appellate court decisions:
- National Sweeper Co. v. Bissell Carpet Sweeper Co., 249 Fed. 196 (2d Cir. 1918)
- B.G. Corp. v. Walter Kidde & Co., 79 F.2d 20 (2d Cir. 1935)
- Dewey & Almy Chem. Co. v. Mimex Co., 124 F.2d 986 (2d Cir. 1942)
- Lyon v. Bausch & Lomb Optical Co., 224 F.2d 530 (2d Cir. 1955)
- Reiner v. I. Leon Co., 285 F.2d 501 (2d Cir. 1960)
- Norman v. Lawrence, 285 F.2d 505 (2d Cir. 1960)
Was it Learned Hand who wrote that the bad patent takes away from the public what it already had, whereas the good one gives the public something it didn’t have before?
What about the patent with one “good” claim but, at the same time, 9 “bad” ones, that include within their area something the public had already? Seems like a “bad” patent to me.
As I understand it, Europe says that such a patent is invalid and the invalidity must be cured before the patent is enforceable, whereas USA says it doesn’t matter how many bad claims are there, just as long as the asserted claim is OK.
Might that explain the behaviour of Applicants at the USPTO, taking untenable claims through to issue?
So, how about the Reform Act of 2007 including something that makes it preferable to go to issue with a claim set in which ALL claims can withstand validity attacks brought on a “preponderance of evidence” standard?
Comment by MaxDrei — July 15, 2006 @ 5:39 am
Max,
No question that a preponderance standard is more fitting, given the light scrutiny applications receive while at the Patent Office.
As for whether we should let each claim stand (or fall) on its own, without regard to whether any other claim in the patent is (in)valid, I think it’s a reasonable way to let applicants cope with the uncertainties in prosecution and court enforcement. Specifically, allowing a patentee to offer a number of claims, of progressively narrower scope, seems a good way to help everyone get close enough to the best answer on patent scope at reasonable prosecution cost.
Joe
Comment by Joe — July 16, 2006 @ 10:29 pm
Joe, I am not trying to supplant the onion ring concept of writing claim sets, just suggesting some sort of mechanism to leave patent owners inconvenienced, if their broadest claims are untenable. Example, Plaintiff has to excise the invalid claims before she can have her injunctive relief. For added impact, you could throw in the provision that applications to amend are opposable. Bit draconian, but it would sure make Applicants think, before going to issue with claims which they know, from their knowledge of the art, are untenable when contested (by a competitor, and the preponderance standard). The way I see it, Applicants are deliberately going to issue with untenable claims because “the system” gives them an advantage when they do. Until that gets fixed, the problems will continue.
Comment by MaxDrei — July 17, 2006 @ 11:35 pm
Howdy,
I am a 1L at the University of St. Thomas in Mpls, MN. I am 56 yrs old. We had an assignment for a class that included interviewing an atty. I chose my Dad, John Gould and he told a good story about a case he tried before Judge Hand. teh cite is 276 F2d 204.
Comment by Jim Gould — March 30, 2010 @ 12:01 pm
Thanks, I’ll take a look!
Comment by Joe Miller — March 30, 2010 @ 1:11 pm