B.Intellectual Property Law and Patents

Bonito Boats,Inc.v.Thunder Craft Boats,Inc.

United States Supreme court,1989

489 U.S.141

O’CONNOR,JUSTICE.

Article I,§ 8,cl.8 of the Constitution gives Congress the power“To promote the Progress of Science and useful Arts,by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”The Patent Clause itself reflects a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in the“Progress of Science and useful Arts.”As we have noted in the past,the Clause contains both a grant of power and certain limitations upon the exercise of that.Congress may not create patent monopolies of unlimited duration,nor may it“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.”Graham v.John Deere Co. (1966).

From their inception,the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy.Soon after the adoption of the Constitution,the First Congress enacted the Patent Act of 1790,which allowed the grant of a limited monopoly of 14 years to any applicant that“hath … invented or discovered any useful art,manufacture,… or device,or any improvement therein not before known or used.”In addition to novelty,the 1790 Act required that the invention be“sufficiently useful and important”to merit the 14-year right of exclusion.Section 2 of the Act required that the patentee deposit with the Secretary of State,a specification and if possible a model of the new invention,“which specification shall be so particular,and said models so exact,as not only to distinguish the invention or discovery from other things before known and used,but also to enable a workman or other person skilled in the art or manufacture … to make,construct,or use the same,to the end that the public may have the full benefit thereof,after the expiration of the patent term.”

The first Patent Act established an agency known by self-designation as the“Commissioners for the promotion of Useful Arts,”composed of the Secretary of State,the Secretary of the Department of War,and the Attorney General,any two of whom could grant a patent.Thomas Jefferson was the first Secretary of State,and the driving force behind early federal patent policy.For Jefferson,a central tenet of the patent system in a free market economy was that“a machine of which we were possessed,might be applied by every man to any use of which it is susceptible.”13 Writings of Thomas Jefferson,335 (Memorial ed.1904).He viewed a grant of patent rights in an idea already disclosed to the public as akin to an ex post facto law,“obstructing others in the use of what they possessed before.”Jefferson also played a large role in the drafting of our Nation’s second Patent Act,which became law in 1793.The Patent Act of 1793 carried over the requirement that the subject of a patent application be“not known or used before the application.”A defense to an infringement action was created where“the thing,thus secured by patent,was not originally discovered by the patentee,but had been in use,or had been described in some public work anterior to the supposed discovery of the patentee.”Thus,from the outset,federal patent law has been about the difficult business“of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent,and those which are not.”13 Writings of Thomas Jefferson,at 335.

Today’s patent statute is remarkably similar to the law as known to Jefferson in 1793.Protection is offered to“[w]hoever invents or discovers any new and useful process,machine,manufacture,or composition of matter,or any new and useful improvement thereof.”35 U.S.C.§ 101.Since 1842,Congress has also made protection available for“any new,original and ornamental design for an article of manufacture.”35 U.S.C.§ 171.To qualify for protection,a design must present an aesthetically pleasing appearance that is not dictated by function alone,and must satisfy the other criteria of patentability.The novelty requirement of patentability is presently expressed in 35 U.S.C.§§ 102(a) and (b),which provide:

A person shall be entitled to a patent unless –

(a) the invention was known or used by others in this country or patented or described in a printed publication in this or a foreign country,before the invention thereof by the applicant for patent,or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the date of application for patent in the United States ….

Section 102(a) and (b) operated in tandem to exclude from consideration for patent protection knowledge that is already available to the public.They express a congressional determination that the creation of a monopoly in such information would not only serve no socially useful purpose,but would in fact injure the public by removing existing knowledge from public use.From the Patent Act of 1790 to the present day,the public sale of an unpatented article has acted as a complete bar to federal protection of the idea embodied in the article thus placed in public commerce.

In the case of Pennock v.Dialogue,2 Pet.1,7L.Ed.327 (1829),Justice Story applied these principles under the patent law of 1800.The patentee had developed a new technique for the manufacture of rubber hose for the conveyance of air and fluids.The invention was reduced to practice in 1811,but letters patent were not sought and granted until 1818.In the interval,the patentee had licensed a third party to market the hose,and over 13,000 feet of the new product had been sold in the city of Philadelphia alone.The Court concluded that the patent was invalid due to the prior public sale,indicating that,“if [an inventor] suffers the thing he invented to go into public use,or to be publicly sold for use”“[h]is voluntary act or acquiescence in the public sale and use is an abandonment of his right.”The Court noted that under the common law of England,letter patent were unavailable for the protection of articles in public commerce at the time of the application,and that this same doctrine was immediately embodied in the first patent laws passed in this country.

As the holding of Pennock makes clear,the federal patent scheme creates a limited opportunity to obtain a property right in an idea.Once an inventor has decided to lift the veil of secrecy from his work,he must choose the protection of a federal patent or the dedication of his idea to the public at large.As Judge Learned Hand once put it:“[I]t is a condition upon the inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy or legal monopoly.”Metalizing Engineering Co.v.Kenyon Bearing & Auto Parts Co.,153 F.2d 516 (CA2),cert.denied,328 U.S.840 (1946).

In addition to the requirements of novelty and utility,the federal patent law has long required that an innovation not be anticipated by the prior art in the field.Even if a particular combination of elements is“novel”in the literal sense of the term,it will not qualify for federal patent protection if its contours are so traced by the existing technology in the field that the“improvement is the work of the skillful mechanic,not that of the inventor.”Hotchkiss v.Greenwood,11 How.248(1851).In 1952,Congress codified this judicially developed requirement in 35 U.S.C.§ 103,which refuses protection to new developments where“the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art to which said subject matter pertains.”The nonobviousness requirement extends the field of unpatentable material beyond that which is known to the public under § 102,to include that which could readily be deduced from publicly available material by a person of ordinary skill in the pertinent field of endeavor.See,Graham,Ibid.Taken together,the novelty and nonobviousness requirements express a congressional determination that the purposes behind the Patent Clause are best served by free competition and exploitation of either that which is already available to the public or that which may be readily discerned from publicly available material.See Aronson v.Quick Point Pencil Co.,440 U.S.257 (1979) (“[T]he stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the use of the public.”).

The applicant whose invention satisfies the requirements of novelty,nonobviousness,and utility,and who is willing to reveal to the public the substance of his discovery and“the best mode … of carrying out his invention,”35 U.S.C.§112,is granted“the right to exclude others from making,using,or selling the invention throughout the United States,”for a period of [20] years.The federal patent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure of new,useful,and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years.“[The inventor] may keep his invention secret and reap its fruits indefinitely.In consideration of its disclosure and the consequent benefit to the community,the patent is granted.An exclusive enjoyment is guaranteed him for seventeen years,but upon expiration of that period,the knowledge of the invention inures to the people,who are thus enabled without restriction to practice it and profit by its use.”United States.v Dubilier Condenser Corp.,289 U.S.178 (1933).

The attractiveness of such a bargain,and its effectiveness in inducing creative effort and disclosure of the results of that effort,depend almost entirely on a backdrop of free competition in the exploitation of unpatented designs and innovations.The novelty and nonobviousness requirements of patentability embody a congressional understanding,implicit in the Patent Clause itself,that free exploitation of ideas will be the rule,to which the protection of a federal patent is the exception.Moreover,the ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure.State law protection for techniques and designs whose disclosure has already been induced by market rewards may conflict with the very purpose of the patent laws by decreasing the range of ideas available as the building blocks of further innovation.The offer of federal protection from competitive exploitation of intellectual property would be rendered meaningless in a world where substantially similar state law protections were readily available.To a limited extent,the federal patent laws must determine not only what is protected,but also what is free for all to use.

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Notes and Comments

1.Justice O’Connor’s comments in Bonito Boats make a brief,yet classic textbook delineation of the philosophical background of the patent system,some of the concepts in which deserve your close attention,and which you should keep in mind for the entire course,such as the purpose of the patent system,the utility,novelty and nonobviousness requirements,and the standard for determining nonobviousness.

2.This case,Bonito Boats,Inc.v.Thunder Craft Boats,Inc.,involves a Florida statute prohibiting use of the direct molding process to duplicate unpatented boat hulls,or knowing sale of them.The statute came six years after Bonito Boats had marketed it products.It then sued Thunder Craft for violating that statute for temporary and permanent injunctions,accounting of profit,treble damages,and punitive damages,plus attorney fees.Defendant,a Tennessee corporation,challenged the Florida statute on the grounds that it conflicted with federal patent law in granting unlimited protection of design ideas that may be unpatentable or even under expired patents.

3.Subsequent development: Congress in 1998 enacted the Vessel Hull Design Protection Act (VHDPA) to offer a copyright-like protection for hull designs,but it came too late for Bonito Boats,which went out of business in 1991.

4.This case dealt mainly with conflict between a state legislation and congressional power delegated by the constitutional provision for patent and copyright,a constitutional issue that ushered this case into the Supreme Court.A similar issue was raised in Cheney Bros v.Doris Silk Corp. (see our Textbook of Property Law) where plaintiff merely sought protection of silk design,for only one season,which was not copyrightable or patentable or patent-worthy.Judge Learned Hand refused to allow such protection,for there was neither traditional common law nor statutory basis.But that case did not touch upon supremacy issue since state protection was denied.