Hazeltine Research, Inc. v. Brenner

PETITIONER:Hazeltine Research, Inc.
RESPONDENT:Brenner
LOCATION:Congress

DOCKET NO.: 57
DECIDED BY: Warren Court (1965-1967)
LOWER COURT: United States Court of Appeals for the District of Columbia Circuit

CITATION: 382 US 252 (1965)
ARGUED: Nov 17, 1965
DECIDED: Dec 08, 1965

Facts of the case

Question

Audio Transcription for Oral Argument – November 17, 1965 in Hazeltine Research, Inc. v. Brenner

Earl Warren:

Research Incorporated et al., petitioner versus Edward J. Brenner, Commissioner of Patents.

Mr. Dodds.

Laurence B. Dodds:

Mr. Chief Justice and Associate Justices, may it please the Court.

Fortunately, the factual situation presented by this case is somewhat less complex than the one heard at the conclusion of the session yesterday.

It can be very simply stated and this factual situation raises a single issue of law.

As to the facts an inventor by the name of Robert Regis made an invention on a microwave switch and filed an application in the Patent Office in 1957.

Briefly, microwave switch is a device which is useful in connecting and disconnecting a microwave transmitter station from it’s antenna as principally used for example in radar installations.

However, fortunately since the subject matter is quite complex, the issues involved do not require going into the details of that device.

Now, after that application was filed in 1957 and certain preliminary proceedings in the Patent Office which are not material here, in 1959 the examiner of the Patent Office finally rejected the claims of Regis saying and “as being unpatentable over Wallace in view of Carlson” and that is the Wallace patent 2822526 and Carlson patent 2491644 reproduced in the record.

Those — that decision of the primary examiner was affirmed by the Patent Office Board of Appeals and by the courts below.

Now, the respondent neither in the Patent Office nor in the courts below contended that either of these two reference patents, the Wallace patent or the Carlson patent individually was in anticipation of the Regis invention, but what it contended was that if one were to combine the invention of Wallace with the invention of Carlson then as imagine — as an engineering matter that combination would have been obvious and would have resulted in the structure defined by the claims in Regis application.

That would be alright but for this fact.

At the time that Regis filed it’s patent application in 1957, the Wallace disclosure was found solely in an application which was maintained in secrecy in the Patent Office and was not available to Regis nor to any other workers in the art who at that time might have been attempting to devise the Regis microwave switch.

The Wallace application and the resulting patent is what has been come to be known in the jargon of the Patent Law as a co-pending patent, that is a patent which was filed before the patent on controversy but did not issue until later.

So that there was a period in which both the so called reference patent and the application or patent under consideration were both pending in the Patent Office and both maintain in secrecy.

Now, the respondent in this case relies solely on Section 103 of Title XXXV United Stated Code, the 1952 Patent Act and they will have a little more to say about that later, and the respondent contends that notwithstanding the fact that the Wallace patent was at the time a secret application in the Patent Office that it was and a “prior art” as that term is used in Section 103.

And therefore, the invention or the disclosure of Wallace could be combined with, taken together with that in earlier patents which were admittedly prior art to show that what Regis did was an obvious thing to do under Section 103 of the statute.

Now as is petitioner’s position however, that as a matter of law the Wallace patent, as of it’s filing date, was not a part of the prior art as that term is used in Section103 of the statute and was not competent evidence to show whether or not what Regis did would have been obvious to that mythical man skilled in the art at the time that Regis made his invention.

Therefore, the sole issue of law presented on this petition is whether such a co-pending patent which is maintained in secrecy in the Patent Office until it issues is a part of that general fund of knowledge come to be known as the prior art as that term is used in Section 103 of the statute.

Now, this Section 103 is the only section of the patent statutes which define for the term and conditions for patentability which uses this term prior art.

And it reads in part, “If 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, at the time the invention was made to a person having ordinary skill in the art.”

Now, at the time the invention made as far as we’re discussing here was at the time that Regis filed his patent application.

It had not been — there has been no occasion for attempting to establish an earlier date of invention.

Now, the statutes nowhere explicitly define this term prior art, but there were many decisions of the courts, the lower and the superior courts going back a 100 years which did define the term prior art and in this case there is also, we have some assistance from the report of the Committee of the Judiciary in reporting out the 1952 Patent Act.

That report and referred to that in the petitioner’s brief, says that Section 103 was the first statutory statement of this particular condition for patentability which is sometimes been referred to as defining what is invention, an illusive term, and that report said Section 103 states this requirement of patentability in the Title.

It refers to the difference between the subject matter sought to be patented and the prior art meaning what was known before as described in Section 102.

Now, here we have a definition of prior art.

It is, meaning what was known before as described in Section 102.

But now, it appears that Section 102 was described — which defines most of the conditions for patentability has seven subsections, but of those only the first ones subsection A refers — uses this language what was known before.

And the Committee report in discussing this Section 102 (a) again gives a definition of “What was known before,” and I quote again briefly.

Laurence B. Dodds:

Section 102 in paragraphs a, b, and c repeats the conditions in the existing law relating to novelty.

Subsection a, and that’s the one we’re concerned with, is the language of the existing law recognizing that the interpretation by the Courts excludes various kinds of private knowledge not known to the pubic.

And continuing, the interpretation by the Courts of paragraph a, and that’s the Section 102 (a), as being more restricted than the actual language would suggest, (for example known has been held to mean publicly known) is recognized.

So summarizing this chain, we find that in determining what prior art means under Section 103, it says what was means, what was known before as defined in Section 102 and we turn to 102 (a) and it says what was known before means what was publicly known before.

So that in this instance the Wallace patent that we’re talking about which was, at the time the Regis application was filed, a secret application in the Patent Office, was certainly not “prior public knowledge” and we submit that it was not prior art available under Section 103 of the statute upon which the respondent places sole reliance on this petition.

In addition to the Committee report to which I have referred there have been many decisions over the years, many of the leading decisions, involving what the Committee referred to as the interpretation by the courts to the effect that prior knowledge, and that’s used in Section 102, is limited to prior public knowledge.

Those authorities are set forth and analyzed in the brief and I won’t repeat them at this time.

Now, going back again, the patent office said that Regis could not have this patent because the invention was unpatentable over Wallace in view of Carlson.

Now that is what to be known in the patent regarded again as a combination rejection.

The disclosures of two or more patents or publications are considered together and combined together to build up a structure, which is shown to be the equivalent of a structure, which is being claimed.

And whenever a rejection of that sort is being made it is by the authority of Section 103 referring to one of the conditions of patentability that the invention shall not have been obvious over the prior art.

But, and I repeat at the time that Regis made his invention, the Wallace patent was not a part of the prior public knowledge and it was not a prior part of the prior art and it could not be used to show in conjunction with another invention, the invention of Carlson to show whether or not what Regis did was amounted — or did amount to invention.

We also submit Your Honors that the better reasoned decision —

William J. Brennan, Jr.:

Excuse me, may I ask —

Laurence B. Dodds:

Yes sir.

William J. Brennan, Jr.:

Do you consider subdivision e of 102 to have any relevancy to this question?

Laurence B. Dodds:

Your Honor, I definitely do not and as a matte of fact in my brief I referred to a decision, a recent decision by the Court of Customs and Patent Appeals which said expressly that Section 102 (e) had nothing — I’m sorry that was one 102 (b), it had nothing whatever to do with 103.

Well, it’s our position that 102 (e) likewise has nothing to do with 103.

William J. Brennan, Jr.:

Well on the face of it, it shall be entitled with the patent unless the invention was described in an application for patent by another filed before the invention thereof by the applicant for patent.

On the face of it, it seems that it fits this case that —

Laurence B. Dodds:

Well, that would be true Your Honor.

If the Wallace patent or an — or something insignificant variations of the Wallace patent showed the Regis invention, if that were so, we wouldn’t be here.

We recognize that.

There’s no question that the Wallace patent is a reference under, if it can be used, under 102 (e) to show under the — that that section of that statute uses the word the invention, not some different invention.

But here it is not contended that the Wallace patent chose the invention and as a matter of fact the District Court in its opinion explicitly holds that it held that it is not.

At page 70 (a) of the record the District Court in it’s opinion said neither the Wallace et al patent nor the Carlson patent alone anticipates the invention described in the claims and suit.

Now, that’s the finding effect of the District Court, which I believe had not been challenged and I believe it’s binding on the appellate tribunals.

William J. Brennan, Jr.:

So your answer is that it does not fit this case because the invention involved in the Regis patent was not —

Laurence B. Dodds:

In Wallace.

William J. Brennan, Jr.:

In Wallace.

Laurence B. Dodds:

That’s correct Your Honor.

Byron R. White:

And Regis wouldn’t infringe either Wallace or Carlson?

Laurence B. Dodds:

Neither Wallace or Carlson.

The only way that would be possible to attempt to reconstruct Regis invention was to add those two inventions together and on that it has to become under Section 103 Your Honor.

Now, I’d like to make a few comments on the respondent’s brief.

This 1952 Patent Act is a little art in a way.

The Section 102 has seven subsections and Section 103 just a single section, but they all expressed negatively.

They say that inventor is entitled to a patent unless one of these, what they term conditions for patentability is satisfied.

Now, respondent in its brief cites numerous authorities under Section 102 which Your Honor referred to or under the Alexander Milburn case of this Court which Section 102 (e) codified showing that a co-pending patent for that purpose was a proper reference and we concede that that is a fact.

But they then from that specific showing attempt to generalize and say “Well, the co-pending patent is relevant, as they say relevant to patentability because it was relevant under this one condition of patentability,” but it then attempted to extend that to all the other conditions of patentability, some of which are very clearly inapplicable because this doesn’t make any sense.

Now we say that it’s a complete non sequitor.

The fact that because the Wallace patent maybe a reference under Section 102 (e) that it’s there — by automatically becomes a reference and therefore as they say relevant to patentability under all the other sections of the Act.

And that the Courts have not so held that we do — that it was a logical too and there within the meaning or the theory of the Congress to passing that Act.

There’s one other comment which I would like to make with respect to respondent’s brief and that is it repeatedly, what we believe misstates the factual situation by reiterating the assertion that the Regis invention is but an insignificant advance over the Wallace patent.

Now we have just referred to that.

If that were true as Mr. Justice Brennan said, Section 102 in the prior we wouldn’t — but applying we wouldn’t be here, but it is not true.

In our brief I have referred to some of these repeated statements which we believe are misstatements.

For example, at page 29 in it’s brief that states “Now, if both Wallace and Regis patents were to issue for example, a member of the public wishing to use the single patentable invention of Regis and Wallace embodied in both might have to obtain license from both patentees and Wallace the prior inventor might have to obtain a license from Regis, but that is such not the fact, but that assertion or its equivalent is repeated.

So in conclusion, we submit that the Court, the judgment as the Court below should be reversed first because maybe Wallace patent or – nor Carlson patent shows that Regis was not the first inventor under Section 102 (e).

And secondly, Wallace patent is not a part of the prior art which then refers that general fund of knowledge available to those go in the art to determine whether the quantum, the amount of advance which Regis made over that prior art allotted to a patentable invention.

Thank you.

Earl Warren:

Mr. Doolittle.

J. William Doolittle, Jr.:

Mr. Chief Justice, may it please the Court.

This is one of several cases before the Court this term involving the broad question of whether or not the lower federal courts have properly limited the award of patent monopoly by maintaining adequate standards of patentability.

This case differs from the others in that here the courts below properly, we submit, resisted the applicant’s efforts to lower the standards of patentability and that’s to enlarge the patent monopoly. Precise question presented here is whether a co-pending patent is a relevant reference in determining whether an applicant has made a patentable advance in the art under Section 103 of the Patent Act of 1952 and as petitioner’s counsel has indicated the petitioner’s position is that it is not so available.

So that a patent could issue on an application notwithstanding that an earlier filed co-pending patent had disclosed everything in that application, except what is obvious to the ones field in the art.

In other words, petitioners will allow a patent issue on an application disclosing no patentable advance over a prior patent and of course, that is exactly what this case involves.

The petitioners having conceded that the advance which the Regis application made over the co-pending Wallace patent was an unpatentable obvious one in view of the Carlson invention.

Earl Warren:

Could you speak a little louder please, Mr. Doolittle.

J. William Doolittle, Jr.:

Yes Your Honor.

J. William Doolittle, Jr.:

Now, the counsel has focused specifically on the government’s use of the word insignificant in referring to this advance, the advance that the Regis application made over the Wallace application.

Perhaps it would be a good idea to say insignificant for purposes of the patent laws because the fact is the advance was an unpatentable advance in the eyes of the patent laws because as is universally conceded, it was an obvious advance.

Now I should like to pause for a moment.

Earl Warren:

Did the courts below used the word insignificant?

J. William Doolittle, Jr.:

No, they didn’t Your Honor.

No, they didn’t.

It’s as I say, when we say insignificant we mean insignificant in view of the patent laws, unpatentable, an advance that could not serve as the basis for a patent.

Potter Stewart:

That’s saying the essential questions, isn’t it?

J. William Doolittle, Jr.:

Well, Your Honor it isn’t in the sense that an obvious advance is an unpatentable advance, and you have to make a qualification on that general concept in order to come out the way petitioners would have you come up.

In other words, you have to say “Well, we’re going to make an exception.

We’re going to give a patent for an unpatentable advance or for what would otherwise be an unpatentable advance in this instance because as I say it is an advance that is universally considered to be an obvious one which Section 103 says —

Potter Stewart:

Not a — that’s not a patentable departure from the prior art, it’s not patentable to something that is, is?

J. William Doolittle, Jr.:

But it is a patentable advance, it is an unpatentable advance over a prior patent.

They’re going to be two — if a patent is issued there are going to be two patents available, one of which is going to be an obvious one in light of the other one.

That – that much can’t be —

Potter Stewart:

Well — that might be the other one end something else?

J. William Doolittle, Jr.:

Well, it is the something else that makes it obvious, but you’re right it is the combination of the two.

But the fact is that there are going to be two patents that — where the difference is obvious between the two.

I would like for a moment just to try to place petitioner’s position in each proper context.

Now, petitioners recognize that a so-pending patent is available to show a disclosure identical to the disclosure of the application in issue.

However, petitioners would make a co-pending patent unavailable where its disclosure is not identical to that of the application, but where the difference in disclosures is so insubstantial as to be obvious to one skilled in the art.

Second, petitioners recognize that all other references that are available to show identical disclosures are also available to show obviousness that petitioners would single out this one kind of reference co-pending patents for special treatment.

And thirdly, petitioners recognize that if the co-pending patent here had issued just two months earlier than it did, that is after three years and eight months in the Patent Office rather than three years and ten months, the disclosure of the Regis application would have been unpatentable.

Their contention is that the passage of these two months rendered that application, rendered the disclosure and that application patentable.

We submit that this position was contrary to both the letter and the spirit of the Patent Act and should be rejected by this Court.

Abe Fortas:

Mr. Doolittle, I’m —

Earl Warren:

Oh!

Pardon me.

Abe Fortas:

I beg your pardon.

Earl Warren:

Go right ahead.

Abe Fortas:

I’m not sure that I quite understand whether your statement of petitioner’s position is in fact the petitioner’s position.

In making the distinction of 102 — like in distinguishing 102 (e) I thought it was petitioner’s position that the article here would be patentable if you consider only the Wallace invention.

And that petitioner’s point is that considering Wallace in view of Carlson, there’s no invention here but that if you consider Wallace alone that this was a significant advance in terms of the Patent Act.

J. William Doolittle, Jr.:

Well, Your Honor —

Abe Fortas:

I’m not sure that I have —

J. William Doolittle, Jr.:

As I understand —

Abe Fortas:

— if I’m correct about this, but I did get a different impression of the petitioner’s position?

J. William Doolittle, Jr.:

As I understand the petitioner’s position is and this — what I’m stating is not only the petitioner’s position but the government’s position as well, that the Wallace application, the Wallace patent did not fully disclose the Regis disclosure, and therefore, Section 102 (e) is not strictly speaking applicable.

We do not contend otherwise, but that is not to say that the Wallace patent by itself, I strike the by itself but that the Wallace patent does not render the Regis application unpatentable.

You can’t take it out of the context of the fact that the Carlson patent was already on the books.

It was available to the — to those skilled in the arts and knowing what they know because of the existence of the Carlson patent, they knew that the — it would be obvious to go from the Wallace disclosure to the Regis disclosure.

But it’s true that neither Wallace nor Carlson in and of itself, just all by itself made the disclosure of the Regis application.

For that reason, we do not rely on Section 102 (e).

Mr. Chief Justice did —

Earl Warren:

No, go right ahead.

J. William Doolittle, Jr.:

I thought you had a question, I’m sorry.

Now, the basic doctrine on co-pending patents was initially set forth by this Court in the Alexander Milburn case which the counsel for the petitioners we’ve already referred to, a 1926 decision of this Court in which Mr. Justice Holmes declared for an unanimous Court that co-pending patents are available references on the issue of patentability.

Now, that case involved a co-pending patent that made an identical disclosure, but the reasoning of the Court applied equally to co-pending patents who’s disclosures rendered an application obvious.

Thus the Court emphasized the irrationality of penalizing a prior applicant and rewarding a subsequent applicant for the delays of the Patent Office, a consideration no less applicable where the prior application fully discloses the invention and it is where it disclose is enough to make the invention obvious.

That no distinction could be drawn between these two kinds of disclosures it was authoritatively settled by this Court in Detrola Corporation against Hazeltine Corporation in 1941, that’s 313 U. S.

There the Court in our judgment expressly ruled that co-pending patents disclosing all but the obvious are available references on the issue of patentability.

We’ve discussed that case at pages 14 and 15 of our brief.

You’ll notice at the bottom of page 14, the portions we quote.

The Court specifically says that co-pending patents are among those that constitute the prior art and now on page 15, the portion that we quote makes it clear that the Court was focusing not on the question of identical disclosure, but on the question of obviousness.

Note the final phrase since it’s advance over the prior art if any required only the exercise of the skill of the art that we submit is a clear statement that the Court was speaking in terms of the obviousness issue.

That is to say that Section 103 issue as opposed to the Section 102 issue.

Now, among the lower court’s, while there was a certain amount of confusion over terminology, the great majority of the lower court decisions rendered between the Milburn case and the 1952 Act were in accord with the Detrola decision.

Now, one of these 1952 cases does deserve special mention we think, that’s Western States Machine Company against SS Hepworth Company, a 1945 Second Circuit decision rendered by Judge Learned Hand, that’s discussed at pages 16 to 18 of our brief.

There Judge Hand not only expressly recognized the Detrola case as settling the availability of co-pending patents to show unpatentability for obviousness but he painstakingly explained why there is no rational basis for treating co-pending patents differently depending on whether they make an identical disclosure or one that makes the application in question obvious.

Thus, as of 1952 it had been authoritatively settled by decisions of this Court and of the lower courts that co-pending patents are among the references available in judging obviousness.

J. William Doolittle, Jr.:

In that year the Congress enacted as a part of the Patent Act Section 103 which was the first time codified the rule that the invention is not patentable where the prior art, although not fully disclosing it, has rendered it obvious and “to a person having ordinary skill in the art.”

Earl Warren:

Was there enough disclosure of the Wallace patent to make the advance obvious to — of this —

J. William Doolittle, Jr.:

Well, as the examiner put it, there was in light of the Carlson patent that is the — those are the words that the patent examiner used and that those essentially are the words that for purposes of this case, the petitioner has agreed adequately described the situation, yes Your Honor.

Potter Stewart:

That was no disclosure — that is no public disclosure of the Wallace patent, was it?

J. William Doolittle, Jr.:

No public disclosure.

Potter Stewart:

It was secret?

J. William Doolittle, Jr.:

It was secret until it issued.

Earl Warren:

Well, that was I was referring to.

Is there any public disclosure —

J. William Doolittle, Jr.:

As of the time —

Earl Warren:

— that bear upon the obviousness?

J. William Doolittle, Jr.:

As of the time that the Regis application was filed.

Of course, the Carlson application had it.

The Carlson patent had issued.

Abe Fortas:

Yes, that I —

J. William Doolittle, Jr.:

So that that much of the — that much of the art was familiar, but and was public knowledge but it is a fact as to which there is no serious question that as of the time that the Regis application was filed the disclosures of the Wallace patent were secret.

They were maintained in secrecy under the rules of the Patent Office.

Now, we believe that it’s clear —

Earl Warren:

Now, if I may interrupt you just once more, how does that square with the statement of the examiner that you just mentioned that there was sufficient disclosure of the Wallace patent when taken in connection with the Carlson patent to put them on notice?

J. William Doolittle, Jr.:

Well, of course, I might say as of the time that the examiner made that statement, the Wallace patent had already issued, but of course the question is not whether or not the petitioner or to say whether or not the applicant was on notice.

The patent laws are not concerned with questions of notice.

I shall develop somewhat more fully —

Earl Warren:

I thought that the prior art did in fact form general knowledge in the knowledge of people through publications or to the patents that this was a prior art?

J. William Doolittle, Jr.:

Well, we agree that as described in Section 102 (a) that does generally describe the public knowledge of which patentees are noticed where they actually know of it or not.

Earl Warren:

Yes.

J. William Doolittle, Jr.:

But we also contend that the patent laws require that in this instance material that could not have been known to the patentee, to the applicant is chargeable against him in order that dual patent is not issued on essentially the same material or a material that does not differ in any patentable way.

Of course, if there is a complete disclosure, if the Wallace patent had completely disclosed the Regis application, the petitioner would agree the Regis application could not have issued and yet Regis would not have known of it as of the time he filed his application.

Now, we’re just saying that —

William J. Brennan, Jr.:

That would be by force of subdivision (e).

J. William Doolittle, Jr.:

102 (e), that’s right Your Honor.

J. William Doolittle, Jr.:

And —

William J. Brennan, Jr.:

And that’s the — I’m just wondering how that can face that there is an explicit (e) that would cover that situation and how that’s fortunate because —

J. William Doolittle, Jr.:

Well, I’m simply saying that under the way in which the patent laws are set up basically as I was really about to develop, Section 103 we believe incorporates the references of Section 102.

The face of Section 103 in fact refers to Section 102 and the legislative history makes it clear that 103 is referring back to 102.

It doesn’t say it’s referring back to 102 (a) which is the way the petitioner would read it. They would say the only part of 102 that is incorporated is 102 (a).

Nothing about that in the statute or the legislative history, the references are to 102 generally and we say that the intention was clear that it would include other subsections of 102 including 102 (e).

And of course, as of 1952 as I’ve indicated the courts had held that co-pending patents were prior art for purposes of determining obviousness.

William J. Brennan, Jr.:

What was the date of Judge Hand’s —

J. William Doolittle, Jr.:

1945 Your Honor.

William J. Brennan, Jr.:

That question states it.

J. William Doolittle, Jr.:

Yes sir.

Byron R. White:

Do you need to make this point about 102 (e) or why does 102 (a) get to as far as you need to go?

J. William Doolittle, Jr.:

Because 102 (a) is generally considered as covering things that were publicly known.

Byron R. White:

Well, I don’t know why it should be when it says the invention is known or used by others.

It doesn’t say that — I mean if I know something I don’t need — I could still — not tell anybody else and if I can use something I don’t need to tell anybody else.

J. William Doolittle, Jr.:

In fact of course —

Byron R. White:

I can have a trade secret — secret process and they’re using it and knowing it, nobody else knows about it.

J. William Doolittle, Jr.:

Well, of course —

Byron R. White:

And I know why that wouldn’t be a decent part of the prior art though, wouldn’t it?

J. William Doolittle, Jr.:

In fact, of course we don’t — we don’t rely on 102 (e).

We rely on 103 and simply say that a co-pending patent is a part of the prior art but —

Byron R. White:

But I don’t — but you’re saying that the reference of prior art in 103 includes 102 (e).

Now, I’m just wondering why you needed to have any references — then on subsection (a).

J. William Doolittle, Jr.:

Well, the known part of it of course, would not be satisfied with the co-pending patent.

I don’t suppose to used part of it would if there was no use other than the filing of the application.

Byron R. White:

Well, the invitation was known — it was certainly was known by the people —

J. William Doolittle, Jr.:

It was known by the people who actually filed the application that’s right Your Honor.

Let me just say out of an abundance of caution that we’re relying primarily on Section 102 (e).

William J. Brennan, Jr.:

One of it is relying primary on —

J. William Doolittle, Jr.:

Well, on 103 as incorporating co-pending patents which are covered in 102 (e) specifically.

Earl Warren:

That means, you do not rely on the other side too?

J. William Doolittle, Jr.:

We do not Your Honor.

Potter Stewart:

Cases are all against you on 102 (a), a good reason you don’t rely on it much?[Laughter]

J. William Doolittle, Jr.:

Now, as I began to say to Mr. Justice Brennan Your Honors as of 1952 the decisions of this Court had established without any question that on the issue of obviousness co-pending patents were available references.

And we do not believe that it can be easily assumed that the Congress would have abrogated those decisions without specifically saying so.

Quite the contrary of course, Congress made it quite clear and in acting the Patent Act of 1952 and specifically with respect to Section 103 that it was intending to codify existing law both statutory and decisional.

Now in the year subsequent to 1952, the Court of Customs and Patent Appeals has consistency ruled that co-pending patents are available references under Section 103 and of course the District of Columbia Circuit on meeting the question for the first time in the present case has adopted that view.

Now, the petitioner has placed great emphasis on the alleged unfairness of using as a reference, a co-pending patent of which an applicant cannot have been aware when he filed his application because of the secrecy accorded patent applications.

This argument we believe misconceives the essential nature of the patent laws.

The public does not give patents as a price or cleverness or even ingenuity.

It bestows a monopoly in exchange for a measurable benefit to the public in the way of an advance in the useful arts and plainly enough an invention that has been rendered obvious by a prior co-pending patent is if no benefit to the public irrespective of whether or not the applicant himself may have known about it.

Thus, the test of patentability if not whether an applicant subjectively believes or has reason to believe he had made an application — made an invention but whether the invention represents a significant advance over the art objectively viewed.

This objectivity of the patent laws is manifested in a number of ways.

An applicant is charged with knowledge of all of the vast literature in the field including obscure foreign publications of which you couldn’t possibly be expected to have knowledge.

An applicant who has conceived a truly inventive idea through a genuine stroke of genius would be denied a patent if someone else had the idea unbeknown to him just a day or two before.

And as petitioners concede, an applicant will be denied a patent if a co-pending patent of which he could not possibly have been aware because of its secrecy fully disclosed his invention.

In short, we see no place for an argument that is — that it is unfair to reject an application that discloses no patentable advance in the art and hence cannot bestow any benefit on the public.

Frankly, if there is an issue of fairness in this case, we believe it is the public interest in the due circumscription of the patents monopoly that would be dealt with unfairly if petitioner’s view were to prevail.

That —

Byron R. White:

Mr. Doolittle?

J. William Doolittle, Jr.:

Yes Your Honor.

Byron R. White:

What if Wallace hadn’t filed for a patent at all?

He had just started using the process, but it was a secret process and then this patentee — then the same question comes up whether this — what’s this fellow’s name — Regis files for a patent.

And if the patent issued and then finds out that Wallace is using — well, he sues somebody for infringement and then had claimed that his patent was invalid because Wallace was using a process which would make his patent obvious.

J. William Doolittle, Jr.:

Well Wallace —

Byron R. White:

You would the same question —

J. William Doolittle, Jr.:

Wallace would certainly be in a position to contend of course that he was the first inventor and to get an application — get a patent granted on that account.

I do have —

Byron R. White:

I’m just wondering what are the secret processes, the trade secrets that are being use prior to this — or part of the prior art secret processes that someone is using as part of the prior art.

J. William Doolittle, Jr.:

I’m afraid I don’t have the answer to that Your Honor.

Byron R. White:

It should be a similar question shouldn’t it?

J. William Doolittle, Jr.:

Well, certainly in the sense of whether or not one has to be aware of the prior art it would present —

Byron R. White:

Or even have an opportunity to be —

J. William Doolittle, Jr.:

Yes, yes Your Honor, that’s right.

Potter Stewart:

I didn’t quite understand your answer.

J. William Doolittle, Jr.:

Well, I simply said that — that the questions are similar in the sense that in both situations there is some prior art or some prior use or what have you of which the applicant would have no way of discovering.

Potter Stewart:

Yes, but the questions are entirely dissimilar are they not?

The way you present the case, you rely exclusively and told the Chief Justice on 102 (e) and by hypothesis that my expression —

J. William Doolittle, Jr.:

We require no application.

We rely on Section 103 Your Honor but —

Potter Stewart:

And as it refers to 102 (e)?

J. William Doolittle, Jr.:

Yes Your Honor.

Potter Stewart:

So I still don’t understand, I don’t understand what answer you gave to this question.

J. William Doolittle, Jr.:

Well, the specific answer I gave was as far as a secret process I express my doubt that on the issue of patentability other than determining who was the first inventor I express my doubt that that would preclude the issuance of a patent.

Earl Warren:

Without regard to what the cases might hold in this field isn’t your argument — doesn’t your argument give us all that they started to viewed to the meaning of obvious?

J. William Doolittle, Jr.:

Not at all Your Honor.

Earl Warren:

How would it be obvious to a man if he had no way, if there was no possible way that he could find out what the art was?

J. William Doolittle, Jr.:

Well, of course it would not be obvious to him since he couldn’t be aware of it.

Earl Warren:

Or to anyone?

J. William Doolittle, Jr.:

As I have said, the patent laws operate in terms of objective advances in the art, not in terms of what a person in and of himself could know at any given time and I’ve given a number of examples in which the patent law resembles exactly that.

For example, you’ve just — we’ve just talked about Section 102 (e) itself.

Is that any less fair to say that when there’s another patent, another application pending of which the applicant could not possible have known where that fully discloses his patent, his invention that the applicant is not entitled to the issuance of the patent, yet that is exactly what Section 102 (e) does demonstrate.

Earl Warren:

That must be on a — I would think it might be another theory, but not on the theory that it’s obvious.

J. William Doolittle, Jr.:

It’s not on a theory that it’s obvious but on a theory that’s identical.

It’s more than obvious, it’s identical.

And we simply say that there’s no reason why that same rule shouldn’t apply to the invention that is rendered obvious by what is already been filed.

We believe that petitioners due to the contrary would allow a patent to issue for what must objectively be recognized as an unpatentable variation on an issue patent and to that extent we believed the standards of patentability would be clearly lowered.

Applicants would reap completely undeserved and fortuitous windfalls as a result of the delays inherent in the patent application process.

And we believe that users of inventions would be faced with a possible necessity of obtaining multiple licenses for the same invention.

Indeed, we believe that prior patentees would even have to obtain a license to practice obvious variations on their own patents.

J. William Doolittle, Jr.:

Now, the petitioners have indicated to the contrary.

However, we believe that if Wallace we believe first that Wallace was entitled to practice obvious variations on his own patent and that he was entitled to sue for infringement of anyone who made an obvious variation on his patent and that would certainly include the Regis application, the Regis invention, under the agreed facts of this case.

We believe there is no question but that Wallace would have been entitled or would be entitled to sue for infringement on the Regis patent or the Regis invention unless of course, the patent should issue and if a patent should issue that would mean that Wallace, an inventor would have to get a license in order to practice variations on his own patent that all other patentees are allowed to practice as of right.

Finally, we believe that the effect of the petitioner’s petition — position would be that the patent monopoly on the invention, including its obvious variations would be extended beyond the period allowed by the statute.

It seems clear to us that such a view cannot be squared with thee essential purposes of the patent laws and for these reasons we or just that the judgment below be affirmed.

Earl Warren:

Mr. Dodds.

Laurence B. Dodds:

Your Honors, I would have a few minutes.

There’s one point I should like to take up initially and I believe there has been a bit of confusion unwillingly introduced.

As I understood the position of the counsel for the respondent was that they’re relying solely on Section 103, but wanted to incorporate into that certain Sections 102 but I say Section103 that does not permit that.

What 103 says is this, “Even though you cannot get a patent, even though you can get a patent under 102 still if the differences are not enough to amount to a patentable invention that it’s such have been obvious in the — as to the — once skilled in the art at the time the invention was made, it’s an additional reason why you can’t get a patent but nowhere and 103 is there any intent to incorporate 102 as to what is within the scope of prior art.

The introductive phrase says you would first go to 102 only in the case that even though the 102 is not a bar still you may not get a patent if it was obvious over the prior art.

William J. Brennan, Jr.:

What you’re saying is that 102 has the number of conditions under which you cannot get a patent issued.

Laurence B. Dodds:

Yes Your Honor.

William J. Brennan, Jr.:

And 103 just adds still another one, is that what you’re saying?

Laurence B. Dodds:

Exactly the point Mr. Justice Brennan.

I think that’s exactly our position.

Byron R. White:

Well, what do you think the prior art means when Congress that referred the prior art when an invention has to be none obvious over the prior art, what was the reference of prior art?

Laurence B. Dodds:

Prior art and the decisions which we have discussed and analyzed in our brief that all of the —

Byron R. White:

Why didn’t Congress mean by those words, what the cases said it meant —

Laurence B. Dodds:

Because it’s precisely right —

Byron R. White:

At the time —

Laurence B. Dodds:

And in this case of Wallace it said precisely that prior art means what was publicly known, it’s that general fund of technical probably —

Byron R. White:

You don’t think there were any decisions prior to 1952 that said a co-pending patent was part of the prior art?

Laurence B. Dodds:

Unfortunately there weren’t.

As there were decisions both ways [Laughter] — there were decisions both ways.

Those are considerable conflicts and there was even more conflict before the decision of this Court in the Alexander Milburn case because there they charged before that some of the decisions tried, they would draw still further on the line of distinction.

Byron R. White:

You don’t think Detrola is really relative to this case?

Laurence B. Dodds:

Pardon?

Byron R. White:

You don’t think Detrola really has any bearing on this?

Laurence B. Dodds:

I think Detrola has no bearing on the case.

Laurence B. Dodds:

I was telling you that and the reason for that is.

As I referred in my — our briefs, if you look at the record and the briefs and the Detrola case, the position was solely that the invention their involved was shown not to be the prior invention of Wheeler but it was shown in the inventions of other people.

Now it is true that the words prior art were referred to and we’re using that in that case, but in the portions that I quoted in our brief it was pointed that they will not be using them in the same sense they were talking about here nor were they using them in the sense that Section 103 uses them.

They were using them as a general phrase in lieu of sometimes what’s called synonymously anticipation, an anticipation embraces all —

Byron R. White:

Wasn’t the regular practice of the Patent Office prior to 1952 to include co-pending patents in the prior art?

Laurence B. Dodds:

No, Your Honor.

It was not.

Byron R. White:

The government is wrong in saying this?

Laurence B. Dodds:

We think the Patent Office is wrong but they did — the Patent Office even before the 1952 Act.

Byron R. White:

And the Patent Office doesn’t know what they were doing in 1952?

Laurence B. Dodds:

They have maintained the 1952 Act.

The Patent Office still maintains the co-pending patent as far as the prior art that’s why we’re here.

Byron R. White:

And it did before — and it did before 1952?

Laurence B. Dodds:

And they did before 1952, yes, Your Honor.

Now one other point, as I understand that the respondent would have the Court believe that the addition of the Carlson invention to Wallace was an insignificant one.

We think that is not right.

Well, there’s nothing to indicate that the Carlson invention itself was not a significant invention and therefore the addition of Carlson invention to the invention of Wallace cannot under any sense be termed an insignificant variation over Wallace.

The question that as I point out in my brief there are cases where under Section 102 (e) quite properly the co-pending patent did not have everything, but there were some insignificant variations, I’ll use the response positions such as the kind of a cabinet or support or perhaps the use of gears instead of pulleys where it is not necessary to add the invention of somebody else to build up an anticipating structure.

But that isn’t the situation we have here.

Counsel for our respondent also referred to the question of fairness which we introduced in our brief and that’s the question is it less fair to deny an inventor a patent under Section 102 (e) because of a co-pending of it’s patent of which he could not have knowledge that it is here and the answer is very clear.

In the situation of 102 (e) or as presented by Alexander Milburn case if the patent had been granted to the later inventor even though he had no knowledge of the co-pending patent he would then have this in a position to take a way, the right of the actual prior inventor from using his own invention.

If in fact a patent had been granted to this second applicant of which even though he had no knowledge, so it has become a question of fairness as between the first inventor and the second inventor. Somebody might be asked to be heard, it seems fairer to hurt the second inventor than the first inventor, but that isn’t true here.

If a patent is granted to Regis nothing is going to prevent Wallace of he’s asking this from using his invention —

Potter Stewart:

Now, Mr. Doolittle disagrees with you I think.

He says that Wallace would have to get a license from Regis?

Laurence B. Dodds:

That is definitely — absolutely no authority or no logic for that.

The Regis —

Potter Stewart:

Did I misunderstand his contention do you think?

Laurence B. Dodds:

I beg your pardon?

Potter Stewart:

Do you think I misunderstood Mr. Doolittle’s —

Laurence B. Dodds:

No, I think you did understand that position, I agree with you but —

Potter Stewart:

I thought I misunderstood it —

Laurence B. Dodds:

But we hardly disagree with it.

Potter Stewart:

Yes, I —

Laurence B. Dodds:

The point is the claims that we’re talking about here and the Regis which are before this Court for decision.

If ever the Patent Office — everybody says they are not a Wallace invention, they say that — the District Court said explicitly that the Regis invention is not unpatentable over Wallace alone.

It’s for a different invention and if Wallace built his device and particularly in view of the rulings of the Patent Office in Regis he would not require any license from Regis nor would Carlson and moreover Your Honors when the Wallace patent and the Carlson patent expire, the public is then free to use the inventions disclosed in those patents without any charge of infringements by Regis so the claims would be granted to Regis.

There’s just —

Abe Fortas:

Is there an area — is there an area in which a perspective user of this invention would have to obtain a license from both Wallace and Regis?

Laurence B. Dodds:

Very definitely, yes Mr. Justice Fortas.

The Wallace patent and the Carlson patent are earlier sometimes what we called dominating factors and if they broadly claim what they had and if Regis is the combination of those two inventions Regis would probably have to have a license under both Wallace and Carlson in order to practice his invention and that’s permanent.

Abe Fortas:

And a licensee, a person wanting to use the invention or wanting a practice in the field of the art would in some area have to obtain a license from the two of them or perhaps three?

Laurence B. Dodds:

Earlier and perhaps others and that is the general principle in the patent law that later improvement patent is always subject to any earlier broader dominating patents which may form a part of the invention of the later patent.

Byron R. White:

As a matter of fact is that true in this case?

Laurence B. Dodds:

I’m sorry.

Byron R. White:

As a matter of fact is that true in this case?

Laurence B. Dodds:

It’s certainly true in this.

Byron R. White:

That Regis will have to have a — if he gets the patent he will still have to have a license from Wallace.

Laurence B. Dodds:

That is true in general I might —

Byron R. White:

I know, but in this case.

Laurence B. Dodds:

Well, frankly Your Honor I haven’t studied the claims of Wallace and Carlson to see just what they were claiming.

As you are normally familiar whether or not you can require a license or be charged with an infringement depends upon the scope of the claims.

Byron R. White:

Yes.

Laurence B. Dodds:

Sometimes, but assuming if those men had patent claim with their patent — with their invention.

Byron R. White:

Well it could be anyway that Regis doesn’t get — that Regis’ invention is obvious and non patentable or well, it could be that he would get his — that he would get his patent because his invention was not obvious and still he wouldn’t have to have a license from Wallace.

Laurence B. Dodds:

It could be, but if Wallace and Carlson properly claimed their inventions Regis would require licenses from the owners of what was the patent in order to practice his invention, but not the converse as the counsel for respondent urges.

Thank you, Your Honors.

Earl Warren:

Very well.