Evans v. Eaton (1822)

Last updated
Evans v. Eaton
Seal of the United States Supreme Court.svg
Supreme Court of the United States
Argued March 4, 1822
Decided March 20, 1822
Full case nameOliver Evans v. Eaton
Citations20 U.S. 356 ( more )
7 Wheat. 356, 5 L. Ed. 472; 1822 U.S. LEXIS 266
Case history
Prior Writ of error from District of Pennsylvania, [1] where case had been remanded following previous Supreme Court case overturning the original district court judgment. [2]
SubsequentNone
Holding
A patent on an improved machine must clearly set forth how the invention differs from the prior art.
Court membership
Chief Justice
John Marshall
Associate Justices
Bushrod Washington  · William Johnson
H. Brockholst Livingston  · Thomas Todd
Gabriel Duvall  · Joseph Story
Case opinions
MajorityStory, joined by Marshall, Washington, Todd
DissentLivingstone, joined by Johnson, Duvall
Laws applied
Patent Act of 1793, An Act for the Relief of Oliver Evans [3] )

Evans v. Eaton, 20 U.S. (7 Wheat.) 356 (1822), was a United States Supreme Court case in which the Court held, chiefly, that a patent on an improved machine must clearly describe how the machine differs from the prior art.

Contents

It was the fourth published Supreme Court decision on patents, [4] and the second to deal with substantive patent law. [5] It was also the third of four successive Supreme Court cases related specifically to the Oliver Evans flour mill patent. [6]

Background

Evans' hopperboy and automated bolting process. Evans' Hopper Boy.png
Evans' hopperboy and automated bolting process.

In the 1780s, inventor Oliver Evans developed a system for an automated flour mill that would revolutionize milling technology. After keeping his invention a secret while he reduced it to practice, he initially obtained protection for it through individual state statutes, for example in Maryland [7] and New Hampshire, [8] because the patent system did not yet exist. When the Patent Act of 1790 took effect, Evans obtained the third United States patent ever issued. No copies of this original patent are extant. [9]

As all patents at the time had 14-year terms, his patent lapsed in 1804, and the invention entered the public domain. Immediately upon the expiration of his patent, he sought a private bill that would allow him to renew it, the first such request ever made. [10] He was unsuccessful until 1808, when the Tenth Congress passed a law authorizing the Secretary of State to grant him a new patent on the same terms as the original one. [11] [3] Evans obtained his new patent the day after the law took effect. [12]

Under the Patent Act of 1793, which was in effect at the time of the 1808 grant, patents were not required to have claims. [13] In the case of complex patent such as Evans', which included both a general improved method of manufacturing flour and specific improved machines for achieving that method, this created confusion as to the actual scope of grant. By the same token, it also created confusion as to the kind of prior art that would suffice to invalidate the patent on the basis of anticipation.

In the district court for Pennsylvania, the defendant Eaton did not dispute having used Evans' improved hopperboy, but sought to show either that the patent only covered the improved method as a whole (and not the hopperboy specifically), or alternatively that the patent had been anticipated by earlier machines. In particular, the defendant introduced evidence of a crude kind of hopperboy that was in use at some mills in Pennsylvania in the 1760s. [14] Persuaded that the patent could only cover the improved method as a whole, rather than any of the improved machines, the court instructed the jury in such a way that the jurors had no choice but to return a verdict for the defendant, as they did. [14] The court also declined to admit the plaintiff's proffered evidence that the defendant had initially offered to pay a license fee to Evans.

The case was then appealed to the Supreme Court on a writ of error, and then remanded to the district court after a determination that the patent was not valid unless it was distinct from the prior art. On retrial, the district court found that the patent was invalid, on two grounds: (1) that if the patent was on the hopperboy as such, it was anticipated because there had been other hopperboys in use before Evans' invention; and (2) that if the patent was on Evans' improvements to the hopperboy, it was invalid for lack of written description, because the patent did not clearly set forth the ways in which Evans' hopperboy differed from hopperboys of the prior art.

Evans then appealed once again to the Supreme Court. Two of Evans' objections were procedural: that evidence was admitted from the testimony of a miller who stood to benefit from the patent being declared invalid, and that the trial court had unjustly excluded a deposition taken according to established state procedure rather than federal procedure. [15] The others were more substantive: that the trial court erred in telling the jury that if the patent was on the hopperboy as such, it would be invalidated by any use of a hopperboy operating on the same principle as Evans' hopperboy; and that the trial court erred in ruling that if the patent was only on the improvements to the hopperboy, the patent was invalid for failing to describe precisely what the improvements were.

Evans died two years before the Supreme Court ruled on this second appeal; his factory had been destroyed by fire in 1819. [16]

Opinion of the Court

Writing for the four-justice majority, Justice Story rejected each of Evans' appeals:

  1. The trial court's admission of the miller's testimony was acceptable, because the miller did not have a direct interest in the outcome of the specific case, and excluding everyone who had even a general interest in the subject matter of a patent case would effectively exclude everyone in the industry. [17]
  2. The trial court's exclusion of the deposition was proper because no amount of established local practice could overturn federal procedural rules. [18]
  3. The trial court properly left the question of whether the Evans hopperboy was anticipated by the prior art to the jury. [19]
  4. The trial court properly ruled that if the Evans patent was only on the improvement to the hopperboy, it was void as a matter of law because the patent did not set forth how the invention differed from the hopperboys of the prior art.

Dissent

Three justices dissented: Johnson, Livingston, and Duvall. [20] The recorded dissenting opinion was however authored by Justice Livingston alone. Livingston took particular issue with the Supreme Court's willingness to accept English precedents on patent law despite the growing differences between the British and American patent systems.

Skipping over Evans' procedural objections, [21] Justice Livingston dissented on three points: [22]

  1. He contended that the specification of the Evans patent was not defective in the first place, because it provided sufficient information to "distinguish [the invention] from all other things before known", as required by the Patent Act of 1793, section 11. [23] Even though the specification did not elaborate on the distinctions between the invention and the prior art, any person of ordinary skill in the art would be able to see how it differed from previous hopperboys, and would be on notice of what kind of hopperboy would infringe the patent.
  2. He contended that a patent should not be entirely invalidated merely because its claims are overbroad. [24] Although there were English precedents for such an action, the American law did not require it, and there was no basis for imposing such a "very high penalty" [24] when the patent had been filed in good faith without any intention to over-claim.
  3. Even if such a penalty was proper, Livingston argued, it was based on a question of fact and should be assessed only by a jury. [25]

Subsequent developments

The case was the culmination of a long series of previous decisions holding that an invention had not only to set forth how to implement the invention, but also how the invention differed from the prior art. [13] This doctrine ultimately gave rise to the requirement for separate, distinct claims, as adopted in the Patent Act of 1836. It also gave rise to the written description requirement as distinct from the enablement requirement. [26] However, in modern jurisprudence the written description requirement did not re-emerge as a distinct issue until the passage of the Patent Act of 1952. [27] It first entered modern jurisprudence as a distinct requirement when the Court of Customs and Patent Appeals issued its In re Ruschig decision in 1965. [28] This historical connection notwithstanding, authorities including Judge Rader have argued that Evans v. Eaton in fact supports considering enablement and written description as a single requirement, because the need for distinction from the prior art was addressed by the requirement for a separate claims section. [29]

The case has also been noted as an early antecedent to the modern doctrine of obviousness, [30] and the doctrine of equivalents. [31] [32]

Because the case is specific to the state of patent law before 1836, it has seldom been cited since the mid-19th century. The most recent citation in a Supreme Court case is in the 1906 case of Burton v. United States, in which the case was cited as authority for the admissibility of testimony from witnesses with a general interest in the outcome of a case. [33] Before that, it was cited in Phoenix Mut. Life Ins. Co. v. Raddin in 1887, as an early example of the court's objections to including unnecessarily lengthy quotations in the text of an appeal. [34] It was also sometimes cited in cases over land patents, regarding the necessity for any grant to be clearly distinguished from other grants, for example in the 1837 case of Proprietors of Charles River Bridge v. Proprietors of Warren Bridge . [35]

Works cited

Related Research Articles

A person having ordinary skill in the art, a person of (ordinary) skill in the art, a person skilled in the art, a skilled addressee or simply a skilled person is a legal fiction found in many patent laws throughout the world. This hypothetical person is considered to have the normal skills and knowledge in a particular technical field, without being a genius. The person mainly serves as a reference for determining, or at least evaluating, whether an invention is non-obvious or not, or involves an inventive step or not. If it would have been obvious for this fictional person to come up with the invention while starting from the prior art, then the particular invention is considered not patentable.

In United States patent law, utility is a patentability requirement. As provided by 35 U.S.C. § 101, an invention is "useful" if it provides some identifiable benefit and is capable of use and "useless" otherwise. The majority of inventions are usually not challenged as lacking utility, but the doctrine prevents the patenting of fantastic or hypothetical devices such as perpetual motion machines.

Novelty is a requirement for a patent claim to be patentable. An invention is not new and therefore not patentable if it was known to the public before the filing date of the patent application, or before its date of priority if the applicant claims priority of an earlier patent application. The purpose of the novelty requirement is to prevent prior art from being patented again.

The inventive step and non-obviousness reflect a general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. In other words, "[the] nonobviousness principle asks whether the invention is an adequate distance beyond or above the state of the art".

Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting of a patented technology without the consent of the patent-holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.

Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the invention is novel and non-obvious. Together with criteria such as novelty, inventive step or nonobviousness, utility, and industrial applicability, which differ from country to country, the question of whether a particular subject matter is patentable is one of the substantive requirements for patentability.

Parker v. Flook, 437 U.S. 584 (1978), was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent eligible only if there is some other "inventive concept in its application." The algorithm itself must be considered as if it were part of the prior art, and the claim must be considered as a whole. The case was argued on April 25, 1978 and was decided June 22, 1978. This case is the second member of the Supreme Court's patent-eligibility trilogy.

<span class="mw-page-title-main">Giles Rich</span> American judge

Giles Sutherland Rich was an associate judge of the United States Court of Customs and Patent Appeals (CCPA) and later on was a United States Circuit Judge of the United States Court of Appeals for the Federal Circuit (CAFC), and had enormous impact on patent law. He was the first patent attorney appointed to any federal court since Benjamin Robbins Curtis was appointed to the Supreme Court in 1851.

In United States patent law, inequitable conduct is a breach of the applicant's duty of candor and good faith during patent prosecution or similar proceedings by misrepresenting or omitting material information with the specific intent to deceive the United States Patent and Trademark Office. A claim of inequitable conduct is a defense to allegations of patent infringement. Even in an instance when a valid patent suffers infringement, a court ruling on an allegation of infringement may exercise its power of equitable discretion not to enforce the patent if the patentee has engaged in inequitable conduct.

Graham v. John Deere Co., 383 U.S. 1 (1966), was a case in which the United States Supreme Court clarified the nonobviousness requirement in United States patent law, set forth 14 years earlier in Patent Act of 1952 and codified as 35 U.S.C. § 103.

Gottschalk v. Benson, 409 U.S. 63 (1972), was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." That would be tantamount to allowing a patent on an abstract idea, contrary to precedent dating back to the middle of the 19th century. The ruling stated "Direct attempts to patent programs have been rejected [and] indirect attempts to obtain patents and avoid the rejection ... have confused the issue further and should not be permitted." The case was argued on October 16, 1972, and was decided November 20, 1972.

<span class="mw-page-title-main">Patent Act of 1790</span>

The Patent Act of 1790 was the first patent statute passed by the federal government of the United States. It was enacted on April 10, 1790, about one year after the constitution was ratified and a new government was organized. The law was concise, defining the subject matter of a U.S. patent as "any useful art, manufacture, engine, machine, or device, or any improvement there on not before known or used." It granted the applicant the "sole and exclusive right and liberty of making, constructing, using and vending to others to be used" of his invention.

The history of United States patent law started even before the U.S. Constitution was adopted, with some state-specific patent laws. The history spans over more than three centuries.

<span class="mw-page-title-main">Novelty and non-obviousness in Canadian patent law</span>

For a patent to be valid in Canada, the invention claimed therein needs to be new and inventive. In patent law, these requirements are known as novelty and non-obviousness. A patent cannot in theory be granted for an invention without meeting these basic requirements or at least, if a patent which does not meet these requirements is granted, it cannot later be maintained. These requirements are borne out of a combination of statute and case law.

Tyler v. Tuel, 10 U.S. 324 (1810), was a United States Supreme Court case in which the Court held that an assignee of a geographically limited patent right could not bring an action in the assignee's own name. It was the first published Supreme Court decision on patent law. Like other Supreme Court patent cases prior to Evans v. Eaton, 16 U.S. 454 (1818), however, it did not deal with substantive patent law, but only with the law of patent assignment.

Evans v. Jordan, 13 U.S. 199 (1815), was a United States Supreme Court case in which the Court held that someone who had copied a patented invention after the patent had expired, and before the patent was restored by a private bill, would be liable for damages for patent infringement for any use continuing after the patent was restored. It was the second published Supreme Court decision on patent law, and the first of four Supreme Court cases dealing with the Oliver Evans flour mill patent. Like other Supreme Court patent cases prior to Evans v. Eaton, however, this case did not deal with substantive patent law, but only with issues of statutory construction and infringement liability.

Evans v. Eaton, 16 U.S. 454 (1818), was a United States Supreme Court case in which the Court held that a patent disclosing an improved method of manufacture by means of several different improved machines should be construed to claim both the method and the improvements to the machines, but not to include the machines apart from the inventor's improvements.

Evans v. Hettich, 20 U.S. 453 (1822), was a United States Supreme Court case in which the Court held that a witness's testimony could not be objected to merely because the witness suffered from "fits of derangement", as long as the witness was sane when he testified.

"Non-obviousness" is the term used in US patent law to describe one of the requirements that an invention must meet to qualify for patentability, codified in 35 U.S.C. §103. One of the main requirements of patentability in the U.S. is that the invention being patented is not obvious, meaning that a "person having ordinary skill in the art" (PHOSITA) would not know how to solve the problem at which the invention is directed by using exactly the same mechanism. Since the PHOSITA standard turned to be too ambiguous in practice, the U.S. Supreme Court provided later two more useful approaches which currently control the practical analysis of non-obviousness by patent examiners and courts: Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) gives guidelines of what is "non-obvious", and KSR v. Teleflex (2006) gives guidelines of what is "obvious".

References

  1. ↑ Evans v. Eaton, 8 F. Cas. 856, 3 Wash. C.C. 443 (1818).
  2. ↑ Evans v. Eaton, 8 F. Cas. 846, Pet. C.C. 322 (1816).
  3. 1 2 "An Act for the Relief of Oliver Evans", 6 Stat. 70.
  4. ↑ Malla Pollack, The Owned Public Domain: The Constitutional Right Not to Be Excluded - or the Supreme Court Chose the Right Breakfast Cereal in Kellogg v. National Biscuit Co., 22 Hastings Comm. & Ent L.J. 265, 291 n119 (2000).
  5. ↑ Harold C. Wegner, Post-Merck Experimental Use and the "Safe Harbor", 15 Fed. Circuit B.J. 1, 37 (2005).
  6. ↑ Federico 1945, p. 586.
  7. ↑ Maryland; Kilty, William (1787). "An Act to grant to Oliver Evans, for a term of years, the sole and exclusive right of making and selling within this state the machines herein described". The Laws of Maryland: 1785–1799. p. 121.
  8. ↑ Hampshire, New (1789). "An Act to Grant to Oliver Evans for a Term of Years the Exclusive Right of Making and Selling within this State the Machines Herein Described". Laws of New Hampshire: First constitutional period, 1784–1792. p. 401.
  9. ↑ Federico 1945, p. 589.
  10. ↑ Federico 1945, p. 598.
  11. ↑ Benagh, Christine P. (1979). The history of private patent legislation in the House of Representatives. US Government Printing Office. p. 6.
  12. ↑ Evans v. Jordan, 8 F. Cas. 872, 872 (C.C.D. Va. 1813).
  13. 1 2 Federico part 2 1945, p. 680.
  14. 1 2 Federico part 2 1945, p. 677.
  15. ↑ 20 U.S. at 424-426.
  16. ↑ Federico part 2 1945, p. 681.
  17. ↑ 20 U.S. at 425-426.
  18. ↑ 20 U.S. at 426.
  19. ↑ 20 U.S. at 431-432
  20. ↑ 20 U.S. at 452.
  21. ↑ 20 U.S. at 452.
  22. ↑ 20 U.S. at 438.
  23. ↑ 20 U.S. at 439
  24. 1 2 20 U.S. at 446.
  25. ↑ 20 U.S. at 449.
  26. ↑ Robert A. Matthews, Jr. (2015), 3 Annotated Patent Digest § 22:8.
  27. ↑ Shraddha A. Upadhyaya, The Postmodern Written Description Requirement: An Analysis of the Application of the Heightened Written Description Requirement to Original Claims, 4 Minn. Intell. Prop. Rev. 65, 71-72 (2002).
  28. ↑ Stephen M. Maurer, Ideas into Practice: How Well Does U.S. Patent Law Implement Modern Innovation Theory?, 12 J. Marshall Rev. Intell. Prop. L. 644, 690 (2013).
  29. ↑ Michael A. Greene, Gilding the Lilly: The S 112 Written Description Requirement Separate from Enablement, 52 B.C.L. Rev. E-Supplement 213, 220-21 (2011).
  30. ↑ A New Way to Determine Obviousness: Applying the Pioneer Doctrine to 35 U.S.C. 103 (a), 29 AIPLA Q.J. 375, 429 (2001).
  31. ↑ Robert N. Young, Judge Versus Jury on the Scales of Justice: 35 U.S.C. S 112, P 6 "Equivalents" in the Balance, 32 J. Marshall L. Rev. 833, 848 (1999).
  32. ↑ Prosecution History Estoppel: The Choice Between Public Interests and Inventor's Property Rights, 36 Val. U. L. Rev. 239, 245-46 (2001).
  33. ↑ 202 U.S. 344, 393-94, 26 S. Ct. 688, 704, 50 L. Ed. 1057 (1906).
  34. ↑ 120 U.S. 183, 193, 7 S. Ct. 500, 504, 30 L. Ed. 644 (1887).
  35. ↑ 36 U.S. 420, 650, 9 L. Ed. 773.
This page is based on this Wikipedia article
Text is available under the CC BY-SA 4.0 license; additional terms may apply.
Images, videos and audio are available under their respective licenses.