1. In suits in the federal courts for infringement of patents,
the better practice usually is for the court to inquire fully into
the validity of the patent. P.
325 U. S.
330.
2. It is essential to the validity of a patent that the subject
matter reveal "invention," "more ingenuity . . . than the work of a
mechanic skilled in the art." P.
325 U. S.
330.
3. Patent No. 2,087,190, claims 3, 10, 11, 12 and 13, to
Gessler, for a printer's ink which is nonvolatile at room
temperature and highly volatile when heated, which involved merely
the selection of a known compound to meet known requirements,
held invalid for want of invention. P.
325 U. S.
334.
144 F.2d 842, reversed.
Certiorari, 323 U.S. 705, to review a decree which, upon appeal
from a decree holding a patent invalid and not infringed,
50 F.
Supp. 881, held the patent valid and infringed.
MR. JUSTICE JACKSON delivered the opinion of the Court.
This infringement suit was brought by the assignees of a patent
on a printing ink. Respondent, Interchemical Corporation, asserts
that inks made by the petitioner infringe on claims 3, 10, 11, 12
and 13 of U.S. Patent No. 2,087,190 which was issued to Albert E.
Gessler on July 13, 1937. Claim 3, which is typical, is as
follows:
"A printing
Page 325 U. S. 328
ink which is substantially nondrying at ordinary temperatures
and dries instantly on heating of the printed matter, consisting of
coloring matter dispersed in an organic viscous vehicle consisting
of a liquid component and a solid component completely dissolved in
the liquid component in sufficient quantity to give the ink the
consistency of an ordinary oil-varnish printing ink -- the solid
component being a member of the group consisting of natural and
synthetic resins and cellulose compounds, substantially all of the
liquid component having a vapor pressure at 20 C. as low as that of
diethylene glycol monobutyl ether at 20 C., and the major part of
the liquid component having vapor pressure which at 150 C.
approximates that of ethyl alcohol at ordinary temperatures and
forming a stable solution with the solid component."
In other words, Gessler claims to have invented an ink which
will not dry at room temperature but which will dry instantly upon
the application of heat after printing. Such an ink is of no
particular value in the printing of newspapers or other
publications which use absorbent paper. This can be done acceptably
with ordinary inks containing linseed oil which is nonvolatile at
all relevant temperatures. The paper absorbs the ink when one side
is printed, and the other side can be printed immediately without
danger of smudging.
But the ink disclosed in the patent does have utility in the
printing of magazines and other materials which use smooth
nonabsorbent paper. Since its disclosure by Gessler, it or similar
inks which are claimed to infringe, have been used to print "The
New Yorker," "Collier's," and "The Saturday Evening Post." Such
publications previously would require considerably more time for
printing since the reverse side of the paper which they used could
not be printed until the first side was dry. Nor could the sheets
be stacked or folded without danger of "offset" printing. The
smooth paper would not absorb the linseed
Page 325 U. S. 329
oil inks, and delay of from one to twenty-four hours was
necessary before printing was sufficiently dry to allow the sheets
to be worked upon again.
Many efforts were made to eliminate the necessity for delay. The
problem was complicated by the fact that the presses used in this
kind of printing are equipped with a long series of
ink-distributing rollers to spread out the ink to the optimum thin
film before it is applied to the type. Hence, when inks with
volatile components were used, they would dry on the rollers before
they got to the type. And if inks with nonvolatile ingredients --
like linseed oil -- were used, they would not dry except by slow
oxidation. Other approaches to the solution of the problem included
the exposure of sheets printed from linseed-oil inks to ozone, but
that process was dangerous and not wholly satisfactory. Gessler's
ink combines the qualities of an ink which does not dry on the
rollers and one which dries quickly after printing when heat is
applied to it.
These characteristics of the ink result from the nature of the
solvent which is one of its components. Gessler, in his
specification, named butyl carbitol (diethylene glycol monobutyl
ether is said to be the more accurate scientific term), but that
compound was given only as an example, and most of the inks which
his company now makes contain "narrow cuts" of petroleum in place
of butyl carbitol. A narrow cut of petroleum consists of only a few
kinds of hydrocarbons, and consequently evaporates consistently,
since each of the hydrocarbons has substantially the same vapor
pressure curve. The allegedly infringing inks similarly are made
with narrow cuts of petroleum. All of these solvents have the
peculiar quality of being relatively nonvolatile at ordinary room
temperature but highly volatile at a temperature of 150 C., a
temperature to which paper can safely be heated without burning.
There is no question that inks containing these solvents have
enabled magazines to be printed on high-speed rotary
Page 325 U. S. 330
presses which are furnished with heating devices, without
interruption for drying.
The District Court held Gessler's patent invalid because
anticipated by the prior art, and held that the petitioner's inks
did not infringe.
Interchemical Corp. v. Sinclair & Carroll
Co., 50 F. Supp.
881. The Circuit Court reversed, holding the patent valid and
infringed.
Interchemical Corp. v. Sinclair & Carroll
Co., 144 F.2d 842. We granted certiorari. 323 U.S. 705.
There has been a tendency among the lower federal courts in
infringement suits to dispose of them where possible on the ground
of noninfringement, without going into the question of validity of
the patent.
Irvin v. Buick Motor Co., 88 F.2d 947, 951;
Aero Spark Plug Co. v. B.G. Corp., 130 F.2d 290;
Franklin v. Masonite Corp., 132 F.2d 800. It has come to
be recognized, however, that, of the two questions, validity has
the greater public importance,
Cover v. Schwartz, 133 F.2d
541, and the District Court in this case followed what will usually
be the better practice by inquiring fully into the validity of this
patent.
A long line of cases has held it to be an essential requirement
for the validity of a patent that the subject matter display
"invention," "more ingenuity . . . than the work of a mechanic
skilled in the art."
Hicks v.
Kelsey, 18 Wall. 670;
Slawson v. Grand Street
R. Co., 107 U. S. 649;
Phillips v. Detroit, 111 U. S. 604;
Morris v. McMillin, 112 U. S. 244;
Saranac Automatic Machine Corp. v. Wirebounds Patents Co.,
282 U. S. 704;
Honolulu Oil Corp. v. Halliburton, 306 U.
S. 550;
Cuno Engineering Corp. v. Automatic Devices
Corp., 314 U. S. 84,
314 U. S. 90.
This test is often difficult to apply; but its purpose is clear.
Under this test, some substantial innovation is necessary, an
innovation for which society is truly indebted to the efforts of
the patentee. Whether or not those efforts are of a special kind
does not concern us. The primary purpose of our patent system is
not reward of the individual, but
Page 325 U. S. 331
the advancement of the arts and sciences. [
Footnote 1] Its inducement is directed to
disclosure of advances in knowledge which will be beneficial to
society; it is not a certificate of merit, but an incentive to
disclosure.
See Hartford Empire Co. v. United States,
323 U. S. 386.
Consequently it is not concerned with the quality of the inventor's
mind, but with the quality of his product.
The patent in suit was not the product of long and difficult
experimentation. Although, like other patent cases, this has an
extensive record, it is hard to see wherein Gessler's invention
consists. In 1930, he was asked to make an odorless ink, and he
selected from a catalog of a chemical manufacturer three solvents
which the catalog indicated to be relatively odorless. Their vapor
pressures -- that is, their rates of evaporation at various
temperatures -- were also listed. He tried inks made with each of
the compounds as a solvent and decided that butyl carbitol was the
most satisfactory, since it did not dry while on the rollers at
ordinary temperature.
The company which had requested the odorless ink, however, found
that it was unsatisfactory for other reasons and, after some
further effort, Gessler stopped trying to solve that problem.
Sometime in 1932, however, the same company asked Gessler whether
he could supply them with an ink "that would be dry after being
printed? We can put it over some kind of heating device."
Gessler's
Page 325 U. S. 332
answer was, "Yes, I think we could. In fact, one of those inks I
made for you in the beginning would do that." Gessler testified as
follows:
"And now, when Mr. Cray came, in the year 1932, and told me that
heating units, steam-heated rollers are used on printing presses,
that was the last key that I needed for the solution of the
problem. I had not known that before, and I knew that, if I could
apply any heat to the thin film of those inks, that they would dry
almost instantaneously. With that in mind, that was the mental
background, I would say, that I sent this particular ink to Mr.
Cray. I did not send him a number of inks or a selection of inks,
but I sent him just one specific ink."
And, with respect to the solvents he had chosen, Gessler
testified further:
"Q. What I want to get straight in my mind, Dr. Gessler, is
this: You selected these three, is that right?"
"A. That is right."
"Q. Did you select them from a much longer list?"
"A. That is right."
"Q. And before you selected them, you tried them all out, did
you?"
"A. No. You see the list is listed according to the boiling
point, and if you followed on, I took it from a certain boiling
point on upwards."
"Q. Oh, I see. You took them out of a long list in accordance
with their boiling point?"
"A. That is correct. That was my first indication of evaporation
rate."
"
* * * *"
"Q. . . . In selecting these three solvents that you referred
to, butyl cellosolve, carbitol, and butyl carbitol, did you have
reference to a Carbide & Carbon Chemicals Corporation
catalog?"
"A. I knew them. I don't know if I had reference, but I knew
naturally those solvents."
"Q. You may have referred to a catalog?"
"A. I may have, certainly. I most probably had the catalog."
"Q. You got copies of their catalogs, did you?"
"A. Oh, yes."
"
* * * *
Page 325 U. S.
333
"
"Q. On the flyleaf of the Carbide & Carbon catalog, there is
a list of their products. Do you remember that list (handing to
witness)?"
"A. A similar list."
"Q. That gives boiling points and vapor pressures?"
"A. It does."
"Q. And you may have selected these three solvents that we are
talking about from that list?"
"A. That is possible, although I knew the solvents. I was very
conversant with them. I told you a while ago why."
Butyl carbitol was first put on the market in 1929, and
subsequently was listed in the catalogs of Carbide & Carbon
Chemicals Corporation. It cannot be said that Gessler's
contribution was a recognition that a solvent having the peculiar
qualities of negligible vapor pressure at room temperature and high
vapor pressure at 150 C. was what was needed. Both the circuit
court and the district court found that an article written in 1931,
referred to as the Hanson article, had posed the problem. [
Footnote 2] It is difficult to believe
that, if Hanson had known of the qualities of butyl carbitol, if he
had had the Carbide & Carbon catalog before him, he or any
other person skilled in the art could not have devised the ink
which Gessler claims to have invented. We reach this conclusion
even though
Page 325 U. S. 334
Hanson testified in an affidavit introduced in support of a
motion for rehearing that he had worked for over a year trying to
produce such an ink and, did not succeed.
The District Court based its judgment on anticipation by prior
patents. Most of these pertained to inks which were not used in
ordinary printing: Lefferts and Stevens, No. 380,654, issued April
3, 1888, was an ink used for printing on celluloid and other
pyroxyline compounds; the Doughty and McElroy patents Nos.
1,439,696 and 1,450,692, issued December 26, 1922, and April 3,
1923, taught an ink which was mainly useful for stamping with
metallic inks by means of heated dies. But the Jirousek patent, No.
1,954,627, issued April 10, 1934, was for an ordinary printing ink.
Jirousek's patent was directed to "a composition . . . which can
set quickly and dry rapidly and also handle and feed properly and
distribute freely." And the patent specifies,
"In the use of such compositions, immediately after the
impression is made, heat should be applied, and most advantageously
this may be accomplished by a suitable heater, electric, gas, etc.,
arranged on or adjacent the press, so that the delivered printed
impression is subjected to a substantial degree of heat to complete
the setting action."
The inks disclosed in these prior patents did not contain the
same solvent or solvents similar to those which Gessler recommended
and which his company and the petitioners now use. They had
different vapor pressures both at room temperature and at 150 C.
But all these patents taught an ink made with a solvent that would
be nonvolatile at room temperature and highly volatile when heated.
Gessler's solvent is undoubtedly more satisfactory than any of the
solvents mentioned in these patents, but it must be remembered that
all but one of these patents were granted before butyl carbitol
appeared on the market. The fact is that Gessler himself to a large
extent has abandoned butyl carbitol, and now uses a narrow
Page 325 U. S. 335
cut of petroleum. Even assuming that, if Gessler had discovered
the compound, he would be entitled to a patent, he did not discover
it. Reading a list and selecting a known compound to meet known
requirements is no more ingenious than selecting the last piece to
put into the last opening in a jig-saw puzzle. It is not invention.
The judgment below is
Reversed.
MR. JUSTICE BLACK and MR. JUSTICE DOUGLAS concur in the
result.
[
Footnote 1]
See the testimony of Commissioner Coe before the
TNEC:
"It is not the principal purpose of the patent laws of our
country or of any nation to reward an individual. The purpose is
much deeper, and the effect much wider than individual gain. It is
the promotion of science and the advancement of the arts looking to
the general welfare of the Nation that the patent laws hope to
accomplish. The individual reward is only the lure to bring about
this much broader objective. Every patent granted benefits society
by adding to the sum total of human knowledge, but that is not
enough, and that alone will not achieve the ultimate goal of the
patent system."
TNEC Hearings, Part 3, p. 857.
[
Footnote 2]
The relevant part of the Hanson article, which appears in the
record, is as follows:
"The solvents available have different boiling points ranging
through a broad scale, but, unfortunately for this problem, their
vapor pressure curves are nearly parallel. If we choose one from
the group with a boiling point well under 250 F. (121 C.), the
highest practical heat to apply to a printed sheet, we find that at
room temperature its vapor pressure is still so great that drying
will progress rapidly. On the other hand, if one is selected with a
vapor pressure so low at room temperature that little drying takes
place at 200 to 250 F., we find the boiling point hardly attained,
or not even reached."
"If we could only flatten the curve of a high boiling solvent
with a vapor pressure of 1 in. of mercury or less at 80 down to a
point where, at 30 in., the boiling temperature would be reduced to
only 150 or so, it would not take us long to compound an ink to
meet the general characteristics for a plastic ink set forth
above."