419 U.S. 930 (1974)

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U.S. Supreme Court

SHULTZ v. MOORE , 419 U.S. 930 (1974)

419 U.S. 930

Walt SHULTZ, dba Walt Shultz Equipment Company, et al.
Elton M. MOORE.
No. 73-1804.

Supreme Court of the United States

October 21, 1974

On petition for writ of certiorari to the United States Court of Appeals for the Tenth Circuit.

The petition for a writ of certiorari is denied.

Mr. Justice DOUGLAS, dissenting.

This is an action for an injunction and damages for the infringement of a patent held by respondent Moore. Petitioner Shultz defended on the ground that the patent was invalid. The patented product is a 'pants topper,' used in the dry cleaning business for finishing and pressing men's trousers. Moore obtained his patent in 1955. At the trial there was evidence that patents on devices having functions similar to Moore's had issued prior to his patent; not all of these prior patents had been brought to the attention of the examiner who recommended that Moore be granted a patent. A jury verdict in Moore's favor was set aside by the trial court on the ground that the subject matter was 'obvious . . . to a person having ordinary skill in the art,' 35 U.S.C. 103. The Court of Appeals reversed, holding that the patent carries a presumption of validity overcome only by clear and convincing evidence, and that obviousness is a factual question on which the trial judge should not override the jury. With all respect, that holding permits the standard of patentability to be diluted and haphazardly applied.

It bears repeating that patents derive from the specific constitutional authorization of Congress 'To promote

Page 419 U.S. 930 , 931

the Progress of . . . useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries.' Art. I, 8, cl. 8. Writing against the backdrop of abuses by the Crown in granting monopolies, the Framers did not intend these 'exclusive rights' to be granted freely. To justify the toll exacted by exclusivity, the invention had to make a distinctive contribution to the advancement of scientific knowledge. Besides novelty and utility, a distinctive contribution expanding the frontiers of scientific and industrial knowledge was demanded. This constitutional restraint on the dispensation of patents was once captured in our cases under the standard of 'invention.' See Reckendorfer v. Faber, 92 U.S. 347; Smith v. Whitman Saddle Co., 148 U.S. 674; Potts v. Creager, 155 U.S. 597; Concrete Appliances Co. v. Gomery, 269 U.S. 177; Mantle Lamp Co. v. Aluminum Products Co ., 301 U.S. 544. The standard is now embodied in 35 U.S.C. 103, which requires a 'nonobvious subject matter.' Graham v. John Deere Co., 383 U.S. 1, 17 (1966).

Though the label has changed, the standard of patentability is at root a constitutional standard. In determining patent validity under the statute, a court simultaneously holds the statute true to its constitutional source. This is but a specific application of the principle that statutes are construed to avoid any overreaching of constitutional limitations. E. g., Screws v. United States, 325 U.S. 91, 98; United States v. Rumely, 345 U.S. 41, 47; Ashwander v. Tennessee Valley Authority, 297 U.S. 288, 348; United States v. Seeger, 380 U.S. 163, 188 (concurring opinion).

In every patent infringement suit a court is called upon to oversee obedience to the constitutional standard. It cannot be delegated to the jury on the supposition that only a question of fact is involved. Factual assessments are, of course, part of the process of judging validity. [419 U.S. 930 , 932]

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