Saturday, August 28, 2004

The Winslow concept as to inventors negated as to Federal Appellate Judges

Most patent law courses mention Judge Rich's imagery in the case In re Winslow: the inventor with all the prior art hanging on his walls and available to him. Many patent law courses mention that Judge Rich later abandoned this viewpoint in Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453-54 (Fed. Cir. 1984):

[T]he courts, including our predecessor court as in Winslow, mentioned above, [In re Winslow, 365 F.2d 1017 (CCPA 1966) (Rich, J.)] decided cases on the basis of the axiom-the applicant (or patentee) is presumed to have knowledge of all material prior art-without giving the situation further thought. But a bad axiom is like a noxious weed, a thriving plant in the wrong place interfering with the growth of more desirable plants....
Since we believe that progress in legal thinking is not only possible but highly desirable when it simplifies such thinking, we believe the time has come to discontinue this particular fiction of the patent law. Congress has given us in ยง 103 a substitute for the former "requirement for invention," which gave rise to the presumption, and that substitute, being statutory, should be used exclusively. We hereby declare the presumption that the inventor has knowledge of all material prior art to be dead.

A curious analog of In re Winslow came up in a substantive due process case in the Third Circuit, with the dissent arguing that Federal appellate judges were up-to-date on case law, in this particular circumstance prior U.S. Supreme Court case law. The proposition lost by a 2-1 vote.


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