Thursday, March 10, 2011

Concerning Mastoras v. Hildreth

Within EXCLUSION AND EXCLUSIVE USE IN PATENT LAW [22 Harv. J. Law & Tec 321 (2009) ] written by Adam Mossoff , one finds

Among the many brief references to blocking patents, n46 Professor [p. 332] Robert Merges best explains that the exclusion concept of patents is "necessitated by the existence of blocking patents," because otherwise an overlapping patent would necessarily result in an illegitimate restriction of another property owner's "affirmative right to actually carry into practice a particular invention." n47 In sum, if a patentee has a right to use a patented invention, then a block-ing patent, which is another valid patent that can exclude such use, would necessarily entail an infringement of this use-right. The Patent and Trademark Office would be in the impossible situation of granting a valid patent that necessarily infringed another patent by its mere issuance. The law does not countenance such contradictions. n48

Footnote 48 states: See Mastoras v. Hildreth, 263 F. 571, 575-76 (9th Cir. 1920) (noting that a patent covering an inventive aspect of subject matter already under another patent does not infringe that earlier patent).

About five years EARLIER, the Federal Circuit Bar Journal [ 14 Fed. Cir. B.J. 21 ] reprinted an article by Giles S. Rich , which had initially appeared in JPTOS in 1942 [ Vol 24 (3) ]. The article by Judge Rich talked about the Mastoras case:

Moreover, we are not content with a mere assertion that there is confusion. At the risk of unsettling the reader's mind we are going to cite an example. One of the most persistent errors is this:

It is a legal presumption that a later patent does not infringe an earlier patent. Mastoras v. Hildreth, 263 F. 571, 575 (C. C. A.-9, 1920).

[p. 31] What can this statement mean? A patent is a grant of a right to exclude. It is a piece of paper with words printed on it which produce certain legal rights. It cannot infringe anything. Of course what the court is trying to say is that because the alleged infringing device embodies an invention on which there is a patent, there is a presumption of non-infringement. On this assumption, the statement then implies that defendant's patent gives him a right to make, use and sell his device. But we have seen that this is not so.
How do such errors come to pass? First, it is clear that the court is using, in one sentence, the word "patent" to mean two different things: the patent right and an embodiment of a patented invention. It is impossible to think clearly on the basis of such a confusion of terms. Second, the statement was not the result of either thought or reason but was predicated on no less than seven cited "authorities." This is an example of how erroneous law points can sometimes be established. One judge made a statement in 1870 (American Nicholson Pavement Co. v. Elizabeth, Fed. Cas. No. 312) which was erroneous but sounded plausible to those who did not understand patent rights. Other judges followed it. Lawyers are now able to cite a long list of cases to show this is the "law." Many lawyers think it is the law. The error constantly recurs although in the meantime other courts have found it out and exposed it. Judge Denison did this in most complete fashion in 1911 in Herman v. Youngstown Car Mfg. Co., 191 F. 579, 584-5 (C. C. A.-6), saying: (...)

*** Judge Rich was telling us in 1942

--> The terminology "A patent cannot infringe another patent" is wrong. A patent, which is simply words on a paper, cannot infringe anything.

--> The statement -- It is a legal presumption that a later patent does not infringe an earlier patent. -- is wrong. Later, narrow claims can fall within the scope of earlier broad claims. Recall diodes and triodes.

--> The text of the Mastoras case is a persistent legal error.

***See also text within COMMENT: A REVIEW OF THE STATE SOVEREIGNTY LOOPHOLE IN INTELLECTUAL PROPERTY RIGHTS FOLLOWING FLORIDA PREPAID AND COLLEGE SAVINGS [9 U. Pa. J. Const. L. 1233 ] by one Christopher Beals, who thanks Professor Gideon Parchomovsky andProfessor R. Polk Wagner :

At the appellate level, several plaintiffs saw their causes of action evaporate, while others had their rulings against state sovereigns vacated and remanded in light of Florida Prepaid. n119 The first of these [page 1250] cases was Genentech v. Regents of the University of California, n120 a Federal Circuit declaratory judgment case where the plaintiff brought suit against a defendant state university. n121 In a broad patent dispute, the plaintiff, a biotechnology company, sought a declaration that the university's patent was invalid and unenforceable, and, in addition, that its patent did not infringe the university's patent. n122 In its appeal, the university claimed that it was shielded by sovereign immunity and thus not subject to the proceeding in federal court. n123 The Federal Circuit ultimately ruled that the University of California had waived its immunity, basing its holding on "the University's voluntary and deliberate creation of a case or controversy that can be resolved only in federal courts," and on "the University['s choice] to enter the federal arena ... [which was] within its sole control and initiative." n124 A mere year later, the Supreme Court vacated and remanded the case in light of College Savings and the demise of the implied waiver theory. n125

Footnote 122 amounts to 143 F.3d 1446, 149 (Fed. Cir. 1998), vacated and remanded, 527 U.S. 1031 (1999).

The actual text of the case states:

Upon completion of the multidistrict proceedings this Indiana action was resumed. Genentech seeks, inter alia, declaration of patent invalidity, unenforceability, and non-infringement of the '877 patent, and the University has counterclaimed for patent infringement and other relief. Both sides have pled violations of laws in addition to the patent law, including federal and state antitrust and other laws. The existence of a case of actual controversy, 28 U.S.C. ยง2201 (Declaratory Judgment Act), is not disputed.

See also

Polk Wagner, again confused on patent law?

***One can go back to a Supreme Court decision BEFORE the Mastoras case and find a more accurate rendition of the issue:

The patent infringed is one of long standing, and no claim is made that the Krag-Jorgensen patents infringe, but it is claimed that the construction of the gun embodying those patents does infringe my patent of 1880.

from RUSSELL v. UNITED STATES, 182 U.S. 516; 21 S. Ct. 899; 45 L. Ed. 1210 (1901).



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