Thursday, October 22, 2015

The "ice cream patent wars" of the 1920's: insights into software patents, or not?

Charles Duan (director of the Patent Reform Project at Public Knowledge ) has a post at Slate titled Ice Cream Patent Headache: What the history of Eskimo Pies tells us about software patents today.

This is a story with an agenda, as can be gathered by reading merely the title. The more typical "patent story" for this purpose is the patent of George Selden, used against automaker Henry Ford.

**From LBE's article in Intellectual Property Today in June 2001 titled "Looking Backward"

The beginning of the decision reads: “The subject is most important; the interests involved, of great magnitude; the record phenomenally long; and the questions presented, complex.” The decision continued: “During this long time the [...] art made marked advances along different lines, and when, in [...], the patent was granted, it disclosed nothing new. Others had then made the patentee’s discovery and had reduced it to practice in ignorance of what he had done. While he withheld his patent, the public learned from independent inventors all that it could teach. For the monopoly granted by his patent he had nothing to offer in return. The public gained absolutely nothing from his invention, whatever it was. Fromthe point of view of public interest it were even better that the patent had never been granted.”

The patent in question is not to a business method, nor even to such a thing as BT’s claim to a hyperlink. It is not a patent to Lemelson. The patent in question is US 549,160 issued in 1895 to a Rochester lawyer named George B. Selden and the decision in question is Columbia Motor Car Co. v. C. A. Duerr, 184 F. 893 (CA 2 1911), which found, among other things, that Henry Ford’s cars did not fall within the scope of the patent, mainly because Ford’s cars employed an engine different from that disclosed in the ‘160 patent.

See for example:

** The Duan story of October 2015 is about Christian Nelson and Russell Stover, but the last sentences of the article states:

The Eskimo Pie ended up being sold stickless. The mass marketing of a chocolate-coated ice cream bar on a stick would require a new visionary who would see beyond the Eskimo Pie, a man named Harry Burt, who would go on to found the Good Humor company.

IPBiz covered a part of the Harry Burt story in a post in June 2014 titled
Popsicle patent wars of yesteryear.

One item that Duan did not get into was the patents of Burt, which were evolving about the same time as Nelson's patent.

The first claim of the Nelson patent, US 1,404,539 [ filed Dec. 23, 1921; granted January 24, 1922 ] related simply to coated ice cream (actually merely a normally liquid material frozen to a solid state) and did not relate to a stick:

1. A confection comprising a core of normally 1iquid material frozen to a substantially solid state and sealed within an edible,
sustaining and form-retaining casing adapted to-maintain the confection in its original form durin handling.

[One notes that the claim would encompass coated ice cream with or without a stick.]

Burt's US 1,470,524 was filed Jan 30, 1922 (less than one week after Nelson's patent issued!).

PatentPlaques suggests that Harry Burt had invented a chocolate coated ice cream in the year 1920.

In 1920, a candy maker in Youngstown, Ohio created a recipe for coating ice cream with chocolate. Harry Burt’s smooth chocolate coated ice cream treats were delicious. The first taste tester was his daughter Ruth who loved the flavor but hated the mess. Earlier, Burt had invented a lollipop on a stick known as a Jolly Boy Sucker. Taking the advice of his son, Harry Jr., Burt froze the same stick into his ice cream, creating handles for the treats. Burt named his new ice cream invention the Good Humor Bar. The name came from the belief that a person’s humor or temperament came from their sense of taste.

On January 30, 1922, Burt applied for patents on the process and manufacturing of the frozen treat as well as for the treat itself. The United States Patent Office was reluctant to grant the patents because of the product’s similarities to Eskimo Pies. It took a trip to Washington, D.C. with a five-gallon bucket of Good Humor bar samples before his patent would be approved. Ultimately, Burt received US Patent 1,470,524 for the Process of Making Frozen Confections on October 9, 1923. He did not receive a patent for the confection itself.

Although it is true HARRY Burt did not get a patent on the confection, CORA Burt did get such a patent (1718997 ), with first claim:

A frozen confectionery product including a frozen body portion formed of an edible substance which is fiuid at normal temperatures and congeals by refrigeration, and a stick member partially embedded in the body portion and attached thereto by congelation, the projecting end of the stick member forming a handle.

The application was filed on January 30, 1922, but the patent did not issue until July 2, 1929. [Harry Burt died in 1926.] As noted in the 2014 IPBiz post, the significant claims of US '524 and US '997 would later be invalidated, as were the claims of Nelson's patent.

Patent litigation did not bankrupt Burt. PatentPlaques notes:

Eventually, he dropped the suit against the Citrus Products Company because he realized they refused to settle in order to see if his patent would hold up in court. Burt and Popsicle reached an agreement out of court. Popsicle paid a licensing fee to Burt and was permitted to manufacture frozen treats from ice and sherbert. Burt kept the exclusive rights to produce the frozen suckers from ice cream and other dairy products.

Returning to the Duan article, one notes the story was discussed in 1998 in an article by Maurita Baldock, which included:

On January 24, 1922, the United States granted patent number 1,404,539 for the Eskimo Pie. Nelson's patent applied to any type of frozen material covered with candy. Nelson also had the name "Eskimo Pie" trademarked. Initially, even the word "Pie" in a brand name frozen treat was covered by this trademark. The breadth of the patent was detrimental to Eskimo Pie because of growing legal costs associated with its defense.

Russell Stover sold his share of the company in 1922. Because of the cost of litigation, high salaried salesmen, and difficulties in collecting royalties, the company was sold in 1924. Eskimo Pie became a subsidiary of United States Foil Company, the supplier of the Eskimo Pie wrapper. Headed by R.S. Reynolds, Sr., the company later became known as Reynolds Metals Company.

In 1925, dry ice was invented. Nelson was eager to find a way to make buying Eskimo Pie as easy as buying another snack from a vendor. Nelson began to market thermal jugs with dry ice supplied with Eskimo Pies to vendors without access to a freezer. This increased visibility and distribution and made Eskimo Pie an "impulse" item.

The patent litigation continued until October 3, 1929, when the U.S. Circuit Court of Appeals upheld the decision of the lower courts declared that the 1922 patent was invalid, due to "lack of invention." Eskimo Pie resembled an earlier product that also called for ice cream with cocoa butter dipped in chocolate. The judge declared that Nelson had merely changed the shape for an existing product. Even his trademark on the work "pie" was invalidated, as the judge said the word had a wide variety of use.

from the Archives Center, National Museum of American History

**As to a conclusion, although the "ice cream patent wars" are interesting, the more telling story of a patent, not based on a working embodiment, which threatened other innovators, is that of George Selden.

Curiously, although the ice cream patents were invalidated, Selden's patent was not.


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