“Egbert v. Lippmann”的意思、由来-开放百科全书

Samuel Barnes designed “corset-steels”, which were vertically disposed springs to stiffen a corset. Samuel made the invention in 1855 after he had been present while two women,

"complaining of the breaking of their corset steels." Samuel devised a stronger device using two pieces of metal fastened together to create a

doubled, reinforced corset steel.^[3] He then gave the springs to Frances, who would in 1863 become his wife and later the executrix of his will. In 1858 he gave her another set of steels, which she used for a long time. In 1863, Samuel and Frances showed the invention to his friend Joseph Sturgis; and in March 1866 Samuel applied for a patent.^[4] Samuel died a month after the patent issued in July 1866. Frances remarried in 1870 and became Frances Egbert. Subsequently, Frances, as Samuel's executrix and owner of the patent, sued for patent infringement.

Proceedings in lower court

Frances Egbert sued Phillip Lippmann and August Seligmann in the Southern District of New York.^[5] Circuit Judge Blatchford tried the case and held the patent invalid because of public use. He ruled:

Ruling of Supreme Court

Majority opinion

Justice William Burnham Woods wrote for the majority, explaining that public use of the invention by only one person is sufficient to be considered a public use, even where the usage of the invention is not visible to the general public. Similarly, a gift to another party without regard to secrecy or restrictions on use is sufficient to bar a patent for the same reason. Whether the use of an invention is public use or private use "does not necessarily depend on the number of persons to whom its use is known."^[7]

Rather: "If an inventor, having made his device, gives or sells it to another, to be used by the donee or vendee without limitation or restriction or injunction of secrecy and it is so used, such use is public even though the use and knowledge of the use may be confined to one person."^[7] It is a public use because "[s}he might have exhibited them to any person, or made other steels of the same kind and used or sold them without violating any condition or restriction imposed on her by the inventor."^[8] Thus, the Court treated Barnes's gift of the corset steels to his "intimate friend" (not then his wife) without her first signing a confidentiality agreement as if it were a sale in the ordinary course of business.^[9]

The majority held that the use here was different from that in City of Elizabeth v. Pavement Company because this was not a good faith effort to test or experiment with the design. Furthermore, Barnes “slept on his rights” for the eleven years between 1855 and 1866, not applying for a patent until other manufacturers had already incorporated aspects similar to Barnes’ design into their own products. He did not bother applying for a patent until he came to the belated realization that he could potentially profit from his invention. Thefore, the court held the patent invalid.^[8]

Dissent

Justice Samuel Freeman Miller was the sole dissenter in this case, disagreeing with the majority about the “public” nature of Frances’ use of the corset-steels. The majority is ignoring the statutory word "public" in the patent law's making "public use" a bar to patenting an invention. Miller argued:

Subsequent legislation

The 2011 America Invents Act (AIA) may have completely overturned Egbert v. Lipmann.^[11] The public use provision of the statute now provides that a person is not entitled to a patent if "the claimed invention was . . . in public use . . . or otherwise available to the public before the effective filing date of the claimed invention."^[12] That appears to limit public use to uses available to the public and to exclude as bars to patentability any hidden, inaccessible, private uses, since it implies that public use is within the class of things otherwise available to the public.^[13] A steel spring hidden within a corset would not seem to be available to the public.

The availability requirement is consistent with the AIA's legislative history. Prior to the Senate vote, Senator Jon Kyl explained to the Senate that the Judiciary Committee had added the words "otherwise available to the public" to "abrogate[ ] the rule announced in Egbert v. Lippmann."^[14]

Commentary

Feminist commentator Kara Swanson analyzed the case as explicating the public use doctrine at "the intersections of gender and intellectual property from a feminist perspective." In her view:

Swanson argues that the Court's considerable expansion of the concept of "public use" from commercial exploitation to secret use without a confidentiality agreement reflected the Court nineteenth century gender biases. The Court's majority was antagonistic to Frances's failing to adhere to "the prevailing gender ideology of the time" by becoming not only a corset manufacturer but a patent enforcing litigant—"a role in

which she acted in the public sphere directly, without the mediation of a man, and in unspoken defiance of the separate spheres ideology" according to which women did not publicly act as men.^[15]{{rp|111}} Swanson scoffs at the majority's demand that Barnes should have got Frances to sign a confidentiality agreement in order to avoid abandonment of his right to a patent:

Brian J. Love explains the ruling as an example of "bad facts ushering the creation of bad law."^[16]{{rp|7}} He finds it "hard to imagine a decision that deems 'public' the interior of a romantic partner's underwear."^[16]{{rp|7}} The case makes more sense, he argues, to view the case as one of a "submarine" invention. He points to the facts: "first, that the inventor waited eleven years before filing a patent application; and second, that the corset spring industry independently and innocently adopted the same design in the meantime."^[16]{{rp|8}} Love therefore castigates the Egbert Court for distorting patent law to reach its judgment in this case:

See also

References

1. ^{{ussc|name=Egbert v. Lippmann|104|333|1881}}.
2. ^Egbert, 104 U.S. at 337 (“The inventor slept on his rights for eleven years.”).
3. ^See Egbert, 104 U.S. at 335.
4. ^According to the Supreme Court, by letting Francis use the steels in her corsets for an extended period before applying for a patent, Samuel "slept on his rights for eleven years." Egbert, 104 U.S. at 337. For patent attorney witticisms on this subject, see, e.g., {{smallcaps|Robert P. Merges & John F. Duffy, Patent Law And Policy: Cases And Materials}} 522-27 (4th ed. 2007).
5. ^Egbert v. Lippmann, 8 F. Cas. 370 (C.C.S.D.N.Y. 1878).
6. ^Egbert, 8 F. Cas. at 371.
7. ^¹Egbert, 104 U.S. at 336.
8. ^¹Egbert, 104 U.S. at 337.
9. ^See Kara W. Swanson, Getting a Grip on the Corset: Gender, Sexuality and Patent Law, 23 {{smallcaps|Yale J.L. & Feminism}} 57, 108 (2011) ("By considering the transfer to Frances as if it were a sale, the Court shifted not just Frances's corset, but the entire relationship between the future husband and wife, to the public, commercial realm. From this assumption, the Court considered [only] what Frances 'might have' done.").
10. ^Egbert, 104 U.S. at 339.
11. ^See generally Joseph A. Lingenfelter, Putting the Public back in Public Use: Interpreting the 2011 Leahy-Smith America Invents Act, 31 {{smallcaps|Ga. St. U. L. Rev.}} 867 (2015).
12. ^35 U.S.C. § 102(a)(1).
13. ^It is an accepted principle of statutory construction that when a list of items is in the form A, B, or otherwise C, it is understood that C modifies all the preceding items.
14. ^157 Cong. Rec. Sl371 (daily ed. Mar. 8, 2011). He also asserted that Justice Miller's dissent in that case had been correct.
15. ^¹²Kara W. Swanson, Getting a Grip on the Corset: Gender, Sexuality and Patent Law, 23 {{smallcaps|Yale J.L. & Feminism}} 57 (2011).
16. ^¹²³Brian J. Love, Bad Actors and the Evolution of Patent Law, 101 {{smallcaps|Va. L. Rev. Online}} 1 (2015).

Background

Facts