Coffin v. Ogden
85 U.S. 120, 21 L. Ed. 821, 18 Wall. 120 (1874)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A patent is invalid if the invention was already completed, reduced to practice, and known or used by others prior to the patentee's discovery, even if the prior use was by a single person and not widely publicized.
Facts:
- In the latter part of 1860, Barthol Erbe, a foreman at a lock shop in Pittsburg, invented and constructed a reversible door lock.
- Before January 1, 1861, Erbe showed the completed, working lock to at least three colleagues: Bernard Brossi, Henry Masta, and Andrew Patterson.
- One of Erbe's completed locks was installed on an office door at his place of employment to test its functionality.
- In March 1861, William S. Kirkham independently invented a substantially similar reversible door lock.
- On June 11, 1861, a patent for the reversible lock was granted to Charles H. Miller, who was Kirkham's assignee.
- On June 10, 1864, Miller assigned the entire patent to Coffin, the complainant.
Procedural Posture:
- Coffin, the assignee of a patent for a reversible door lock, filed a bill in the court of first instance (a federal circuit court) seeking to enjoin the defendants from infringing the patent.
- The defendants filed an answer, asserting as a defense that the patent was invalid because the invention was known and used by Barthol Erbe and others prior to the patentee's invention.
- The court of first instance found for the defendants, dismissing Coffin's bill for an injunction.
- Coffin (appellant) appealed the decision to the Supreme Court of the United States.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does an invention that was completed, functional, and known to several individuals before the patentee's own invention qualify as 'known or used by others' under the Patent Act of 1836, thereby invalidating the later patent?
Opinions:
Majority - Mr. Justice Swayne
Yes. An invention that was completed, functional, and known to others before the patentee's discovery qualifies as prior art that invalidates a subsequent patent under the Patent Act of 1836. The court found credible evidence that Barthol Erbe had invented, built, and tested a complete and functional reversible lock before Kirkham's invention. The testimony of Erbe's colleagues established that his invention was not merely embryonic or experimental but had been reduced to a physical, working form. Furthermore, the lock was put into actual use on a door, demonstrating its practical utility. Under the Patent Act, an invention must not have been 'known or used by others' before the patentee's discovery. The court held that prior knowledge and use by even a single person is sufficient to defeat a patent, so long as the prior invention was complete and capable of producing the intended result.
Analysis:
This case clarifies the standard for what constitutes invalidating 'prior art' under early U.S. patent law. It establishes that a prior invention does not need to be widely publicized, commercially exploited, or known to the patentee to defeat a subsequent patent. The decision emphasizes that the key inquiry is whether the prior invention was 'complete' and 'capable of producing the result,' moving beyond mere speculation or failed experiments. This reinforces the strict novelty requirement of patent law, ensuring that patents are only granted for inventions that are genuinely new to the public.
Unlock the full brief for Coffin v. Ogden