Continental Paper Bag Co. v. Eastern Paper Bag Co.
28 S. Ct. 748, 1908 U.S. LEXIS 1519, 210 U.S. 405 (1908)
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Rule of Law:
A patent holder's right to exclude others from making, using, or selling the patented invention is the core of the patent grant and is not contingent upon the patentee's own use of the invention. An inventor who chooses not to use their patent may still obtain an injunction in equity to prevent infringement.
Facts:
- Liddell invented a machine for making self-opening square paper bags.
- Eastern Paper Bag Co. (Eastern) acquired the Liddell patent.
- Continental Paper Bag Co. (Continental) began using a machine that Eastern alleged infringed on the Liddell patent.
- Eastern never constructed any machines for commercial use under the Liddell patent, nor did it license the patent to others.
- Eastern, a powerful and wealthy corporation, continued to use older, less efficient machines for its manufacturing.
- The lower court found that Eastern accumulated patents for the purpose of protecting its general industry and excluding competitors.
Procedural Posture:
- Eastern Paper Bag Co. sued Continental Paper Bag Co. in the U.S. Circuit Court for patent infringement.
- The Circuit Court found that Continental's machine infringed upon Eastern's patent and granted an injunction against Continental.
- Continental Paper Bag Co., as appellant, appealed the decision to the U.S. Circuit Court of Appeals.
- The Circuit Court of Appeals affirmed the Circuit Court's ruling in favor of Eastern Paper Bag Co.
- The Supreme Court of the United States then granted a writ of certiorari to review the case.
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Issue:
Does a patent owner who intentionally chooses not to use or license their patented invention forfeit the right to obtain an injunction to prevent infringement by a competitor?
Opinions:
Majority - Mr. Justice McKenna
No. A patent owner who intentionally chooses not to use their patented invention does not forfeit the right to obtain an injunction to prevent infringement. The patent laws grant an inventor the exclusive right to make, use, and vend their invention, which is fundamentally a right to exclude others. This right is the inventor's reward for disclosing the invention to the public and is not conditioned on their personal use of it. The statute does not impose a duty to use, and it is the privilege of any property owner to use or not use their property without question of motive. The right to an injunction is essential to protect the exclusivity of the patent grant, as a remedy at law for damages is often inadequate to prevent continuing trespasses.
Dissenting - Mr. Justice Harlan
Yes. A patent owner who intentionally suppresses their invention should be denied an injunction on grounds of public policy. The facts of this case are such that a court of equity should have declined to provide relief and dismissed the original bill.
Analysis:
This decision solidifies the concept of a patent as a 'negative right'—a right to exclude others, rather than an affirmative right to practice the invention. It establishes that a patentee's motives for not using an invention, including anti-competitive intent, are irrelevant to their right to enjoin infringers. This precedent allows companies to build 'patent thickets' or acquire defensive patents to block competitors from entering a field of technology, even without any intention of commercializing the patents themselves. The ruling confirms that Congress, not the courts, is the appropriate body to impose any 'working' or 'compulsory use' requirements on patentees.
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