Cuno Engineering Corp. v. Automatic Devices Corp.
314 U.S. 84 (1941)
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Rule of Law:
For a device to be a patentable invention, it must reveal more than the skill of a mechanic familiar with the art; the combination of old elements must demonstrate a "flash of creative genius," not merely an application that is new and useful.
Facts:
- Early cigar lighters were of a "reel type," with a retractable cable connecting the igniter to a power source.
- Subsequently, the "wireless" or "cordless" lighter was developed, featuring a removable plug with a heating unit that was energized when pushed into a socket, eliminating the cable.
- These early wireless lighters required the user to manually hold the plug in place to heat the coil, estimating when it was hot enough and risking overheating.
- Thermostatic controls that automatically open an electric circuit when a predetermined temperature is reached were well-known and widely used in other electrical appliances like toasters and flat irons.
- A prior patent by Copeland disclosed a stationary electric lighter that used a thermostatic control to open the circuit once the heating unit was hot.
- H. E. Mead designed a device that combined the removable plug of the wireless lighter with a thermostatic control, which automatically interrupted the power and released the plug when it reached the appropriate temperature for use.
Procedural Posture:
- Automatic Devices Corp., the respondent, sued Cuno Engineering Corp., the petitioner, for patent infringement in U.S. District Court.
- The District Court held that the patent claims were not infringed.
- Automatic Devices Corp. appealed to the U.S. Circuit Court of Appeals.
- The Circuit Court of Appeals reversed the trial court, finding the patent claims valid and infringed.
- The U.S. Supreme Court granted Cuno Engineering Corp.'s petition for a writ of certiorari to resolve a conflict between circuit courts on the question of the patent's validity.
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Issue:
Are claims 2, 3, and 11 of the Mead patent, which combines a known 'cordless' cigar lighter with a well-known thermostatic circuit control, valid as a patentable invention?
Opinions:
Majority - Mr. Justice Douglas
No. The Mead patent claims are not valid because the device was not the result of invention, but rather a mere exercise of the skill of the calling. The court reasoned that both the cordless, removable lighter plug and the thermostatic control for electric heating circuits were well-established in the prior art. Combining these two known elements to create a more convenient and efficient device does not rise to the level of a patentable invention. Under the standard established in Hotchkiss v. Greenwood, a device must not only be new and useful, but must also reveal a 'flash of creative genius' beyond the work of a mechanic skilled in the art. Mead's device, while an improvement, was an advance plainly indicated by the prior art and therefore lacks the requisite ingenuity for patent protection.
Concurrence - Mr. Chief Justice Stone
No. Concurring in the result, this opinion agrees that combining the Morris removable plug with the Copeland thermostatic circuit exhibited no more than the skill of the art. The opinion adds that the commercial success claimed by the respondent cannot support the patent's validity because the commercially successful device is structurally different from the one described in Mead's patent. Mead's actual patented design was never a commercial success and was, like Copeland's, 'still-born.' The success of a different, improved device cannot be used to prove the inventiveness of Mead's original, unused design.
Analysis:
This decision established the influential but controversial "flash of creative genius" standard for determining patentability, significantly heightening the requirement for non-obviousness. The ruling makes it more difficult to obtain patents for combination inventions, where existing technologies are integrated, even if the result is novel, useful, and commercially successful. It reflects a judicial policy aimed at preventing patents on minor technological advances to avoid placing a 'heavy hand of tribute' on industry for what amounts to routine engineering. This standard, though later superseded by the non-obviousness test in the 1952 Patent Act, shaped patent jurisprudence for over a decade.
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