Metallizing Engineering Co. v. Kenyon Bearing & AP Co.

Circuit Court of Appeals, Second Circuit
153 F.2d 516 (1946)

ELI5:

Rule of Law:

An inventor's commercial exploitation of a secret process or machine by selling the product thereof for more than the statutory one-year period prior to the patent application constitutes a "public use" that forfeits the right to a patent.

Facts:

Meduna invented a new process for conditioning a metal surface to better bond with 'spray metal,' primarily for repairing worn machine parts.
The process involved using an existing machine (the 'McQuay-Norris' machine) to deposit a preliminary layer of metal, creating a rough, bondable surface.
More than one year before filing his patent application on August 6, 1942, Meduna used this process on a commercial basis to build up worn metal parts for customers.
Meduna's main purpose in using the process during this period was commercial, with any experimental purpose being secondary.
While Meduna sold the service and the resulting product, the process itself was kept secret and could not be determined from examining the finished parts.

Procedural Posture:

The assignee of Meduna's patent sued the defendants for patent infringement in a U.S. District Court (trial court).
The district court found that Meduna had used the process commercially for more than one year before the critical date of his patent application.
The district court, following existing precedent (Peerless Roll Leaf Co.), concluded that because the process was kept secret, the commercial use did not constitute an invalidating 'public use.'
The district court entered a decree holding the patent valid and infringed.
The defendants (appellants) appealed the district court's judgment to the U.S. Court of Appeals for the Second Circuit (appellee is the patent holder).

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Issue:

Does an inventor's commercial use of a secret process for profit for more than one year prior to the patent application constitute a "public use" under patent law, thereby invalidating the patent, even if the process itself is not disclosed to the public?

Opinions:

Majority - L. Hand

Yes. An inventor forfeits the right to a patent by exploiting their discovery competitively for more than the statutory period, regardless of whether the public learns about the invention. The court distinguished between two doctrines of 'prior use': 1) use by a third party, which only invalidates a patent if it discloses the invention to the art, and 2) the inventor's own competitive exploitation, which acts as a forfeiture of the right to a patent as a matter of public policy. The court reasoned that the patent system is a bargain wherein an inventor receives a limited monopoly in exchange for public disclosure. An inventor cannot extend this monopoly by first commercially exploiting the invention in secret and then, when competition arises, seeking a patent. This policy prevents inventors from retarding the progress of science by withholding their inventions from the public while profiting from them. In reaching this conclusion, the court explicitly overruled its prior decision in Peerless Roll Leaf Co. v. Griffin & Sons, which had incorrectly held that selling the product of a secret machine did not constitute a public use.

Analysis:

This decision significantly clarified the 'public use' bar under patent law by establishing that an inventor's own commercial exploitation is a forfeiture, which is a distinct legal concept from abandonment or prior art disclosure by others. It shifts the focus from what the public learns from the use to the inventor's intent and actions in commercially leveraging the invention before seeking patent protection. By overruling its prior precedent, the court eliminated a loophole that allowed inventors to extend their effective monopoly by combining trade secrecy with a later patent. The ruling reinforces the core policy that an inventor must choose between profiting from secrecy or obtaining a time-limited patent monopoly in exchange for disclosure.

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