Rosaire v. Baroid Sales Division, National Lead Company

United States Court of Appeals, Fifth Circuit
218 F.2d 72 (1955)

ELI5:

Rule of Law:

A non-secret, successful reduction to practice of an invention by a third party constitutes prior use under 35 U.S.C.A. § 102(a), which invalidates a subsequent patent on the same invention, even if the prior use was not published, publicized, or commercialized.

Facts:

In 1935 and early 1936, Abraham Teplitz and his coworkers at Gulf Oil Corporation developed a method for prospecting for hydrocarbons.
The method involved taking soil samples, heating them to evolve entrained gases, and measuring the quantity of those gases.
Teplitz and Gulf Oil conducted what was found to be a successful and adequate field trial of this method in Palestine, Texas, performing the work openly under ordinary conditions without deliberate concealment.
In September 1936, Gulf Oil suspended the gas prospecting program to review the accumulated data, not because the method itself was a failure.
Gulf Oil did not publish Teplitz's work or apply for a patent on the method at that time.
After Teplitz's work, E.E. Rosaire and Leo Horvitz independently invented the same method of prospecting.
Rosaire and Horvitz were subsequently issued two patents for this invention.
National Lead Company, doing business as Baroid Sales Division, later began using the same method.

Procedural Posture:

E.E. Rosaire sued National Lead Company (d/b/a Baroid Sales Division) for patent infringement in a federal district court (the court of first instance).
Rosaire sought an injunction against further infringement and an accounting for profits and damages.
The district court held that Rosaire's two patents were invalid and void, and that there had been no infringement by Baroid.
The district court entered a final judgment in favor of the defendant, Baroid.
Rosaire (appellant) appealed the judgment to the United States Court of Appeals for the Fifth Circuit.

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Issue:

Does a third party's successful, non-secret field trial of an invention, which was later suspended for data review rather than abandoned as a failure, constitute prior 'use by others' sufficient to invalidate a subsequent patent on the same invention?

Opinions:

Majority - Judge Tuttle

Yes, a third party's successful, non-secret field trial of an invention constitutes prior use sufficient to invalidate a subsequent patent. The court determined that the work conducted by Teplitz for Gulf Oil was not an 'unsuccessful experiment' but was a successful reduction of the invention to practice. The court's finding of fact established that Teplitz's work was an 'adequate field trial' performed openly without any attempt at concealment. The fact that the program was later suspended to review data, rather than due to a failure of the method, distinguishes it from an abandoned experiment. Citing Corona Cord Tire Co. v. Dovan Chemical Corporation, the court held that prior use does not need to be published or brought to the attention of the public at large to invalidate a later patent, as long as the work was done openly in the ordinary course of business.

Analysis:

This decision clarifies the scope of the 'known or used by others' statutory bar to patentability under 35 U.S.C.A. § 102(a). It establishes that a non-informational, non-secret use of an invention, even if not widely publicized or commercialized, can qualify as invalidating prior art. The ruling distinguishes between a failed experiment, which does not invalidate a subsequent patent, and a successful reduction to practice that is merely suspended for business reasons. This precedent makes it more difficult for a later, independent inventor to obtain a valid patent if another party has already successfully and openly practiced the invention, thereby reinforcing the principle that an invention already in the public domain cannot be patented.

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