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United States v. Adams

Supreme Court of United States
383 U.S. 39 (1966)
ELI5:

Rule of Law:

An invention combining elements that are individually known in the prior art is patentable under the nonobviousness standard if the combination yields new, unexpected, and superior results. Secondary considerations, such as initial skepticism by experts and subsequent commercial success or adoption, are relevant indicia of nonobviousness.


Facts:

  • For several years, B. B. Adams experimented in his home to develop a wet battery using a magnesium electropositive electrode and a cuprous chloride electronegative electrode.
  • The resulting invention was the first practical, water-activated, constant potential battery that could be stored dry indefinitely and activated within 30 minutes by adding plain or salt water.
  • The battery was lightweight, had a large capacity, produced a constant voltage, and could operate effectively in extreme temperatures ranging from -65°F to 200°F.
  • Less than a month after filing his patent application in 1941, Adams presented his battery to the U.S. Army Signal Corps.
  • Signal Corps scientists and other government experts, including Dr. George Vinal of the National Bureau of Standards, were highly skeptical and initially dismissed the invention as unworkable, finding Adams's claims "far from convincing."
  • In November 1943, amid World War II, the Signal Corps reversed its position, concluded the battery was feasible, and the government began contracting with companies to procure it for military use.
  • The government did not notify Adams of its use of his invention, and he only learned of it in 1955 after examining a government-procured battery.
  • When Adams's request for compensation was denied in 1960, he initiated a lawsuit.

Procedural Posture:

  • Adams and others sued the United States in the U.S. Court of Claims (a court of first instance for this type of claim) for patent infringement and breach of an implied contract.
  • A Trial Commissioner for the court found the patent valid and partially infringed but found no contract existed.
  • The full Court of Claims adopted the commissioner's findings on the patent issues, holding the patent valid.
  • The United States (petitioner) sought a writ of certiorari from the U.S. Supreme Court, challenging only the holding on patent validity.

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Issue:

Does a patent for a water-activated battery, which combines elements known in the prior art (magnesium and cuprous chloride), satisfy the nonobviousness requirement for patentability under 35 U.S.C. § 103 where the combination produced unexpected, superior operating characteristics that solved long-standing problems?


Opinions:

Majority - Mr. Justice Clark

Yes. A patent for a battery combining known elements is valid if the combination was nonobvious and produced unexpected and superior results. The Adams battery was novel because it was the first practical, water-activated battery of its kind, and prior inventions like Skrivanoff's were inoperable and dangerous. The invention was also nonobvious because it produced surprising operating characteristics that far surpassed existing batteries. The court found compelling evidence of nonobviousness in secondary considerations: experts in the field expressed disbelief and skepticism at the time of the invention, yet the government later adopted it due to its significant advantages. The prior art taught away from such a combination, suggesting that magnesium was impractical and that water-activated systems required electrolytes that would be detrimental to it.



Analysis:

This case, decided with Graham v. John Deere Co., is a seminal decision for its application of the nonobviousness standard under 35 U.S.C. § 103. It establishes that an invention combining old elements can be patentable if it produces a synergistic and unexpected result. The decision's primary impact is its strong endorsement of using "secondary considerations"—such as expert skepticism, long-felt but unsolved needs, and commercial success—as objective evidence to rebut a claim of obviousness. This provides a crucial framework for patent litigation, preventing the use of hindsight to invalidate meritorious inventions and giving weight to real-world reactions to the invention.

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