Hotchkiss v. Greenwood

Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851), was a United States Supreme Court decision credited with introducing into United States patent law the concept of non-obviousness as a patentability requirement , as well as stating the applicable legal standard for determining its presence or absence in a claimed invention.

The test of the Hotchkiss case may be described as: whether, at the time the claimed invention was made, the differences between the features of the claimed invention and the things that persons skilled in the relevant art already knew were such that it would have been within the level of skill of an ordinary artisan in that art to combine those known features to make the claimed invention.

More specifically, as stated in the Hotchkiss opinion, itself:

Unless more ingenuity and skill . . . were required . . . than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor.

Contents

• 1 Background

• 2 Lower court ruling

• 3 Supreme Court ruling

  • 3.1 Majority opinion

  • 3.2 Dissenting opinion

• 4 Post-Hotchkiss developments

• 5 1952 codification of Hotchkiss

• 6 Supreme Court rulings from Graham to KSR

  • 6.1 Graham

  • 6.2 Anderson's Black Rock

  • 6.3 Johnston

  • 6.4 Sakraida

  • 6.5 KSR

• 7 References

• 8 External links

Background

(https://en.wikipedia.org/w/index.php?title=Hotchkiss_v._Greenwood&action=edit&section=1 "Edit section: Background")

John G. Hotchkiss, John A. Davenport, and John W. Quincy obtained U.S. Patent No. 2197 , on making or manufacturing knobs of potter's clay or porcelain. The patent asserted that they:

invented an improved method of making knobs for locks, doors, cabinet furniture, and for all other purposes for which wood and metal, or other material knobs, are used. This improvement consists in making said knobs of potter's clay, such as is used in any species of pottery; also of porcelain; the operation is the same as in pottery, by molding, turning, and burning and glazing; . . . the modes of fitting them for their application to doors, locks, furniture, and other uses, will be . . . chiefly predicated on one principle, that of having the cavity in which the screw or shank is inserted, by which they are fastened, largest at the bottom of its depth, in form of a dovetail, and a screw formed therein by pouring in metal in a fused state.

The patented doorknob – from U.S. Pat. No. 2197

The clay or porcelain knob, by itself, was apparently known and used in the United States prior to the invention and patent, and the shank and spindle, by which the knob is attached, including the use of the dovetail and the infusions of melted metal, were also so known and used. But the shank and spindle, the inventors contended, had never before been attached to a knob made of potter's clay or porcelain (rather than to a metal or wooden knob).

Lower court ruling

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Justice John McLean – 1849

In Hotchkiss v. Greenwood, 12 F. Cas. 551 (C.C.D. Ohio 1848), the circuit court for Ohio upheld a jury verdict for the defendants. Justice John McLean , sitting as circuit justice, presided. The most controversial issue, subsequently the subject of the appeal, was plaintiffs' request for a charge to the jury, which McLean refused, to the effect that:

[If the] shank and spindle had never before been attached to a knob made of potter's clay or porcelain, and if it required skill and thought and invention to attach the said knob of clay to the metal shank and spindle, so that the same would unite firmly, and make a solid and substantial article of manufacture, and if the said knob of clay or porcelain so attached were an article better and cheaper than the knob theretofore manufactured of metal or other materials, that the patent was valid.

McLean, on the contrary instructed the jury:

[I]f knobs of the same form, and for the same purposes with that described by the plaintiffs in their [patent] specifications, made of metal or other material, had been known and used in the United States prior to the alleged invention and patent of the plaintiffs, and if the spindle and shank, in the form used by the plaintiffs, had before that time been publicly known and used in the United States, and had been theretofore attached to metallic knobs by means of the dovetail and the infusions of melted metal, as the same is directed in the specification of the plaintiffs to be attached to the knob of potter's clay or porcelain, so that if the knob of clay or porcelain is the mere substitution of one material for another, and the spindle and shank be such as were theretofore in common use, and the mode of connecting them to the knob by dovetail be the same that was theretofore in use in the United States, the material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover.

Supreme Court ruling

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Justice Samuel Nelson

Justice Samuel Nelson delivered the opinion for an 8-1 Court. Justice Levi Woodbury dissented.

Majority opinion

(https://en.wikipedia.org/w/index.php?title=Hotchkiss_v._Greenwood&action=edit&section=4 "Edit section: Majority opinion")

Counsel for the plaintiffs conceded that "knobs had been in use many hundred years; potter's ware and porcelain, many thousand," but insisted that "no one ever before succeeded in uniting the clay and the iron so as to make of the two a substantial and useful article," because there "are many difficulties in uniting them," and it required skill and thought and invention to unite them." Moreover, the new doorknobs were "cheaper and better than any like article ever before known." They were a great commercial success and are replacing metal knob everywhere.

The Court found these arguments unavailing. It was established "that knobs of metal, wood, etc., connected with a shank and spindle, in the mode and by the means used by the patentees in their manufacture, had been before known, and were in public use." Clay doorknobs were old too. Hence, "the only novelty which could be claimed on their part was the adaptation of this old contrivance to knobs of potter's clay or porcelain; in other words, the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood."

Therefore, McLean's charge to the jury was correct, "for unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention." The patent is invalid because: "In other words, the improvement is the work of the skillful mechanic, not that of the inventor."

Dissenting opinion

(https://en.wikipedia.org/w/index.php?title=Hotchkiss_v._Greenwood&action=edit&section=5 "Edit section: Dissenting opinion")

Justice Levi Woodbury

Justice Woodbury disagreed. He focused on the last aspect of the rejected charge. The patentees sought an instruction that "if the said knob of clay or porcelain so attached were an article better and cheaper than the knob theretofore manufactured of metal or other materials, the patent was valid." He considered the "ordinary mechanic" test incorrect for determining whether the claimed invention was patentable, "whereas in my view the true test of its being patentable was, if the invention was new, and better and cheaper than what preceded it." If the new device

was in truth better and cheaper than what had preceded it for this purpose, it would surely be an improvement. It would be neither frivolous nor useless, and under all the circumstances it is manifest that the skill necessary to construct it, on which both the court below and the Court here rely, is an immaterial inquiry, or it is entirely subordinate to the question whether the invention was not cheaper and better.

Woodbury concluded: "And why is not

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