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Keywords

defendantappealburden of proofpatent
plaintiffappealpatent

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Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 307 U.S. 613, 307 U.S. 616, 59 S.Ct. 675, 83 L.Ed. 1071, 41 U.S.P.Q. 155

Facts

This case involves a patent infringement suit brought by Genzo Shimadzu against the Electric Storage Battery Company. The patents in question relate to processes and apparatus for producing lead oxide powder used in storage batteries. The petitioner, Electric Storage Battery Company, claimed that it had been using the patented processes and apparatus for more than two years prior to Shimadzu's patent applications. The District Court initially ruled in favor of Shimadzu, affirming the validity of the patents, which was later upheld by the Circuit Court of Appeals. The Supreme Court was asked to review the case.

The courts below have held valid and infringed certain claims of three patents granted to Genzo Shimadzu, a citizen and resident of Japan. The earliest is for a method of forming a finely divided and, consequently, more chemically reactive, lead powder.

Issue

Whether the patents held by Shimadzu were valid given the claims of prior use by the Electric Storage Battery Company.

In an infringement suit by the owner of a patent for an invention, made but not patented or published abroad, to restrain an innocent use, the inception of which antedates the application for patent, may the plaintiff prove that his actual date of invention was earlier than the commencement of the asserted infringing use?

Rule

Under U.S. patent law, an invention must not have been in public use in the United States for more than two years prior to the filing of a patent application. If an invention has been publicly used for more than two years, it is considered invalid unless the use was experimental. The burden of proof lies with the defendant to establish prior public use as a defense in a patent infringement suit.

If a valid patent is to issue, the invention must not have been in public use in this country for more than two years prior to the filing of the application.

Analysis

The Supreme Court analyzed the facts surrounding the use of the patented processes and apparatus by the Electric Storage Battery Company. The Court noted that the company had been using the processes commercially since June 1921, which was more than two years before Shimadzu's patent applications. The Court found that the evidence supported the claim of prior public use, which invalidated the patents held by Shimadzu. The Court also addressed the issue of whether the delay in applying for the patent constituted a bar to relief for infringement.

Conclusion

The Supreme Court reversed the decision of the Circuit Court of Appeals, ruling that the patents held by Shimadzu were invalid due to prior public use by the Electric Storage Battery Company.

We hold that the courts below were right in not limiting Shimadzu's date of invention to the date of his application but allowing him to show an earlier actual date.

Who won?

The Electric Storage Battery Company prevailed in this case. The Supreme Court found that the company had established prior public use of the patented processes and apparatus, which invalidated Shimadzu's patents. The Court emphasized that the burden of proof for establishing prior public use lay with the defendant, and the evidence presented demonstrated that the company had been using the inventions commercially for more than two years before the patent applications were filed.

The Supreme Court reversed the decision of the Circuit Court of Appeals, ruling that the patents held by Shimadzu were invalid due to prior public use by the Electric Storage Battery Company.

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