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Keywords

injunctionpatentdeclaratory judgment

Related Cases

Jungersen v. Ostby & Barton Co., 335 U.S. 560, 69 S.Ct. 269, 93 L.Ed. 235, 80 U.S.P.Q. 32

Facts

Ostby & Barton Company initiated a declaratory judgment action against Thoger Gronberg Jungersen, claiming that his patent for a method of casting intricate designs was invalid and not infringed. Jungersen counterclaimed for infringement and sought an injunction. The District Court ruled some claims valid but not infringed, while others were invalid. In a separate action, Jungersen sued Robert Baden for infringement, which resulted in all claims being deemed invalid. Both parties sought certiorari to resolve the conflicting judgments.

In 1941, Ostby and Barton Company instituted in the United States District Court for the District of New Jersey, an action for a declaratory judgment that the patent was invalid and not infringed. Jungersen, by counterclaim, alleged infringement and sought an injunction.

Issue

Is United States Patent No. 2,118,468, which covers a method of casting articles of intricate design, valid?

Rule

A patent is invalid if it does not demonstrate invention over prior art. The combination of known processes or methods does not constitute a patentable invention unless it results in a new and non-obvious method. Commercial success does not validate a patent if the underlying invention is lacking.

A patent covering a method of casting articles of intricate design, using methods old in the art, could not be upheld on ground that it was applied primarily to jewelry casting and that jewelry casting was a separate art, where patent itself was not restricted to casting of jewelry and the prior improvements in art of casting were obviously applicable to type of casting sought to be effected by the inventor.

Analysis

The court analyzed the claims of Jungersen's patent against prior art, concluding that each step of the claimed method was anticipated by existing techniques in casting. The combination of these steps, including the use of centrifugal force, was not deemed inventive as it merely refined existing methods. The court emphasized that commercial success cannot compensate for the absence of a novel invention.

An examination of the prior art as it existed at the time of this alleged invention reveals that every step in the Jungersen method was anticipated. We think that his combination of these steps was, in its essential features, also well known in the art.

Conclusion

The court held that all claims of the patent were invalid for lack of invention, affirming the lower court's decisions.

We hold all the claims of the patent invalid for want of invention.

Who won?

Ostby & Barton Company prevailed in the first action regarding the validity of the patent, as the court found that the claims were either not infringed or invalid. In the second action, the court affirmed the lower court's ruling that all claims of Jungersen's patent were invalid, thus favoring Ostby & Barton Company in both instances.

Ostby & Barton Company prevailed in the first action regarding the validity of the patent, as the court found that the claims were either not infringed or invalid.

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