Citation. Rosaire v. Baroid Sales Div., Nat’l Lead Co., 218 F.2d 72, 104 U.S.P.Q. (BNA) 100 (5th Cir. Tex. Jan. 7, 1955)
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Brief Fact Summary.
National Lead Co. (Defendant) claimed that Rosaire’s (Plaintiff) patents were invalidated by a prior reduction to practice the same method and therefore Defendant had had not infringed on Plaintiff’s patents.
Synopsis of Rule of Law.
An invention that was known or used by others in this country before the patentee’s invention is not patentable.
Rosaire (Plaintiff) claimed to have invented a new method for oil prospecting and held two patents that National Lead Co. (Defendant) had allegedly infringed. Defendant argued that the patents were invalidated because Teplitz for Gulf Oil had known and used the alleged inventions extensively before the date that Plaintiff first conceived the invention. Plaintiff claimed that Teplitz’s work was a failed experiment that was not published or patented and therefore did not give the public the benefit of the experimental work. The trial court found that the work by Teplitz was a successful and adequate field trial of the prospecting method involved and a reduction to practice of that method. The trial court therefore held that the two patents involved in the litigation were invalid and void and that there had been no infringement by National Lead (Defendant). Rosaire (Plaintiff) appealed.
May an invention that was known or used by others in this country before the patentee’s invention be patentable?
(Tuttle, J.) No. An invention that was known or used by others in this country before the patentee’s invention is not patentable. The lack of publication of Teplitz’s work did not keep the alleged infringer, National Lead (Defendant), from claiming prior use as a defense. The work was done openly and in the ordinary course of the activities of the employer, a large producing company in the oil industry, and therefore no further affirmative act was required to bring the work public’s attention at large. Affirmed.
The non-secret use of a claimed process in the usual course of producing articles for commercial purposes is considered a public use. â€œPublicâ€ in this case would seem to mean â€œnot secret.â€ Those who criticized this expansive view would require that the invention be generally known or used before creating a statutory bar.