Great Atlantic Pacific & Tea Co. v. Supermarket Equipment Corp.

U.S. Supreme Court A. & P. Tea Co. v. Supermarket
Corp., 340
U.S. 147 (1950) Great Atlantic & Pacific Tea Co.
v. Supermarket Equipment Corp. No. 32 Argued October 18-19,
1950 Decided December 4,
1950 340
U.S. 147 CERTIORARI TO THE UNITED STATES
COURT OF APPEALS FOR THE SIXTH
CIRCUIT Syllabus Claims 4, 5 and 6 of the Turnham patent No. 2,242,408, for a
cashier's counter and movable frame for "cash and carry" grocery
stores, held invalid for want of invention. Pp. 340 U. S.
148 -154.

															(a) The extension of the counter alone was not sufficient to
sustain the patent, unless, together with the other old elements,
it made up a new combination patentable as such. Pp. 340 U. S.
149 -150.

															(b) The mere combination of a number of old parts or elements
which, in combination, perform or produce no new or different
function or operation than that theretofore performed or produced
by them, is not patentable invention. P. 340 U. S.
151 .

															(c) This patentee has added nothing to the total stock of
knowledge, but has merely brought together segments of prior art
and claims them in congregation as a monopoly. P. 340 U. S.
153 .

															(d) Commercial success, without invention, does not make
patentability. P. 340 U. S.
153 .

															(e) The concurrence of the two courts below in holding the
patent claims valid does not preclude this Court from overruling
them where, as in this case, a standard of invention appears to
have been used that is less exacting than that required where a
combination is made up entirely of old components. Pp. 340 U. S.
153 -154.

															179 F.2d 636 reversed.

															The District Court sustained the validity of certain patent
claims. 78 F. Supp.
388 . The Court of Appeals affirmed. 179 F.2d 636. This Court
granted certiorari. 339 U.S. 947. Reversed, p. 340 U. S.
154 . Page 340 U. S. 148 MR. JUSTICE JACKSON delivered the opinion of the Court.

															Two courts below have concurred in holding three patent claims
to be valid, [ Footnote 1 ] and
it is stipulated that, if valid, they have been infringed. The
issue for the resolution of which we granted certiorari [ Footnote 2 ] is whether they applied
correct criteria of invention. We hold that they have not, and
that, by standards appropriate for a combination patent, these
claims are invalid. Page 340 U. S. 149 Stated without artifice, the claims assert invention of a
cashier's counter equipped with a three-sided frame, or rack, with
no top or bottom, which, which pushed or pulled, will move
groceries deposited within it by a customer to the checking clerk
and leave them there when it is pushed back to repeat the
operation. It is kept on the counter by guides. That the resultant
device works as claimed, speeds the customer on his way, reduces
checking costs for the merchant, has been widely adopted and
successfully used, appear beyond dispute.

															The District Court explicitly found that each element in this
device was known to prior art. "However," it found,

															"the conception of a counter with an extension to receive a
bottomless self-unloading tray with which to push the contents of
the tray in front of the cashier was a decidedly novel feature, and
constitutes a new and useful combination. [ Footnote 3 ]"

															The Court of Appeals regarded this finding of invention as one
of fact, sustained by substantial evidence, and affirmed it as not
clearly erroneous. It identified no other new or different element
to constitute invention, and overcame its doubts by consideration
of the need for some such device and evidence of commercial success
of this one.

															Since the courts below perceived invention only in an extension
of the counter, we must first determine whether they were right in
so doing. We think not. In the first place, the extension is not
mentioned in the claims, except, perhaps, by a construction too
strained to be consistent with the clarity required by claims which
define the boundaries of a patent monopoly. 38 Stat. 958, 35 U.S.C.
§ 33; United Carbon Co. v. Binney & Smith Co., 317 U. S. 228 ; General Electric Co. v.
Wabash Appliance Corp. , 304 Page 340 U. S. 150 U.S. 364. In the second place, were we to treat the extension as
adequately disclosed, it would not amount to an invention. We need
not go so far as to say that invention never can reside in mere
change of dimensions of an old device, but certainly it cannot be
found in mere elongation of a merchant's counter -- a contrivance
which, time out of mind, has been of whatever length suited the
merchant's needs. In the third place, if the extension itself were
conceded to be a patentable improvement of the counter, and the
claims were construed to include it, the patent would nevertheless
be invalid for overclaiming the invention by including old
elements, unless, together with its other old elements, the
extension made up a new combination patentable as such. Bassick
Mfg. Co. v. R. M. Hollingshead Co., 298 U.
S. 415 , 298 U. S. 425 ; Carbice Corp. of America v. American Patents Development
Corp., 283 U. S. 27 . Thus,
disallowing the only thing designated by the two courts as an
invention, the question is whether the combination can survive on
any other basis. What indicia of invention should the courts seek
in a case where nothing tangible is new, and invention, if it
exists at all, is only in bringing old elements together?

															While this Court has sustained combination patents, [ Footnote 4 ] it never has ventured to
give a precise and comprehensive definition of the test to be
applied in such cases. The voluminous literature which the subject
has excited discloses no such test. [ Footnote 5 ] It is agreed that the key to patentability Page 340 U. S. 151 of a mechanical device that brings old factors into cooperation
is presence or lack of invention. In course of time, the profession
came to employ the term "combination" to imply its presence, and
the term "aggregation" to signify its absence, thus making antonyms
in legal art of words which, in ordinary speech, are more nearly
synonyms. However useful as words of art to denote in short form
that an assembly of units has failed or has met the examination for
invention, their employment as tests to determine invention results
in nothing but confusion. The concept of invention is inherently
elusive when applied to combination of old elements. This, together
with the imprecision of our language, have counseled courts and
text writers to be cautious in affirmative definitions or rules on
the subject. [ Footnote 6 ]

															The negative rule accrued from many litigations was condensed
about as precisely as the subject permits in Lincoln
Engineering Co. of Illinois v. Stewart-Warner Corp., 303 U. S. 545 , 303 U. S.
549 :

															"The mere aggregation of a number of old parts or elements
which, in the aggregation, perform or produce no new or different
function or operation than that theretofore performed or produced
by them is not patentable invention."

															To the same end is Toledo Page 340 U. S. 152 Pressed Steel Co. v. Standard Parts, Inc., 307 U.
S. 350 , and Cuno Engineering Corp. v. Automatic
Devices Corp., 314 U. S. 84 . The
conjunction or concert of known elements must contribute something;
only when the whole in some way exceeds the sum of its parts is the
accumulation of old devices patentable. Elements may, of course,
especially in chemistry or electronics, take on some new quality or
function from being brought into concert, but this is not a usual
result of uniting elements old in mechanics. This case is wanting
in any unusual or surprising consequences from the unification of
the elements here concerned, and there is nothing to indicate that
the lower courts scrutinized the claims in the light of this rather
severe test.

															Neither court below has made any finding that old elements which
made up this device perform any additional or different function in
the combination than they perform out of it. This counter does what
a store counter always has done -- it supports merchandise at a
convenient height while the customer makes his purchases and the
merchant his sales. T he three-sided rack will draw or push goods
put within it from one place to another -- just what any such a
rack would do on any smooth surface -- and the guide rails keep it
from falling or sliding off from the counter, as guide rails have
ever done. Two and two have been added together, and still they
make only four.

															Courts should scrutinize combination patent claims with a care
proportioned to the difficulty and improbability of finding
invention in an assembly of old elements. The function of a patent
is to add to the sum of useful knowledge. Patents cannot be
sustained when, on the contrary, their effect is to subtract from
former resources freely available to skilled artisans. A patent for
a combination which only unites old elements with no change in
their respective functions, such as is presented here, obviously
withdraws what already is known into Page 340 U. S. 153 the field of its monopoly and diminishes the resources available
to skillful men. This patentee has added nothing to the total stock
of knowledge, but has merely brought together segments of prior art
and claims them in congregation as a monopoly.

															The Court of Appeals and the respondent both lean heavily on
evidence that this device filled a long-felt want and has enjoyed
commercial success. But commercial success, without invention, will
not make patentability. Toledo Pressed Steel Co. v. Standard
Parts, Inc., supra. The courts below concurred in finding that
every element here claimed (except extension of the counter) was
known to prior art. When, for the first time, those elements were
put to work for the supermarket type of stores, although each
performed the same mechanical function for them that it had been
known to perform, they produced results more striking, perhaps,
than in any previous utilization. To bring these devices together
and apply them to save the time of customer and checker was a good
idea, but scores of progressive ideas in business are not
patentable, and we conclude on the findings below that this one was
not.

															It is urged, however, that concurrence of two courts below, in
holding the patent claims valid, concludes this Court. A recent
restatement of the "two-court rule" reads,

															"A court of law, such as this Court is, rather than a court for
correction of errors in fact, finding, cannot undertake to review
concurrent findings of fact by two courts below in the absence of a
very obvious and exceptional showing of error." Graver Tank & Mfg. Co. v. Linde Air Products Co., 336 U. S. 271 , 336 U. S. 275 .
The questions of general importance considered here are not
contingent upon resolving conflicting testimony, for the facts are
little in dispute. We set aside no finding of fact as to invention,
for none has been made except as to the extension of the counter,
which Page 340 U. S. 154 cannot stand as a matter of law. The defect that we find in this
judgment is that a standard of invention appears to have been used
that is less exacting than that required where a combination is
made up entirely of old components. It is on this ground that the
judgment below is Reversed. [ Footnote 1 ]

															Claims 4, 5, and 6 of the Turnham patent No. 2,242,408, which
are involved in the controversy, read as follows:

															"4. A checker's stand including a counter of the character
described, an open bottom pusher frame thereon, means to guide said
frame in sliding movement so that goods placed on the end of said
counter within said frame may be pushed along the counter in a
group to a position adjacent the checker by movement of said
frame."

															"5. A cashier's counter for cash and carry type of grocery
comprising a portion spaced from the cashier's stand and upon which
the merchandise may be deposited and arranged, a bottomless three
sided frame on said portion and within which the merchandise is
deposited and arranged, means whereby said frame is movable on said
counter from said portion to a position adjacent the cashier's
stand so that the merchandise may thus be moved as a group to a
point where it may be conveniently observed, counted, and
registered by the cashier."

															"6. A cashier's counter for cash and carry type of grocery
comprising a portion spaced from the cashier's stand and upon which
the merchandise may be deposited and arranged, a bottomless frame
on said portion and within which the merchandise is deposited and
arranged, means whereby said frame is movable on said counter from
said portion to a position adjacent the cashier's stand so that the
merchandise may thus be moved as a group to a point where it may be
conveniently observed, counted, and registered by the cashier, said
frame being open at the end adjacent the cashier's stand and
readily movable to be returned over said portion so as to receive
the merchandise of another customer while the cashier is occupied
with the previous group."

															[ Footnote 2 ]

															339 U.S. 947.

															[ Footnote 3 ]

															Finding of Fact No. 15 of District Judge Picard, whose opinion
appears at 78 F. Supp.
388 .

															[ Footnote 4 ] E.g., Keystone Mfg. Co. v. Adams, 151 U.
S. 139 ; Diamond Rubber Co. of New York v.
Consolidated Rubber Tire Co., 220 U.
S. 428 .

															[ Footnote 5 ]

															The Index to Legal Periodicals reveals no less than sixty-four
articles relating to combination patents and the theory and
philosophy underlying the patent laws. Among the many texts are 1
Walker on Patents (Deller's ed.1937); Stedman, Patents; Toulmin,
Handbook of Patents; Merwin, Patentability of Inventions; Amdur,
Patent Law and Practice, and 1 Roberts, Patentability and Patent
Interpretation.

															[ Footnote 6 ]

															With respect to the word "invention," Mr. Justice Brown
said:

															"The truth is the word cannot be defined in such manner as to
afford any substantial aid in determining whether a particular
device involves an exercise of the inventive faculty or not. In a
given case, we may be able to say that there is present invention
of a very high order. In another, we can see that there is lacking
that impalpable something which distinguishes invention from simple
mechanical skill. Courts, adopting fixed principles as a guide,
have, by a process of exclusion, determined that certain variations
in old devices do or do not involve invention, but whether the
variation relied upon in a particular case is anything more than
ordinary mechanical skill is a question which cannot be answered by
applying the test of any general definition." McClain v. Ortmayer, 141 U. S. 419 , 141 U. S.
427 .

															MR. JUSTICE DOUGLAS, with whom MR. JUSTICE BLACK agrees,
concurring.

															It is worth emphasis that every patent case involving validity
presents a question which requires reference to a standard written
into the Constitution. Article I, § 8, contains a grant to the
Congress of the power to permit patents to be issued. But, unlike
most of the specific powers which Congress is given, that grant is
qualified. The Congress does not have free reign, for example, to
decide that patents should be easily or freely given. The Congress
acts under the restraint imposed by the statement of purpose in
Art. I, § 8. The purpose is "To promote the Progress of Science and
useful Arts." The means for achievement of that end is the grant
for a limited time to inventors of the exclusive right to their
inventions.

															Every patent is the grant of a privilege of exacting tolls from
the public. The Framers plainly did not want those monopolies
freely granted. The invention, to justify a patent, had to serve
the ends of science -- to push back the frontiers of chemistry,
physics, and the like; to make a distinctive contribution to
scientific knowledge. That is why, through the years, the opinions
of the Court commonly have taken "inventive genius" as the test. * It Page 340 U. S. 155 is not enough that an article is new and useful. The
Constitution never sanctioned the patenting of gadgets. Patents
serve a higher end -- the advancement of science. An invention need
not be as startling as an atomic bomb to be patentable. But is has
to be of such quality and distinction that masters of the
scientific field in which it falls will recognize it as an advance.
Mr. Justice Bradley stated in Atlantic Works v. Brady, 107 U. S. 192 , 107 U. S. 200 ,
the consequences of a looser standard:

															"It was never the object of those laws to grant a monopoly for
every trifling device, every shadow of a shade of an idea, which
would naturally and spontaneously occur to any skilled mechanic or
operator in the ordinary progress of manufactures. Such an
indiscriminate creation of exclusive privileges tends rather to
obstruct than to stimulate invention. It creates a class of
speculative schemers who make it their business to watch the
advancing wave of improvement, and gather its foam in the form of
patented monopolies which enable them to lay a heavy tax upon the
industry of the country without contributing anything to the real
advancement of the arts. It embarrasses the honest pursuit of
business with fears and apprehensions of concealed liens and
unknown liabilities to lawsuits and vexatious accountings for
profits made in good faith."

															The standard of patentability is a constitutional standard, and
the question of validity of a patent is a question of law. Mahn
v. Harwood, 112 U. S. 354 , 112 U. S. 358 .
The Court fashioned in Graver Tank & Mfg. Co. v.
Linde Air Products Co. , 336 U.S. Page 340 U. S. 156 271, 336 U. S. 275 ,
a rule for patent cases to the effect that this Court will not
disturb a finding of invention made by two lower courts in absence
of a very obvious and exceptional showing of error. That rule,
imported from other fields, never had a place in patent law. Having
served its purpose in Graver Tank & Mfg. Co. v. Linde Air
Products Co., it is now, in substance, rejected. The Court now
recognizes what has long been apparent in our cases: that it is the
"standard of invention" that controls. That is present in every
case where the validity of a patent is in issue. It is that
question which the Court must decide. No "finding of fact" can be a
substitute for it in any case. The question of invention goes back
to the constitutional standard in every case. We speak with final
authority on that constitutional issue, as we do on many
others.

															The attempts through the years to get a broader, looser
conception of patents than the Constitution contemplates have been
persistent. The Patent Office, like most administrative agencies,
has looked with favor on the opportunity which the exercise of
discretion affords to expand its own jurisdiction. And so it has
placed a host of gadgets under the armour of patents -- gadgets
that obviously have had no place in the constitutional scheme of
advancing scientific knowledge. A few that have reached this Court
show the pressure to extend monopoly to the simplest of
devices: Hotchkiss v.
Greenwood , 11 How. 248: doorknob made of clay,
rather than metal or wood, where different shaped door knobs had
previously been made of clay. Rubber-Tip Pencil Co. v.
Howard , 20 Wall. 498: rubber caps put on wood
pencils to serve as erasers. Union Paper Collar Co. v. Van
Dusen , 23 Wall. 530: making collars of parchment
paper where linen paper and linen had previously been used. Page 340 U. S. 157 Brown v. Piper, 91 U. S. 37 : a
method for preserving fish by freezing them in a container
operating in the same manner as an ice cream freezer. Reckendorfer v. Faber, 92 U. S.
347 : inserting a piece of rubber in a slot in the end of
a wood pencil to serve as an eraser. Dalton v. Jennings, 93 U. S. 271 : fine
thread placed across open squares in a regular hairnet to keep hair
in place more effectively. Double-Pointed Tack Co. v. Two Rivers Mfg. Co., 109 U. S. 117 :
putting a metal washer on a wire staple. Miller v. Foree, 116 U. S. 22 : a
stamp for impressing initials in the side of a plug of tobacco. Preston v. Manard, 116 U. S. 661 : a
hose reel of large diameter so that water may flow through hose
while it is wound on the reel. Hendy v. Golden State & Miners' Iron Works, 127 U. S. 370 :
putting rollers on a machine to make it moveable. St. Germain v. Brunswick, 135 U.
S. 227 : revolving cue rack. Shenfield v. Nashawannuck Mfg. Co., 137 U. S.
56 : using flat cord instead of round cord for the loop
at the end of suspenders. Florsheim v. Schilling, 137 U. S.
64 : putting elastic gussets in corsets. Cluett v. Claflin, 140 U. S. 180 : a
shirt bosom or dickie sewn onto the front of a shirt. Adams v. Bellaire Stamping Co., 141 U.
S. 539 : a lantern lid fastened to the lantern by a hinge
on one side and a catch on the other. Patent Clothing Co. v. Glover, 141 U.
S. 560 : bridging a strip of cloth across the fly of
pantaloons to reinforce them against tearing. Pope Mfg. Co. v. Gormully & Jeffery Mfg. Co., 144 U. S. 238 :
placing rubber hand grips on bicycle handlebars. Page 340 U. S. 158 Knapp v. Morss, 150 U. S. 221 :
applying the principle of the umbrella to a skirt form. Morgan Envelope Co. v. Albany Perforated Wrapping Paper
Co., 152 U. S. 425 : an
oval, rather than cylindrical toilet paper roll, to facilitate
tearing off strips. Dunham v. Dennison Mfg. Co., 154 U.
S. 103 : an envelope flap which could be fastened to the
envelope in such a fashion that the envelope could be opened
without tearing.

															The patent involved in the present case belongs to this list of
incredible patents which the Patent Office has spawned. The fact
that a patent as flimsy and as spurious as this one has to be
brought all the way to this Court to be declared invalid
dramatically illustrates how far our patent system frequently
departs from the constitutional standards which are supposed to
govern.

															* "Inventive genius" -- Mr. Justice Hunt in Reckendorfer v.
Faber, 92 U. S. 347 , 92 U. S. 357 ;
"Genius or invention" -- Mr. Chief Justice Fuller in Smith v.
Whitman Saddle Co., 148 U. S. 674 , 148 U. S. 681 ;
"Intuitive genius" -- Mr. Justice Brown in Potts v.
Creager, 155 U. S. 597 , 155 U. S. 607 ;
"Inventive genius" -- Mr. Justice Stone in Concrete Appliances
Co. v. Gomery, 269 U. S. 177 , 269 U. S. 185 ;
"Inventive genius" -- Mr. Justice Roberts in Mantle Lamp Co. of
America v. Aluminum Products Co., 301 U.
S. 544 , 301 U. S. 546 ; Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84 , 314 U. S. 91 ,
"the flash of creative genius, not merely the skill of the
calling."

Summary: The U.S. Supreme Court invalidated a patent for a cashier's counter with a movable frame, finding that the combination of old elements did not constitute a new invention. The Court emphasized that a patentable invention must produce a new or different function or operation and contribute to the total stock of knowledge. Commercial success alone is insufficient for patentability. The Court provided examples of "incredible patents" that should not have been granted, highlighting the need for stricter standards in patent law.


U.S. Supreme Court Sears, Roebuck & Co. v. Stiffel
Co., 376
U.S. 225 (1964) Sears, Roebuck & Co. v. Stiffel
Co. No. 108 Argued January 16,
1964 Decided March 9, 1964 376
U.S. 225 CERTIORARI TO THE UNITED STATES
COURT OF APPEALS FOR THE SEVENTH
CIRCUIT Syllabus Respondent, whose design and mechanical patents are invalid for
want of invention, cannot, under a state unfair competition law,
obtain an injunction against copying its product or an award of
damages for such copying, as such use of state law conflicts with
the exclusive power of the Federal Government to grant patents only
to true inventions, and then only for a limited time. An unpatented
article, being in the public domain, may be freely copied, though
labeling or other precautions may be required by state law where
appropriate to prevent deception as to source. Pp. 376 U. S.
225 -233.

															313 F.2d 115, reversed.

															MR. JUSTICE BLACK delivered the opinion of the Court.

															The question in this case is whether a State's unfair
competition law can, consistently with the federal patent laws,
impose liability for or prohibit the copying of an article which is
protected by neither a federal patent nor a copyright. The
respondent, Stiffel Company, secured design and mechanical patents
on a "pole lamp" -- a vertical Page 376 U. S. 226 tube having lamp fixtures along the outside, the tube being made
so that it will stand upright between the floor and ceiling of a
room. Pole lamps proved a decided commercial success, and, soon
after Stiffel brought them on the market, Sears, Roebuck &
Company put on the market a substantially identical lamp, which it
sold more cheaply, Sears' retail price being about the same as
Stiffel's wholesale price. Stiffel then brought his action against
Sears in the United States District Court for the Northern District
of Illinois, claiming in its first count that, by copying its
design, Sears had infringed Stiffel's patents, and, in its second
count, that, by selling copies of Stiffel's lamp, Sears had caused
confusion in the trade as to the source of the lamps, and had
thereby engaged in unfair competition under Illinois law. There was
evidence that identifying tags were not attached to the Sears
lamps, although labels appeared on the cartons in which they were
delivered to customers, that customers had asked Stiffel whether
its lamps differed from Sears', and that, in two cases, customers
who had bought Stiffel lamps had complained to Stiffel on learning
that Sears was selling substantially identical lamps at a much
lower price.

															The District Court, after holding the patents, invalid for want
of invention, went on to find as a fact that Sears' lamp was "a
substantially exact copy" of Stiffel's, and that the two lamps were
so much alike, both in appearance and in functional details, "that
confusion between them is likely, and some confusion has already
occurred." On these findings, the court held Sears guilty of unfair
competition, enjoined Sears from "unfairly competing with [Stiffel]
by selling or attempting to sell pole lamps identical to or
confusingly similar to" Stiffel's lamp, and ordered an accounting
to fix profits and damages resulting from Sears' "unfair
competition." Page 376 U. S. 227 The Court of Appeals affirmed. [ Footnote 1 ] 313 F.2d 115. That court held that, to make
out a case of unfair competition under Illinois law, there was no
need to show that Sears had been "palming off" its lamps as Stiffel
lamps; Stiffel had only to prove that there was a "likelihood of
confusion as to the source of the products" -- that the two
articles were sufficiently identical that customers could not tell
who had made a particular one. Impressed by the "remarkable
sameness of appearance" of the lamps, the Court of Appeals upheld
the trial court's findings of likelihood of confusion and some
actual confusion, findings which the appellate court construed to
mean confusion "as to the source of the lamps." The Court of
Appeals thought this enough under Illinois law to sustain the trial
court's holding of unfair competition, and thus held Sears liable
under Illinois law for doing no more than copying and marketing an
unpatented article. [ Footnote
2 ] We granted certiorari to consider whether this Page 376 U. S. 228 use of a State's law of unfair competition is compatible with
the federal patent law. 374 U.S. 826.

															Before the Constitution was adopted, some States had granted
patents either by special act or by general statute, [ Footnote 3 ] but when the Constitution was
adopted, provision for a federal patent law was made one of the
enumerated powers of Congress because, as Madison put it in The
Federalist No. 43, the States "cannot separately make effectual
provision" for either patents or copyrights. [ Footnote 4 ] That constitutional provision is Art.
I, § 8, cl. 8, which empowers Congress

															"To promote the Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the exclusive Right to
their respective Writings and Discoveries."

															Pursuant to this constitutional Page 376 U. S. 229 authority, Congress in 1790, enacted the first federal patent
and copyright law, 1 Stat. 109, and, ever since that time, has
fixed the condition upon which patents and copyrights shall be
granted, see 17 U.S.C. §§ 1-216; 35 U.S.C. §§ 1-293. These
laws, like other laws of the United States enacted pursuant to
constitutional authority, are the supreme law of the land. See
Sperry v. Florida, 373 U. S. 379 (1963). When state law touches upon the area of these federal
statutes, it is "familiar doctrine" that the federal policy "may
not be set at naught, or its benefits denied" by the state law. Sola Elec. Co. v. Jefferson Elec. Co., 317 U.
S. 173 , 317 U. S. 176 (1942). This is true, of course, even if the state law is enacted
in the exercise of otherwise undoubted state power.

															The grant of a patent is the grant of a statutory monopoly;
[ Footnote 5 ] indeed, the grant
of patents in England was an explicit exception to the statute of
James I prohibiting monopolies. [ Footnote 6 ] Patents are not given as favors, as was the
case of monopolies given by the Tudor monarchs, see The Case of
Monopolies (Darcy v. Allein), 11 Co.Rep. 84b, 77 Eng.Rep. 1260
(K.B.1602), but are meant to encourage invention by rewarding the
inventor with the right, limited to a term of years fixed by the
patent, to exclude others from the use of his invention. During
that period of time, no one may make use, or sell the patented Page 376 U. S. 230 product without the patentee's authority. 35 U.S.C. § 271. But,
in rewarding useful invention, the "rights and welfare of the
community must be fairly dealt with and effectually guarded." Kendall v.
Winsor , 21 How. 322, 62 U. S. 328 (1859). To that end, the prerequisites to obtaining a patent are
strictly observed, and, when the patent has issued, the limitations
on its exercise are equally strictly enforced. To begin with, a
genuine "invention" or "discovery" must be demonstrated, "lest, in
the constant demand for new appliances, the heavy hand of tribute
be laid on each slight technological advance in an art." Cuno
Engineering Corp. v. Automatic Devices Corp., 314 U. S.
84 , 314 U. S. 92 (1941); see Great Atlantic & Pacific Tea Co. v. Supermarket
Equipment Corp., 340 U. S. 147 , 340 U. S.
152 -153 (1950); Atlantic Works v. Brady, 107 U. S. 192 , 107 U. S.
199 -200 (1883). Once the patent issues, it is strictly
construed. United States v. Masonite Corp., 316 U.
S. 265 , 316 U. S. 280 (1942), it cannot be used to secure any monopoly beyond that
contained in the patent, Morton Salt Co. v. G. S. Suppiger
Co., 314 U. S. 488 , 314 U. S. 492 (1942), the patentee's control over the product when it leaves his
hands is sharply limited, see United States v. Univis Lens
Co., 316 U. S. 241 , 316 U. S.
250 -252 (1942), and the patent monopoly may not be used
in disregard of the antitrust laws, see International Business
Machines Corp. v. United States, 298 U.
S. 131 (1936); United Shoe Machinery Corp. v. United
States, 258 U. S. 451 , 258 U. S.
463 -464 (1922). Finally, and especially relevant here,
when the patent expires, the monopoly created by it expires, too,
and the right to make the article -- including the right to make it
in precisely the shape it carried when patented -- passes to the
public. Kellogg Co. v. National Biscuit Co., 305 U.
S. 111 , 305 U. S.
120 -122 (1938); Singer Mfg. Co. v. June Mfg.
Co., 163 U. S. 169 , 163 U. S. 185 (1896).

															Thus, the patent system is one in which uniform federal
standards are carefully used to promote invention Page 376 U. S. 231 while at the same time preserving free competition. [ Footnote 7 ] Obviously a State could
not, consistently with the Supremacy Clause of the Constitution,
[ Footnote 8 ] extend the life of
a patent beyond its expiration date or give a patent on an article
which lacked the level of invention required for federal patents.
To do either would run counter to the policy of Congress of
granting patents only to true inventions, and then only for a
limited time. Just as a State cannot encroach upon the federal
patent laws directly, it cannot, under some other law, such as that
forbidding unfair competition, give protection of a kind that
clashes with the objectives of the federal patent laws.

															In the present case, the "pole lamp" sold by Stiffel has been
held not to be entitled to the protection of either a mechanical or
a design patent. An unpatentable article, like an article on which
the patent has expired, is in the public domain, and may be made
and sold by whoever chooses to do so. What Sears did was to copy
Stiffel's design and to sell lamps almost identical to those sold
by Stiffel. This it had every right to do under the federal patent
laws. That Stiffel originated the pole lamp and made it popular is
immaterial.

															"Sharing in the goodwill of an article unprotected by patent or
trademark is the exercise of a right possessed by all -- and in the
free exercise of which the consuming public is deeply
interested." Kellogg Co. v. National Biscuit Co., supra, 305 U.S. at 305 U. S. 122 .
To allow a State by use of its law of unfair competition to prevent
the copying of an article which represents Page 376 U. S. 232 too slight an advance to be patented would be to permit the
State to block off from the public something which federal law has
said belongs to the public. The result would be that, while federal
law grants only 14 or 17 years' protection to genuine inventions, see 35 U.S.C. §§ 154, 173, States could allow perpetual
protection to articles too lacking in novelty to merit any patent
at all under federal constitutional standards. This would be too
great an encroachment on the federal patent system to be
tolerated.

															Sears has been held liable here for unfair competition because
of a finding of likelihood of confusion based only on the fact that
Sears' lamp was copied from Stiffel's unpatented lamp and that,
consequently, the two looked exactly alike. Of course, there could
be "confusion" as to who had manufactured these nearly identical
articles. But mere inability of the public to tell two identical
articles apart is not enough to support an injunction against
copying or an award of damages for copying that which the federal
patent laws permit to be copied. Doubtless a State may, in
appropriate circumstances, require that goods, whether patented or
unpatented, be labeled, or that other precautionary steps be taken
to prevent customers from being misled as to the source, just as it
may protect businesses in the use of their trademarks, labels, or
distinctive dress in the packaging of goods so as to prevent
others, by imitating such markings, from misleading purchasers as
to the source of the goods. [ Footnote 9 ] But because of the federal patent laws, a
State may not, when the article is unpatented and uncopyrighted,
prohibit the Page 376 U. S. 233 copying of the article itself or award damages for such copying. Cf. G. Ricordi & Co. v. Haendler, 194 F.2d 914, 916
(C.A.2d Cir. 1952). The judgment below did both, and, in so doing,
gave Stiffel the equivalent of a patent monopoly on its unpatented
lamp. That was error, and Sears is entitled to a judgment in its
favor. Reversed. [For concurring opinion of MR. JUSTICE HARLAN, see
post, p. 376 U. S.
239 .]

															[ Footnote 1 ]

															No review is sought here of the ruling affirming the District
Court's holding that the patent is invalid.

															[ Footnote 2 ]

															313 F.2d at 118 and nn. 6, 7. At least one Illinois case has
held in an exhaustive opinion that unfair competition under the law
of Illinois is not proved unless the defendant is shown to have
"palmed off" the article which he sells as that of another seller;
the court there said that

															"[t]he courts in this State do not treat the 'palming off'
doctrine as merely the designation of a typical class of cases of
unfair competition, but they announce it as the rule of law itself
-- the test by which it is determined whether a given state of
facts constitutes unfair competition as a matter of law. . . . The
'palming off' rule is expressed in a positive, concrete form which
will not admit of 'broadening' or 'widening' by any proper judicial
process." Stevens-Davis Co. v. Mather & Co., 230 Ill.App. 45,
65-66 (1923). In spite of this, the Court of Appeals, in its
opinions both in this case and in Day-Brite Lighting, Inc. v.
Compco Corp., 311 F.2d 26, rev'd post, p. 376 U. S. 234 ,
relied upon one of its previous decisions in a tradename case, Independent Nail & Packing Co. v. Stronghold Screw
Products, 205 F.2d 921 (C.A.7th Cir. 1953), which concluded
that, as to use of tradenames, the Stevens-Davis rule had
been overruled by two subsequent Illinois decisions. Those two
cases, however, discussed only misleading use of trade names, not
copying of articles of trade. One prohibited the use of a name so
similar to that of another seller as to deceive or confuse
customers, even though the defendant company did not sell the same
products as the plaintiff and so, in one sense, could not be said
to have palmed off its goods as those of a competitor, since the
plaintiff was not a competitor. Lady Esther, Ltd., v. Lady
Esther Corset Shoppe, Inc., 317 Ill.App. 451, 46 N.E.2d 165
(1943). The other Illinois case on which the Court of Appeals
relied was a mandamus action which held that, under an Illinois
statute, a corporation was properly denied registration in the
State when its name was "deceptively similar" to that of a
corporation already registered. Investors Syndicate of America,
Inc., v. Hughes, 378 Ill. 413, 38 N.E.2d 754 (1941). The Court
of Appeals, by holding that, because Illinois forbids misleading
use of tradenames, it also forbids as unfair competition the mere
copying of an article of trade without any palming off, thus
appears to have extended greatly the scope of the Illinois law of
unfair competition beyond the limits indicated in the Illinois
cases and beyond any previous decisions of the Seventh Circuit
itself. Because of our disposition of these cases, we need not
decide whether it was correct in doing so.

															[ Footnote 3 ] See I Walker, Patents (Deller ed. 1937), § 7.

															[ Footnote 4 ]

															The Federalist (Cooke ed. 1961) 288.

															[ Footnote 5 ]

															Patent rights exist only by virtue of statute. Wheaton v.
Peters , 8 Pet. 591, 33 U. S. 658 (1834).

															[ Footnote 6 ]

															The Statute of Monopolies, 21 Jac. I, c. 3 (1623), declared all
monopolies "contrary to the Laws of this Realm" and "utterly void
and of none Effect." Section VI, however, excepted patents of 14
years to "the true and first Inventor and Inventors" of "new
Manufacturers" so long as they were

															"not contrary to the Law, nor mischievous to the State, by
raising Prices of Commodities at home, or Hurt of Trade, or
generally inconvenient. . . ."

															Much American patent law derives from English patent law. See Pennock v.
Dialogue , 2 Pet. 1, 27 U. S. 18 (1829).

															[ Footnote 7 ]

															The purpose of Congress to have national uniformity in patent
and copyright laws can be inferred from such statutes as that which
vests exclusive jurisdiction to hear patent and copyright cases in
federal courts, 28 U.S.C. § 1338(a), and that section of the
Copyright Act which expressly saves state protection of unpublished
writings, but does not include published writings, 17 U.S.C. §
2.

															[ Footnote 8 ]

															U.S.Const., Art. VI.

															[ Footnote 9 ]

															It seems apparent that Illinois has not seen fit to impose
liability on sellers who do not label their goods. Neither the
discussions in the opinions below nor the briefs before us cite any
Illinois statute or decision requiring labeling.

Summary: The Supreme Court ruled that Sears, Roebuck & Co. did not infringe on Stiffel Co.'s design and mechanical patents for a "pole lamp" as the patents were invalid due to a lack of invention. The Court also held that Stiffel Co. could not use state unfair competition law to obtain an injunction or damages against Sears for copying its product, as it conflicted with the federal government's exclusive power to grant patents. The Court stated that unpatented articles in the public domain could be freely copied, but labeling may be required by state law to prevent confusion or deception about the product's source.