Experimentation and Patent Validity: Restoring the Supreme Court’s Incandescent Lamp Patent Precedent

Note — Volume 101, Issue 5

101 Va. L. Rev. 1545
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“If the description [of the invention] be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void.”

      -United States Supreme Court, The Incandescent Lamp Patent

“[A] patent is not invalid because of a need for experimentation.”

      -United States Court of Appeals for the Federal Circuit, W.L. Gore & Associates, Inc. v. Garlock, Inc.

In 1982, Congress vested the U.S. Court of Appeals for the Federal Circuit with exclusive jurisdiction over patent appeals. In recent years, the Supreme Court has reversed Federal Circuit decisions for straying from established Court precedent. In KSR International Co. v. Teleflex, Inc., the Court rejected the Federal Circuit’s “rigid approach” to patent obviousness as “inconsistent” with the “expansive and flexible approach” articulated in prior Supreme Court precedent. In eBay, Inc. v. MercExchange, L.L.C., the Court found that the Federal Circuit approached the decision whether to grant an injunction in “the opposite direction” of the Court’s precedent. In MedImmune, Inc. v. Genentech, Inc., the Court reversed the Federal Circuit for too “readily dismiss[ing]” close Supreme Court precedent. Even when affirming, the Court has not been kind to the Federal Circuit’s reasoning. In Bilski v. Kappos, the Court upheld the Federal Circuit’s judgment but rejected the Federal Circuit’s approach. The Supreme Court’s close review of Federal Circuit decision making does not appear to be slowing. The Court heard six patent cases during the 2013–14 Term and reversed the Federal Circuit in five of those cases.

This Note will examine another, previously unrecognized, area where tension exists between the Federal Circuit’s approach and Supreme Court precedent. For an invention to receive patent protection, an applicant must provide an enabling description—that is, a description that enables a person of ordinary skill in the art to make and use the invention. The Federal Circuit analyzes whether a description is enabling by applying an eight-factor test to determine whether a person of ordinary skill could practice the invention without “undue experimentation.” Yet in The Incandescent Lamp Patent, the Supreme Court directed that “[i]f the description [of the invention] be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void.” In short: The Federal Circuit’s approach allows experimentation, while the Supreme Court requires that the inventor obviate experimentation entirely.

The difference in approach becomes clear when considering Incandescent Lamp’s context. That case was the culmination of a fifteen-year legal battle between Thomas Edison and George Westinghouse, two titans of nineteenth-century innovation, regarding who would receive patent rights for the light bulb. The Supreme Court decided not that Edison invented the light bulb, but held invalid a patent belonging to two other inventors: William Sawyer and Albon Man. Because a person would have to perform independent experiments to practice Sawyer and Man’s invention, their patent was void. The parties’ arguments regarding enablement reveal that the Supreme Court considered, but did not adopt, a standard similar to the one currently embraced by the Federal Circuit.

While many modern patent treatises consider “undue experimentation” to be black-letter law, the Supreme Court has never endorsed, nor even considered, the standard. In adopting “undue experimentation,” the Federal Circuit did not cite Incandescent Lamp—indeed, the Federal Circuit has never cited the case, though it appears to be controlling precedent. In light of recent scrutiny of the Federal Circuit, Incandescent Lamp provides authority to challenge an issued patent and seek certiorari review.

Further, Incandescent Lamp appears poised for a resurgence. While not cited by any court since 1981, it has been cited in fourteen papers before the Supreme Court since 2001, including four in 2013. While litigants have cited the case in encouraging certiorari review, no party has recognized the tension between the Federal Circuit and Supreme Court standards. This seems particularly remarkable because no court at any level has overruled or even criticized Incandescent Lamp in the 119 years since the Supreme Court decided the case. Further, the Court continues to voice concerns about the policies animating Incandescent Lamp. The case is a standard in patent law textbooks, and one scholar recognized Incandescent Lamp as one of the “Top 10” patent cases of all time.

This Note will proceed in three parts. First, I will give a brief overview of the relevant law and describe the background of Incandescent Lamp. Second, I will evaluate why the Supreme Court decided the case the way that it did, and how the arguments that the parties presented provide context for what the case means. Finally, I will evaluate the case’s effect on enablement doctrine, trace the rise of undue experimentation, and illustrate that the tension between the Federal Circuit’s current approach and Incandescent Lamp cannot be resolved.

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  Volume 101 / Issue 5  

Inside-Out: Beyond the Internal/External Distinction in Legal Scholarship

By Charles L. Barzun
101 Va. L. Rev. 1203

Taking Care of Federal Law

By Leah Litman
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Reading Statutes in the Common Law Tradition

By Jeffrey A. Pojanowski
101 Va. L. Rev. 1357

Aligning Campaign Finance Law

By Nicholas O. Stephanopoulos
101 Va. L. Rev. 1425