[SUMMARY] | [ISSUE & DISPOSITION] | [AUTHORITIES CITED] | [COMMENTARY]
Juicy Whip, Inc., holder of U.S. Patent No. 5,575,405 (the '405 patent) to a "post-mix" beverage dispenser, brought suit against Orange Bang, Inc. (Bang) and Unique Beverage Dispensers, Inc. (Unique) alleging infringement of the claims of the '405 patent. Bang and Unique moved for summary judgment on the grounds of invalidity. The district court held Juicy Whip's patent invalid for lack of utility because the patent sought to increase sales through deceptive imitation of another product.
A "pre-mix" dispenser mixes the syrup concentrate and water and stores the prepared beverage in a reservoir bowl until the beverage is dispensed for a consumer. In contrast, a "post-mix" dispenser stores the components in separate locations until the beverage is ready to be dispensed. The invention of the '405 patent contains a transparent display bowl that is filled with a fluid that simulates the dispensed beverage, yet is resistant to bacterial growth and does not need daily maintenance. In this way, the dispenser creates the visual impression that beverages are dispensed from the bowl, yet the beverage is not mixed until immediately before dispensing.
The district court concluded that the invention lacked utility and was thus unpatentable under 35 U.S.C. § 101. Juicy Whip argued that the invention successfully entices consumers to purchase a beverage and eliminates the need for retailers to clean display bowls; thus, the invention is useful. The court acknowledged this argument, yet held the invention did not improve upon the prior art because its only use was to increase the salability of beverages through deception. Thus, the court concluded the invention was merely an imitation lacking utility, and therefore unpatentable. Juicy Whip appealed this decision.
Cases Cited by the Court
Other Sources Cited by the Court
The standard contemplated by the Constitution and Congress for granting a patent monopoly is that the public derive a benefit from an invention with substantial utility. Brenner v. Manson, 383 U.S. 519, 534 (1966). A patent is not a hunting license; thus, a process patent that has not been developed and directed to a degree of specific utility creates a monopoly of knowledge that should be granted only if clearly commanded by statute. Id. Congress intended that no patent be granted based solely on the object's potential as a possible object of usefulness to the public, the object must be shown to be useful at the time of patenting. Id. at 535.
Under Section 101 of the Patent Act of 1952, 35 U.S.C. § 101 (1994), a patent is invalid if it fails to meet the utility requirement. Justice Story stated that the word "useful" is present in the patent statute to prevent the patenting of a mischievous or immoral devices. Lowell v. Lewis, 15 F. Cas. 1018, 1019 (C.C.D. Mass 1817). The invention should not be frivolous or "injurious to the well being, good policy, or sound morals of society." Id. at 1019.
In 1903 the Seventh Circuit held that a device does not meet the utility requirement if it is incapable of serving any beneficial end. Fuller v. Berger, 120 F. 274, 275 (7th Cir. 1903). The court further stated that usefulness is not a balancing test of good versus bad utility. Any useful beneficial end may serve as meeting the utility requirement. Id. at 275. The Federal Circuit followed a similar approach to the utility requirement, first in Tolo-matic, then in Brooktree, stating that in order to fall short of the utility test in Section 101, the claimed device must be totally incapable of achieving a useful result. Tol-o-matic, Inc. v. Proma Produkt-Und Mktg. Gesellschaft m.b.H., 945 F.2d 1546; Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F2d 1555, 1571 (Fed. Cir. 1992).
The United States Supreme Court, in 1880, stated that the Patent Office does not have the authority to interfere with patents on the basis of protecting the community from the potential hazards of patented devices. Webber v. Virginia, 103 U.S. 344, 347-48 (1880). A direct declaration from Congress must precede the policing of hazardous patented devices by the Patent Office; without such a declaration, regulation is a matter for the states. Id. at 347-348.
The Court expanded and clarified its definition of utility. More importantly, it declined to follow the Second Circuit decisions of Rickard and Aristo Hosiery. The Court held that the ability of a product to appear as another is a "specific benefit to satisfy the statutory requirement of utility." The Court also noted that the issue in this case deals with the utility of the product, not whether the invention is deceptive. The Court noted that the PTO does not serve as "arbiters of deceptive trade practices." This directive is left to agencies like the FTC and the FDA.
This decision now allows products which are specifically designed to imitate other products to receive a patent. The Congress may still declare certain kinds of inventions unpatentable for reasons like deceptiveness. Until the Congress does so, however, the Court is bound to uphold the utility of patents like Juicy Whip's.
To what extent does this decision overrule the cases and progeny of Rickard and Aristo Hosiery, and what parts, if any, of these decisions remain viable?
The Court stated that "the principle that inventions are invalid if they are principaly designed to serve immoral or illegal purposes has not been applied broadly in recent years." Would any inventions designed to serve immoral or illegal purposed still be deemed invalid?