Gillman v. Stern
114 F.2d 28 (2d Cir.1940)

  • Wenczel invented a machine to help make quilts. He received a patent on his invention and sold the patent to the Sterling Airbrush Co.
  • Sterling (represented by Gillman), sued another quilt-maker named Stern for infringing on the quilt-making patent.
    • Stern argued that Wenczel's patent was invalid because there had been prior use by another inventor named Haas.
      • Haas built a quilt-making machine, but kept it as a trade secret, and never tried to patent it.
        • There was no way Wenczel could have possibly known about Haas' machine.
      • Stern didn't know Haas, he was just trying to invalidate Wenczel's patent so he couldn't be accused of infringing on it.
  • The Trial Court found for Stern and declared the patent invalid. Gillman appealed.
    • The Trial Court found that prior to Wenczel's patent, Haas was using a similar quilt-making machine.
  • The Appellate Court reversed and found the patent valid.
    • The Appellate Court looked to patent law (now 35 U.S.C. 102(a)), which says that an inventor cannot patent something that "was known or in use by others" before they file.
    • However, the Court found that Haas's machine was never in public use and therefore Haas could not be considered to be a first inventor.
      • The policy rationale for this is that it is in the public interest to bring new technologies into the public, so you don't want people hoarding inventions as trade secrets.
        • So the rule is that if you invent something, and you sit on it as a trade secret, you risk that a subsequent inventor could usurp you by getting a patent.
  • Note that if Haas had invented the machine more than two years prior to when Wenczel filed, then Wenczel would have been absolutely barred from getting a patent because of the 102(b) novelty bar. But in this case, Wenczel filed less than two years after Haas claimed to have invented the machine, so 102(b) didn't apply.
    • FYI, back then the grace period was two years, under modern law, it's only one year.