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.
