Center for Advanced Study & Research on Innovation Policy


CASRIP Newsletter - Autumn 1999, Volume 6, Issue 2

Federal Circuit holds that Imitation is a Sufficient Benefit under the Patent Law

by Kevin H. Takeuchi

On August 6, 1999, the Court of Appeals for the Federal Circuit (CAFC) delivered an opinion that expanded the scope of subject matter that satisfies the beneficial utility requirement in 35 U.S.C. section 101. The opinion by the CAFC, in Juicy Whip, Inc. v. Orange Bang, Inc.1, held that altering a product to make it look like something it is not is itself a sufficient utility2. In reaching its decision, the Court rejected the long-standing notion that inventions with a deceptive purpose could not satisfy the utility requirement under the patent law. The Court determined that neither the Patent and Trademark Office nor the courts should serve as arbiters of deceptive trade practices absent a clear mandate from Congress declaring deceptive inventions unpatentable.3

The invention at issue in Juicy Whip was entitled "Post-Mix Beverage Dispenser With an Associated Simulated Display of Beverage". (U.S. Patent No. 5,575,405) A "post-mix" dispenser stores the syrup concentrate and water in separate locations until a beverage is ready to be dispensed. In contrast, in a "pre-mix" dispenser, the syrup concentrate and water are mix and the beverage is stored in a display bowl reservoir until it is ready to be dispensed. The invention claimed in the '405 patent was the addition of a display bowl, containing a visible quantity of beverage, to a post-mix dispenser in order to simulate the appearance of a pre-mix dispenser. The bowl would thus confer the advantage of providing a visual display to stimulate impulse buying while avoiding the associated problem of needing frequent refilling and cleaning.

Juicy Whip, Inc., the assignee of the '405 patent, brought an infringement action against Orange Bang, Inc. and Unique Beverage Dispensers, Inc. (collectively "Orange Bang"). Orange Bang subsequently moved for summary judgment of invalidity. The United States District Court for the Central District of California granted defendant's motion on the ground that the invention lacked utility and was therefore unpatentable under 35 U.S.C. 101. The CAFC, however, reversed the ruling of the District Court and remanded the case for further proceedings.

The District Court concluded that the invention lacked utility because its purpose was to increase sales by deception. The District Court based its ruling on two cases from early in this century, Rickard v. DuBon4 and Scott & Williams v. Aristo Hosiery Co.5. In Rickard, the Second Circuit Court of Appeals held as unpatentable a process for creating spots on tobacco leaves so they would appear to be a more desirable and expensive product. That court clearly stated "In authorizing patents to the authors of new and useful discoveries and inventions [C]ongress did not intend to extend protection to those which confer no other benefit upon the public than the opportunity of profiting by deception and fraud."6 Similarly in Aristo Hosiery, also a Second Circuit case, the Court held as invalid a patent for seamless stockings that had been produced to resemble higher quality and more desirable stockings. The Court noted "Mere novelty or attractiveness of shape or form by imitation does not present that technical ingenuity to rise to patentable invention."7

The CAFC panel expressly declined to follow the holdings of Rickard and Aristo Hosiery, as it did not regard those cases as representing the correct view of the doctrine of utility under the Patent Act of 1952. On the contrary, the panel stated "The fact that one product can be altered to make it look like another is in itself a specific benefit sufficient to satisfy the statutory requirement of utility."8. It noted that a variety of products, such as cubic zirconium and synthetic fabrics, had been designed to imitate other more desirable products and that, indeed, several patents have been directed toward making one product look like another. Accordingly, the Court concluded that the "Post-Mix" dispenser satisfied the utility requirement because, like those other products, much of the value resides in the fact that it appears to be something that it is not.9

This opinion by the CAFC continues its trend toward expansion of the scope of patent eligible subject matter. The Court clearly noted that the threshold for satisfying the utility requirement is "not high"10 and that an invention is useful under section 101 if "it is capable of providing some identifiable benefit"11. Therefore, any limitations on eligible subject matter must come from Congress, not the courts. Absent such a statutory mandate, the Court found no basis in section 101 that inventions can be ruled unpatentable for lack of utility because they have the capacity to fool members of the public.12

1. 185 F.3d 1364 (Fed.Cir.1999)
2. Id. at 1367
3. Id. at 1368
4. 103 F. 868 (2d Cir. 1900)
5. 7 F.2d 1003 (2d Cir.1925)
6. 103 F. 868, 873 (2d Cir. 1900)
7. 7 F.2d 1003, 1004 (2d Cir 1925)
8. 185 F.3d 1364, 1367 (Fed.Cir.1999)
9. Id. at 1367
10. Id. at 1366
11. Id. at 1366
12. Id. at 1368

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