Tilghman v Proctor 102 US 707 (1880)

Posted by Anton Hughes on Tuesday, January 03, 2006 with No comments
Citation: Tilghman v Proctor 102 US 707  (1880)

Jurisdiction: US Supreme Court

Facts:  The disputed patent related to a process for separating the components of fats for use in making candles and other substances. The process thus described involved mixing the fats with water and maintaining them at a high pressure and temperature. The specification described apparatus which he believed was the best mode of carrying out the process. The defendants had altered the apparatus and temperature used in the process, and hence claimed that their process was outside the bounds of the plaintiff's invention.

Outcome: Held that the patent was for a general process, and was not limited to the apparatus and temperature described in the specifications. Thus the defendants' process infringed on the plaintiff's patent.

Ratio: A patent for a process, irrespective of the particular mode or form of apparatus for carrying it into effect, is admissible under the patent laws of the United States.

Relevance: The case sets out the relevant test for process patents, and the requirement that the inventor specify the best mode of applying the process. It also shows that the scope of the invention will not be limited to the particular mode of application described in the specifications. There is little direct relevance, but it can be seen that the software patent cases would tend to see the algorithm equivalent to a process, and the source code implementation to be but one mode of carrying it out.

Quotes:

Bradley J

At 718: "An examination of the patent itself, ... will show, we think, that it was intended to and does cover and secure to the patentee the general process which has been described, although only one particular method of applying it and using it is pointed out."

"[W]here the result or effect is produced by chemical action, by the operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations, are called processes. A new process is usually the result of a discovery; a machine of invention."

At 728: It seems to us that [the following] clear and exact summary of the law affords the key to almost every case that can arise. 'Whoever discovers that a certain useful result will be produced in any art by the use of certain means is entitled to a patent for it, provided he specifies the means.' But everything turns on the force and meaning of the word 'means.' It is very certain that the means need not be a machine, or an apparatus; it may, as the court [in O'Reilly v Morse] says be a process. A machine is a thing. A process is an act, or a mode of acting. The one is visible to the eye, -- an object of perpetual observation. The other is a conception of the mind, seen only by its effects when being executed or performed. Either may be the means of producing a useful result."

At 728: "If the mode of applying the process is not obvious, then a  description of a particular mode by which it may be aplied is sufficient... Perhaps the process is susceptible of being applied in many modes and by the use of many forms of apparatus. The inventor is not bound to describe them all in order to secure himself the exculsive right to the process, if he is really its inventor or discoverer.  [729] But he must describe some particular mode, or some apparatus, by which the process can be applied with at least some beneficial result, in order to show that it is capable of being exhibited and performed in actual experience."