Keller v. Adams-Campbell Co.

Background

A maker of an improved auxiliary windshield sued to stop others from making and selling a similar windshield, relying on a reissued patent. The inventor had sought the reissue after discovering the original patent’s claims were too narrow. The alleged infringer began designing and making a competing device before the reissue application and before the reissue was granted. Lower courts dismissed the owner’s suit, finding the defendants’ device different and not infringing.

Reasoning

The Supreme Court agreed to consider whether people who lawfully make and sell products before a patent reissue are later entitled to permanent protection if the reissue enlarges the original claims. After reviewing the record, the Court concluded this case was really an ordinary dispute about whether the defendants’ device was a different invention and thus did not infringe. Because the main question presented for broad legal decision was not actually before the Court, the Justices said they should not decide the wider reissue question here.

Real world impact

The Court dismissed its review as improvidently granted and left the lower courts’ dismissal in place, ordering the patent owner to pay costs. The decision does not create a new national rule about production begun before a patent reissue, so the larger question remains unresolved for future cases.