Berlin Mills Co. v. Procter & Gamble Co.

Background

Procter & Gamble, a soap manufacturer, sued another company over a patent owned by its manager, John Burchenal, for a lard-like food product made from partially hydrogenized vegetable oil, especially cottonseed oil. The patent claimed a homogeneous, semi-solid shortening produced by stopping hydrogenation before completion. The District Court found the patent invalid for lack of invention, while an appeals court had held it valid and infringed, prompting review by the Supreme Court.

Reasoning

The Court asked whether the semi-solid product itself was a new invention or simply the expected result of a known hydrogenation method already disclosed in earlier patents, particularly Normann’s 1903 British patent. The opinion notes Burchenal did not claim the hydrogenation process as his and that prior art showed the process could produce edible semi-solid fats. Because the product and the method of making it were already within the public knowledge, the Court concluded the broad product claims were obvious to a skilled person and therefore not patentable.

Real world impact

The ruling means the two broad claims covering incompletely hydrogenized vegetable and cottonseed oils are void, so similar semi-hydrogenated lard-like shortenings are not monopolized by the patentee and remain available for public use. The case is sent back with instructions to dismiss the infringement suit. Food manufacturers may continue to use the known hydrogenation techniques without being blocked by these patent claims.

Dissents or concurrances

The appeals court had reached the opposite result, finding the patent valid and infringed, but this Court reversed that judgment. (This note explains the prior disagreement among lower courts.)