From a modern perspective, the court in Topliff was discussing both the “nature of the problem” and “knowledge as one skilled in the art” as bases for finding a device lacking “invention.” As with most decisions in this area, the Topliff court engages in a detailed analysis of the precise reasons why the prior art suggested or failed to suggest the invention in question. This is very different from simply asserting that the art suggested the combination without discussing the rationale. In addition, it should be noted that through the language, “unless he were examining it for that purpose” the court once again specifically recognized the pernicious problem of hindsight reconstruction as something to guard against during the “invention” analysis.
Finally, the court in Topliff also returned to Graham factors as indicia of ‘invention’.
While the question of patenable novelty in this device is by no means free from doubt, we are inclined, in view of the extensive use to which these springs have been put by manufacturers of wagons, to resolve that doubt in favor of the patentees, and sustain the patent. 29
Schism Between Administrative and Trial Law
For several years after Topliff, we see the Supreme Court actively reviewing patent cases and reiterating the principles it had developed up to this point, but not breaking substantially new ground. By about 1895 we see a marked drop in “invention/obviousness” cases before the Supreme Court, from several per year to one every couple of years. This trend marks the beginning of a new trend in the developing law, namely substantially divergent views among the Federal Circuits and the D.C. Circuit.
One rarely noted ramification is the resulting schism created between administrative patent law and trial court patent law. Administrative patent law is the law developing out of appeals from decisions of the patent office. These cases are often interference or validity proceedings. Trial court patent law on the other hand is the law developing from contests between parties where a patent has already issued. These are usually infringement claims with invalidity of the patent offered in defense.
A third scenario is also possible, but not common. In situations where an aggrieved party wishes to contest a patent office decision, it was and still is, possible to file suit against the patent office in District Court instead of pursuing an administrative appeal. While these cases are litigated in District Court, they contribute to the body of administrative patent law instead of “trial” patent law – and they are relatively rare, not warranting any further special discussion.
The D.C. Circuit was given exclusive jurisdiction over appeals from the Commissioner of Patents in 1870. However, the Supreme Court was very active on the topic of “invention” in the years of 1850 to 1895, providing meaningful precedent for both administrative and trial court patent law. After about 1895 though, with the marked decrease in Supreme activity, the D.C. Circuit becomes the authoritative source of
145 U.S. at 164.