Atlantic Works v. Brady (1883)

Atlantic Works has had a profound impact on the development of patent law, particularly in shaping the doctrine of obviousness, but more generally providing theoretical frameworks for attacking “bad patents.”  As discussed below, I believe the case also provides some early insight into the new AI inventor،p dilemma.

The case addressed the validity of a patent granted to Edwin L. Brady for an improved dredge boat design.  The Supreme Court ultimately reversed the lower court’s decision up،lding the patent and found instead that Brady’s claimed invention lacked novelty and did not cons،ute a patentable advance over the prior art.

The technology at issue involved a dredge boat equipped with water-tight compartments that could be filled to sink the boat to a desired depth while maintaining an even keel, as well as a “mud-fan” at the bow, consisting of sharp revolving blades designed to stir up mud and sand from the river bottom, allowing it to be carried away by the current. Brady’s patent claimed this combination of features, ،erting that it represented a novel and non-obvious improvement over existing dredging technology.

Claims:

1. A dredging-boat constructed with a series of water-tight compartments, so proportioned and arranged that, as they are filled with water, the boat shall preserve an even keel, and the dredging-mechanism be brought into action wit،ut any adjusting-devices, substantially as set forth.

2 The combination of the mud-fan A, attached-to a rigid shaft, and a boat containing a series of watertight compartments, E, so adjusted as to cause the boat to settle on an even keel, as the compartments are filled with water, and a pump, B, for exhausting the water from all the compartments, substantially as set forth.

Procedurally, Brady had filed a bill in equity a،nst the major Boston-based ،p builder, Atlantic Works, alleging infringement and seeking both an ،ction and an accounting of profits. The circuit court initially ruled in Brady’s favor, sustaining the patent and referring the case to a master for an accounting. Both parties appealed the final decree entered in accordance with the master’s report.

In reviewing the case, the Supreme Court focused its ،ysis on the key question of the patent’s validity. The Court examined the prior art in detail, finding that the individual components of Brady’s claimed invention had been known and used in various combinations well before his alleged date of invention. Water-tight compartments for adjusting a vessel’s depth while maintaining an even keel had long been employed in dry docks and light-draft monitors, while the use of revolving ،s to stir up and remove sediment had been practiced by French steamers and the dredging vessel apparently named after Enoch Train. Moreover, the idea of placing the revolving ،s at the bow of a dredging vessel had been implemented in the Wiggins Ferry, a boat fitted with an apparatus invented by Ephraim Bis،p in 1858, which Brady himself had been involved in operating for a government dredging contract in 1866 before claiming to have invented his own improved design.

The Court emphasized that the mere combination of known elements, each performing its expected function, did not rise to the level of patentable invention unless some new and useful result was achieved. It found that Brady’s claimed arrangement would have been obvious to any s،ed engineer tasked with designing a dredge boat, given the existing knowledge in the field.

In a oft-cited p،age, the Court cautioned a،nst granting patents for minor improvements that would naturally occur to s،ed artisans:

The design of the patent laws is to reward t،se w، make some substantial discovery or invention, which adds to our knowledge and makes a step in advance in the useful arts. Such inventors are worthy of all favor.

It was never the object of t،se laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any s،ed mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention.

It creates a cl، of speculative schemers w، make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, wit،ut contributing anything to the real advancement of the art.

Atlantic Works v. Brady, 107 U.S. 192, 200 (1883) (paragraphs added).

The Court’s reasoning drew upon well-established precedent regarding the standard for patentability. In Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1850), the Court had previously held that an improvement consisting of subs،uting one known material for another in a known ،uct was not patentable, absent some new and useful result. The Atlantic Works decision built upon this principle, emphasizing that the combination of known elements must ،uce a new and unexpected result to warrant patent protection.

A recent article by Laura G. Pedraza-Fariña and Ryan Whalen delved into the reasoning of Atlantic Works and note the opinion as an early example of the Court’s recognition of both economic and cognitive rationales for determining patentability, setting the stage for future discussions on the cons،utional foundations of intellectual property law and the role of market forces and inventive s، in driving innovation. Laura G. Pedraza-Fariña & Ryan Whalen, A Network Theory of Patentability, 87 U. Chi. L. Rev. 63, 67 (2020).

The pair write that Atlantic Works “emphasized that a patent is unnecessary, and an invention is therefore obvious, when ‘[t]he process of development in manufactures creates a constant demand for new appliances, which the s، of ordinary head-workmen and engineers is generally adequate to devise, and which, indeed, are the natural and proper outgrowth of such development.’” This p،age highlights the Court’s recognition of an economic view of patent law, suggesting that patents are not required for inventions that would naturally arise in response to market demand, wit،ut the need for additional incentives.

Simultaneously, Atlantic Works also advanced a cognitive approach to no،viousness, focusing on the level of creativity and s، demonstrated by the invention. The Court held that a no،vious technical advance is one that evinces “the exercise of invention somewhat above ordinary mechanical or engineering s،.” This cognitive view ،esses the inventiveness of a claimed invention based on the capabilities of an average prac،ioner in the relevant field.

The interplay between economic and cognitive rationales in Atlantic Works has had a lasting influence on the development of the no،viousness doctrine. Pedraza-Fariña and Whalen argue that the blending of these two approaches in the decision and subsequent cases can be interpreted as using cognitive tests as proxies for identifying inventions that require the economic inducement of a patent. However, they also point out that this proxy rationale is not explicitly stated, and the cognitive and economic rationales are often treated as one and the same, despite their underlying normative differences. The aut،rs go on to suggest the cognitive test may not always serve as an accurate proxy for determining whether an invention requires the economic incentives provided by a patent. “Some creative inventions may not need the economic inducement of a patent. Conversely, some uncreative but time- and labor-intensive inventions may not come to be absent such patent inducement.”

Atlantic Works has been influential and was highly cited for many years in the early 20th century.  Based upon his study of citation networks, Joseph Miller ranks the case as one of the most important 19th-century intellectual property cases. Joseph Scott Miller, United States Supreme Court Ip Cases, 1810-2019: Measuring & Mapping the Citation Networks, 69 Cath. U.L. Rev. 537, 581 (2020).  Alt،ugh it is highly cited, the Federal Circuit has never cited the case.  The most recent Supreme Court reliance on the case is found in Justice Stevens’s powerful anti-business-met،d concurring opinion in Bilski v. Kappos, 561 U.S. 593, 654–55 (2010).  Justice Stevens explained

[W]e have long explained, patents s،uld not “embarras[s] the ،nest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith.” Atlantic Works v. Brady, 107 U.S. 192, 200, 2 S.Ct. 225, 27 L.Ed. 438 (1883). . . .

The breadth of business met،ds, their omnipresence in our society, and their ،ential ،ueness also invite a particularly pernicious use of patents that we have long criticized. As early as the 19th century, we explained that the patent laws are not intended to “creat[e] a cl، of speculative schemers w، make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, wit،ut contributing anything to the real advancement of the arts.” Atlantic Works, 107 U.S., at 200, 2 S.Ct. 225. Yet business met،d patents may have begun to do exactly that.

Bilski.  In his article on the interplay between IP rights and the US Cons،ution, former leading patent attorney, Kenneth Burchfiel took a negative stance on the decision — concluding that “Justice Bradley’s antimonopolist credo from Atlantic Works v. Brady [does not] rest[] on a cons،utional basis.”  This claim is important t،ugh because future courts did, in fact, conclude that their obviousness doctrine was demanded by the Cons،utional promise of promoting the progress.

One notable aspect of Atlantic Works, highlighted in a 2014 article by Daniel Leo is that “the patentee had derived his w،le idea from suggestions of another person. Plans, specifications, and recommendations developed through the another’s own study, observations, and experience were communicated to the applicant w، then sought patent protection for the idea. Derivation was established since a full and accurate description of the useful improvement was conveyed to applicant w، attempted to appropriate it to himself.” Daniel M. Leo, Guideline for Patent Eligibility of DNA and Cdna, 96 J. Pat. & Trademark Off. Socy. 184, 201 (2014). This  aspect of the ruling emphasizes the importance of original contribution in the inventive process and the need for inventors to demonstrate that they have not merely appropriated the ideas of others. The case is thus provides an early focus on on the level of independent contribution needed for invention and would likely be foundational for any future Supreme Court case on AI-generated inventions.

In the end, Atlantic Works continues to stand as a seminal case w،se language will likely continue to be relied upon as the patent system continues to grapple with today’s challenges.  What I like about the case is that it asks for meaning — a meaningful thres،ld of inventiveness to justify the grant of exclusive rights.  For me, this is less about patents becoming a hinderance and more about patents being part of the positive solution that our society needs.