In 1837, the Hansons invented a new lead pipe where its uniqueness could only be expressed with reference to the method of its manufacture, a true “product by process” innovation. The Hansons won a validity determination for their patent only in a second try at the Supreme Court in an early, successful Supreme Court “product-by-process” case. Le Roy v. Tatham, 63 U.S. (22 How.) 132 (1859)(McLean, J.).
Circuit Recognition of Product-by-Process Claiming as from 1874: In the Federal Circuit’s epic product-by-process wars featuring protagonists Judges Newman and Rader starting in 1992 and running to Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009)(en banc in part), the final case cites ten nineteenth century product-by-process precedents (counting both majority and dissenting opinions) – all at least fifteen years junior to Le Roy v. Tatham.
Further details are contained in the attached pdf version of this note.