Juicy Whip v. Orange Bang and the Constitutional Requirement of Utility
Neil Chitrao is a J.D. candidate, 2021 at NYU School of Law.
In 1999, the Federal Circuit was presented with a particularly juicy dilemma. Juicy Whip, Incorporated, a manufacturer of fountain beverage machines, sought to enforce a patent on one of its products against Orange Bang, a competitor. The patent in dispute recited a drink dispenser equipped with a transparent container that was designed to dissemble the true source of the dispensed drinks: if the machine functioned as intended, an unsuspecting consumer would be deceived into thinking that his or her beverage had been mixed within and dispensed from the container, when in reality a separate, hidden apparatus provided the drink.
Orange Bang responded to the infringement claim with an argument that the patent failed to meet the requirements of 35 U.S.C. §101, which restricts patents to “new and useful” inventions. The defendants contended that the purpose of the patent was to increase beverage sales by misleading consumers, and thus does not embody utility in a form the statute contemplated. The U.S. District Court for the Central District of California, where the case had originally been argued, was convinced by the defendant’s argument, and granted Orange Bang’s motion for a summary judgment of invalidity.
The Federal Circuit reversed, finding that the dispenser’s ability to make one product (the drink mixed beforehand and directly dispensed) look like another (a drink that had been mixed in the container) represented sufficient utility under §101. A large part of the Federal Circuit’s rationale in ruling for the plaintiff was an aversion to the idea of the United States Patent and Trademark Office (USPTO) using the utility requirement in §101 as a standard against deceptive trade practices.
An argument can be made, however, that the Federal Circuit’s decision to grant patents to inventions that derive their commercial value from deception is a contravention of the Constitutional mandate for a patent system. Article 1, Section 1, Clause 8 grants Congress the power to establish a patent and copyright system with the specific policy goal of “promot[ing] the progress of science and useful arts.” The ambit of the federal patent system is thus restricted to inventions that either advance scientific knowledge or the “useful arts.” “Useful arts” is a 17th century English term that served to differentiate practical and technological skills from the liberal arts. One can imagine, however, that the word “useful” carries further connotations of societal utility, a contention that is bolstered by the policy rationale underlying the creation of the patent clause. In drafting this Constitutional language, the Framers envisaged a quid pro quo of sorts, whereby an inventor enjoyed a limited monopoly on his invention in exchange for public dissemination of the technical knowledge underpinning its innovativeness. In essence, the Constitution provides for the existence of patents in the United States with the express aim of providing the public with the benefit of knowledge. The quid pro quo demands that the knowledge bestowed on the public be either scientific or “useful.” With this context in mind, it is not difficult to imagine that the patenting of an invention that arguably has deleterious consequences for society is outside of the scope of the patent clause.
In finding for the plaintiff in Juicy Whip, the Federal Circuit cited the 1966 Supreme Court case Brenner v. Manson, which held that an invention is useful under §101 if it is capable of providing some identifiable benefit. The court further repudiated Justice Story’s opinion in Lowell v. Lewis, an 1817 case in the Circuit Court, D. Massachusetts, where the venerable judge found that inventions “injurious to the well-being, good policy, or sound morals of society” are unpatentable. The Juicy Whip court rejected this formulation as no longer representative of the current state of patent law, citing the recent judicial validation of a patent for slot machines. This line of reasoning, however, is subject to the challenge that the Constitutional quid pro quo requires that society reap a tangible benefit in exchange for the monopoly the inventor receives. Even slot machines confer some modicum of societal benefit, inasmuch as they provide individuals with a means of making a decision to gamble in full apprehension of all of its concomitant risks. The broader Constitutional aim of ensuring that society benefit from American entrepreneurship would appear to be obstructed by a patent on a product that derives its utility from deceiving consumers.
An analysis of the infringed patent in Juicy Whip in the context of the policy basis of the patent system lends credence to the argument that the Federal Circuit disregarded the spirit of the Constitutional patent clause in finding for the plaintiff. The dissemination of knowledge that facilitates the deception of the American consumer is not a societally constructive benefit that warrants a limited monopoly on the invention. The USPTO can thus be argued to have a Constitutional directive to deny patents to such inventions, not because they represent a violation of some moral standard, but rather out of the pragmatic concern that they do not provide a social benefit. The Juicy Whip court argued that Congress can at any time pass new legislation that further restricts the breadth of patentable subject matter, as it did with its ban on patents of nuclear weapons. Given that the courts have manifested a reluctance to apply a test of social utility in assessing patent validity, the time has come for Congress to intervene against patents that fail to keep up their end of the Constitutional bargain. Fidelity of the American patent framework to the Constitution, not to mention the tribulations of the multitudes of Americans who have been duped regarding the origin of their Pineapple Coolers, requires it.