Abercrombie Fitch Co v. Baldwin

• Decision Date: 10 December 1917
• Docket Number: No. 67,67
• Citation: 38 S.Ct. 104,245 U.S. 198,62 L.Ed. 240
• Parties: ABERCROMBIE & FITCH CO. et al. v. BALDWIN et al
• Court: U.S. Supreme Court

245 U.S. 198

38 S.Ct. 104

62 L.Ed. 240

ABERCROMBIE & FITCH CO. et al.

v BALDWIN et al.

No. 67.

Argued Nov. 19 and 20, 1917.

Decided Dec. 10, 1917.

Messrs. James R. Offield and Charles K. Offield, both of Chicago, Ill., for petitioners.

Mr. James Q. Rice, of New York City, for respondents.

Mr. Justice McKENNA delivered the opinion of the Court.

Suit for infringement of a patent embraced in letters patent No. 821,580 and a reissue thereof, No. 13,542.

The suit was originally brought by Frederick F. Baldwin, patentee. John Simmons Company, licensee, having the exclusive right to manufacture and sell the patented device, subsequently intervened and became complainant.

The patents are for a lamp designed to generate and burn acetylene or similar gas 'intended for use,' to quote the description of the patents, 'and adapted to use as a bicycle, automobile, yacht, or miner's lamp, or for any other analogous purpose, it being necessary only to change its form or dimensions to adapt it to any one of the purposes mentioned.' Stress in this case, however, is put upon the use of the asserted invention as a miner's lamp, such use conspicuously displaying its commercial utility.

Answer was filed by the Justrite Manufacturing Company, who was made a party defendant to the suit as manufacturer of the asserted infringing lamp, and by stipulation its answer was considered the answer of the Abercrombie & Fitch Company. It denied invention with great detail, set up anticipating patents, denied its utility, attacked the validity of the reissue on the ground that the first and fourth claims of the original patent were held invalid by the United States Circuit Court of Appeals for the Seventh Circuit (199 Fed. 133, 117 C. C. A. 615), and for the further reason that the application for the reissue was not made until seven years after the original letters patent were issued and rights had accrued in the meantime to defendants (petitioners here) and to others. Infringement was denied.

A decree was passed sustaining the validity of the original patent and of the reissue, the originality of the invention and its utility, and adjudging defendants (petitioners) had infringed claim 4 of the reissue, that plaintiffs recover the damages they had incurred by reason of the infringement and the profits defendants had received, an accounting being ordered for this purpose. A perpetual injunction was also adjudged against further infringements. (D. C.) 227 Fed. 455. The decree was affirmed in all respects by the Circuit Court of Appeals (228 Fed. 895, 143 C. C. A. 293) and subsequently this certiorari was granted (239 U. S. 649, 36 Sup. Ct. 284, 60 L. Ed. 485).

The plaintiffs (we shall so designate respondents) struggled through some years and some litigation to the success of the decrees in the pending case. In a suit brought in the District Court for the Southern District of Illinois a device like that of the defendants herein was held to be an infringement of certain claims of the original patent. The holding was reversed by the Circuit Court of Appeals for the Seventh Circuit. Bleser v. Baldwin, 190 Fed. 133, 117 C. C. A. 615.

Subsequently, the reissue having been granted, suit was brought in the Western District of Pennsylvania against an asserted infringer. Unfair competition was also alleged, and, holding the latter to exist, the court granted a preliminary injunction. (D. C.) 210 Fed. 560. Upon final hearing that holding was repeated, and infringement of a claim of the reissue patent decreed. (D. C.) 215 Fed. 735. The decree was reversed by the Circuit Court of Appeals (Third Circuit) on the ground that the claim of the reissue patent found to have been infringed was broader than a corresponding claim of the original letters patent and therefore void. The holding of the District Court as to unfair competition was sustained. 219 Fed. 735, 135 C. C. A. 433. Aided by the reasoning in the opinions of those cases and the discussion of counsel, we pass to the consideration of the propositions in controversy.

First, as to the original patent. Its contribution to the world's instrumentalities was, as we have said, an acetylene lamp and was represented by the following figure, designated as Figure 1:

It will be observed that the device consists of a receptacle divided into two compartments, an upper one for water and a lower one designed to serve as a gas-generating chamber, adapted to contain a receptacle for calcium carbide, which is attached to and forms the detachable bottom. There are means of introducing water into the reservoir and thence to the carbide and means of conducting the gas to the burner.

The device is a means of using the gas (acetylene) formed by the decomposition of water with calcium carbide and necessarily must bring them into contact in an effectual way and use the gas generated in a controlled flow. A tube (L) hence leads from the water-reservoir into the carbide receptacle and forms a duct which introduces the water into the body of the carbide. Various means, the specifications recite, have been employed to regulate or control the flow of water to the carbide, which were found objectionable or not adequate.

The patentee then says:

That the method which be has invented 'for securing the proper feed under all circumstances' without 'objectionable features is to make the bore of the duct of comparatively large size and then restrict the duct by means of a wire or rod preferably centrally located therein to leave a channel of the proper size.'

It is then said:

'This arrangement is simple; but in a long experience it has been found to be entirely successful. It is possible to secure the correct drop-by-drop feed with a duct of considerable size, since the friction of the water on the large area of the tube-wall and wire reduces its flow. This retarding friction may be regulated by varying the size of wire used. The duct does not become choked, since if foreign particles are deposited therein the water can take a zigzag course around it without the supply being appreciably affected. If it is at any time necessary to clean the tube, the wire is simply reciprocated and rotated a few times from the outside of the lamp without disturbing the position of other parts. This nice regulation of the flow enables me to entirely dispense with the trouble-some adjustment of the valve. * * * In some cases, however, there is employed in connection with the means for introducing water into the mass of carbid a device in the nature of a stirrer, which on proper manipulation may be used to break up the mass of carbid surrounding the outlet of the water duct and which by having become slaked and caked by the action of water prevents the proper percolation of the latter to the unslaked carbid in the recentacle G. Fig. 1. As such device I employ a stem rod N, which extends down through the tube L and is bent at substantially right angles to form an arm N'.'

There is also a figure attached to the patent which shows a valve upon the constricting rod, and it is said:

'This rod may form a prolongation of the valve stem, * * * or in case no valve is used may extend from the top of the lamp down through the water-reservior,' and this is illustrated by figures.

'As calcium carbid possesses strongly absorptive properties, the introduction of water through the tube L will result in the gradual slaking of the material about its outlet; but the lime thus produced becomes gradually less permeable to the water, so that an insufficient quantity of gas is generated to maintain the proper flame. When this becomes noticeable, the rod N is turned, so as to cause the arm N' to break up to a greater or less extent the mass of lime, and in practice I have found that under ordinary conditions this is amply sufficient to insure a substantially uniform generation of gas until all of the carbid in the receptacle G is exhausted.'

There are some further descriptive details not necessary to be repeated, and this was said:

'The specific construction of the various parts of my lamp may be, as will be seen from a consideration of the nature of the improvements, very greatly varied without departing from the invention.'

The claims of the patent which are pertinent to our inquiry are as follows:

'1. In a lamp of the kind described, the combination with a water-reservoir, and a receptacle for calcium carbid, of a tube extending from the former a considerable distance...