Chapman v. Wintroath

Citation64 L.Ed. 491,252 U.S. 126,40 S.Ct. 234
Decision Date01 March 1920
Docket NumberNo. 117,117
PartiesCHAPMAN et al. v. WINTROATH
CourtUnited States Supreme Court

Messrs. John L. Jackson and Albert H. Adams, both of Chicago, Ill., and A. V. Cushman, of Washington, D. C., for petitioners.

[Argument of Counsel from pages 126-130 intentionally omitted] Mr. Paul Synnestvedt, of Philadelphia, Pa., for respondent.

[Argument of Counsel from pages 130-132 intentionally omitted] Mr. Justice CLARKE delivered the opinion of the Court.

In 1909 Mathew T. Chapman and Mark C. Chapman filed an application for a patent on an 'improvement in deep well pumps.' The mechanism involved was complicated, the specification intricate and long, and the claims numbered 34. The application met with unusual difficulties in the Patent Office, and, although it had been regularly prosecuted, as required by law and the rules of the Office, it was still pending without having been passed to patent in 1915, when the controversy in this case arose.

In 1912 John A. Wintroath filed an application for a patent on 'new and useful improvements in well mechanism,' which was also elaborate and intricate, with 12 combination claims, but a patent was issued upon it on November 25, 1913.

Almost 20 months later, on June 6, 1915, the Chapmans filed a divisional application, in which the claims of the Wintroath patent were copied and on this application such proceedings were had in the Patent Office that on March 24, 1916, an interference was declared between it and the Wintroath patent.

The interference proceeding related to the combination of a fluid-operated bearing supporting a downwardly extending shaft, and auxiliary bearing means for sustaining any resultant downward or upward thrust of such shaft. If is sufficiently described in count 3 of the notice of interference:

'3. In deep well pumping mechanism, the combination with pump means including a pump casing located beneath the surface of the earth and rotary impeller means in said casing, of a downwardly extending power shaft driven from above and adapted to drive said impeller means, a fluid operated bearing co-operating to support said shaft, said fluid operated bearing being located substantially at the top of said shaft so that the shaft depends from the fluid bearing and by its own weight tends to draw itself into a substantially straight vertical line, means for supplying fluid under pressure to said fluid bearing independently of the action of the pump means, auxiliary bearing means for sustaining any resultant downward thrust of said power shaft and auxiliary bearing means for sustaining any resultant upward thrust of said power shaft.'

Wintroath admits that the invention thus in issue was clearly disclosed in the parent application of the Chapmans, but he contends that their divisional application, claiming the discovery, should be denied, because of their delay of nearly 20 months in filing, after the publication of his patent and the Chapmans, while asserting that their parent application fully disclosed the invention involved, admit that the combination of the Wintroath patent was not specifically claimed in it.

Pursuant to notice and the rules of the Patent Office, Wintroath, on April 27, 1916, filed a statement declaring that he conceived the invention contained in the claims of his patent 'on or about the 1st of October, 1910,' and thereupon, because this date was subsequent to the Chapman filing date, March 10, 1909, the Examiner of Interferences notified him that judgment on the record would be entered against him unless he showed cause within 30 days why such action should not be taken.

Within the rule day Wintroath filed a motion for judgment in his favor 'on the record,' claiming that conduct on the part of the Chapmans was shown, which estopped Them from making the claims involved in the interference and which amounted to an abandonment of any rights in respect thereto which they may once have had. The Chapmans contended that such a motion for judgment could not properly be allowed 'until an opportunity had been granted for the introduction of evidence.' But the Examiner of Interferences, without hearing evidence, entered judgment on the record in favor of Wintroath, and awarded priority to him, on the ground that the failure of the Chapmans to make claims corresponding to the interference issue for more than one year after the date of the patent to Wintroath, constituted equitable laches which estopped them from successfully making such claims. This holding, based on the earlier decision by the Court of Appeals in Rowntree v. Sloan, 45 App. D. C. 207, was affirmed by the Examiner in Chief, but was reversed by the Commissioner of Patents, whose decision, in turn, was reversed by the Court of Appeals in the judgment which we are reviewing.

In its decision the Court of Appeals holds that an inventor whose parent application discloses, but does not claim, an invention which conflicts with that of a later unexpired patent, may file a second application making conflicting claims, in order to have the question of priority of invention between the two determined in an interference proceeding, but only within one year from the date of the patent, and that longer delay in filing constitutes equitable laches, which bars the later application. By this holding the court substitutes a one-year rule for a two-year rule which had prevailed in the Patent Office for many years before the Rowntree decision, rendered in 1916, and the principal reason given for this important change is that the second application should be regarded as substantially an amendment to the parent application, and that it would be inequitable to permit a longer time for filing it than the one year allowed by R. S § 4894 (Comp. St. § 9438), for further prosecution of an application after office action thereon.

The question presented for decision is, whether this conclusion is justifiable and sound, and the answer must be found in the statutes and rules of the Patent Office made pursuant to statute, prescribing the action necessary to be taken in order to obtain a patent, for the whole subject is one of statutory origin and regulation.

The statute which is fundamental to all others in our patent law (R. S. § 4886, as amended March 3, 1897, 29 Stat. 692, c. 391 [Comp. St. § 9430]), provides with respect to the effect of a United States patent upon the filing of a subsequent application for a patent on the same discovery, which is all we are concerned with here, that any discoverer of a patentable invention, not known or used by others in this country, before his invention or discovery, may file an application for a patent upon it, at any time within two years after it may have been...

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  • Co v. United States 10
    • United States
    • U.S. Supreme Court
    • 8 Enero 1945
    ...licensing27 if the patent is not used within a specified time. The governing rule is quoted in Chapman v. Wintroath, 252 U.S. 126, at page 137, 40 S.Ct. 234, at page 236, 64 L.Ed. 491: "A party seeking a right under the patent statutes may avail himself of all their provisions, and the cour......
  • Saf-Gard Products, Inc. v. Service Parts, Inc.
    • United States
    • U.S. District Court — District of Arizona
    • 11 Enero 1974
    ...v. American Smelting and Refining Co., 4 F.2d 463, 470, 471 (9th Cir. 1925), adopting the law set forth in Chapman v. Wintroath, 252 U.S. 126, 137, 40 S.Ct. 234, 64 L.Ed. 491 (1920). See also; Indiana General Corp. v. Lockheed Aircraft Corp., 408 F.2d 294, 297 (9th Cir. 1968); Hovlid v. Asa......
  • Carson v. American Smelting & Refining Co.
    • United States
    • U.S. District Court — Western District of Washington
    • 21 Noviembre 1923
    ... ... 275, 12 ... Sup.Ct. 443, 36 L.Ed. 154; Brown v. Zaubitz (C.C.) ... 105 F. 242; Bowers v. Pacific (C.C.) 81 F. 571; ... Chapman v. Wintroath, 252 U.S. 137, 40 Sup.Ct. 234, ... 64 L.Ed. 491; Carnegie v. Cambria, 185 U.S. 403, 22 ... Sup.Ct. 698, 46 L.Ed. 968; Cluett v ... ...
  • Eli Lilly and Company v. Brenner
    • United States
    • U.S. District Court — District of Columbia
    • 6 Diciembre 1965
    ...description within two years, and the original priority established notwithstanding intervening claims. Chapman v. Wintroath, 252 U.S. 126, 137 40 S.Ct. 234, 64 L.Ed. 491. A description that would bar a patent if printed in a periodical or in an issued patent is equally effective in an appl......
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