305 U.S. 47 (1938), 3--5, Schriber-schroth Co. v. Cleveland Trust Co., Chrysler Corp.

Docket Nº:Nos. 3--5.
Citation:305 U.S. 47, 59 S.Ct. 8, 83 L.Ed. 34
Case Date:November 07, 1938
Court:United States Supreme Court

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305 U.S. 47(1938)

59 S.Ct. 8, 83 L.Ed. 34










Nos. 3--5.

United States Supreme Court.

Nov. 7, 1938

Argued Oct. 18, 19, 1938.

As Modified on Denial of Rehearing Dec. 12, 1938.

On Writs of Certiorari to the United States Circuit Court of Appeals for the Sixth Circuit.

Suit by the Cleveland Trust Company, Chrysler Corporation, against the Schriber-Schroth Company, against the Aberdeen Motor Supply Company, and against the F. E. Rowe Sales Company, consolidated by stipulation to enjoin infringement of patents. To review a judgment of the Circuit Court of Appeals, Sixth Circuit, 92 F.2d 330, reversing decrees for defendants, the defendants bring certiorari.

Reversed and remanded to Circuit Court of Appeals for further proceedings.


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[59 S.Ct. 9] Messrs. Thomas G. Haight, of Jersey City, N.J., and John H. Bruninga and John H. Sutherland, both of St. Louis, Mo., for plaintiffs.

Messrs. A. C. Denison and F. O. Richey, both of Cleveland, Ohio, for respondent.


Mr. Justice STONE delivered the opinion of the Court.

The principal question for decision is whether the court below rightly sustained the validity of two patents by including in the combination constituting the alleged invention of each an element which was not in terms described in one, and the description of which in the other was added only by amendment to the application after it was filed.

Respondent, the Cleveland Trust Company, is the assignee in trust of some eighty patents relating to pistons of the type employed in internal combustion engines for automobiles, under a pooling agreement to which an automobile manufacturer and a number of manufacturers of pistons are parties. It brought the present suits in the District Court for Northern Ohio to enjoin infringement of five of the assigned patents. The case was tried before a special master who, upon the basis of elaborate findings, held that the Gulick patent, No. 1,815,733, applied for November 30, 1917, and allowed July 31, 1931, was invalid for want of invention and because of the addition to the application by amendment in 1922 of a new element of the alleged invention. In reaching this conclusion he relied on this Court's decisions in Powers-Kennedy Contracting Corporation v. Concrete Mixing & Conveying Co., 282

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U.S. 175, 51 S.Ct. 95, 75 L.Ed. 278, and Permutit Co. v. Graver Corporation, 284 U.S. 52, 52 S.Ct. 53, 76 L.Ed. 163, as inconsistent with the result of interference proceedings in which Gulick's amendments were sustained, Long v. Gulick, 57 App.D.C. 98, 17 F.2d 686; Hartog v. Long, Cust. & Pat.App., 47 F.2d 369. The master also held that the Maynard patent No. 1,655,968, applied for January 3, 1921, and allowed January 10, 1928, was invalid for want of invention and for failure to describe and claim the alleged invention. He held invalid upon various grounds the other patents, which are not presently involved.

The District Court adopted the findings and conclusions of the master and gave its decree for petitioners. The Circuit Court of Appeals for the Sixth Circuit reversed, as to the Gulick and Maynard patents only, holding that they were valid [59 S.Ct. 10] and infringed. 92 F.2d 330. 1 As the court regarded the claims which it sustained as basic and thought that a full recovery could be had by respondent under them, it did not pass upon the validity of the other patents or decide other questions involved in the appeal.

Petition for certiorari raising the question, among others, whether the Circuit Court of Appeals had erred in holding patentable a combination including one element not described in the original application for the Gulick patent and later added to it by amendment, and not described at all in the Maynard patent, was at first denied, there being no conflict of decision. 303 U.S. 639, 58 S.Ct. 609, 82 L.Ed. 1099. We later granted certiorari, 304 U.S. 587, 58 S.Ct. 1052, 82 L.Ed. 1548, on a petition for rehearing showing that, notwithstanding the doubtful validity of the patents, litigation elsewhere with a resulting conflict of decision was improbable because of the concentration of the automobile industry in the Sixth Circuit. Cf. Paramount Publix Corporation v. American Tri-Ergon Corporation, 294 U.S. 464, 55 S.Ct. 449, 79 L.Ed. 997; Altoona Publix Theatres, Inc., v. American Tri-Ergon Corporation, 294 U.S. 477, 55 S.Ct. 455, 79 L.Ed. 1005.

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It is important for the proper functioning of the piston in a gas engine that it should fit the explosion chamber closely so as to conserve power, prevent the passage of lubricating oil around the piston into the chamber, and insure the smooth and noiseless movement of the piston within the cylinder. In designing gas engines for automobiles and other purposes requiring a high speed piston reciprocation with the accompanying development of high temperature in the explosion chamber, it is desirable to avoid thermal expansion of the close fitting piston, which will result in loss of power and possible injury to the mechanism through increased friction, which may cause the piston to seize or stick. The danger of undue expansion is increased when, as is advantageous in automobile engines, the piston is of aluminum, which has a higher coefficient of expansion than the iron or steel chamber within which the piston moves.

Both the Gulick and Maynard patents are for combinations in the structure of a piston for gas engines designed to prevent or restrict undue expansion of the piston when in operation. The Gulick patent exhibits a piston in which the ring-carrying head is separated by an air space at its periphery from the cylindrically shaped skirt or guide wall, whose surface engages the inner surface of the cylinder. The piston head and skirt are connected by two 'webs' or walls extending longitudinally through the interior of the skirt. The webs are pierced at right angles for wrist pin bearings and support, at the bearings, piston pin bosses formed with integral flanges extending laterally from their respective bosses to form the webs, which in turn are integrally connected on either side with the interior wall of the lower part of the skirt...

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