Cuno Engineering Corporation v. Automatic Devices Corporation

• Decision Date: 10 November 1941
• Docket Number: No. 37,37
• Parties: CUNO ENGINEERING CORPORATION v. AUTOMATIC DEVICES CORPORATION
• Court: U.S. Supreme Court

314 U.S. 84

62 S.Ct. 37

86 L.Ed. 58

CUNO ENGINEERING CORPORATION

v AUTOMATIC DEVICES CORPORATION.

No. 37.

Argued Oct. 22, 23, 1941.

Decided Nov. 10, 1941.

Mandate Amended Jan. 5, 1942.

See 314 U.S. 587, 62 S.Ct. 476, 86 L.Ed. —-.

Messrs. Robert Starr Allyn, of New York City, Carlton Hill, of Chicago, Ill., and Roberts B. Larson, of Washington, D.C., for petitioner.

Messrs. Drury W. Cooper, of New York City, Henry M. Huxley, of Chicago, Ill., and Thomas J. Byrne, of New York City, for respondent.

Mr. Justice DOUGLAS delivered the opinion of the Court.

This is an action in equity brought by respondent for infringement, inter alia, upon claims 2, 3, and 11 of patent No. 1,736,544, granted November 19, 1929, on the application of H. E. Mead, filed August 24, 1927, for a cigar lighter. The District Court held these claims not infringed. 34 F.Supp. 146. The Circuit Court of Appeals reversed, holding them valid and infringed. 2 Cir., 117 F.2d 361. We granted the petition for certiorari, limited to the question whether claims 2, 3, and 11 of the Mead patent are valid, because of a conflict between the decision below and Automatic Devices Corp. v. Sinko Tool & Manufacturing Co., 112 F.2d 335, decided by the Circuit Court of Appeals for the Seventh Circuit.

The claims in question¹ are for improvements in light- ers, commonly found in automobiles, for cigars, cigarettes and pipes. There were earlier lighters of the 'reel type'. The igniter unit was connected with a source of current by a cable which was wound on a spring drum so that the igniter unit and cable could be withdrawn from the socket and be used for lighting a cigar or cigarette. As the removable plug was returned to the socket the wires were reeled back into it. The circuit was closed either by manual operation of a button or by withdrawal of the igniter from its socket. In 1921 the Morris patent (No. 1,376,154) was issued for a so-called 'wireless' or 'cordless' lighter. This lighter eliminated the cables and the mechanism for winding and unwinding them, it provided for heating the igniter unit without removing it from its socket, and it eliminated all electrical and mechanical connection of the igniter unit with the socket once it was removed therefrom for use. Several types of the 'wireless' or 'cordless' lighter appeared.² Morris represented a type in which the circuit was open when the plug rested in the socket and closed when the plug was pushed farther into the socket against the resistance of a spring. In Zecchini (No. 1,437,701) the operator pressed and held down a push-button to close the circuit. In Metzger (No. 1,622,334) the operator closed the circuit by depressing and rotating the plug. In each the operator was obliged to hold the plug, or the circuit-closing part, in place until the heating coil became hot enough for use. After he concluded that it had become hot enough (by observation or guess work) he removed the plug, using it like a match or hot coal, and then replaced it in the socket. Thus these lighters were said to require rather continual attention on the part of the person using them, so that there would be no over-heating or burning out of the heating coil.

This inconvenience and hazard were eliminated, according to respondent,³ by the automatic feature of the Mead patent. Mead added to the so-called 'wireless' or 'cordless' lighter a thermostatic control responsive to the temperature of the heating coil. In operation it automatically returned the plug to its 'off' position after the heating coil had reached the proper temperature. To operate Mead's device the knob on the igniter plug was turned to a point where an electrical connection was established from the battery through the heating coil. There the plug remained temporarily latched. When the heating coil was sufficiently hot for use, the bimetallic elements in the thermostat responsive to the temperature condition of the heating coil caused the igniter plug to be released and to be moved by operation of a spring to open-circuit position. The plug might then be manually removed for use in the manner of a match, torch, or ember.

When replaced in the socket after use, it was held in open-circuit position until next needed.

Petitioner makes several objections to the validity of the claims—that they do not comply with the standards for full, clear and concise description prescribed by 35 U.S.C. § 33, 35 U.S.C.A. § 33, R.S. § 4888; that they are indefinite and broader than any disclosed invention; and that they are for a device so imperfect and unsuccessful that a construction of the claims broad enough to include it is not permissible. See Deering v. Winona Harvester Works, 155 U.S. 286, 295, 15 S.Ct. 118, 121, 39 L.Ed. 153. We do not, however, stop to consider these objections. For it is our opinion that the Mead device was not the result of invention but a 'mere exercise of the skill of the calling', an advance 'plainly indicated by the prior art'. Altoona Publix Theatres, Inc., v. American Tri-Ergon Corp., 294 U.S. 477, 486, 55 S.Ct. 455, 458, 79 L.Ed. 1005.

Thermostatic controls of a heating unit, operating to cut off an electric current energizing the unit when its temperature had reached the desired point, were well known to the art when Mead made his device. They had been employed in a wide variety of electrical designs since Hammarstrom in 1893 (No. 493,380) showed a bimetallic thermostat to break a circuit when it got overcharged. A few examples will suffice. Harley in 1907 (No. 852,326) included such a thermostat in an electric heater for vulcanizing, so as to limit automatically the temperature attainable. Andrews in 1912 (No. 1,025,852) showed a bimetallic thermostat in an electrical flat iron designed to open the circuit at a predetermined temperature. In 1919 Newsom (No. 1,318,168) showed an electric coffee cooker in which a thermostat, actuated by the temperature within the receptacle, operated to open and close the circuit intermittently. Stahl in 1921 (No. 1,372,207) showed an electric switch automatically released by operation of a thermostat. Hurxthal in 1925 (No. 1,540,628) showed an electric bread toaster with a thermostat for stopping the toasting when the bread reached a given degree of temperature. Copeland (No. 1,844,206), filed April 18, 1927, before Mead, showed an electric lighter for cigars and cigarettes with thermostatic control. It differed from Mead in several respects. Thus in Copeland's device a cigar was inserted in a tube at the end of which was a heating coil. By pressing the cigar against the heating coil (or in another form, by pressing a push-button) a spring was overset and the circuit closed. When the desired temperature of the heating unit was reached, a thermostatic bar pushed back the spring and opened the circuit. Thus in the Copeland device the cigar (or the push-button) was the 'means for moving' the 'heating member' of the Mead claims so as to establish the energizing electric heating circuit. The advance of Mead over Copeland was the use of the removable plug bearing the heating unit, as in Morris, to establish the automatically controlled circuit of Copeland.

And so the question is whether it was invention for one skilled in the art and familiar with Morris and Copeland, and with the extensive use of the automatic thermostatic control of an electric heating circuit, to apply the Copeland automatic circuit to the Morris removable heating unit in substitution for a circuit manually controlled.

To incorporate such a thermostatic control in a so-called 'wireless' or 'cordless' lighter was not to make an 'invention' or 'discovery' within the meaning of the patent laws. As we have shown, both the thermostatically controlled heating unit and the lighter with a removable plug bearing the heating unit were disclosed by the prior art. More must be done than to utilize the skill of the art in bringing old tools into new combinations. Hailes v. Van Wormer, 20 Wall. 353, 368, 22 L.Ed. 241; Pickering v. McCullough, 104 U.S. 310, 14 Otto 310, 318, 26 L.Ed. 749; Thatcher Heating Co. v. Burtis, 121 U.S. 286, 294, 7 S.Ct. 1034, 30 L.Ed. 942; Concrete Appliances Co. v. Gomery, 269 U.S. 177, 184, 185, 46 S.Ct. 42, 45, 70 L.Ed. 222; Powers-Kennedy Contracting Corp. v. Con- crete Mixing & Conveying Co., 282 U.S. 175, 186, 51 S.Ct. 95, 99, 75 L.Ed. 278; Carbice Corp. v. American Patents Dev. Co., 283 U.S. 420, 51 S.Ct. 496, 75 L.Ed. 1153. Respondent, however, contends that wholly new functions were involved in Mead's conception, viz., relieving the operator of the necessity of manually holding the plug in closed-circuit position, and automatically and permanently opening the circuit when the heating coil was at the temperature predetermined for its proper use. And respondent argues, Mead's new combination had an entirely different mode of operation from any 'wireless' lighter then in existence and from any thermostatically controlled electric device.⁴

We may concede that the functions performed by Mead's combination were new and useful. But that does not necessarily make the device patentable. Under the statute, 35 U.S.C. § 31, 35 U.S.C.A. § 31, R.S. § 4886, the device must not only be 'new and useful', it must also be an 'invention' or 'discovery'. Thompson v. Boisselier, 114 U.S. 1, 11, 5 S.Ct. 1042, 1047, 29 L.Ed. 76. Since Hotchkiss v. Greenwood, 11 How. 248, 267, 13 L.Ed. 683, decided in 1851, it has been recognized that if an improvement is to obtain the privileged position of a patent more ingenuity must be involved than the work of a mechanic skilled in the art. Hicks v. Kelsey, 18 Wall. 670, 21 L.Ed. 852; Slawson v. Grand Street P.P. & F.R. Co., 107 U.S. 649, 17 Otto 649, 2 S.Ct. 663, 27 L.Ed. 576; Phillips v. Detroit, 111 U.S. 604, 4 S.Ct. 580, 28 L.Ed. 532; Morris v. McMillin, 112 U.S. 244, 5 S.Ct. 218, 28 L.Ed 702; Saranac Automatic Machine Corp. v. Wirebounds Patents Co., 282 U.S. 704, 51 S.Ct. 232, 75 L.Ed. 634; ...