315 U.S. 126 (1942), 154, Exhibit Supply Co. v. Ace Patents Corporation

Docket Nº:No. 154
Citation:315 U.S. 126, 62 S.Ct. 513, 86 L.Ed. 736
Party Name:Exhibit Supply Co. v. Ace Patents Corporation
Case Date:February 02, 1942
Court:United States Supreme Court
 
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315 U.S. 126 (1942)

62 S.Ct. 513, 86 L.Ed. 736

Exhibit Supply Co.

v.

Ace Patents Corporation

No. 154

United States Supreme Court

Feb. 2, 1942

Argued January 15, 16, 1942

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

1. In a case involving a patent, concerning which there was no conflict of decisions by Circuit Courts of Appeals, certiorari was granted because of the nature of the questions involved and because it was shown that the industry affected by a decision sustaining the patentee's contentions was located in a single circuit, so that litigation resulting in such conflicts would not be likely to occur. P. 128.

2. Claim 4, as amended, of the Nelson patent, No. 2,109,678, relates to the structure of a resilient switch or circuit closer, so disposed on the board of a game table as to serve as a target which, when struck by a freely rolling ball, will momentarily close an electrical circuit. It claims as elements of the invention a conductor standard anchored to the table, a coil spring surrounding the standard, means carrying the spring pendantly from the upper portion of the standard, with the coils of the spring spaced from the standard,

and conductor means in said circuit and embedded in the table at a point

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spaced from the standard and engageable by a portion of the spring when it is flexed to close the aforementioned Circuit.

Held:

(1) The word "embedded" as used in the claim embraces any conductor means solidly set or firmly fixed in the table, whether or not it protrudes above or below the surface. P. 135.

(2) By amendment of the claim so as to describe the conductor mean as "embedded in the table," instead of "carried by the table," as it stood before amendment, devices in which the conductor means is a nail or pin driven into he table were not excluded. P. 135.

(3) By such amendment, however, made to meet objections of the Patent Office based on the prior art, the patentee restricted the claim to those combinations in which the conductor means, though carried on the table, is also embedded in it, recognized and emphasized the difference between the two phrases, and proclaimed his abandonment of all that is embraced in that difference. P. 136.

(4) The amendment operates as a disclaimer of that difference, and must be strictly construed against him. P. 137.

(5) What the patentee, by a strict construction of his claim, has lost by disclaimer cannot be regained by recourse to the doctrine of equivalents. P. 137.

119 F.2d 349, modified.

Certiorari, 314 U.S. 702, in three cases, to review the affirmance of decrees holding a patent claim valid and infringed and enjoining the alleged infringements.

STONE, J., lead opinion

MR. CHIEF JUSTICE STONE delivered the opinion of the Court.

Respondent began the present litigation as three separate suits against the respective [62 S.Ct. 515] petitioners for infringement of the Nelson Patent No. 2,109,678 of March 1, 1938, for a "contact switch for ball rolling games." The defenses were noninvention in view of the prior art, anticipation by prior publication, use and sale, noninfringement

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and a file wrapper estoppel. The three suits were consolidated and tried together. Upon full consideration of the issues, the District Court and the Circuit Court of Appeals for the Seventh Circuit held Claim 4 of the patent valid and infringed. 119 F.2d 349.

We granted certiorari, 314 U.S. 702, on a petition which challenged only the decree of infringement below, on the ground that it enlarged the scope of the patent as defined by the claim, by resort to the doctrine of equivalents, and that Nelson, the patentee, by the amendment of his claims in the Patent Office, had surrendered Claim 4 so far as it would otherwise read upon the alleged infringing devices . Neither in their petition nor in their brief and argument in this Court have petitioners contended that the patent is invalid for want of invention. Although there is no conflict of decision, we were moved to grant the petition by the nature of the questions presented, together with a showing that the industry affected by the patent is located in the seventh circuit, so that litigation in other circuits resulting in a conflict of decision would not be likely to occur.

The patent relates to the structure of a resilient switch or circuit closer, so disposed on the board of a game table as to serve as a target which, when struck by a freely rolling ball, will momentarily close an electrical circuit. Specifications and drawings disclose a target or switch comprising a conductor standard mounted in the table and carrying a coil spring having a leg pendantly disposed in a conductor ring located in the table and slightly offset from the standard. The standard and ring are wired in a circuit with a relay coil and a source of electrical energy. When a ball rolling on the table bumps the coil spring from any direction, the leg of the spring is deflected momentarily bringing it into contact with the ring, so as to close the circuit for operating the relay coil and any connected auxiliary game device. Any desired

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number of targets may be placed on the board in a suitably spaced relationship; in pin ball games, a single ball may successively bump and close a number of the switch devices. In describing his invention, the patentee declared it to be his intention

to cover all changes and modifications of the example of the invention herein chosen for purposes of the disclosure, which do not constitute departures from the spirit and scope of the invention.

The prior art as disclosed by the record shows no device in which the coil spring serves both as a target and a switch. The advantages of the device are said to be that the combination is peculiarly adapted to use in pin ball games; that the coil spring structure is so organized as to form both a switch for operating auxiliary recording or signaling devices and a target which is accessible from any direction.

Claim 4 * claims as the elements of the invention the conductor standard anchored in the table, the coil spring surrounding the standard which carries the spring pendantly from its top, with the spring spaced from the standard to enable the spring to be resiliently flexed,

and conductor means in said circuit and embedded in

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the table at a point spaced from the standard and engageable by a portion of the spring when it is flexed to close the aforementioned circuit.

The drawings of the patent show the "conductor means" last mentioned in the form of a ring or ferrule set in the table with its axis at right angles to the table and with its flange projecting slightly above the surface of the table. The leg pending from the coil spring is so disposed at the center of the annular ferrule that a ball striking the spring in any direction will bring the pendant leg into contact with the ring so as to close the circuit.

The six devices alleged to infringe the patent differ from the particular claim of the invention described in the specifications only in the specific form and method of supporting the "conductor means" which is "engageable by a portion of the spring when it is flexed." In two of the accused devices, plaintiff's Exhibits 5 and 7, there is substituted for the ring conductor set in the table a nail or pin driven into the table and surrounded near its upper end by a ring attached to the end of the resilient coil spring, or formed there of the coil wire. When the spring is struck, the circuit is closed by the contact of ring and nail at a point above the table. This arrangement contrasts with that of the conductors as shown in the patent drawings, in which a ring set in the table and the pendant leg of the coil form the contact at a point near or below the surface of the table. In the one case, the ring conductor is supported by the table and the complementary conductor is attached to or is formed of the wire of the spring at its end. In the other, the locations of the ring and of the complementary conductor are reversed.

Two others of the accused devices, plaintiff's Exhibits 6 and 10, show a further alteration. In Exhibit 6, the nail or pin, instead of being driven directly into the table, is affixed to and supported by a metal plate resting

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on the upper surface of the table with the coil spring standard passing through it and holding it firmly on the table. The conductor extends to the wire connection through a hole in the table underneath the plate. In Exhibit 10, the conductor is insulated from the plate, which is rigidly anchored to the coil spring standard, which in turn is anchored to the table.

In the remaining two accused devices, plaintiff's Exhibits 8 and 9, an insulating core or sleeve surrounds the coil standard and supports an annular or enveloping conductor wired in the circuit, spaced and insulated from the coil standard so that the circuit is closed by contact of the conductor and the coil when it is flexed. In Exhibit 8, the sleeve is electrically connected with a metal plate, held in position on the top of the table by the standard which passes through the plate. A wire leading from the plate passes through a hole in the table underneath the plate. In Exhibit 9, the annular conductor is located above the table top and a wire leading from it passes through a hole in the table.

Comparison of the several accused devices shows that, in all but Exhibits 5 and 7, the conductor means complementary to the coil spring is not embedded in the table, but is supported by an insulated plate resting on the table or an insulating core held in position by the standard. In Exhibits 6 and 10, the conductor means passes to its wire connection...

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