315 U.S. 759 (1942), 323, Muncie Gear Works, Inc. v. Outboard Marine & Manufacturing Co.

Docket Nº:No. 323
Citation:315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171
Party Name:Muncie Gear Works, Inc. v. Outboard Marine & Manufacturing Co.
Case Date:March 30, 1942
Court:United States Supreme Court

Page 759

315 U.S. 759 (1942)

62 S.Ct. 865, 86 L.Ed. 1171

Muncie Gear Works, Inc.


Outboard Marine & Manufacturing Co.

No. 323

United States Supreme Court

March 30, 1942

Argued February 12, 1942




1. The Court considered as a reason for the granting of certiorari to review a decision of a Circuit Court of Appeals sustaining claim of a patent as to which there was no conflict of decision, the fact that the patent dominated a substantial portion of an industry so concentrated in one circuit that a conflict of decision was unlikely. P. 765.

2. Claims 11, 12, 13 and 14 of Johnson patent No. 1,716,962, for an alleged invention to overcome cavitation in the operation of relatively large and fast outboard motors, held invalid under R.S. § 4866, because of public use, or sale, of devices embodying the alleged invention, more than two years before the first disclosure thereof to the Patent Office. P. 768.

3. Upon the record in this case, held that a decision by this Court of the question under R.S. § 4866 was not foreclosed by the obscurity of its presentation in the courts below. P. 768.

119 F.2d 404 reversed.

Certiorari 314 U.S. 594, to review a judgment which reversed a judgment of the District Court, and held the claims of a patent valid and infringed.

JACKSON, J., lead opinion

MR. JUSTICE JACKSON delivered the opinion of the Court.

We are required in this case to determine the validity of claims numbered 11, 12, 13, and 14 of letters patent No.

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1,716,962, granted on June 11, 1929, to Harry L. Johnson for invention in a "water propulsion device." Respondent Johnson Brothers Engineering Corporation is the owner of the patent, and respondent Outboard, Marine & Manufacturing Company, is the exclusive licensee thereunder. Petitioner Muncie Gear Works, Inc., manufactured outboard motors which are claimed to infringe, and petitioner Bruns & Collins, Inc., sold them.

Respondents contend that this as a validly issued patent covering an invention [62 S.Ct. 866] which solved the problems of "cavitation" by relatively large and fast outboard motors. "Cavitation" is the drawing of air by the propeller from above the surface of the water to the propeller itself. Air so drawn reduces the propulsive effect of the propeller and causes "racing" of the motor, with consequent risk of its disintegration and danger to the user. Increased speed or power entails a greater tendency to cavitate. Cavitation may be diminished by setting the propeller deeper in the water, but this increased projection increases resistance and retards speed.

Long before the patent in question, it was known that cavitation could be controlled, and, in practice, it was controlled, in at least all but relatively large and fast outboard motors, by setting a flat plate horizontally above the propeller and beneath the surface of the water, to act as a baffle and prevent the propeller from drawing air.1 Respondents presented expert testimony to the effect that relatively large and fast water-cooled outboard motors cannot be successful unless they embody the asserted invention which respondents say is the subject matter of the claims in question. In general, this may be said to consist in the use of an anti-cavitation plate on a housing for the engine and propeller shafts enclosing the water passages for the cooling system, shaped both above and

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below the plate so as to reduce water displacement and resistance, and thus to reduce or eliminate eddy currents forming vortexes through which air can be sucked into the propeller. This permits adequate control of cavitation by means of a not unduly large anti-cavitation plate.

Harry L. Johnson, an experienced engineer and manufacturer of outboard motors, filed his application for the patent on August 25, 1926, but it in no way suggested the combination now asserted as his invention. The single sheet of drawing accompanying the application was not changed during the prosecution of the application, and is the same as the drawing of the issued patent. This drawing showed an outboard motor assembly comprising, among other things, an engine at the top connected with a propeller at the bottom, with an anti-cavitation plate located horizontally above the propeller approximately midway between top and bottom of the housing for the engine and propeller shafts. All water passages for the cooling system beneath the normal water level were shown to be enclosed in the housing. No cross-section of this housing was drawn or indicated, and, for all that appears from the drawing, it might have been circular, triangular or rectangular. The drawing showed an arched member extending from the housing and anti-cavitation plate over the top and to the rear of the propeller, containing openings and passages for the intake and discharge of water, and ending in a curved "deflection plate" extending rearwardly like a fixed rudder. From the specifications and claims, it appeared that the purpose of the deflection plate was to compensate for the side and pivotal force of the moving propeller, which tended to draw the boat off its course unless the operator made constant adjustment to offset the "side throw." The specifications and drawings both indicated an anti-cavitation plate which the specifications said "prevents cavitation," but it was in no way asserted that the cavitation plate was new, or that it

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was being employed in any novel cooperative relation to the other elements.

All of the claims of the application as originally made were rejected on December 15, 1926. On December 13, 1927, Johnson offered amendments which retained and amended the prior claims and added others directed to the feature of the deflection plate. In urging allowance, he said, among other things: "It is conceded that cavitation plates are old in the art as shown in the patent to Johnson cited," and he proceeded to urge as an invention the combination of the cavitation plate and the arching member of reflection plate. A similar supplemental amendment was filed on January 19, 1928. Several of the original claims as amended were allowed, and the rest of the claims rejected, on June 7, 1928.

On December 8, 1928, Johnson came forward with new claims. Claims 20 to 25 offered by this amendment made no [62 S.Ct. 867] mention of the deflection plate or of the arching members, but did not even suggest the presently asserted invention. On March 30, 1929, Johnson cancelled these claims and offered further amendments to his original application, together with a supplemental oath that he had invented the subject matter of the application as so amended, prior to the filing of the original amendment.2 The effect of those changes was aptly described by the patent examiner: "The amendments have been such that the claims now emphasize the anti-cavitation plate, rather than the anti-torque plate." With changes which are immaterial here, the new claims so offered became the claims in issue. In them, Johnson, for the first time, made claims relating to the exterior surface of the housing. Claim 12 described the housing as having "unbroken outer wall surfaces at each side," and claim 14, as having

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"smooth and unbroken walls." Claims 11 and 13 were silent on the subject. The amendment also set forth an addition to the description which was incorporated in the description of the patent as issued. Here, we find the expression "relatively smooth and substantially streamline surfaces." Other than these, no indication of the nature of the surface or cross-section of the housing was given at any time during the prosecution of the application.

The petitioners interposed defenses to all of the eight patents upon which respondents sued them in the District Court for the Northern District of Illinois, Eastern Division3 which we take to have put in issue the question whether the claims were void because made more than two years after the first public use of the device.4

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At the trial, two of the officers of respondent Outboard, Marine & Manufacturing Company testified on direct examination as respondents' witnesses to the effect that, in January or February of 1926, one of this respondent's predecessors put on the market licensed outboard motors equipped with smooth-walled housings, anti-cavitation plates, and internal water passages as described in the claims in suit, and that at least one competitor...

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