Co v. Cleveland Trust Co Aberdeen Motor Supply Co v. Same Rowe Sales Co v. Same

• Decision Date: 09 December 1940
• Docket Number: 10,SCHRIBER-SCHROTH,Nos. 9,11,s. 9
• Citation: 85 L.Ed. 132,61 S.Ct. 235,311 U.S. 211,312 U.S. 654
• Parties: CO. v. CLEVELAND TRUST CO. ABERDEEN MOTOR SUPPLY CO. v. SAME. F. E. ROWE SALES CO. v. SAME
• Court: U.S. Supreme Court

311 U.S. 211

61 S.Ct. 235

312 U.S. 654

85 L.Ed. 132

SCHRIBER-SCHROTH CO.

v CLEVELAND TRUST CO.

ABERDEEN MOTOR SUPPLY CO.

v. SAME.

F. E. ROWE SALES CO.

v. SAME.

Nos. 9, 10, 11.

Argued Oct. 24, 25, 1940.

Decided December 9, 1940.

As Amended on Denial of Rehearing and Motion to Remand Feb. 3, 1941.

Second Petition for Rehearing Denied Mar. 3, 1941.

See 312 U.S. 714, 61 S.Ct. 727, 728, 85 L.Ed. —-.

Messrs. John H. Sutherland and John H. Bruninga, both of St. Louis, Mo., for petitioners.

Messrs. Arthur C. Denison and F. O. Richey, both of Cleveland, Ohio, for respondents.

Mr. Justice STONE delivered the opinion of the Court.

Decision in these cases turns on the question whether, in the light of the patent office history of the Jardine patent on a piston for gas engines, the court below, in construing the specifications and claims, erroneously included one element, 'flexible' or 'yielding' webs in the patented combination.

A related question was considered by this Court in connection with the Gulick and Maynard patents, also involved in this litigation, in Schriber-Schroth Company v. Cleveland Trust Co., 305 U.S. 47, 59 S.Ct. 8, 83 L.Ed. 34. Respondent the Cleveland Trust Co. is the assignee in trust under a pooling agreement of some eighty patents relating to pistons for gas engines. It brought suit in the district court for northern Ohio against petitioners, three piston dealers, customers of the Sterling Products Company, to restrain infringement of five of the patents, including the Gulick patent No. 1,815,733, applied for November 30, 1917 and allowed July 31, 1931, the Jardine patent, No. 1,763,523, applied for March 11, 1920 and allowed June 10, 1930, and the Maynard patent No. 1,655,968, applied for January 3, 1921 and allowed June 10, 1928.

The cases were consolidated and tried before a special master who, upon the basis of elaborate special findings, concluded that the Gulick patent was invalid because of want of invention and because of the addition to the application by amendment in 1922 of a new element of the alleged invention; that the Maynard patent was invalid for want of invention and for failure to describe and claim the alleged invention, and that the Jardine patent was invalid as not showing invention over the prior art exhibited by Ricardo, Franquist and Long. He held the other patents invalid for reasons not now material.

The district court adopted the master's findings and gave its decree for petitioners. The court of appeals reversed as to two of the five patents, holding the Gulick and Maynard patents valid and infringed. 6 Cir., 92 F.2d 330, 334. The elements of the combination as stated in claim 39, of the Gulick patent, are:

'A piston for an engine cylinder comprising a skirt, a head separated from the skirt wall around its entire periphery, said skirt being longitudinally split to render the skirt wall yieldable on every diameter in response to cylinder wall pressure, wrist pin bosses, and means rigidly connecting said bosses to the head and yieldingly connecting said bosses to the skirt whereby said skirt is yieldable in response to cylinder wall pressure.'

Reference to a combination, including with other elements web connections 'whereby said piston skirt is rendered yieldable during operation in response to cylinder wall pressure' appears in number 18, one of the sustained claims.

The court of appeals found invention in both the Gulick and Maynard patents, in a combination of elements of which one was 'webs laterally flexible', which was not specifically described or claimed in the Gulick patent before its amendment of 1922 and was never so described or claimed in the Maynard patent.

Conceding that other elements in the combinations were old in the piston art it said: 'But to combine insulation of head from skirt, retraction of the bosses from the skirt periphery, connection of such bosses to the skirt with webs laterally flexible and yet so carried from the head as to support the load upon the wrist pin with sufficient strength and rigidity, and to utilize the mechanical force of the cylinder wall upon the skirt and the thermal expansion of the bosses so as to compensate evenly and fully for head expansion and to secure a balanced flexibility of the skirt with no bending concentration at any point therein, discloses, we think a meritorious concept beyond the reach of those skilled in the art'. 92 F.2d at page 334.

Upon an examination of the Gulick application before amendment and the Maynard patent we concluded, 305 U.S. 47, 59 S.Ct. 8, 83 L.Ed. 34, that neither described or claimed flexible or yieldable webs as an element in the patented inventions. For that reason alone we held that if the flexible web constituted an essential element of the inventions both patents failed to satisfy the requirement of the statute that the patentee describe his invention so that others may construct and use it after the expiration of the patent and that it 'inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.' Permutit Co. v. Graver Corp., 284 U.S. 52, 60, 52 S.Ct. 53, 55, 76 L.Ed. 163; that consequently the patent monopoly did not extend beyond the invention described and explained by the patent as the statute requires and could not be enlarged by amendment so as to embrace in the invention and element not described or claimed in the application as filed, at least when adverse rights of the public had intervened. See Schriber-Schroth Co. v. Cleveland Trust Co., supra, 305 U.S. 57, 59 S.Ct. 12, 83 L.Ed. 34.

Upon the remand the court of appeals held in the present suit, Cleveland Trust Co. v. Schriber-Schroth Co., 6 Cir., 108 F.2d 109, that the elements of the combination described and claimed in the Gulick patent before amendment and in the Maynard patent without including the flexible web element which was added only by amendment to the Gulick patent, did not disclose invention over the prior art. But considering that the flexible web element which had not been included in the combination patented by Gulick and Maynard had been described and claimed in the Jardine patent, it recalled its mandate to the district court by which it had directed dismissal without prejudice of the suit brought on that patent. See Cleveland Trust Co. v. Schriber-Schroth Co., supra, 108 F.2d 112, 113. Upon an examination of the Jardine specifications and claims it found there described and claimed the invention which it had previously found in Gulick and Maynard, but which this Court had found the patentees had failed to describe and claim in their applications.

The Jardine claims, 1, 8 and 11, which it sustained, recite the webs as an element but do not describe them as flexible or point to flexibility as an element in the invention claimed. But in the specifications of the patent, which so far as now material appeared in Jardine's application describing the invention, he makes specific reference to the webs constructed in such proportions as to enable them to 'bend' in response to the reaction force of the cylinder wall on the outer faces of the guide segments as the piston expands, and to the cooperation of the 'bending' web with the thermal expansion of the guide part of the piston without a corresponding increase in its outer diameter.¹ He explained the principle of his device saying, 'I have found that these difficulties can be overcome by constructing a piston with its skirt or guide portion supported and slotted or divided in a manner to permit deformation and deflection of parts thereof without interfering with the performance of the essential functions of the respective parts.'

Reading specifications and claims together, the Court of Appeals interpreted the latter as incorporating the element of web flexibility in the combination claimed and concluded that Jardine had explained and claimed 'the principle of operation of his machine and the flexibility of its webs'. It said that 'the knowledge that was not Gulick's or was by him concealed is clear to Jardine and by him proclaimed.' It held the Jardine patent valid and infringed as it had found Gulick infringed in its earlier decision.

We granted certiorari, 309 U.S. 648, 60 S.Ct. 709, 710, 84 L.Ed. 1000, on a petition which raised, among others, the question whether the court of appeals had misinterpreted or unduly limited this Court's earlier decision in this case and its decision in Permutit Co. v. Graver Corp., supra, by refusing to hold a patent invalid where a feature found to be an essential element of the patented combination was not mentioned in the claims of the patent and was in fact surrendered during the prosecution of the application and after adverse decisions in interferences.²

The claims of a patent are always to be read or interpreted in the light of its specifications, Hogg v. Emerson, 11 How. 587, 13 L.Ed. 824; Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 22 S.Ct. 698, 46 L.Ed. 968; Smith v. Snow, 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed. 721; and we may assume that if in the present case the specifications and claims of the patent were to be interpreted without reference to its file wrapper history, the webs referred to in the claims are the webs described in the specifications as capable of bending in cooperation with the slotted piston guides or skirts so as to compensate for thermal expansion and so supply the element of webs laterally flexible which was wanting to Gulick and to Maynard. But the particular invention to which the patentee has made claim in conformity to the statute is not always to be ascertained from an inspection of the specifications and claims of the patent alone. Where the patentee in the course of his application in the patent office has, by amendment, cancelled or surrendered claims, those which are allowed are to be read in the light of those...