Crown Cork Seal Co v. Ferdinand Gutmann Co

• Citation: 58 S.Ct. 842,82 L.Ed. 1265,37 USPQ 351,304 U.S. 159
• Decision Date: 02 May 1938
• Docket Number: No. 72,72
• Parties: CROWN CORK & SEAL CO. Inc. v. FERDINAND GUTMANN CO., Inc. *
• Court: United States Supreme Court

304 U.S. 159

58 S.Ct. 842

82 L.Ed. 1265

CROWN CORK & SEAL CO. Inc.

v FERDINAND GUTMANN CO., Inc.^*

No. 72.

Argued Dec. 13, 1937.

Decided May 2, 1938.

Messrs. John J. Darby, of Washington, D.C., and Thomas G. Haight, of Jersey City, N.J., for petitioner.

Mr. Wm. E. Warland, for New York City, for respondent.

Mr. Justice BUTLER delivered the opinion of the Court.

Petitioner sued respondent in the District Court for Eastern New York to enjoin infringements of patents, two of which are here involved. One is Warth reissue patent, No. 19,117, dated March 20, 1934. The other is Warth patent, No. 1,967,195, dated July 17, 1934, a divisional patent. Both relate to methods for applying small disks of paper or foil, known as center spots, to cork cushions of crown caps. These caps are used to seal bottles containing pressure beverages. The center spot prevents contact of the liquid with the cork. The District Court adjudged both patents valid and infringed. 14 F.Supp. 255. The Circuit Court of Appeals reversed, holding the reissue patent not infringed and the divisional one invalid because of laches in filing the application on which it was granted. 2 Cir., 86 F.2d 698.

The questions presented by the petition for the writ, granted 302 U.S. 664, 58 S.Ct. 12, 82 L.Ed. —-, are these:

1. 'Does this Court's decision in Webster Electric Co. v. Splitdorf Co. (264 U.S. 463, 44 S.Ct. 342, 68 L.Ed. 792) mean that, even in the absence of intervening adverse rights, an excuse must be shown for a lapse of more than two years in presenting claims in a divisional application regularly filed and prosecuted in accordance with patent office rules'?

2. 'Where there has been more than two years delay in asserting specific claims in a divisional application, is it an excuse for the delay that there were claims in the parent patent which, on their face, covered and were reasonably believed to cover, the subject-matter of the divisional claims, even if a Court later interpreted the parent patent claims not to cover such subject-matter?'

Our consideration of the case will be limited to these questions. Washington Virginia & Maryland Coach Co. v. Nat. Labor Relations Board, 301 U.S. 142, 146, 57 S.Ct. 648, 649, 81 L.Ed. 965; Morehead v. People of N.Y. ex rel. Tipaldo, 298 U.S. 587, 604, 605, 56 S.Ct. 918, 920, 80 L.Ed. 1347, 103 A.L.R. 1445; Clark v. Williard, 294 U.S. 211, 216, 55 S.Ct. 356, 358, 79 L.Ed. 865, 98 A.L.R. 347; Alice State Bank v. Houston Pasture Co., 247 U.S. 240, 242, 38 S.Ct. 496, 62 L.Ed. 1096. The first calls for decision upon a single point. It specifically assumes the absence of intervening rights and that the application was appropriately made. There is no question as to the validity of either the original or reissue patents.

Warth filed his first application January 7, 1927, and his second November 7, 1930.¹ From these came the original patent, January 6, 1931. It was to correct an error in the specification that the reissue patent was granted. Before issue of the original patent Johnson, November 26, 1929, filed application on which a patent issued April 5, 1932. April 4, 1933, two years and four months after the original patent was granted Warth, he carved from his second application a divisional one in which he copied the claims of the Johnson patent. In the interference declared upon the conflict, the Patent Office held Warth's divisional application entitled to the filing date of his first one, and awarded the claims of the Johnson patent to him as prior inventor. These are the claims held too late by the Circuit Court of Appeals.

The claims of the reissue patent involved are shown in the margin.² The important feature is simultaneous application of presure and heat to the center spot to make it stick to the cork cushion in the cap. Neither these nor any other claims of the patent specify means to be employed to furnish the heat. The claims in suit of the divisional patent³ cover means to supply heat to be ap- plied to the center spots when subjected to pressure. The important feature is 'heating the pads (cork cushions) in the caps' before placing the spots upon them.

The first application, January 7, 1927, stated: 'It may be desirable to secure the metal foil spot in position, prior to the heat and pressure steps, sufficiently to prevent dislodgement of the spot during any interval between assembling and final sticking. This may be accomplished, for example, by preheating the assembled crown, to soften the coating as soon as the metal foil spot is deposited.' That application contained claims, construed by the Circuit Court of Appeals to be broad enough to cover that disclosure. The Patent Office called for drawings to illustrate means for carrying out the method claimed. Accordingly, Warth showed, by way of illustration, that heat might be furnished by the punch used to cut the spots from the adhesive material and place them upon the cork in the cap, where, by the same stroke of the plunger, they might be subjected to pressure. When he filed the drawings, December 3, 1930, he canceled from the first application the statement just quoted and canceled the claims originally filed. The second application had already been filed. Both contained another statement: 'In carrying out the invention according to what is now considered the best practice, the coating will be softened by heat after the crown is assembled. This may be accomplished in any suitable manner, as by a heated plunger or a plunger and heated table. The heat softens the coating and renders it adhesive. * * *' So far as concerns the question under consideration, it is broad enough to include means for supplying heat by the punch as shown by the drawings, and the preheating method claimed in the divisional application.

The District Court found no adverse use of the preheating method prior to the filing date of the application for the reissue patent. The Circuit Court of Appeals did not disturb that finding. It found that Warth's disclosure of the preheating method was continuously before the Patent Office from the date of his first application, but that there was no claim for the preheating method on file from December 3, 1930, until April 4, 1933, when he filed application for the divisional patent. It held, citing Webster Electric Co. v. Splitdorf Co., supra, that prima facie the two-year limit applies to divisional applications, and that an applicant who waits longer before claiming an invention disclosed in his patent must justify his delay be proof of some excuse. It said (86 F.2d 698, 702): 'No such excuse appears here. Had Warth chosen to retain in his parent application broad generic claims which might cover the preheating method, then indeed the Splitdorf rule might not be applicable. * * * But * * * for a period of more than two years Warth apparently did not wish to claim the preheating method, having deliberately canceled the preheating specification from his original application and shaped his claims so as to exclude it and his patent having been granted January 6, 1931. He made no claim for preheating until more than two years thereafter, namely, April 4, 1933. In the meantime a patent containing claims for the preheating method had been granted to Johnson on April 5, 1932, and it was Warth's discovery of this fact which stirred him to action. As in the Splitdorf Case, had it not been for this competitor, Warth might never have considered the subject worth claiming as an invention.' The court meant that Warth had really abandoned his invention. See Western Electric Co. v. General Talking Pictures Corp., 2 Cir., 91 F.2d 922, 927.

But, as abandonment was not pleaded as a defense, Rev.St. § 4920, as amended, 35 U.S.C.A. § 69 and as Warth's disclosure was continuously before the Patent Office, clearly without any significance adverse to the petitioner is the fact that Warth formally canceled one disclosure from his first application and with it claims thought by the Circuit Court of Appeals broad enough to cover the disclosure. The continuity so maintained shows that Warth intended to retain, not to abandon, the disclosed invention. See Godfrey v. Eames, 1 Wall. 317, 325, 326, 17 L.Ed. 684; Clark Blade & Razor Co. v. Gillette Safety Razor Co., 3 Cir., 194 F. 421, 422.

This case is not like Webster Electric Co. v. Splitdorf Co., supra. In that case, there came here the question of the validity of claims of a patent issued to Kane in 1918. In 1910 Kane had filed his first application, on which patent issued in 1916. In 1913 a patent covering the same subject matter issued to the Podlesake, to whom a reissue patent was granted in 1915. Later in 1915, Kane filed a divisional application which copied the claims of the Podlesak patent. They were decided in favor of the Podlesaks. Thereafter, June 17, 1918, Kane amended his divisional application by adding claims which were allowed, and September 24, 1918, patent issued to Webster Electric Company, Kane's assignee. In 1915, it had brought the suit against the Splitdorf Company. October 25, 1918, it filed a supplemental bill bringing in claims of the patent issued September 24, 1918.

This Court pointed out (264 U.S. 463, at page 465, 44 S.Ct. 342, 68 L.Ed. 792) that the claims in question 'were for the first time presented to the Patent Office, by an amendment to a divisional application eight years and four months after the filing of the original application, five years after the date of the original Podlesak patent, disclosing the subject-matter, and three years after the commencement of the present suit.' We sug- gested that it was doubtful whether the claims were not so enlarged as to preclude allowance under the original application; we found that Kane, deeming their subject matter not invention, did not intend to assert them, and, prior to 1918, did not entertain an intention to have them covered by patent. During all of this time their subject matter was disclosed and in...