Crown Cork & Seal Co. v. Ideal Stopper Co.

• Decision Date: 19 June 1903
• Citation: Crown Cork & Seal Co. v. Ideal Stopper Co., 123 F. 666 (4th Cir. 1903)
• Parties: CROWN CORK & SEAL CO. v. IDEAL STOPPER CO. et al.
• Court: U.S. Court of Appeals — Fourth Circuit

123 F. 666

CROWN CORK & SEAL CO. v. IDEAL STOPPER CO. et al.

United States Circuit Court, D. Maryland.

June 19, 1903

John C Rose and Robert H. Parkinson, for complainant.

Willis Homer, France & Smith and Philip Mauro, for defendants.

MORRIS District Judge.

This is a bill of complaint for injunction and account, filed by the complainant, as the owner of United States patent No 540,072, granted to William Painter, dated May 28, 1895, and reissued July 26, 1898, as reissued letters patent No 11,685, for an improvement in stoppers for bottles and other vessels. The defendant's device is made in accordance with the specifications of two United States letters patent granted to H. T. gay-- No. 662,263, dated November 20, 1900, and No. 669,254, dated March 5, 1901. It is conceded that, if the complainant's patent is valid, the defendants' device infringes, and should be enjoined. The contention of the defendants is that the principle of the complainant's device was not new with Painter, but had been known to the public by the British patent No. 12,247, of 1848, to William Young. The Painter patent now in suit was before this court in 1900 (100 F. 849), and was held to be valid in an earnestly contested suit defended by the owners of the Hall patent, No. 541,203, alleging, among other defenses, want of novelty and patentability. Hall had begun his contest against the patent now in suit in the Patent Office by protesting against the reissue of the Painter patent. Upon appeal from the decision of the primary examiner dissolving the interference sought to be declared by Hall very elaborate briefs were prepared by able counsel for Hall, and submitted with full citation of cases and a careful presentation of prior patents, including the British patent to Young of 1848. The objections to the reissue of the Painter patent were before the examiner in chief in all four times, with the same references and the same reasoning urged against it as are now urged in the present suit, and against these objections the patent was granted, and Hall's interference was dissolved. In the Crown Cork and Seal Company v. Aluminum Stopper Company (in this court), 100 F. 849, the Painter patent now in suit was held valid, but a narrow construction was given to its claims, and under that construction it was held that the device made by the defendant in that case under the Hall patent did not infringe. On appeal to the Circuit Court of Appeals for the Fourth Circuit (108 F. 845, 48 C.C.A. 727) the Painter patent was held to be entitled to a liberal construction as for a distinctly original invention fundamentally differing from any preceding invention, and it was held to cover the device shown in Hall's patent, and made by the defendant in that case. The court said (page 861, 108 Fed.,page 88, 48 C.C.A.):

'In our view it (Painter's invention) represents a distinctly original conception so essentially unlike anything in the prior art that nothing earlier has been presented to us out of which the defendants could read the invention of the patent, or either claim of it. There was no known device which could be converted into the Painter invention by any improvement short of rejection of the entire plan. The answer of the defendants, it is true, stated that this patent was void for want of novelty, and referred to the prior invention of Young in Great Britain in 1848. This was urged by Hall's attorneys upon the attention of the officials of the Patent Office in opposition to the granting of the reissue, and was held by the board of examiners in chief not to exhibit the Painter invention; and the defendant's own expert, Lorenz, testified that the Young patent was not a practical or operative device, and seems so far to have satisfied the learned counsel for defendants on that point that Young's patent was not introduced in evidence.'

In the present suit it is upon the same British patent to Young of 1848 that the defendants relay to prove the want of novelty in the Painter patent. The contention of defendants' counsel is that for one reason or another, neither before the examiners in chief in the Patent Office nor in the Court of Appeals, was the British patent to Young given the construction and effect it should have had. It is urged that the examiners in chief were misled as to its construction and that it was purposely kept from the attention of the Circuit Court of Appeals, although cited in the defendants' answer, for fear that it would not only defeat the Painter patent, but also the Hall patent, which it was the interest of the defendants in that suit to uphold. The last...