Decker v. Federal Trade Commission

• Decision Date: 06 June 1949
• Docket Number: No. 9625.,9625.
• Parties: DECKER et al. v. FEDERAL TRADE COMMISSION.
• Court: U.S. Court of Appeals — District of Columbia Circuit

176 F.2d 461 (1949)

DECKER et al. v. FEDERAL TRADE COMMISSION.

No. 9625.

United States Court of Appeals District of Columbia Circuit.

Argued December 14, 1948.

Decided June 6, 1949.

Writ of Certiorari Denied November 14, 1949.

Mr. Harry S. Hall, Washington, D. C., with whom Mr. Josephus C. Trimble, Washington, D. C., was on the brief, for petitioners.

Mr. Donovan R. Divet, Special Attorney, Federal Trade Commission, Washington, D. C., with whom Messrs. William T. Kelley, General Counsel, Walter B. Wooden, Associate General Counsel and James W. Cassedy, Assistant General Counsel, Federal Trade Commission, Washington, D. C., were on the brief, for respondent.

Before STEPHENS, Chief Judge, and WILBUR K. MILLER and PROCTOR, Circuit Judges.

Writ of Certiorari Denied November 14, 1949. See 70 S.Ct. 159.

PROCTOR, Circuit Judge.

This case is here for review of a proceeding before the Federal Trade Commission, resulting in a cease and desist order against petitioners, who were charged with unfair and deceptive acts and practices in commerce, in violation of Section 45 of Title 15 United States Code, annotated.

Petitioners hold a patent to a device bearing the trade name Vacudex, which they were selling in interstate commerce. In their advertising they represented that Vacudex, when attached to the exhaust mechanism of automobiles, saved gasoline and oil; increased the power of the motor; caused it to give better performance; drew carbon, oil and moisture from the muffler; eliminated or reduced back pressure; reduced vibration of the motor; gave the motor greater acceleration; caused the motor to run more smoothly, and saved tires. These representations, with others, formed the basis of the detailed charges against petitioners in the complaint before the Commission, and are similar to those proscribed by the order to cease and desist. They are also substantially like statements included in the patent application, a copy of which was carried into the letters-patent. Petitioners here renew the several contentions made before the Commission.

The jurisdiction of the Commission is attacked upon the broad ground that the proceedings were, in effect, an attack upon the patent itself, only tenable in appropriate proceedings before a federal district court. Title 28 United States Code Annotated, Section 41 now § 1331 et seq.. Their contention is that the peculiar facts of this case exclude it from the Commission's powers. They point out that representations in their advertising of the beneficial effects of Vacudex, charged as unfair and deceptive in the complaint, are similar in nature to representations in the letters-patent. Hence, they say that their advertising came within the "scope of the patent." From this premise they argue that issuance of the patent imported findings by the Patent Office that the invention possessed the useful advantages stated in the application. Therefore they contend that the effect of the proceedings before the Commission is to challenge the utility of the invention and thus the validity of the patent. This, they insist, is beyond the lawful powers of the Commission. We cannot agree with these contentions. They are predicated upon a misconception of the nature and extent of the patent grant, as we shall point out.

In speaking of their advertising as within the "scope of the patent," petitioners mean, as we understand, that the advertising of the useful benefits of Vacudex stems from statements contained in the patent application which were carried into the letters-patent. But, they are mistaken in assuming that this circumstance brings the advertising within the scope of the patent. In legal contemplation the scope of a patent is limited to the invention described in the claims of the patent, read in the light of the specification. Motion Picture Patents Co. v. Universal Film Manufacturing Co., 1917, 243 U.S. 502, 510, 37 S.Ct. 416, 61 L.Ed. 871, L.R.A.1917E, 1187, Ann.Cas.1918A, 959. While the claim may be illustrated it cannot be enlarged by language used in other parts of the letters-patent than the claim itself. Yale Lock Manufacturing Co. v. Greenleaf, 1886, 117 U.S. 554, 559, 6 S.Ct. 846, 29 L.Ed. 952. Otherwise stated, the scope of letters-patent is limited to the invention covered by the claim, and though the claim may be illustrated, it cannot be enlarged by the language of the specification. Railroad Co. v. Mellon, 1881, 104 U.S. 112, 118, 26 L.Ed. 639; McClain v. Ortmayer, 1891, 141 U.S. 419, 424, 12 S.Ct. 76, 35 L.Ed. 800.

A claim, in the patent law, has a technical meaning, derived from the statutory provision that a patent applicant "shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery. * * *" Title 35 United States Code Annotated, Section 33. It seems clear, therefore, that the scope of a patent is limited to the device particularly pointed out in the specification and distinctly claimed by the applicant, as set forth in the letters-patent. The device, made in accordance with the specification and claims, visually illustrates the scope of a patent. So we conclude that the patent covered the device alone. It cannot be understood to embrace the methods employed in advertising or selling the patented product.

It has long been settled that a patentee receives nothing from the law he did not have before, and that the only effect of his patent is to restrain others from manufacturing, using or selling that which he has invented. Motion Picture Patents Co. v. Universal Film Manufacturing Co., supra, and cases cited. Before the patent grant the inventor had the right to sell the product of his invention, and to advertise the same, but not the right to misrepresent it. Now, after the patent grant, petitioners, the present owners of the patent, have the right to sell the article and to advertise it, but not the right to misrepresent it. In short, the letters-patent do not cover advertising. The proceedings before the Federal Trade Commission related only to advertising. They did not draw into question the validity of the patent grant. Hence the case is not one arising under the patent laws, cognizable only in a federal district court.

We think petitioners also make a mistake in assuming that their patent covers the functions of the invention as set forth in the letters-patent. The law is settled that the patent does not cover functions, i. e., the operative effects or results of a patented process or device. Westinghouse v. Boyden Power Brake Co., 1898, 170 U.S. 537, 556, 557, 18 S.Ct. 707, 42 L.Ed. 1136; General Electric Co. v. Wabash Appliance Corp., 1938, 304 U.S. 364, 371, 58 S.Ct. 899, 82 L.Ed. 1402. Indeed a patent claim stated solely in terms of function is void, Expanded Metal Co. v. Bradford, 1909, 214 U.S. 366, 384, 29 S.Ct. 652, 53 L.Ed. 1034, for the obvious reason that if functions or results are patentable the patent monopoly would be extended beyond the discovery and discourage rather than promote invention. The Incandescent Lamp Patent, 1895, 159 U.S. 465, 476, 16 S.Ct. 75, 40 L.Ed. 221; Holland Furniture Co. v. Perkins Glue Co., 1928, 277 U.S. 245, 257, 48 S.Ct. 474, 72 L.Ed. 868.

Applying the foregoing rule to the facts of this case, we observe that the complaint before the Commission and the order to cease and desist relate only to statements concerning the functioning of Vacudex. It follows that such representations, which in one form or another found their way into the advertising of petitioners, do not come within the limited coverage of the patent grant. Rather do they fall under the prohibitions of general law, applicable to all who put their products for sale into the channels of commerce and trade. When they do so they can claim no immunity by reason of a patent. It cannot be made a cover for violation of law. Standard Sanitary Mfg. Co. v. U. S., 1912, 226 U.S. 20, 49, 33 S.Ct. 9, 57 L.Ed. 107; Virtue v. Creamery Package Co., 1913, 227 U.S. 8, 32, 33 S.Ct. 202, 57 L.Ed. 393. "Beyond the limited monopoly which is granted, the arrangements by which the patent is utilized are subject to the general law." U. S. v. Masonite Corporation, 1942, 316 U.S. 265, 277, 62 S.Ct. 1070, 1076, 86 L.Ed. 1461. Nor does the grant "limit the right of Congress to enact legislation not interfering with the legitimate rights secured by the patent." United Shoe Machinery Corp. v. U. S., 1922, 258 U.S. 451, 464, 42 S.Ct. 363, 367, 66 L.Ed. 708. Likewise, patent rights are subject to the prohibitions and controls imposed by the states in the legitimate exercise of their powers over purely domestic affairs, whether of internal commerce or of police. Patterson v. Kentucky, 1878, 97 U.S. 501, 503, 24 L.Ed. 1115; Allen v. Riley, 1906, 203 U.S. 347, 356, 27 S.Ct. 95, 51 L.Ed. 216, 8 Ann.Cas. 137.

Next, petitioners contend that the Commission's proceedings attack the utility of the invention. It is true, as they argue, that a patent does raise a presumption that the invention possesses utility. Remington Cash Register Co. v. National Cash Register Co., D.C.D.Conn.1925, 6 F.2d 585, 629. However, the presumption is not conclusive, but only prima facie. Cleveland Automatic Mach. Co. v. National Acme Co., 6 Cir., 1931, 52 F.2d 769, 770; Callison v. Dean, 10 Cir., 1934, 70 F.2d 55, 58. It is also important to note that an invention need not be capable of performing all the functions declared by the inventor. The statutory requirement of utility is met if it can accomplish one. Scovill Mfg. Co. v. Satler, D.C.D.Conn.1927, 21 F.2d 630, 634; In Re Oberweger, 115 F.2d 826, 828, 28 C.C.P.A., Patents, 749; Walker on Patents, Deller's Edition, Vol. 1, page 312, section 65. So, although we must assume that the Patent Office did find that Vacudex had some utility, it does not follow that it possessed all the useful qualities asserted for it by the inventor. With this in mind we point out that in the cease and...