Exhibit Supply Co v. Ace Patents Corporation Genco v. Same Chicago Coin Machine Co v. Same

Citation62 S.Ct. 513,315 U.S. 126,86 L.Ed. 736,52 USPQ 275
Decision Date02 February 1942
Docket Number156,155,Nos. 154,s. 154
CourtUnited States Supreme Court

See 315 U.S. 828, 62 S.Ct. 792, 86 L.Ed. —-.

Mr. John H. Sutherland, of St. Louis, Mo., for petitioners.

Mr. Casper W. Ooms, of Chicago, Ill., for respondent.

Mr. Chief Justice STONE delivered the opinion of the Court.

Respondent began the present litigation as three separate suits against the respective petitioners for infringement of the Nelson Patent No. 2,109,678 of March 1, 1938, for a 'contact switch for ball rolling games.' The defenses were non-invention in view of the prior art, anticipation by prior publication, use and sale, non-in- fringement and a file wrapper estoppel. The three suits were consolidated and tried together. Upon full consideration of the issues the District Court and the Circuit Court of Appeals for the Seventh Circuit held Claim 4 of the patent valid and infringed. 119 F.2d 349.

We granted certiorari, 314 U.S. 702, 62 S.Ct. 175, 86 L.Ed. -, on a petition which challenged only the decree of infringement below, on the ground that it enlarged the scope of the patent as defined by the claim, by resort to the doctrine of equivalents, and that Nelson, the patentee, by the amendment of his claims in the Patent Office, had surrendered Claim 4 so far as it would otherwise read upon the alleged infringing devices. Neither in their petition nor in their brief and argument in this Court have petitioners contended that the patent is invalid for want of invention. Although there is no conflict of decision, we were moved to grant the petition by the nature of the questions presented, together with a showing that the industry affected by the patent is located in the seventh circuit so that litigation in other circuits resulting in a conflict of decision would not be likely to occur.

The patent relates to the structure of a resilient switch or circuit closer, so disposed on the board of a game table as to serve as a target which, when struck by a freely rolling ball, will momentarily close an electrical circuit. Specifications and drawings disclose a target or switch comprising a conductor standard mounted in the table and carrying a coil spring having a leg pendantly disposed in a conductor ring located in the table and slightly offset from the standard. The standard and ring are wired in a circuit with a relay coil and a source of electrical energy. When a ball rolling on the table bumps the coil spring from any direction, the leg of the spring is deflected momentarily bringing it into contact with the ring, so as to close the circuit for operating the relay coil and any connected auxiliary game device. Any de- sired number of targets may be placed on the board in a suitably spaced relationship; in pin ball games a single ball may successively bump and close a number of the switch devices. In describing his invention the patentee declared it to be his intention 'to cover all changes and modifications of the example of the invention herein chosen for purposes of the disclosure, which do not constitute departures from the spirit and scope of the invention.'

The prior art as disclosed by the record shows no device in which the coil spring serves both as a target and a switch. The advantages of the device are said to be that the combination is peculiarly adapted to use in pin ball games; that the coil spring structure is so organized as to form both a switch for operating auxiliary recording or signalling devices and a target which is accessible from any direction.

Claim 41 claims as the elements of the invention the conductor standard anchored in the table, the coil spring surrounding the standard which carries the spring pendantly from its top, with the spring spaced from the standard to enable the spring to be resiliently flexed, 'and conductor means in said circuit and embedded in the table at a point spaced from the standard and engageable by a portion of the spring when it is flexed to close the aforementioned circuit.' The drawings of the patent show the 'conductor means' last mentioned in the form of a ring or ferrule set in the table with its axis at right angles to the table and with its flange projecting slightly above the surface of the table. The leg pending from the coil spring is so disposed at the center of the annular ferrule that a ball striking the spring in any direction will bring the pendant leg into contact with the ring so as to close the circuit.

The six devices alleged to infringe the patent differ from the particular claim of the invention described in the specifications, only in the specific form and method of supporting the 'conductor means' which is 'engageable by a portion of the spring when it is flexed'. In two of the accused devices, plaintiff's Exhibits 5 and 7, there is substituted for the ring conductor set in the table a nail or pin driven into the table and surrounded near its upper end by a ring attached to the end of the resilient coil spring, or formed there of the coil wire. When the spring is struck the circuit is closed by the contact of ring and nail at a point above the table. This arrangement contrasts with that of the conductors as shown in the patent drawings, in which a ring set in the table and the pendant leg of the coil form the contact at a point near or below the surface of the table. In the one case the ring conductor is supported by the table and the complementary conductor is attached to or is formed of the wire of the spring at its end. In the other the locations of the ring and of the complementary conductor are reversed.

Two others of the accused devices, plaintiff's Exhibits 6 and 10, show a further alteration. In Exhibit 6, the nail or pin, instead of being driven directly into the table, is affixed to and supported by a metal plate resting on the upper surface of the table with the coil spring standard passing through it and holding it firmly on the table. The conductor extends to the wire connection through a hole in the table underneath the plate. In Exhibit 10 the conductor is insulated from the plate, which is rigidly anchored to the coil spring standard, which in turn is anchored to the table.

In the remaining two accused devices, plaintiff's Exhibits 8 and 9, an insulating core or sleeve surrounds the coil standard and supports an annular or enveloping conductor wired in the circuit, spaced and insulated from the coil standard so that the circuit is closed by contact of the conductor and the coil when it is flexed. In Exhibit 8 the sleeve is electrically connected with a metal plate, held in position on the top of the table by the standard which passes through the plate. A wire leading from the plate passes through a hold in the table underneath the plate. In Exhibit 9 the annular conductor is located above the table top and a wire leading from it passes through a hole in the table.

Comparison of the several accused devices shows that in all but Exhibits 5 and 7 the conductor means complementary to the coil spring is not embedded in the table, but is supported by an insulated plate resting on the table or an insulating core held in position by the standard. In Exhibits 6 and 10 the conductor means passes to its wire connection through a hole in the table underneath the plate. In Exhibit 8 the connecting wire passes through a hole in the table to a metal plate resting on its surface, and in Exhibit 9 to the conductor means located above the surface of the table.

Petitioners insist that respondent is estopped to assert infringement by the file wrapper record in the Patent Office and in any event that estoppel can be avoided and infringement established only by resort to the doctrine of equivalents, which they assert is incompatible with the statutory requirements for the grant of a patent and with the doctrine that the patent claims measure the patented invention.

The file wrapper history, so far as now relevant, relates to Claim 7 which, after amendment, was allowed as Claim 4 now in issue. The original Claim 7 with its amendments is set forth as follows:

(Matter added by amendment in parenthesis; matter stricken in italics and underscored.)

(4) 7. In a ball rolling game having a substantially horizontal table over which balls are rollable, the combination with said table of a substantially vertical standard anchored in said table with its lower

end carrying on the underside of the table a lead for an

A1 electric circuit and its upper end extending a substantial distance above the top surface of the table, a coil spring surrounding the standard, means carrying

said spring pendantly from the upper portion of the

per C standard (ABOVE THE TABLE) with the coils of the spring spaced from the

per C standard and the lower end of the coil spring terminating

per C at a distance above the top surface of the table to enable the spring to be resiliently flexed when bumped

by a ball rolling on the table, said spring being in the

aforementioned circuit and constituting a conductor, and

per B other conductor means (IN SAID CIRCUIT AND EMBEDDED IN) carried by the table at a point spaced from the standard and engageable by a portion of the spring when it is flexed to close the aforementioned circuit.

The original application contained six claims, all of which the examiner rejected because he thought no patentable significance had been shown. The inventor submitted certain amendments, and two new claims, 7 and 8, and induced the examiner to reconsider the patentability of the invention. Four of the claims were then allowed, but the examiner rejected Claim 7 as failing to claim the invention. He said: 'It is old in the art to make an electrical contact by flexing a coil spring as shown by the art already cited in the case. In order to distinguish over the references therefor,...

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