Freeman v. Altvater

• Citation: 138 F.2d 854
• Decision Date: 26 November 1943
• Docket Number: No. 12241.,12241.
• Parties: FREEMAN et al. v. ALTVATER et al.
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

138 F.2d 854 (1943)

FREEMAN et al. v. ALTVATER et al.

No. 12241.

Circuit Court of Appeals, Eighth Circuit.

November 26, 1943.

Marsten Allen and Allen & Allen, all of Cincinnati, Ohio, for appellants.

Edmund C. Rogers, Lawrence C. Kingsland and Kingsland, Rogers & Ezell, all of St. Louis, Mo., for appellees.

Before GARDNER, WOODROUGH, and JOHNSEN, Circuit Judges.

GARDNER, Circuit Judge.

Appellants commenced this suit in equity for the specific performance of a license agreement under reissue patent No. 20,202, issued to Benjamin W. Freeman December 8, 1936, upon an application filed October 30, 1936, for a cut-out machine for shoe uppers. It was alleged that the reissue patent was substituted under the agreement for the original patent No. 1,681,033, and an injunction and an accounting were asked. Appellees denied generally the allegations of the bill, charged that the two reissue patents obtained on the surrender of the original patent were invalid, and alleged that while they had made payments of royalties under the reissue patents, they did so under protest. By counterclaim they sought a declaratory judgment and challenged the validity of the reissue patent No. 20,202 and its companion No. 20,203, alleging that the license agreement did not cover the reissue patents; that appellees were willing to pay royalties if the agreement covered the reissues and if they were valid; that the reissue patents, however, were not valid, but that if they should cancel the license agreement and refuse to pay royalties under it they would be subject to infringement suits and because of the peril caused by such threat they prayed for a declaratory judgment as to the validity of the reissue patents. Appellants, in their reply to the counterclaim denied its material allegations and alleged that there was no justiciable controversy between the parties as set forth in the counterclaim, and that appellees had no right to a declaratory judgment.

The trial court found that there was no contract of license and no infringement, and on appeal we affirmed. Freeman v. Altvater, 129 F.2d 494. The trial court also held the reissue patents invalid. On petition for rehearing and motion to modify the opinion and revise the decree, we limited the effect of our decision so as not to include an adjudication of any issues raised by the counterclaim, expressing the view that when the trial court found no contract of license and no infringement, the other issues became moot, and hence, there was no longer a justiciable controversy between the parties. 130 F.2d 763. On writ of certiorari the Supreme Court held that this court should have determined those issues and accordingly remanded the cause to this court for that purpose. Altvater v. Freeman, 319 U.S. 359, 63 S.Ct. 1115, 87 L.Ed. 1450.

To understand the issues now before this court, it will be necessary to review the history of the Freeman patents and some of the litigation affecting them. Freeman patent No. 1,681,033 was issued August 14, 1928, upon an application filed December 3, 1923. In Freeman v. Altvater, 66 F.2d 506, decided by this court July 24, 1933, it was held that Altvater had infringed the Freeman patent and as he was licensee of that patent he could not assail it on the ground of invalidity. In Premier Machine Co. v. Freeman, 84 F.2d 425, 430, decided by the Circuit Court of Appeals of the First Circuit, on June 3, 1936, the alleged infringer of the Freeman patent was not a licensee and the court was therefore free to consider the validity of that patent. Freeman, in his original patent No. 1,681,033, showed a machine for cutting out openings in shoe uppers and his invention was claimed to lie in the making of a die support elevated and small enough so that the upper of the shoe, approximating its final form, could rest upon it. On top of the support or "anvil" was placed a die, an element with shaped cutter pieces on it to perforate the leather of the shoe. When the upper was placed over the die, a presser member forced the material onto the die cutters and the pattern was cut into the leather of the upper. Freeman claimed to have invented a mask which was a gauging or tensioning device, by which the upper, which otherwise concealed the cutting edges of the die, could be put in proper position, or "gauged" with respect to the die cutters. A stripper plate, the upper surface of which was normally flush with the tops of the cutters, and held in position by compressible springs on the base, operated, when pushed down by the presser member, to free the leather from the dies. Included in the claims was a slide for moving the die horizontally into and out of operating position.

In the Premier decision, the court held invalid the claims for the elevated and anvil dies, for mask and stripper, and for the slide for moving dies as anticipated by the prior art and not involving invention. Claims 18, 70 and 79 were upheld as valid. The court held these claims covered "a clamp plate or mask having a fixed relation to the die and having a window the outline of which is similar to the pattern to be perforated, and which is so placed with relation to the pattern and to the die as to be used as a gauge * * *." Certiorari was denied in the Premier case October 19, 1936. Following the Premier decision, Freeman, on October 30, 1936, applied for reissue. Formal notice of the reissue was given October 30, 1936. He also filed a disclaimer in his original patent on November 11, 1936. In this he expressly disclaimed all claims held invalid in the Premier decision. The reissue patents Nos. 20,202 and 20,203 issued December 8, 1936.

Appellees contend that the disclaimer was improper; that the claims of the original patent were in fact retained in the reissues and that as the reissues embodied the same concepts as those in the claims in form disclaimed, the basic patent was thereby rendered invalid. Maytag Co. v. Hurley Mach. Co., 307 U.S. 243, 59 S.Ct. 857, 83 L.Ed. 1264. The validity of the disclaimer and of the reissues is presented by the counterclaim.

The disclaimer statute, 35 U.S.C.A. § 65, provides that: "Whenever, through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or discoverer, his patent shall be valid for all that part which is truly and justly his own, provided the same is a material or substantial part of the thing patented; and any such patentee * * * may, on payment of the fee required by law, make disclaimer of such parts of the thing patented as he shall not choose to claim or to hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing, attested by one or more witnesses, and recorded in the Patent Office; and it shall thereafter be considered as part of the original specification to the extent of the interest possessed by the claimant and by those claiming under him after the record thereof. * * *"

Disclaimer and reissue are not to be confused as the distinction between them is more than a matter of form. Disclaimer is a voluntary abandonment by the patentee of that to which he was not entitled, the purpose of the statute being to mitigate the harsh rule which destroyed the entire patent in the event that any claim was held to be invalid. A duty to disclaim arises where the patentee has claimed more than the law permits and where he has included in his claims something which was previously known to the art. Reissue is the act of the commissioner in granting a new patent, "Whenever any patent is wholly or partly inoperative or invalid, by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, if the error has arisen by inadventence, accident, or mistake, and without any fraudulent or deceptive intention * * *." The reissue is "for the same invention, and in accordance with the corrected specification * * *." 35 U.S.C.A. § 64. If the purpose is to reform or alter the description of the invention or to convert a claim from one thing into something else, it must be accomplished by reissue; but if the purpose is to obviate an ambiguity in a specification it must be by disclaimer. Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 22 S.Ct. 698, 46 L.Ed. 968. A disclaimer can not add a new element to anything contained in the claims, but it affords opportunity for relinquishment to restrict or curtail the monopoly of the patent. A reissue, on the other hand, makes possible the alteration of the original invention by addition of a new element. Fruehauf Trailer Co. v. Highway Trailer Co., 6 Cir., 67 F.2d 558; Grasselli Chemical Co. v. National Aniline & Chemical Co., 2 Cir., 26 F.2d 305. A patent amended by disclaimer speaks from the date of the original patent but the reissued patent, so far as the amended claim is concerned, speaks only from the date of the reissue. Altoona Theaters v. American Tri-Ergon Corp., 294 U.S. 477, 55 S.Ct. 455, 79 L.Ed. 1005.

In his disclaimer Freeman said that he entered a disclaimer as to claims 6, 7, 8, 10 to 17 inclusive, 62, 66 to 69 inclusive, 71 to 74 inclusive, 79 and 94. The disclaimer contains the following language: "And your petitioner further represents that he has filed a reissue application for reissue of the said letters patent, in which he has omitted the claims above disclosed, and in their place substituted ones which he believes to properly express his invention, and that this disclaimer is filed out of abundant caution to preserve unto him the rights to protection for that of which he is the original and first inventor."

The disclaimer here was filed in connection with application to reissue. It is observed that appellants took the position that the disclaimer was but an adjunct to the reissues; hence, if...