Keith v. Charles E. Hires Co.

• Decision Date: 06 December 1940
• Docket Number: No. 19.,19.
• Citation: 116 F.2d 46
• Parties: KEITH v. CHARLES E. HIRES CO., Inc.
• Court: U.S. Court of Appeals — Second Circuit

116 F.2d 46 (1940)

KEITH v. CHARLES E. HIRES CO., Inc.

No. 19.

Circuit Court of Appeals, Second Circuit.

December 6, 1940.

Frederick C. Randolph, of New York City (Theodore S. Kenyon and Douglas H. Kenyon, both of New York City, of counsel), for appellant.

Ralph E. Slayton, of New York City (Lawrence Bristol, of New York City, of counsel), for appellee.

Before L. HAND, CHASE, and CLARK, Circuit Judges.

L. HAND, Circuit Judge.

This is an appeal from a judgment dismissing for noninfringement a complaint upon two patents for a cardbox carrier of bottles. The first patent, No. 2,070,399, was granted on the application of Thomas H. Goldring on February 9, 1937 (claims three and four are here in issue); the second, No. 2,094,744, was granted to Claude D. Keith on October 5, 1937 (claims one and two are in issue).

The Goldring Patent.

The Goldring patent disclosed a flat piece of cardboard which could be folded into a sort of sling to serve as a carrier for six bottles in two opposed tiers. Each bottle was held in place by an opening in the side of the holder, upright after folding, and by a separate hole through which its neck passed. The two ends of the cardboard sling were brought together so as to press together the two rows of bottles and hold them securely in place. The defendant's supposed infringement is substantially like the disclosure except that instead of two separate openings, one for the side of each bottle and another for its neck, it has a single elongated oval slot through which the bottle protrudes, the bottom of of the slot being at about the middle of the body of the bottle, the top just below the top of the bottle. We shall assume arguendo that the patent was valid and address ourselves only to the claims. At one stage of the application the examiner suggested that claim three, as allowed, and another claim (both quoted in the margin),^* were proper issues for interference, and the applicant accepted both by amendment. Claim three did not in fact go into interference, but the other claim did and Goldring won. Thereafter the examiner rejected that claim for reasons which do not appear, but allowed claim three. The situation is not therefore literally one where a claim was first rejected and was afterwards amended to secure allowance. In that event it is of course well settled that the new element introduced cannot thereafter be disregarded upon the issue of infringement. The origin of this doctrine appears to have been Leggett v. Avery, 101 U.S. 256, 25 L.Ed. 865, though the facts did not there exactly present the question; the patentee upon a second reissue had reintroduced limited claims which he had abandoned in the first. However, the decision was almost at once treated as a precedent in a case where the claim was amended to secure allowance (Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 228, 26 L.Ed. 149) and that has always been the normal situation. Down to the present time the Supreme Court has shown no disposition to relax the rule then established. I. T. S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443, 47 S.Ct. 136, 71 L.Ed. 335; Smith v. Magic City Club, 282 U.S. 784, 789, 790, 51 S. Ct. 291, 75 L.Ed. 707; Smith v. Snow, 294 U.S. 1, 15, 55 S.Ct. 279, 79 L.Ed. 721. We can see no difference between that situation and one where as here the applicant files a limited and a broader claim at the same time and then cancels the broader one when it has been rejected. The theory of the "estoppel," as it is called, is that, by assenting to the cancellation of the claim and by amending it, the applicant has abandoned it as it stood. Certainly it cannot be necessary to this conclusion that he shall amend the cancelled claim, when he has already filed a claim which contains the necessary differentia.

The "estoppel" is itself important only as a bar to any resort to the doctrine of equivalents. Without that doctrine every claim is indeed entitled to be interpreted in the light of the specifications as a whole, and not to be read merely with a dictionary. But often even with the most sympathetic interpretation the claim cannot be made to cover an infringement which in fact steals the very heart of the invention; no matter how auspiciously construed, the language forbids. It is then that the doctrine of equivalents intervenes to disregard the theory that the claim measures the monopoly and ignores the claim in order to protect the real invention. Claude Neon Lights v. Machlett & Son, 2 Cir., 36 F.2d 574; Otis Elevator Co. v. Atlantic Elevator Co., 2 Cir., 47 F.2d 545, 547; Oates v. Camp, 4 Cir., 83 F.2d 111, 116. The "estoppel" of the file-wrapper puts an end to the court's power to do this; the applicant has abandoned his privilege to resort to an equivalent of the differentia, which all infringements must therefore embody. He may still insist that his claim shall be generously interpreted, but his monopoly stops where interpretation stops. So far therefore as, but for the estoppel, Goldring might have been entitled to go beyond claim three in the case at bar, he lost that privilege as to the element by which that claim differs from the cancelled claim.

It will be observed that the cancelled claim was merely for a "strip" with a "middle-part" and "side-parts," the first to support the bottles, and the second to be folded together to make a handle above the bottle tops. The "side-parts" had "apertures extending from the middle-part towards the free ends;" the apertures were opposite to each other on opposite sides of the holders, and embraced the sides of the...