MOS CORPORATION v. John I. Haas Co.

• Decision Date: 07 July 1964
• Docket Number: No. 18953.,18953.
• Citation: 332 F.2d 910
• Parties: M. O. S. CORPORATION, a corporation, Appellant, v. JOHN I. HAAS CO., Inc., a corporation, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

332 F.2d 910 (1964)

M. O. S. CORPORATION, a corporation, Appellant, v. JOHN I. HAAS CO., Inc., a corporation, Appellee.

No. 18953.

United States Court of Appeals Ninth Circuit.

May 28, 1964.

Rehearing Denied July 7, 1964.

Robert S. Dunham, New York City, Kenneth C. Hawkins, Yakima, Wash., for appellant.

George C. Twohy, Yakima, Wash., Cushman, Darby & Cushman, C. Willard Hayes, Edgar H. Martin, Washington, D. C., for appellee.

Before ORR, HAMLEY and BROWNING, Circuit Judges.

HAMLEY, Circuit Judge.

This is an appeal from a judgment for the defendant in an action for infringement of a patent covering a process and method of recompressing hops for packing and shipping in standard steel drums.

The patent, (No. 2,674,535) containing nine claims, was obtained on April 6, 1954, by S. S. Meisler, who, on May 24, 1954 assigned it to the plaintiff and appellant, M. O. S. Corporation (M. O. S.). The claims and specifications of the patent describe a process and method of pressing two standard bales of hops into one circular cross section bale, which is then placed into two standard steel drums for shipping.

In February and March, 1955, defendant and appellee, John I. Haas Co., Inc. (Haas) had hops packed for it in single steel drums. Meisler, with the assent of his assignee, M. O. S., then instructed his patent attorneys to file an application for reissue of the patent, for the purpose of making a change in the specification and adding, as an additional tenth claim, a process and method of compressing "at least one bale" of hops into a bale of circular cross section, for placing into "at least one drum."

This application for reissue was filed on May 18, 1956. It was supported by Meisler's oath which contains a number of recitals including those set out in the margin.¹

The application was rejected on October 19, 1958. The examiner held that the application was defective because new matter had been introduced into the case. In support of this view the examiner called attention to a place in the specifications wherein the words "one or" had been inserted. The examiner stated that no reference was made in the original specification or claims to the use of one drum for shipping hops. In concluding that, for this reason, the application for reissue was defective, the examiner relied upon the first paragraph of 35 U.S.C. § 251 (1958).²

The examiner further held that the application was defective because the added claim enlarges the scope of the claims, and where this is done the application must be applied for within two years from the grant of the original patent. The examiner noted that the application for reissue was filed on May 18, 1956, which was more than two years after the issuance of the patent. In holding that the application for reissue was untimely, the examiner relied upon the last paragraph of section 251.³

Although the first nine claims in the application for reissue were identical with the nine claims of the patent as issued, the examiner rejected all claims "as depending on new matter," but stated that cancellation of the new matter inserted in the specification and of claim 10 would make claims 1 to 9 allowable. The application for reissue became abandoned on April 19, 1959, through failure of the applicant to file an appeal therefrom.

In this infringement suit thereafter commenced, M. O. S. took the position that through application of the doctrine of equivalents, the claims of the patent should be deemed to cover compressing and packing hops in single standard drums, as well as the two standard drums referred to in the claims and specifications.⁴

The use of a single drum, the plaintiff contended, is merely a simple equivalent of the use of two drums since the essential idea of the patent is the recompressing of the bale of hops into a circular form to be placed in a standard drum. The two-drum application, M. O. S. asserted, was therefore merely illustrative and not limiting.

Defendant Haas defended on several grounds, one being that, under the facts, there was no infringement because the doctrine of equivalents does not apply. A second defense was that the patent is invalid. A third defense was that of file wrapper estoppel by reason of representations made in securing the patent. A fourth defense was that the circumstances surrounding the application for reissue, its rejection, and the applicant's failure to take an administrative appeal, call for application of the doctrine of file wrapper estoppel, or collateral estoppel or res judicata, thereby precluding M. O. S. from asserting that the patent covers single-drum packing of hops.⁵

The trial court upheld the fourth defense referred to above, expressing the view that by reason of the statements made in the affidavit filed in support of the application for reissue, and the failure to appeal from the examiner's rejection of that application on the ground that it included new matter, M. O. S. had precluded itself, by file wrapper estoppel, from contending that the claims of the original patent cover single-drum containers.⁶

The gravamen of "file wrapper estoppel," as generally understood, is that an applicant who acquiesces in the rejection of his claim, and accordingly modifies it to secure its allowance, will not subsequently be allowed to expand his claim by interpretation to include the principles originally rejected, or their equivalents. See D & H Electric Co. v. M. Stephens Mfg., Inc., 9 Cir., 233 F.2d 879, 883. See also, 2 Walker on Patents (A. W. Deller ed.) § 249, 1215-1216, 1218.

Here the applicant for reissue of the Meisler patent did not, by reason of the application for reissue, or the statements made in support of that application, or the abandonment of the appeal, gain any right or benefit he did not already have. Thus it cannot be said, as in the ordinary case of file wrapper estoppel, that the patent office granted limited claims in reliance upon a withdrawal of broader claims.

But the district court was apparently of the view that although this normally essential element of file wrapper estoppel was absent from the circumstances surrounding the rejection of the application for reissue, the allegations in the supporting affidavit and the abandonment of the appeal, separately or together, nevertheless work such an estoppel.

In support of this position the district court cited two cases, one being Baker-Cammack Hosiery Mills, Inc. v. Davis Co., 4 Cir., 181 F.2d 550. In the opening sentence of the specification of the Gastrich Patent No. 2,067,486 involved in that case it is stated that the invention relates to full-fashioned hosiery. When the application was pending in the Patent Office the inventor emphasized this fact and pointed out that the processes and machines in the full-fashioned field are so different from those used in the circular knitting art as to leave no room for comparison. The inventor referred to the prior Scott patent and strove to differentiate it on the ground that it pertained to circular knitting and hence did not apply to full-fashioned hosiery.

On these representations the patent in the Baker-Cammack case was granted. Some months thereafter the patentee filed an application for a reissue on the ground that the patent was partly inoperative in that the disclosures and claims had been inadvertently limited to full-fashioned hosiery. The application was rejected by the examiner who was of the opinion that all of the claims of the patent, including those already granted, should be rejected on the prior art. The patentee then withdrew the application for reissue and obtained return of the original patent.

In the infringement suit which followed, the patentee contended that the original claims covered seamless as well as full-fashioned hosiery. Rejecting this argument the court said (at page 563):

"We are of opinion that this course of action on Gastrich\'s part constituted a complete disclaimer that the invention applies to seamless hosiery. When claims are rejected and withdrawn while an invention is pending in the Patent Office the patentee is estopped to contend that the allowed claim should be given the same breadth and interpretation as the abandoned claims. Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 218, 312 U.S. 654, 61 S.Ct. 235, 85 L.Ed. 132; Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136, 62 S.Ct. 513, 86 L.Ed. 736. It is true that claims 1 and 4 of the original patent which was restored to the inventor are not restricted to full-fashioned hosiery. They must, however, be construed in connection with the specification which relates expressly to hosiery of this sort; and any doubt as to whether this limitation should be read into the claims is removed by the assertions of the inventor in his application for reissue. We are of opinion that the defense of non-infringement is made out."

It will thus be seen that in Baker-Cammack, file wrapper estoppel was based on what happened prior to the issuance of the patent. The court made reference to the assertions in the application for reissue only to remove any doubt as to what the inventor was originally claiming in claims 1 and 4, where there was no specific reference to full-fashioned hosiery. We do not regard that case as supporting the proposition that the circumstances surrounding the instant reissue application, considered alone, give rise to file wrapper estoppel or any other kind of estoppel or res judicata.

Smith v. Florence-Mayo Nuway Co., 4 Cir., 182 F.2d 507, cited by Haas on this appeal, seems to us to be much like Baker-Cammack. In Smith...