Sanitary Refrigerator Co v. Winters Winters v. Dent Hardware Co 19 22, 1929, Nos. 4

CourtUnited States Supreme Court
Writing for the CourtSANFORD
PartiesSANITARY REFRIGERATOR CO., Petitioner, v. WINTERS et al. WINTERS et al. v. DENT HARDWARE CO. Argued April 19-22, 1929
Docket Number14,Nos. 4
Decision Date14 October 1929

280 U.S. 30
50 S.Ct. 9
74 L.Ed. 147
SANITARY REFRIGERATOR CO., Petitioner,

v.

WINTERS et al. WINTERS et al. v. DENT HARDWARE CO.

Nos. 4, 14.
Argued April 19-22, 1929.
Decided October 14, 1929.

[Syllabus from pages 30-32 intentionally omitted]

Page 32

Mr. E. Hayward Fairbanks, of Philadelphia, Pa., for Dent Hardware Co. and Sanitary Refrigerator Co.

Messrs. John Boyle, Jr., of Washington, D. C., and Frank E. Liverance Jr., of Grand Rapids, Mich., for Winters et al.

Mr. Justice SANFORD delivered the opinion of the Court.

These are two suits in equity relating to letters patent No. 1,385,102 for improvements in latches, issued to Winters and Crampton July 19, 1921. They were heard together here. The invalidity of the two general claims of the patent, 5 and 6, has been conceded, and the issues here are limited to the five specific claims, 1, 2, 3, 4 and 7.

In No. 4-hereinafter referred to as the Sanitary case-Winters and Crampton brought suit in the Eastern District of Wisconsin against the Sanitary Refrigerator Co. for infringement of the patent by the latch which it used in the manufacture of refrigerators. The Dent Hardware Co., which had manufactured and sold the latches to the Refrigerator Co., although not itself a party to the suit, employed counsel and conducted the defense of the suit at its own expense. The District Court, after a

Page 33

hearing on pleadings and proof, held that the patent was valid and infringed, enjoined further infringement and ordered an accounting. On appeal to the Circuit Court of Appeals for the Seventh Circuit, the defendant admitted the validity of the five specific claims, 'accompanied by the statement that validity was recognized only in view of an asserted construction which gave to each claim so narrow a field that infringement was not disclosed.' The court, finding that the sole issue remaining was one of the infringement of these claims, held that, while they were extremely narrow and were restricted to the particular structure disclosed, they had some range of equivalency and were infringed by the defendant's latch; and affirmed the decree of the District Court in respect to them. 24 F.(2d) 15, 16.

In No. 14-hereinafter referred to as the Dent case-Winters and Crampton, after the decree of the District Court in the Sanitary case but before that of the Circuit Court of Appeals, brought a suit for infringement in the Eastern District of Pennsylvania against the Dent Hardware Co., the manufacturer of the refrigerator latches. The District Court, on final hearing, held that as to the five specific claims the question was not as to their validity but as to their scope, there being in effect no denial of the plaintiff's right to the specific construction described, and that these claims should be so read as to restrict their right to the specific construction and was not infringed by the defendant's latches; and dismissed the bill of complaint. On appeal to the Circuit Court of Appeals for the Third Circuit, the defendant again conceded that the five claims were 'valid if limited to the specific structure disclosed,' but claimed that when so limited, it did not infringe. The court, while it had grave doubt as to the validity of these claims, finding that, if valid, their scope was clearly confined to the structural design dis-

Page 34

closed and had only a narrow range of equivalency-and not agreeing with the opinion of the Circuit Court of Appeals in the Sanitary case, which meanwhile had been handed down-held that they were not infringed by the Dent latch; and affirmed 'the decree of the District Court, dismissing the bill because of noninfringement.' 28 F.(2d) 583, 586.

There being a conflict of opinion between the two Circuit Courts of Appeals on the question of infringement, writs of certiorari were thereafter granted in both cases.1

1. Since both courts in the Sanitary case held the five specific claims to be valid, and neither court in the Dent case held them to be invalid, and the Hardware Co. in defending for the Refrigerator Co. in the Sanitary case and for itself in the Dent case, admitted in both Circuit Courts of Appeals that these claims were valid if limited to the specific structure disclosed, we have no occasion here to determine the question as to the validity of these claims when thus limited; especially as the petition for certiorari in the Sanitary case did not question the decree of the Circuit Court of Appeals for the Seventh Circuit in respect to the validity of these claims, but assigned as error merely its holding in reference to the question of infringement and was based solely on the conflict between the two circuits in respect to that question. 2

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2. Nor have we occasion here to consider at length whether, as urged by Winters and Crampton, the decree of the Circuit Court of Appeals for the Seventh Circuit affirming the interlocutory order of the District Court adjudging the infringement and ordering an accounting, finally and conclusively determined the question of infringement so as to become binding upon the Circuit Court of Appeals for the Third Circuit. The bill in the Dent case was filed before the judgment of the Circuit Court of Appeals for the Seventh Circuit had been rendered. This judgment was not set up by Winters and Crampton in the Dent case by any amendment to the pleadings; nor was it even introduced in evidence in that case. In short, there is nothing in the record in that case to raise the the defense of res judicata or estoppel by judgment; and the only effect of the decree in the Seventh Circuit when called to the attention of the Circuit Court of Appeals for the Third Circuit in argument was, at most, that which it had under the doctrine of comity, constituting a rule, not of law, but of practice, convenience and expediency; and if we thought the action of the Circuit Court of Appeals for the Third Circuit 'correct upon the merits, we should not reverse its action' though we were of opinion it had not given sufficient weight to that doctrine. See Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485, 488, 20 S. Ct. 708, 44 L. Ed. 856.

3. This brings us to the question brought up for review by the writs of certiorari, as to whether the five specific claims of the Winters and Crampton patent were infringed by the refrigerator latches manufactured by the Dent Hardware Co. and used by the Refrigerator Co.

So far as this question is concerned there is no substantial difference in the evidence in the two cases. As there was a concurrent finding in the two lower courts in the Sanitary case that they were infringed, and a concurrent finding in the two lower courts in the Dent case that they

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were not infringed, and the cases have been brought here because of the conflict of decision in the two...

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365 practice notes
  • Eastman Kodak Co. v. Agfa-Gevaert N.V., No. 02-CV-6564T.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court of Western District of New York
    • April 22, 2008
    ...substantially the same function in substantially the same way to obtain the same result.'") (quoting Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 74 L.Ed. 147 (1929)). The function, way, result inquiry focuses on "an examination of the claim and the explanation of it f......
  • Pennwalt Corp. v. Durand-Wayland, Inc., DURAND-WAYLAN
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • November 6, 1987
    ...of adapting it to the machine to which it is an improvement, avoid the charge of infringement"). In Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 13, 74 L.Ed. 147 (1929), the Court restated the oft-quoted [G]enerally speaking, one device is an infringement of another "i......
  • Blohm & Voss AG v. Prudential-Grace Lines, Inc., Civ. A. No. 17959.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • June 20, 1972
    ...the same 346 F. Supp. 1145 function in substantially the same way to obtain the same result." Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 13, 74 L.Ed. 147 (1929). The Court ". . . Authorities concur that the substantial equivalent of a thing, in the sense of the paten......
  • Duplan Corporation v. Deering Milliken, Inc., Civ. A. No. 71-306
    • United States
    • United States District Courts. 4th Circuit. United States District Court of South Carolina
    • November 14, 1973
    ...result. Union Paper Bag Machine Co. v. Murphy, 97 U.S. (7 Otto) 120, 125, 24 L.Ed. 935, 936 (1878); Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 74 L.Ed. 147, 156 (1929). In Graver Tank Co., supra, 339 U.S., at 608, 70 S.Ct., at 857, 94 L.Ed., at 1102, the leading case......
  • Request a trial to view additional results
365 cases
  • Eastman Kodak Co. v. Agfa-Gevaert N.V., No. 02-CV-6564T.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court of Western District of New York
    • April 22, 2008
    ...substantially the same function in substantially the same way to obtain the same result.'") (quoting Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 74 L.Ed. 147 (1929)). The function, way, result inquiry focuses on "an examination of the claim and the explanation of it f......
  • Pennwalt Corp. v. Durand-Wayland, Inc., DURAND-WAYLAN
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • November 6, 1987
    ...of adapting it to the machine to which it is an improvement, avoid the charge of infringement"). In Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 13, 74 L.Ed. 147 (1929), the Court restated the oft-quoted [G]enerally speaking, one device is an infringement of another "i......
  • Blohm & Voss AG v. Prudential-Grace Lines, Inc., Civ. A. No. 17959.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • June 20, 1972
    ...the same 346 F. Supp. 1145 function in substantially the same way to obtain the same result." Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 13, 74 L.Ed. 147 (1929). The Court ". . . Authorities concur that the substantial equivalent of a thing, in the sense of the paten......
  • Duplan Corporation v. Deering Milliken, Inc., Civ. A. No. 71-306
    • United States
    • United States District Courts. 4th Circuit. United States District Court of South Carolina
    • November 14, 1973
    ...result. Union Paper Bag Machine Co. v. Murphy, 97 U.S. (7 Otto) 120, 125, 24 L.Ed. 935, 936 (1878); Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 74 L.Ed. 147, 156 (1929). In Graver Tank Co., supra, 339 U.S., at 608, 70 S.Ct., at 857, 94 L.Ed., at 1102, the leading case......
  • Request a trial to view additional results

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