Special Equipment Co. v. Coe

• Decision Date: 19 June 1944
• Docket Number: No. 8466.,8466.
• Citation: 144 F.2d 497
• Parties: SPECIAL EQUIPMENT CO. v. COE, Commissioner of Patents.
• Court: U.S. Court of Appeals — District of Columbia Circuit

144 F.2d 497 (1944)

SPECIAL EQUIPMENT CO. v. COE, Commissioner of Patents.

No. 8466.

United States Court of Appeals District of Columbia.

Argued November 2, 1943.

Decided June 19, 1944.

Writ of Certiorari Granted November 6, 1944.

Mr. Curtis F. Prangley, of Chicago, Ill., with whom Messrs. James M. Graves and Ballard Moore, both of Washington, D. C., were on the brief, for appellant.

Mr. E. L. Reynolds, of Washington, D. C., with whom Mr. W. W. Cochran, Solicitor, United States Patent Office, of Washington, D. C., was on the brief, for appellee.

Before MILLER, EDGERTON, and ARNOLD, Associate Justices.

Writ of Certiorari Granted November 6, 1944. See 65 S.Ct. 120.

ARNOLD, Associate Justice.

The alleged invention in this case is a machine which automatically cuts, peels and cores pears for canning. It consists of (1) a revolving turret in which the tops of the pears are "bobbed" or cut off, (2) a mechanism which transfers them to a splitting knife which cuts them in half, and (3) a second revolving turret in which the halved pears are peeled and cored. The machine has been highly successful. It has made it possible to double the annual pear pack since 1931 and materially reduced the cost of canned pears. About eighty per cent of all pears canned are prepared by this machine. A patent has been allowed on the entire machine.

This appeal is taken from the rejection of claims for a subcombination of the parts of a machine omitting the cutting knife. For convenience we will refer to the machine without the cutting knife as the partial machine, and the machine with the cutting knife as the complete machine. The trial court rejected the claims in effect because they did not represent a true subcombination. It found that the cutting knife was an essential element to produce a useful result. It concluded, therefore, that the machine without the cutting knife was not the invention which was disclosed in the application, and that claims which left out the cutting knife did not actually describe the invention.

If it be true (1) that the subcombination does not produce a useful result, and (2) that only one invention is disclosed, to wit: the complete machine, the refusal of the subcombination claims here is justified. However, these propositions rest on a very slender foundation. In answering them the plaintiff showed motion pictures of the subcombination in actual operation without the cutting knife. It was clear that the result was far more useful than the old method of preparing fruit by hand. The only basis for the argument that the result was not useful rests on the fact that the work was done much better by the complete machine. In such twilight cases there is no real test whether or not the application discloses one invention or two distinct inventions. In this case it seems more plausible to say that the subcombination does produce a useful result and that two distinct inventions are disclosed in the application.

However, we need not decide this question because even if we take appellant's contention at its face value and assume that the claims for the subcombination present a distinct and useful invention, nevertheless we believe that a patent on that invention should be denied. The reason is that appellant's purpose in making a distinct patent claim on the subcombination is not to stimulate the commercial development or financial return from that patent. Instead, the record shows that it is to be used to exploit and protect the patent monopoly of another related invention, to wit: the complete machine. There is no intention to make or license others to make the partial machine because, although it is possible to use it without the cutting knife, it is not designed for such independent use. It is only an artificial and clumsy substitute for the complete machine. It requires that the fruit first be cut in half and then the two halves joined together by hand before they are inserted. There is no rhyme or reason for manufacturing such a partial machine when there is available the complete machine which does the cutting mechanically.

The only real value of a patent on this subcombination is to protect the patent on the complete machine. How important that protection may be in this case we cannot ascertain. Theoretically if the complete machine is adequately described in the specifications the sub-patent is not needed at all. If someone develops a new machine that imitates appellant's machine too closely it will infringe the principal patent and the subcombination claim will be superfluous.

But the principle involved in approving patent claims whose only purpose is to protect other patent claims has far-reaching consequences.

It is a common technique, in what has become the organized business of getting patents, to surround a single invention with a number of patented claims on parts or aspects of that invention which the applicant has no intention of manufacturing or exploiting as distinct patents.¹ These are often called blocking or fencing patents. A good illustration of the idea we are trying to express is found in a memorandum of patent policy of a large concern investigated by the Temporary National Economic Committee, which reads as follows:

"In taking out patents we have three main purposes —

"(a) To cover the actual machines which we are putting out, and prevent duplication of them. * * *

"(b) To block the development of machines which might be constructed by others for the same purpose as our machines, using alternative means. * * *

"(c) To secure patents on possible improvements of competing machines, so as to `fence in' those and prevent their reaching an improved stage. * * *"²

Another example of the same policy is found in the testimony of Mr. Charles Kettering before the Temporary National Economic Committee, who explained the practice as follows:

"Sometimes there are half a dozen ways of doing a thing after you start to do it. When you put your money on that way, you take out these auxiliary patents as sort of protective things you didn't find yourself, and I think that is all right, too."³

These, of course, are only examples — which may or may not have influenced this particular appellant — to illustrate the dangers inherent in the granting of blocking and fencing patents. The record does not show that appellant here expects to use its fencing claim aggressively. It may well be that its purpose is protection against the aggressive use of similar patents by others. Yet if this be so it is only another illustration of the danger of allowing such claims as distinct inventions. Once that practice is established claims multiply in all directions. The fact that some use them for aggression compels others to demand them for protection. The result of granting blocking or fencing patents is to create a maze of patent restrictions whose effect is to confuse and impede business competitors and inventors and to entrench some one corporation in the position of domination over an industrial technique.

In the absence of controlling decisions on this subject it would seem apparent that to grant a patent for the purpose of blocking the development of machines which might be constructed by others is a violation of the constitutional provision that the patent law must promote science and the useful arts. Const. art. 1, § 8, cl. 8. The dangers of approving a principle which permits a patent monopoly to be extended by granting claims on distinct inventions, which the applicant has no intention of exploiting as distinct inventions, are apparent in the growth of modern monopolies based on patent control. Such patents are invalid for the same reason which condemns broad and misleading claims. That principle, as stated by Mr. Justice Bradley as early as 1872, is to protect the public from "ingenious attempts * * * to discourage further invention in the same department of industry * * *."⁴

The blocking or fencing patent is actually an ingenious device to broaden the scope of the invention beyond the article or process which is actually intended to be manufactured or licensed, and thus comes within the principle of the rule laid down by Mr. Justice Bradley.

At one time the reasoning of the Paper Bag case⁵ could be used to support the present attempt to obtain one patent claim for the purpose of protecting another. In that case the defendant argued that the equitable remedy of injunction against infringement should be denied because of the plaintiff's "unreasonable non-use" of the patent. Plaintiff did not manufacture and declined to license the patent in question, in order to protect his investment in another patented machine with which the suppressed patent competed. This use of the patent to aid in the exploitation of another patent was approved in the opinion. The only qualification was a suggestion that a different result might be reached had the evidence shown "a question of diminished supply or of increase in prices."

From this decision it might be argued that a patent should be granted even if it appeared that the applicant's purpose was not to manufacture but to protect another patent. If the use of the patent to suppress manufacture is proper, then the grant of a patent for that purpose may be equally proper. The fact that the Paper Bag case involved infringement is a distinction without a difference.

We do not follow the reasoning of the Paper Bag case because we believe that its principle, which is inconsistent with the constitutional provision that the patent law "promote science and the useful arts," has been overruled by subsequent decisions. Indeed, it was the growth of monopoly restrictions which followed it that blew up the Paper Bag case till it burst. The Paper Bag case was decided at a time when, according to the Button Fastener case,⁶ it was supposed to be lawful to enlarge the scope of the patent monopoly by means of a tying clause to enable the patentee to control the price of...