Symington Co v. National Malleable Castings Co Miner v. Symington Co
| Decision Date | 09 June 1919 |
| Docket Number | 24,Nos. 31,s. 31 |
| Citation | 250 U.S. 383,63 L.Ed. 1045,39 S.Ct. 542 |
| Parties | T. H. SYMINGTON CO. v. NATIONAL MALLEABLE CASTINGS CO. et al. MINER v. T. H. SYMINGTON CO |
| Court | U.S. Supreme Court |
Messrs. George I. Haight and Charles C. Linthicum, both of Chicago, Ill., for Miner.
Mr. Charles Neave, of Boston, Mass., for National Castings Co.
Messrs. Melville Church, Gilbert P. Ritter, and Ernest F. Mechlin, all of Washington, D. C., for T. H. Symington Co.
These cases are so related that they may be disposed of together. Each is a suit to enjoin the infringement of a patent. One was begun in the district of Maine and is based on letters patent granted May 7, 1901, to Jacob J. Byers on an application filed April 21, 1900. The other was begun in the Northern District of Illinois and is based on letters patent granted February 18, 1902, to William H. Emerick on an application filed May 24, 1901. Both patents cover an improvement in draft rigging for railroad cars. In each suit it became necessary to compare the patents, determine whether the invention of one was anticipated by the other, and ascertain which of the patentees was the original and first inventor. Ultimately the suits reached the Circuit Courts of Appeal for the circuits in which they were brought. In the Maine suit the court held that Byers was the prior inventor and that claims 3, 5, and 6 of the patent to him were valid and infringed. National Malleable Castings Co. v. T. H. Symington, 230 Fed. 821, 145 C. C. A. 131; 234 Fed. 343, 148 C. C. A. 245. In the Illinois suit the court held that Emerick was the prior inventor and that claims 1, 2, 3, and 4 of the patent to him were valid and infringed. 229 Fed. 730, 144 C. C. A. 140. These conflicting decisions led to the allowance of the present writs of certiorari.
While the discussion at the bar and in the briefs has taken a wide range, only two points need be considered.
One of the elements called for by the claims in the Byers patent which were sustained is a 'pocket' or housing, which is to hold other parts in place. The corresponding element of the Emerick patent is described as 'counterpart castings' and is in two parts. Whether the Byers pocket was to be integral or might be in two or more parts is a matter about which the two courts differed. In the Maine suit it was held that the claims were not limited to an integral pocket, but in the Illinois suit the ruling was the other way. The former view, as it seems to us, is the right one. There is nothing in Byers' claims which were sustained indicating that the pocket is to be integral, while there is a distinct call for such a pocket in claim 9. The difference in terms points persuasively to a difference in purpose, and the specification does even more, for it says 'the pocket may be case in a single piece.' This is the common form of designating an admissible alternative in such instruments. Of course, the other alternative is...
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