Triplett v. Lowell Mantle Lamp Co of America v. Aluminum Products Co, s. 388

Citation80 L.Ed. 949,56 S.Ct. 645,297 U.S. 638
Decision Date30 March 1936
Docket Number590,Nos. 388,s. 388
CourtUnited States Supreme Court

Mr. Samuel E. Darby, Jr., of New York City, for petitioners Triplett and others.

Mr. Clifton V. Edwards, of New York City, for respondents Lowell and others.

Mr. George I. Haight, of Chicago, Ill., for Mantle Lamp Co.

Mr. Wm. Nevarre Cromwell, of Chicago, Ill., for Aluminum Products Co.

Mr. Justice STONE, deli ered the opinion of the Court.

In No. 388 certiorari was granted, 296 U.S. 570, 56 S.Ct. 306, 80 L.Ed. 402, to resolve questions as to the scope and effect of the disclaimer statute, Rev.St. §§ 4917, 4922, 35 U.S.C. §§ 65, 71 (35 U.S.C.A. §§ 65, 71) raised in a suit brought to enjoin infringement of several patent claims, some of which had previously been held invalid in an infringement suit in another circuit against different defendants.

In No. 590 like questions have been argued upon certificate to this Court, under section 239 of the Judicial Code (28 U.S.C.A. § 346) of the Court of Appeals for the Seventh Circuit.

No. 388.

Respondents in No. 388, before bringing the present suit, had sued in a District Court in the Third Circuit to restrain infringement of claim 9 of patent No. 1635117, July 5, 1927, to Dunmore, for a signal receiving system, and of claims 3 and 14 of patent No. 1455141, May 15, 1923, to Lowell and Dunmore, for a radio receiving apparatus. Each claim was held invalid by the Court of Appeals for the Third Circuit, Radio Corporation v. Du-

bilier Condenser Corporation, 59 F.(2d) 305, 309, and petitions to this Court for certiorari were denied, 287 U.S. 648, 650, 53 S.Ct. 96, 77 L.Ed. 560. More than eight months after the denial of certiorari respondents filed, in the Patent Office, purported disclaimers of each of the claims thus held invalid, and more than a month later began the present suit in the District Court for Maryland to restrain infringement of the same claims and other claims of the same patents not previously adjudicated. A motion to dismiss the suits as to both patents for unreasonable delay in filing disclaimers of the claims previously held invalid, and because the disclaimers were inadequate, was granted by the District Court upon the latter ground.

The Court of Appeals for the Fourth Circuit reversed and ordered a new trial, 77 F.(2d) 556, holding that respondents were not barred from maintaining the second suit, against different defendants, for infringement of the claims previously held invalid, and that the disclaimer of those claims was not prerequisite to maintenance of the suit upon the claims not previously adjudicated. It intimated that the second suit could not be maintained unless brought without unreasonable delay, but it concluded that it could not say that there had been unreasonable delay in the present case.

Whether the respondents' disclaimers are merely an attempted formal alteration of the claims so as to conform them more precisely to the specifications without changing their substance or conceding their invalidity, see Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 435, 22 S.Ct. 698, 46 L.Ed. 968, or whether they are in effect such alterations of the substance of the claims as to bring them within the requirements and limitations of the reissue statute, Rev.St. § 4916, as amended May 24, 1928, 35 U.S.C. § 64 (35 U.S.C.A. § 64) so as to render both the old and the new claims invalid, see Altoona Public Theatres, Inc., v. American Tri-Ergon Corporation, 294 U.S. 477, 490—492, 55 S.Ct. 455, 79 L.Ed. 1005,

are questions which have been much argued here and below. In reaching its decision, the Court of Appeals assumed, as we shall assume without deciding, that the disclaimers were inadequate because they failed to concede invalidity of the adjudicated claims. It concluded that if the same decision were reached, as to the validity of the claims previously adjudicated, as in the Third Circuit, the respondents' suit must fail both as to them and as to all the other claims, 'even though some of them may be good; for it would then be established that the owner of the patent had failed to file disclaimers within a reasonable time after notice of the invalidity of some of the claims had been brought home to him.' 77 F.(2d) 556, 561.

Revised Statutes, § 4917 (35 U.S.C.A. § 65) provides that 'Whenever, through inadvertence, accident, or mistake, * * * a patentee has claimed more tha that of which he was the original or first inventor, * * * his patent shall be valid for all that part which is truly and justly his own,' and authorizes him to file in the Patent Office a written disclaimer of 'such parts of the thing patented as he shall not choose to claim.' Revised Statutes, § 4922 (35 U.S.C.A. § 71) authorizes a patentee who has claimed more than that of which he was the inventor, to maintain a suit for the infringement of 'any part' of the patent 'which was bona fide his own, if it is a material and substantial part of the thing patented, and definitely distinguishable from the parts claimed without right, notwithstanding the specifications may embrace more than that of which the patentee was the first inventor or discoverer,' but with the proviso that 'no patentee shall be entitled to the benefits of this section if he has unreasonably neglected or delayed to enter a disclaimer.'

Petitioners contend that if any claim of a patent is adjudged invalid no further suit can be maintained upon it, or upon other claims of the patent without disclaimer

of the claims previously held invalid. This contention is predicated upon the rule that, save for the disclaimer statute, adjudication of invalidity of any claim of a patent renders the entire patent void, and upon the assumption that by force of the statute, if not without it, an adverse decision on any claim is final and conclusive as to its invalidity, in any court, except as modified upon an appellate review. If this view be accepted, it follows that the right to maintain suit for infringement of the separable claims of a patent which already have been held valid, or have not been adjudicated, may alone be saved by disclaimer of all claims held invalid, within a reasonable time after their adjudication; the patentee may not contest again the validity of the claims held invalid, and only by abandoning them by timely disclaimer may he litigate other claims.

Neither reason nor authority supports the contention that an adjudication adverse to any or all the claims of a patent precludes another suit upon the same claims against a different defendant. While the earlier decision may by comity be given great weight in a later litigation and thus persuade the court to render a like decree, it is not res adjudicate and may not be pleaded as a defense. See Mast, Foos & Co. v. Stover Mfg. Co., 177 U.S. 485, 20 S.Ct. 708, 44 L.Ed. 856; Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 35, 50 S.Ct. 9, 74 L.Ed. 147. The disclaimer statute was enacted to mitigate the harsh rule1 that the entire patent was destroyed if any claim

were held invalid. See Altoona Public Theatres, Inc., v. American Tri-Ergon Corporation, supra, 294 U.S. 477, 490, 55 S.Ct. 455, 79 L.Ed. 1005; Ensten v. Simon, Ascher & Co., 282 U.S. 445, 452, 51 S.Ct. 207, 75 L.Ed. 453; Hailes v. Albany Stove Co., 123 U.S. 582, 589, 8 S.Ct. 262, 31 L.Ed. 284; Moody v. Fiske (C.C.) Fed.Cas. No. 9,745, 2 Mason, 112, 118. The statute permits the patentee to abandon by disclaimer parts of the patent which he does not choose to claim, and if the disclaimer is timely and adequate it authorizes him to maintain suit for infringement of the separable parts which he does choose to claim. But neither in terms nor by implication does it deny to a patentee the right to bring a second suit for the infringement of a claim already held to be invalid. If such were its construction, it would deny to a patentee the right to relitigate claims held invalid when others are held valid or are not in issue, but would leave that right unaffected when the entire patent is held invalid, since in that case there would be nothing to disclaim. See Winans v. New York & Erie R. Co., 21 How. 88, 103, 16 L.Ed. 68. Only a plain legislative command would justify a construction leading to such incongruous results.

While the contention now made is apparently for the first time seriously argued here, this Court has several times held valid the claims of a patent which had been held invalid by a Circuit Court of Appeals in an earlier suit brought by the same plaintiff against another defendant. Expanded Metal Co. v. Bradford, 214 U.S. 366, 29 S.Ct. 652, 53 L.Ed. 1034; Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U.S. 428, 31 S.Ct. 444, 55 L.Ed. 527; Abercrombie & Fitch Co. v. Baldwin,

245 U.S. 198, 38 S.Ct. 104, 62 L.Ed. 240. 2 Before the establishment of the Circuit Court of Appeals, an adverse decision as to the validity of a patent in one circuit appears not to have foreclosed litigation of the same issue in another, see Barbed Wire Patent, 143 U.S. 275, 12 S.Ct. 443, 450, 36 L.Ed. 154; compare United States v. American Bell Telephone Co., 128 U.S. 315, 372, 9 S.Ct. 90, 32 L.Ed. 450. That it does not now is implicitly recognized by the practice established under section 240(a) of the Judicial Code 28 U.S.C.A. § 347(a) and Rule 38(5) of this Court (28 U.S.C.A. following section 354), that certiorari will not usually be granted in patent cases unless there is a conflict in the decisions of Circuit Courts of Appeals. We conclude that neither the rules of the common law applicable to successive litigations concerning the same subject-matter, nor the disclaimer statute, precludes relitigation of the validity of a patent claim previously held invalid in a suit against a different defendant.

It follows that want of disclaimer of claims previously held invalid can never be set up as a bar in...

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