Webster Electric Co v. Splitdorf Electrical Co

• Decision Date: 07 April 1924
• Docket Number: No. 93,93
• Citation: 264 U.S. 463,44 S.Ct. 342,68 L.Ed. 792
• Parties: WEBSTER ELECTRIC CO. v. SPLITDORF ELECTRICAL CO
• Court: U.S. Supreme Court

264 U.S. 463

44 S.Ct. 342

68 L.Ed. 792

WEBSTER ELECTRIC CO.

v SPLITDORF ELECTRICAL CO.

No. 93.

Argued March 7, 1924.

Decided April 7, 1924.

Messrs. Albert G. McCaleb and Lynn A. Williams, both of Chicago, Ill., and Herbert B. Moses, of Washington, D. C., for petitioner.

Mr. Charles L. Sturtevant, of Washington, D. C., for respondent.

Mr. Edwin J. Prindle, of New York City, amicus curiae.

Mr. Justice SUTHERLAND delivered the opinion of the Court.

This writ brings up for review the decree of the court below in a patent suit (Splitdorf Electrical Co. v. Webster Electric Co., 283 Fed. 83), reversing a decree of the federal District Court for the Northern District of Illinois (Webster Electric Co. v. Podlesak, 255 Fed. 907), and directing a dismissal of the bill. Three patents were involved. The decision in respect of two of them turned upon the question whether a license contract between the patentees, Henry and Emil Podlesak, and petitioner, had the effect of precluding an assignment of patent rights made by the Podlesaks to respondent. But the petition upon which the writ was granted challenged the decision below only in respect of the third patent, and we are not called upon to consider the contentions now advanced as to the others. Alice State Bank v. Houston Pasture Co., 247 U. S. 240, 242, 38 Sup. Ct. 496, 62 L. Ed. 1096.

The bill alleges that the Splitdorf Electrical Company had infringed claims 7 and 8 of Kane patent, 1,280,105, issued September 24, 1918, for a rigid unitary and integral support for mounting the various parts of an electrical ignition device. The original application was filed by Kane February 2, 1910, on which patent No. 1,204,573 was granted November 14, 1916. On October 24, 1914, Kane endeavored to amend his application by introducing six claims copied from Milton's patent, issued May 12, 1914, for the purpose of securing an interference. The amendment was refused, and Kane was directed by the Examiner to file a divisional application, if he desired to contest an interference with Milton. This was done. The Webster Company, however, acquired the rights of both Milton and Kane, and through their attorneys conducted the proceedings for both sides in the Patent Office, resulting in an award of priority in favor of Kane.

Subsequently in 1915 Kane filed a divisional application, presenting nine additional claims, copied from Podlesak's patent No. 1,055,076, issued March 4, 1913, and reissue patent No. 13,878, dated February 9, 1915, all of which claims were ultimately decided in favor of the Podlesaks. Thereafter, on June 17, 1918, an amendment was filed embracing the new and broader claims here in question, which were allowed upon an exparte showing and as already stated, patent issued September 24, 1918, to the petitioner, to whom all rights had been assigned. The original bill was filed in 1915, and claims 7 and 8 were brought into the suit by a supplemental bill filed October 25, 1918.

It will thus be seen that claims 7 and 8 were for the first time presented to the Patent Office, by an amendment to a divisional application eight years and four months after the filing of the original application, five years after the date of the original Podlesak patent, disclosing the subject-matter, and three years after the commencement of the present suit. A comparison of these claims, as set forth in the patent, with the claims in the original application, to say the least, leaves in doubt the question whether they were not so materially enlarged as to preclude their allowance on the original application. Railway Co. v. Sayles, 97 U. S. 554, 563, 24 L. Ed. 1053; Hobbs v. Beach, 180 U. S. 383, 396, 21 Sup. Ct. 409, 45 L. Ed. 586; Dunham v. Dennison Manufacturing Co., 154 U. S. 103, 110, 14 Sup. Ct. 986, 38 L. Ed. 924; Michigan Cent. R. Co. v. Consolidated Car-Heating Co., 67 Fed. 121, 126, 14 C. C. A. 232. But this aside, the evidence establishes to our satisfaction that Kane did not originally intend to assert these amended claims, because he considered their subject-matter one merely of design and not of invention, and the inference is fully warranted that the intention to do so was not entertained prior to 1918. During all of this time their subject-matter was disclosed and in general use, and Kane and his assignee, so far as claims 7 and 8 are concerned, simply stood by and awaited developments. We are not here dealing, therefore, with the simple case of a division of a single application for several independent inventions (Patent Office rules 41 and 42; Bennett v. Fowler, 8 Wall. 445, 448, 19 L. Ed. 431; American Laundry Machinery Co. v. Prosperity Company, Inc. [D. C.] 294 Fed. 144), but with a case of unreasonable delay and neglect on the part of the applicant and his assignee in bringing forward claims broader than those originally sought. The repeated assertion of interferences in narrower terms, resulting in delays incident to their determination, affords no just excuse for the failure to assert the broader claims, 7 and 8, at an earlier date. The subject-matter of these claims is not of such complicated character that it might not have been readily described in the original application or in one of the subsequent applications—in 1915, for example—as it was described in 1918, and the long delay of Kane and his assignee in coming to the point tends strongly to confirm the view that the final determination to do so was an exigent afterthought, rather than a logical development of the original application. We have no hesitation in saying that the delay was unreasonable, and, under the circumstances shown by the record, constitutes laches, by which the petitioner lost whatever rights it might otherwise have been entitled to.

We do not overlook the importance of not applying so narrowly the patent law as to discourage the inventor from exercising his creative genius, or the manufacturer or capitalist from assisting in the necessary work of bringing the invention into beneficial use; but it is no less important that the law shall not be so loosely construed and enforced as to subvert its limitations, and bring about an undue extension of the patent monopoly against private and public rights. In suits to enforce reissue patents, the settled rule of this court is that a delay for two years or more will 'invalidate the reissue, unless the delay is accounted for and excused by special circumstances, which show it to have been not unreasonable.' Wollensak v. Reiher, 115 U. S. 96, 101, 5 Sup. Ct. 1137, 1140 (29 L. Ed. 350). In that case it appeared that the reissue patent was issued to complainant December 26, 1882, upon the surrender of the original patent of March 10, 1874. The Patent Office decided that because of special circumstances the applicant was not guilty of laches; but this court held otherwise. The claims alleged to have been infringed were expansions of the original claims as embraced within the invention set forth in the original patent. This court (pages 99, 100 ) said:

'It follows from this that if, at the date of the issue of the original patent, the patentee had been conscious of the nature and extent of his invention, an inspection of the patent, when issued, and an examination of its terms, made with that reasonable degree of care which is habitual to and expected of men, in the management of their own interests, in the ordinary affairs of life, would have immediately informed him that the patent had failed fully to cover the area of his invention. And this must be deemed to be notice to him of the fact, for the law imputes knowledge when opportunity and interest, combined with reasonable care, would necessarily impart it.

'Not to improve such opportunity, under the stimulus of self-interest, with reasonable diligence, constitutes laches which in equity disables the party, who seeks to revive a right which he has allowed to lie unclaimed, from enforcing it to the detriment of those who have, in consequence, been led to act as though it were abandoned.

'This general doctrine of equity was applied with great...