2. Certiorari, granted under the impression that the case
involved an important general question under Rev.Stats. § 4916 as
to rights intervening between the issue and reissue of a patent,
Page 264 U. S. 315
dismissed when it is found that the case was really disposed of
by the lower courts upon the ground of noninfringement.
Writ of certiorari to review 287 F. 838 dismissed.
Certiorari to a judgment of the circuit court of appeals
affirming a decree of the district court dismissing a bill to
enjoin infringement of a patent.
MR. CHIEF JUSTICE TAFT, delivered the opinion of the Court.
This was a suit to enjoin the infringement of a patent for an
improvement in auxiliary windshields for automobiles. It was
brought on a reissued patent. The reissue was granted on the ground
that the original patent was inoperative to protect the real
invention, due to defective and insufficient and too narrow claims,
all of which arose through inadvertence and mistake due to
misunderstanding between the inventor and his solicitor. The defect
in his claims was alleged to have been called to his attention
April 1, 1919, his application for reissue was filed May 22, 1919,
6 months and 10 days after the granting of the original patent, and
the patent for reissue was granted July 20, 1920.
A. F. Kipper, who was the active person among the defendants in
designing and promoting the manufacture of the windshield charged
to be an infringement, was familiar with the device, the
specifications, and claims of Keller. He conceived of his device in
December of 1918, made some models of it in February of 1919, and,
in association with one Dick Smith, got up some experimental dies
and tools for its manufacture and sale in April and May of that
year. Kipper was an employee of Adams-Campbell
Page 264 U. S. 316
Company, and that, firm in August of 1919, made a contract with
Kipper to go into the business of making and selling his
The suit for infringement was begun July 1, 1921. All the usual
defenses were set up, including lack of invention, the invalidity
of the reissue, and noninfringement. There was only one expert
witness produced by the plaintiff as to the originality and utility
of the invention and the infringement by the respondent's device.
His evidence was presented in an affidavit, but he was tendered for
cross-examination, which the defendants below declined to pursue.
No expert evidence was offered by defendants, though they
introduced a number of patents to show the state of the art.
The patent is for glass wings or auxiliaries secured in an
adjustable manner to the main windshield of an automobile. Their
principal object is thoroughly to prevent the creation of a draft
through the vehicle body, and they are so mounted that they will
not obstruct vision, and will have a universality of movement on a
double hinge such that they can be changed from their normal
position of preventing a draft in cold or windy weather to a
deflected position permitting varying degrees of draft desirable in
hot weather. To avoid the necessity of a frame around the glass,
and to hold it safely and firmly and avoid danger to occupants of
the car from breakage and flying pieces of glass, a hollow rod
extends lengthwise along the shield, and connects with, and spaces
apart, clamp brackets along each end of the shield. The rod is
attached at its middle to a double hinge joint, giving the shield
the universal movement already referred to and having means firmly
to lock it in any position. The real difference between the device
as shown in the patent and the alleged infringement is in the
method by which the glass is clamped. In the patent, the clamps
operate on both sides of the ends of the glass, engaging its
opposite surfaces. In the defendant's
Page 264 U. S. 317
device, these clamps are brought nearer to the center of the
shield member, because they are held by perforations in the glass,
and do not need to reach over to the ends.
The district court dismissed the bill, and the circuit court of
appeals affirmed this decree. We granted certiorari upon the
allegation of the petition, not denied by opposing counsel, that
the sole question was whether one who makes and sells articles not
covered by the claims of an original patent, but embraced by the
enlarged claims of a subsequent valid reissue, applied for within 7
months after the original was granted, has intervening rights such
that he is not only immune from liability for what he has made and
sold, but enjoys an irrevocable and permanent license to continue
to make and sell without restriction.
The extent of the operation of the estoppel creating intervening
rights in such a case presents a question not free from difficulty.
That a reissued patent enlarging claims of the original, although
not specifically mentioned in § 4916, Rev.Stats., is authorized by
that section when the failure to claim the larger claims justified
by the actual invention was due to inadvertence, accident, or
mistake is settled by the decision of this Court in Topliff v.
Topliff, 145 U. S. 156
other cases. That case also recognizes that one who, pending the
application and granting of the reissue, manufactures and sells
articles which infringe the reissued patent may be protected on
principles of estoppel from the literal application of § 4916
Rev.Stats., which makes the operation of the reissue relate to the
date of the original patent. In Abercrombie & Fitch Co. v.
Baldwin, 245 U. S. 198
change, in the reissue, of the language of an original claim made
it cover not only a bent pipe as shown, but a straight pipe as
well, where the substance of the invention included both, and it
was held that the intervening rights of immunity of the infringer
did not extend
Page 264 U. S. 318
beyond the date of the reissue. It is insisted, however, that
case was not one of an enlarged claim, or at any
rate that a reissue was unnecessary because the original claim
would have sufficed. The views of the circuit court of appeals on
the general subject of the scope of intervening rights are not
entirely easy to reconcile. Crown Cork & Seal Co. v.
Aluminum Stopper Company,
108 F. 845; General Electric Co.
v. Railway Company,
178 F. 84; A.D. Howe Mach. Co. v.
Coffield Motor Washer Co.,
197 F. 541; Autopiano Co. v.
American Player Action Company,
222 F. 276; American
Automotoneer Co. v. Porter,
232 F. 456. The question, if it
were really before us, would be one sufficiently important
therefore to justify our consideration of it on certiorari.
Both the district court and the circuit court of appeals, in
their final disposition of the case, gave color of support to the
claim of the petitioner that the question of intervening rights was
in this case.
The district judge, in dismissing the bill, said:
"Without further discussion, I think the defendants occupy the
position of one who has intervening rights, and under those
circumstances, I think the plaintiffs are not entitled to a reissue
of the patent as against the defendants."
So the circuit court of appeals, after reciting the evidence
showing that the defendants had made the shields in question and
built the machinery for future manufacture before the patentee
applied for reissue, and after being advised by counsel that they
would not infringe the original patent, said: "We therefore think
it clear that the appellees had and have such intervening rights as
were properly protected by the court below."
Yet an analysis of the record and the reasons given in the body
of the opinions of the two courts leads to a different conclusion.
The district court said of the alleged infringing device:
Page 264 U. S. 319
"The defendants' bracket is an invention. It is a surprise to me
that that which the defendants did could be done. The bracket will
fit any glass. It is shorter, and does not obstruct the view. . . .
The defendants' bracket is not an equivalent of the bracket in
plaintiffs' original patent, because it does not perform the same
functions in the same way, but it performs the function of holding
the glass in an entirely different way."
So the circuit court of appeals said:
"That there is nothing of a pioneer nature in Keller's device is
abundantly shown by the numerous exhibits appearing in the record
of windshields and deflectors, of one kind or another, attached to
automobiles long before Keller entered the field. Both his drawings
and specifications show that his shield is attached to the machine
by brackets that run up and down the glass, holding it at the top
and bottom, whereas the appellee's device holds the glass by means
of a fixture attached to the face of the glass, and which does not
extend to either of its ends."
"That, for one device to be the equivalent of another it is
essential that the former must perform the same function of the
latter in substantially the same way, is thoroughly settled
These passages, read in connection with the original and
reissued patents and the alleged infringement, show that what the
courts really held was that the defendants were manufacturing a
different invention from that of the plaintiffs, and so could not
and did not infringe. Such an ordinary patent case, with the usual
issues of invention, breadth of claims, and noninfringement, this
Court will not bring here by certiorari unless it be necessary to
reconcile decisions of Circuit Courts of Appeal on the same patent.
We therefore find ourselves mistaken in assuming that an important
issue of general patent law, under § 4916, Rev.Stats., is here
Page 264 U. S. 320
The result is that an order must be entered dismissing the writ
of certiorari as improvidently granted at the costs of the
petitioner. Layne & Bowler Corp. v. Western Well Works,
Inc., 261 U. S. 387
Furness, Withy & Co. v. Yang-Tsze Insurance
Association, 242 U. S. 430
United States v. Rimer, 220 U. S. 547