1. Upon a review by certiorari, the Court is not called upon to
consider questions not raised by the petition for the writ. P.
264 U. S.
464.
2. Clams 7 and 8 of Patent No. 1,280, 105, issued to Kane,
September 24, 1918, for a rigid unitary and integral support for
mounting parts of an electrical ignition device,
held void
because of laches in presenting them to the Patent Office. P.
465.
3. The rule that a reissue patent expanding the patentee's
original claims will be invalidated by a delay of two years in
applying for it unless special circumstance be proven justifying a
longer delay is applicable also to patents issued on divisional
applications.
Chapman v. Wintroath, 252 U.
S. 126, explained. P.
264 U. S.
469.
283 F. 83 affirmed.
Certiorari to a decree of the circuit court of appeals, in a
patent infringement suit, reversing the district court and
directing dismissal of the bill.
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., 283 F. 83, reversing a decree of the Federal
District Court for the Northern District
Page 264 U. S. 464
of Illinois, 255 F. 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,
247 U. S.
242.
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
ex parte showing,
and,
Page 264 U. S. 465
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,
97 U. S. 563;
Hobbs v. Beach, 180 U. S. 383,
180 U. S. 396;
Dunham v. Dennison Manufacturing Co., 154 U.
S. 103,
154 U. S. 110;
Michigan Cent. R. Co. v. Consolidated Car-Heating Co., 67
F. 121, 126. 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,
75 U. S. 448;
American Laundry Machinery Co. v. Prosperity Company,
Inc., 294 F. 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
Page 264 U. S. 466
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,
115 U. S. 101.
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
Page 264 U. S. 467
to have been infringed were expansions of the original claims as
embraced within the invention set forth in the original patent.
This Court (pp.
115 U. S.
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
distinctness to the correction of alleged mistakes in patents by
reissues in the case of
Miller v. Brass Company,
104 U. S.
350. It was there declared that, where the mistake
suggested was merely that the claim was not as broad as it might
have been, it was apparent upon the first inspection of the patent,
and, if any correction was desired, it should have been applied for
immediately; that the granting of a reissued for such a purpose,
after an unreasonable delay, is clearly an abuse of the power to
grant reissues, and may justly be declared illegal and void; that,
in reference to reissues made for the purpose of enlarging the
scope of the patent, the rule of laches should be strictly applied,
and no one should be relieved who has
Page 264 U. S. 468
slept upon his rights, and has thus led the public to rely on
the implied disclaimer involved in the terms of the original
patent, and that, when this is a matter apparent on the face of the
instrument, upon a mere comparison of the original patent with the
reissue, it is competent for the courts to decide whether the delay
was unreasonable and whether the reissue was therefore contrary to
law and void."
"This doctrine has been reiterated in many cases since, and at
the present term has been reconsidered and emphatically repeated as
the settled law in the case of
Mahn v. Harwood,
112 U. S.
354, where it is said, by Mr. Justice Bradley,
delivering the opinion of the Court:"
"We repeat, then, if a patentee has not claimed as much as he is
entitled to claim, he is bound to discover the defect in a
reasonable time, or he loses all right to a reissue, and if the
Commissioner of Patents, after the lapse of such reasonable time,
undertakes to grant a reissue for the purpose of correcting the
supposed mistake, he exceeds his power, and acts under a mistaken
view of the law, and the court, seeing this, has a right, and it is
its duty, to declare the reissue
pro tanto void, in any
suit founded upon it."
"It was also there said that, while no invariable rule can be
laid down as to what it reasonable time within which the patentee
should seek for the correction of a claim which he considers too
narrow, a delay of two years, by analogy to the law of public use
before an application for a patent, should be construed equally
favorable to the public, and that excuse for any longer delay than
that should be made manifest by the special circumstances of the
case."
In
Ives v. Sargent, 119 U. S. 652,
119 U. S. 661,
the duty of the patentee to examine his letters patent within a
reasonable time to ascertain whether the latter fully covered his
invention was reiterated. And where this was neglected for a period
of three years, when, finding the real invention
Page 264 U. S. 469
had been infringed, but without infringing the patent as
originally granted, an application for a reissue was made and
allowed, it was held that the patentee was guilty of laches and the
reissue came too late. The doctrine of
Wollensak v. Reiher
was restated (p.
119 U. S. 662)
to the effect that, while no invariable rule can be laid down, a
delay of two years, by analogy to the law of public use before an
application for a patent, will be fatal unless excuse for a longer
delay shall be made manifest by the special circumstances of the
case.
See also Topliff v. Topliff, 145 U.
S. 156;
Wollensak v. Sargent, 151 U.
S. 221.
While the analogy between the case of a reissue patent and that
of copying for interference is not always an exact one, it is
sufficiently so, as applied to the present case, to make these
decisions pertinent, and the principle which they announce is
controlling. We brought this case here by certiorari because of the
claim that the decision of the court of appeals rested primarily on
Chapman v. Wintroath, 252 U. S. 126, and
the contention was that the opinion there had been misunderstood
and misapplied.
* The question as
thus presented was important, and one which it was thought should
be authoritatively determined. The court below finally put its
decision substantially on the ground which we have stated as the
basis of our conclusion, but, before doing so, it said (283 F.
93):
"Appellants contend, however, and we agree with the courts that
have passed upon the question, that the effect of the holding [in
the
Wintroath case] is to fix the period during which such
application must be filed at two years from the date of the
issuance of the other patent. No other deduction can fairly or
logically be drawn from the discussion of the question in that
opinion."
But
Chapman v. Wintroath is not to be so narrowly
construed.
Page 264 U. S. 470
The facts of the case were: the Chapmans filed their application
in 1909. The invention was a complicated one, and the application
met with much difficulty in the Patent Office, and, though
regularly prosecuted, no patent had been issued in 1915 when the
controversy arose. Wintroath filed an application in 1912. His
invention was also elaborate and intricate. Twenty months after
this latter application, the Chapmans filed a divisional
application in which the claims of the Wintroath patent were copied
and an interference was declared. The Examiner, without hearing
evidence, entered judgment in favor of Wintroath on the ground that
the failure of the Chapmans to present the interference issue for
more than a year after the date of the Wintroath patent constituted
laches, and that they were estopped. This decision was reversed by
the Commissioner of Patents, and his decision, in turn, was
reversed by the Court of Appeals of the District of Columbia, that
court holding that the one-year period should apply, on the ground
that the divisional application was to be regarded substantially as
an amendment to the parent application, and that it would be
inequitable to permit a longer time than that allowed by R.S. §
4894, for further prosecution of an application after office
action. This Court, in reversing the decision of the court of
appeals, referred to § 4886, as amended by Act March 3, 1897, c.
391, 29 Stat. 692, and §§ 4887, 4897, and 4920 of the Revised
Statutes, all of which contain provisions for a time limit of two
years for filing applications, and said (p.
252 U. S.
136):
"Thus, through all of these statutes runs the time limit of two
years for the filing of an application, there is no modification in
any of them of the like provision in Rev.Stats. § 4886, as amended,
and no distinction is made between an original and a later or a
divisional application, with respect to this filing right."
If this were all, it might justify the conclusion that a hard
and fast time limit of two years is to be applied in
Page 264 U. S. 471
every case of a divisional application. But a reading of the
entire opinion demonstrates that this conclusion is erroneous. The
Court proceeds to say that divisional applications are not to be
dealt with in a hostile spirit, but are to be
"favored to the extent that, where an invention clearly
disclosed in an application . . . is not claimed therein, but is
subsequently claimed in another application, the original will be
deemed a constructive reduction of the invention to practice and
the later one will be given the filing date of the earlier, with
all of its priority of right."
Reference is made to
Wollensak v. Reiher, supra, and
other reissue cases, which, as we have seen, adopt the two-year
time limit by analogy to the law of public use before application
for patent, and, while it is not said in terms, the plain import of
the citation of and reliance upon these cases is that the effect of
the two years' delay, as recognized in those cases, may be overcome
where it "is accounted for and excused by special circumstances
which show it to have been not unreasonable," and, properly
understood, there is nothing in the opinion to the contrary.
Our conclusion, therefore, is that, in cases involving laches,
equitable estoppel, or intervening private or public rights, the
two-year time limit
prima facie applies to divisional
applications, and can only be avoided by proof of special
circumstances justifying a longer delay. In other words, we follow
in that respect the analogy furnished by the patent reissue
cases.
Affirmed.
*
See also American Laundry Machinery Co. v. Prosperity Co.,
Inc., 294 F. 144, reversed by a decision of the Circuit Court
of Appeals for the Second Circuit, cited
supra.