1. On writs of certiorari to review contrary decisions of two
circuit courts of appeals on whether a patent was infringed by a
particular device, the plaintiff being the same in both cases and
the
Page 280 U. S. 31
defendant in one assuming defense of the other, this Court has
no occasion to determine the validity of the patent claims involved
where, in the courts below, the defense conceded their validity if
limited to the specific structure disclosed, and where their
validity was upheld in one case, not denied in the other, and not
questioned by the defense in its petition for certiorari. P.
280 U. S.
34.
2. A decree of a circuit court of appeals affirming an
interlocutory order of the district court adjudging the
infringement of a patent and ordering an accounting will not avail
the patentee by way of
res judicata or estoppel in a like
suit pending before the circuit court of appeals of another circuit
if not set up in the record of hat case, but merely brought to the
court's attention on argument. P.
280 U. S.
35.
3. In such case, the effect of the decree is, at most, that
which it may have under the doctrine of comity; refusal to follow
it is not, in itself, a ground for reversal.
Id.
4. Where there are concurrent findings of the two federal courts
in one circuit that a patent has been infringed, and concurrent
findings of those courts in another circuit, in a like case, that
it has not, this Court, upon a review of both cases because of the
conflict, will consider independently which of the decisions is
correct. P.
280 U. S.
35.
5. Upon the undisputed evidence in these cases, the question of
infringement resolves itself into a question of law, depending upon
a comparison between the structure disclosed on the face of the
plaintiff's patent and the device complained of, and the correct
application thereto of the law of equivalency. P.
280 U. S.
36.
6. Patent No. 1,385, 102 (Claims 1 4, inclusive, and 7), issued
to Winters and Crampton for an improved latch of the swinging lever
type particularly adapted for use on doors of refrigerators, etc.,
is infringed by the defendants' latches, manufactured under Patent
No 1,575,647, issued to Schrader. P.
280 U. S.
41.
7. A close copy which seeks to use the substance of the
invention, and, although showing some changes in form and position,
uses substantially the same devices, performing precisely the same
offices with no change in principle, constitutes an infringement.
P.
280 U. S.
42.
8. Even where, in view of the state of the art, the invention
must be restricted to the form shown and described by the patentee,
and cannot be extended to embrace a new form which is a substantial
departure therefrom, it is nevertheless infringed by a device in
which there is no substantial departure from the description in the
patent, but a mere colorable departure therefrom. P.
280 U. S.
42.
Page 280 U. S. 32
9. Undisputed facts clearly showing infringement by a device
made under a later patent
held not to be overcome by any
presumption of the validity of that patent. P.
280 U. S. 43.
24 F.2d 15 affirmed.
28 F.2d 583 reversed.
Certiorari, 278 U.S. 587, to review two decrees of different
circuit courts of appeals in suits for infringements of a patent.
In No. 4, the court below sustained a district court decree of
injunction and for an accounting. In No. 14, the court below
affirmed a district court decree dismissing the bill because of
noninfringement.
See 20 F.2d 671.
MR. JUSTICE SANFORD delivered the opinion of the Court.
These are two suits in equity relating to letters patent No.
1,385,102 for improvements in latches, issued to Winters and
Crampton July 19, 1921. They were heard together here. The
invalidity of the two general claims of the patent, 5 and 6, has
been conceded, and the issues here are limited to the five specific
claims, 1, 2, 3, 4 and 7.
In No. 4 -- hereinafter referred to as the Sanitary case --
Winters and Crampton brought suit in the Eastern District of
Wisconsin against the Sanitary Refrigerator Co. for infringement of
the patent by the latch which it used in the manufacture of
refrigerators. The Dent Hardware Co., which had manufactured and
sold the latches to the Refrigerator Co., although not itself a
party to the suit, employed counsel and conducted the defense of
the suit at its own expense. The district court, after a
Page 280 U. S. 33
hearing on pleadings and proof, held that the patent was valid
and infringed, enjoined further infringement, and ordered an
accounting. On appeal to the Circuit Court of Appeals for the
Seventh Circuit, the defendant admitted the validity of the five
specific claims,
"accompanied by the statement that validity was recognized only
in view of an asserted construction which gave to each claim so
narrow a field that infringement was not disclosed."
The court, finding that the sole issue remaining was one of the
infringement of these claims, held that, while they were extremely
narrow and were restricted to the particular structure disclosed,
they had some range of equivalency, and were infringed by the
defendant's latch, and affirmed the decree of the district court in
respect to them. 24 F.2d 15, 16.
In No. 14 -- hereinafter referred to as the Dent case -- Winters
and Crampton, after the decree of the district court in the
Sanitary case but before that of the circuit court of appeals,
brought a suit for infringement in the Eastern District of
Pennsylvania against the Dent Hardware Co., the manufacturer of the
refrigerator latches. The district court, on final hearing, held
that as to the five specific claims the question was not as to
their validity, but as to their scope, there being in effect no
denial of the plaintiff's right to the specific construction
described, and that these claims should be so read as to restrict
their right to the specific construction, and was not infringed by
the defendant's latches, and dismissed the bill of complaint. On
appeal to the Circuit Court of Appeals for the Third Circuit, the
defendant again conceded that the five claims were "valid if
limited to the specific structure disclosed," but claimed that,
when so limited, it did not infringe. The court, while it had grave
doubt as to the validity of these claims, finding that, if valid,
their scope was clearly confined to the structural design
disclosed
Page 280 U. S. 34
and had only a narrow range of equivalency -- and not agreeing
with the opinion of the circuit court of appeals in the Sanitary
case, which meanwhile had been handed down -- held that they were
not infringed by the Dent latch, and affirmed "the decree of the
district court, dismissing the bill because of noninfringement." 28
F.2d 583.
There being a conflict of opinion between the two circuit courts
of appeals on the question of infringement, writs of certiorari
were thereafter granted in both cases. [
Footnote 1]
1. Since both courts in the Sanitary case held the five specific
claims to be valid, and neither court in the Dent case held them to
be invalid, and the Hardware Co., in defending for the Refrigerator
Co. in the Sanitary case and for itself in the Dent case, admitted
in both circuit courts of appeals that these claims were valid if
limited to the specific structure disclosed, we have no occasion
here to determine the question as to the validity of these claims
when thus limited, especially as the petition for certiorari in the
Sanitary case did not question the decree of the circuit court of
appeals for the Seventh Circuit in respect to the validity of these
claims, but assigned as error merely its holding in reference to
the question of infringement, and was based solely on the conflict
between the two circuits in respect to that question. [
Footnote 2]
Page 280 U. S. 35
2. Nor have we occasion here to consider at length whether, as
urged by Winters and Crampton, the decree of the Circuit Court of
Appeals for the Seventh Circuit affirming the interlocutory order
of the district court adjudging the infringement and ordering an
accounting, finally and conclusively determined the question of
infringement so as to become binding upon the Circuit Court of
Appeals for the Third Circuit. The bill in the Dent case was filed
before the judgment of the Circuit Court of Appeals for the Seventh
Circuit had been rendered. This judgment was not set up by Winters
and Crampton in the Dent case by any amendment to the pleadings;
nor was it even introduced in evidence in that case. In short,
there is nothing in the record in that case to raise the the
defense of
res judicata or estoppel by judgment, and the
only effect of the decree in the Seventh Circuit when called to the
attention of the Circuit Court of Appeals for the Third Circuit in
argument was, at most, that which it had under the doctrine of
comity, constituting a rule, not of law, but of practice,
convenience, and expediency, and if we thought the action of the
Circuit Court of Appeals for the Third Circuit "correct upon the
merits, we should not reverse its action" though we were of opinion
it had not given sufficient weight to that doctrine.
See Mast,
Foos & Co. v. Stover Mfg. Co., 177 U.
S. 485,
177 U. S.
488.
3. This brings us to the question brought up for review by the
writs of certiorari, as to whether the five specific claims of the
Winters and Crampton patent were infringed by the refrigerator
latches manufactured by the Dent Hardware Co. and used by the
Refrigerator Co.
So far as this question is concerned, there is no substantial
difference in the evidence in the two cases. As there was a
concurrent finding in the two lower courts in the Sanitary case
that they were infringed, and a concurrent finding in the two lower
courts in the Dent case that they
Page 280 U. S. 36
were not infringed, and the cases have been brought here because
of the conflict of decision in the two circuit courts of appeals,
it is clear that, under these circumstances, neither properly calls
for the strict application of the general rule as to the acceptance
by this Court of the concurrent findings of the lower courts on
questions of fact, and we consider independently the question as to
which of the decisions on this question is based upon the sounder
reasoning and is correct.
Compare Thomson Spot Welder Co. v.
Ford Motor Co., 265 U. S. 445,
265 U. S. 447;
Concrete Appliances Co. v. Gomery, 269 U.
S. 177,
269 U. S. 180.
Furthermore upon the undisputed evidence, the question of
infringement resolves itself in each case into one of law,
depending upon a comparison between the structure disclosed on the
face of the patent and the device shown in the Dent latch, and the
correct application thereto of the rule of equivalency.
Compare
Singer Co. v. Cramer, 192 U. S. 265,
192 U. S.
275.
4. In the application for their patent, Winters and Crampton
said:
"This invention relates to a latch of the swinging lever type,
particularly adapted for use on refrigerators though applicable in
many other relations where a door is to be closed and held in
closed position. The swinging lever latch . . . is pivotally
connected at one end to the door jamb or casing, allowing the door
to be opened when the latch is thrown to an upper vertical
position, and coming down across the meeting edges of the casing
and door when swung to horizontal position, engaging with a cam
member on the door to wedge the door tightly shut. This latch is a
very serviceable latch, but . . . is liable to drop to horizontal
position, in which case the door cannot be closed without first
raising the lever to upper vertical position while, many times, the
door is inadvertently swung toward closed position and against the
lever in its horizontal position, with injury either to the lever
or door or both. In the present invention,
Page 280 U. S. 37
it is a primary object and purpose to provide a latch which may
be pivotally connected to the door and which is automatically
operated to engage with a retaining member or keeper fixed on the
door casing when the door is closed, irrespective of the vertical
or horizontal position of the latch lever, working as well in the
one case as the other. A further object of the invention is to
construct a latch of few parts, whereby it may be economically made
and which will be durable and efficient in service. . . . The
ability to close the door and latch it automatically, irrespective
of the position of the latch lever, insures against injury to the
latch or door and also insures that the door will be latched when
it is swung shut."
Claims 1 and 7, which are typical, read as follows:
"1. In combination, a door and a casing therefor, a keeper
attached to the casing comprising a base, an outstanding post and a
head at the outer portion of the post, said head depending below
the post and formed with upper and lower curved outer sides coming
substantially to a point and with an inner upwardly and inwardly
inclined side, a member attached to the door comprising a base, an
integral outstanding post projecting from the base and a laterally
extending arm at the upper end of the post paralleling the base,
and a latch lever pivotally mounted between its ends between the
said arm and base of said member, said lever having one arm formed
with an under cam side extending from the pivot and adapted to be
engaged under the depending portion of the keeper, a handle portion
extending in the opposite direction from the pivot and another arm
projecting from the handle portion a distance from the pivot and
lying substantially at right angles to the first arm of the lever
and likewise being formed with an inner cam side, substantially as
and for the purposes described."
"7. In combination, a door and a casing therefor, a keeper
attached to the casing, a latch lever pivotally
Page 280 U. S. 38
mounted on the door between its ends, one end of the lever being
formed into an operating handle and the other into a keeper
engaging arm, a second arm projecting from the handle portion of
the lever a short distance from its pivot and at an angle to the
first arm, said keeper being formed at its outer sides for
engagement with the respective arms when the lever is in horizontal
and vertical positions, respectively, as the door is closed, to
automatically operate the lever so that it will engage under the
keeper when the door is entirely closed, substantially as
described."
We insert here reproductions (on a reduced scale) of Figure 4 of
the drawings which is a front elevation showing the door
approaching closed position with the swinging lever in vertical
relation to the door; Figure 5, a side elevation thereof; Figure 6,
a front elevation showing the action on the swinging lever as the
door approaches closed position after the lever has been in
horizontal position, and Figure 1, a front elevation showing the
latch in closed position and holding a door closed. These show the
patented device in detail.
image:a
The operation of closing and latching the door is thus described
in the specification:
"When the door is moved toward closing position with the lever
vertically located, the cam side 13 of arm 12 strikes against the
curved upper side 18 of head 17, causing the lever to be
automatically swung toward the horizontal, and bringing the arm 9
into place so as to pass under the lower point of the keeper head
so that it may engage at its outer side against the wedging cam
side 20 of the head. It is apparent that, by giving the end of
handle 11 a downward movement, the door will be wedged tightly shut
as the arm 9 moves upwardly and against the incline 20. . . . If
the lever has dropped to horizontal position while the door is
open, the closure of the door and engagement of the lever with the
keeper is accomplished by merely swinging the door shut, in which
case, as shown in Figs. 6
Page 280 U. S. 39
and 7, the arm 9 strikes with its inclined cam side 10 against
the lower curved side 19 of the head 17 of the keeper, causing the
handle to be automatically turned toward vertical position. This
movement continues until the arm 9 passes by the lower point of the
keeper head 17 or, as usually occurs, the arm 12 comes into contact
with the head at the upper side 18, whereupon the lever is actuated
so as to bring the arm 9 under the depending portion of the keeper,
the same as before described when closing the door with the lever
in vertical position. In any case, the latch lever engages with the
latch keeper when the door is closed irrespective of the position
of the lever."
While this patent came into a prior art crowded with various
latch devices for holding a door in closed position
Page 280 U. S. 40
when it was shut and was not a pioneer patent entitled to a
broad range of equivalents, the structure which it disclosed was
meritorious, and soon attained a large measure of commercial
success.
5. The Dent latch is manufactured under letters patent No.
1,575,647 for lock devices for refrigerator doors issued March 9,
1926 to T. O. Schrader, assignor of the Hardware Co. In his
application for this patent, Schrader said:
"I am aware of [Winters and Crampton] patent No. 1,385, 102
dated July 19, 1921, and I disclaim the structure therein
disclosed, as my invention is differentiated therefrom, since,
whereas the structure disclosed in said patent utilizes a pin 12
carried by the latch arm 11, which coacts with an upper cam edge 18
of the keeper member 17, in my novel construction, the upper edge
of my keeper plate b3 has no function, but the pivotal latch c6
carries a cam c1 inclined to the pivot of said latch and adapted to
coact with a pin b8 carried by and laterally projecting from, the
inner wall of the keeper plate b3 thereby to swing the terminal
tongue of the latch into the horizontal locking position, and to
none of the constructions of the prior art do I herein make
claim."
The latch manufactured by the Hardware Co. which is involved in
both these cases, differs only slightly in form from that shown in
the Schrader patent. It is in the main an exact reproduction of the
structure disclosed in the Winters and Crampton patent. It has like
it a keeper attached to the door casing, with a triangular head,
and a lever latch with a handle and two arms whose functions are to
trip or give a kick to the latch lever by their coaction with the
keeper head and wedge the lower arm under it, regardless of the
position of the latch lever when the closing operation begins. The
only differences are that, in the Dent latch, the keeper has on the
inner or door side of the triangular head a lug projecting inwardly
towards the latch lever, and the upper arm of the latch lever is a
short
Page 280 U. S. 41
inclined cam placed at the pivot of the latch lever, and so
constructed and at such an angle that it rides upon and contacts
with the lug on the side of the keeper head, instead of with its
upper curved side, as in the Winters and Crampton structure. The
coaction of this shortened arm with the lug operates, however, on
the cam principle, just as the coaction of the longer upper arm
with the curved upper surface of the keeper head in the Winters and
Crampton structure, to trip or kick the lower arm of the latch
lever into the wedged position under the keeper head.
6. Despite the changes in the Dent latch from the Winters and
Crampton structure, we find that the two devices are substantially
identical, operating upon the same principle, and accomplishing the
same result in substantially the same way, and that the slight
change in the form of the Dent latch is merely a colorable
departure from the Winters and Crampton structure.
In the Dent latch, as stated by the Circuit Court of Appeals for
the Seventh Circuit, the lug on the inner side of the triangular
head of the keeper is a part of the side of the head. And, at the
place where the shortened upper arm of the latch lever comes in
contact with it, the surface of this lug forms in effect the upper
side of the keeper head as a substitute for the upper side in the
Winters and Crampton structure, which, while left in place,
performs no function whatever, just as if it were cut away.
Although the claims of the Winters and Crampton patent are
limited to the structure therein disclosed, we find that they are
infringed by the device of the Dent latch. Both circuit courts of
appeals recognized that the Winters and Crampton patent, although
thus limited, had some range of equivalents, and we think that,
though it be a narrow one, it is sufficient.
There is a substantial identity, constituting infringement,
where a device is a copy of the thing described
Page 280 U. S. 42
by the patentee, "either without variation, or with such
variations as are consistent with its being in substance the same
thing."
Burr v.
Duryee, 1 Wall. 531,
68 U. S. 573.
Except where form is of the essence of the invention, it has little
weight in the decision of such an issue and, generally speaking,
one device is an infringement of another
"if it performs substantially the same function in substantially
the same way to obtain the same result. . . . Authorities concur
that the substantial equivalent of a thing, in the sense of the
patent law, is the same as the thing itself, so that, if two
devices do the same work in substantially the same way, and
accomplish substantially the same result, they are the same, even
though they differ in name, form, or shape."
Union Paper Bag Machine Co. v. Murphy, 97 U. S.
120,
97 U. S. 125.
And see Elizabeth v. Pavement Co., 97 U. S.
126,
97 U. S. 137.
That mere colorable departures from the patented device do not
avoid infringement,
See McCormick v.
Talcott, 20 How. 402,
61 U. S. 405. A
close copy which seeks to use the substance of the invention, and,
although showing some change in form and position, uses
substantially the same devices, performing precisely the same
offices with no change in principle, constitutes an infringement.
Ives v. Hamilton, 92 U. S. 426,
92 U. S. 430.
And even where, in view of the state of the art, the invention must
be restricted to the form shown and described by the patentee and
cannot be extended to embrace a new form which is a substantial
departure therefrom, it is nevertheless infringed by a device in
which there is no substantial departure from the description in the
patent, but a mere colorable departure therefrom.
Compare Duff
v. Sterling Pump Co., 107 U. S. 636,
107 U. S.
639.
The fact that, as the Dent device makes two reciprocal changes
in the form of the Winters and Crampton structure, one by the
insertion of the lug on the keeper head and the other in the
shortened upper arm of the latch
Page 280 U. S. 43
lever, and one alone of these changes cannot be substituted in
the Winters and Crampton structure without the other, so as to make
it operative, is plainly insufficient to avoid the
infringement.
Nor is the infringement avoided, under the controlling weight of
the undisputed facts, by any presumptive validity that may attach
to the Schrader patent by reason of its issuance after the Winters
and Crampton patent.
The decree of the Circuit Court of Appeals for the Seventh
Circuit in the Sanitary case is affirmed, and the decree of the
Circuit Court of Appeals for the Third Circuit in the Dent case is
reversed.
No. 4 affirmed.
No. 14 reversed.
[
Footnote 1]
In the Sanitary Case, the petition for the writ of certiorari
was filed before the decree of the Circuit Court of Appeals for the
Third Circuit in the Dent case had been handed down, and was then
denied. 278 U.S. 599. But after the handing down of that opinion
showing the conflict as to the question of infringement was brought
to our attention by a petition for rehearing, the certiorari was
granted. 278 U.S. 587. However, the Refrigerator Co. did not
challenge the correctness of the holding of the Circuit Court of
Appeals for the Seventh Circuit that the five specific claims were
valid, and the petition was based entirely on the conflict of
opinion as to the question of infringement.
[
Footnote 2]
See Note 1
supra.