Unreasonable neglect and delay of a patentee in suing upon or
disclaiming a claim not definitely distinguishable from another
adjudged invalid for anticipation and disclaimed avoids the entire
patent. R.S. §§ 4917 and 4922. P.
307 U. S.
245.
Snyder patent No. 1,866,779, issued to Maytag Company, assignee,
embracing claims for a washing machine and a method of washing
fabrics,
held invalidated.
96 F.2d 87 affirmed.
100 F.2d 218 reversed.
Certiorari, 306 U.S. 666, to review decrees in the Second
Circuit denying relief in two infringement suits upon the ground
that the claims sued upon had been anticipated, and (306 U.S. 626)
to review a decree in the Eighth Circuit upholding the same claims
as valid. The claims sued upon were three of thirty-six apparatus
claims, for a washing machine, embraced in the patent. The same
patent included also three claims for a method of washing fabrics,
two of which had been disclaimed; the third furnished the basis for
the present decision.
Page 307 U. S. 244
MR. JUSTICE ROBERTS delivered the opinion of the Court.
These are patent infringement suits in which certiorari was
granted because of a conflict of decision. [
Footnote 1] Apparatus claims 23, 26, and 29 of the
Snyder patent, No. 1,866,779, which are here involved, have been
held invalid in the Second Circuit by reason of anticipation, and
have been adjudged valid in the Eighth Circuit. We need not resolve
the conflict, since we are of opinion the patent is void for
failure to disclaim claim 39.
The patent, issued July 12, 1932, to the Maytag Company as
assignee, contains thirty-nine claims, thirty-six of which are for
a washing machine and three (Nos. 1, 38, and 39) for a method of
washing fabrics. In 1935, the company obtained a decree in a suit
against the Brooklyn Edison Company for infringement of apparatus
claims 23 and 26 and method claim 38. [
Footnote 2] The Circuit Court of Appeals for the Second
Circuit reversed as to all three claims, holding they did not
disclose novelty. [
Footnote 3]
This court refused certiorari, and the company promptly disclaimed
two of the method claims, 1 and 38, but did not disclaim 39. In the
instant cases, infringement of apparatus claims 23, 26, and 29, is
charged, but claim 39
Page 307 U. S. 245
is not in suit, nor has it been made the basis of any other
suit.
There has been unreasonable neglect or delay in entering a
disclaimer of claim 39 within the meaning of R.S. § 4917, and R.S.
§ 4922, [
Footnote 4] unless
that claim is "definitely distinguishable from the parts claimed
without right" -- that is, the disclaimed method claims 1 and 38.
This must be so, for the company, by disclaiming those claims, has
confessed that the patentee therein claimed "more than that of
which he was the original or first inventor or discoverer," and
that the company, as assignee of the patent, therefore "did not
choose to claim or to hold" the method therein disclosed "by virtue
of the patent or assignment."
Thus, the company elected the course it would pursue with
knowledge of the options open to it. Claim 38, which had been
adjudged invalid, need not have been disclaimed, but, alone or with
other claims, might have been made the basis of another suit
against a different party -- the petitioner in No. 661, for
example. [
Footnote 5] If the
claims were held invalid in such later suit, the court might find
the patent wholly void for failure seasonably to disclaim.
[
Footnote 6] To avoid the risk
of such a possible outcome, the company chose the other alternative
of disclaiming 38 and relying on other claims. [
Footnote 7] In the
Brooklyn Edison case,
the district court said concerning claim 1, "The quoted verbiage is
different from that of Claim 38, but the same method or process is
thought to be equally embodied in both." [
Footnote 8] This expression presumably caused the
company also to disclaim claim 1 as not "definitely
distinguishable" from claim 38.
Page 307 U. S. 246
If claim 39 describes the same method as claim 38, it follows
that failure either to sue on 39 or to disclaim it along with 38
invalidates the patent.
The two are copied in the margin. [
Footnote 9] We think they describe but a single method.
The company insists that the crucial difference lies in the fact
that, in 38, the moving fluid in the tub is said substantially to
suspend the fabrics, whereas in 39 the same agency is said to cause
the fabrics to be freely moved out. But the difference
Page 307 U. S. 247
in verbiage describes no difference in operation or result. We
conclude that, when read in their entirety, they describe the same
method.
The decrees in Nos. 76 and 77 are affirmed; that in No. 661 is
reversed.
Nos. 76 and 77 affirmed.
No. 661 reversed.
* Together with No. 77,
Maytag Co. v. Easy Washing Machine
Co., also on writ of certiorari to the Circuit Court of
Appeals for the Second Circuit, and No. 661,
General Electric
Supply Corp. v. Maytag Co., on writ of certiorari to the
Circuit Court of Appeals for the Eighth Circuit.
[
Footnote 1]
Maytag Co. v. Brooklyn Edison Co., 86 F.2d 625;
Maytag Co. v. Easy Washing Mach. Corp., 96 F.2d 87;
General Electric Supply Corp. v. Maytag Co., 100 F.2d
218.
[
Footnote 2]
Maytag Co. v. Brooklyn Edison Co., 11 F. Supp. 743.
[
Footnote 3]
Maytag Co. v. Brooklyn Edison Co., supra.
[
Footnote 4]
35 U.S.C. §§ 65 and 71.
[
Footnote 5]
Triplett v. Lowell, 297 U. S. 638,
297 U. S.
642.
[
Footnote 6]
Ibid., 297 U. S.
645.
[
Footnote 7]
Compare Ensten v. Simon, Ascher & Co., 282 U.
S. 445.
[
Footnote 8]
11 F. Supp. 758.
[
Footnote 9]
The difference in verbiage relied on to distinguish the claims
is italicized.
"38. The method of washing fabrics by forcing cleansing liquid
through and around them while substantially suspended by the action
of the fluid, as distinguished from pulling fabrics through the
fluid against scrubbing corrugations, or otherwise scrubbing them
by mechanical means, comprising immersing the fabrics in a washing
fluid in a container, then vigorously and rapidly impelling the
washing fluid in one and then in an opposite outward circulatory
direction away from the plane of the source of impulsion and
through the fabrics and circumferentially along the interior of the
container in rapid succession, and causing these violently opposed
currents of fluid to meet and flow inwardly and toward
the
central portion of the container, and toward the source of
impulsion, thereby substantially suspending the fabrics in the
fluid and cleansing them while thus suspended."
"39. The method of washing fabrics by forcing cleansing fluid
through them while substantially suspended by the action of the
fluid, as distinguished from pulling fabrics through the fluid
against scrubbing corrugations, or otherwise scrubbing them by
mechanical means, comprising immersing the fabrics in a washing
fluid in a container, then vigorously agitating the washing fluid
and rapidly forcing it toward the fabrics and away from the plane
of the source of agitation vertically along the interior surface of
the container first in one and then in an opposite circumferential
direction, back and forth through and around the fabrics, and
causing the violently moving opposed currents of liquid to meet and
flow
inwardly and vertically toward the source of
agitation whereby
the fabrics are caused to be freely
moved about by the action of the fluid and cleansed while thus
moved."