1. Patent No. 1,732,708, Claims 1, 2, 5-7, 11-13, to Withrow and
Close, relating to a burner for outdoor warning signals,
diminishing liability of flame extinguishment by wind and rain,
held invalid for want of invention. P.
307 U. S.
356.
2. Aggregation of two old devices, productive of no new joint
function, is not invention. P.
307 U. S.
356.
Page 307 U. S. 351
3. Evidence of unsuccessful efforts upon the part of a few
others, not familiar with the prior art, to attain the result
achieved by the patented device, of acceptance of licenses by
manufacturers not shown to have made wide or successful use of it,
and evidence of its utility and commercial success
held
insufficient to establish novelty in this case. P.
307 U. S.
356.
93 F.2d 336 affirmed.
99 F.2d 806 reversed.
Certiorari, 305 U.S. 667; 306
id. 623, to review three
decrees in infringement suits. In the first two suits, which
involved the same claims, relief was denied by the court below. In
the third suit, which involved some of those claims and some others
in addition, relief was granted.
MR. JUSTICE BUTLER delivered the opinion of the Court.
These are patent infringement suits brought by the Toledo
Pressed Steel Company, owner of Withrow and Close Patent No.
1,732,708, issued October 22, 1929, for a burner for use in outdoor
warning signals such as construction torches and truck flares. The
first two suits were brought in the federal court for the northern
district of Ohio. It filed an opinion indicating the facts that it
deemed established by the evidence and, without formal findings,
held the patent valid and infringed by the Bolser and Kari-Keen
flares respectively sold by the defendants. The circuit court of
appeals for the sixth circuit held the
Page 307 U. S. 352
patent invalid for want of invention, and reversed. 93 F.2d 336.
The other suit was brought in the federal court for the eastern
district of New York. It made findings as required by Rule 70 1/2,,
held plaintiff's patent invalid, and dismissed the bill. The
circuit court of appeals for the second circuit held the patent
valid and infringed by the Anthes flare sold by the defendant, and
reversed. 99 F.2d 806.
In the interest of plaintiff, seeking to uphold the patent
prima facie valid, and of the public, liable to exclusion
from manufacture, use, or sale in virtue of the right it purports
to confer, final adjudication as to validity is of primary
importance. The patent in suit relates to torches for guarding
street obstructions and to flares, which are large torches, for
warning that vehicles are stopped on the road.
Formerly, red lanterns were much used. But, after general use of
automobiles having red tail lights to some extent resembling them,
they did not serve so satisfactorily as before. Open-flame torches
came to be extensively employed. The motion of the luminescent
flame distinguishes them from other signals. But there were
complaints that they were sometimes extinguished by wind or
rain.
Open-flame torches, in use for some years before patentees'
claimed invention, included those which were bomb-shaped,
flat-bottomed, weighted for stability, and with an opening in the
top for a wick. That type was well known at least after the patent
covering it, McCloskey No. 1,610,301, was issued December 14, 1926;
in 1929, it was held invalid by the circuit court of appeals for
the sixth circuit for lack of invention and because anticipated.
McCloskey v. Toledo Pressed Steel Co., 30 F.2d 12.
Plaintiff had a large business in the manufacture and sale of
torches, including the McCloskey type. It advertised that they
would burn in all kinds of weather;
Page 307 U. S. 353
having received many complaints of extinguishment by wind and
rain, patentees, respectively plaintiff's president and
vice-president, set about producing something to make them
dependable and to serve as represented. Within a year, but after
experiments, trials, and failures, they brought forward the
patented device.
The specification states that the claimed invention particularly
relates to devices to increase efficiency and to prevent flame
extinguishment. It declares that the objects of the invention are
to provide a simple attachment to attain those ends and a burner so
constructed that liability of extinguishment by wind or rain will
be reduced to a minimum. It further says that, with the described
construction and arrangement, consumption of oil and wick is
materially decreased.
The claims involved are printed in the margin. [
Footnote 1] Considered together, unobscured
by artificiality in their statement,
Page 307 U. S. 354
it fairly may be said that they show that all that the patentees
did was to put over the wick of a torch, well known in the art, an
inverted metal cup-like cap having holes in its sides, some to let
in air for combustion and others to let out flame. The cap was also
well known, and had been used as a part of other devices for the
protection of kerosene and other flames.
A number of devices patented earlier than plaintiff's included
the elements essential to its burner.
Billingham Patent, No. 191,031, issued August 15, 1876, related
to torches for lighting street lamps. It shows a
Page 307 U. S. 355
wick-type torch with a tube-like cap having holes, some to let
in air, and others to let the flame come out. This cap, imperforate
at the top, serves to prevent extinguishment of the flame by wind
or rain. Almond Patent, No. 193,796, issued August 7, 1877, related
to vapor burners for heating. The device, some parts detached,
serves as an illuminating lamp consisting of a body, a wick holder,
a cap, a flange having a rim supporting a tube closed at the top.
Holes are in the rim to admit air; larger ones in the tube are to
let the flames out. Rutz Patent, No. 1,101,146, issued June 23,
1914, covers a flash igniter for gas stove burners. It has a cap to
guard the flame and adapted to emit flames extending from the
igniter to the gas burners to be lighted. This cap, like
plaintiff's, has a supporting and heat receiving flange, a means to
enclose the space above the flange, and a restricted entrance to
admit air for combustion. The record shows that the Rutz hood has
been used to achieve the identical results attained by plaintiff's
device.
There are other patents, issued before patentees developed the
structure in suit, that may be referred to as relevant to the issue
of invention in this case. Examples of these are cited in the
margin. [
Footnote 2]
The torch body was old in the art to which it belonged. The cap,
as part of devices used in other fields, was old and useful to
prevent extinguishment of flames by wind or rain and to permit
flames to extend through holes to the open air. The problem
patentees set for themselves was to prevent extinguishment while
preserving usefulness of the flames as warning signals. They solved
it by merely bringing together the torch and cap. As before, the
torch continued to produce a luminescent, undulating flame, and the
cap continued to let in air for combustion,
Page 307 U. S. 356
to protect the flame from wind and rain and to allow it to
emerge as a warning signal. They performed no joint function. Each
served as separately it had done. The patented device results from
mere aggregation of two old devices, and not from invention or
discovery.
Hailes v. Van
Wormer, 20 Wall. 353,
87 U. S. 368;
Reckendorfer v. Faber, 92 U. S. 347,
92 U. S. 357;
Lincoln Engineering Co. v. Stewart-Warner Corp.,
303 U. S. 545,
303 U. S.
549-550. On the records before us, it is impossible to
hold that production of the patented device required more than
mechanical skill and originality attributable to those familiar
with the art of protecting flames of kerosene and other burners.
Altoona Publix Theaters v. Tri-Ergon Corp., 294 U.
S. 477,
294 U. S. 486;
Powers-Kennedy Co. v. Concrete Co., 282 U.
S. 175,
282 U. S. 186;
Concrete Appliances Co. v. Gomery,
269 U.
S. 177,
269 U. S.
184-185;
Hollister v. Benedict & Burnham Mfg.
Co., 113 U. S. 59,
113 U. S.
72-73.
As evidence in its favor on the question of invention, plaintiff
cites efforts to find something useful to protect open-flame
torches from extinguishment by wind or rain put forth by one
engaged in operation of a street railway and by another employed by
a manufacturer of lanterns. But it does not appear that either was
familiar with the relevant prior art. Nor is there any evidence of
general or widespread effort to solve the problem here involved.
There is nothing that tends to raise what patentees did to the
realm of invention.
See Paramount Publix Corp. v. Tri-Ergon
Corp., 294 U. S. 464,
294 U. S. 476.
Plaintiff also brings forward the fact that some manufacturers,
including three substantial ones, have taken licenses under its
patent. It does not appear that these licensees have made wide or
successful use of the device. Lack of novelty being clearly shown,
acceptance of license under the circumstances of this case is
without weight.
Thorpp's Sons Co. v. Seiberling,
264 U. S. 320,
264 U. S. 330;
John T. Riddell v. Athletic Shoe Co., 75 F.2d 93, 95. And
similarly without significance on the question of novelty is the
fact that, as plaintiff
Page 307 U. S. 357
claims, utility resulted and commercial success followed from
what patentees did.
Firestone Tire & Rubber Co. v. United
States Rubber Co., 79 F.2d 948, 954.
It results that the decrees in Nos. 166 and 167 must be
affirmed, and that in No. 603 must be reversed.
Nos. 166 and 167 affirmed.
No. 603 reversed.
MR. JUSTICE DOUGLAS took no part in the consideration or
decision of this case.
* Together with No. 167,
Toledo Pressed Steel Co. v. Huebner
Supply Co., also on writ of certiorari to the Circuit Court of
Appeals for the Sixth Circuit, and No. 603,
Montgomery Ward
& Co. v. Toledo Pressed Steel Co., on writ of certiorari
to the Circuit Court of Appeals for the Second circuit.
[
Footnote 1]
In all the cases, claims 2, 5, 11 and 12 are involved. In Nos.
166 and 167, claim 13 is also involved. In No. 167, claims 1, 6 and
7 are also involved.
"1. In a device of the class described, a torch body having an
opening at its upper end, a wick-receiving tube extending into said
opening, and a cap disposed on the outer side of said torch body to
enclose the outer end of the wick, said cap having an imperforate
upper wall, lateral flame openings, and air openings below the
flame openings."
"2. In a device of the class described, a torch body having an
opening for a wick, and a flame guard for said wick mounted on the
outside of said torch body, said guard including a cap provided
with an imperforate top wall and lateral flame openings adapted to
emit a luminescent flame, and air ports."
"5. In a device of the class described, a construction torch
having an opening in its upper end for a wick, means to hold the
wick in place, and a guard fitting over the outer end of the wick
but spaced from the sides thereof, said guard having an imperforate
top wall and side flame and air openings."
"6. In a device of the class described, a torch body having a
wick-opening, a tube for receiving the wick and adapted to extend
inside of the torch body, an outwardly extending flange in the
region of said wick-opening, and a cap connected to said flange and
having an imperforate top wall, said cap having a flame opening
adjacent its outer end and an air port beneath said flame
opening."
"7. In a device of the class described, a torch body having a
wick-opening, a cap for enclosing the outer end of the wick but
spaced from the sides thereof, an imperforate end wall for said
cap, said cap having a series of flame openings and a series of air
ports beneath the flame openings, and a disc adapted to embrace the
wick and having a flanged upper portion disposed in the region of
said air ports."
"11. A burner for a construction torch adapted to emit a
luminescent flame and comprising a wick holder having a portion in
contact with the wick and a supporting and heat-receiving flange,
and means enclosing a space above said flange and surrounding the
wick, except for provision for lateral exit of flame and restricted
entrance of air for combustion."
"12. A burner for a construction torch adapted to emit a
luminescent flame and comprising a wick holder having a portion in
contact with the wick and a lateral flange, and a cap enclosing and
spaced from the end of the wick and having an imperforate top and
provision for lateral exit of flame and entrance of air, and the
bottom of the cap being in heat conducting relation to said
flange."
"13. A burner for a construction torch adapted to emit a
luminescent flame and comprising a wick holder having a portion in
contact with the wick and a laterally extending flange and a cap
over the wick, the cap having an imperforate, dome-shaped top wall,
a lateral flame opening approximately even with the top of the wick
and a smaller opening for the inlet of air lower than the flame
opening and above the lower edge of the cap, said lower edge being
in heat-transferring relation to said flange."
[
Footnote 2]
Blake Patent, No. 453,335, June 2, 1891. Heston Patent, No.
270,587, January 16, 1883. Reekie Patent, No.192, 130, June 19,
1877. Kahn Patent, No. 1,175,527, March 14, 1916.