1. The claims of a patent are interpreted in the light of the
specifications, but with reference also to its file-wrapper
history. P.
311 U. S.
217.
2. It is a rule of patent construction that a claim in a patent
must be read and interpreted with reference to claims that have
been cancelled or rejected and the claims allowed cannot, by
construction, be read to cover what has thus been eliminated from
the patent. P.
311 U. S.
220.
3. While this rule is most frequently invoked when the original
and cancelled claim is broader than that allowed, the rule and the
reason for it are the same if the cancelled or rejected claim be
narrower. P.
311 U. S.
221.
4. The patentee may not, by resort to the doctrine of
equivalents, give to an allowed claim a scope which it might have
had but for amendments, the cancellation of which amounts to a
disclaimer. P.
311 U. S.
221.
5. The patent to Jardine, No. 1,763,523, (Claims 1, 8, and 11),
relating to pistons for internal combustion engines, claims the
combination of a piston head, a divided skirt, and webs
connecting
Page 311 U. S. 212
the head and skirt portions and supporting two wrist-pin bosses.
Assuming that, with the aid of the specification, these claims
might be construed to claim flexible webs, devised to act in
cooperation with the other elements to make the piston respond to
physical compression and thermal expansion, as an element of the
combination which they do not claim expressly, such construction is
precluded because the patentee, by amendments while his application
was pending, made additional claims like those mentioned but
specifying flexible webs, and thereafter withdrew them, upon their
being rejected in interference proceedings. Pp.
311 U. S. 215,
311 U. S.
222.
108 F.2d 109 reversed.
Certiorari, 309 U.S. 648, to review a decree sustaining a patent
in suits to restrain infringements.
MR. JUSTICE STONE delivered the opinion of the Court.
Decision in these cases turns on the question whether, in the
light of the patent office history of the Jardine patent on a
piston for gas engines, the court below, in construing the
specifications and claims, erroneously included one element,
"flexible" or "yielding" webs in the patented combination.
A related question was considered by this Court in connection
with the Gulick and Maynard patents, also involved in this
litigation, in
Schriber-Schroth Company v. Cleveland Trust
Co., 305 U. S. 47.
Respondent the Cleveland Trust Co., is the assignee in trust under
a pooling agreement of some eighty patents relating to
Page 311 U. S. 213
pistons for gas engines. It brought suit in the district court
for northern Ohio against petitioners, three piston dealers,
customers of the Sterling Products Company, to restrain
infringement of five of the patents, including the Gulick patent
No. 1,815,733, applied for November 30, 1917, and allowed July 31,
1931, the Jardine patent, No. 1,763,523, applied for March 11,
1920, and allowed June 10, 1930, and the Maynard patent No.
1,655,968, applied for January 3, 1921, and allowed June 10,
1928.
The cases were consolidated and tried before a special master
who, upon the basis of elaborate special findings, concluded that
the Gulick patent was invalid because of want of invention and
because of the addition to the application by amendment in 1922 of
a new element of the alleged invention; that the Maynard patent was
invalid for want of invention and for failure to describe and claim
the alleged invention, and that the Jardine patent was invalid as
not showing invention over the prior art exhibited by Ricardo,
Franquist, and Long. He held the other patents invalid for reasons
not now material.
The district court adopted the master's findings and gave its
decree for petitioners. The court of appeals reversed as to two of
the five patents, holding the Gulick and Maynard patents valid and
infringed. 92 F.2d 330, 334. The elements of the combination as
stated in claim 39, of the Gulick patent, are:
"A piston for an engine cylinder comprising a skirt, a head
separated from the skirt wall around its entire periphery, said
skirt being longitudinally split to render the skirt wall yieldable
on every diameter in response to cylinder wall pressure, wrist pin
bosses, and means rigidly connecting said bosses to the head and
yieldingly connecting said bosses to the skirt whereby said skirt
is yieldable in response to cylinder wall pressure."
Reference to a combination, including with other elements web
connections "whereby said piston skirt is
Page 311 U. S. 214
rendered yieldable during operation in response to cylinder wall
pressure" appears in number 18, one of the sustained claims.
The court of appeals found invention in both the Gulick and
Maynard patents, in a combination of elements of which one was
"webs laterally flexible," which was not specifically described or
claimed in the Gulick patent before its amendment of 1922 and was
never so described or claimed in the Maynard patent.
Conceding that other elements in the combinations were old in
the piston art, it said:
"But to combine insulation of head from skirt, retraction of the
bosses from the skirt periphery, connection of such bosses to the
skirt with webs laterally flexible and yet so carried from the head
as to support the load upon the wrist pin with sufficient strength
and rigidity, and to utilize the mechanical force of the cylinder
wall upon the skirt and the thermal expansion of the bosses so as
to compensate evenly and fully for head expansion and to secure a
balanced flexibility of the skirt with no bending concentration at
any point therein, discloses, we think, a meritorious concept
beyond the reach of those skilled in the art."
92 F.2d at 334.
Upon an examination of the Gulick application before amendment
and the Maynard patent, we concluded,
305 U. S. 305 U.S.
47, that neither described or claimed flexible or yieldable webs as
an element in the patented inventions. For that reason alone, we
held that, if the flexible web constituted an essential element of
the inventions, both patents failed to satisfy the requirement of
the statute that the patentee describe his invention so that others
may construct and use it after the expiration of the patent and
that it
"inform the public during the life of the patent of the limits
of the monopoly asserted, so that it may be known which features
may be safely used or manufactured without a license and which may
not, "
Page 311 U. S. 215
Permutit Co. v. Graver Corp., 284 U. S.
52,
284 U. S. 60;
that consequently the patent monopoly did not extend beyond the
invention described and explained by the patent, as the statute
requires, and could not be enlarged by amendment so as to embrace
in the invention and element not described or claimed in the
application as filed, at least when adverse rights of the public
had intervened.
See Schriber-Schroth Co. v. Cleveland Trust
Co., supra, 305 U. S.
57.
Upon the remand, the court of appeals held in the present suit,
Cleveland Trust Co. v. Schriber-Schroth Co., 108 F.2d 109,
that the elements of the combination described and claimed in the
Gulick patent before amendment and in the Maynard patent without
including the flexible web element which was added only by
amendment to the Gulick patent, did not disclose invention over the
prior art. But, considering that the flexible web element which had
not been included in the combination patented by Gulick and Maynard
had been described and claimed in the Jardine patent, it recalled
its mandate to the district court by which it had directed
dismissal without prejudice of the suit brought on that patent.
See Cleveland Trust Co. v. Schriber-Schroth Co., supra,
108 F.2d 112, 113. Upon an examination of the Jardine
specifications and claims, it found there described and claimed the
invention which it had previously found in Gulick and Maynard, but
which this Court had found the patentees had failed to describe and
claim in their applications.
The Jardine claims, 1, 8, and 11, which it sustained, recite the
webs as an element, but do not describe them as flexible, or point
to flexibility as an element in the invention claimed. But, in the
specifications of the patent, which, so far as now material,
appeared in Jardine's application describing the invention, he
makes specific reference to the webs constructed in such
proportions as to enable them to "bend" in response to the reaction
force of the cylinder wall on the outer faces of the guide
Page 311 U. S. 216
segments as the piston expands, and to the cooperation of the
"bending" web with the thermal expansion of the guide part of the
piston without a corresponding increase in its outer diameter.
[
Footnote 1] He explained the
principle of his device, saying,
"I have found that these difficulties can be overcome by
constructing a piston with its skirt or guide portion supported and
slotted or divided in a manner to permit deformation and deflection
of parts thereof without interfering with the performance of the
essential functions of the respective parts."
Reading specifications and claims together, the Court of Appeals
interpreted the latter as incorporating the element of web
flexibility in the combination claimed, and concluded that Jardine
had explained and claimed "the principle of operation of his
machine and the flexibility of its webs." It said that "the
knowledge that was not Gulick's, or was by him concealed, is clear
to Jardine, and by him proclaimed." It held the Jardine patent
valid and infringed, as it had found Gulick infringed in its
earlier decision.
Page 311 U. S. 217
We granted certiorari, 309 U.S. 648, on a petition which raised,
among others, the question whether the court of appeals had
misinterpreted or unduly limited this Court's earlier decision in
this case and its decision in
Permutit Co. v. Graver Corp.,
supra, by refusing to hold a patent invalid where a feature
found to be an essential element of the patented combination was
not mentioned in the claims of the patent, and was, in fact,
surrendered during the prosecution of the application, and after
adverse decisions in interferences. [
Footnote 2]
The claims of a patent are always to be read or interpreted in
the light of its specifications,
Hogg v.
Emerson, 11 How. 587;
Carnegie Steel Co. v.
Cambria Iron Co., 185 U. S. 403;
Smith v. Snow, 294 U. S. 1, and we
may assume that, if, in the present case, the specifications and
claims of the patent were to be interpreted without reference to
its file wrapper history, the webs referred to in the claims are
the webs described in the specifications as capable of bending in
cooperation with the slotted piston guides or skirts so as to
compensate for thermal expansion, and so supply the element of webs
laterally flexible which was wanting to Gulick and to Maynard. But
the particular invention to which the patentee has made claim in
conformity to the statute is not always to be
Page 311 U. S. 218
ascertained from an inspection of the specifications and claims
of the patent alone. Where the patentee, in the course of his
application in the patent office, has, by amendment, cancelled or
surrendered claims, those which are allowed are to be read in the
light of those abandoned and an abandoned claim cannot be revived
and restored to the patent by reading it by construction into the
claims which are allowed. Hence, petitioners argue, the effect to
be given to the omission from the Jardine claims of any reference
to the flexible web feature, which the court below thought
distinguished his alleged invention from that of the Gulick and
Maynard patents, cannot rightly be determined without some
examination of the claims pointing to flexible webs as a feature of
his invention, which Jardine added to his application by amendment
and later surrendered as a result of interference proceedings in
the patent office.
The Jardine patent was described as of the slipper type of
piston, although not limited to that type, the skirt consisting of
two separated parts circumferentially separated from the piston
head, supported by the webs which connect the skirt or slippers
with the piston head and support wrist pin bosses from which the
skirt is retracted or cut away. The claims of the Jardine
application, as filed or later amended and ultimately allowed, made
no reference to the webs as flexible, yielding, or resilient, which
the court of appeals found, when cooperating with other structural
elements, to be a distinguishing feature of Jardine's invention.
Claim 8 of the Jardine patent, which is typical of the three which
the court below sustained, reads:
"In a piston for an internal combustion engine, the combination
of a head having a cylindrical ring flange, oppositely disclosed
webs integral with the flange and carrying diametrically opposite
piston pin bosses, and skirt integral with said webs and cut away
to expose the sides
Page 311 U. S. 219
of said webs and separated from the ring flange by
circumferential slits and provided with a longitudinal slit
disposed between the ends of the webs."
Claims 5 and 6 refer to the "skirt portion cut away from the
head to expose the bosses."
While the application was pending, Jardine amended his claims so
as to supply this omission. In various forms, he claimed the piston
head, skirt, and web combination with piston head separated at its
flange or periphery from the skirt, the skirt slotted or separated
into parts and connected with the head by the webs, variously
described as "yielding ribs," "resilient arms," "skirt carriers . .
. susceptible of being slightly flexed radially" or as "joining
means being resiliently yieldable," or as "means for yieldingly
connecting the said skirt section with said head." These claims, as
a result of being thrown into interference with Hartog, No.
1,842,022, applied for February 16, 1920, allowed January 19, 1932,
and in some instances with Gulick and with Long, No. 1,872,772,
applied for March 7, 1919, allowed August 23, 1932, were rejected
by the patent office. Jardine then withdrew all of these
amendments. Of these amended and cancelled claims, Claim 18 [19E]
is typical. It reads as follows:
"In a piston of the class described, a cup-like head comprising
a pressure receiving end and a wall portion, a skirt,
circumferentially disconnected from the wall portion of the head
and divided from end to end, and skirt carriers connecting said
skirt to the pressure receiving end, said skirt carriers being
disconnected from the wall portion of the head and susceptible of
being slightly flexed radially."
Upon comparison of the withdrawn claim with Claim 8 of the
patent as allowed, it will be observed that both are combination
claims for a piston having a head, a divided or slotted skirt
disconnected from the wall portion of the
Page 311 U. S. 220
head and connected with the head by ribs, webs, or skirt
carriers. The only material difference in view of what has been
said to be the invention is the statement in the withdrawn claims
that the skirt carriers (webs) are "susceptible of being slightly
flexed radially" or the like. Whatever would have been the proper
construction of the claims as allowed, read in the light of the
specifications alone, there being no amendments, the question now
presented is whether, in view of the amendments and their
withdrawal, the patent can rightly be construed as including the
flexible webs in the claim allowed.
In addition to the fact of the cancellation of the only claims
specifying flexing webs or their equivalents as a feature of the
invention, it is to be noted that at no time during the prosecution
of the Jardine application did he urge that he was the inventor of
a piston having flexible webs. Before the interferences and in
distinguishing his invention from the Ricardo piston, Jardine urged
as his only advance over Ricardo the addition of the slotted skirt
which "changes the structure and the resistance to a disposal of
the forces within and without the piston when the piston is in
use," although, in this litigation, it is contended that the
Ricardo patent did not disclose flexing webs. In submitting the
final amendment cancelling the flexible web claims in interference
and presenting the claims 8 and 11 of the Jardine patent held valid
by the court below, there is no mention of flexing webs, the
features stressed being in the case of Claim 8 that the webs are
integral with the ring flange and in the case of Claim 11 that the
webs are integral with the flange and extend "convergingly
inwardly" therefrom.
It is a rule of patent construction, consistently observed, that
a claim in a patent as allowed must be read and interpreted with
reference to claims that have been cancelled or rejected, and the
claims allowed cannot, by construction, be read to cover what was
thus eliminated from
Page 311 U. S. 221
the patent.
Shepard v. Carrigan, 116 U.
S. 593;
Sutter v. Robinson, 119 U.
S. 530;
Roemer v. Peddie, 132 U.
S. 313;
Phoenix Caster Co. v. Spiegel,
133 U. S. 360;
Hubbell v. United States, 179 U. S.
77;
Weber Electric Co. v. E. H. Freeman Electric
Co., 256 U. S. 668;
I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.
S. 429,
272 U. S. 443.
The patentee may not, by resort to the doctrine of equivalents,
give to an allowed claim a scope which it might have had without
the amendments, the cancellation of which amounts to a disclaimer.
Smith v. Magic City Club, 282 U.
S. 784,
282 U. S. 790;
Weber Electric Co. v. E.H. Freeman Electric Co., supra,
256 U. S.
677-678;
I.T.S. Rubber Co. v. Essex Rubber Co.,
supra, 272 U. S. 444.
The injurious consequences to the public and to inventors and
patent applicants if patentees were thus permitted to revive
cancelled or rejected claims and restore them to their patents are
manifest.
See Leggett v. Avery, 101 U.
S. 256,
101 U. S.
259.
True, the rule is most frequently invoked when the original and
cancelled claim is broader than that allowed, but the rule and the
reason for it are the same if the cancelled or rejected claim be
narrower.
Morgan Envelope Co. v. Albany Paper Co.,
152 U. S. 425,
152 U. S. 429;
Wm. B. Scaife & Sons Co. v. Falls City Woolen Mills
Co., 209 F. 210, 213;
see Computing Scale Co. v. Automatic
Scale Co., 204 U. S. 609,
204 U. S.
620-621;
cf., in case of disclaimer,
Altoona Publix Theaters v. Tri-Ergon Corp., 294 U.
S. 477,
294 U. S.
492-493.
In view of the prior art which precluded, as the court below
held, invention in Gulick and Maynard, absent the flexible webs,
and in Jardine without the inclusion of the surrendered flexible
web feature in the patented combination, it does not appear why the
patent office allowed the broad claims after rejecting the narrower
ones. But, in any case, the patentee, having acquiesced in their
rejection, is no longer free to gain the supposed advantage of the
rejected claims by a construction of the allowed
Page 311 U. S. 222
claims as equivalent to them.
Morgan Envelope Co. v. Albany
Paper Co., supra.
The application of that principle in the present case is not
foreclosed as respondent suggests because the combination of
elements surrendered differs from the combination which the court
below found to be preserved in the allowed claims and in which it
found invention. The combination which it found to be preserved in
Jardine's claims was
"a combination with balanced skirt flexibility due to
cooperation of longitudinal and vertical slotting with flexing webs
supporting retracted bosses and connected to a skirt thereby made
responsive to physical compression and thermal expansion so as to
permit of minute clearances between piston and cylinder, a concept
perceived in Gulick as amended and minus amendment no longer
perceived."
108 F.2d 114.
But the amended and cancelled claims are to be read in the light
of the specifications. So read, cancelled claim 18 [19E], already
quoted, claims a piston "of the class described" and embraces the
combination in which the court below found invention, longitudinal
and vertical slotting, flexing webs supporting "retracted bosses"
and connected to a skirt thereby made responsive to physical
compression and thermal expansion. True, the amended and cancelled
claim and allowed claims 1, 8, and 11 did not specifically mention
retraction of the skirt from the bosses. Nor did either the amended
claims or the allowed claims specify balanced skirt flexibility due
to cooperation of the parts. For them recourse must be had to the
specifications and drawings in which the court below found the
elements of the invention which it described but in which, absent
the flexible web element, it found no invention. In view of such
want of invention and of the prior art, the only material
difference between the amended and the allowed claims is the
presence in the former of the flexible web element and, in
consequence of the surrender of the former particularizing the
flexible web feature of
Page 311 U. S. 223
the alleged invention, the latter cannot be construed as
including that feature.
We have no occasion to determine whether, in view of the prior
art, the Jardine patent disclosed invention if the flexible web
feature had not been surrendered. Without it, the court below
concluded that Jardine, like Gulick and Maynard, disclosed no
invention. It rejected the Schmiedeknecht patent, No. 1,256,265,
one of those in suit, on like grounds, saying,
"It discloses no web flexibility cooperating with other elements
of resiliency to achieve the balanced flexibility perceived in
Jardine on the basis of which alone the latter is thought to be
valid. . . ."
We accept this conclusion as supported by the evidence of the
prior art in the master's findings and the only one which could be
reached consistently with the decision below with respect to the
Gulick and Maynard patents which stand adjudged as invalid.
Reversed.
MR. JUSTICE McREYNOLDS and MR. JUSTICE ROBERTS took no part in
the consideration or decision of this case.
* Together with No. 10,
Aberdeen Motor Supply Co. v.
Cleveland Trust Co., et al., and No. 11,
F.E. Rowe Sales
Co. v. Cleveland Trust Co., et al., also on writs of
certiorari, 309 U.S. 648, to the Circuit Court of Appeals for the
Sixth Circuit. The Chrysler Corporation was joined as a party
plaintiff in the original suits, and is a nominal respondent
here.
[
Footnote 1]
An excerpt from the Jardine Specifications reads:
"The webs 6 and guide segments preferably are so designed that
this displacement of the segments 10, 10a, is permitted by virtue
of a bending of the webs 6 at points remote from the guide
segments. To this end, as shown in Fig. 4, the thickness of the
guide segments is increased toward the webs 6 and the webs 6 are
decreased in thickness from the guide portions inward toward the
bosses to points in line with the inner ends of the slots 11a. This
gives, in effect, a cantilever structure weakest at its support. .
. . Thus, the reaction force of the cylinder wall on the outer
faces of the guide segments as the piston expands tends to cause
bending of the webs 6 along said lines 13. Due to the bending of
the web sections 6 and the forcing together of each pair of
segments, the guide part of the piston may undergo a considerable
thermal expansion without a corresponding increase in the outer
diameter thereof, and thus a small initial clearance can be used
without danger of scoring or seizure of the piston."
[
Footnote 2]
A question raised by the petition for certiorari was whether
respondent could prosecute its suit for injunction in the absence,
as a party, of the licensee to whom respondent had granted the
exclusive right to manufacture, under the patents in question,
aluminum pistons, the only field in which concededly the patent has
present practical utility. The special master found against
petitioners on this point, and no exceptions were taken to his
finding, nor was the point argued when the case was first before
the circuit court of appeals and this Court. The court below
thought that, in view of these circumstances, the right of
respondents to an injunction was no longer an issue. We do not here
pass on the question, since we find that, in any case, for reasons
appearing in the opinion, no injunction should issue.