2. Claim 4, as amended, of the Nelson patent, No. 2,109,678,
relates to the structure of a resilient switch or circuit closer,
so disposed on the board of a game table as to serve as a target
which, when struck by a freely rolling ball, will momentarily close
an electrical circuit. It claims as elements of the invention a
conductor standard anchored to the table, a coil spring surrounding
the standard, means carrying the spring pendantly from the upper
portion of the standard, with the coils of the spring spaced from
the standard,
"and conductor means in said circuit and embedded in the table
at a point
Page 315 U. S. 127
spaced from the standard and engageable by a portion of the
spring when it is flexed to close the aforementioned Circuit."
Held:
(1) The word "embedded" as used in the claim embraces any
conductor means solidly set or firmly fixed in the table, whether
or not it protrudes above or below the surface. P.
315 U. S.
135.
(2) By amendment of the claim so as to describe the conductor
mean as "embedded in the table," instead of "carried by the table,"
as it stood before amendment, devices in which the conductor means
is a nail or pin driven into he table were not excluded. P.
315 U. S.
135.
(3) By such amendment, however, made to meet objections of the
Patent Office based on the prior art, the patentee restricted the
claim to those combinations in which the conductor means, though
carried on the table, is also embedded in it, recognized and
emphasized the difference between the two phrases, and proclaimed
his abandonment of all that is embraced in that difference. P.
315 U. S.
136.
(4) The amendment operates as a disclaimer of that difference,
and must be strictly construed against him. P.
315 U.S. 137.
(5) What the patentee, by a strict construction of his claim,
has lost by disclaimer cannot be regained by recourse to the
doctrine of equivalents. P.
315
U.S. 137.
119 F.2d 349, modified.
Certiorari, 314 U.S. 702, in three cases, to review the
affirmance of decrees holding a patent claim valid and infringed
and enjoining the alleged infringements.
MR. CHIEF JUSTICE STONE delivered the opinion of the Court.
Respondent began the present litigation as three separate suits
against the respective petitioners for infringement of the Nelson
Patent No. 2,109,678 of March 1, 1938, for a "contact switch for
ball rolling games." The defenses were noninvention in view of the
prior art, anticipation by prior publication, use and sale,
noninfringement
Page 315 U. S. 128
and a file wrapper estoppel. The three suits were consolidated
and tried together. Upon full consideration of the issues, the
District Court and the Circuit Court of Appeals for the Seventh
Circuit held Claim 4 of the patent valid and infringed. 119 F.2d
349.
We granted certiorari, 314 U.S. 702, on a petition which
challenged only the decree of infringement below, on the ground
that it enlarged the scope of the patent as defined by the claim,
by resort to the doctrine of equivalents, and that Nelson, the
patentee, by the amendment of his claims in the Patent Office, had
surrendered Claim 4 so far as it would otherwise read upon the
alleged infringing devices . Neither in their petition nor in their
brief and argument in this Court have petitioners contended that
the patent is invalid for want of invention. Although there is no
conflict of decision, we were moved to grant the petition by the
nature of the questions presented, together with a showing that the
industry affected by the patent is located in the seventh circuit,
so that litigation in other circuits resulting in a conflict of
decision would not be likely to occur.
The patent relates to the structure of a resilient switch or
circuit closer, so disposed on the board of a game table as to
serve as a target which, when struck by a freely rolling ball, will
momentarily close an electrical circuit. Specifications and
drawings disclose a target or switch comprising a conductor
standard mounted in the table and carrying a coil spring having a
leg pendantly disposed in a conductor ring located in the table and
slightly offset from the standard. The standard and ring are wired
in a circuit with a relay coil and a source of electrical energy.
When a ball rolling on the table bumps the coil spring from any
direction, the leg of the spring is deflected momentarily bringing
it into contact with the ring, so as to close the circuit for
operating the relay coil and any connected auxiliary game device.
Any desired
Page 315 U. S. 129
number of targets may be placed on the board in a suitably
spaced relationship; in pin ball games, a single ball may
successively bump and close a number of the switch devices. In
describing his invention, the patentee declared it to be his
intention
"to cover all changes and modifications of the example of the
invention herein chosen for purposes of the disclosure, which do
not constitute departures from the spirit and scope of the
invention."
The prior art as disclosed by the record shows no device in
which the coil spring serves both as a target and a switch. The
advantages of the device are said to be that the combination is
peculiarly adapted to use in pin ball games; that the coil spring
structure is so organized as to form both a switch for operating
auxiliary recording or signaling devices and a target which is
accessible from any direction.
Claim 4* claims as the elements of the invention the conductor
standard anchored in the table, the coil spring surrounding the
standard which carries the spring pendantly from its top, with the
spring spaced from the standard to enable the spring to be
resiliently flexed,
"and conductor means in said circuit and embedded in
Page 315 U. S. 130
the table at a point spaced from the standard and engageable by
a portion of the spring when it is flexed to close the
aforementioned circuit."
The drawings of the patent show the "conductor means" last
mentioned in the form of a ring or ferrule set in the table with
its axis at right angles to the table and with its flange
projecting slightly above the surface of the table. The leg pending
from the coil spring is so disposed at the center of the annular
ferrule that a ball striking the spring in any direction will bring
the pendant leg into contact with the ring so as to close the
circuit.
The six devices alleged to infringe the patent differ from the
particular claim of the invention described in the specifications
only in the specific form and method of supporting the "conductor
means" which is "engageable by a portion of the spring when it is
flexed." In two of the accused devices, plaintiff's Exhibits 5 and
7, there is substituted for the ring conductor set in the table a
nail or pin driven into the table and surrounded near its upper end
by a ring attached to the end of the resilient coil spring, or
formed there of the coil wire. When the spring is struck, the
circuit is closed by the contact of ring and nail at a point above
the table. This arrangement contrasts with that of the conductors
as shown in the patent drawings, in which a ring set in the table
and the pendant leg of the coil form the contact at a point near or
below the surface of the table. In the one case, the ring conductor
is supported by the table and the complementary conductor is
attached to or is formed of the wire of the spring at its end. In
the other, the locations of the ring and of the complementary
conductor are reversed.
Two others of the accused devices, plaintiff's Exhibits 6 and
10, show a further alteration. In Exhibit 6, the nail or pin,
instead of being driven directly into the table, is affixed to and
supported by a metal plate resting
Page 315 U. S. 131
on the upper surface of the table with the coil spring standard
passing through it and holding it firmly on the table. The
conductor extends to the wire connection through a hole in the
table underneath the plate. In Exhibit 10, the conductor is
insulated from the plate, which is rigidly anchored to the coil
spring standard, which in turn is anchored to the table.
In the remaining two accused devices, plaintiff's Exhibits 8 and
9, an insulating core or sleeve surrounds the coil standard and
supports an annular or enveloping conductor wired in the circuit,
spaced and insulated from the coil standard so that the circuit is
closed by contact of the conductor and the coil when it is flexed.
In Exhibit 8, the sleeve is electrically connected with a metal
plate, held in position on the top of the table by the standard
which passes through the plate. A wire leading from the plate
passes through a hole in the table underneath the plate. In Exhibit
9, the annular conductor is located above the table top and a wire
leading from it passes through a hole in the table.
Comparison of the several accused devices shows that, in all but
Exhibits 5 and 7, the conductor means complementary to the coil
spring is not embedded in the table, but is supported by an
insulated plate resting on the table or an insulating core held in
position by the standard. In Exhibits 6 and 10, the conductor means
passes to its wire connection through a hole in the table
underneath the plate. In Exhibit 8, the connecting wire passes
through a hole in the table to a metal plate resting on its
surface, and, in Exhibit 9, to the conductor means located above
the surface of the table.
Petitioners insist that respondent is estopped to assert
infringement by the file wrapper record in the Patent Office and,
in any event, that estoppel can be avoided and infringement
established only by resort to the doctrine of equivalents, which
they assert is incompatible
Page 315 U. S. 132
with the statutory requirements for the grant of a patent and
with the doctrine that the patent claims measure the patented
invention.
The file wrapper history, so far as now relevant, relates to
Claim 7, which, after amendment, was allowed as Claim 4 now in
issue. The original Claim 7 with its amendments is set forth as
follows, matter added by amendment in parentheses, matter stricken
in italics.
(4)
7. In a ball rolling game having a sub-
stantially horizontal table over which balls are
rollable,
the combination with said table of a substantially
vertical standard anchored in said table with its
lower
end carrying on the underside of the table a
lead for an
A1 electric circuit and its upper end extending
a substantial distance above the top surface
of the table, a
coil spring surrounding the standard, means car-
rying
said spring pendantly from the upper portion of
the
per C standard (ABOVE THE TABLE) with the
coils of the spring spaced from the
" " standard
and the lower end of the coil spring
terminating
" "
at a distance above the top surface of the
table
to enable the spring to be resiliently flexed
when bumped
by a ball rolling on the table, said spring being
in the
aforementioned circuit and constituting a
conductor, and
per B
other conductor means (IN SAID CIRCUIT
AND EMBEDDED IN)
carried by the table
at a point
spaced from the standard and engageable by a
Page 315 U. S. 133
portion of
the spring when it is flexed to close the afore-
mentioned
circuit.
The original application contained six claims, all of which the
examiner rejected because he thought no patentable significance had
been shown. The inventor submitted certain amendments, and two new
claims, 7 and 8, and induced the examiner to reconsider the
patentability of the invention. Four of the claims were then
allowed, but the examiner rejected Claim 7 as failing to claim the
invention. He said:
"It is old in the art to make an electrical contact by flexing a
coil spring as shown by the art already cited in the case. In order
to distinguish over the references therefor, the applicant's
particular type of contact structure, comprising an extension to
the coil spring adapted to engage an annular contact embedded in
the table, must appear in the claims. . . ."
Applicant rejected the examiner's suggestion that the "contact
structure" be adapted to engage "an annular contact embedded in the
table." Instead, he cancelled "other" from the claim and
substituted for "carried by" the phrase, "in said circuit and
embedded in," saying Claim 7 has been "significantly amended" "to
define the complementary conductor contact as being embedded in the
table." He added that "it is too far to go to state that the
specific leg 19 must be defined," and
"the allowed claims can, it seems, be very simply avoided by
taking the leg 19, separating it from the spring 18 and embedding
it as a pin in the table so that the spring when flexed would
contact the pin. . . . Claim 7 covers such alternative form, and .
. . , in justice to applicant . . . , should be allowed."
The examiner, in reply, recognized as "true" applicant's
suggestion that, if the leg pendant from the spring "were removed
from the spring and embedded in the table, an
Page 315 U. S. 134
operative device would result," but pointed out that the device
claimed by the amendment "would be inoperative as the coil spring
could not both terminate at a distance above the table and extend
into a ferrule embedded therein." Thereupon the applicant added to
the claim the words "above the table" and cancelled the phrase,
"and the lower end of the coil spring terminating at a distance
above the top surface of the table." The claim as amended was then
allowed as Claim 4.
The claim before amendment plainly read on plaintiff's Exhibits
5 and 7, in which the nail or pin conductor is driven into the
table, since the nail or pin is a "conductor means carried by the
table" "engageable by a portion of the spring when flexed." The
claim thus read is for an operative device, since the nail or pin
projects above the table and may be engaged by the coil spring
similarly located. The claim, as amended and allowed as Claim 4,
likewise reads on plaintiff's Exhibits 5 and 7 if the nail or pin
conductor which is driven into the table is "embedded in the
table."
Petitioners do not seriously assert here that it is not so
embedded. In fact, their brief expressly states that "we pass this
contention." They could not well do otherwise, for the pin or nail,
even though it protrudes above or below the table, not only
conforms to the dictionary definition of "embed," "To set solidly
as in a bed," Webster; "To fix firmly in a surrounding mass of some
solid material," Oxford Dictionary, but examination of the drawings
and specifications indicates clearly enough that the claim was not
intended to be limited to a complementary conductor located wholly
between the upper and nether surfaces of the table. The
specifications and drawings express no such limitation, and it is
clear that the use of the word "embedded" in the claim as finally
amended, when read in its context of claim and specifications, does
not indicate such a limitation.
Page 315 U. S. 135
The patent drawings show the embedded ring conductor extending
slightly both above and below the table. The examiner, in his
second rejection of Claim 7, in saying that, if the leg pendant
from the spring were removed from the spring and "embedded" in the
table, an operative device would result, could not have referred to
the embedded leg or nail as being wholly located below the surface
of the table, since the pin so disposed would not be "engageable"
"by a portion of the spring when it is flexed" by a ball rolling in
any direction. The term is to be read as used in a permissible
sense which would conform to the drawings and the function which
the conductor to which the term was applied was obviously intended
to perform.
We think that the word "embedded," as applied in Claim 4, must
be taken to embrace any conductor means solidly set or firmly fixed
in the table, whether or not it protrudes above or below the
surface. Claim 7, before amendment, read on the accused devices,
plaintiff's Exhibits 5 and 7, which exhibit the nail or pin
embedded in the table but protruding above its surface.
Consequently, the patentee, by amending the claim so as to define
the conductor means as embedded in the table, did not exclude from
the amended claim devices exemplified by these exhibits, and they
must be deemed to be infringements.
There remains the question whether respondent may rely upon the
doctrine of equivalents to establish infringement by the four other
accused devices. Respondent concedes that the conductor means in
the four devices are not literally "embedded in the table," but
insists that the changes in structure which they exhibit over that
of plaintiff's Exhibits 5 and 7 are but the mechanical equivalents
of the "conductor means embedded in the table" called for by the
amended claim, and so are entitled to the protection afforded by
the doctrine of equivalents. Petitioners do not seriously urge that
the conductor means in the
Page 315 U. S. 136
four accused devices are not mechanical equivalents of the
conductor means embedded in the table which the patent claims.
Instead, they argue that the doctrine should be discarded because
it does not satisfy the demands of the statute that the patent
shall describe the invention. R.S. § 4888, 35 U.S.C. § 33.
We do not find it necessary to resolve these contentions here.
Whatever may be the appropriate scope and application of the
doctrine of equivalents, where a claim is allowed without a
restrictive amendment, it has long been settled that recourse may
not be had to that doctrine to recapture claims which the patentee
has surrendered by amendment.
Assuming that the patentee would have been entitled to
equivalents embracing the accused devices had he originally claimed
a "conductor means embedded in the table," a very different issue
is presented when the applicant, in order to meet objections in the
Patent Office, based on references to the prior art, adopted the
phrase as a substitute for the broader one "carried by the table."
Had Claim 7 been allowed in its original form, it would have read
upon all the accused devices, since in all the conductor means
complementary to the coil spring are "carried by the table." By
striking that phrase from the claim and substituting for it
"embedded in the table" the applicant restricted his claim to those
combinations in which the conductor means, though carried on the
table, is also embedded in it. By the amendment, he recognized and
emphasized the difference between the two phrases, and proclaimed
his abandonment of all that is embraced in that difference.
Hubbell v. United States, 179 U. S.
77,
179 U. S. 83;
Weber Electric Co. v. Freeman Electric Co., 256 U.
S. 668,
256 U. S.
677-678;
I.T.S. Rubber Co. v. Essex Rubber Co.,
272 U. S. 429,
272 U. S. 440,
272 U. S. 444;
Smith v. Magic City Kennel Club, 282 U.
S. 784,
282 U. S. 789;
Schriber-Schroth Co. v.
Cleveland Trust Co.,
Page 315 U. S. 137
311 U. S. 211;
cf., in case of disclaimer,
Altoona Theaters v.
American Tri-Ergon Corp., 294 U. S. 477,
294 U. S.
492-493. The difference which he thus disclaimed must be
regarded as material, and, since the amendment operates as a
disclaimer of that difference, it must be strictly construed
against him.
Smith v. Magic City Kennel Club, supra,
282 U. S. 790;
Shepard v. Carrigan, 116 U. S. 593,
116 U. S. 598;
Goodyear Dental Vulcanite Co. v. Davis, 102 U.
S. 222,
102 U. S. 228.
As the question is one of construction of the claim, it is
immaterial whether the examiner was right or wrong in rejecting the
claim as filed.
Hubbell v. United States, supra,
179 U. S. 83;
I.T.S. Rubber Co. v. Essex Rubber Co., supra, 272 U. S. 443.
It follows that what the patentee, by a strict construction of the
claim, has disclaimed -- conductors which are carried by the table
but not embedded in it -- cannot now be regained by recourse to the
doctrine of equivalents, which, at most, operates, by liberal
construction, to secure to the inventor the full benefits, not
disclaimed, of the claims allowed.
Plaintiff's Exhibits 5 and 7 do, and its Exhibits 6, 8, 9 and 10
do not, infringe. The judgments will be modified accordingly.
Modified.
MR. JUSTICE ROBERTS took no part in the consideration or
decision of this case.
* Together with No. 155,
Genco, Inc. v. Ace Patents
Corporation, and No. 156,
Chicago Coin Machine Co. v. Ace
Patents Corporation, also on writs of certiorari, 314 U.S.
702, to the Circuit Court of Appeals for the Seventh Circuit.
**
"4. In a ball rolling game having a substantially horizontal
table over which balls are rollable, the combination with said
table of a substantially vertical standard anchored in said table
with its lower end carrying on the underside of the table a lead
for an electric circuit and its upper end extending a substantial
distance above the top surface of the table, a coil spring
surrounding the standard, means carrying said spring pendantly from
the upper portion of the standard above the table with the coils of
the spring spaced from the standard to enable the spring to be
resiliently flexed when bumped by a ball rolling on the table, said
spring being in the aforementioned circuit and constituting a
conductor, and conductor means in said circuit and embedded in the
table at a point spaced from the standard and engageable by a
portion of the spring when it is flexed to close the aforementioned
circuit."
MR. JUSTICE BLACK, dissenting, with whom MR. JUSTICE DOUGLAS
concurs.
I think the judgments below should be reversed in full.
There can be no infringement of a void patent, and a patent
which shows neither invention nor discovery is void. [
Footnote 1] The mere application of an old
mechanical instrument
Page 315 U. S. 138
to a new use is not an invention and therefore not patentable.
[
Footnote 2]
The combination patented here contains not a single new element.
The whole device is nothing more than an electric switch mounted on
a table, which closes and opens with the flexing and reflexing of
an ordinary coil spring when hit by a rolling ball. The spring,
standing upright on the table, serves as a target in a pin ball
game, its resiliency being utilized not only to make and break the
circuit, but to make the ball rebound.
The Constitution authorizes the granting of patent privileges
only to inventors who make "discoveries." And the statute provides
for the granting of patents only to those who have "invented or
discovered" something "new." To call the device here an invention
or discovery such as was contemplated by the Constitution or the
statute is, in my judgment, to degrade the meaning of those
terms.
Patentees have rights given them by law.
"But the public has rights also. The rights of both should be
upheld and enforced by an equally firm hand, wherever they come
under judicial consideration. [
Footnote 3]"
By failing to assign error on the issue of patentability,
parties to an infringement suit should not be permitted to
foreclose a court from protecting the public interest. And here, as
in other cases where there is plain error, we should notice it.
[
Footnote 4]
[
Footnote 1]
Dunbar v. Myers, 94 U. S. 187;
Thompson v. Boisselier, 114 U. S. 1;
Saranac Mach. Co. v. Wirebounds Co., 282 U.
S. 704.
[
Footnote 2]
Phillips v.
Page, 24 How. 164;
Paramount Corp. v. American
Tri-Ergon Corp., 294 U. S. 464.
[
Footnote 3]
Densmore v. Scofield, 102 U. S. 375,
102 U. S. 378.
[
Footnote 4]
Sibbach v. Wilson & Co., 312 U. S.
1,
312 U. S. 16.