1. The Court considered as a reason for the granting of
certiorari to review a decision of a Circuit Court of Appeals
sustaining claim of a patent as to which there was no conflict of
decision, the fact that the patent dominated a substantial portion
of an industry so concentrated in one circuit that a conflict of
decision was unlikely. P.
315 U. S.
765.
2. Claims 11, 12, 13 and 14 of Johnson patent No. 1,716,962, for
an alleged invention to overcome cavitation in the operation of
relatively large and fast outboard motors,
held invalid
under R.S. § 4866, because of public use, or sale, of devices
embodying the alleged invention, more than two years before the
first disclosure thereof to the Patent Office. P.
315 U. S.
768.
3. Upon the record in this case,
held that a decision
by this Court of the question under R.S. § 4866 was not foreclosed
by the obscurity of its presentation in the courts below. P.
315 U. S.
768.
119 F.2d 404 reversed.
Certiorari 314 U.S. 594, to review a judgment which reversed a
judgment of the District Court, and held the claims of a patent
valid and infringed.
MR. JUSTICE JACKSON delivered the opinion of the Court.
We are required in this case to determine the validity of claims
numbered 11, 12, 13, and 14 of letters patent No.
Page 315 U. S. 760
1,716,962, granted on June 11, 1929, to Harry L. Johnson for
invention in a "water propulsion device." Respondent Johnson
Brothers Engineering Corporation is the owner of the patent, and
respondent Outboard, Marine & Manufacturing Company, is the
exclusive licensee thereunder. Petitioner Muncie Gear Works, Inc.,
manufactured outboard motors which are claimed to infringe, and
petitioner Bruns & Collins, Inc., sold them.
Respondents contend that this as a validly issued patent
covering an invention which solved the problems of "cavitation" by
relatively large and fast outboard motors. "Cavitation" is the
drawing of air by the propeller from above the surface of the water
to the propeller itself. Air so drawn reduces the propulsive effect
of the propeller and causes "racing" of the motor, with consequent
risk of its disintegration and danger to the user. Increased speed
or power entails a greater tendency to cavitate. Cavitation may be
diminished by setting the propeller deeper in the water, but this
increased projection increases resistance and retards speed.
Long before the patent in question, it was known that cavitation
could be controlled, and, in practice, it was controlled, in at
least all but relatively large and fast outboard motors, by setting
a flat plate horizontally above the propeller and beneath the
surface of the water, to act as a baffle and prevent the propeller
from drawing air. [
Footnote 1]
Respondents presented expert testimony to the effect that
relatively large and fast water-cooled outboard motors cannot be
successful unless they embody the asserted invention which
respondents say is the subject matter of the claims in question. In
general, this may be said to consist in the use of an
anti-cavitation plate on a housing for the engine and propeller
shafts enclosing the water passages for the cooling system, shaped
both above and
Page 315 U. S. 761
below the plate so as to reduce water displacement and
resistance, and thus to reduce or eliminate eddy currents forming
vortexes through which air can be sucked into the propeller. This
permits adequate control of cavitation by means of a not unduly
large anti-cavitation plate.
Harry L. Johnson, an experienced engineer and manufacturer of
outboard motors, filed his application for the patent on August 25,
1926, but it in no way suggested the combination now asserted as
his invention. The single sheet of drawing accompanying the
application was not changed during the prosecution of the
application, and is the same as the drawing of the issued patent.
This drawing showed an outboard motor assembly comprising, among
other things, an engine at the top connected with a propeller at
the bottom, with an anti-cavitation plate located horizontally
above the propeller approximately midway between top and bottom of
the housing for the engine and propeller shafts. All water passages
for the cooling system beneath the normal water level were shown to
be enclosed in the housing. No cross-section of this housing was
drawn or indicated, and, for all that appears from the drawing, it
might have been circular, triangular or rectangular. The drawing
showed an arched member extending from the housing and
anti-cavitation plate over the top and to the rear of the
propeller, containing openings and passages for the intake and
discharge of water, and ending in a curved "deflection plate"
extending rearwardly like a fixed rudder. From the specifications
and claims, it appeared that the purpose of the deflection plate
was to compensate for the side and pivotal force of the moving
propeller, which tended to draw the boat off its course unless the
operator made constant adjustment to offset the "side throw." The
specifications and drawings both indicated an anti-cavitation plate
which the specifications said "prevents cavitation," but it was in
no way asserted that the cavitation plate was new, or that it
Page 315 U. S. 762
was being employed in any novel cooperative relation to the
other elements.
All of the claims of the application as originally made were
rejected on December 15, 1926. On December 13, 1927, Johnson
offered amendments which retained and amended the prior claims and
added others directed to the feature of the deflection plate. In
urging allowance, he said, among other things: "It is conceded that
cavitation plates are old in the art as shown in the patent to
Johnson cited," and he proceeded to urge as an invention the
combination of the cavitation plate and the arching member of
reflection plate. A similar supplemental amendment was filed on
January 19, 1928. Several of the original claims as amended were
allowed, and the rest of the claims rejected, on June 7, 1928.
On December 8, 1928, Johnson came forward with new claims.
Claims 20 to 25 offered by this amendment made no mention of the
deflection plate or of the arching members, but did not even
suggest the presently asserted invention. On March 30, 1929,
Johnson cancelled these claims and offered further amendments to
his original application, together with a supplemental oath that he
had invented the subject matter of the application as so amended,
prior to the filing of the original amendment. [
Footnote 2] The effect of those changes was aptly
described by the patent examiner: "The amendments have been such
that the claims now emphasize the anti-cavitation plate, rather
than the anti-torque plate." With changes which are immaterial
here, the new claims so offered became the claims in issue. In
them, Johnson, for the first time, made claims relating to the
exterior surface of the housing. Claim 12 described the housing as
having "unbroken outer wall surfaces at each side," and claim 14,
as having
Page 315 U. S. 763
"smooth and unbroken walls." Claims 11 and 13 were silent on the
subject. The amendment also set forth an addition to the
description which was incorporated in the description of the patent
as issued. Here, we find the expression "relatively smooth and
substantially streamline surfaces." Other than these, no indication
of the nature of the surface or cross-section of the housing was
given at any time during the prosecution of the application.
The petitioners interposed defenses to all of the eight patents
upon which respondents sued them in the District Court for the
Northern District of Illinois, Eastern Division [
Footnote 3] which we take to have put in
issue the question whether the claims were void because made more
than two years after the first public use of the device. [
Footnote 4]
Page 315 U. S. 764
At the trial, two of the officers of respondent Outboard, Marine
& Manufacturing Company testified on direct examination as
respondents' witnesses to the effect that, in January or February
of 1926, one of this respondent's predecessors put on the market
licensed outboard motors equipped with smooth-walled housings,
anti-cavitation plates, and internal water passages as described in
the claims in suit, and that at least one competitor (which was
also a predecessor) had brought out a substantially similar, but
unlicensed, motor about a year later. [
Footnote 5]
Page 315 U. S. 765
In an unreported decision, the District Court did not touch on
this question, but found as a matter of fact and of law that the
claims in question were invalid because merely aggregational. On
appeal to the Circuit Court of Appeals, the issue of sale or public
use was not clearly presented, [
Footnote 6] if indeed it was presented at all, and the
opinion rendered by that Court did not advert to it, although it
held that the claims here involved were valid and infringed. 119
F.2d 404. While there was no conflict
Page 315 U. S. 766
of decision with respect to these claims, [
Footnote 7] we granted certiorari in view of the
questions presented and because the patent dominates a substantial
portion of an industry so concentrated in the Seventh Circuit that
litigation in other circuits, resulting in a conflict of decisions,
is unlikely. 314 U.S. 594.
Schriber-Schroth Co. v. Cleveland
Trust Co., 305 U. S. 47.
Section 4886 of the Revised Statutes, as amended and applicable
to the present case, provided for the issuance of a patent to an
inventor upon certain conditions, one of which was that his
invention was "not in public use or on sale in this country for
more than two years prior to his application." [
Footnote 8]
In an effort to avoid the effect of this provision, respondents
contend that the question of its applicability was not raised
either in the District Court or in the Circuit Court of Appeals,
that there was no opportunity to meet the issue, and that the
invention as finally claimed was disclosed by the application as
originally made, or, in any event, as amended on December 8,
1928.
However, the evidence of public use and sale, given, as we have
pointed out, by respondents' own officers and witnesses, [
Footnote 9] has not been questioned or
contradicted, and
Page 315 U. S. 767
is interpreted by respondents' counsel in accordance with our
view of it. In their brief, they say,
"It is true that, after Johnson Motor Company, licensee under
the patent in suit, had popularized devices embodying the subject
matter of the claims in suit, at least one competitor copied the
combinations of the claims in suit from the Johnson motor before
claims closely resembling those in suit were presented to the
Patent Office in December, 1928. This was done by Lockwood Ash
Motor Company, then a competitor, but subsequently merged to
constitute a predecessor of Respondent, Outboard, Marine &
Manufacturing Company. . . . Lockwood Ash first adopted this
combination for the 1927 season. The model year commenced in
January or February. . . . Concededly, the original claims were
limited additionally either to the deflection plate or to the
arched support. But claims without these limitations had, contrary
to Petitioners' assertions, been filed December 8, 1928. The
difference in date is critical, because the record shows that the
only manufacture of devices embodying the invention which had
occurred more than two years prior to December 8, 1928, was
licensed manufacture by Johnson Motor Company, predecessor of
Respondent Outboard, Marine & Manufacturing Company, and, in
1926, exclusive licensees of Respondent Johnson Brothers
Engineering Corporation, owner of the application for the patent in
suit. . . . The only concern which produced outboard motors in
accordance with the invention of the patent in 1926 was the
exclusive licensee under the application for the patent in suit. .
. . March, 1929, would be more than two years after the opening of
the 1927 model year; but the actual date in December, 1928, when
the patentee claimed the specific invention in controversy, without
regard to deflection plate or arched support, was well within two
years of the first competitive use of the invention, even assuming
that the
Page 315 U. S. 768
two-year period is of any significance in the present case. . .
."
It is clear to us, however, that the amendments of December 8,
1928, like the original application, wholly failed to disclose the
invention now asserted.
The claims in question are invalid if there was public use, or
sale of the device which they are claimed to cover, more than two
years before the first disclosure thereof to the Patent Office.
Cf. Railway Co. v. Sayles, 97 U. S.
554,
97 U. S.
557-559,
97 U. S.
563-564;
Schriber-Schroth Co. v. Cleveland Trust
Co., supra, at
305 U. S. 57.
Section 4886 of the Revised Statutes would in terms provide for
their invalidity, had they been offered by application rather than
by amendment, and, whatever may be the efficacy of an amendment as
a substitute for an application, it surely can effect no more than
the application itself.
We think the conclusion is inescapable that there was public
use, or sale, of devices embodying the asserted invention more than
two years before it was first presented to the Patent Office. We
are not foreclosed from a decision under Section 4886 on the point
by the obscurity of its presentation in the courts below. This
issue has been fully presented to this Court by the petition for a
writ of certiorari and in subsequent briefs and argument, and there
is not the slightest indication that respondents have been
prejudiced by such obscurity. To sustain the claims in question
upon the established and admitted facts would require a plain
disregard of the public interest sought to be safeguarded by the
patent statutes, and so frequently present but so seldom adequately
represented in patent litigation.
We therefore hold that the claims in question are invalid under
Section 4886 of the Revised Statutes, and accordingly have no
occasion to decide any other question in the case.
Reversed.
[
Footnote 1]
Smith, No. 1,226,400 (1917); Johnson, No. 1,467,641 (1923).
[
Footnote 2]
No question has ever been raised in this case respecting the
veracity of this oath.
Cf. Elizabeth v. American Nicholson
Pavement Co., 97 U. S. 126,
97 U. S.
130.
[
Footnote 3]
The patent here involved and two others were litigated in one
suit, with which was consolidated another suit involving five other
patents. One of the patents was withdrawn prior to trial, and the
courts below disposed of six of the seven remaining patents
adversely to the respondents.
[
Footnote 4]
These read as follows:
"The defendants are informed and believe, and therefore aver,
that each of the Letters Patent in suit was and is void and of no
effect in law in that the alleged inventions or improvements
described therein were invented by, or known to, or used by others
in the United States before the alleged inventions of the said
patentees of the patents in suit, and for more than two years prior
to the respective applications for said patents, among which prior
inventors and users and those having prior knowledge are the
patentees and their assigns of the several Letters Patents named in
the annexed schedule 'A,' at the places and addresses named in said
Letters Patent, and other prior inventors, users and those having
prior knowledge the names of whom, and the times and places of such
other public uses, being at the present time unknown to defendants,
but which, when fully ascertained, defendants pray leave to insert
in this Answer by amendments thereto. [No such amendment was ever
made or attempted.]"
"Defendants are informed and believe, and therefore aver, that
each of the Letters Patent in suit is invalid and void for the
reason that the alleged invention thereof purported to be patented
thereby are not the same as were disclosed in the application
therefor as originally filed, but are substantially different from
any invention indicated, described, or suggested in the original
applications therefor; that the applications therefor were amended
in the specification and claims during the prosecution thereof, and
the alleged patented subject matter is not supported by oath, as
required by law; that the said applications were unlawfully
enlarged during the prosecution thereof, and that the claims of
said Letters Patent are invalid and void for the reason that they
include matter not shown or adequately described in the said
patents."
[
Footnote 5]
Tanner, Vice President in charge of the sales of the Johnson
Motors Division, testified as follows:
"Q. Are you familiar with the type of lower unit construction
which is shown on this chart reproduced from the drawings of the
Johnson patent No. 1,716,962?"
"A. I am."
"Q. Do you recall when such a construction was introduced to the
market, and by whom?"
"A. To the best of my recollection it was for the model year of
1926, which would mean it was probably introduced about January or
February of 1926."
"Q. By whom?"
"A. By Johnson Motor Company."
"Q. At that time, was Evinrude Motor Company a competitor of
Johnson Motor Company?"
"A. Yes, they were."
"Q. At that time, was Elto Motor Company a competitor of Johnson
Motor Company?"
"A. Yes."
"Q. At that time, was Lockwood-Ash Motor Company a competitor of
Johnson Motor Company?"
"A. Yes."
"Q. What was the result of the introduction of this model by
Johnson Motor Company in 1926?"
"A. As far as I was concerned, I was connected with the
Lockwood-Ash Motor Company that was making a motor in 1926 and not
having that combination; and, not having it, we did not have the
satisfactory performance that the Johnson combination had."
"Q. In what respect did your motor not have as satisfactory a
performance?"
"A. It had cavitation."
"Q. What did your motor lack particularly of the structure shown
in this Johnson patent?"
"A. We did not have an anti-cavitation plate."
"Q. What did you do to remedy this difficulty?"
"A. In the fall of 1926, for the 1927 model year, we put on an
anti-cavitation plate."
"Q. Did that remedy your difficulty, so far as cavitation was
concerned?"
"A. Yes."
"Q. Do you know what was done by Evinrude and Elto?"
"A. My recollection is that, possibly not at the same moment, I
doubt Evinrude did the same year, put on an anti-cavitation plate
on the stream line housing. I don't remember clearly whether Elto
did it that year or the next, but they subsequently did put on the
same combination."
Irgens, Chief Engineer and Production Manager of the Evinrude
Division, testified as follows:
"Q. How long has it been true that all of the larger sizes of
outboard motors have been equipped with smooth walled lower unit
housings, anti-cavitation plates intermediate the top and bottom
thereof, and internal water passages."
"A. They became popular about 1926, and from then on practically
all of them have been made that way."
[
Footnote 6]
The brief of petitioners in the Circuit Court of Appeals, which
has been certified to this Court by the Clerk of that Court,
contained the following statement under the heading of
anticipation:
"In considering these claims, it is appropriate to first have in
mind their historical background, in view of the importance that
Plaintiffs place upon them as being for subject matter that 'solved
a problem' previously 'stalling' a great industry. In the first
place, the subject matter of these claims was in no way considered
in or made a part of the original application. . . . It was not
until more than two years later that the patentee, on December 6,
1928, by his amendment 'C,' added claims to his application
covering any of the matter that is now deemed to be of such great
importance. Then, for the first time, the patentee claimed, in
claims originally numbered 17 to 25, inclusive, the anti-cavitation
plate apart from the limitations which characterized his originally
filed disclosures and originally filed claims."
[
Footnote 7]
They had previously been sustained by a District Court in the
Sixth Circuit.
Johnson Brothers Engineering Corp. v. Caille
Bros. Co., 8 F. Supp. 198. Caille is no longer in the
business.
[
Footnote 8]
The period is now one year. Act of August 5, 1939, 53 Stat.
1212, 35 U.S.C. § 31.
[
Footnote 9]
See footnote 5
supra.