Appellants Reply Brief — Webster Co. v. Splitdorf Co.

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UMTED STATES CIRCUIT COURT OF APPEALS

No. 2769.

SPLITDORF ELECTRICAL COM PANY,

Defendant-Appellant,

vs.

WEBSTER ELECTRIC COMPANY,

Plaintifl-Appellee.

REPLY TO APPELLANT'S “ANSWER TO PLAINTIFF-APPELLEE'S

PETITION FOR REHEARING."

Appellant’s answer to appellee’s petition for a rehear-

ing is convineing that the rehearing should be granted,

for it concedes that the court’s opinion does not allude

to that difference between Kane and Weber which the

record proves is vital and of the essence of Kane’s in-

vention.

Although appellant’s answer alleges that this uneon-

sidered difference between Kane and the prior art ‘‘is

pertectly plain,’? and was discussed in the main briefs

before this court, the answer consists wholly of an in-

volved argumeut allegedly addressed to the merits of

this unconsidered question. The argument in reality,

however, is largely directed to that minor difference be-

tween Kane and Weber which the court has already con-

sidered.

In the present situation there is no opportunity, and it

would be improper to argue at length the merits of this

undecided question of invention. To secure that oppor-

tunity is the function of the petition. In our petition, we

pointed out some parts of the record and briefly outlined

our Views, in order to show to the court that there ex-

ists this fundamental question to which its opinion does

not allude. In this reply it is equally impossible and im

proper fully to discuss the facts and argue the merits of

this undecided question, but we do fee! compelled to indi-

eate briefly that the arguments suggested in appellant’s

answer are wholly refutable.

Appellant’s argument, as did the court’s opinion,

treats the preservation of merely mechanical synchro

nism between the separation of the electrodes and the

movement of the armature shaft as the gist of Kane’s

invention, This is an obviously ‘political move’? in-

tended, no doubt, to suggest to the court that it has con

sidered and decided upon the important difference be-

tween Kane and Weber. This matter of mechanical syn

ehronism is a relatively minor feature of the Kane in-

vention, and has to do solely with that difference between

Kane and Weber which the court has already considered.

We do not question the court’s decision on that matter,

Appellant’s argument glosses over and belittles (and

the court’s opinion does not allude to) the vital differ-

ence between Kane and the prior art which constitutes

the very essence of the Kane invention.

Kane for the first time in the art produced a magneto

ignition equipment which could be operated cither on the

engine or off the engine, and in which the observable

spark when off the engine is and must be identical with

——

3

the mnobservable spark when on the engine. The Kane

unitary equipment, when removed from the engine to be

cleaned and tested, is capable of absolute test because it

operates in precisely the same way to produce identically

the same spark, whether it is on or off the engine. This

is wholly untrue of Weber or of anything that preceded

Kane—it was a new result never before achieved, and

is the foundation of the suceess of magneto ignition

equipment for stationary engines. This is the essence

of the Kane invention, and it is due wholly to that differ-

ence between Kane and Weber to which the court’s opin-

ion makes no allusion,

Appellant’s answer urges (page 9) that

“it was quite impracticable to retract (Kane’s) ar-

mature against the resistance of its springs with

one’s fingers or hands, when the magneto was de-

tached from the engine, and it was not practical to

do it in any definite or useful Way with any mechani-

cal device prior to the Podlesak invention.’?’

This statement is Wholly unfounded in fact, and can

be so demonstrated. The Podlesak invention, however,

does offer a striking demonstration of the essential dif-

ference between Kane and Weber. The Podlesak inven-

tion referred to is the starting lever 4-5 of Podlesak’s

patent 1,101,956 (Exhibit Book, page S98). This lever

provides a convenient means for cocking and releasing

the retor of the magneto Which, on its release, is re-

turned to its normal position by the action of the driving

spring mechanism precisely as if it had been cocked and

released by the engine itself, But if Weber’s magneto

be removed from its engine, it eould not be operated in

any manner whatever by this lever (which was designed

by Podlesak as an addition to Kane), because of the ab-

sence of the driving spring mechanism, The fact that

this lever is operative in an effective and valuable man-

her in the one case, while it is of no utility whatever in

4

the other case, is simply another demonstration of the

inherent difference between Kane and Weber.

This vital difference between Kane and Weber, con-

cerning which the court’s opinion is silent, also has an

important result in the matter of synchronism, which

the court did not appreciate or mention in its discussion

of synchronism, and which appellant’s answer ignores.

The merely mechanical svnehronism between the move

ment of the retor and the movement of the spark elec

trodes is easy to see and to understand but, as the ree-

ord conclusively establishes, the phase of the eleetric

current wave is dependent not only upon the distance

through which the rotor moves, but also upon the man-

ver in Which it moves—whether fast or slow, whether at

constant speed or acceleratingly or deceleratingly.

It is impossible by hand turning of the retor to dupli

cate, either in degree or kind, the motion which is im-

parted to the rotor by its driving spring mechanism.

This means that it is impossible by hand turning to du

plicate either in shape or in phase the electric current

wave with whose almost instantaneous peak the opening

of the spark electrodes must be synchronized.

It is true, of course, that if Weber’s bracket 53) be

rigidly and permanently secured to his tgnition block 3

that ‘*the crank arm and the hammer arm’? will ‘thold

their relative positions with respect to each other intaet.”’

While this may effect the preservation of the merely me-

chanical synchronism regardless whether these parts be

on or off the engine, it does not by any means insure the

preservation of the vital electrical synchronism between

the peak of the generated current wave and the opening

of the spark electrodes. In other words, the peak of the

current wave may possibly be made to synchronize per-

fectly with the opening of the electrodes when Weber’s

an POMELEONRE BEE LOL LOIN SIO ENO ETA AE LEAR et

5

magneto is removed from the engine and rotated by

hand, while that adjustment will not produce any syn-

chronism whatever when the magneto is placed upon the

engine and operated by the spring driving mechanism.

The argument in appellant’s answer proceeds upon the

assumption that, if the synchronism between the current

wave and the opening of the electrodes is once secured,

this synehronism will be preserved intact whenever the

magneto is mounted on the engine. But not only is the

necessary electrical) svnehronism destroyed whenever

Weber’s magneto is removed trom the engine, but it ean-

not be preserved even if the magneto remains upon the

engine, The sharp impact of the electrodes and of

Weber’s arm 41 on the adjusting serew 27 of the crank

arm 26, occurring at every impulse of the engine, rap-

idly wears these parts away. It was for the very pur-

pose of readjusting the instant at which the spark elee-

trodes should be opened that Weber provided the adjust-

ing screw 27,

In Kane, the unitary equipment ean be removed from

the engine and the corresponding anvil serew can be ad-

justed until the necessary electrical synchronism is se-

cured, as determined by an ocular observation of the

spark. The spark thus seeured when the equipment is

removed will be identically repeated when the equipment

is replaced on the engine. In Weber, on the other hand,

the anvil serew may be adjusted while the magneto is re-

moved from the engine, but whether the electrical syn-

chronism necessary for engine operation has been se-

cured, can never be determined in the absence of the

driving spring mechanism, and the effect of this mech-

anism ean be obtained only by replacing the magneto

upon the engine. When the magneto is replaced upon

the engine, the spark electrodes are concealed within the

evlinder wall of the engine, and it is impossible to ob-

6

serve or test the spark in any way. In Kane, the spring-

actuated operation of the mechanism upon the release of

the rotor is identically the same, whether the rotor be

cocked by hand when the equipment is removed from the

engine or by the push-rod when the equipment is replaced.

Consequently, synchronism secured when the equipment

is removed is inevitably the synchronism desired in en-

gine operation. In Weber, while it may be possible to

secure some approximation of synchronism by adjust-

ment made during hand operation of the rotor, that ad-

justment will certainly fail to produce synchronism when

the rotor is actuated by the spring mechanism after the

equipment is replaced on the engine.

Appellant’s counsel urge (page 10) that the eombina-

tion of Kane’s claims 7 and & is not patentable because

it would not involve invention to substitute the magneto

of Milton’s patent No. 1,053,107, or of Hennig patent

916,312 for the magneto shown by Weber, in view of

the fact that the Wattles patent 909,264 illustrated a

magneto mounted upon the igniter block of the gas en-

gine. This, of course, is merely the stock argument of

every defendant. If an anticipation is not to be found,

then combine this part of one mechanism with that part

of another, and presto—yvou have the exact combination

of the patent in suit. The substitution suggested by

counsel would involve radical reorganization, but re-

gardless whether mechanically simple or complex, the

fact remains that no one prior to Kane had the happy

and tremendously successful thought of doing it.

As to the Wattles device, it did not have any driving

spring mechanism whatever. The armature of the mag-

neto was intended to be rotated by a piston acted upon

by the compression of air and gas in the engine evlin-

der. The record shows that the Wattles patent was not

REE Eee

merely a paper one, for there is positive testimony

that Wattles tried for months in the shops of the In-

ternational Harvester Company to make his device

operate, and failed (Record, p. 293). The Wattles pat-

ent never did suggest, and it never could have sug-

gested, a combination of Weber and Milton or Hennig,

or the entirely different combination of Kane’s claims

7 and 8,

Appellant’s counsel (attempting to answer our prop-

osition that the importance of the difference between

Kane and Weber is shown by the fact that the Accurate

Engineering Company, after having hought the Weber

patent, at onee abandoned Weber’s two-group idea

and adopted the unitary construction of Kane) urges

that the Accurate Engineering Company manufactured

and sold mainly a two-group equipment. That equip-

ment was neither Kane nor Weber.

Appellant’s witness, Henry G. Cox, testified (Record,

page (16) that the total magneto business of the Aceu-

rate Kngineering Company outside of its sales to the

Harvester Company was as follows:

“It had an order for 2,000 equipments from the

Associated Manufacturers, but did not fill it all—

probably filled about 500, and the same number to

the Aeme Engine Company, which failed and went

out of business. About 2,000 were sold and deliv-

ered to Fuller & Johnson. The latter were rotating

Inagnetos. Some oscillating magnetos were sup-

plied to Fuller & Johnson, but not of a unitary

construction, nor of the construction shown in - De-

fendant’s Exhibit 51.”

As to the International Harvester Company, Mr.

Cox’s testimony shows (Record, page 714) that “*Mr.

Md Johnson was interested in the (Accurate Engineer-

ing) Company at the time it was oreanized in 1914,””

and that at the same time ‘the Was superintendent of

vi

8

the Tractor Works of the International Harvester

Company.’ and that the Harvester Company ‘*began

the use of the equipment furnished by the Accurate

Engineering Company about May, 1914, on what they

called their side shaft line (of engines), built) by or

under Johnson’s directions at the Tractor Works.’

It is these sales by Mr. Johnson to Mr. Johnson for

the ‘‘particular style of engine’? designed by Mr. John-

son, that counsel for appellant dilate upon. But the

equipments thus sold by Mr. Johnson to himself, only

about 1,000 of which the Accurate Company was able

to sell to other parties, were not in any particular

Weber devices. The outstanding fact in the history of

the Accurate Company is that it bought the Weber pat-

ent, and insofar as it attempted to use Weber’s ideas

at all, it abandoned his two group idea and adopted

Kane’s unitary construction.

Appellant’s counsel further urge (page 15) that: the

‘large increase in sales (by the Webster Electric Com

pany) did not come to pass until some four or five

vears after the date of Kane’s invention, and was

really due to plaintiff's abandonment of Kane’s mag

neto, and its adoption of Podlesak’s newly designed

magneto embodying the inventions disclosed in and

covered by the Podlesak patents.”’

We do not hesitate to concede that the Webster Elec

tric Company improved and refined its equipment from

time to time, and that Podlesak had much to do with

this improvement. But the fundamental fact) remains

that it was solely the Kane unitary equipment. that

averted the Webster Company’s failure, and that Podle-

sak’s improvements could not have been made except

upon the foundation of Kane’s underlying invention.

There was no abandonment of Kane and. substitution

a LD OLE SEMEN NED LOPE EOE L LS SEEN AO ia I AE EE CBr IL

9

of Podlesak, as appellant’s counsel insinuate. Although

the Webster equipment has been improved from time

to time by Podlesak and others, Kane’s unitary con-

struction has been used continually to the exelusion of

all else since the day of Kane’s invention.

We submit, therefore, that plaintiff’s answer to our

petition serves merely to emphasize the fact that the

essence of the Kane invention and the vital difference

between Kane and. the prior art has not been appre-

ciated or considered. It is. the fundamental question

in this case. Heretofore it has heen so hidden among

the many other complex questions in the case that

neither party has had the opportunity fully to argue

this question, as a consequence of which the court’s

opinion does not allude to it.

Our petition for rehearing fully accepts the court’s

opinion so far as it goes, and thus brings out for single

consideration the essence of the Kane invention and

the real distinction between Kane and the prior art.

We submit that the erie for rehearing should be

granted in order that all of the facts and arguments

hearing on this single peels may be fully appre-

ciated and considered.

Respectfully,

Livincstox Girrorp,

Lyxx A. Wriuuans,

Rosert M. Ser,

Jerome N. Frank,

Counsel for Plaintiff-A ppellee,

SRLS A TTR EOL Kei ER 9G gO ee OG re

Notice. 915

And afterwards, on the same day, to wit, the first day

of April, 1921, in the October term last aforesaid, there

was filed in the office of the clerk of this court a certain no-

tice, which said notice is in the following words and figures,

to wit:

Unirep States Circuit Court or APPEALS

For the Seventh Circuit

Splitdorf Electric Company,

Defendant-A ppellant,

vs.

Webster Electric Company,

Plaintiff-A ppellee.

No. 2769

NOTICE.

Edward Rector,

McCormick Building,

Chicago.

Of Counsel for Appellant.

Please take notice that we are filing today in the United

States Circuit Court of Appeals for the Seventh Circuit a

reply to Appellant’s answer to Plaintiff-Appellee’s petition

for rehearing, two copies of which are enclosed herewith.

Roserr H. See

Of Counsel for Plaintiff-A ppellee.

Chicago, Tilinois,

April 1, 1921.

Received copies of the above notice and of the printed re-

ply referred to therein, this first day of April, 1921.

Epwarp Recror

Of Counsel for Defendant-A ppellant.

Endorsed: Filed April 1, 1920. Edward M. Holloway,

Clerk.

ae epee een.

iy PT ei R Ps

0 SORE GRE) nn ene

916 Order.

And afterwards, to wit: On the sixth day of December,

1921, in the October term last aforesaid, the following

further proceedings were had and entered of record, to wit:

Tuesday, December 6, 1921.

Before:

Hon. Francis E. Baker, Circuit Judge.

Hon. Evan A. Evans, Cireuit Judge.

Splitdorf Electrical Company ) Appeal from the District Court

9769 ns of the United States for the

‘we » we. Northern District of Illinois,

Webster Electric Company. Eastern Division.

It is ordered by the court that this cause be, and the same

is hereby re-set down for oral argument, limited to the is-

sues respecting the Kane patent, and placed upon the calen-

dar for the January session, 1922, of this court. It is further

ordered that this oral argument be on Friday, January 6th,

1922, at ten o’clock A. M.

—— Filed December 6, 1921. Edward M. Holloway,

Clerk.

And afterwards, to wit: On the sixth day of January,

1922, in the October term last aforesaid, the following

further proceedings were had and entered of record, to wit:

Rehearing. 917

Friday, January 6, 1922.

Court met pursuant to adjournment and was opened

by proclamation of crier.

Present:

Hon. Francis E. Baker, Circuit Judge, presiding.

Hon. Samuel Alschuler, Circuit Judge.

fon. Evan A. Evans, Cireuit Judge.

Hon. George T. Page, Circuit Judge.

Edward M. Holloway, Clerk.

Robert R. Levy, Marshal.

Before:

Hon. Francis E. Baker, Circuit Judge.

Hon. Evan A. Evans, Cireuit Judge.

Hon. George T. Page, Cireuit Judge.

Splitdorf Electrical Company 7) Appeal from the District Court

2769 : vs van \ of the United States for the

6 ; Northern District of Illinois,

Webster Electric Company Eastern Division.

Now this day come the parties by their counsel and this

cause now comes on to be heard on the issues respecting the

Kane patent and the printed record and briefs of counsel and

on oral arguments by Mr. Edward Rector, counsel for appel-

lant, and by Mr. Lynn A. Williams, counsel for appellee, the

court having heard the same takes this matter under advise-_

ment.

And afterwards, to wit: On the eighth day of May,

1922, in the October term last aforesaid, there was filed

in the office of the clerk of this court a certain opinion, which

said opinion is in the following words and figures, to wit:

918 Opinion on Rehearing.

Ix tue Unrtrep States Crrcurr Court or APPEALS

For the Seventh Circuit.

No. 2769 Ocroser Term, 1921, Aprit Session, 1922.

Splitdorf Electrical Company,

A ppellant, Appeal from the District Court

14 of the United States for the

: = he Northern District of Illi-

Webster Electric Company, nois, Eastern Division.

A ppellee.

ON REHEARING.

Before Baker, Evans and Pace, Circuit Judges.

Evans, Cir. J.: A rehearing in this case was granted be-

cause of uncertainty as to the correctness of our conclusion

respecting the validity of claims 7 and 8 of the Kane patent.

In appellee’s original brief the Kane invention was de-

scribed as follows: ‘‘At this junction Mr. Kane invented the

unitary magneto ignition equipment of his patent in suit.

* * * In this device the magneto and the igniter plug are

no longer separated, but are brought into one unitary struc-

ture, with ne link mechanism intervening, between the mov-

able electrode and the armature shaft. * * *’’ Speaking

of its results, counsel said, ‘‘ When it is necessary to clean the

spark plug or to test or adjust the mechanism, the whole uni-

tary structure may be removed, and its operation adjusted

and its spark observed in the open, and it may then be put

back on the engine with absolute assurance that it will fune-

tion in operative position precisely as it did when removed

from the engine.’’

This position of counsel invited the observation of the

court that ‘‘the essence of the contribution was the unitary

structure made possible by the rigidly and inseparably con-

nected parts, the magneto generator, and the unitary block.”’

The correctness of this position is now challenged because

we failed to consider the effect of uniting in a single unitary

structure all of the operating mechanism of the equipment,

including, of course, the two elements aforementioned. We

assumed in determining the validity of the claim that the

Opinion on Rehearing. 919

Kane magneto ignition equipment was unitary in structure

and permitted the operator to remove it from the engine

whereby it might be better examined and replaced without

changing the relative position of the two parts mentioned and

without disturbing the synchronism so much desired. We

failed to appreciate fully what is now claimed as an im-

portant and valuable result, viz., the creation of a spark, when

the equipment is off the engine, identical with the spark pro-

duced when it is on the engine. In other words, inspection is

for the purpose of locating trouble and trouble generally is

located in the spark or in its absence. Obviously the spark

which the mechanic or operator endeavors to produce off the

engine must be such a spark as is produced ordinarily when

the magneto equipment is in its place on the engine.

The claim provides for an integral support upon which all

of the aforesaid parts are mounted. The words ‘tall of the

aforesaid parts’’ are not properly restricted to the magneto

and igniter plug.

Appellee now asserts that the Kane unitary equipment

when removed from the engine to be cleaned or tested is

capable of a satisfactory test because it operates in precisely

the same way to produce identically the same spark whether

on or off the engine.

The question hefore us is one of patentability. While in-

vention will not be determined by results obtainable, we have

referred to the production of the spark on or off the engine to

emphasize the use of the word ‘“‘all”’ in the claims. Stressing,

as we must, the provision which ealls for the integral support

upon which ‘‘all of the aforesaid parts are mounted,’’ the

question of patentability becomes a close one.

We have, upon a consideration of all of the evidence (ex-

tent of use, the effect of allowance by the patent office, the

decision of the district judge, the prior art, as well as all the

other evidence), come to the conclusion that our first decision

is incorrect and that patentable novelty is here disclosed.

It would serve no useful purpose to elaborate upon

the reasons that impell us to reach this conclusion. The

question has heen twice fully argued and counsel have ap-

parently appreciated the closeness of the issue. Whether

type of construction manifested by size or location of parts

constitutes invention must in the last analysis turn upon

the facts in each particular case. Ordinarily, we might say,

to construct a unitary structure without changing parts would

not be invention. On the other hand, the unitary structure

ae paaieereresaen

20 Opinion on Rehearing.

may have the parts so mounted as to result in a type or form

so simple of operation or so handy and convenient in size or

shape as to produce desirable results, which have been long

but unsuccessfully sought by those skilled in the art. A find-

ing in support of which there is some evidence, that others

skilled in the art failed after diligent effort to solve the prob-

lem must, of course, be considered as rather persuasive in

determining whether such advance constitutes invention.

Believing that we have erred in our previous conclusion, we

avail ourselves of this opportunity to correct it.

This conclusion respecting the patentable novelty back of

claims 7 and 8 makes it necessary for us to consider one of

the other defenses not heretofore considered by this court.

In order to appreciate the defense of laches a more com-

plete and detailed statement of the facts is necessary.

Kane’s original application for patent No. 1,204,573 was

filed February 2, 1910 and was allowed November 14, 1916.

The divisional application was filed January 14, 1915 and

allowed September 24, 1918. Milton’s patent No. 1,096,048

was applied for October 28, 1910 and allowed May 12, 1914.

On August 17, 1915 the Milton patent was placed in inter-

ference with the pending Kane application and Kane won.

The circumstances under which this decision was obtained

destroy its effect, and counsel for appellee do not rely upon

the adjudication of the patent office in respect to the issue

of priority but rest upon finding of the district judge.

The Podlesak reissue patent No. 13,878 was issued Febru-

ary 9, 1915, upon application filed December 23, 1914, the

original patent being No. 1,055,076, issued March 4, 1913.

Kane by amendment filed April 17, 1915, introduced nine

new claims, three being copies from the Podlesak original

patent, and the remaining six from the reissue patent. These

nine claims were rejected on various grounds, one of them

being ‘‘that Kane had no right to make the claims in issue

because of laches on hus part, the claims not having been

presented by him for more than two years after the issue of

the original Podlesak patent and not until some time after

the issue of the reissued patent.’? The board of examiners

in chief sustained Podlesak’s contention, and it was held that

the claims were barred by Kane’s laches.

Kane acquiesced in the decision with respect to three of

the claims, which three claims correspond with those in

Podlesak’s original patent, but appealed to the commissioner

in respect to the remainder, the ones similar to those in the

—

Opinion on Rehearing. 921

Podlesak reissue patent. The commissioner affirmed the de

cision of the examiners in chief, but upon a different ground,

viz., that the claims in question were not readable on Kane’s

disclosure. The court of appeals finally disposed of the mat-

ter against Kane, basing its decision both upon Kane’s laches

and upon the further ground that the claims were not read-

able upon Kane’s disclosure.

Following this decision Kane, on June 17, 1918, filed an

amendment by which he introduced the two new claims, 7 and

8, now in issue.

Kane’s attorney in presenting claims

examiner:

“The decision of the Court of Appeals is, of course, bind-

ing upon the primary examiner to the effect that Kane is now

estopped to make these specific detailed claims of the Podle-

sak patent because of his delay in so doing.

‘*In so far as any prosecution of this application before the

primary examiner is concerned [we promptly concede that

we are bound by the estoppel of res adjudicata and by the

Court of Appeals].* It is clear, however, that this estoppel

does not and cannot run as against the claims now presented.

~ = * * * *

7 and 8 stated to the

‘The two claims presented herewith are not limited to any

of these refinements or details.’’

It is upon the foregoing facts and others hereinafter re-

lated, that we must dispose of the question of laches.

An inventor of a patent may lose his right thereto by

waiver, by public grant, by estoppel or by laches. By fail-

ure to apply to the government for a patent within the statu-

tory period of two years he loses his right as effectively as if

he made specific grant thereof to the public. If in his applica-

tion he seeks but a part of the claims to which he is entitled,

he waives all right to those not claimed. He makes a donation

to the public and his right to the monopoly is gone forever.

While the results are the same, there is, of course, a dif-

ference in the evidence which shows a grant to the public and

the evidence which supports the defense of laches.

In support of the contention that section 4886 R. S. re-

quires a divisional application to be filed within two years

from the allowance and publication of a patent covering the

same claims appellant cites Chapman v. Wintroath, 252 U.S.

126. Subsequent to the filing of the original brief the follow-

ing additional authorities were submitted, all based upon the

views expressed in Chapman vy. Wintroath. De Ferranti vy.

a

922 Opinion on Rehearing.

Harmatta, 273 Fed. 357; Ransdall v. Jahns, 273 Fed. 365;

Repogle vy. Kirby, 269 Fed. 862; Wells vy. Honigmann, 267

Fed. 743. Our attention has been called to no case holding

the contrary and we have found none upon independent in-

vestigation.

True, the precise question here presented was not squarely

raised and therefore not decided in Chapman v. Wintroath.

In that case the divisional application was denied (no hear-

ing was had and no evidence was received) solely on the

ground that it was not made within one year from the date of

the allowance of a patent covering the same claims to an-

other. Appellants contend, however, and we agree with the

courts that have passed upon the question that the effect of

the holding, is to fix the period, during which such applica-

tion must be filed, at two years from the date of the issuances

of the other patent. No other deduction can fairly or logi-

cally be drawn from the discussion of the question in that

opinion.

In fact this was the effect of the holding upon the 9 claims

that Kane copied from the Podlesak patent, all of which were

rejected because not timely made, and to which ruling ap-

pellee acquiesced. The facts in the present suit are distin-

guishable from the Chapman case in that the claims were not

identical with any claims in any issued patent. While this

distinction may be made, it appears that the difference does

not justify a different conclusion being reached. The claims

in question differ only in that they are more broad, more

generic, than the specific claims that were rejected in the

interference contest.

But we are not required to rest our decision solely upon

the two year period fixed by the statute. Laches may arise

and become an effective bar to relief under a variety of cir-

cumstances. Laches is based upon delay and delay is a rela-

tive term.

In the last paragraph of the opinion in Chapman v. Wint-

roath we find the court referring to laches other than that

defined and fixed by the statute by calling attention to the ab-

sence of any evidence in the case under consideration that

would warrant any such finding. The court says:

‘*As has been pointed out, the Examiner of Interferences

did not permit the introduction of any evidence with respect

to laches or abandonment and the Court of Appeals rests its

judgment, as he did, wholly upon the delay of the Chapmans

in filing their divisional application for more than one year

EE

Opinion on Rehearing. 923

after the Wintroath patent was issued, as this appeared ‘on

the face of the record.’ While not intending to intimate that

there may not be abandonment which might bar an applica-

tion within the two-year period allowed for filing, yet upon

this discussion of the statutes and decisions, we cannot doubt

that upon the case disclosed in this record, the Chapmans

were within their legal rights in filing their divisional ap-

plication at any time within two years after the publication

of the Wintroath patent, and therefore the judgment of the

Court of Appeals must be reversed.”

Turning to the facts in the present case and for the moment

ignoring any two-year rule, we find Kane’s position in sup-

port of claims 7 and 8 untenable. Not only did he not in-

tend to make these claims, in fact he knowingly and inten-

tionally failed to present them, but not until eight years after

he filed his original application and more than nine years

after the device was in common use. during all of which time

it was in general use, did he seek to dominate the art by in-

serting these amended claims into the patent.

When examined as to the new combination represented by

these two claims, he testified that he had knowingly failed to

claim it. The following testimony appears:

“Q. What? Didn’t Mr. Webster ask you to help him out

in connection with the means of fastening the magneto and

the plug to the engine?

A. No, sir, he did not.

Q. He didn’t discuss that at all with you prior to the

time that you filed your application?

A. He did prior to the time we filed the application.

Q. Well, when was it he discussed that with you?

A. Discussed that with me when | showed him the draw-

ing.

Q. Mr. Kane, is the. > anything on that drawing,—the first

one that you had,—show xg any means of regulating or de-

termining what you eaii th. cut-out of the spark?

A. No, sir, there is not.

* * FE

* * * *

PO nepenre omanwen

ea ’ 9

isin pore meeeae ee

Q. How. what did you tell him about the means by which

the magneé.o and plug were to be attached to the cylinder?

A. Well, outside of telling him that by doing that we had a

means of securely fastening the magneto to the cylinder, and

also a means of cutting out a lot of intermediate and useless

mechanism, I do not know as I told him very much.

924 Opinion on Rehearing.

Q. You did not consider it of very much importance; is

that right?

A. It seemed to me a matter more of design than im-

portance—invention.

Q. Is that what vou told him?

A. Yes, sir.

Q. And you told him that you thought that it was not an

invention, and was a mere matter of design? You told that

to Mr. Sprinkle, did you, when you went to him to get a

patent?

A. 1 told him it was a good means and preferred means

of fastening the magneto on the engine.

Q. Well, I asked you if you told him that you thought it

was a mere matter of design, and not an invention.

A. I possibly did, ves.’’

Believing that the Podlesak invention was controlled

throngh contract and otherwise, appellee was not greatly con-

cerned about the question of who was the first inventor. Its

attitude in the Milton-Kane contest is not such as to invite

the court’s confidence in the sincerity of its protestations nor

in the good faith of its assertion that it was not endeavoring

to improperly prolong its monopoly beyond the period fixed

by statute. Having secured a favorable decision from the

patent office in this interference contest through control and

ownership of both sides of the litigation, it then discovered

that its asserted rights under its patent and under its contract

with Podlesak were challenged, and it again amended its

specifications, inserting the new claims which necessitated an

interference contest with Podlesak. This contest was bit-

terly fought, appeals being taken from the examiner and then

to the patent commissioner, and then to the Court of Ap-

peals, with the result that appellee was found guilty of laches

and the decision went against it.

Appellee filed the aforementioned amended application in-

corporating these nine new claims on April 17, 1915; the first

three were taken from the Podlesak patent issued March 4,

1913, and the other six from the Podlesak reissue patent

dated February 9, 1915. In this adverse decision appellee

acquiesced, wherefrom it appears that if appellee was guilty

of laches in April 1915 for failure to present the nine claims

under consideration, it must a fortiort be found guilty of

laches in failing to present claims 7 and 8 until June 17, 1918.

The allowance of these last two claims upon the amendment

of June 17, 1918, was upon ex parte application and was made

—

Opinion on Rehearing. 925

by the examiner, the adverse parties, of course, not being

present to protest or point out the error of such allowance.

The claims differ, as heretofore stated, from the claims in the |

Podlesak patent in that they are broader in scope, but the |

difference is not sufficient to avoid the effect of the decision

in the Podlesak interference contest. They depend for their

support largely, if not entirely, upon that part of the specifi-

cations which were incorporated by amendment in 1915, which |

amendment was made to support the nine claims taken from

the Podlesak patent and subsequently rejected as heretofore

described.

We conclude Kane’s laches barred his right to claims 7 |

and &.

The decree is reversed with directions to dismiss the bill. _

A true Copy.

Teste:

Clerk of the United States Circuit Court |

of Appeals for the Seventh Circuit.

sae rte tc

And afterwards on the same day, to wit: the eighth day of

May, 1922, in the October term last aforesaid, the following

further proceedings were had and entered of record, to wit:

SOREN. eR VPa a as

926 Decree.

Monday, May 8, 1922.

Court met pursuant to adjournment.

Present:

Hon. Francis E. Baker, Circuit Judge, presiding.

Hon. Samuel Alschuler, Cireuit Judge.

Hon. Evan A. Evans, Circuit Judge.

Hon. George T. Page, Cireuit Judge.

Edward M, Holloway, Clerk.

Before:

Hon. Francis FE. Baker, Cireuit Judge.

Hon. Evan A. Evans, Cireuit Judge.

Hon. George T. Page, Cireuit Judge.

Splitdorf Electrical Company >) 4Ppeal from the District Court

2769 “8 : of the United States for the

aw Mii FS Northern District of Illinois,

Webster Electric Company Fastern Division.

This cause came on to be reheard on the transcript of the

record from the District Court of the United States for the

Northern District of Illinois, Eastern Division, and was ar-

gued by counsel,

On consideration whereof, it is now here ordered, adjudged

and decreed by this court that the decree of the said District

Court in this cause be, and the same is hereby reversed with

costs; and that this cause be, and the same is hereby re-

manded to the said District Court with directions to dismiss

the bill.

Clerk’s Certificate, 927

Unirep Srares Crrcurr Covrr or APPEALS

For the Seventh Circuit.

I, Edward M. Holloway, Clerk of the United States Circuit

Court of Appeals for the Seventh Circuit, do hereby certify

that the foregoing pages, numbered from 823 to 926, in-

elusive, contain a true copy of the proceedings had and

papers filed (excepting briefs of counsel and stipulations and

orders relating to time of filing same) in the following en-

titled cause:

Splitdorf Electrical Company

vs.

Webster Electric Company

No. 2769, October Term, 1921, as the same remains upon the

tiles and records of the United States Circuit Court of Ap-

peals, for the Seventh Circuit.

In testimony whereof I hereunto subscribe my name and

affix the seal of said United States Circuit Court of Appeals

for the Seventh Circuit, at the City of Chicago, this twenty-

fifth day of July, 1922.

Epwarp M. Hotioway, ee

(Seal) Clerk of the United States Circuit Court of

Appeals for the Seventh Circuit.