# Appellants Reply Brief — Webster Co. v. Splitdorf Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386005_0453%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appellants Reply Brief - **Published:** January 1, 1924 - **Citation:** 264 U.S. 463 ## Text LS AEE ELLE EE ET aT IE, a as . SS RRA NRE Ge RR ROCESS IMIR eng 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. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386005_0453%3A2. Public record. Not legal advice.