Opposition Brief — Crown Cork & Seal Co. v. Ferdinand Gutmann Co.

BLANK |

PAGE

FILE COP | gue 2. 1937

CHARLES ELMORE CROPLEY |

s » .

SBI PMNS DOF dong os

Office - Suprema Oousl, U. S.

FILED

CLERK-

IN THE

Supreme Court of the United States

October

© 72

CROWN CORK & SEAL COMPANY, INC.,

Petitioner,

vs.

FERDINAND GUTMANN & CO.,

Respoudent.

‘Brief for Respondent in Opposition | to Petition for

3 » Writ of Certiorari.

‘ :

WILLIAM E. WARLAND,

; Counsel.

FRANCIS H. WARLAND,

NATHANIEL L. LEEK,

Of Counsel.

THE BALLOU PRESS NEW YORK

4 otf

Table of Contents.

‘PAGE

+ Grounds upon which the Writ a ee 2-3

y -- State of the Art as to the Subject Matter of ae Method

Patents .in cc auonsicstingnae CO ETT TOO NEMS 4-7

The construction of the Claims of the reissue 19,117 by

the Court of Appeals was correct ................ 7-9

_ There is no Proof. of a of Reissue Patent

vo. 19, 117 eR ARE CEN CA a eile Pear Le L 9-12

The Subject Matter of the Claims in Warth Patent ma

1,967,195 Completely and Voluntarily dedicated to

the Public. . Sree Fete a aeons 12-17

A Divisional Application cannot be Obtained after

Parent Case Issues. They Must be Copending :... 17-19

The Record shows a clear Case of Interyéening Rights. 19-26

Petitioner Licensed to use the Method and Machine of

Johngon Patent No. 1,852,578 ........,.....62. -.. 27-8

There is No Conflict of Decisions .................. 28

The Fact that Patentee Thought or was Informed his

Claims Covered Both Forms of the Invention is no

pod go Ee OEE PETE CeCe PRT ie ian ER RN ie 29

Chapman v. Winthroath Has No Application to the

_ Facts Disclosed by this Record ................... 30 ates

Invention Claimed in Both’ Patents in Controversy

Merely for a Function and Not Patentable ...°.... 31

Conclusion ..... SL ETE EEC TET Te ee 31

PT

ii

Table of Cases Cited.

PAGE

Altoona Theatres vs. Tri-Ergon Corp. 294 U. S. 477,

De I 055 ee eA REE KAO Rea een 8

Miller vs. Eagle Manufacturing Co., 151 U. S. i ae

Underwood v. Gerber, 149 U. 8. 224................. 9.

Powder Co. v. Powder Works, 98 U. 8. 126-and 137.... 9

Hubbell v. U. &., 170 U. 8. TT at 88-4 . 2. ccc cecceess 9

Leggett v. peceng ee ee eee ee 9

Kokomo Fenee Machine Co. y. Kitselman, 189 U. S. 8.. 9

Weber Electric -Co. v. Freeman, 6 0. 8008-5 9

Directoplate-v. Donaldson Lith. Co., 51 F. R. (2) 199 17-3

Rosenberg et al. v. Carr Fastener Co., 51 F. R. (2) 1014

Cert. Denied ‘284 U. 8. 652 chains s eaphsade kes 17

Fessenden vs. Wilson et al., 48 F. R. (2d) 422 p, 424 ..- 17

Saranac Automatic Machine Co. v. Wirebounds Piileuts

Co. et al., 65 F. R. (2d) 904 (C. C. A. 6th) p. 906... 19

Saranac Autotaatic Machine Corp. v. Wirebounds Pat-

ents Co. et al., 282 U. S. 704 (pp. 714-715) ........ 19

General Motors Corp. v. Rubsam Corp., 65 F. R. (2) 217

at 28 (CC. C. A. 6)... G.. ere ee ree. ee ee 19

Chapman v. Wintroath, 252 U. Te Sav aascacgas as exs 30

Webster v. Splitdorf, 264 U. 8. ao, EEE ‘ahi wena 4

Railway Co. v. Sayles, 97 U. 8. 554,563 .............. 25

Victor Talking Machine Co. v. Brunswick-Balke-Col-

lender Co. et al:, 8 Fed. 2d 41 (0. C. A. 3d) Affirmed

by this Court Per Curiam, 273 U. 8. 671 .......... 25

Planing Machine Co. v. Keith, 101 U. 8S. 479 at 485..... 26

Consolidated Fruit Jar Co. v. Wright, 94 U. B. 92. 26

Yale Lock Co. vy. Berkshire Bank, 135 U. 8. 342 at

SPO 5656 di nk EES ROR elie VEN EAE Po tee iea kes 26

Rubenstein v. Slobotkin, 33 F. R. (2) 6 603 at 608 ...... 26

Irving Air Chute Co. v. Switlik Parachute & Equip. Co.,

82 F. R. 2d 645 (C. C. A. 3d Cir.) ...........0.... 26

T. H. Symitigton & Son Ine. v. Symington Co., 9 Fed.

SO TR PE 0 5s kaise neh eee 26

RT ani

iii

PAGE

Insulite Co. v. Reserve Supply Co., 60 Fed. 2d 433 at

Oe 0 De crank ceowen nis Cee caoana ne vila

Keystone Type Foundry vs. Fastpress Co., 272 Fed. 242

Dable Grain Shovel Company v. Flint, 137 U.S. 41 ..

De Forest Radio Telephone Co. vs. United’ States, 273

Us We. OPP SSAK AGS COKE Oe Mae NA En Ee Eeedak

DeForest Radio Co. Vs. General Electric Co., 283 U. S.

se gM EE EER OE ee haa ir Deen neh RD

Wirebounds Patents Co. vs. Saranac Automatic Machine

Cais 2. Rae) ae ss 4'ceOoaeuk balan SS ele yee

W srehesside Patents Co. et al. vs. Saranac Automatic

Machine Co.,:24 Fed. 2d 872 o.........cccccunc....

Wollensak v. Bexgunt. 151 U. S. 221 and ¢ cases cited .

McClain vs. Ortmayer, 141 U. S. 419 ............... .

Westinghouse Air Brake Co. v. Boyden, 170 U. S. 537

tesa MELEE RG TEE E ET Pe ee tree

E. Van Norden Co. v. Cheney, 75 Fed. (2d) 298 (C. C.

a EE Be Se hv ha ks cee ok er eerste ce,

Maytag Co, vs. Brooklyn Edison Co., Inc., p. VIII No.

654, 299 U. S. (Advance Sheets)

United Chromium Ine. vs. General cabana Corp: XI —

No. 733 Advance Sheets ..:.....:0.....0..:.....

Perey Mfg. Co., Inc. et al. vs. Tulchen XI No. 746.

Advance Sheets oe ee ee ee TT eee ee ToT Tee

See OSA 4 eo O'S be 6 Oe O'S 6 Ed

240 a4 s6 SOR EARS ESSA TAME S ede RE Op aA yc ha we VR w Gk

Radio Condenser Co. et al. v. Coe, 75 F. R. (2) 523.

Hartford Empire Co. v. Coe, 76 F. R. (2) 426

a a oe. oF ie

BLANK

PGE

IN THE |

Supreme Court of the United States

October Term, 1936.

Crown Cork & SEAL CoMPANY, INC., |

Petitioner,

VS.

FERDINAND GUTMANN & Co.,.

Respondent.

Brief for Respondent.

The petition is for q writ of certiorari to the United States

Circuit Court of Appeals for the Second Circuit to review an

order entered by that Court in an ordinary patent suit in-

volving the question of validity and infringement of six

United States Letters Patent. An additional patent was

set up by respondent as a counterclaim which was dismissed.

The decree of the District Court for the Eastern District of

New York held two of the patents which were for Bottle

Seals and one of which was for Strip Material for use in

making Bottle Seals, invalid, and held one: Bottle Seal

patent and two patents for Method of Making such. Bottle

Seals valid and infringed.

No appeal was taken from the decision of the District

. Court as to the Strip Material patent.

The Circuit Court of Appeals affirmed the decision of the

District Court as to the two Seal patents held invalid, and

reversed that Court as to the validity of the other Sea] patent

and-one of the Method patents, and as to infringement of

the other Method patent, holding against infringement.

=

2

.

The petition seeks to review only that part of the decree of

the Circuit Court of Appeals which held one of the method

patents invalid and the other one not infringed.

The Circuit Court -of Appeals denied a petition for re-

hearing.

The petition is opposed on the following

grounds: :

1. There is no conflict between different Circuit Courts of Q

Appeals. This is the only suit ever adjudicated under any of

the six patents upon which the suit was based.

_ 2. None of the patents in suit is of any unusual or general

interest. Therefore no public interest is involved in the suit.

«

;

aaaan Chai

3. There is no new point of law involved in the decision

of the Circuit Court of Appeals.

a

4. The decision of the Circuit Court of Appeals is not in

_ conflict with any doctrine established by this Court.

5. There is no important. question of Federal law jnv olved :

in the case which ane 8 not been, -but which Mould be, settled

by this Court.

6. There is no doctrine-set forth in the decision of the

Circuit Court of Appeals which is probably in conflict with

— decisions of this Court.

7. While petitioner asserts that the Cir cuit Court of Ap:

peals has not correctly applied decisions of this Court to the

facts of this case, though at the same time arguing that im-

portant questions of Federal law are involved which have

not been, but which should be, settled by this’ Court, such

assertion is the usual one, made by every unsuccessful liti-

_gant finding himself aggrieved because of an adverse decision

2

° 3

by a Court, and does not constitute, “special and important

reasons” for the granting of the writ of certiorari referred

. to in Rule 38-5 (b) of this Court.

8. An inspection of the decisions of both the lower Courts

show that the real questions involved were the usual ones of

validity and infringement.

9. As to one of the patents, the doctrine of laches, equit-

able estoppel and intervening rights applies, but the law

applied to the facts by the Circuit Court of Appeals is well

‘settled and in striet accordance with the principles: of law

laid'down by decisions of this Court on somewhat analogous

facts. As to the otlrer method patent, the only question is

that of infringement, which is a question of fact. -

10. The petition and -brief in support thereof contains

many inaccuracies and omissions.

11. It is only by a partial and inaccurate statement of the

facts shown by the entire record that petitioner is enabled

to present even a plausible argument asking for the review

of this Court, and the two so-called “questions presented” on

page 9 of the Petition are not warranted by the Record.

, = ih

12. A review of the. record bearing upon the only two

patents now in controversy shows conclusively that the ques-

tions petitioner seeks to review are purely questions of fact

and not of law.

Argument.

The record is voluminous. As ‘pointed out, six patents

were originally involved, four for am article and the two

patents in controversy for a method of making spot crowns,

Three of the article patents were held invalid’ by the Dis-

trict Court and the fourth by the Circuit Court of Appeals.

® ,

. et

ee

In order to bring before this Court the salient facts upon

which the Court of Appeals based its decision and correctly

applied the principle of law. laid down in Webster Co. v.

Splitdorf Co., 264 U. 8. 448, and to show that there is no

basis in the Record for th two questions presented on page

9 of the petition, it is necessary to refer somewhat at length

to the record.

a

ma two method patents in controversy and )

the state of the art as to the subject matter

thereof.

The use of crown caps for bottling beverages and the neces-

sity for using center spots are fully set forth in the decision

of the Circuit Court of Appeals (p. 2146 Rec.).by Judge

Swan who wrote the majority opinion. Judge Manton dis-

sented ‘therefrom, without opinion (p. 2155 Rec.)

The record shows that center spots have been cut from

strip material and applied to an assembled crown cap by

means of an interposed heat fusible adhesive by the applica-

tion of heat and pressure since 1915 (p. 482-3 Rec.).

The two method patents involved, viz., Reissue 19,117

and 1,967,195 are each for a method of cutting the center

spot from a strip of material either metal foil or paper

coated with a heat fusible adhesive, and securing it to the

cork disc by means of heat and pressure.

As previously stated the District Court found the patent

to Warth 1,899 ,782 for strip material coated with .a heat

fusible adhesive invalid over the prior art (p. 2068 Rec.)

Petitioner did not appeai from that decision (p. 2146 Rec.)

In order to have a center spot cut from a strip of material

coated with a heat fusible adhesive, securely affixed to the

cork disc, it is necessary to soften the adhesive by heating

and apply pressure to make it adhere to the cork disc.

The patent to Warth Reissue 19,117 shows a method of

supplying sufficient heat and pressure by means of a heated

cutting punch which cuts out the center spot and sticks it to

the cork disc by the simultaneous application of heat and

x,

pressure. The claims are so limited, by the proceedings in

the Patent Office and the action of the patentee.

The Warth Patent No. 1,967,195 describes and claims a

method whereby the necessary heat is obtained by prelimi-

narily heating the cork disc and then using“a cold cutting

punch to cut the spot from the strip of adhesive material and

then applying pressure. :

The record shows that a erown cap or metal shell con-

taining a cork disc, secured to the metal shell by méans of a

heat fusible adhesive subjected to heat and pressure, were

old as far back as the Painter patent of 1892, 468,226, page

4, lines 11, 108-128 (p. 1746 Ree.) Center spots secured to

the cork disc by means of a heat fusible adhesive by the ap-

plication of heat and pressure date back to 1915. Center

spots per se were even older (Pats. to Demuth, pp. 1907-9; .

Nielsen 1,195,392, pp. 1927-8, Rec.). The use of plungers |

to cut and secure the spot was old. (Pat. to McManus 1,

402,780, p. 1421; Alberti 1,401,300, p. 1449 Rec.). The use of a

metal foil or strip from which the spots. were cut, coated

with a heat fusible adhesive is concededly old. Petitioner so

conceded when it failed’ to appeal from the decision of the

District Court holding Warth patent #1,899,782 invalid over

the art. ae

Warth, the patentee of both patents in controversy, filed

an application for patent on “Bottle Caps” Aug. 21st, -1926

(five months before the filing of the original application for

* the patent 1,788,260 which is the patent case upon which the

reissue is based). That application (which was: abandoned )

bore Serial No. 130,631 and as originally filed stated {p. 2015 —

Rec. Vol. 3.). “3

i 5

“This paper disk is then secured to the cork disk by

mtans. of-a backing 16 of some elastic an@ adhesive tis-

Sue, e. g. gutta percha, by means of a heated plunger or

the like. By so applying heat and pressure to the as-

sembled cork and paper disks the gutta percha or like’

-backing is rendered adhesive and. the paper spot is firm-

Italics ours unless otherwise stated. .

6 ~ ©

ly cemented to the cork. In this connection, it is noted

that apparatus for cutting — assembling spot: waters

is known in the art.”

_ The patent to Alberti # 1,199,026, application filed October

2, 1914, states on page 2 Hnes 35 to 43 (p. 1267 Rec. Vol. 2)

“The cementing medium is applied either to the ex-

posed face of the sealing disk or packing of cork or the

like, or it may be spread over that surface of the metallic

disk that is to be in contact with the packing, or it may

be carried by a layer of fibrous material that is to be

interposed between the two disks,” * * * the entire

closure being put, if necessary, under pressure and heat-

ed, whereby the cementing medium is coagulated, hold-

ing thus the metallic disk in place,”

The patent to McManus 1,339,066, yaar filed

November 17, 1915 states at lines 20 to 35 of page 2 (P. 695

Rec. Vol. 2) that the center spot-is secured to the cork dise

ordinarily by the use of a fusible binding medium interposed

between the cap and’ the disc “ and set in a manner to unite

the parts by the application of heat. and pressure simul-

taneously or successively.” The McManus patent was held

invalid over the art by the Circuit Court of Appeals (p.

2149 Rec.).

The application for patent #1,967,195 became involved in

interference with Johnson patent, No. 1,852,578 (Inter fer-\

ence #66,201) discussed later, and the Examiner of In

pra in a decision in that interference stated, page 868

(Vol. 2, fol. 2603) : $

“Attention has been: called to he patents to McManus

#1,402,780 and Aberti 1,401,300, showing machines for

this purpose. In these machines the caps are passed in-

termittently in single file beneath a reciprocating punch,

which cuts the metal foil disk from a strip and deposits

it upon the cork pad. The caps then pass to an immed-

iately adjacent heated plunger which applies sufficient

heat and presswre to complete the wnion. It was agreed

by both parties at the hearing that machines of this

character were used commercially prior to 1927 and that

they puis at high speed.”

7

¢

The petitioner, on the trial of the cause, produced evidence

to show that as early as 1915 it had a machine known as the

“slide machine” for affixing the center spot to the cork disc

(p. 482-4). A drawing of the machine (Ex. 43) was put

in evidence by petitioner (p. 789 Rec.). A letter (Ex. 44,

pp. 791-2 Rec. Vol. 2) from the head of the petitioner’s en- |

gineering department states in part:

“A Crown has now come into position under the

Plunger and Heater ‘H’ which has moved into position .

relative to applying the spot to the crown. This is ac-

‘complished by the action of the pump ‘B’, which on its

- return stroke blows the spot from its position in the

_ Heater on to the Crown which is then pressed on to the

cork in the crown by the Heater Plunger. This com-

pletes the cycle of operations necessary for applying the

Tin Foil Spot to the assembled #1 Crown.”

The District Court, (p. 2081 Vol. 3 Rec.) in discussing

that machine said — R

“The pressure of this heated punch caused the gutta

percha to stick to the cork and also to the foil spot.”

There is therefore nothing new about the method claimed

by.either of the method patents in controversy.

Both of these patents sho@ld have been held invalid in

view of the decision of this court in the case of Altoona

Theatres vs. Tri-Ergon Corp., 294 U. 8. 477, page 486, —

The District Court found the reissue patent 19,117 valid

and infringed. The Circuit Court of Appeals held the patent

not infringed.

The construction of the claims of the reissue

19,117 by the Court of Appeals was correct.

Counsel for petitioner (p. 16 and 26 Drief) alleges the Court

of Appeals erroneously construed the claims as limited to the

heated plunger, and states in support of his argument the

/

ttt

8

decision of this court in the case of Altoona vs. American

Tri-Ergon, 294 U. 8. 477, 487. The argument is wholly with-

out merit. In the case at bar the court of appeals very prop-

erly said (p. 2152 Rec.) :

“To read the claims of the reissue patent to mean a

cold punch to cut the spots and a hot plunger applied

later to fasten it to the cork disc would make them

invalid under the old ‘slide machine.’ To read them to

mean a cold punch which positions the spot upon a pre-

heated cork would be inconsistent with the fact that the

preheating specification was deliberately divided out

later claimed in Warth’s ‘preheating patent’ hereafter

to be discussed.”

Reference has already been made on page 7 of this brief

to the slide machine used by petitioner beginning 1915. In

addition: reference is made to the other heat and pressure

patents of the prior art discussed on pages 5-6 of the brief.

If there is any novelty in reissue patent 19,117 over the dis-

closures of the prior art patents referred to, the claims, if

valid at all must be limited to the precise method shown and

described. |

It is elementary that when a ‘patentee acquiesces in the

rejection of a claim during the progress of an application he

cannot thereafter have a construction of the allowed claim

which he accepted which will cover the matter he was °

forced to disclaim.

’

That law applies here with particular force. Warth volun-.

tarily restricted himself, in his application 159,748 to the use

of a heated plunger, and cannot: two and one-half years after

the cancelled matter has become public, claim a construction

_of the allowed claim to cover the cancelled matter.

The Altoona Theatres vs. Tri-Ergon Corp. case, relied upon

by petitioner, shows page 487 that the finding of the Court of

Appeals in that case wag reversed by this court upon grounds

which have no application to the facts in the case at bar.

9 ai

Counsel for petitioner argues on pages 7 and 16 of his

petition and brief in support thereof, that the Warth reissue

patent 19,117 covers both methods of heating viz; heating the | |

plunger and also preliminarily heating the cork before the

spot is cut. “

If he is correct in that contention then the second patent

is necessarily void. There cannot be two patents for the

‘Same invention.

Miller vs. Eayle Mfg. Co., 151 U. 8. page 186;

Underwood vy. Gerber, 149 U. 8, 224;

Piet: Co. v. Powder Works, 98 U. S. 126 and 137.

q

It is true that the District Court held (pp. 2081-2 Rec.)

that the Warth reissue patent covered both methods. The Dis-

trict Court also held (p. 2102 Rec.)':

“None of the claims of the divisional patent (1,967- °

195) is readable upon the disclosure of the reissue ete.”

It is submitted that that finding of the District Court is

clearly erroneous and inconsistent with its prior holding that

the reissue patent covered both methods.

The Circuit Court of Appeals very properly reversed this

holding and held-that the Reissue patent 19,117 was restricted

to the precise method of obtaining the nécessary heat by

heating the cutting plunger. .

Hubbell y. U. S., 179 U. 8. 77 at 83-4;

Leggett v. Avery, 101 U. S. 256 at 259: :

Kokomo Fence Machine Co. vy. Kitselman, 189 U. Ss.

8; |

Weber Electric Co. V. veemen, 256 U. S. 668.

There is no proof of sitters of Reissue

Patent No. 19,117.

The petitioner produced no evidence of any kind at the

trial to show that respondent infringed the claims of the

10

reissue patent calling for the simultaneous application of

heat and pressure at the time of assembly.

The only evidence of infringement of either patent shows

that the petitioner’s officers and counsel called at the re-

spondent’s factory August. 8, 1933 (pp. 301 and 683 Ree.)

for the purpose of discussing a settlement and were shown

respondent’s method being used by respondent at that time,

which was the method of the Johnson patent 1,852,578 as

modified by the procedure called for by Cohn patent #1,921,-

808 which also called for preheating the cork disc and ‘used

a cold cutting punch. .That Cohn patent was the subject of

respondent’s counterclaim. The method claims of said John-

son patent are now the method claims of #1,967,195 viz.,

preheating the cork and applying the center spot by a cold

punch. -

The only evidence as to the method used by respondent was

that given by respondent's superintendent and manager, both

of whom emphatically stated that the respondent had al-

ways preheated the cork dise and never had used a hot cut-

ting punch. Jt had always used a cold. cutting punch only

(pp. 287 & 375-6, Rec. ).

The testimony of the witnesses for respondent Benno Cohn

and Chas. Rasmussen, was to the effect that, beginning in

December 1924 and ending in March 1925, the respondent had

made and sold to the Inecto Company upwards of 300,000

caps having metal foil center spots secured to the cork disc

by means of gutta percha which is a heat fusible adhesive by

the application of heat and pressure.

The testimony of these witnesses shows that the method

respondent used was as follows: : .

- In December 1924 and January 1925 it used an old Clark-

Johnson assembling machine (a machine for assembling the -

cork dise in the metal crown without a center spot) put a

center spot cutting attachment thereon and preheated the

cork by means of gas jets adjacent a chute which carriéd the -

assembled crowns to the spotting attachment where the center

spots were secured to the cork disc by heat and subsequent

cold pressure. That testimony on its face invalidates both

11

_of the method patents now under review.

19117 is to be so construed as to include preNating the cork

disc) respondent used this method more than two years

‘before the filing of the application for either method patent.

The testimony of these two witnesses was substantiated by

_ officers of the Inecto Company who not only recollected that

the caps were so “made, but identified invoices rendered by

respondent to that company amd produced correspondence

showing beyond all. question that respondent made and sold

the caps to that company on the dates mentioned. Only 300,-

000 were made and then discontinued because the Inecto

Company sold a hair tonic having an ingredient which it was

. afraid might be deleter iously affected by the gutta percha,

and it decided to use a cap with a flanged metal center spot

forced into the cork dise as disclosed by Patent to Nielsen

1,195,392 (p. 1921 Rec.). It was further substantiated by

people who sold the gutta pereha and tin foil strips to re-

sponded (pp. 211-13; 256-7 & Exs.-H to O & NN to TT, pp.

1170-86 Rec.).

The District Court Hietenunted the testimony of Cohn and ©

tassmussen as to the method, stating in ‘its. opinion (pp.

2078-9) that it believed they were honestly mistaken and

there was not sufficient corroboration of the method either by

the production of the original machine nor of any caps al-

leged to have been made at that. time. ye

The District Court, however, found as a matter of fact

that the respondent did make the caps at the dates mentioned

and stated that “it was known to the art” (p. 2067 Rec.).

The Circuit Court of Appeals, with this evidence before it,

made no specific finding either way on the question of this,

prior use. It did, however, accept it to the extent that it held

that the method used by defendarit was that of a cold plunger

and therefore did not infringe the claims of the Reissue Pat-

ent No. 19,11% which are restricted to the method of apply-

ing the heat and pressure simultaneously to the cork dise

when the center spot is cut out by means of a heated plunger.

Neither party uses a heated eutting punch as called for by

Reissue Patent 19,117. It has been pointed out that respond-

12.

ent always used a cold cutting punch (p. 10 of this brief).

The petitioner’s own witnesses said that it did not between

1930 and 1934 use a heated cutting punch (p. 134 Rec.) and

the District Court so found (p. 2081 Rec.).

There is thus a finding of fact by the Circuit Court of

Appeals based on adequate evidence and upon the only con-

struction that could be made of the claims of Re-issue patent

No. 19,117. It is submitted that certiorari should not be

granted to review solely that question of fact. That it is the

well settled practice of this court not to rev iew questions of

fact on Certiorari is demonstrated by the-case of Maytag

Company vs. Brooklyn Edison Co., Inc. page VEII, No. 654

where the Court of Appeals reversed the District Court on

the question of validity and the case of United Chromium, Inc.

vs. General Motors Corp., page XI, No. 733, where the Cir-

cuit Court of Appeals reversed the District Court on the

question of priority of invention and erey Mfg. Co. Inc., et

al, vy. Tulchen, XI No. 746, where cheat Court of Ap-

peals reversed the District Court on t question of infringe-

ment. 299 U. S. (Advance sheets).

\

f

The subject matter of thé claims in: Warth

patent 1,967,195 was completely and volun-

tarily dedicated to the public by Warth.

The record shows that when the Warth application for a

method of applying a center spot to crown caps by heat and

pressure was: applied for on January 7th, 1927, Serial No.

"159, 743, the use of a heated plunger was disclosed (p. —

Rec.) It also contained the following statement :

“Tt may be desirable to secure the metal’ foil spot in

position prior to the heat and pressure steps, sufficiently

to prevent dislodgement of the spot during any interval

between assembling and final sticking. This may be ac-

complished, for example, by preheating the assembled

crown to soften the coating as soon as the metal foil

spot is deposited. Or the coating may be softened by

moistening slightly with a solvent, such as benzol. In

13

either case the coating becomes tacky enough to hold the’

metal foil spot from getting out of position during or-

dinary passage through assembling apparatus.”

It originally had claims for a method including coating metal

foil with an adhesive rendered soft by heat and applying

heat and pressure by means of a heated plunger and or by

preliminarily heating the cork. It also had two product

claims for an adhesive, which were cancelled on a require-

-ment for division. All the method claims were rejected in

an Office letter dated January 11th, 1929 (p. 1497 Rec.) ~The

Office letter stated that the method claims were “rejected

on any of the references cited which disclose the coating of a

metallic foil with an adhesive which is rendered soft by heat,

applying the coated metal to cork and holding under pres-

- Sure until the adhesive hardens.” That letter also required

a drawing if any claims were subsequently found allowable.

The case was amended (p. 1498 Rec.) by cancelling claims 1,

4 and 6 and limiting oné of the claims by inserting “cutting

a facing spot from-coated foil”. The amendment stated (p.

“1499 Ree. )»:

“The Examiner. states that any of the references dis-

closes the-use of an adhesive rendered soft by heat.and .-

applying under pressure. But applicant is not claiming

anything so. broad as that.” :

The case was then finally rejected, and an appeal taken (pp.

1500-1 Rec. ) Attention is called to the Examiner's statement

(pp. 1502-3 Rec.)- It will be noted the Patent Office, in its

rejections made no distinction between the two methods by

one of which the heat was applied to the cutting plunger and

the other for preliminarily heating the cork,-but rejected

both methods. On December 3rd, 1930, after an interview

with the Examiner (p. 1508 Rec.) all the claims were can-

celled. The application being almost entirely rewritten (pp.

1509 to 1518), the claims all cancelled and one specific claim

inserted, limiting the méthod to “upon assembly applying

oe

14

simultaneously to the spot, pressure and sufficient heat to

render the adhesive tacky.”

It will be noted that the amendment also , eéluntarily can-

celled the matter we have quoted at page 12 brief, supra as to

the pre-heating of the assembled crown. With the amendment

a drawing was filed showing a heated plunger. After an

amendment under rule 78 was made inserting another claim,

_ which- was the same as the one claim allowed with the ex-

ception that it was limited to a metal foil spot (pp. 1530-1

Rec.) the application was allowed and the patent wag issued

on January 6th, 1931, bearing number 1,788,260 (the parent

of the reissue 19,117): The issued patent 1,788,260 had no.

disclosure of and made no reference to preliminarily heat-

ing the cork.

Obviously, when the patent issued it was open to the pub-

lic and any member of.the/public interested in the patent

could look at the Patent Office file history and see that the

patentee had abandoned and dedicated to the public, both

the subject matter and the claims for the method of obtain-

- ing the necessary heat by preheating the cork. There can be

no clearer case of voluntary dedication to the public of this.

method than the action of the patentee in this instance.

Patent 1,967,195 contains the statement that the original

application was filed on November 7,'1930, Serial No. 494,201,

or

which in furn is a division of Serial 159,743, January 7, 1927, _

now patent 1,788,260, dated Jan. 6th, 1931.

It is true that Serial No. 494,201 filed on November 30th.

does contain the disclosure as to preliminary heating the

cork which was cancelled from the parent application of

January 7th, 1927, #159,743. The ‘District Court held, and

petitioner argues, that because -an application containing a

* disclosure of the method in connection. with an entirely dif-

‘ferent invention, but making no claims to the method per se,

or any method of any kind, was in the Patent Office at the

time of filing the application of April 4th, 1933, which re

sulted in patent 1,967,195, the patentee Warth was entitled

, .

Wet was re tad Mild

15

to the date of January 7th 1927 when he first filed an =

cation claiming that disclosure.

_ There are two complete answers to that erroneous hold-

ing of the District Court and the contention of petitioner in

attempting to uphold it. The first answer is that, as above

- pointed out, when the parent patent 1,788,260 issued and be-

came public on Jan. 6th 1931, the file shows. that the pre-

heating method and claims therefor had been abandoned and

the patentee had elected to take claims for the narrow and

specific method of applying heat. to the plunger.

The second answer is that the application Serial No.

‘494,201 was for an entirely different invention. It is not an

application for a patent on a method at all. The application

494,201 (p: 1948 Rec.) states that it is for an improvement

in “Bottle Cap Spot Material”. It appears from the specifi-

cation (p. 1950-2 Rec.) that the alleged inventior consisted

of coating a strip of tin foil or aluminum foil with a heat

fusible adhesive. There was one claim which read in part

“As a new article of manufacture, highly flexible

laminated material in sheet or strip form for the spot-

ting of cushion disks, ete.”

The claim was rejected as obviously met by a number of prior

art patents, (pp. 1955-6 Rec.) and the Office action said

“This cast appears dev oid of invention and should be

prepared for a final action.”

The case was amended and a drawing inserted showing the

method of putting’the adhesive on thestrip material. _

The drawing also showed and the amendment stated (p.

_1964 Rec.) that the heat for softening the material was to

*. attained by maintaining the cutting punch 20 at an elev-

ated temperature. The drawing so far as the heating method

is concerned was the same as that shown in reissue 19,117. |

On pages 1968-9 Record ten advantages were enumerated

for the invention, most of which were to show the great

desirability of applying the adhesive by coating it on the

.

16.

strip material instead of -feeding a separate sheet of cap

material and a separate sheet of gutta percha tissue as had

previously been done. The tenth advantage claimed p. 1969

_ Rec.) was

“The heat and pressure necessary for uniting the facing

to the cap may be applied substantially simultaneously

with the. punching and assembly operations, ete.”

‘The case was again rejectéd, (p. 1972) the office letter stating

that it should be prepared for final action. It will thus be

seen that in application 494,201 which is relied upon by .

petitioner to show that the matter was still before the-Patent

Office, the applicant again illustrated.‘and described the

heated plunger. He did not urge or mention the desirability

of preheating the cork.

It is further significant that the applicant in an amend-

ment (p. 1969 Rec.) dated June 16, 1931, after patent

1,788,260 had issued on Jan..6, 1931 for the method, stated:

“As a further feature of the invention, the applicant

proceeded to provide a method involving the use of this

‘article. However, the article is the basis for the method.

Protection having been granted for the method, it is

thought that the same argument which supports the

patentability of the method, applies with much greater

force to the article, without which the method could

not have been provided.” ;

The claims were again rejected (p. 1972). Thereafter, amend-

ments were made with other claims and finally the applica-

tion was allowed on Feb. 1st 1933 (p. 1984 Rec.) with two

claims. One of the claims was cancelled and transferred to

_ the application for such strip material patent 1,899,782 held

invalid by the District Court. The case was allowed to lapse

for non-payment of fee and was renewed on Feb. ist 1934

with other claims put in and it was again allowed on Oct. 5,

1934 (p. 2000 Rec.) but the patent was never issued and coun- |

sel for respondent on February 14th 1935, had to apply to the

Commissioner to obtain a copy of the application and the re-

17

quest was acquiesced in by counsel for petitioner (pp. 2005-

6 Rec.).

_ When the Johnson patent was ready for issue there was no

application pending in the United States Patent Office con-

taining claims conflicting with the method clams: of the

application for that patent, No. 1,852,578.

When Warth filed the application on April 4th 1933 for

the patent which resulted in 41,976,195, his attorneys wrote

a letter to the Patent Office stating that (p. 1686 Rec.) :

“It is to be noted that the issued patent (1,788,260

on which the reissue was founded) does not disclose the

preheating of the crown or pad within the crown.”

Despite that statement, petitioner now asserts in this

Court, that reissue of Patent No. 1,788,260 embraces the very

feature admitted not to be disclosed in that patent or-reissue,

and asks that the claims be construed to cover a feature not

disclosed in the patent, and which was deliberately caycelled

from the application therefor. — ;

Directoplate v. Donaldson Lith. Co., 51 F. R. (2)

L199;

Rosenberg et al v. Cue Fastener Co., 51 F. R. (2)

1014 Cert. Denied 284 U. S. 602.

A divisional application cnhnet be obtained

_after the Parent case issues. They must he co-

pending. .

The assertion by petitioner on pages 3 and 5 of the neti

tion that the decision of the Circuit Court of Appeals for

the 2nd Circuit, in ‘this case, reverses fhe accepted practice

in the Patent Office, is not warranted. That practice is clear-

ly defined in the case of Fessenden vs. Wilson et al., 48 F. R.

(34) 422, (Ct. Cust. & Pat. App.) where the Court said at

“page 424: ;

“We agree with the Board’s finding as follows: ‘Fes-

senden’s earlier application becanie a patent May 14,

= 4 SSE PORATED

F eneciener meee 3

18

1918, and the patent contained no disclosure’ of the in-

vention claimed in Fessenden’s later application. There

was an interim of more than three years between the

grant of the patent upon the earlier application and the

filing of the later application. The later application

cannot have the benefit of the date of the earlier appli-

cation as a continuation thereof. The proceeding relat-

ing to the-tw6 must be in fact continuous. Sarfert y.

¢ Meyer, 1902 C. D, 30. An application cannot be con-

sidered as a continuance of a patent granted prior to

the filing thereof, since after the application has even-

tuated into a patent there is nothing left pending before

the Patent Office upon which it could act or to which the

later application could attach. In re Spitteler, 31 App.

D. C, 271, 134 O. G. 1301; Wainwright ¥. Parker, 32

Add, ‘D. C. 431, 142 O. G. 1115, 1909 C. D. 379"

”

The facts in the-case quoted from are exactly like those in

the case at bar. Warth’s original patent 1,788,260 on which

the reissue was founded, as previously pointed out, issued in -

' 1931, with no disclosure or claims for the method of 1,967,195.

The fact that the disclosure was still in the Patent Office in

Serial No. 494,201 in no way affects the’ applicability of the

law laid down in the cited case. Application 494,201 was for

an entirely different invention, and no method of any kind

was.ever claimed in that application. When the original of

the rgissue issued an inspection of the file wrapper showed

thatthe disclosure and claims for the method of preheating

the cork was voluntarily cancelled from the application and

the public had notice thereof. :

The application upon which the Warth Patent 1,967,195

_ was granted could not be a division of application Serial No,

494,201 or 159,743 because the subject matter of application

for patent 1,967,195 was voluntarily cancelled and abandoned

. in 159,743, and any assertion of a right to a patent upon the

cancelled subject matter was not made until the filing of the

application for Patent No. 1,967,195 more than two years

after the issuance of Patent No. 1,788,260 granted upon ap,

plication Serial No. 159,743. While such claims niight have

*

19

been asserted at any time during the pendency of application

Serial No. 159,743, they could not be asserted after the issu-

ance of Patent No. 1,788,260, even by reissue and much less

so by divisional application, because of abandonmeut of

record of the subject matter.

If Reissue 19,117 is entitled to a construction of a scope to

include preheating the cork disc as-called for in patent 1,-

967,195, to sustain patent #1,967,195 would be to extend the

monopoly. Saranac Automatic Machine Co. vs. Wirehounds

Patents Co, et al., 65 F. R. (2d) 904 (C. ©. A. 6th) at 906,

where the court refers to the prior decision of this Court in

* another case, involving the same patents reported in 282 VY.

S. 704 (sde pp. 714-15).

In order for patent 1,967,195 to be entitled to the date of _

Jan. 7, 1927 (the application date of the original of the re-

issue)*the application for 1,967,195 would have to be filed

before the issue of the first patent.

Gen. Motors Corporation y. Rubsam Corporation,

65 F. R. (2) 31% at 220 (C. C. A. 6);

In re Nathan, 279 FP. R. 925.

The record shows a clear’case of intervening

rights.

Counsel for petitioner states in his petition and brief in

support thereof (pp. 3, 17,'19) that there were no interven-

ing rights other than the issue of the Johnson patent and

the admitted use by petitioner in 1929 and calls attention to

the fact that the District Court ignored respondent’s use of

the method patent 1,967,195 and that there is no express find-

- ing of the Court of Appeals to the contrary. Petitioner there-

fore argues that the doctrine of Chapman vs. Wintroath ap-

plies, because Warth, when he filed his application for 1,967,-

195 copied the claims of the Johnson patent within two years

from the isstiance thereof,and thus comes within the prin-

ciple of Chapman y. Wintroath.

tt

20

While it is true the Ciruit Court of Appeals made no spe-

cific finding on the question of intervening ‘rights, it is very

apparent that in applying the doctrine of Webster vs. Split-

dorf, it based its decision on the facts in the record and

necessarily found as a faet that there were intervening rights,

without specifically saying so, otherwise it would not have

reversed the District Court and applied the doctrine of Web-

ster vs. Splitdorf. Obviously the Circuit Court of Appeals

always goes into the facts in a patent case de novo.

‘Owing to the misleading statement by Petitioner on page

9 of his petition and brief, “Even in thé absence of interven-

ing adverse rights” it is necessary to br iefly refer to so much —

of the record as shows that respondent, from 1928 up to the

time of the tr ial, used the method of pr eheating the cork as

claimed in the Warth patent 1,967,195.

-Respondent bought its machines for center spotting caps

from Johnson, beginning as early as July 1928 and ending

in the Spring of 1933. The petitioner endeavored to show

in the trial court that the first machine purchased by respon-

dent from Johnson in 1928 did not have a device for pre-

heating the cork and the District Court feund that none of

the machines purchased by respondent from Johnson had a

preheater (p. 2100 Rec.).

There was conflicting evidence as to whether the first two

machines bought by respondent from Johnson in’ July and

August of 1928 had or had not the preheating device. We

may assume for present purposes that they did not. Jt is

‘proved, however, beyond all question, that the additional

machines purchased ‘by respondent from Johnson in Sep-

tember 1928, December 1928, March 30, 1929 and April

30th 1929 did have a preheating device for the reason that

respondent’s Exhibit Q (pp. 1102-3 Rec.) shows that each

one of the bills. to repondent from Johnson call for a num-

ber of features among which is “a roll feed etc.”. The roll

feed means “a spotting” attachment (p. 350 Rec.). The bills

of Johnson for the July and August machines (Exhibits P

tn i I atl ae

21

and S, pp. 1101 and 1108 Rec.) each call for one tin foil

‘machine etc. Subsequently and between May 5th and June

19th 1933, respondent purchased four other machines from

Johnson (Exhibit R, pp. 1104-7. Rec.). The center spotting

machines were purchased from Johnson by respondent for

the purpose of manufacturing center spot crowns having a

metallic foil spot secured by gutta percha to meet a large

commercial demand which arose about that time for center

spots by brewers. Respondent received inquiries, and ulti- -

mately orders from the Goetz Brewery, one of the largest

breweries in the country, for the production of crown caps

for beer bottles with a center spot of metal foil ( PP. 268-

278 Rec.). |

Mr. Ketterer, manager of the. Goetz Brewery, a witaens for

respondent identified invoices for crown caps having a metal

- center spot, which respondent’s witnesses said were made on

Johnson center spot.machines having the preheating device

and secured by gutta percha, running continuously from

August 1928 until November 1935 aggregating approximately

one million gross of caps to that one customer. (Exs. NNN

to TTT pp. 1763 to 1812.) In addition to that one customer,

respondent sold a great number of center spot crowns made

by a method including preheating the cork disc before the

center spot was applied, to other customers. In 1930 and

1931 it sold carloads of crowns made by that method ta the

Welch Grape Juice Co. (pp. 318-19 Rec.). *

That the spotting machines made and sold by Johnson to

respondent the latter part of 1928 and in 1929 and 1930 had

. the preheating device is conclusiv ely shown by. the cross ex-

amination of Johnson by petitioner’ s counsel, at pages 237-8

of the Record, from which it appears that Johnson put the

preheaters on the machine he had sold to Armstrong, on

October 5th 1928. He said in answer to XQ 116:

“I took the heat out of the cutting punch altogether

and installed two heaters in front of it, and also a space

heater I installed before the tin foil disc was cut and

inserted. And that kept the cutting punch cold.” |

. a |

.

22

In part of his answer to XQ 113 he said:

“And I put preheaters on it, and took out the heater

in the cutting punch and heated the cork before the spot

was inserted * * *,”

That petitioner had actual knowledge of the use of

machines for carrying out the method of preliminarily heat-

ing the cork covered by the claims of method patent 1,967,-

195 by respondent and others, is conclusively shown by its

own act in copying the three method claims of the Johnson

patent for the purpose of interference (p. 1686 R.) and the

evidence adduced during. the interference.

The issue of the interference was, of course, the three

method claims of the Johnson patent, now the only claims of

patent 1,967,195. A copy of Warth’s preliminary statement

does not appear in the record. A copy of the preliminary

statement of Johnson is found on pages 2043-4 of the record,

from which it appears that he constructed a full sized ap-

.paratus for carrying out the invention during the fall of

1927 and sixteen apparatus for carrying out the invention

of the issue had been constructed.

‘ When Warth got into interference he, of course, knew that

he had to go back of Johnson’s filing date of November 26th

1929 and Warth therefore alleged as reduction to practice

‘the date of his application Serial No. 159,743, for the patent

resulting in 1,788,260, the parent of reissue 19,117. Ag has

been pointed out, the step of preheating the cork, shown in

159,743 was cancelled from that application on December 8,

1930.

At the beginning of the interference Warth made a motion

to shift the burden of proof in an effort to obtain the date of

filing of 159,743, viz Jan. 7th, 1927. The motion was denied

by the Examiner of Interferences on the ground that the

Jan. 1927 application of Warth did not contain a disclosure

sufficient to support the counts (pp. 438-9 Rec. ). Johnson also

filed a Public Use Proceeding from which it appeared that

machines for carrying out the. method of his patent were

*

23

made and sold and in public use moré*than two years pr ior

- to April 4th 1933, (when Warth filed the application for

patent 1,967,195) by-several persons, among whom was the

respondent, the Arrow Bottle Cap Corp. of Brooklyn and

the Crown Cork & Seal Co. Inc., the petitioner herein (p.

1150 Rec.). Johnson’s petition Ser Public Use Proceedings

was corroborated by a number of affidavits found at pages

1133 to 1148 Ree.

._ After the decision of the Examiner of Interferences deny-

ing Warth’s motion to shift the burden of proof, the Peti-

tioner on December 12th, 1938, purchased poe Johnson pat-

ent and took an assignment thereof (pp. 226, 1162 Rec.).

The assignment was never recorded (p. 610" Rec.). After

the purchase by petitioner of the Johnson patent the inter-

ference was still continued and a stipulated record consisting

of affidavits made by Warth and two others was made up for

the purpose of final hearing and appeal (p. 1890 Rec.). On :

that stipulated record the Examiner of Interferences reversed

his prior decision and awarded priority to Warth. Counsel

for Johnson filed no brief at final hearing (p. 576 Rec.). All

papers filed by Johnson in the public use proceeding were

withdrawn from the Patent Office by petitioner ‘after peti-

tioner purchased the patent from Johnson (pp. 227-9 Rec. ).

Defendant’s Exhibit T (1109 to 1120), shows bills running

between March 1929 to July 31, 1929 for five tin foil spotting

machines sold and delivered “ Johnson to Petitioner. One

invoice calls for “foil cutting dies for tin foil machine.” At-

tention is called to page 1112, which shows a letter dated

Feb. 27, 1929 from petitioner to Johnson stating:

“Referring to your conversation and correspondence

with our Dr. Warth, would- suggest that you send us

on approval the machine for adhering the putta percha

lining to the tin foil. Also the machine for cuttin the

tin foil and fastening the same to the cork washer on

finighed crowns.”

The petitioner’s vice presideht, Fusting, and its super-

intendent Goebel: admitted the purchase of these machines

~

' cork instead.

24

at the times mentioned (p. 683 Rec.). They said they were

purchased for their Canadian plant. ‘Nevertheless the In-

voices show and both of the witnesses above mentioned ad-

mitted, that the machines were shipped from Johnson’s plant

in Brooklyn to petitioner’s plant in Baltimore, Maryland.

That the machines were there “tuned up” for shipment to the

Canadian plant (p. 554-Rec.). Petitioner’s own act in buy-

ing these Johnson machines inspecting. them and sending

_ them to Canada (if it did send them to Canada) shows pub-

lic use by Petitioner itself, slightly more than four years

before Warth filed his application for patent No. 1,967,195,

on April 4, 1933. When it is considered that respondent sold

caps made by the method covered by the method claims of

the Johnson patent (which are now the only claims in Warth

patent 1,967,195) in large quantities to various customers

continuously from 1928 up to and including the time of trial,

and that Johnson’s public use petition shows the manufac-

ture and sale of machines made and designed for carrying out

the method of the claims under discussion, which petition is

corroborated not only by the accompanying affidavits but

the admitted purchase by petitioner of such machines in 1929,

it is submitted that there can be no clearer case of public

use and intervening rights than is shown by the record of this

case. No question was raised by petitioner’s. witnesses as to

the fact that the five machines shipped to it by Johnson to

Baltimore had the means for preheating the cork. The let-

ter to Warth dated February 27th, 1929 (p. 23, supra),

asking that machines be sent on approval completely nega-

tives any possibility of that question being raised. Further-

more it is negatived by Johnson’s testimony on cross examina-

tion referred to on pages 21-22, supra to the effect that in Oct.

1928 he did away with heating the plunger and heated’ the

_ We thus have a case where an applicant for a patent made

a disclosure in his application as filed. He voluntarily, with-

out any requirement of the Patent Office, cancels the dis-

25

closure and the claims covering that disclosure. Before can-

cellation he files another application for an article with

utterly different subject matter which has the disclosure in

the pending application but he does not claim it. He has

absolute knowledge before cancelling the disclosure that a

third partY has made:-and sold and in fact the applicant’s

assignee has bought machines from that third party for carry-

ing out the method coyéfed by the disclosure and claims as

originally filed. The applicant, more-than three years after

voluntarily cancelling the disclosure and claims for the mat-

ter in controversy, and after actual knowledge of the sub-

ject matter of the claims in a patent issued to the man from

whom. his assignee by his order had bought machines from

Johnson the patentee, for the purpose of carrying out the

method then files an application claiming that which he had

originally disclosed and voluntarily cancelled and which for

some four years had been in public use and on sale.

_ he record therefore shows that the casefof Webster vs.

Splitdorf cited by the Circuit Court of Appeals in its decision

clearly applies. There could be no clearer case for its applica-

tion than the case at bar. | |

Quite apart from the decision of Webster v. Splitdorf, this .

Court has many times held that in a case where a patentee

has delayed asserting his rights and intervening rights have

accrued, the patentee will be barred from later asserting

those rights. In the case of many Co. y. Sayles, 97.U. S.

554, 563, this Court said:

“Courts should regard with jealousy and disfavor any

attempts to enlarge the scope of ‘an application once

filed, or of a patent once. granted, the effect of which

would be to enable the patentee to appropriate other in:

ventions made prior to:such alteration, or to appropriate

that which has, in the mean time, gone into public use.”

In the case of Victor Talking Machine Co. v. Brunswick-

Balke-Collender Co. et al., 8 Fed. 2d 41 (C. C. A. 3rd), the

Court said: : *

* .

rT ae eee —

.

.

.

a .

26

“On April 4, 1911, Browning struck from his applica-

tion for the patent the invention @overed. by: claim ‘1, and

did not reinsert it until June, 1915. Judge Morris held

that this unexplained silence for a period of more than

four years constituted an abandonment by him of the

invention. We think his conclusions on both issues are >

sound, and affirm the decree on his opinion.” :

That decision was affirmed by this Court. Per Curiam, 273 _

U. 8. 6713. |

Planing Machine Co. v. Keith, 101 U. 8. 479 at 485 ;

Consolidated Fruit Jar Co. v. Wright, 94 U. 8. 92;

Yale Lock Co. v. Berkshire Bank, 135 U. 8. 342 at j

378-9 ; 3

Rubenstein v. Slobotkin, 33 F. R. (2) 603 at 608.

It is well settled that where an applicant delays his appli-

cation in the Patent Office for a long while and then puts in»

claims which cover improvements that have appeared in the

art and patents issued therefor in the meantime, he cannot

amend or broaden his claims to cover such devices. Typical

cases are Irving Air Chute Co. v. Switlick Parachute & Equip.

- Co., 82 F. R. 2d 645 (C..C. A. 3rd Circuit) ; 7. H. Symington

€ Son, Inc. v. Symington Co., 9 Fed. Supp. 699 at 704; Insu-

lite Co. ¥. Reserve Supply Co., 60 Fed. 2d 433, 435 (C. C. 8),

Hartford Empire Co. v. Coe, 76 F. R. ( 2) 426. ~-

vein tis the law, it is clear beyond question that peti-

tioner/in this case having cancelled the method of preheating

the cérk in his 1927 application for patent and allowed the

patent to issue thereon without that disclosure, cannot come

. in three and one-half years thereafter, when a patent has

been issued to Johnson for the matter cancelled and the

subject. has been in use by Johnson, the respondent in this

case as well as the Petitioner and others and obtain a valid

patent for the cancelled subject matter,

<a

- 27

Petitioner is licensed to use the method and

machine of Johnson Patent 1, 852, 578.

‘Under U. S. R. S. 4899 petitoner is hicaneed to use the

machine of the J ohnson Patent 1,852,578 and to carry out the

method set forth in the method claims of that patent.

Respondent bought all of its machines from Johnson be-

tween August, 1928 and the spring of 1933 Some of these

machines were purchased after the issuance of the Johnson

patent No. 1,852,578 (pp. 1102-7 Rec.,-Vol. 2: Test. Johnson,

pp. 222-3 Rec.). By the purchase of these machines, respond-

ent acquired the right to their use from the patentee. The

Johnson patent contained 27 claims to the machine and three

claims to the method or function of the mechanism of the

machine.

Prior to the filing of the: application for public use proceed-

ings, by Johnson, and in*August, 1933 (pp. 301, 379), peti-

tioner’s vice-president and its counsel visized the plant of.

the respondent and saw a Johnson machine in operation. On °*

December 12th, 1933, petitioner purchased the Johnson pat-

ent and took an assignment thereof (pp. 1162-3 Rec., Vol. 2)

and, on the same date executed a license te Johnson which

license set forth that it was on that date the owner of the

Johnson patent and gave Johnson a release for all past in-

fringements of the Johnson patent (p. 1157 Rec.).

The petitioner took title to the Johnson patent with full

knowledge that the respondent was using such machines and

no subsequent proceeding in the Patent Office can divest

the respondent of the rights its acquired from Johnson to use

the machines, particularly when the petitioner does not con-

test the inventorship of Johnson of the apparatus claims of

the machines.) _

Pan oe Foundry vs. Fastpress Co., 272 Fed.

242;

Dable Grain Shovel Company v.¥ lint, 187 U.S. 41;

DeForest Radio Telephone Company v.* United.

States, 273 'U. S. 236.

we

28

The record shows that there were intervening rights and

a public use of the method of patent 1,967,195. The facts

constituting such intervening rights and such public use were

known to petitioner long prior to the filing of the applica-

tion by Warth for such patent and before the purchase by

. petitioner of the Johnson patent and the subsequent allow- .

ance of the method claims of that patent in the Warth appli-

cation. This procedure obviously was solely for the purpose

of divesting respondent of those rights acquired by the pur-

chase from Johnson of machines for the practice of the.

method.

Petitioner, by thus buying the Sohneon patent and havi ing

the claims allowed in patent (1,967,195) granted more than

two years after the issue of the Johnson patent, has not only

prolonged fhe life of the monopoly as to the method, but. has

prolonged the life of the Johnson patent which it owns.

The Johnson patent, with its apparatus and method claims.

nominally would have expired in April, 1949, and if the

Warth patent 1,967,195 is valid, the Johnson patent, as to the

apparatus claims, while nominally expiring in 1949, will in

fact be extended to July, 1951, since this apparatus cannot be

used without infringing the method claims of ‘the Warth

patent 1,967,195.

The effort to conceal the fact of ow nership of the Johnson

patent obv iously/was an ofort to withhold a material fact

from the public.

Keystone Driller v. General Excavator Co., 290 U.

8. 240.

. There is no conflict of decisions.

Counsel for petitioner has cited a number of authorities

and argued thatthere is a conflict of decisions between the

Circuit Courts of Appeal of different circuits. It is unnes-

sary to discuss those cited decisions in detail. No one of them

shows a state of facts.as shown by this record, viz. claims and

‘disclosure having been stricken from a pending application,

the patent issued and then more than two years after its

-

i 29

issuance the inventor tries to get that cancelled and aban-

doned matter which has gone into public use, into another

patent and get the date of the original. °

Counsel for petitioner evidently overlooks the fact that the

case of Wirebounds Patents Co, vs, Saranac Automatic Ma-

chine Co., 37 F. (2) 830 relied on by him at pages 5, 12, 19

of his brief was reversed by this Court in 282 U. S. 704. It

would seem that if any conclusion could be drawn from the ac-

tion of this court, it is that the decision of the lower court in

that case 24 Fed. (2) 872 is the law. That court properly ap-

plied the doctrine of Webster Electric Co. vs. Splitdorf

Electric Co., because there was a long delay in filing a divi-

sional applitition and as in the case at bar there was no evi-

lence of inadvertence, accident or mistake.

It will be noted therefore that on an analogous state of

facts to those in the case at bar, this Court refused to pass on

the question now attempted to be raised by petitioner. Mani-

festly, there is no conflict between the decisions of the Sec-

ond.and Sixth Circiuts. ;

The fact that the patentee thought or was

informed his claims covered both forms of the

invention is no excuse. : ‘

Counsel for petitioner cites on page 28 of his brief, two

‘ases to the effect that reliance on an earlier application or

patent is an excuse for delay in asserting claims. The two

‘ases cited there are both interference decisions and show an

ntirely different state of facts than that shown in this

“ecord.

In any event, this court has held that the opinion of a

patenteé or his counsel, to the effect that an earlier patent

overed a certain construction is no excuse for delay.

Wollensak vs. Sargent, 151 U. S. 221 and cases

cited.

McClain vs. Ortmayer, 141. U. S. 419. -

Radio Condenser Co. et al..v. Coe, 75 F. R. (2) 523.

30

The case of Chapman vs. Wintroath, 252 U.

S. page 126 has no application to the facts dis-

closed by this record.

In Chapman. vs. Wintroath, the Chapmans disclosed the

invention in controversy but did not claim it. Thereafter

Winthroath filed an -application and obtained a patent on

oy . the subject matter of the invention. After wards, while

Chapman's original application disclosing the. subject mat-

° _ ter was still pending, they filed a divisional application with-

in two years from the issue of the Wintroath patent and

copied Wintroath’s claims. It was held they could do it

because they had originally disclosed it in a pending appli-

cation. There are no such facts or even remotely analogous

faets in the record of this case. In the case at bar. Warth

deliberately cancelled the matter, as has been previously

pointed out and. his patent issued {without disclosing or

claiming the cancelled matter, and thé cancelled matter was

dedicated to the public when his original patent issued in

1931, the file of which shows that matter had been cancelled.

This court in Chapman vs. Wintroath did: not lay down

any hard and fixed rule to the effect-that if a patent issued

to anether party while an application was pending the appli-

cant could, in every case, as a matter of right copy the

Y claims of the issued-patent for interference purposes. On the

contrary it expressly provided that there might be cases .

where even if an application was filed within the two vears

it would not be in time depending on the circumstances of

each case. This court said on page 139:

“While not intending to intimate that there may not

be abandonment which might bar an application within

the two-year period allowed for filing, vet upon this dis-

cussion of the statutes and decisions ete.’

;

‘

bei As previously pointed out, the case at bar i is one of deliber-

ate abandonment. There are intervening rights of third par-

ties. The — matter had been cancelled from the appli-

—

31

cation (159,743) the date of which petitioner seeks to

obtain and the patent had issued on that application.

Obviously Chapman v. a has no application to

the case at bar. .

The invention claimed in both of the patents

in controversy is merely fora function and not

—-" | .

The claims of both Warth patents, Re-issue 19,117 and

1,967,195 are for a method. No complete apparatus or

machine for carrying out the method. is shown, described or

claimed. The claims in both of these patents are for a method

of securing a center spot by means of.a heat fusible adhesive

with a cork disk by means of heat and pressure. The claims

are for nothing but the function of a machine. Obyiously

when using a heat fusible adhesive, heat and pressure must .

be used.

It is well settled by many decisions of this and other

Courts that a patent for a result or fupction cannot be

sustained.

PA

Westinghouse Air Brake Co. v. Boyden, 170 U.S.

537 at pages 555-8;

E. Van Norden Co. v. Cheney, 75 Fed.. 298 (C. -

A. 1) at page 302 um

Directoplate v. Denatiies Lith, Co., 51 F. R. (2d)

199;

DeForest Radio Co. v. General Electric Co., 283

U.S. 664, pages 682-4. ,

CONCLUSION.

There is nothing in the record to warrant the exercise by

this Court of its discretionary power of review.

The facts in the record do not support the questions =

sented by petitioner on page 9 of its brief.

32

The question of infringement of Re#ssue patent No. 19,-

117 is purely one of fact. .

The construction placed by the Circuit Court of Appeals

upon the claims of Re-issue Patent No. 19,117 is fully sup-

ported by the file history of the application for that patent

and the facts in the Record.

Patent No. 1,967,195 is invalid for the reason that the sub-

ject of the claims thereof was cancelled and abandoned to the

public by Warth when he cancelled the description and

claims from his application Serial No. 159,743 (the date of

which he now seeks to obtain) and thereafter permitted

Patent No. 1,788,260 to issue on January 6th, 1°?" -nd per- ©

mitted the public to acquire knowledge of such ccc lation.

In the meantime respondent and others had used the method

to a large extent commercially.

The Record shows a clear case of interv ening rights and

the Circuit Court of Appeals properly applied the doctrine

enunciated by this Court in Webster v. S ee to t 2 facts

shown in this Record.

The Petition should be in all respects datiik

Dated, New York, N. Y., June 30th, 1937.

WILLIAM E. WARLAND.

Counsel.

FRANCIS H. WARLAND,

NATHANIEL L. LEEK,

Of Counsel. ;