# Opposition Brief — Crown Cork & Seal Co. v. Ferdinand Gutmann Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386401_0018%3A10 ## Record - **Collection:** Supreme Court brief - **Document type:** Opposition Brief - **Published:** January 1, 1938 - **Citation:** 304 U.S. 159 ## Text 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,