Crown Cork & Seal Co. v. Ferdinand Gutmann Co.

Mr. Justice Butler

delivered the opinion of the Court.

Petitioner sued respondent in the district court for eastern New York to enjoin infringements of patents, two of which are here involved. One is Warth Reissue Patent, No. 19,117, dated March 20, 1934. The other is Warth Patent, No. 1,967,195, dated July 17, 1934, a divisional patent. Both relate to methods for applying small disks of paper or foil, known as center spots, to cork cushions of crown caps. These caps are used to seal bottles containing pressure beverages. The center spot prevents contact of the liquid with the cork. The district court adjudged both patents valid and infringed. 14 F. Supp. 255. The circuit court of appeals reversed, holding the reissue patent not infringed and the divisional one invalid because of laches in filing the application on which it was grapted. 86 F. (2d) 698.

The questions presented by the petition for the writ, granted 302 U. S. 664, are these:

1. “Does this Court’s decision in Webster Co. v. Splitdorf Co. [264 U. S. 463] mean that, even in the absence of intervening, adverse rights, an excuse must be shown for a lapse of more than two years in presenting claims in *161a divisional application regularly filed and prosecuted in accordance with patent office rulés?”
2. “Where there has been more than two years delay in asserting specific claims in a divisional application, is it an excuse for the delay that there were claims in the parent patent which, on their face, covered and were reasonably believed to cover, the subject-matter of the divisional claims, even if a Court later interpreted the parent patent claims not to cover such subject-matter?”

Our consideration of the case will be limited to these questions. Washington Coach Co. v. Labor Board, 301 U. S. 142, 146. Morehead v. N. Y. ex rel. Tipaldo, 298 U. S. 587, 604, 605. Clark v. Williard, 294 U. S. 211, 216. Alice State Bank v. Houston Pasture Co., 247 U. S. 240, 242. The first calls for decision upon a single point. It specifically assumes the absence of intervening rights and that the application was appropriately made. There is no question as to the validity of either the original or reissue patents.

Warth filed his first application January 7, 1927, and his second November 7, 1930.1 From these came the original patent, January 6, 1931. It was to correct an error in the specification that the reissue patent was granted. Before issue of the original paterit Johnson, November 26, 1929, filed application on which a patent issued April 5, 1932. April 4, 1933, two years and three months after the original patent was granted Warth, he carved f:.’om his second application a divisional one in which he copied the. claims of the Johnson patent. In the interference declared upon the conflict, the patent office held Warth's *162divisional application entitled to the filing date of his first one, and awarded,the claims of the Johnson patent to him as prior inventor. These are the claims held too late by the circuit court of appeals.

The claims of the reissue patent involved are shown in the margin.2 The important feature is simultaneous application of pressure and heat to the center spot to make it stick to the cork cushion in the cap. Neither these nor any other claims of the patent specify means to be •employed to furnish the heat. The claims in suit of the divisional patent3 cover means to supply heat to be ap*163plied to the center spots when subjected to pressure. The important feature is “heating the pads [cork cushions] in the caps” before placing the spots upon them.

The first application, January 7, 1927, stated: “It may be desirable to secure the metal foil spo.t in position, prior to the heat and pressure steps, sufficiently to prevent dis-lodgement of the spot during any interval between assembling and final sticking. This may be accomplished,for example, by preheating the assembled crown, to soften the coating as soon as the metal foil spot is deposited.” That application contained claims, construed by the circuit court of appeals to be broad enough’ to cover that disclosure. The patent office called for drawings to illustrate means for carrying out the method claimed. Accordingly, Warth' showed, by way of illustration, that heat might be furnished by the punch used to cut the spots from, the adhesive material and place them upon the cork in the cap, where by the same stroke of the plunger, they might be subjected to pressure. When he filed the drawings, December 3, 1930, he canceled from the! first application the statement just quoted and canceled the claims originally filed. The second application had already been filed. Both contained another statement: “In carrying out the invention according to what is now considered the best practice, the coating will be softened by heat after the crown is assembled. This may be accomplished in any suitable manner, as by a heated plunger or a plunger and heated table. The heat softens *164the coating and;'renders it adhesive.....” So far as concerns the question under consideration, it is broad enough to .'include means for supplying heat by the punch as shown by the drawings, and the preheating method claimed in the divisional application.

The district court found no adverse use of the preheating method prior to the filing date of the application for the reissue patent. . The circuit court of appeals did not disturb that finding. It found that Warth’s disclosure of the preheating method was continuously before the patent office from the date of his first application, but that there, was no claim for the preheating method on file from December 3, 1930, until April 4, 1933, when he filed application for the divisional patent. It held, citing Webster Co. v. Splitdorf Co., supra, that prima facie the two year limit applies to divisional applications, and that an applicant who waits longer before claiming an invention disclosed in his patent must justify his delay by proof of some excuse. It said, 86 F. (2d) 702, “No such excuse appears here. Had Warth chosen to retain in his parent application broad generic claims which might cover the preheating method, then indeed the Splitdorf rule might not be applicable . . . But ... for a period of more than two years Warth apparently did not wish to claim the preheating method, having deliberately canceled the preheating specification from his original application and shaped his claims so as to exclude it and his patent having been granted January 6, 1931. He made no claim for preheating until more than two years thereafter, namely, April 4, 1933. In the meantime a patent containing claims for the preheating method had been granted to Johnson on April 5, 1932, and it was Warth’s discovery of this fact which stirred him to action. As in the Splitdorf case, had it not been for this competitor, Warth might never have considered the subject worth claiming as an invention.” The court meant that Warth had really abandoned his inven*165tion. See Western Electric Co. v. General Talking Pictures Co., 91 F. (2d) 922, 927.

But, as abandonment was not pleaded as a defense, R. S. § 4920, and as Warth’s disclosure was continuously before the patent office, clearly without any significance adverse to the petitioner is the fact that Warth formally canceled one disclosure from his first application and with it claims thought- by the circuit court of appeals broad enough to cover the disclosure. The continuity so maintained shows that Warth intended to retain, not to abandon, the disclosed invention. See Godfrey v. Eames, 1 Wall. 317, 325-326. Clark Blade & Razor Co. v. Gillette Safety Razor Co., 194 Fed. 421, 422.

This case is not like Webster Co. v. Splitdorf Co., supra. In that case, there came here the question of the validity of claims of a patent issued to Kane in 1918. In 1910 Kane had filed his first application, on which patent issued in 1916. In 1913 a patent covering the same subject-matter issued to the Podlesaks, to whom a reissue patent was granted in 1915. Later in 1915, Kane filed a divisional application which copied the claims of the Podlesak patent. They were decided in favor of the Podlesaks. Thereafter, June 17, 1918, Kane amended his divisional application by adding claims which were allowed, and September 24, 1918, patent issued to Webster Electric Company, Kane’s assignee. In 1915, it had brought the suit against the Splitdorf Company. October 25, 1918, it filed a supplemental bill bringing in claims of the patent issued September 24, 1918.

This Court pointed out (p. 465) that the claims in question “were for the first time presented to the Patent Office, by an amendment to a divisional application eight years and four months after the filing of the original application, five years after the date of the original Podlesak patent, disclosing the subject matter, and three years after the commencement .of the present suit.” We sug*166gested that it was doubtful whether the claims were not so enlarged as to preclude allowance under the original application; we found that Kane, deeming their subject-matter not invention, did not intend to assert them, and, prior to 1918, did not entertain an intention to have them covered by patent. During all of this time their subject matter was disclosed and in general use; Kane and his assignee simply stood by and awaited developments. It was upon the reasons so stated that this Court declared (p. 466) “We have no hestitation in saying that the delay was unreasonable, and, under the circumstances shown by the record, constitutes laches, by which the petitioner lost whatever rights it might otherwise haye been entitled to.”

Upon a review of earlier cases we condemned the lower court’s statement (283 Fed. 83, 93) that Chapman v. Wintroath, 252 U. S; 126, fixed the time within which application-for a divisional patent might be made at two years from date of the issue of the parent patent. We showed that the Chapman case held that an inventor, whose application disclosed but did not claim an invention later patented to another, was not required within one year after issue of the other .patent, to filé divisional application claiming the invention and so to raise issue of interference, but that, by analogy, the two-year period under R. S. § 48864 applied rather than the one-year *167period of R. S. § 4894,5 and that the opinion did not fix a hard and fast rule to be applied in every case of a divisional application. Then we said (p. 471): “Our conclusion, therefore, is that, in cases .involving laches, equitable estoppel, or intervening private or public rights, the two-year time limit prima jade applies to divisional applications, and can only be avoided by proof of special circumstances justifying a longer delay. In other words, we follow in that respect the analogy furnished by the patent reissue cases.” That statement is not directly applicable to the precise question of laches upon which the case turned, but was made in reference to the question arising upon the lower court’s erroneous interpretation of Chapman v. Wintroath. See Wagenhorst v. Hydraulic Steel Co., 27 F. (2d) 27, 29-30. Wirebounds Patents Co. v. Saranac Corp., 37 F. (2d) 830, 840-841. Utah Radio Products Co. v. Boudette, 78 F. (2d) 793, 799.* It is clear that, in the absence of intervening adverse rights, the decision in Webster Co. v. Splitdorj Co. does not mean that an excuse must be shown for a lapse *168of more than two years in presenting the divisional application. Where there is no abandonment, mere delay in filing a divisional application for not more than two years after an intervening patent or publication, does not operate to enlarge the patent monopoly beyond that/ contemplated by the statute. By R. S. § 4886, delay-in filing an application for not more than two years after an intervening patent or publication does not bar a patent unless the invention “is proved t'o have been abandoned.” See Wirebounds Patents Co. v. Saranac Corp., ,37 F. (2d) 830, 840, 841; 65 F. (2d) 904, 905, 906. And, as none need be shown, there is no occasion to decide .whether the facts stated in the second question are sufficient to constitute an excuse for the delay referred to.

Ás our decision is limited to the first question presented, the judgment of the circuit court of appeals will be reversed and the case will be remanded to that court for decision, of the other issues in the case in accordance with this opinion.

Reversed.

Mr. Justice Cardozo and Mr. Justice Reed took no part in the consideration or decision of this case.

The first application extended to materials to be used in making center spots as well as to methods for applying them. Tie second application, because of a requirement of the patent office, omitted disclosures as to materials but included those as to methods that the first contained.

Claim 1. “The improved method of manufacturing caps of the type having an interior disc of cushion material provided on its exposed face with a center spot, which comprises providing spot "material in strip form having one surface formed of an exposed continuous coating of water resistant adhesive which is normally hard at room temperature but becomes tacky upon the application of heat and having another surface to be exposed to the contents of a capped container, cutting from said strip a facing spot having one surface completely coated with said adhesive with a cap disposed beneath the portion of the strip from which the spot is cut, whereby the cutting operation positions the spot upon the cushion material with the coating between the spot and the cushion material, and upon assembly applying simultaneously to the spot pressure and sufficient heat to render the adhesive tacky, thereby causing the spot to adhere to the cushion material, and thereafter permitting the adhesive to cool and harden.”

Claim 3 repeats the words of claim 1 and adds these words, “while subjecting the assembled unit to pressure.”

These claims are fully indicated immediately below. The insertions in. brackets give equivalent terms used in the claims of the Reissue patent.

Claim 1. “The method of assembling linings [center spots] for sealing pads [cushion material] in receptacle closure caps, consisting in providing caps with sealing pads therein and a web of lining material arranged with an adhesive surface non-viscous at normal temperature, heating the pads in the caps, severing linings from the web of lining material and assembling the linings as they are severed from the web in the caps with the adhesive surface *163in contact with the heated pads to render the adhesive viscous and effect adhesion of the linings to the pads.’'

Claim 2 repeats the words of claim 1 and adds these words, “and then placing the linings in the caps under heat and pressure to effect an intimate adhesion between the linings and pads.”

Claim 3 repeats the words of claim 1 and the addition of claim 2 and adds these words, “and then placing the linings assembled in the caps under pressure during the cooling thereof.”

R. S. § 4886, as amended March 3, 1897 (29 Stat. 692): “Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than two years prior tó his application, and not in public use or on sale in this country for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceeding had, obtain *167a patent therefor.” [The statute has since been amended, but not to change the two-year period. See 35 U. S. C. § 31.]

Cf. R. S. § 4887 (35 U. S. C. § 32), relating to inventions patented abroad; R. S. § 4897 (35 U. S. C. § 38), relating to renewal application after failure to comply with requirement as to payment of final fee; R. S. § 4920 (35 U. S. C. § 69), relating to defense of prior invention. , .

R. S. § 4894, as amended March 3, 1897 (29 Stat. 693). “All applications for patents shall be completed and prepared for examination within one year after the filing of the application, and in default thereof, or upon failure of the applicant to prosecute the same within one year after any action therein, of which notice shall have been given to the applicant, they shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner of Patents that such delay was unavoidable.” [The statute has since been amended to reduce the period to six months. See 35 U. S. C. § 37.]