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    ABERCROMBIE & FITCH CO. v. BALDWIN , 245 U.S. 198 (1917)

    U.S. Supreme Court

    ABERCROMBIE & FITCH CO. v. BALDWIN , 245 U.S. 198 (1917)

    245 U.S. 198

    ABERCROMBIE & FITCH CO. et al.
    v.
    BALDWIN et al.
    No. 67.

    Argued Nov. 19 and 20, 1917.
    Decided Dec. 10, 1917.

    [245 U.S. 198, 199]   Messrs. James R. Offield and Charles K. Offield, both of Chicago, Ill ., for petitioners.

    Mr. James Q. Rice, of New York City, for respondents.

    Mr. Justice McKENNA delivered the opinion of the Court.

    Suit for infringement of a patent embraced in letters patent No. 821, 580 and a reissue thereof, No. 13,542. [245 U.S. 198, 200]   The suit was originally brought by Frederick F. Baldwin, patentee. John Simmons Company, licensee, having the exclusive right to manufacture and sell the patented device, subsequently intervened and became complainant.

    The patents are for a lamp designed to generate and burn acetylene or similar gas 'intended for use,' to quote the description of the patents, 'and adapted to use as a bicycle, automobile, yacht, or miner's lamp, or for any other analogous purpose, it being necessary only to change its form or dimensions to adapt it to any one of the purposes mentioned.' Stress in this case, however, is put upon the use of the asserted invention as a miner's lamp, such use conspicuously displaying its commercial utility.

    Answer was filed by the Justrite Manufacturing Company, who was made a party defendant to the suit as manufacturer of the asserted infringing lamp, and by stipulation its answer was considered the answer of the Abercrombie & Fitch Company. It denied invention with great detail, set up anticipating patents, denied its utility, attacked the validity of the reissue on the ground that the first and fourth claims of the original patent were held invalid by the United States Circuit Court of Appeals for the Seventh Circuit (199 Fed. 133, 117 C. C. A. 615), and for the further reason that the application for the reissue was not made until seven years after the original letters patent were issued and rights had accrued in the meantime to defendants (petitioners here) and to others. Infringement was denied.

    A decree was passed sustaining the validity of the original patent and of the reissue, the originality of the invention and its utility, and adjudging defendants (petitioners) had infringed claim 4 of the reissue, that plaintiffs recover the damages they had incurred by reason of the infringement and the profits defendants had received, an accounting being ordered for this purpose. A perpetual [245 U.S. 198, 201]   injunction was also adjudged against further infringements. (D. C.) 227 Fed. 455. The decree was affirmed in all respects by the Circuit Court of Appeals (228 Fed. 895, 143 C. C. A. 293) and subsequently this certiorari was granted ( 239 U.S. 649 , 36 Sup. Ct. 284).

    The plaintiffs (we shall so designate respondents) struggled through some years and some litigation to the success of the decrees in the pending case. In a suit brought in the District Court for the Southern District of Illinois a device like that of the defendants herein was held to be an infringement of certain claims of the original patent. The holding was reversed by the Circuit Court of Appeals for the Seventh Circuit. Bleser v. Baldwin, 190 Fed. 133, 117 C. C. A. 615.

    Subsequently, the reissue having been granted, suit was brought in the Western District of Pennsylvania against an asserted infringer. Unfair competition was also alleged, and, holding the latter to exist, the court granted a preliminary injunction. (D. C.) 210 Fed. 560. Upon final hearing that holding was repeated, and infringement of a claim of the reissue patent decreed. (D. C.) 215 Fed. 735. The decree was reversed by the Circuit Court of Appeals (Third Circuit) on the ground that the claim of the reissue patent found to have been infringed was broader than a corresponding claim of the original letters patent and therefore void. The holding of the District Court as to unfair competition was sustained. 219 Fed. 735, 135 C. C. A. 433. Aided by the reasoning in the opinions of those cases and the discussion of counsel, we pass to the consideration of the propositions in controversy.

    First, as to the original patent. Its contribution to the world's instrumentalities was, as we have said, an acetylene lamp and was represented by the following figure, designated as Figure 1:

    It will be observed that the device consists of a receptacle divided into two compartments, an upper one for [245 U.S. 198, 202]  

    water and a lower one designed to serve as a gas-generating chamber, adapted to contain a receptacle for calcium carbide, which is attached to and forms the detachable bottom. There are means of introducing water into the reservoir and thence to the carbide and means of conducting the gas to the burner.

    The device is a means of using the gas (acetylene) formed by the decomposition of water with calcium carbide and necessarily must bring them into contact in an effectual way and use the gas generated in a controlled flow. A tube (L) hence leads from the water-reservoir into the carbide receptacle and forms a duct which introduces the water into the body of the carbide. Various means, the specifications recite, have been employed to regulate or control the flow of water to the carbide, which were found objectionable or not adequate. [245 U.S. 198, 203]   The patentee then says:

    That the method which be has invented 'for securing the proper feed under all circumstances' without 'objectionable features is to make the bore of the duct of comparatively large size and then restrict the duct by means of a wire or rod preferably centrally located therein to leave a channel of the proper size.'

    It is then said:

    There is also a figure attached to the patent which shows a valve upon the constricting rod, and it is said:

    There are some further descriptive details not necessary to be repeated, and this was said:

    The claims of the patent which are pertinent to our inquiry are as follows:

    The words in italics are the addition of the reissue.

    Whether the lamp exhibits invention, when both patents are considered, we shall discuss later. Our attention is more immediately challenged by the stress put upon other defenses, especially upon the contention that the patent is confined to a special form and, so confined, is not infringed, and that the extension of the patent by the reissue is void. The controversy is therefore brought to a consideration of the original patent as added to or developed by the reissue. And their comparison centers in the water-feeding duct or tube and its restriction by means of a wire or rod and the shape and use of the rod to pierce or stir the carbide. In the original patent, as we have seen, it was said that the invented method for securing a proper feed (flow of the water to the carbide) without certain specific objectionable features was 'to make the bore of the duct of comparatively large size and then restrict the duct by means of a wire or rod preferably centrally located therein to leave a channel of the proper size.' In the reissue, after the words 'comparatively large size,' it was added, 'extend the tube which forms the duct downward so that its end will be always em- [245 U.S. 198, 206]   bedded in the carbid.' In other words, the tube is explicitly described as extending to and its end embedded in the carbide, and this, it is contended, was an enlargement of the original patent.

    The contention is untenable if there was in the original patent an implication of such length and termination of the tube, and we think there was. To conduct water to the carbide it necessarily had to extend to the carbide receptacle and as necessarily had to penetrate the carbide if the rod located in it, whether straight or bent, was to act 'in the nature of a stirrer, which on proper manipulation' might 'be used to break up the mass of carbid surrounding the outlet of the water duct,' which is the purpose that the patent ascribes to it. And Fig. 1 shows such ending and embedding. It would be impossible otherwise to perform its function or secure the 'proper percolation' of the water 'to the unslaked carbid in the receptacle G, Fig. 1.'

    But there was another addition in the reissue which, it is contended, enlarges the invention and assigns a new shape and function to the stirrer of the original. In the latter the rod is described as extending 'from the top of the lamp down through the water-reservoir, as shown in Fig. 3.' To this the reissue adds:

    There is nothing in this but what was clearly implied in the original, except the shape of the stirrer. In the original it is described and represented as bent. In the reissue it is stated to be obvious that the stirrer need not always be bent 'or extend radially from the mouth of the tube.'

    We are unable to assign to this the extent of alteration that counsel do, nor do we think it necessary to rehearse the details of their argument. We have given it attention and the cases it cites, especially the decision and reasoning of the Circuit Court of Appeals of the Third Circuit in Grier Bros. Co. v. Baldwin et al., 219 Fed. 735, 135 C. C. A. 433, but we are constrained to a different conclusion. Indeed, we are of opinion that the original patent did not need the exposition of the reissue. It exhibited an invention of merit, certainly one entitled to invoke the doctrine of equivalents. Paper Bag Patent Case, 210 U.S. 405 , 28 Sup. Ct. 748. Baldwin, the patentee, complied with the statute ( section 4888, R. S. [Comp. St. 1916, 9432]) by explaining the principle of his invention and the mode of putting it to practical use; there was a clear exposition of the principle and the instruments of its use were defined and their purpose and manner of operation. It left nothing in either for further experiment or contrivance. As we have said, the invention was a means of using the gas formed by the decomposition of water with calcium carbide, and necessarily the water and carbide must be brought into contact and under a controlled flow; hence the tube and its centrally located rod extending downward to the carbide. It was foreseen and stated that the carbide might become torpid or slaked by the action of the water and might have to be disturbed or dispersed in order that there might be percolation of water to unslaked carbide, and this was provided to be performed by a simple manipulation of the [245 U.S. 198, 208]   rod. Whether the rod was bent or made straight was unimportant. In either form it removed the slake and secured the continuous operation of the water and carbide and through them the formation of the gas and its illuminating purpose. One or the other might be better, according to the extent of the dispersion required, and one naturally suggested the other.

    It is, however, contended that plaintiffs were required to give up and did give up in the Patent Office a claim which had the extent which we have indicated. A claim, numbered in the application as 6, described the rod as: 'A rod extending from a point outside the lamp through the tube into the carbide receptacle.'

    Counsel say, 'It is to be particularly noted' that, while other claims 'mentioned the stirring function of the rod, claim 6 omitted this feature,' but that the solicitor who drew the claim 'unquestionably had in mind the straight form of rod construction without any stirrer at the end, for the claim specifies, 'through the tube into the carbid receptacle." It is hence argued that when the claim was given up the straight form of construction was given up, and, having been given up to secure the patent, it cannot be insisted upon to prevent its use by others. But counsel is in error as to the extent of the surrender. The straight construction was not given up, but such construction through the tube into the carbide receptacle, and this was in deference, and only in deference, to other patents that showed such use, that is, showed a penetration into the receptacle, but not its duct ending and embedded in the carbide.

    We do not think the case calls for extended discussion. It is best considered in broad outline. The scope and merit of the patents are of instant and assured impression, and to the attempt to defeat or limit their invention by the state of the prior art we adduce the discussion and reasoning of the opinions of the lower courts, which we approve. [245 U.S. 198, 209]   The denial of infringement is also easily disposed of. Indeed, it has been in effect disposed of. It is based on the contention that the stirrer is an essential of plaintiff's lamp and that a stirrer is absent from defendants' lamp, which is in all other particulars, as far as this case is concerned, similar to the plaintiff's lamp. To the contention of defendants, therefore, we cannot assent. There is a stirrer in both, and its form, as we have seen, is not of the essence of the invention. There is nothing occult in the act of stirring; it is causing movement or disturbance, and this may be performed by a straight rod as by a bent one. There may be difference in their dispersing power, but no difference in function, and one or the other would be instantly selected according to the need, under the clear description of the patent. This ready adaptation of the form of stirrer to the work to be performed Baldwin demonstrated even before the grant of the patent. Early in 1906 he put upon the market a lamp with a straight rod, 'which, among other things,' as the District Court has said, 'has characterized the commercial lamp ever since.'

    To the contention that the Justrite Company, the manufacturing defendant, acquired rights before the reissue, we again may oppose the reasoning and conclusion of District Judge Mayer and their affirmance by the Circuit Court of Appeals. The learned judge said:

    Decree affirmed.

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