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decided: April 7, 1924.



Author: Sutherland

[ 264 U.S. Page 463]

 MR. JUSTICE SUTHERLAND delivered the opinion of the Court.

This writ brings up for review the decree of the court below in a patent suit, 283 Fed. 83, reversing a decree of the Federal District Court for the Northern District

[ 264 U.S. Page 464]

     of Illinois, 255 Fed. 907, and directing a dismissal of the bill. Three patents were involved. The decision in respect of two of them turned upon the question whether a license contract between the patentees, Henry and Emil Podlesak, and petitioner, had the effect of precluding an assignment of patent rights made by the Podlesaks to respondent. But the petition upon which the writ was granted challenged the decision below only in respect of the third patent; and we are not called upon to consider the contentions now advanced as to the others. Alice State Bank v. Houston Pasture Co., 274 U.S. 240, 242.

The bill alleges that the Splitdorf Electrical Company had infringed claims 7 and 8 of Kane patent No. 1,280,105, issued September 24, 1918, for a rigid unitary and integral support for mounting the various parts of an electrical ignition device. The original application was filed by Kane February 2, 1910, on which patent No. 1,204,573 was granted November 14, 1916. On October 24, 1914, Kane endeavored to amend his application by introducing six claims copied from Milton's patent, issued May 12, 1914, for the purpose of securing an interference. The amendment was refused and Kane was directed by the examiner to file a divisional application if he desired to contest an interference with Milton. This was done. The Webster Company, however, acquired the rights of both Milton and Kane and through their attorneys conducted the proceedings for both sides in the Patent Office, resulting in an award of priority in favor of Kane.

Subsequently, in 1915, Kane filed a divisional application, presenting nine additional claims, copied from Podlesaks' patent No. 1,055,076, issued March 4, 1913, and reissue patent No. 13,878, dated February 9, 1915; all of which claims were ultimately decided in favor of the Podlesaks.Thereafter, on June 17, 1918, an amendment was filed embracing the new and broader claims here in question, which were allowed upon an ex parte showing and,

[ 264 U.S. Page 465]

     as already stated, patent issued September 24, 1918, to the petitioner, to whom all rights had been assigned. The original bill was filed in 1915; and claims 7 and 8 were brought into the suit by a supplemental bill filed October 25, 1918.

It will thus be seen that claims 7 and 8 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. A comparison of these claims, as set forth in the patent, with the claims in the original application, to say the least, leaves in doubt the question whether they were not so materially enlarged as to preclude their allowance on the original application. Railway Co. v. Sayles, 97 U.S. 554, 563; Hobbs v. Beach, 180 U.S. 383, 396; Dunham v. Dennison Manufacturing Co., 154 U.S. 103, 110; Michigan Cent. R. Co. v. Consolidated Car-Heating Co., 67 Fed. 121, 126. But this aside, the evidence establishes to our satisfaction that Kane did not originally intend to assert these amended claims, because he considered their subject matter one merely of design and not of invention; and the inference is fully warranted that the intention to do so was not entertained prior to 1918. During all of this time their subject matter was disclosed and in general use; and Kane and his assignee, so far as claims 7 and 8 are concerned, simply stood by and awaited developments. We are not here dealing, therefore, with the simple case of a division of a single application for several independent inventions, Patent Office Rules 41 and 42; Bennet v. Fowler, 8 Wall. 445, 448; American Laundry Machinery Co. v. Prosperity Co., Inc., 295 Fed. 819, but with a case of unreasonable delay and neglect on the part of the applicant and his assignee in bringing forward claims broader than those

[ 264 U.S. Page 466]

     originally sought. The repeated assertion of interferences in narrower terms, resulting in delays incident to their determination, affords no just excuse for the failure to assert the broader claims, 7 and 8, at an earlier date. The subject matter of these claims is not of such complicated character that it might not have been readily described in the original application or in one of the subsequent applications -- in 1915, for example, -- as it was described in 1918; and the long delay of Kane and his assignee in coming to the point tends strongly to confirm the view that the final determination to do so was an exigent afterthought, rather than a logical development of the original application. We have no hesitation 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 have been entitled to.

We do not overlook the importance of not applying so narrowly the patent law as to discourage the inventor from exercising his creative genius, or the manufacturer or capitalist from assisting in the necessary work of bringing the invention into beneficial use; but it is no less important that the law shall not be so loosely construed and enforced as to subvert its limitations, and bring about an undue extension of the patent monopoly against private and public rights. In suits to enforce reissue patents, the settled rule of this Court is that a delay for two years or more will "invalidate the reissue, unless the delay is accounted for and excused by special circumstances, which show it to have been not unreasonable." Wollensak v. Reiher, 115 U.S. 96, 101. In that case it appeared that the reissue patent was issued to complainant December 26, ...

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