Syllabus.

CROWN CORK & SEAL CO. v. FERDINAND GUTMANN CO.

CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR THE SECOND CIRCUIT.

No. 72. Argued December 13, 1937. Decided May 2, 1938.

1. Review on certiorari is confined to the questions presented by the petition for the writ. P. 161.

2. Abandonment, as a defense in a suit for patent infringement, must be pleaded or noticed, under R. S. § 4920. P. 165.

An applicant for patent does not abandon an invention by withdrawing the disclosure of it, and a corresponding claim, from an earlier application, when the same disclosure is kept continuously before the Patent Office through his successive divisional applications.

The continuity so maintained shows an intention to retain, not to abandon, the invention.

3. W applied for and obtained patent for a method of applying "center spots" to the cork cushions of crown caps used to seal bottles containing beverages under pressure, the center spots serving to prevent contact of the liquid with the cork. The patented method required simultaneous application of pressure and heat to the center spot to make it stick to the cork cushion in the cap at the time of assembly. A disclosure of the means of applying the heat by preheating the crown caps was eliminated from the application before the patent issued, but was preserved in divisional applications. Before the patent issued, J filed application claiming this means of preheating and later obtained patent. A year thereafter, but more than two years after the date of his own patent, W copied J's claims in a divisional application, upon which, after interference proceedings, he was awarded a patent. Held: That, in the absence of intervening rights, the delay of more than two years needed no special excuse and did not invalidate the divisional patent. Webster Co. v. Splitdorf Co., 264 U. S. 463, distinguished. P. 165.

4. In the absence of abandonment or intervention of adverse rights, mere delay of not more than two years in filing divisional application after an intervening patent or publication, does not operate

to enlarge the patent monopoly beyond that contemplated by the patent law. R. S. § 4886. P. 167.

86 F. 2d 698, reversed.

CERTIORARI, 302 U. S. 664, to review the reversal of a decree, 14 F. Supp. 255, sustaining two patents and enjoining infringement.

Mr. John J. Darby, with whom Mr. Thomas G. Haight was on the brief, for petitioner.

Mr. William E. Warland, with whom Mr. Nathaniel L. Leek was on the brief, for respondent.

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 granted. 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

a divisional application regularly filed and prosecuted in accordance with patent office rules?"

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 patent 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 from 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

The first application extended to materials to be used in making center spots as well as to methods for applying them. The 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.

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divisional 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. 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 patent cover means to supply heat to be ap

2

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

plied 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 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 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

in 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."