A different question is presented where the claims adjudged invalid are abandoned, whether by a tardy disclaimer or otherwise, and a second suit is brought to restrain infringement of other claims, see Ensten v. Simon Ascher & Co., supra, or where in the same suit in which some claims are held invalid the plaintiff seeks to secure without disclaimer the benefits of a favorable decision on other claims. See R. Hoe & Co. v. Goss Printing Press Co., 31 F. (2d) 505; Higgins Mfg. Co. v. Watson, 203 Fed. 378; Liquid Carbonic Co. v. Gilchrist, 253 Fed. 54; Herman v. Youngstown Car Mfg. Co., 191 Fed. 579. We do not decide whether the purported disclaimers operate to enlarge the claims in such fashion as to render both the old and the new claims invalid by virtue of the reissue statute. See Altoona Publix Theatres, Inc., v. American Tri-Ergon Corporation, supra, 490–492. That question is not presented by the petition for certiorari. The courts below do not appear to have passed upon it, and it may be unnecessary to decide it on the new trial. The decree will be affirmed. · No. 590 In No. 590 the questions certified are as follows: 1. Where certain but not all of the claims of a patent are in suit, and all of the claims in suit are held and decreed to be invalid pursuant to a finding and judgment to that effect of the Circuit Court of Appeals of the circuit, may the owner of the patent maintain a suit afterward brought thereon in the same judicial circuit as that in which the first cause was decided, and against a different defendant not involved in the first suit-the second suit being based on the claims held in the prior suit to be invalid and on other claims of the same patent not previously adjudicated-where the owner of the patent wholly failed and omitted to file any disclaimer of the claims held in the first suit to be invalid, and where, between entry of decree of invalidity of the claims in the first suit and the bringing of the second suit in the same circuit, reasonable time had elapsed for filing such disclaimer? 2. If question 1 is answered in the affirmative, does the intervention of a period of approximately five years between the final judgment in the first suit and the institution in the same circuit of the second suit constitute delay so unreasonable as to bar the second suit for want of disclaimer of the claims which had been held to be invalid? 3. If question 2 is answered affirmatively, may the institution or pendency of other suits in another judicial circuit or circuits after entry of final decree in the first suit, based on claims of the patent so held invalid and on other claims thereof not previously adjudicated to be invalid, excuse the failure to file disclaimer of the claims held invalid prior to instituting the later suit in the same circuit? From the facts stated in the certificate it appears that the district court below, upon hearing the cause, decree the several claims, on which the plaintiff relied, to be invalid "for various reasons, among them for neglect to file within reasonable time disclaimers" of the claims previously held invalid by the Court of Appeals for the same. circuit. It does not appear whether the district court, independently of the defense of want of disclaimer, passed upon the validity of the claims previously adjudicated and decided that they were invalid upon the evidence presented, or whether it held that all inquiry as to their validity was foreclosed by the prior adjudication. From what we have said in our opinion in No. 388, it is manifest that the effect rightly to be given to the failure to disclaim may turn upon the disposition which the trial court makes of the claims previously held invalid, and that there is no occasion for the application of the disclaimer statute until the trial court has itself passed on the validity of the previously adjudicated claims. The fact that the suit was brought in the same circuit where the court of appeals had previously held some of the claims invalid is immaterial, for the court must decide whether the issues of law and fact in the two cases are the same, and if they are not it is not bound by the earlier decision. [6] This Court cannot be required, by certificate, to answer, and it should not answer, questions which cover unstated matter "lurking in the record", see United States v. Meyer, 235 U. S. 55, 66; Chicago, B. & Q. Ry. Co. v. Williams, 205 U. S. 444, 454; Cross v. Evans, 167 U. S. 60; United States v. Hall, 131 U. S. 50, 52; or questions which admit of one answer under one set of circumstances and a different answer under another, neither of which is stated to be the basis of the questions certified. See White v. Johnson, 282 U. S. 367, 371; Hallowell v. United States, 209 U. S. 101, 107; Jewel v. Knight, 123 U. S. 426, 435; Enfield v. Jordan, 119 U. S. 680. Moreover, it does not appear that the claims not previously adjudicated constitute "a material and substantial part of the thing patented, and definitely distinguishable" from the claims held invalid, so as to admit of the application of section 4922. We are not required to answer academic questions, or questions which may not arise in the pending controversy. See White v. Johnson, supra, 373; United States v. Hall, supra; Webster v. Cooper, 10 How. 54, 55. For these reasons the first question is not answered. The second and third questions, by their terms, require an answer only if the first is answered. In addition, the answers to both turn upon the question whether the patentee has "unreasonably neglected or delayed to enter a disclaimer" within the meaning of section 4922, which can be answered only in the light of all relevant circumstances and the inferences to be drawn from them. Such questions are not properly the subject of a certificate, especially where, as here, it fails to disclose whether all the relevant facts and circumstances have been certified. Jewel v. Knight, supra; B. & O. R. R. v. Interstate Commerce Commission, 215 U. S. 216, 221; Chicago, B. & Q. Ry. Co. v. Williams, supra, 452; United States v. City Bank of Columbus, 19 How. 385; United States v. Bailey, 9 Pet. 267, 274. Such aid as we are able to give in answering questions as to the scope and effect of the disclaimer statute which may be involved in the pending cause is afforded by our opinion in No. 388. The decree in No. 388 is affirmed. The certificate in No. 590 is dismissed. THE BASSICK MANUFACTURING COMPANY V. THE R. M. HOLLINGSHEAD COMPANY No. 23. Decided May 18, 1936 1. PATENTS G. S. ROGERS ET AL. v. ALEMITE CORPORATION No. 31. Decided May 18, 1936 469 O. G. 3; 298 U. S. 415 CONSTRUCTION OF SPECIFICATION AND CLAIMS. G. invented improvements in two elements of an old lubricating combination, namely, the pin fitting and the coupling. He obtained a patent containing claims for the pin fitting and another patent containing a claim for the pin fitting in combination with old elements and a claim for his patented pin fitting and any form of grease gun. Held that by this method he could not in effect re-patent in the second patent the old combination by claiming it with an improved element substituted for the old and he could not extend the monopoly of the first patent on the pin fitting so as to preclude use therewith of any grease gun embodying the coupling of the second patent in suit. 2. SAME CONTRIBUTORY INFRINGEMENT. Where defendant neither made nor sold pin fittings covered by a patent of plaintiff not in suit, nor grease guns having the coupler construction of plaintiff's patent in suit, but sold pin fittings of a type to be used with plaintiff's grease gun and grease guns having couplings which could be used with the pin fitting of plaintiff's first patent or others not covered thereby, Held that such sales did not constitute contributory infringement of the combination claims of the second patent in suit. ON WRIT of certiorari to the United States Circuit Court of Appeals for the Sixth Circuit. No. 23. Decree affirmed. No. 31. Decree reversed. Mr. Justice ROBERTS delivered the opinion of the court. In these cases writs of certiorari were granted to resolve conflicts with respect to the scope and alleged infringement of claims 1 to 6, 8, 10, 14, and 15 of the Gullborg patent, No. 1,307,734. In No. 23 the Circuit Court of Appeals, while holding the claims valid, so con strued them as exculpate the accused devices from the charge of contributory infringement.1 In No. 31 the Circuit Court of Appeals gave the claims a broader construction and adjudged that the petitioners were guilty of contributory infringement.2 The subject of the patent is a device for lubricating metal bearings, particularly those of automobiles. It has occasioned much litigation. Before the date of Gullborg's invention grease cups were used for bearing lubrication. The cup was connected with the bearing by a tube and oil or grease was forced through the tube into the bearing by screwing down a cap or plunger which was part of the cup. It became common to substitute, in place of the grease cup, a tubular fitting and to force grease through the fitting by means of a "gun" consisting of a compression chamber and an attached hose, the latter coupled to the fitting by a screw thread or bayonet coupling. In the case of the bayonet coupler the fitting had lugs or pins and the coupler device had slots which engaged such lugs or pins to form a tight union. The grease would then be forced from the chamber of the gun into the bearing by the use of a plunger or pump. In some of the prior art appliances the aperture of the fitting was kept closed when greasing was not being done by a ball or capsule held against the opening of the fitting by a spring. This closure is opened, during the greasing operation, by the pressure of the grease. Gullborg conceived the idea of a fitting in which, instead of pins or lugs set on either side, there should be a pin running directly through the tube and extending out on either side. He used that portion of the pin which bisected the tube as the base of a spring to hold in place a metal ball which closed the aperture of the fitting. This invention was novel in the respect that while others had similarly closed the aperture of the fitting none had employed the pin both to form the lugs for engaging the slots of the coupler and to form the base of the spring supporting the ball closure. For this invention he applied for and obtained a patent, No. 1,307,733, which is not here in suit. Recognizing that when a bayonet coupler is secured to the pin fitting, and the grease is forced through the fitting into the bearing under great pressure, upon uncoupling the gun from the fitting some grease will remain around the end of the fitting and the orifice of the coupler 1 Hollingshead Co. v. Bassick Mfg. Co., 73 F. (2d) 543. 2 Rogers v. Alemite Corporation, 74 F. (2d) 1019. Many district court decisions are unreported. Reported decisions, in district and circuit courts of appeal are: Bassick Mfg. Co. v. Auto Equipment Co., 13 F. (2d) 463; Lyman Mfg. Co. v. Bassick Mfg. Co., 18 F. (2d) 29; Bassick Mfg. Co. v. Standard Products Mfg. Co. et al., 19 F. (2d) 937; Bassick Mfg. Co. v. Larkin Automotive Parts Co. et al., 19 F. (2d) 939; Larkin Automotive Parts Co. et al., v. Bassick Mfg. Co., 19 F. (2d) 944; Bassick Mfg. Co. v. Ready Auto Supply Co., Inc., 22 F. (2d) 331; Bassick Mfg. Co. v. Rogers, 26 F. (2d) 724; Alemite Mfg. Corporation v. Hi-Pressure Sales Co., Inc., 33 F. (2d) 912; Bassick Mfg. Co. v. Adams Grease Gun Corporation, 29 F. (2d) 904, 52 F. (2d) 36; Bassick Mfg. Co. v. United Grease Gun Corporation, 40 F. (2d) 549; Alemite Corporation v. Lubrair Corporation, 62 F. (2d) 899. 115363-37-43 which is not only useless but likely to soil the clothing of the operator or others using the machine, and litter the place where the greasing is done, Gullborg set about to devise a means for eliminating this residuum of grease. He conceived the idea of placing a movable perforated cup-shaped disk or washer in the barrel of the coupler held by a spring against the orifice of the coupler. The intended operation of his devise was that when the coupler had been fastened over the pin fitting the spring should press the washer against the ball in the pin fitting so that the tube in the fitting would be open to receive the grease and, upon application of pressure to the grease, the washer would thereby be firmly pressed against the opening of the pin fitting, thus causing a tight union and preventing exudation of grease. His specification asserts that the invention makes possible the injection of grease under very high pressure. The design of the bayonet slots is such that, in uncoupling, the coupling member of the gun will at first be moved slightly forward on the pin fitting thus backing up the perforated washer in the bore of the coupler. As the two parts are then drawn apart by the retraction of the coupler, the cup-shaped washer will be forced forward by the spring. This will cause a vacuum behind the washer and the air rushing in through the perforation in the washer will draw with it any grease which would otherwise adhere about the orifices of the fitting and the coupling. While Gullborg's invention was confined to an improvement in the hose coupler, which is but one element in the old and well understood combination of a compression chamber or pump, a hose, a hosecoupler, and a grease cup or fitting connected to the bearing to be lubricated, his claims are not for the improvement as such but all are for a combination of the old elements with the improved form of coupler. They are too long to set forth in full. Claim 2 may be taken as typical of a number of them. It reads: 2. The combination with a hollow coupling member having a pin projecting from one side thereof and a spring-pressed closure, of a pump, a discharge conduit having one end secured to the outlet of said pump, a second hollow coupling member for receiving the closed end of said first named coupling member secured to the other end of said conduit and provided with a bayonet slot adapted to co-act with said pin, a perforated sealing disk mounted to reciprocate in the bore of said coupling member, means for yieldingly urging said sealing disk against the closed end of said first named coupling member, and means for limiting the movement of said sealing disk in the direction of said second coupling member. The claimed combination is, therefore, of four things: (1) a type of pin fitting which was old in the art; (2) a pump for creating pressure, which was old; (3) a hose to connect the two; and (4) a well-known type of coupler, the only novel feature of which is the perforated sealing disk mounted to reciprocate in the bore of the |