U.S. Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668 (1942)

U.S. Chemicals, Inc. v. Carbide & Carbon Chemicals Corp.

No. 680

Argued March 13, 1942
Decided March 30, 1942
315 U.S. 668

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE FOURTH CIRCUIT

Syllabus

l. A reissue patent must be for the same invention as the original patent. R.S. § 4916. P. 675.

2. Original Patent No. 1,998,878, to Lefort, for a process for the production of ethylene oxide, called for the introduction into a heated reaction chamber of ethylene and oxygen, in the presence of a catalyzer, and also, as an essential, the voluntary introduction of water. Reissue Patent No. 20,370, in describing the process, treats the voluntary introduction of water as permissive, but not mandatory. Held, that the reissue is void. P. 677.

3. Although it is the duty of a court to determine for itself, by examination of the original and the reissue, whether they are for the same invention, it is permissible, and often necessary, to receive expert evidence to ascertain the meaning of a technical or scientific term or term of art, so that the court may be aided in understanding not what the instruments mean, but what they actually say. P. 678.

4. It is inadmissible to enlarge the scope of the original patent by recourse to expert testimony to the effect that a process described and claimed in the reissue, different from that described and claimed in the original patent, is, because equally efficacious, in substance that claimed originally. P. 678.

5. The omission from a reissue patent of one of the steps or elements prescribed in the original, thus broadening the claims to cover a new and different combination, renders the reissue void, even though the result attained is the same as that brought about by following the process claimed in the original patent. P. 678.

121 F.2d 665 reversed.

Certiorari, 314 U.S. 603, to review the affirmance of a decree of the District Court upholding a reissue patent in a suit for infringement.