Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)
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Electric Storage Battery Co. v. Shimadzu
No. 441
Argued February 28, 1939
Decided April 17, 1939
307 U.S. 5
CERTIORARI TO THE CIRCUIT COURT OF APPEALS
FOR THE THIRD CIRCUIT
Syllabus
1. Under R.S. § 4886, a patent for an invention made but not patented or published in a foreign country is good, in a suit for infringement, against an innocent infringing use in this country for which no patent right is claimed and which began before the date of the application, but after the actual date of the invention. Pp. 10 et seq.
2. R.S. § 4887 contains no provision which precludes proof of facts respecting the actual date of invention in a foreign country to overcome the prior knowledge or use bar of § 4886. P. 12.
3. R.S. § 4923, which provides that, if the patentee, at the time of his application, believed himself the original or first inventor, his patent shall not be refused or held void by reason of the invention’s having been known or used in a foreign country before his invention or discovery if it had not been patented or described in a printed publication, held inapplicable where the litigation is between the patentee of a foreign invention or his assignee and an alleged infringer who defends only in virtue of prior knowledge or use not covered by patent. P. 13.
4. Repeated amendment of sections of the Patent Laws without alteration of provisions theretofore construed by the courts implies legislative approval of such constructions. P. 14.
5. The question whether an invention has been abandoned is one of fact. P. 15.
6. R.S. § 4920 makes abandonment an affirmative defense which must be pleaded and proved. P. 16.
Held in this case that the defense was waived by failure to plead it in the original answer or by amendment, and that the circumstances did not afford an excuse on the ground of surprise.
7. Findings of the District Court to the effect that a foreign inventor limited his application for a foreign patent to one step of his process, and, for motives not inquired into, withheld more essential features for future patenting, are not to be construed in this case as meaning that he concealed the full invention and delayed applications for the purpose of extending unduly the life of his patents. P. 15.
8. Under R.S. § 4886, a valid patent cannot issue for an invention in public use in this country for more than two years prior to the filing of the application. P. 17.
This defense was duly pleaded in this case by denials of negative allegations of the bill and by affirmative allegations, in the answer. P. 17.
9. The ordinary use of a machine or the practice of a process in a factory in the usual course of producing articles for commercial purposes is a public use within the meaning of R.S. § 4886. P. 18.
So held where the defendant had continuously employed the allegedly infringing machine and process for the production of lead oxide powder used in the manufacture of plates for storage batteries which were sold in quantity, and where the machine, process, and the product were well known to the employees in the plant, and no efforts were made to conceal them from anyone who had a legitimate interest in understanding them.
10. Upon finding that two of the patents sustained by the courts below are invalid because of more than two years’ public use prior to application, the Court directs that the bill be dismissed as to them; but, as to a third patent, not subject to that objection, it directs that the questions of validity in other respects and of infringement be reexamined by the District Court. Pp. 20, 22.
As to Patent No. 1,584, 149, to Shimadzu, Claims 1 and 2, for a method of forming finely divided lead powder, the cause is remanded for further examination in regard to validity and infringement.
Patent No. 1,584, 150, to Shimadzu, Claims 1-4, 6, 8-13, for a method or process of manufacturing a powder composed of metallic and oxidized lead, and Patent No. 1,896,020, to Shimadzu, Claims 10 and 11, for an apparatus for the continuous production of lead oxides, held invalid.
98 F.2d 831 reversed.
Certiorari, 305 U.S. 591, to review the affirmance of a decree, 17 F.Supp. 42, enjoining alleged infringement of three patents and referring the cause to a Special Master for an accounting.