Electric Storage Battery Co. v. Shimadzu SKH

• Patent infringement suit by Genzo Shimadzu and another against the Electric Storage Battery Company. To review a decree of the Circuit Court of Appeals, 98 F.2d 831, affirming a decree of the District Court holding valid and infringed certain claims of the patent involved, the defendant brings certiorari.
• Decree of Circuit Court of Appeals reversed and cause remanded with directions.
• On certiorari to review decree of Circuit Court of Appeals affirming decree of District Court holding valid and infringed claims of patents involved in patent infringement suit, petitioner was required to accept concurrent fact findings of Circuit Court of Appeals and District Court.
• On certiorari to review decree of Circuit Court of Appeals affirming decree of District Court holding valid and infringed, claims of patent involved in patent infringement suit, respondents who failed to cross petition could not, in Supreme Court, attack findings that interference relied on by respondent had no bearing on controversy, since such findings involved fact questions.
• Under statute making patentable invention not known or used by others in this country and not patented or described in any printed publication in this or any foreign country before invention or discovery thereof, criterion of novelty is the same whether the invention was conceived abroad or in this country, the test being whether the invention was known or used by others in this country before applicant's invention or discovery thereof.
• The elements which preclude patentability under statute are a patent or a description in a printed publication in this or any foreign country, which antedates the invention or discovery of the applicant.
• To justify the denial of a patent for want of novelty the statute fixes the actual date of the inventive act as the date prior to which the invention must have been known or used.
• The omission from statute which grants right to patent of any limitation as to place of invention or discovery precludes ruling imposing such limitation especially where prior act expressly limited the area of prior knowledge or use to this country.
• The provisions of statute granting right to patent which affects question whether one who has made invention abroad is limited to date of application in this country as date of invention are not modified by provisions of succeeding provision providing for granting of patent on invention previously patented abroad.
• The purpose of the statute providing for granting of patent on invention previously patented abroad is to permit the filing of an application for the same invention in foreign countries and in the United States.
• The section of the statute providing for the granting of patents on inventions previously patented abroad does not preclude proof of facts respecting actual date of invention in foreign country to overcome the prior knowledge or use bar of preceding section which provides for granting of patents generally.
• Under statute providing that, if patentee at time of application believes himself original or first inventor, patent shall not be refused or avoided by reason of invention having been known or used in foreign country before his invention or discovery if it had not been patented or described in a printed publication, in interference between two applicants for United States patent or in an infringement suit where alleged infringer relies on United States patent, the application and patent for domestic invention is entitled to priority despite earlier foreign knowledge and use not evidenced by prior patent or description in printed publication.
• The statute providing that if patentee at time of application believes himself original or first inventor, patent shall not be refused or avoided by reason of invention having been known or used in foreign country before his invention or discovery if it had not been patented or described in printed publication, is without application where litigation is between patentee of foreign invention or his assignee and an alleged infringer who defends only in virtue of prior knowledge or use not covered by patent.
• The Supreme Court cannot rewrite a statute by reading into the law words which are plainly missing in order to redress disadvantage arising because of discrimination resulting from application of statute as written.
• Where statutes providing for granting of patent generally and for invention previously patented abroad had repeatedly been amended and other portions of patent act had been revised and amended from time to time after judicial decisions that section providing for granting of patent generally did not prevent foreign inventor from carrying back his date of invention beyond date of application, without amendment of statute in such respect, court was required to assume that Congress was satisfied with and adopted construction given to statute by the courts.
• In suit for infringement of patent granted citizen and resident of Japan, date of patentee's invention was properly not limited to date of application and patentee was properly allowed to show earlier actual date of invention.
• A patent is not validly issued if the invention is proved to have been abandoned.
• “Abandonment” of an invention may be evidenced by the express and voluntary declaration of the inventor or inferred from negligence or unexplained delay in making application for patent or may be declared as a consequence of the inventor's concealing his invention and delaying application for patent in an endeavor to extend the term of the patent protection beyond the period fixed by statute.
• The question whether an invention has been abandoned is one of fact.
• Under statute, abandonment of an invention is an affirmative defense which must be pleaded and proved in patent infringement suit.
• In patent infringement suit, failure to plead defense of abandonment was not excused by showing of belief of defendant when he filed answer, that foreign patent issued to plaintiff covered invention and invalidated patent because application was not made in this country within one year of grant of foreign patent, so that refusal to sustain defense and assignment of date of invention took defendant by surprise and question of concealment of invention up to date of applications in United States did not emerge until decision of District Court was rendered.
• In patent infringement suit alternative and inconsistent defenses may be pleaded.
• In suit for infringement of patents issued on applications presented January 30, 1922, July 14, 1923 and April 27, 1926, finding that plaintiff had confined foreign patent issued May 10, 1922, to single step involving patent in suit and withheld really essential step of invention for later patenting and that plaintiff's inventions were conceived and reduced to practice in August, 1919, did not constitute findings that plaintiff with intent concealed his invention and delayed making application for purpose of unduly extending life of patent, where defense was not pleaded so as to afford plaintiff opportunity to meet it by proof.
• If a valid patent is to issue, the invention must not have been in public use in this country for more than two years prior to the day of filing of application.
• In patent infringement suit, public use for more than two years prior to filing of application is an affirmative defense to be pleaded and proved.
• In patent infringement suit, allegation of answer that claims of patent were invalid because subject matter was, prior to alleged invention by plaintiff and for more than two years prior to his application, made known to and used by the defendant was sufficient as pleading that invention had been in public use in this country for more than two years prior to filing of application.
• In suit for infringement of patent issued on application filed January 30, 1922, July 14, 1923, and April 27, 1926, wherein defendant pleaded “public use” in this country for more than two years prior to filing of application, finding that “commercial production” in this country involved use of patent and that June, 1921, should be fixed as date when that began was sufficient finding of prior “public use” as against contention that finding of “commercial production” was not equivalent of finding of “public use”.
• The provision of statute that no patent shall be held to be invalid except on proof of prior use for more than two years prior to application renders prior public use a bar whether the use was with or without the consent of the patentee.
• A mere experimental use is not the “public use” defined by statute providing that no patent shall be held to be invalid except on proof of prior use for more than two years prior to application for patent, but a single use for profit not purposely hidden is such.
• 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 statute providing that no patent shall be held to be invalid except on proof of prior use for more than two years prior to application.
• Shimadzu patent No. 1,584,150, claims 1-4, 6, 8-13, for process for production of lead oxide powder used in manufacture of plates for storage battery and product of process, were invalid where alleged infringing machine and process had been used for more than two years before application for patent in manufacture of plates for storage batteries which had been sold in quantity, in absence of finding that machine, process and products were not well known to employees in plant in which they were used or that efforts were made to conceal them from any one who had legitimate interest in understanding them.
• Shimadzu patent No. 1,896,020 for an apparatus for continuous production of lead oxide in form of dry fine powder useful in manufacture of plates for storage batteries held invalid as respects claims in suit where apparatus had been used for production of lead oxide powder in manufacture of plates for storage batteries sold in quantity for more than two years in this country before application for patent, in absence of finding that process was not well known to employees in plant in this country in which it was used or that efforts were made to conceal it from any one who had legitimate interest in understanding it.
• On certiorari to review decree of Circuit Court of Appeals holding valid and infringed certain claims of three related patents, where Supreme Court determined that two patents, as respects claims in suit, were invalid for prior use, defendant was entitled to re-examination, in District Court, of questions of validity and infringement of third patent, in view of District Court's holding that validity of third patent was not affected by question whether it was for same process as one of patents the claims of which in suit were held invalid by the Supreme Court.