Battery v. Shimadzu Karch

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Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)

On Writ of Certiorari to the United States Circuit Court of Appeals for the Third Circuit.

This patent is therefore held valid and infringed.

The decree of the Circuit Court of Appeals must be reversed and the cause remanded to the District Court with directions to dismiss the bill as to Nos. 1,584,150 and 1,896,020, and to proceed, in the light of the dismissal as to those patents, to determine whether 1,584,149 is valid and infringed.


patents granted to Genzo Shimadzu

  1. The earliest is for a method of forming a finely divided and, consequently, more chemically reactive, lead powder.
  2. The second is for a method or process of manufacturing a fine powder composed of lead suboxide and metallic lead and for the product of the process.
  3. The third is for an apparatus for the continuous production of lead oxides in the form of a dry fine powder. Such powder is useful in the manufacture of plates for storage batteries.


  1. In an infringement suit by the owner of a patent for an invention, made but not patented or published abroad, to restrain an innocent use, the inception of which antedates the application for patent, may the plaintiff prove that his actual date of invention was earlier than the commencement of the asserted infringing use?
  2. Is the delay of the patentee in this case in applying for patent a bar to relief for alleged infringement?
  3. Does commercial use of the patented process and apparatus in the alleged infringer's plant for more than two years prior to the application for patent preclude redress?
  • The inventions which are the basis of the patents were conceived by Shimadzu and reduced to practise in Japan not later than August 1919.
  • He did not disclose the inventions to anyone in the United States before he applied for United States patents.
  • Application was presented for No. 1,584,149 on January 30, 1922; for No. 1,584,150 on July 14, 1923; and for No. 1,896,020 on April 27, 1926. The inventions were not patented or described in a printed publication in this or any foreign country prior to the filing of the applications.
  • by the introduction of contemporaneous drawings and note books, to carry the date of invention back to August 1919, and the courts below fixed that as the date of invention and reduction to practise in Japan

  • The petitioner, without knowledge of Shimadzu's inventions, began the use of a machine, which involved both the method and the apparatus of the patents, at Philadelphia, Pennsylvania, early in 1921 and attained commercial production in June 1921.

R.S. s 4886: Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, not known or used by others (in this country), (before his invention or discovery thereof), and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, (or more than two years prior to his application), and not in public use or on sale (in this country) for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceeding had, obtain a patent therefor.


  • The petitioner asserts that R.S. ss 4886, 4887, and 4923,[5] considered together, require one who has made an invention abroad to take as his date of invention the date of his application in the United States unless, prior thereto, the invention has been communicated and described to someone in this country, or has been patented abroad.
  • The respondents insist that the sections have no such force. They say that where the alleged infringer is not acting under the supposed protection of a prior patent, but is using an unpatented process or device, the holder of a patent for a foreign invention, like the holder of one for an invention made here, may show novelty by proving that his invention antedated his application and the infringing use.

  • lower federal courts have held that s 4886 does not limit the plaintiff to the date of application in this country but that he may prove the invention was in fact made at an earlier date, as could the owner of an invention made in the United States
  • We are of opinion that the courts below were right in not limiting Shimadzu's date of invention to the date of his application but allowing him to show an earlier actual date.


  • A patent is not validly issued if the invention ‘is proved to have been abandoned.'[19] Abandonment may be evidenced by the express and voluntary declaration of the inventor;[20] it may be inferred from negligence or unexplained delay in making application for patent;[21] it 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 the statute.[22] In any case, the question whether the invention has been abandoned is one of fact.[23]
  • In the circumstances we think we are not justified in assigning to the findings below the force of a finding that Shimadzu, with intent, concealed his invention and delayed making applications for the purpose of unduly extending the life of his patents,-a defense not pleaded.


  • 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 filing of the application.
  • The District Court found ‘commercial production by the Hardinge mill with its forced air draft undoubtedly involved the use of the plaintiff's patent, and June, 1921, may be fixed as the date when that began.’ The respondents insist that this does not amount to a finding of prior public use, distinguishing between the court's phrase ‘commercial production’ and the designation ‘public use’ found in the statute. We think the position is untenable.
  • A mere experimental use is not the public use defined by the Act,[33] but a single use for profit, not purposely hidden, is such.

  • the evidence is that the petitioner, since June 1921, has continuously employed the alleged infringing machine and process for the production of lead oxide powder used in the manufacture of plates for storage batteries which have been sold in quantity. There is no finding, and we think none would have been justified, to the effect that the machine, process, and product were not well known to the employes in the plant, or that efforts were made to conceal them from anyone who had a legitimate interest in understanding them.[36] This use, begun more than two years before Shimadzu applied for patents 1,584,150 and 1,896,020, invalidated the claims in suit.


  • The defense of prior public use is not made out against patent 1,584,149, for which application was filed January 30, 1922. The defendant's commercial production commenced about six months earlier. The District Court held the patent valid and infringed
  • Its claims cover merely a process for the production of a finely divided chemically reactive lead powder by introducing relatively large masses of lead into a rotatable vessel, rotating the vessel at a relatively low speed, forming the powder by attrition resulting from the rubbing of the masses against each other, and blowing the powder from the vessel by a current of air.

  • Whether or not ‘149 is for the same process as U.S. patent ‘150 is immaterial, so far as the question of validity of either is concerned. There is no double patenting involved. The two patents issued on the same day. They both expired on the same day. There can be no extension of the monopoly and one is not prior art against the other.
  • the defendant's process infringes the somewhat more precise, if not narrower, claims of ‘150.

'This patent is therefore held valid and infringed.'

the defendant's process infringes the somewhat more precise, if not narrower, claims of ‘150. 'This patent is therefore held valid and infringed.' In view of our decision as to 1,584,150 and of the basis of the decision below respecting 1,584,149, we think the petitioner is entitled to a reexamination of the questions of the validity and infringement of the latter.

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