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RECENT DECISIONS RELATING TO PATENTS

G. W. WRIGHT

(National University Law School, '26)

(Selected from Underwood's Digest)

BALLOON TIRE-FAVORABLE RECEPTION BY PUBLIC EVIDENCE OF INVENTION

(Putnam O. G. 789.)

Where claims distinguished from standard pneumatic tires by specifying a substantially reduced inflation pressure, a substantial increase in cross-section, and a substantial decrease in the ratio of wall thickness to cross-sectional diameter, and a showing was made that the tire set forth by the claims was so radically new that the tire industry was reluctant to concede its practicability, that when finally adapted it compelled many large manufacturers to substitute this tire for the one formerly used notwithstanding the necessity for making alterations at great expense, and where the new tire met with such marked favor that plans were held up and orders canceled in order to make changes, held that applicant's tire was new and produced a new result that was not obvious or suggested by an oversized underinflated tire.

BROADER CLAIM IN DIVISIONAL APPLICATION HELD TO BE FOR SAME INVENTION. (Hutter F. 176.)

A divisional application claiming a paper pattern comprising a number of pattern pieces with indications for their use on one side, the print being so heavy and the paper so transparent that such indications might be seen through the paper, held properly refused in view of a prior patent granted on the parent case for the same thing with the additional limitations that the printed side should have a margin and be tinted to distinguish between the margin and the portion within the margin, as these limitations did not constitute a patentable distinction; and it is immaterial whether the Patent Office erred in rejecting the broader claim, when it was presented in the patent case, on a prior patent to another.

PATENT MAY PROPERLY BE BASED ON LATER
EMBODIMENT OF THE INVENTION.

(Bogda v. Olson O. G. 5.)

The selection of a later embodiment of an invention upon which to base a patent is not an abandonment of the invention as embodied in an earlier and cruder form.

RENEWAL OF APPLICATION NOT YET FORFEITED.

(Buehler O. G. 261.)

Although an application may not have become forfeited under 4885, R. S., an applicant will be permitted to treat it as such and file a renewal of the same under 4897, R. S., providing he waives,

with the consent of any assignee, the benefit of the time remaining in which payment of the final fee could be made. (Overruling Manny, 44 O. G. 700; Nocholson, 52 O. G. 310; Schultz, 111 O. G. 2494.)

EVEN PIONEER PATENT MAY NOT COVER MERE
FUNCTION.

(Auto Hone Co. v. Hall Cylinder Hone Co., F. 479.)

A claim for a portable grinder for truing up cylinders, which attempts to cover all means whereby the swinging arms carrying abrading members could be limited or controlled, held functional and void, as even a pioneer patent may not cover any and all means to accomplish a certain result.

D. C. MONT., 1925.

(Greenwalt v. American Smelting & Refining Co., F. 658.)

A patentee is bound by the construction placed by him on his claims and accepted by the Patent Office, and on which the patent was granted.

D. C. MASS., 1925.

(Nash Engineering Co. v. W. D. Cashin & Co., F. 686.) Where a patent describes an invention of a particular kind, without any indication in the specification that it covers a wider field, and the claims are limited, they cannot be interpreted to cover this wider field.

"IMPROVEMENTS" DOES NOT NECESSARILY MEAN

PATENTABLE IMPROVEMENTS.
(Volk v. Volk Mfg. Co., At. 847.)

Where defendant entered into a contract with plaintiff, an inventor, whereby defendant acquired a title to certain patents relating to fuses, and by which any subsequent inventions or improvements were to become its exclusive property, for which it agreed to pay to plaintiff a royalty of 10 per cent of the monthly sales, held that the "improvements" contemplated were not merely the changes which were patentable, but all additions for the betterment of the device; and defendant, having failed to terminate the contract, as it had a right to do, was liable for royalties on all constructions whether patentable or not.

REASONABLE ROYALTY MADE THE MEASURE
OF RECOVERY.

(Gear Grinding Mac. Co. v. Studebaker Corp., F. 510.) Where on the proofs the profits from infringement cannot be ascertained with reasonable certainty, and the case presented is not one suitable for the awarding of damages as distinct from profits, a reasonable royalty will be made the measure of recovery.

INTERROGATORIES REQUIRING DISCLOSURE OF
SECRET PROCESS.

(John Wood Mfg. Co. v. Keiner Williams Stamping Co., F. 615.) Under the rule of decision that defendant in an infringement suit may be required to produce a sample of its product and to state in detail the process of its manufacture, where pertinent, it may be required to make such disclosure in answer to interrogatories, though it involves disclosure of a secret process when necessary to a determination of the issues.

COPENDING APPLICATIONS-SECOND PATENT NOT VOID EXCEPT IN CLEAR CASE.

(Cookingham v. Warren Bros. Co., F. 899, 902.)

A patent issued after application filed for a second patent is not to be regarded as a part of the prior art, as against the second patent, unless it is clear that they cover the same invention.

IMPROVEMENT HIGHLY USEFUL-LIBERAL RULE AS TO

EQUIVALENCY.

(Wellman-Seaver-Morgan Co. v. William Cramp & Sons
Ship & Engine Bldg. Co., F. 531, 533.)

Where the claims were limited from the beginning to a specific form, which was the preferred form, but the real invention lay in a principle and not in this specific form and was of a highly useful and novel general character, a liberal, rather than a strict, rule of equivalency should be applied.

CLAIMS INSERTED IN DIVISIONAL CASE MORE THAN TWO YEARS AFTER GRANT OF PARENT CASESIMILAR CLAIMS PRESENTED BEFORE.

(Carson v. American Smelting & Refining Co., F. 463.) Where an invention was not only disclosed in the original application but substantially claimed, though in an unscientfic way, the fact that the exact claims of the patent were not made until they were suggested by the Board of Examiners-in-Chief on appeal and more than two years after the grant of the patent on the parent case, does not act as an estoppel against the patentee under the doctrine announced by the Supreme Court in Webster Co. v. Splitdorf Co., 264 U. S. 463, 327 O. G. 219.

TESTIMONY OF INVENTOR ALONE INSUFFICIENT TO PROVE THAT DEVICE WAS TESTED. (Travers v. Foote, F. 301.)

In an interference between a patent and an application filed after the issuance of the patent, relating to a chair base, where the right to a favorable decision on the question of priority rests upon the question whether the applicant had reduced the invention to practice, the burden of proof resting upon the applicant to prove his

case beyond a reasonable doubt is not discharged by evidence that such a base was constructed, where there is no evidence, aside from that of the inventor himself, that it was tested.

SUIT IN EQUITY TRANSFERRED TO LAW SIDE OF COURT. (Wheeler Condenser & Engineering Co. v.

C. H. Wheeler Mfg. Co., F. 261.)

Where a bill to enjoin infringement of a patent was filed only two days before its expiration, praying an accounting for profits and damages and an injunction, but contained no averments or showing or irreparable injury upon which a motion for injunction could have been based, and it is clear that plaintiff had no intention of seeking an injunction, and the prayer for an accounting was not based upon such averments as would render an action at law for the recovery of damages and inadequate remedy, there was no ground to sustain equity jurisdiction (Root v. Railway, 105 U. S. 189), and, under equity Rule 22, motion to transfer the case to the law side of the court, granted.

UNITED STATES COURT OF CUSTOMS APPEALS

Reported by Francis W. Trapp

National University Law School '26

The COURT: Presiding Judge, Hon. William J. Graham
Associate Judges:

Hon. James F. Smith

Hon. Orion M. Barber

Hon. Oscar E. Bland
Hon. Charles S. Hatfield

The following cases have been selected from recent decisions of the U. S. Court of Customs Appeals as being of general interest, and as giving an insight as to the nature of the cases brought before this tribunal for adjudication. Particular attention is invited to the case of Fish v. The United States. As stated in Vol. V, No. 2, of the "National University Law Review," out of twenty-five hundred cases decided by the above court, less than a dozen have reached the U. S. Supreme Court. The Fish case is one of the few considered of sufficient importance to engage the attention of our highest court. It is of interest to note that in the opinion given by Chief Justice Taft, June 8, 1925, the Court of Customs Appeals was upheld in its decision, and that this is expected to substantially increase the volume of cases tried before the court due to the consequent enlargement of jurisdiction.

Other cases of importance and interest will appear in subsequent issues of the "National University Law Review."

BACHE & CO. v. UNITED STATES

(No. 2156—T. D. 39129)

Appeal from the Board of U. S. General Appraisers, G. A. 8478 (Reversed).

MARTIN, Judge, delivered the opinion of the court:

This case relates to two importations of glass. One of these consisted of pieces of polished plate glass, oval in shape, with beveled edges, the cross dimensions being approximately 13 by 16 inches, having a thickness of three-eighths of an inch. It is said that these were designed for use in the manufacture of computing scales. The second class consisted of circular pieces of window glass having beveled edges, each piece having a diameter of 26 inches. It is said that these were designed for use as clock glasses. All of the glass was clear and unground, having no markings of any kind upon its surface.

The appraiser described the merchandise as "beveled clock glasses made from cylinder glass, and computing scale glasses oval in shape and beveled, made from plate glass." It was returned for duty at 30 per cent ad valorem under the provision for manufactures of glass, contained in paragraph 95 of the tariff act of 1913, and was assessed with duty by the collector accordingly.

The importers protested against the assessment, claiming that the merchandise should be classified for duty in part as common window glass and in part as plate glass under paragraphs 85 and 88 of the act, and should be assessed thereunder at various rates of duty

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