MR. JUSTICE STONE delivered the opinion of the Court.
In No. 388 certiorari was granted to resolve questions as to the scope and effect of the disclaimer statute, R.S. §§ 4917, 4922, 35 U.S.C. §§ 65, 71, raised in a suit brought to enjoin infringement of several patent claims, some of which had previously been held invalid in an infringement suit in another circuit against different defendants.
In No. 590 like questions have been argued upon certificate to this Court, under § 239 of the Judicial Code, of the Court of Appeals for the Seventh Circuit.
Respondents in No. 388, before bringing the present suit, had sued in a district court in the third circuit to restrain infringement of Claim 9 of Patent No. 1,635,117, July 5, 1927, to Dunmore, for a signal receiving system, and of Claims 3 and 14 of Patent No. 1,455,141, May 15, 1923, to Lowell and Dunmore, for a radio receiving apparatus. Each claim was held invalid by the Court of Appeals for the Third Circuit, Radio Corporation v. Dubilier
The Court of Appeals for the Fourth Circuit reversed and ordered a new trial, 77 F.2d 556, holding that respondents were not barred from maintaining the second suit, against different defendants, for infringement of the claims previously held invalid and that the disclaimer of those claims was not prerequisite to maintenance of the suit upon the claims not previously adjudicated. It intimated that the second suit could not be maintained unless brought without unreasonable delay, but it concluded that it could not say that there had been unreasonable delay in the present case.
Whether the respondents' disclaimers are merely an attempted formal alteration of the claims so as to conform them more precisely to the specifications without changing their substance or conceding their invalidity, see Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 435, or whether they are in effect such alterations of the substance of the claims as to bring them within the requirements and limitations of the re-issue statute, R.S. § 4916, 35 U.S.C. 54, so as to render both the old and the new claims invalid, see Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp., 294 U.S. 477, 490-492,
Revised Statutes, § 4917, provides that "Whenever, through inadvertence, accident, or mistake, . . . a patentee has claimed more than that of which he was the original or first inventor, .. . his patent shall be valid for all that part which is truly and justly his own, . . ." and authorizes him to file in the Patent Office a written disclaimer of "such parts of the thing patented as he shall not choose to claim." Revised Statutes § 4922 authorizes a patentee who has claimed more than that of which he was the inventor, to maintain a suit for the infringement of "any part" of the patent "which was bona fide his own, if it is a material and substantial part of the thing patented, and definitely distinguishable from the parts claimed without right, notwithstanding the specifications may embrace more than that of which the patentee was the first inventor or discoverer," but with the proviso that "no patentee shall be entitled to the benefits of this section if he has unreasonably neglected or delayed to enter a disclaimer."
Petitioners contend that if any claim of a patent is adjudged invalid no further suit can be maintained upon it, or upon other claims of the patent without disclaimer
Neither reason nor authority supports the contention that an adjudication adverse to any or all the claims of a patent precludes another suit upon the same claims against a different defendant. While the earlier decision may by comity be given great weight in a later litigation and thus persuade the court to render a like decree, it is not res adjudicata and may not be pleaded as a defense. See Mast, Foos & Co. v. Stover Mfg. Co., 177 U.S. 485; Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 35. The disclaimer statute was enacted to mitigate the harsh rule
While the contention now made is apparently for the first time seriously argued here, this Court has several times held valid the claims of a patent which had been held invalid by a circuit court of appeals in an earlier suit brought by the same plaintiff against another defendant. Expanded Metal Co. v. Bradford, 214 U.S. 366; Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U.S. 428; Abercrombie & Fitch Co. v. Baldwin,
It follows that want of disclaimer of claims previously held invalid can never be set up as a bar in limine to the maintenance of a second suit upon those claims, and any others of the patent, since the patentee is entitled to invoke in that suit the independent judgment of the court upon the validity of the claims which have been held invalid. In advance of its decision as to validity, that court cannot consistently hold that there is necessity for disclaiming claims which, although previously adjudged invalid, it may hold to be valid. The statute does not command that a court authorized to pass upon the validity of a claim shall accept as conclusive a previous
The court whose jurisdiction is invoked by such a suit must determine for itself validity and ownership of the claims asserted, notwithstanding a prior adjudication of invalidity of some of them, unless those issues have become res adjudicata, by reason of the fact that both suits are between the same parties or their privies. If it determines that the claims previously adjudicated are valid, there is no occasion for disclaimer. In such a case the intimation of the court below that the second suit must be brought within a reasonable time is without support, for if in that court the claims are upheld, there is nothing to disclaim and the statute does not apply. Only if it holds that the claims are invalid may it be called upon to apply the disclaimer statute and to decide whether the patentee, under all the circumstances presented, has unreasonably neglected or delayed to enter a disclaimer of the claim of whose invalidity he had notice in the prior suit.
The disclaimer statute is remedial, and intended for the protection of both the patentee and the public. See O'Reilly v. Morse, 15 How. 62, 121. Both are protected by the construction which we adopt and which we think is the only admissible one. The patentee is free to preserve some of the claims of his patent by disclaiming
A different question is presented where the claims adjudged invalid are abandoned, whether by a tardy disclaimer or otherwise, and a second suit is brought to restrain infringement of other claims, see Ensten v. Simon, Ascher & Co., supra, or where in the same suit in which some claims are held invalid the plaintiff seeks to secure without disclaimer the benefits of a favorable decision on other claims. See R. Hoe & Co. v. Goss Printing Press Co., 31 F.2d 565; Higgin Mfg. Co. v. Watson, 263 Fed. 378; Liquid Carbonic Co. v. Gilchrist Co., 253 Fed. 54; Herman v. Youngstown Car Mfg. Co., 191 Fed. 579.
We do not decide whether the purported disclaimers operate to enlarge the claims in such fashion as to render both the old and the new claims invalid by virtue of the reissue statute. See Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp., supra, 490-492. That question is not presented by the petition for certiorari. The courts below do not appear to have passed upon it, and it may be unnecessary to decide it on the new trial. The decree will be affirmed.
In No. 590 the questions certified are as follows:
"1. Where certain but not all of the claims of a patent are in suit, and all of the claims in suit are held and decreed to be invalid pursuant to a finding and judgment to that effect of the Circuit Court of Appeals of the circuit,
"2. If question 1 is answered in the affirmative, does the intervention of a period of approximately five years between the final judgment in the first suit and the institution in the same circuit of the second suit constitute delay so unreasonable as to bar the second suit for want of disclaimer of the claims which had been held to be invalid?
"3. If question 2 is answered affirmatively, may the institution or pendency of other suits in another judicial circuit or circuits after entry of final decree in the first suit, based on claims of the patent so held invalid and on other claims thereof not previously adjudicated to be invalid, excuse the failure to file disclaimer of the claims held invalid prior to instituting the later suit in the same circuit?"
From the facts stated in the certificate it appears that the district court below, upon hearing the cause, decreed the several claims, on which the plaintiff relied, to be invalid "for various reasons, among them for neglect to file within reasonable time disclaimers" of the claims previously held invalid by the Court of Appeals for the same circuit. It does not appear whether the district
From what we have said in our opinion in No. 388, it is manifest that the effect rightly to be given to the failure to disclaim may turn upon the disposition which the trial court makes of the claims previously held invalid, and that there is no occasion for the application of the disclaimer statute until the trial court has itself passed on the validity of the previously adjudicated claims. The fact that the suit was brought in the same circuit where the court of appeals had previously held some of the claims invalid is immaterial, for the court must decide whether the issues of law and fact in the two cases are the same, and if they are not it is not bound by the earlier decision.
This Court cannot be required, by certificate, to answer, and it should not answer, questions which cover unstated matter "lurking in the record," see United States v. Mayer, 235 U.S. 55, 66; Chicago, B. & Q. Ry. Co. v. Williams, 205 U.S. 444, 454; Cross v. Evans, 167 U.S. 60; United States v. Hall, 131 U.S. 50, 52; or questions which admit of one answer under one set of circumstances and a different answer under another, neither of which is stated to be the basis of the questions certified. See White v. Johnson, 282 U.S. 367, 371; Hallowell v. United States, 209 U.S. 101, 107; Jewell v. Knight, 123 U.S. 426, 435; Enfield v. Jordan, 119 U.S. 680.
Moreover, it does not appear that the claims not previously adjudicated constitute "a material and substantial part of the thing patented, and definitely distinguishable" from the claims held invalid, so as to admit of the
The second and third questions, by their terms, require an answer only if the first is answered. In addition, the answers to both turn upon the question whether the patentee has "unreasonably neglected or delayed to enter a disclaimer" within the meaning of § 4922, which can be answered only in the light of all relevant circumstances and the inferences to be drawn from them. Such questions are not properly the subject of a certificate, especially where, as here, it fails to disclose whether all the relevant facts and circumstances have been certified. Jewell v. Knight, supra; Baltimore & Ohio R. Co. v. Interstate Commerce Comm'n, 215 U.S. 216, 221; Chicago, B. & Q. Ry. Co. v. Williams, supra, 452; United States v. City Bank of Columbus, 19 How. 385; United States v. Bailey, 9 Pet. 267, 274.
Such aid as we are able to give in answering questions as to the scope and effect of the disclaimer statute which may be involved in the pending cause is afforded by our opinion in No. 388.
The decree in No. 388 is affirmed.
The certificate in No. 590 is dismissed.