Keller v. Adams-Campbell Co., 264 U.S. 314 (1924)

264 U.S.
314
44 S.Ct. 356
68 L.Ed. 705
KELLER et al.
v.
ADAMS-COMPBELL CO., Inc., et al.
No. 315.
Argued and Submitted February 27, 28, 1924.
Decided April 7, 1924.
Messrs.
Wm. A. Loftus and Charles E. Townsend, both of San Francisco, Cal., for
petitioners.
Mr. Ford W. Harris, of Los Angeles, Cal., for respondents.
Mr. Chief Justice TAFT, delivered the opinion of the Court.
This was a suit to enjoin the infringement of a patent for an improvement in

auxiliary windshields for automobiles. It was brought on a reissued patent. The
reissue was granted on the ground that the original patent was inoperative to
protect the real invention, due to defective and insufficient and too narrow
claims, all of which arose through inadvertence and mistake, due to
misunderstanding between the inventor and his solicitor. The defect in his
claims was alleged to have been called to his attention April 1, 1919, his
application for reissue was filed May 22, 1919, 6 months and 10 days after the
granting of the original patent, and the patent for reissue was granted July 20,
1920.
A. F. Kipper, who was the cative person among the defendants in designing
and promoting the manufacture of the windshield, charged to be an
infringement, was familiar with the device, the specifications and claims of
Keller. He conceived of his device in December of 1918, made some models of
it in February of 1919, and in association with one Dick Smith got up some
experimental dies and tools for its manufacture and sale in April and May of
that year. Kipper was an employee of Adams-Campbell Company, and that

firm in August of 1919 made a contract with Kipper to go into the business of
making and selling his product.
3
The suit for infringement was begun July 1, 1921. All the usual defenses were
set up, including lack of invention, the invalidity of the reissue, and
noninfringement. There was only one expert witness produced by the plaintiff
as to the originality and utility of the invention and the infringement by the
respondent's device. His evidence was presented in an affidavit, but he was
tendered for cross-examination, which the defendants below declined to pursue.
No expert evidence was offered by defendants, though they introduced a
number of patents to show the state of the art.
The patent is for glass wings or auxiliaries secured in an adjustable manner to

the main windshield of an automobile. Their principal object is thoroughly to
prevent the creation of a draft through the vehicle body, and they are so
mounted that they will not obstruct vision, and will have a universality of
movement on a double hinge, such that they can be changed from their normal
position of preventing a draft in cold or windy weather to a deflected position
permitting varying degrees of draft desirable in hot weather. To avoid the
necessity of a frame around the glass, and to hold it safely and firmly and avoid
danger to occupants of the car from breakage and flying pieces of glass, a
hollow rod extends lengthwise along the shield, and connects with, and spaces
apart, clamp brackets along each end of the shield. The rod is attached at its
middle to a double hinge joint, giving the shield the universal movement
already referred to, and having means firmly to lock it in any position. The real
difference between the device as shown in the patent and the alleged
infringement is in the method by which the glass is clamped. In the patent, the
clamps operate on both sides of the ends of the glass, engaging its opposite
surfaces. In the defendant's device, these clamps are brought nearer to the
center of the shield member, because they are held by perforations in the glass
and do not need to reach over to the ends.
The District Court dismissed the bill, and the Circuit Court of Appeals affirmed
this decree. We granted certiorari upon the allegation of the petition, not denied
by opposing counsel, that the sole question was whether one who makes and
sells articles not covered by the claims of an original patent, but embraced by
the enlarged claims of a subsequent valid reissue, applied for within 7 months
after the original was granted, has intervening rights such that he is not only
immune from liability for what he has made and sold, but enjoys an irrevocable
and permanent license to continue to make and sell without restriction.
The extent of the operation of the estoppel creating intervening rights in such a
case presents a question not free from difficulty. That a reissued patent
enlarging claims of the original, although not specifically mentioned in section
4916, R. S. (Comp. St. 9461), is authorized by that section, when the failure
to claim the larger claims justified by the actual invention was due to
inadvertence, accident, or mistake, is settled by the decision of this court in
Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ct. 825, 36 L. Ed. 658, and other
cases. That case also recognizes that one who, pending the application and
granting of the reissue, manufactures and sells articles which infringe the
reissued patent, may be protected on principles of estoppel from the literal
application of section 4916, R.S., which makes the operation of the reissue
relate to the date of the original patent. In Abercrombie & Fitch Company v.
Baldwin, 245 U. S. 198, 38 Sup. Ct. 104, 62 L. Ed. 240, a change, in the
reissue, of the language of an original claim made it cover, not only a bent pipe
as shown, but a straight pipe as well, where the substance of the invention
included both, and it was held that the intervening rights of immunity of the
infringer did not extend beyond the date of the reissue. It is insisted, however,
that the Fitch Case was not one of an enlarged claim, or at any rate that a
reissue was unnecessary because the original claim would have sufficed. The
views of the Circuit Court of Appeals on the general subject of the scope of
intervening rights are not entirely easy to reconcile. Crown Cork & Seal
Company v. Aluminum Stopper Company, 108 Fed. 845, 48C. C. A. 72;
General Electric Company v. Railway Company, 178 Fed. 84, 102 C. C. A.
138; A. D. Howe Mach. Co. v. Coffield Motor Washer Co., 197 Fed. 541, 117
C. C. A. 37; Autopiano Company v. American Player Action Company, 222
Fed. 276, 138 C. C. A. 38; American Automotoneer Company v. Porter, 232
Fed. 456, 146 C. C. A. 450. The question, if it were really before us, would be
one sufficiently important, therefore, to justify our consideration of it on
certiorari.
Both the District Court and the Circuit Court of Appeals, in their final
disposition of the case, gave color of support to the claim of the petitioner that
the question of intervening rights was in this case.
The District Judge in dismissing the bill said:
'Without further discussion, I think the defendants occupy the position of one
who has intervening rights, and under those circumstances I think the plaintiffs
are not entitled to a reissue of the patent as against the defendants.'
10
So the Circuit Court of Appeals, after reciting the evidence showing that the
defendants had made the shields in question and built the machinery for future
manufacture before the patentee applied for reissue, and after being advised by
counsel that they would not infringe the original patent, said:
11
'We therefore think it clear that the appellees had and have such intervening
rights as were properly protected by the court below.'
12
Yet an analysis of the record and the reasons given in the body of the opinions
of the two courts leads to a different conclusion. The District Court said of the
alleged infringing device: 'The defendants' bracket is an invention. It is a
surprise to me that that which the defendants did could be done. The bracket
will fit any glass. It is shorter and does not obstruct the view. * * * The
defendants' bracket is not an equivalent of the bracket in plaintiffs' original
patent, because it does not perform the same functions in the same way, but it
performs the function of holding the glass in an entirely different way.'
So the Circuit Court of Appeals said:
13
'That there is nothing of a pioneer nature in Keller's device is abundantly shown

by the numerous exhibits appearing in the record of windshields and deflectors,
of one kind or another, attached to automobiles long before Keller entered the
field. Both his drawings and specifications show that his shield is attached to
the machine by brackets that run up and down the glass, holding it at the top
and bottom, whereas the appellee's device holds the glass by means of a fixture
attached to the face of the glass, and which does not extend to either of its ends.
14
'That for one device to be the equivalent of another it is essential that the
former must perform the same function of the latter in substantially the same
way is thoroughly settled law.'
15
These passages, read in connection with the original and reissued patents and
the alleged infringement, show that what the courts really held was that the
defendants were manufacturing a different invention from that of the plaintiffs,
and so could not and did not infringe. Such an ordinary patent case, with the
usual issues of invention, breadth of claims, and noninfringement, this court
will not bring here by certiorari, unless it be necessary to reconcile decisions of
Circuit Courts of Appeal on the same patent. We therefore find ourselves
mistaken in assuming that an important issue of general patent law, under
section 4916, R. S., is here involved. The result is that an order must be entered
dismissing the writ of certiorari as improvidently granted, at the costs of the
petitioner. Layne & Bowler Corporation v. Western Well Works, Inc., 261 U.
S. 387, 43 Sup. Ct. 422, 67 L. Ed. 712; Furness, Withy & Company v. YangTsze Insurance Association, 242 U. S. 430, 37 Sup. Ct. 141, 61 L. Ed. 409;
United States v. Rimer, 220 U. S. 547, 31 Sup. Ct. 596, 55 L. Ed. 578.
16
Writ dismissed.

Keller v. Adams-Campbell Co., 264 U.S. 314 (1924)

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Keller v. Adams-Campbell Co., 264 U.S. 314 (1924)

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264 U.S.

This was a suit to enjoin the infringement of a patent for an improvement in

that year. Kipper was an employee of Adams-Campbell Company, and that

The patent is for glass wings or auxiliaries secured in an adjustable manner to

The District Judge in dismissing the bill said:

'That there is nothing of a pioneer nature in Keller's device is abundantly shown

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