Opinion · Supreme Court of the United States

Maytag Co. v. Hurley MacHine Co.

59 S. Ct. 857

Type
Opinion
Court
Supreme Court of the United States
Jurisdiction
Federal
Date
1939-05-22
Topic
general

Mr. Justice Roberts delivered the opinion of the Court. These are patent infringement suits in which certiorari was granted because of a conflict of decision. 1 Apparatus claims 23, 26, and 29 of the Snyder patent, No. 1,866,779, which are here involved, have been held invalid in the Second Circuit by reason of anticipation; and have been adjudged valid in the Eighth Circuit. We need not resolve the conflict, since we are of opinion the patent is void for failure to disclaim claim 39. The patent, issued July 12, 1932, to the Maytag Company as assignee, contains thirty-nine claims, thirty-six ' of which are for a washing machine and three (Nos. 1, 38 and 39) for a method of washing fabrics.

Citator

Cited by
34 opinions
MAYTAG CO.v. HURLEY CO.,307 U.S. 243(1939)
59 S.Ct. 857
MAYTAG COMPANYv. HURLEY MACHINE CO. ET AL.fn*
CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR THE SECOND CIRCUIT.
No. 76.
Argued April 19, 20, 1939.
Decided May 22, 1939.
Unreasonable neglect and delay of a patentee in suing upon or disclaiming a claim not definitely distinguishable from another adjudged invalid for anticipation and disclaimed, avoids the entire patent. R.S. §§ 4917 and 4922. P. 245. Snyder patent No. 1,866,779, issued to Maytag Company, assignee, embracing claims for a washing machine and a method of washing fabrics,heldinvalidated.96 F.2d 87, affirmed.100 F.2d 218, reversed.
CERTIORARI,306 U.S. 666, to review decrees in the Second
Circuit denying relief in two infringement suits upon the ground
that the claims sued upon had been anticipated; and (306 U.S. 626)
to review a decree in the Eighth Circuit upholding the same
claims as valid. The claims sued upon were three of thirty-six
apparatus claims, for a washing machine, embraced in the patent.
The same patent included also three claims for a method of
washing fabrics, two of which had been disclaimed; the third
furnished the basis for the present decision.
Page 244
Mr. Wallace R. Lane, with whomMessrs. Thomas G. Haight,Nelson E. Johnson, andOscar W. Jefferywere on the brief, for the Maytag Company.Mr. William H. Davis, with whomMessrs. Dean S. EdmondsandGeorge E. Faithfullwere on the brief, for respondents in Nos. 76 and 77, and petitioner in No. 661.
MR. JUSTICE ROBERTS delivered the opinion of the Court.
These are patent infringement suits in which certiorari was granted because of a conflict of decision.1Apparatus claims 23, 26, and 29 of the Snyder patent, No. 1,866,779, which are here involved, have been held invalid in the Second Circuit by reason of anticipation; and have been adjudged valid in the Eighth Circuit. We need not resolve the conflict, since we are of opinion the patent is void for failure to disclaim claim 39.

The patent, issued July 12, 1932, to the Maytag Company as assignee, contains thirty-nine claims, thirty-six of which are for a washing machine and three (Nos. 1, 38 and 39) for a method of washing fabrics. In 1935 the company obtained a decree in a suit against the Brooklyn Edison Company for infringement of apparatus claims 23 and 26 and method claim 38.2The Circuit Court of Appeals for the Second Circuit reversed as to all three claims, holding they did not disclose novelty.3This court refused certiorari and the company promptly disclaimed two of the method claims, 1 and 38, but did not disclaim 39. In the instant cases infringement of apparatus claims 23, 26, and 29, is charged, but claim 39Page 245is not in suit, nor has it been made the basis of any other suit.

There has been unreasonable neglect or delay in entering a disclaimer of claim 39 within the meaning of R.S. 4917, and R.S. 4922,4unless that claim is "definitely distinguishable from the parts claimed without right," — that is, the disclaimed method claims 1 and 38. This must be so, for the company, by disclaiming those claims, has confessed that the patentee therein claimed "more than that of which he was the original or first inventor or discoverer" and that the company, as assignee of the patent, therefore, "did not choose to claim or to hold" the method therein disclosed "by virtue of the patent or assignment."

Thus the company elected the course it would pursue with knowledge of the options open to it. Claim 38, which had been adjudged invalid, need not have been disclaimed, but, alone or with other claims, might have been made the basis of another suit against a different party, — the petitioner in No. 661, for example.5If the claims were held invalid in such later suit the court might find the patent wholly void, for failure seasonably to disclaim.6To avoid the risk of such a possible outcome, the company chose the other alternative of disclaiming 38, and relying on other claims.7In theBrooklyn Edisoncase the district court said concerning claim 1, "The quoted verbiage is different from that of Claim 38, but the same method or process is thought to be equally embodied in both."8This expression presumably caused the company also to disclaim claim 1 as not "definitely distinguishable" from claim 38.Page 246

If claim 39 describes the same method as claim 38, it follows that failure either to sue on 39 or to disclaim it along with 38 invalidates the patent.

The two are copied in the margin.9We think they describe but a single method. The company insists that the crucial difference lies in the fact that in 38 the moving fluid in the tub is said substantially to suspend the fabrics, whereas in 39 the same agency is said to cause the fabrics to be freely moved about. But the differencePage 247in verbiage describes no difference in operation or result. We conclude that, when read in their entirety, they describe the same method.

The decrees in Nos. 76 and 77 are affirmed; that in No. 661 is reversed.Nos. 76 and 77, affirmed.No. 661, reversed.
  1. Page 243 Together with No. 77,Maytag Co. v.Easy Washing Machine Co.,also on writ of certiorari to the Circuit Court of Appeals for the Second Circuit; and No. 661,General Electric Supply Corp. v.Maytag Co.,on writ of certiorari to the Circuit Court of Appeals for the Eighth Circuit. ↩
  2. Page 244Maytag Co. v.Brooklyn Edison Co.,86 F.2d 625;Maytag Co. v.Easy Washing Mach. Corp.,96 F.2d 87;General ElectricSupply Corp. v.Maytag Co.,100 F.2d 218. ↩
  3. Page 24411 F. Supp. 743. ↩
  4. Page 244Maytag Co. v.Brooklyn Edison Co., supra. ↩
  5. Page 245 35 U.S.C. § 65 and 71. ↩
  6. Page 245Triplettv.Lowell,297 U.S. 638,642. ↩
  7. Page 245Ibid. 645. ↩
  8. Page 245 CompareEnstenv.Simon, Ascher Co.,282 U.S. 445. ↩
  9. Page 24511 F. Supp. 758. ↩
  10. Page 246 The difference in verbiage relied on to distinguish the claims is italicized.

    "38. The method of washing "39. The method of washing fabrics fabrics by forcing cleansing liquid by forcing cleansing fluid through through and around them while them while substantially suspended substantially suspended by the by the action of the fluid, as action of the fluid, as distinguished from pulling fabrics distinguished from pulling fabrics through the fluid against scrubbing through the fluid against scrubbing corrugations, or otherwise scrubbing corrugations, or otherwise them by mechanical means, comprising scrubbing them by mechanical means, immersing the fabrics in a washing comprising immersing the fabrics in fluid in a container, then vigorously a washing fluid in a container, agitating the washing fluid and then vigorously and rapidly rapidly forcing it towards the impelling the washing fluid in one fabrics and away from the plane of and then in an opposite outward source of agitation vertically along circulatory direction away from the the interior surface of the container plane of the source of impulsion first in one and then in an opposite and through the fabrics and circumferential direction, back and circumferentially along the forth through and around the fabrics, interior of the container in rapid and causing the violently moving succession, and causing these opposed currents of liquid to meet violently opposed currents of fluid and flowinwardly and verticallyto meet and flow inwardly andtoward the sourceofagitationtowardthe central portion of thewherebythe fabrics are caused to becontainer, and toward thefreely moved about by the action ofsource ofimpulsion therebythe fluid and cleansed while thussubstantially suspending themoved."fabrics in the fluid and cleansingthem while thus suspended." ↩