Petitioner sued respondent in the District Court for Eastern New York to enjoin infringements of patents, two of which are here involved. One is Warth reissue patent, No. 19,117, dated March 20, 1934. The other is Warth patent, No. 1,967,195, dated July 17, 1934, a divisional patent. Both relate to methods for applying small disks of paper or foil, known as center spots, to cork cushions of crown caps. These caps are used to seal bottles containing pressure beverages. The center spot prevents contact of the liquid with the cork. The District Court adjudged both patents valid and infringed. 14 F.Supp. 255. The Circuit Court of Appeals reversed, holding the reissue patent not infringed and the divisional one invalid because of laches in filing the application on which it was granted. 2 Cir., 86 F.2d 698.
The questions presented by the petition for the writ, granted 302 U.S. 664, 58 S.Ct. 12, 82 L.Ed. --, are these:
1. 'Does this Court's decision in Webster Electric Co. v. Splitdorf Co. (264 U.S. 463, 44 S.Ct. 342, 68 L.Ed. 792) mean that, even in the absence of intervening adverse rights, an excuse must be shown for a lapse of more than two years in presenting claims in a divisional application regularly filed and prosecuted in accordance with patent office rules'?
2. 'Where there has been more than two years delay in asserting specific claims in a divisional application, is it an excuse for the delay that there were claims in the parent patent which, on their face, covered and were reasonably believed to cover, the subject-matter of the divisional claims, even if a Court later interpreted the parent patent claims not to cover such subject-matter?'
Our consideration of the case will be limited to these questions. Washington Virginia & Maryland Coach Co. v. Nat. Labor Relations Board, 301 U.S. 142, 146, 57 S.Ct. 648, 649, 81 L.Ed. 965; Morehead v. People of N.Y. ex rel. Tipaldo, 298 U.S. 587, 604, 605, 56 S.Ct. 918, 920, 80 L.Ed. 1347, 103 A.L.R. 1445; Clark v. Williard, 294 U.S. 211, 216, 55 S.Ct. 356, 358, 79 L.Ed. 865, 98 A.L.R. 347; Alice State Bank v. Houston Pasture Co., 247 U.S. 240, 242, 38 S.Ct. 496, 62 L.Ed. 1096. The first calls for decision upon a single point. It specifically assumes the absence of intervening rights and that the application was appropriately made. There is no question as to the validity of either the original or reissue patents.
Warth filed his first application January 7, 1927, and his second November 7, 1930. From these came the original patent, January 6, 1931. It was to correct an error in the specification that the reissue patent was granted. Before issue of the original patent Johnson, November 26, 1929, filed application on which a patent issued April 5, 1932. April 4, 1933, two years and four months after the original patent was granted Warth, he carved from his second application a divisional one in which he copied the claims of the Johnson patent. In the interference declared upon the conflict, the Patent Office held Warth's divisional application entitled to the filing date of his first one, and awarded the claims of the Johnson patent to him as prior inventor. These are the claims held too late by the Circuit Court of Appeals.
The claims of the reissue patent involved are shown in the margin. The important feature is simultaneous application of presure and heat to the center spot to make it stick to the cork cushion in the cap. Neither these nor any other claims of the patent specify means to be employed to furnish the heat. The claims in suit of the divisional patent cover means to supply heat to be applied to the center spots when subjected to pressure. The important feature is 'heating the pads (cork cushions) in the caps' before placing the spots upon them.