National Nut Co. of California v. Sontag Chain Stores Co.

Appeal from district court decree in two suits in equity upon alleged infringement of patents. The patents involved are Kohler Reissue patent No. 20,024 (referred to herein as “reissue patent”), granted June 30, 1936, being reissue of original patent No. 1,958,408 (referred to herein as “original patent”), granted May 15, 1934; and Kohler Design patent No. 89,347 (referred to herein as “design patent”), granted February 28, 1933.

Complaint, alleging infringement of original patent and design patent, was filed October 19, 1935. On January 15, 1936 plaintiff applied for and was later granted a reissue of the original patent, and the original patent was surrendered. Thereupon plaintiff moved for leave to file an amended and supplemental bill of complaint, alleging the facts relating to said reissue and charging infringement thereof. Plaintiff’s motion was granted in so far as it involved claims of the original patent reproduced in the reissue patent, but denied as to new claims appearing in the reissue patent. Plaintiff thereupon brought a second suit, charging infringement of the new claims of the reissue patent subsequent to the date of the reissue. The two actions were…

(dissenting).

The ever-present and important question as to the limits of stare decisis and the propriety of overruling prior cases confronts us in this one.

Pursuant to 35 U.S.C.A. § 64 , a patentee may surrender ■ a patent issued to him if “wholly or partly inoperative or invalid" where an “error has arisen by inadvertence, accident, or mistake” and obtain a reissued patent. The reissued patent may contain enlarged claims. Topliff v. Topliff and another, 145 U.S. 156, 170, 171 , 12 S.Ct. 825 , 36 L.Ed. 658 . Those claims which are identical in both the original patent and the reissued patent speak from the date of the original, by the express words of the statute. On the other hand, an enlarged claim speaks from the date of the reissued patent. Altoona Theatres v. Tri-Ergon Corp., 294 U.S. 477, 491 , 55 S.Ct. 455 , 79 L.Ed. 1005 .

’ Does an appropriator, who makes and sells articles not covered by the claims of the original patent, but embraced by the enlarged claims of a subsequent valid reissue, have such intervening rights as will not only render him immune from liability for what he has made and sold, but also grant an irrevocable and permanent license to continue to make…