CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR THE SIXTH CIRCUIT.
Hughes, Stone, Black, Reed, Frankfurter, Douglas, Murphy; McReynolds and Roberts took no part in the consideration or decision of this case.
MR. JUSTICE STONE delivered the opinion of the Court.*fn*
Decision in these cases turns on the question whether, in the light of the patent office history of the Jardine patent on a piston for gas engines, the court below, in construing the specifications and claims, erroneously included one element, "flexible" or "yielding" webs, in the patented combination.
A related question was considered by this Court in connection with the Gulick and Maynard patents, also involved in this litigation, in Schriber-Schroth Co. v. Cleveland Trust Co., 305 U.S. 47. Respondent, the Cleveland Trust Company, is the assignee in trust under a pooling agreement of some eighty patents relating to
pistons for gas engines. It brought suit in the district court for northern Ohio against petitioners, three piston dealers, customers of the Sterling Products Company, to restrain infringement of five of the patents, including the Gulick patent No. 1,815,733, applied for November 30, 1917 and allowed July 31, 1931, the Jardine patent No. 1,763,523, applied for March 11, 1920 and allowed June 10, 1930, and the Maynard patent No. 1,655,968, applied for January 3, 1921 and allowed June 10, 1928.
The cases were consolidated and tried before a special master who, upon the basis of elaborate special findings, concluded that the Gulick patent was invalid because of want of invention and because of the addition to the application by amendment in 1922 of a new element of the alleged invention; that the Maynard patent was invalid for want of invention and for failure to describe and claim the alleged invention, and that the Jardine patent was invalid as not showing invention over the prior art exhibited by Ricardo, Franquist and Long. He held the other patents invalid for reasons not now material.
The district court adopted the master's findings and gave its decree for petitioners. The court of appeals reversed as to two of the five patents, holding the Gulick and Maynard patents valid and infringed. 92 F.2d 330. The elements of the combination as stated in claim 39, of the Gulick patent, are:
"A piston for an engine cylinder comprising a skirt, a head separated from the skirt wall around its entire periphery, said skirt being longitudinally split to render the skirt wall yieldable on every diameter in response to cylinder wall pressure, wrist pin bosses, and means rigidly connecting said bosses to the head and yieldingly connecting said bosses to the skirt whereby said skirt is yieldable in response to cylinder wall pressure."
Reference to a combination, including with other elements web connections "whereby said piston skirt is
rendered yieldable during operation in response to cylinder wall pressure" appears in number 18, one of the sustained claims.
The court of appeals found invention in both the Gulick and Maynard patents, in a combination of elements of which one was "webs laterally flexible," which was not specifically described or claimed in the Gulick patent before its amendment of ...