U.S. Supreme Court TRIPLETT v. LOWELL, 297 U.S. 638 (1936)

[Page 297 U.S. 638, 645]

vious adjudication of invalidity of the same claim for the purpose of ascertaining whether the disclaimer statute applies. On the contrary, section 4922 in terms permits the patentee to 'maintain a suit ... for the infringement of any part' of the patent 'which was bona fide his own.'

The court whose jurisdiction is invoked by such a suit must determine for itself validity and ownership of the claims asserted, notwithstanding a prior adjudication of invalidity of some of them, unless those issues have become res adjudicate, by reason of the fact that both suits are between the same parties or their privies. If it determines that the claims previously adjudicated are valid, there is no occasion for disclaimer. In such a case the intimation of the court below that the second suit must be brought within a reasonable time is without support, for if in that court the claims are upheld, there is nothing to disclaim, and the statute does not apply. Only if it holds that the claims are invalid may it be called upon to apply the disclaimer statute and to decide whether the patentee, under all the circumstances presented, has unreasonably neglected or delayed to enter a disclaimer of the claim of whose invalidity he had notice in the prior suit. [Footnote 3]

[Page 297 U.S. 638, 649]

application of section 4922. We are not required to answer academic questions, or questions which may not arise in the pending controversy. See White v. Johnson, supra, 282 U.S. 367, 373, 51 S.Ct. 115; United States v. Hall, supra; Webster v. Cooper, 10 How. 54, 55. For these reasons the first question is not answered.

The second and third questions, by their term , require an answer only if the first is answered. In addition, the answers to both turn upon the question whether the patentee has 'unreasonably neglected or delayed to enter a disclaimer' within the meaning of section 4922, which can be answered only in the light of all relevant circumstances and the inferences to be drawn from them. Such questions are not properly the subject of a certificate, especially where, as here, it fails to disclose whether all the relevant facts and circumstances have been certified. Jewell v. Knight, supra; Baltimore & O.R. Co. v. Interstate Commerce Commission, 215 U.S. 216, 221, 30 S.›s.Ct. 86; Chicago, B. & Q. R. Co. v. Williams, supra, 205 U.S. 444, 452, 27 S.Ct. 559; United States v. City Bank of Columbus, 19 How. 385; United States v. Bailey, 9 Pet. 267, 274.

Such aid as we are able to give in answering questions as to the scope and effect of the disclaimer statute which may be involved in the pending cause is afforded by our opinion in No. 388.

The decree in No. 388 is affirmed.

The certificate in No. 590›is dismissed. Footnotes

Footnote 1 By section 3 of the Patent Act of 1793, 1 Stat. 318, and section 6 of the Patent Act of 1836, 5 Stat. 117, an accurate description in writing of the invention in the patent application was prerequisite to the award of a patent. Section 6 of the Act of 1793, and section 15 of the Act of 1836, authorized the defendant in a patent suit, by way of defense, to prove that the specification of the patent 'contains more than is necessary to produce the described effect, ... or that the thing, thus secured by patent, was not originally discovered by the patentee.' By the Act of 1832. 4 Stat. 559, it was provided that whenever any patent shall be invalid by reason of failure to comply with the requirements of section 3 of the Act of 1793, it should be lawful to grant a new patent to the patentee for his invention, upon surrender of the old patent and compliance with section 3 of the Act of 1793. Section 13 of the Act of 1836 similarly authorized the new patent to issue 'in accordance with the patentee's corrected description and specification.' Section 7 of the Act of 1837, 5 Stat. 191, 193, carried into R.S. 4917 (35 U.S.C.A. 65) first permitted the patentee to preserve the valid part of his original patent by disclaimer.

Footnote 2 In other cases this Court has held invalid, upon examination of the merits, a patent which had been upheld by one court of appeals after being held invalid by another. Railroad Supply Co. v. Elyria Iron Co., , 37 S.Ct. 502; Meccano, Ltd., v. John Wanamaker, 253 U.S. 136, 40 S.Ct. 463; New York Scaffolding Co. v. Chain Belt Co., 254 U.S. 32, 41 S.Ct. 21; Corona Cord Tire Co. v. Dovan Chemical Corporation, 276 U.S. 358, 48 S.Ct. 380; Sarance Automatic Mach. Corporation v. Wirebounds Patents Co., 282 U.S. 704, 51 S. Ct. 232.

Footnote 3 We do not now determine the effect of the disclaimer statute when the second suit, either from choice or necessity, is confined to claims held valid or not adjudicated in the earlier action. Whether the claims previously held invalid should be deemed abandoned and properly subject to disclaimer would depend upon special circumstances and involve questions not presented in the present suit.