U.S. Supreme Court LEITCH MFG. CO. v. BARBER CO., 302 U.S. 458 (1938)

[Page 302 U.S. 458, 460]

fringement of patent No. 1,684,671, dated September 18, 1928, by selling and delivering bituminous emulsion to a road builder, knowing that it was to be used in Newark in accordance with the method defined in the claims of the patent. Besides denying the validity of the patent, this further defense was interposed. It was insisted that the suit could not be maintained, even if the patent were valid, because to do so would give a limited monopoly of an unpatented staple article of commerce. The following facts were proved or admitted.

The Barber Company and Leitch Manufacturing Company are competing manufacturers of bituminous emulsion-an unpatented staple article of commerce produced in the United States by many concerns and in common use by their customers for many purposes. By builders of macadam roads the emulsion has long been used as a coating for crushed stone and otherwise. With builders of cement concrete roads it has recently come into use for a film on the surface of the roadway to retard evaporation during curing. For the method of so retarding evaporation the Barber Company acquired the process patent sued on, and seeks to use it to secure a limited monopoly in the business of producing and selling the bituminous material for practicing and carrying out the patented method. The company does not itself engage in road building, or compete with road contractors. It does not seek to make road builders pay a royalty for employing the patented method. It does not grant to road builders a written license to use the process. [Footnote 2] But it adopts a method of doing the business which is the prac-

[Page 302 U.S. 458, 463]

'by contract, notice or otherwise, to expand its patent monopoly by limitations, or to reserve or create any monopoly in emulsion outside of, and apart from, its patent monopoly'; that 'its customers for emulsion have no more than the unconditional license to use implied by law and are under no restriction;' and that neither the defendant nor its customers 'has any relation with the patent owner.'

The distinction upon which the Barber Company thus rests is without legal significance. The Court held in the Carbice Case that the limitation upon the scope or use of the patent which it applied was 'inherent in the patent grant.' It denied relief, not because there was a contract or notice held to be inoperative, but on the broad ground that the owner of the patent monopoly, ignoring the limitation 'inherent in the patent grant,' sought by its method of doing business to extend the monopoly to unpatented material used in practicing the invention. By the rule there declared every use of a patent as a means of obtaining a limited monopoly of unpatented material is prohibited. It applies whether the patent be for a machine, a product, or a process. It applies whatever the nature of the device by which the owner of the patent seeks to effect such unauthorized extension of the monopoly. Nothing in Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U.S. 325, 29 S.Ct. 503, limits it.

REVERSED.

Mr. Justice CARDOZO took no part in the consideration or decision of the case. Footnotes

Footnote 1 The suit was begun by the Barber Asphalt Company, the then owner of the patent. During the pendency of the suit that corporation transferred the patent, together with all claims for damages and profits for past infringement and the right to sue therefor, to the Barber Company, Inc. Upon supplemental bill of complaint, it was substituted as plaintiff. The Stulz-Sickles Company, the jobber through whom the sale was made, was a codefendant throughout the proceedings below; but declined to join in the petition for certiorari.

Footnote 2 No written license had, so far as appears, been granted by the Barber Company to any one. Its predecessor, the Barber Asphalt Company ( see note 1), had granted a written license to Johnson-March Corporation, which paid no royalty but bought from the Barber Asphalt Company 'cutback material' for use in the East, the 'Trinidad or Bermudez asphalt' for use in the West.