*1 CO. v. OSTBY & BARTON JUNGERSEN et al. NO. 7. 10, 1948. January 3, 1949.

Argued November Decided *2 William H. argued Davis the cause Jungersen. for him With on the brief was George E. Faithfull.

John Vaughan argued Groner the cause & Ostby for Barton Co. et al. With him on the brief was Edward Winsor. opinion Reed delivered the of the Court.

Me. Justice The issue here is validity of United States Patent No. 2,118,468 which covers a “method of articles design product intricate and a thereof.” patent 24,

The was granted Jungersen May on In 1941, Ostby Company 1938. and Barton instituted in the United States District Court for the District of an Jersey New action for a judgment declaratory patent was invalid and not infringed. Jungersen, counterclaim, alleged infringement sought injunc- tion. The District Court held Claims 1-4 valid but not infringed Claims 5-6 invalid because too broad. 65 Supp. F. Appeals 652. The United States Court of for Third Circuit affirmed on the District reasoning of the

562 petitions by denied both 2d We

Court. 163 312. F. 851, U. S. 852. parties for certiorari. 332 in the against Baden Jungersen filed suit District for the United District Court Southern States of the alleged infringement which he York, of New relief. sought profits, injunctive damages, Supp. invalid. F. That held all claims court Cir- Appeals The the Second United States Court cuit affirmed. F. 2d 807. Ostby prior orders which denied it

Vacating in both cases proceeding, granted and Barton we certiorari U. settle the 835.1 Since order to conflict. S. parties portions do not assert error those infringement, concern lower courts’ decisions which *3 the validity patent. us is of sole issue before the Jungersen Claims patent, The method described in the (1) 1-4, following steps: production of the the consists cast, (2) of a the to be the formation model of article mate- of mould” “primary plastic around model of assuming “capable rial rubber” which is of “such as designs with of the model” intimate contact the intricate shape lasting through will “retain a subse- which (3) of a quent treatment,” casting the this mould pattern of wax or material of consisting molten other minute point a low is made to assume the melting which configurations force, the means of by centrifugal of mould (4) (which of this become solid pattern the removal has upon cooling) primary mould, from the and the for- “secondary refractory it of a mould” mation around of plaster material, Paris, as of which “will assume its design,” (5) all the of intricate the removal contours 1In the of No. 7 we are asked to consider decision of the Court Appeals 8, 6; Third in No. the for the Circuit as to claims through 4; decision of that court as to and in No. the claims Appeals decision of to all of the Court for the Second Circuit as the patent. claims of the

of the wax or similar material from the secondary mould, or “investment” called, by application it is heat, melting out, thus it and finally (6) of the desired molten metal cavity into the in the invest- ment by application of centrifugal force as in (3), above.

This method capable of producing “small metal articles, particularly articles intricate detail such as jewelry which frequently designed are with hollows, un- portions dercut and perforations, so they will have a smooth clean surface faithful in detail to the original imperfections and free from or holes, to enable such result being accomplished expense.” with the minimum of patentee The possible claims that made it the accurate reproduction of designs intricate in far less time than had previously required. been

Claim 5 describes more general terms the formation of a primary mould around original pattern, removal pattern from mould, the introduction of molten wax into the mould “by force sufficient deposit depression material into the depressions of the primary mould” and the employment of the wax pattern for the manufacture of a casting mould. Claim 6 covers “an article jewelry” design intricate made by process by disclosed Claim 5. It describes the jewelry only by process article of reference to the *4 Obviously which it is manufactured. if the first four invalid, claims are the last two must likewise fall.

An prior examination of the art as it existed at the time of this invention alleged every step reveals that in Jungersen anticipated. method was think We steps that his combination of in was, these its essential in features, also well known the art.

Jungersen’s process nothing more than a refinement a known perdue” of method as the “cire wax” or “lost process, which was in as early use as the sixteenth cen- on Goldsmith- Cellini Benvenuto

tury.2 The Treatises of which process a pp. 87-89,- reveals Sculpture, ing wax, with molten primary a mould filling consists of thus around the wax model secondary mould a building pouring from mould the wax melting obtained, In 1904 mould. secondary metal in the desired Spencer, de- 748,996, issued to Patent No. United States process pri- in which the substantially identical a scribed involved, patent as in the here made, mary mould was pat- model or original around the vulcanizing rubber had Spencer’s process a similar England tern. in 1875.3 issued to Haseltine basis of been the sug- developments prior art The above-described applicability any par- of their no limitation gested purpose casting. Spencer stated type of ticular replicas of the produce accurate was to process of his of “intricate form” which could be original pattern, or any number of sides surfaces could “have which parts.” Haseltine described his projecting undercut or in metal from a production of “a object as the perfect copy of casting will be a pattern, which given any, if after finish- requiring much, without pattern chiselling work.” ing or in his combi- the invention patentee

The claims wax” conjunction with the “lost use, lies in the nation before the issuance centrifugal Long force. process, of however, recog- those the art patent, of this skilled application necessity and disclosed the nized snugly materials fit to make molten force order 2 Encyclopaedia (1948), p. Britannica 3British Patent No. 2467. Gravure, by Verleye etc.” publication entitled “La

'A French Jungersen’s process (1924) elements of in detail all of the describes centrifugal except the use of force.

565 applied pres- of the mould. intricate details Haseltine twenty pounds per sure of about square inch to cause lie produce the molten metal “to to the dense mould and sharp accomplished a and well defined casting.” He by introducing metal into the a through pipe mould in about six feet height.4 United States Patent No. 1,238,789 appli- issued Kralund 1917 teaches the pressure cation of wax and the molten metal pressure means of ordinary casting apparatus. die types pressure equivalent Whether these are the of centrifugal force we need not decide it is since evi- patents publications dent from use latter known in was well the art. 1923 McManus a patented casting adapted machine which was “to the casting jewelry, gold rings, trinkets, small etc., may where metal other or moulds . dies . . filled by centrifugal casting methods.” United States 1,457,040. Patent No. “a He claimed means for trans- ferring fused material from the furnace which the [in material was to the mould under the action of melted] centrifugal In a paper force.” on meth- current presented ods which he to the Institute Metals England 1926, George one with Mortimer, reference difficulty to the filling by gravity, mould stated: natural, “It was therefore, that engineers should early turn their attention to some form of artificial pressure, whereby the mould by force, could be filled and soundness and clean definition seemingly assured. simplest “The form of pressure artificial is that of 5 .

centrifugal force ...” Gravure, etc.,” supra, “La note advocates the use of steam pressure. Metals, 371, Journal of the Institute *6 casting in dental was used

Centrifugal commonly force 1938.6 prior the use process, the “lost wax” is clear that

Thus it centrifugal of and the use primary mould, aof flexible patentee The casting. all in the art of force old were primary the of wax into centrifugal forcing claims the that with the other combined mould had never before been legal this fact is of no process. his We think of features a force was common as centrifugal significance. Where secondary the introducing molten metal into means of force molten step in an intermediate mould, its use exemplification not an mould primary wax into the was necessary is to render the genius such of inventive Co. v. Engineering Lincoln Stewart- patent valid. Cf. Engineering Corp. 545; S. Cuno Corp., Warner 303 U. patentee The Corp., U. S. v. Devices 314 Automatic principle employed the was himself that same admitted in his Jungersen employed claimed steps.7 in both Thus practices in a manner and well-known skills and invention namely, “Dental-casting employ principles; methods four distinct vacuum, centrifugal, pressure. . gravity, . . advantage centrifugal great simplicity, has

“The method the throwing off on mold force exerted metal and fills the Stern, Die-casting tangent being while revolved about a center.” a (1st ed., 1930), p. 10. Practice testimony excerpt An from the follows: revolved, centrifuged, “Q. is it is And when machine when metal, molten or molten no difference whether it be wax it makes it, material into the fact it out the molten does that throws weight if is free gate? anything out it made A. It would throw to leave.

“Q. metal, It applies does it not? A. And to wax as well as that greater than applies metal, but in amount to metal to wax a to the wax. “Q. they operate way the influence both the same under But used, yes. centrifugal principle ? A. same is machine The

“Q. introduced into And the material in both cases is molten mold? A. Yes.” purpose long familiar in the field of casting. His

claimed improvement patentable. therefore not patentee

The contends, however, jewelry casting separate is a and distinct art; consequently types advancements other of casting mentioned above cannot prior be viewed as the art in to this reference patent. The answer to this is twofold. the first place, is not restricted the casting jewelry. object Its stated is to “facilitate the of small articles, metal particularly articles of intricate jewelry detail such as . . . Secondly we think that the improvements in the art of casting which were disclosed *7 by the patents publications discussed above were so obviously applicable type to the of casting sought by Jungersen effected that he was bound by knowl- of edge Wallace, them. Mandel Bros. v. 291, 335 U. S. 295-96.

Numerous licenses patent under the were issued in the United States and other countries. The fact that process this enjoyed has considerable success, commercial however, does render patent not the valid. It is true in cases where the question patentable of invention is a one, close weight success has the tipping scales of judgment patentability. toward Goodyear Tire & Rubber Ray-O-Vac Co., Co. v. 321 U. 275, 279, S. cases cited Where, footnote thereof. as here, however, invention is plainly lacking, commercial success fill cannot void. the Dow Chemical Co. v. Halliburton Co., 324 U. 330; S. Toledo Pressed Steel Co. v. Parts, Inc., Standard 350, 356-57; 307 U. S. Textile Co., Machine v. Works Hirsch 490, 498-99; U. S.

1 Walker, Patents (Deller, 1937) profit 44. Little § would come from detailed examination of the cases cited above by or those indicated reference. Commercial suc- cess is really makeweight where patentability ques- tion is close. jewelry demand for or alertness popular

Increased an played may well have process exploitation patent. We can- wide use of important part largely or even solely Jungersen’s attribute success not process. novelty his invalid want patent for all the claims We hold invention. Nos. 7 and 48 affirmed. No. 8 reversed. Frankfurter, Justice with whom Mr. Justice Mr. dissenting. joins, Burton carry one those controversies

This is not important industry for consequences serious however, does, public. The case thereby general for the in our judiciary’s role regarding raise basic issues were stated These issues existing patent system. was before litigation when the Learned Hand Judge Circuit. Since Appeals Court of Second my mind, questions met the opinion not, has Court’s upon what raised, improve since I cannot which he mine. wrote, adopt opinion I his as Judge Learned Hand my brothers Jungersen’s patent, “In British upon forcing solely he his invention truly say, based *8 completely and metal intimate con- the wax into mould, and for every with crevice of tact Moreover, as the means. centrifuge he disclosed a fine already known other moulders of it had been spaces fill patterns might that metal not all the in example, For necessary perfect reproduction. up a disclosed a which set 1873 Haseltine device pounds square inch; to the pressure twenty he did not process. True, in a ‘lost wax’ this too pressure and he using wax, similar for the disclose McManus used a cen- centrifuge; did not use a but trifuge to force fusible metal into all the crevices in mould, process, that too a ‘lost wax’ the knowledge appears assumed, of which he to have for he does not disclose how to make the wax model. Kralund pressure die-casting process, also showed a applied as method; the ‘lost wax’ and he used pressure to force his wax into intimate connection with the upon first die as well as the molten metal casting: original the final but his die was of steel and he does not describe its manufacture.

“Nevertheless, spite approaches, of all these all of the fact that the elements of the disclosure prior were be in the it art, found remains true process had never Jungersen’s entirety its thought been assembled no one had ever before; combining steps single sequence. True, all those in a had objective the combination not been new this sense, patented merely by not have it could been turning use; it to a new and that would have been so, although might originality it have taken as much put the new it use, to see it could takes to make an have outstanding invention. It would Congress been a final answer that has never seen fit power to extend its constitutional to ‘discoveries’ as patents such, ‘art, machine, and has limited to an manufacture, composition matter,’1 or as we have often said—the last time Old Town Ribbon & & Carbon Co., Inc., Carbon v. Columbia Ribbon if My point that, Co.2 is there is Manufacturing however combination, trifling physical a new is may be, nothing required that, more than change step steps, ‘invention,’ needed; added to take the ‘invention,’ may be, whatever else it is within 1 §31, Title A. 35 U. S.C. 2 Cir., 159 F. 2d *9 those alone. mental category

the activities depend must therefore In the case at bar the answer departure from what appraise the upon how we shall imagination; in terms of creative gone had before test could I not understand what other indeed, do be relevant. Jungersen’s I test,

“If that the submit that jewelry immemorial it. From time process meets processes; earlier so manufactured had been was, if existed for need, need there had that processes— Moreover, two of those earlier years. sand-casting’ now be- ‘cuttlefish —have ‘die-stamp- significance’; ‘of little commercial come process ‘are the substantial only ing’ Jungersen’s used’; and in the manu- commercially now methods ‘die-stamping’ less rings of a hundred facture expensive. Had some advance technological more only made it up change, Jungersen had held removed, had been a short time after obstacle outstanding I that inference of agree should weakened; but greatly have been would originality Indeed, very it is the basis was not the fact. that lay all the elements years of the defence needed available, nothing and that was open and proved which has so paltry modification but I on which courts fruitful. To that make the answer wearisome past ring changes with in the used hand, why at If all the information was iteration. long What delayed? the new combination so was test invention one ask than the detec- better can all had a along strong others had tion of that which though failed discover, see, but had incentive eyes? True, the lay while it beneath their all the a shift approach subject to the has suffered whole I so, recognize decade or which within last *10 accept we should as I Moreover, authoritative. am slightest not aware of the bias in present favor of the I system; accept should with equanimity sys- a new tem or system. However, no I myself confess baffled proceed, know how to if we profess are at once to to apply system yet as it in is, every and concrete instance we are to decide as though it did not exist as it I bar, is. the case at can only say that, so far I comprehend as have been able to those factors which have been held to determine invention, and lip to which at least service continues to paid, be the combination in every suit has hall-mark of a patent.” valid

Judge opinion reported Hand’s at 166 F. 2d 811.

Mr. Justice Jackson, dissenting.

I patent think this every meets the statute’s requirement. And confronted this record an industry galled by heretofore futility may frustration well be amazed at the Court’s dismissal of Jungersen’s ingenious and successful efforts.

Of course, commercial success will not fill in any void an patent. may invalid But it fill in the void our under- standing of what invention has meant to whose those livelihood, unlike own, depends upon knowledge our their art. Concededly, high-pressure this age sales may powerful only promotion volume reflect or market- ing magic, significance novelty and its index of utility may rightly suspected. be But Jungersen’s grounded gullibility public success was not but a judgment competitive the hard-headed of highly if not industry. Knowing critical hostile well its improvements need for and its failure to achieve on avail- processes, industry them, able adopted discarded this invention, outsider’s a made it commercial success. part on singular self-assurance would take

It I do, I or as can of this art as knows as little one who to consideration given few hours that can learn competitors of these judgment case, ignore of this they did not industry say up in the grew who And they saw it. new and useful when something know revealing are so writings age-old if Benvenuto Cellini’s why Bench, it is hard to see appellate laymen to us was says the Court industry which practical-minded *11 his years get all through failed following Cellini message. pat- instances of many would not be difficult cite

It think, I improperly granted, that have been ents of invention the Patent Office. adequate without tests remedy pas- for Patent Office I that the But doubt equally strong passion granting patents for sion only patent striking them down so that the this Court has not been able is one which this Court is valid get its hands on. Hand below. opinion Judge I with the Learned agree