Jungersen v. Ostby & Barton Co.

335 U.S. 560, 69 S. Ct. 269, 93 L. Ed. 2d 235, 93 L. Ed. 235, 1949 U.S. LEXIS 3052, 80 U.S.P.Q. (BNA) 32
CourtSupreme Court of the United States
DecidedJanuary 3, 1949
Docket7
StatusPublished
Cited by165 cases

This text of 335 U.S. 560 (Jungersen v. Ostby & Barton Co.) is published on Counsel Stack Legal Research, covering Supreme Court of the United States primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Jungersen v. Ostby & Barton Co., 335 U.S. 560, 69 S. Ct. 269, 93 L. Ed. 2d 235, 93 L. Ed. 235, 1949 U.S. LEXIS 3052, 80 U.S.P.Q. (BNA) 32 (1949).

Opinions

Me. Justice Reed

delivered the opinion of the Court.

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

The patent was granted to Jungersen on May 24, 1938. In 1941, Ostby and Barton Company instituted in the United States District Court for the District of New Jersey an action for a declaratory judgment that the patent was invalid and not infringed. Jungersen, by counterclaim, alleged infringement and sought an injunction. The District Court held Claims 1-4 valid but not infringed and Claims 5-6 invalid because too broad. 65 F. Supp. 652. The United States Court of Appeals for the Third Circuit affirmed on the reasoning of the District [562]*562Court. 163 F. 2d 312. We denied petitions by both parties for certiorari. 332 U. S. 851, 852.

In 1944, Jungersen filed suit against Baden in the United States District Court for the Southern District of New York, in which he alleged infringement of the patent and sought damages, profits, and injunctive relief. That court held all the claims invalid. 69 F. Supp. 922. The United States Court of Appeals for the Second Circuit affirmed. 166 F. 2d 807.

Vacating the prior orders which denied it in the Ostby and Barton proceeding, we granted certiorari in both cases in order to settle the conflict. 334 U. S. 835.1 Since the parties do not assert error in those portions of the lower courts’ decisions which concern infringement, the sole issue before us is the validity of the patent.

The method described in the Jungersen patent, Claims 1-4, consists of the following steps: (1) the production of a model of the article to be cast, (2) the formation around this model of a “primary mould” of plastic material “such as rubber” which is “capable of assuming intimate contact with the intricate designs of the model” and which will “retain a lasting shape through subsequent treatment,” (3) the casting in this mould of a pattern consisting of molten wax or other material of a low melting point which is made to assume the minute configurations of the mould by means of centrifugal force, (4) the removal of this pattern (which has become solid upon cooling) from the primary mould, and the formation around it of a “secondary mould” of refractory material, such as plaster of Paris, which “will assume all the contours of its intricate design,” (5) the removal [563]*563of the wax or similar material from the secondary mould, or “investment” as it is called, by the application of heat, thus melting it out, and finally (6) the casting of the desired molten metal into the cavity in the investment by the application of centrifugal force as in (3), above.

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

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

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

Jungersen’s process is nothing more than a refinement of a method known as the “cire perdue” or “lost wax” process, which was in use as early as the sixteenth cen[564]*564tury.2 The Treatises of Benvenuto Cellini on Goldsmith-ing and Sculpture, pp. 87-89,- reveals a process which consists of filling a primary mould with molten wax, building a secondary mould around the wax model thus obtained, melting the wax from this mould and pouring the desired metal in the secondary mould. In 1904 United States Patent No. 748,996, issued to Spencer, described a substantially identical process in which the primary mould was made, as in the patent here involved, by vulcanizing rubber around the original model or pattern. In England a process similar to Spencer’s had been the basis of a patent issued to Haseltine in 1875.3

The above-described developments in the prior art suggested no limitation of their applicability to any particular type of casting. Spencer stated that the purpose of his process was to produce accurate replicas of the original pattern, which could be of “intricate form” and which could “have any number of sides or surfaces or undercut or projecting parts.” Haseltine described his object as the production of “a casting in metal from a given pattern, which casting will be a perfect copy of such pattern without requiring much, if any, after finishing or chiselling work.”

The patentee claims that the invention in his combination lies in the use, in conjunction with the “lost wax” process, of centrifugal force. Long before the issuance of this patent, however, those skilled in the art recognized and disclosed the necessity for the application of force in order to make molten materials fit snugly the [565]*565intricate details of the mould. Haseltine applied pressure of about twenty pounds per square inch to cause the molten metal “to lie to the dense mould and produce a sharp and well defined casting.” He accomplished this by introducing the metal into the mould through a pipe about six feet in height.4 United States Patent No. 1,238,789 issued to Kralund in 1917 teaches the application of pressure to the wax and the molten metal by means of an ordinary pressure die casting apparatus.

Whether these types of pressure are the equivalent of centrifugal force we need not decide since it is evident from patents and publications that the use of the latter was well known in the art. In 1923 McManus patented a casting machine which was adapted “to the casting of jewelry, such as gold rings, small trinkets, etc., where metal or other dies or moulds may be . . . filled by centrifugal casting methods.” United States Patent No. 1,457,040. He claimed “a means for transferring fused material from the furnace [in which the material was melted] to the mould under the action of centrifugal force.” In a paper on current casting methods which he presented to the Institute of Metals in England in 1926, one George Mortimer, with reference to the difficulty in filling a mould by gravity, stated: [566]*566Centrifugal force was commonly used in dental casting prior to 1938.6

[565]

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Merck Sharp & Dohme Corp. v. Hospira, Inc.
874 F.3d 724 (Federal Circuit, 2017)
Abbott Laboratories v. Sandoz, Inc.
566 F.3d 1282 (Federal Circuit, 2009)
Revlon, Inc. v. Carson Products Co.
602 F. Supp. 1071 (S.D. New York, 1985)
LD Schreiber Cheese Co., Inc. v. Clearfield Cheese Co.
540 F. Supp. 1128 (W.D. Pennsylvania, 1982)
Brennan v. Mr. Hanger, Inc.
479 F. Supp. 1215 (S.D. New York, 1980)
ALLEGHENY DROP FORGE COMPANY v. Portec, Inc.
370 F. Supp. 673 (W.D. Pennsylvania, 1974)
Green Valley Products, Inc. v. Sterwood Corp.
308 F. Supp. 700 (E.D. New York, 1969)
Barr Rubber Products Company v. Sun Rubber Company
277 F. Supp. 484 (S.D. New York, 1967)
Leach v. Rockwood & Company
273 F. Supp. 779 (W.D. Wisconsin, 1967)
Zilk v. Deaton Fountain Service
257 F. Supp. 458 (N.D. California, 1966)
Application of Grover C. Cable
347 F.2d 872 (Customs and Patent Appeals, 1965)
McCulloch Motors Corp. v. Oregon Saw Chain Corp.
234 F. Supp. 256 (S.D. California, 1964)
Kennatrack Corporation v. The Stanley Workes
314 F.2d 164 (Seventh Circuit, 1963)
Anton Lorenz v. F. W. Woolworth Co.
305 F.2d 102 (Second Circuit, 1962)

Cite This Page — Counsel Stack

Bluebook (online)
335 U.S. 560, 69 S. Ct. 269, 93 L. Ed. 2d 235, 93 L. Ed. 235, 1949 U.S. LEXIS 3052, 80 U.S.P.Q. (BNA) 32, Counsel Stack Legal Research, https://law.counselstack.com/opinion/jungersen-v-ostby-barton-co-scotus-1949.