## Facts

- Binney & Smith Company, as assignee of Wiegand & Venuto U.S. Patent No. 1,889,429, asserted patent rights covering carbon-black pellets and a process for making them.
- Carbon black was used as a rubber filler for automobile tires but existed as an extremely fine, lightweight, dusty powder that created serious manufacturing problems.
- The patented development converted carbon-black powder into pellets consisting substantially entirely of carbon black, reducing the dust nuisance while preserving performance as a tire filler.
- United Carbon Company manufactured and sold its own carbon-black pellets.
- Only product claims 1 and 2 were litigated; the process claims were not in suit.
- The district court dismissed the infringement complaint, holding the product claims invalid for lack of novelty/invention and for indefiniteness, and reasoning that a broad construction would lead to infringement but invalidity, while a narrow construction would avoid infringement.

## Issues

1. Whether product claims 1 and 2 were invalid for lack of novelty and invention.
2. Whether product claims 1 and 2 were invalid for indefiniteness in describing the claimed product.
3. Whether, under the proper construction of the product claims, United Carbon’s pellets infringed.

## Decision

- The Fourth Circuit reversed the dismissal and remanded.
- The court held the product claims were not invalid for lack of novelty or invention, emphasizing the long-felt need and the solution’s demonstrated utility and success.
- The court rejected the indefiniteness ruling, concluding the claims, read with the specification and the understanding of skilled artisans, sufficiently defined a distinct pellet product.
- The court construed the claims broadly enough to reflect the inventive contribution and held United Carbon’s pellets were substantially the same product and infringed.

## Legal Principles

- Long-felt, unmet industrial need and subsequent commercial and practical success may strongly support a finding of invention and rebut assertions that a claimed product was an obvious or trivial variation.
- Product claims are not indefinite merely because the invention involves particulate or difficult-to-characterize materials; claims are sufficiently definite when, in light of the specification and the relevant art, they inform skilled persons what is claimed and distinguish it from prior products.
- Claim construction should reflect the patentee’s actual contribution; courts need not adopt a narrowing construction solely to avoid infringement where the broader construction remains consistent with the disclosure and supports validity.
- Infringement may be found where the accused product is substantially the same as the claimed product in relevant physical and functional characteristics, notwithstanding minor differences.

## Conclusion

The Fourth Circuit sustained the validity of product claims directed to carbon-black pellets, held the claims adequately definite when read in context, and found infringement where the accused pellets were substantially the same product under a construction aligned with the invention’s industrial contribution.


Binney & Smith Co. v. United Carbon Co., 125 F.2d 255 (4th Cir. 1942)