## Facts

- Warth developed methods for attaching small paper or foil “center spots” to cork cushions in crown bottle caps to prevent liquid contact with cork.
- Warth’s original application disclosed both a general center-spot method and a preheating method using simultaneous heat and pressure during assembly.
- Before the original patent issued, the preheating disclosure and related claims were removed from the parent application but were kept before the Patent Office through successive divisional applications.
- Another inventor (Johnson) obtained a patent directed to the preheating method; Warth later filed a divisional application copying Johnson’s claims and won priority in an interference.
- Crown Cork & Seal, as patent owner, sued Ferdinand Gutmann for infringing Warth Reissue Patent No. 19,117 and Warth Patent No. 1,967,195 (divisional).
- The district court held both patents valid and infringed; the Second Circuit found the reissue patent not infringed and held the divisional patent invalid for laches due to delay exceeding two years.
- The Supreme Court granted certiorari and limited review to the delay/divisional-application questions presented.

## Issues

1. Whether a delay of more than two years in presenting divisional claims, where the divisional was regularly filed and prosecuted and no intervening adverse rights accrued, requires an excuse and otherwise invalidates the divisional patent under principles associated with *Webster Electric Co. v. Splitdorf Co.*
2. Whether delay is excused when the applicant reasonably believed the parent patent’s claims covered the subject matter later pursued in the divisional, even if a later construction shows they did not.

## Decision

- The Supreme Court reversed the Second Circuit.
- The Court held the divisional patent valid despite the delay, because the invention was continuously disclosed to the Patent Office through divisional filings and no intervening adverse rights were shown.
- The Court rejected treating *Webster* as a rigid, stand-alone two-year bar applicable even when no adverse rights intervened.
- The Court reinstated the district court’s decree sustaining the asserted patents and granting relief for infringement.

## Legal Principles

- Review on certiorari is limited to the questions presented in the petition.
- Abandonment as a defense in an infringement action must be pleaded or noticed under R.S. § 4920.
- Continuous maintenance of the same disclosure before the Patent Office through successive divisional applications indicates intent to retain the invention, not abandon it.
- In the absence of abandonment and intervening adverse rights, delay in presenting divisional claims does not, by itself, invalidate a divisional patent or improperly enlarge the patent monopoly.
- *Webster Electric Co. v. Splitdorf Co.* does not establish an automatic two-year laches rule for divisional applications irrespective of intervening rights.

## Conclusion

The Court upheld the validity of a divisional patent filed after a substantial delay where the invention remained continuously before the Patent Office and no intervening adverse rights were prejudiced, limiting *Webster* to contexts involving factors beyond mere passage of time.


Crown Cork & Seal Co. v. Ferdinand Gutmann Co., 304 U.S. 159 (1938)