## Facts

- Joseph Bancroft & Sons Co. (Bancroft) sued Brewster Finishing Co., Inc. (Brewster) in the District of New Jersey for infringement of Claims 2 (process) and 3 (product) of U.S. Patent No. 2,121,005 (the Bener patent), directed to imparting a durable mechanical finish to textile goods that remains relatively fast to repeated washing or dry cleaning.
- The Bener patent describes treating goods with an aqueous thermosetting, resin-forming condensation product, removing excess, drying, and heat-setting under specified conditions so the goods retain the desired mechanical finish after cleaning.
- The U.S. application leading to the Bener patent was filed October 4, 1934. Bancroft asserted entitlement to an earlier effective filing date of October 14, 1933, based on a Swiss application (filed by Raduner & Co. A.-G.) covering substantially the same invention.
- Bancroft’s rights came through assignments: the patent issued to Christian Bener (assignor to Raduner & Co. A.-G.); interests were later transferred and ultimately assigned to Bancroft.
- Brewster used a resin-finishing process for producing a durable finish on goods and denied liability while challenging the patent’s validity.
- Brewster relied on work attributed to Lantz and Morrison, including (i) a U.S. application filed October 2, 1934 (two days before Bener’s U.S. filing) that was later abandoned, and (ii) a British application filed in June 1933 for the same subject matter, which later matured into a British patent issued in 1935.
- The case was tried to the court, which addressed foreign priority under the pre-1952 patent statute and the impact of the Lantz and Morrison filings on validity, along with infringement.

## Issues

1. Whether the Bener patent could claim an effective U.S. filing date of October 14, 1933 under former R.S. § 4887 (35 U.S.C. § 32) based on the Swiss application for the same invention and reciprocal rights.
2. Whether, despite foreign priority, the Lantz and Morrison filings (including the June 1933 British filing and later British patent) qualified as prior art against Claims 2 and 3 and defeated novelty or patentable invention.
3. Whether Claims 2 (process) and 3 (product) of the Bener patent were valid in light of the asserted prior art.
4. Whether Brewster’s finishing method and resulting goods fell within Claims 2 and 3 and therefore infringed.

## Decision

- The court held that Bener was entitled to rely on the October 14, 1933 Swiss filing date under R.S. § 4887 because the Swiss application covered substantially the same invention and Switzerland provided reciprocal privileges.
- The court held that the foreign-priority rule remained applicable to this unexpired, pre-1953 patent notwithstanding the 1952 statutory revision and repeal of the earlier section.
- After comparing the Bener disclosure and claims to the cited references, the court rejected Brewster’s invalidity challenge and upheld Claims 2 and 3 over the Lantz and Morrison materials as argued.
- The court found that Brewster’s accused finishing process and the goods produced by it satisfied the limitations of the asserted process and product claims and therefore infringed.
- Judgment was entered for Bancroft on liability (validity and infringement), with appropriate relief to follow from that determination.

## Legal Principles

- A patentee may obtain the benefit of an earlier foreign filing date under former R.S. § 4887 when the foreign application is for the same invention, the U.S. filing is timely, and the foreign country affords reciprocal rights; the U.S. application is treated as if filed on the foreign date for priority purposes.
- Statutory repeal and recodification do not strip applicable foreign-priority benefits from unexpired patents granted before the effective date of the new patent act where the saving provision preserves prior law for such patents.
- A prior-art challenge based on another party’s filing requires that the reference be legally available as prior art and that it disclose the claimed invention as arranged in the claim; differences in what the earlier work actually teaches can defeat anticipation.
- Infringement is established when the accused process performs each claimed step (or its equivalent) and the accused product meets the claim’s defined characteristics, as construed in light of the specification and the record.

## Conclusion

The district court treated the Bener patent as effectively filed on October 14, 1933 under the foreign-priority statute, concluded that the Lantz and Morrison materials did not invalidate Claims 2 and 3 on the theories presented, and held that Brewster’s resin-based finishing operation and resulting goods fell within those claims, resulting in a finding of infringement and judgment for Bancroft on liability.


Joseph Bancroft & Sons Co. v. Brewster Finishing Co., 113 F. Supp. 714, 98 U.S.P.Q. 187 (1953)