the claim of infringement involved in this case. The relation ceased, the patent was transferred to Naylor and reissued, and nothing was done by the defendant to retain or obtain the right to use this invention. The orator obtained other patents alone and as joint inventor, and the defendant carefully obtained the title to them; but it appears to have taken no steps to do the same with this. The defendant may' have been misled into supposing it would have the right to use the invention notwithstanding the patent; but, if so, it was without the fault of the orator, so far as is pointed out. Counsel have not called attention to the testimony of any witness, and the testimony of none has been noticed, showing that the orator has at any time said anything to the officers or agents of the defendant to give them to understand that he should not insist upon his patent. Let a decree be entered that the orator is the owner of the patent; that the second claim is valid; that the defendant has infringed that claim; and for an injunction and an account, with
STEAM GAUG'E & LANTERN Co. and another v. EDWARD MILLER &00.
(Oircuit Oourt, D. Clonnecticut. May 15, 1882.)
PATENXS FOR INV.E;NTIONll-REISBUE-1:NJUNCTION.
Where claims in the original patent were limited to the particular form of the device described, and by the reissue, patentee properly covered broader territory, the additional claims on the reissue being of a limited character, in the absence of adjudication an injunction pendmte lite ought not to issue. 2.
REISSUE-NEW TERRITORY, WHEN VOID.
If the new C)laims on a reissue take in new territory, they are void in rase of delay in applying for such reissue: but if they merely mark more definitely the old boundaries, they are not void; and where the true meaning of the old claims has not yet been clearly settled, a preliminary injunction ought not to be granted.
Edwin S. Jenney and Benj. F. Thurston, for plaintiffs. Frederic H. Betts and Charles E. Mi.tchell, for defendant. SHIPMAN, D. J. This is a motion to dissolve the preliminary injunction which was granted in August, 1881, against the infringement, by the manufacture of the Miller lantern, of the first and second claims of reissued letters patent No. 8,598, issued February 25, 1879, to John H. Irwin and others, for an improvement in lanterns. The original patent, No. 89,770, was issued May 4, 186g. The ground· of the
STEAM GAUGE & LANTERN CO. V. MILLER.
motion is that since the date of the injunction the cases of Miller v. Bridgeport Brass Co. and Campbell v. James have modified what had theretofore been recognized as the law on the subject of reissues. The opinion upon the motion for an injunction (8 FED. REP. 314) shows that the principal adjudication which had been theretofore had to the date of reissue No. upon the Irwin patents was made 8,598. Irwin v. Dane, 9 O. G. 64:2. The infringement which Judges Drummond and Blodgett had before them was undoubtedly that of a lantern which was both an internal and an external air-feeder, and the court, not being called upon to consider the question whether another kind of lantern would bean infringement, used. language which implies that the scope of the patent was limited to structures having a bell which receives heated air, and, not being called upon to construe claims with reference to a lantern which discarded heated air asamElans of supplying oxygen to the flame, went no further in the construction of the claims than the facts required. The defend. ant in this case vigorously contended, and founded its· argument in part upon the language of the court in Irwin v. Dane, "that its lanterns, having tubes disconnected with each other and incapable of receiving heated air from the globe, are not within either of the claims of No. 89,770, and therefore are not within those claims when repeated in the same language in reissue 8,598." Upon a motion for preliminary injunction, and in the absence·of an acquiescence by the public in the validity of the plaintiffs' patent, the court is confined within the limits of previous adjudications, and ought not, by granting the motion, to give a new construction to previously-construed claims, unless such construction is perfectly clear. Without going into this part of the controversy between the parties any further than to see th41tthere was fair ground for the contention of the· defendant, I said, "There is good reason for advocating this [the defendant's] opinion, and therefore the motion cannot be granted as to those claims of the reissue;" but upon the new claims of the reissue granted an injunction, saying that "while,for the purpose of this motion, it is held to be true that his claims in theoriginal pa.tent were limited to the particular form of the devices described in the specification, yet, by reissue 8,598, he properly covered broader territory." The defendant now says the claims of the reissue which were in the original patent are too narrow to include the Miller lantern, while the new and 'broader claims were introduced 10, years after the date of
the original, and after the defendant, relying upon the limited char. acter of the original patent, had expended a good deal of money in machinery and appliances for the manufacture of the new lantern, and are, therefore, void. The plaintiffs insist that the defendant's lantern would have infringed the claims of the original patent, and that the new claims are broader than the old only in the sense that they more clearly and accurately express the true m[;aning of the original patent. That they are "broader," in the general way in which the term has been commonly used, is probably not doubted. I am still of opinion that, in the absence of adjudicat.ion, there is such ground for the argument that the third, fourth, and fifth claims of the reissue are of a limited character, that I ought not to issue an injunction pendente lite Itgainst the manufacture of the Miller lantern as an infringement of those claims; but I by no means wish to be understood that I have adopted the defendant's conclusions upon this part of the case. The point. remains whether the first and second claims of the reissue are of such broadened character as to bring them within the decision of Miller v. Brass Co., or whether they simply I1lake clear whitt might ,have been somewhat obscure, and are, therefore, not within that decision when fairly and .reasonably applied. This depends upon the construction of the first, second, and fourth claims of the original patent, which are the third, fourth, and fifth claims of the reissue. If the original patent limited the grant to a lantern which must necellsarily have tubes which can furnish heated air to the flame, and a lantern which does not use heated air as a means for the supply of oxygen would not have been an infringement, then first and second claims of the reissue are an enlargement of the grant.. But if the original patent, fairly construed, included the Miller lantern, then the .first and second claims are merely a more clear statement of the invention which had been theretofore both described and claimed. Since the recent decision of the supreme court, the validity of the first and second claims depends upon the question whether they are an enlargement or a simple restatement of the original claims. If the new claims take in new territory, there is good reason to insist that they are void by reason of the patentees' delay in applying for a reissue. If they metely mark more definitely the old boundaries, they are not affected by the recent decisions. The determination of this question depends upon the true meaning of the old claims, and,
LOUD tI. STONE.
ltS I have said, that has not yet been so clearly settled that I ought to grant a preliminary injunction against the Miller lantern as an infringement of the third, fourth, and fifth claims of the reissue. It follows that the motion of the defendant should be granted, and that the injunction should be dissolved.
LOUD tI. STOKE.
(Oi'i'cuitOoU1't, D. Massachusetts. May 3, 1882.)
PATENTS FOR INVENTIONS-PUMPS FOR VESSELS.
Considering the state of the art, the patentee of a pump should not be limited to a diaphragm chamber placed at the side of the uptake. A pump otherwise similar, but varying only in having the diaphragm over the uptake,.is an infringement. .
In Equity. James E. Maynaaier and Freak. Dodge, for complainant. T. L. Wakefield, for defendant. LOWELL, C. J. The plaintiff is the owner of the patent No. 188,879, granted to one Eells and himself, for an improvement in ships' pumps, in March, 1877. The patentees describe their invention to consist"In the arrangem'ent of a diaphragm chamber. placed at the side of the uptake, and of valves in the upper part of the uptake, which, acting in connection with said diaphragm chamber, constitute a pump wbich bas a straight uptake, baving no obstruction in it except two puppet valves, wbich are placed at the extreme upper end, and are so accessible as to be removed at any time by tbe band alone, thus leaving tbe uptake free to be cleansed, or used as a sounding well."
They show by description and drawings the mode of constructing this pump. The single claim is:
"Tbe combination of tbe diaphragm pump, D, C, D', A, with the valve chamber, H, in the uptake; said chamber being provided with valves, K, K', all operating togetber, substantially as described."
The plaintiff's pump is proved to be a valuable one for ships, and to contain a new combination of puppet or poppet valves, easily adjusted and removed by hand, with the diaphragm pump. The important and difficult question is whether the invention is infringed by a pump in which the diaphragm is placed over the uptake instead v.1l,no.7-46