and with but little as to what either the description or claim should contain. I find in defendant's maohine all the essential fel1tnres of the Aram patent; and have n,o doubt the charge of infringement is fully sustained by the. proof. The reissue of these Heffiey and Zeider patents cannot help these defendants, as it is .palpable that new claims cannot make the Heffiey machine operative or practical, nor carry back the Zeider invention to the time or beyond it when Aram had made a successful working machine and a perfected invention. There will be a decree that oomplainants' patent is valid, and that defendant infringes the same, and a reference for an as to profits and damages.
and others v.
(Oircuit Oourt, N. D. New York.
March 15, 1883.)
PATENTS FOR INVENTIONS-DISCLAIMER-REISSUE·.
Where a patentee has defectively or insufficiently described his inventIOn, and claimed more than he has a right to claim as new, he is entitled to a reissue of his patent upon a surrender of the original; but it is not the office of ·a disclaimer to reform or alter the description of an invention.
SAME-OFFICE OF DISCLAIMER.
Where there are several claims, some of which he is entitled to, and the part of the invention which is his own can be definitely distinguishable from that which is not his own, a disclaimer before suit brought will put him right and enable him to recover upon his patent all though it had originally been con:fined to the proper claims; but he cannot convert a claim for one thing into a claim for something else, and amend the description to effectuate such claim.
In this case as there was nothing in the description or claim of the complainant's patent to indicate to the pnblic that they were appropriating anything of which the patentees were the inventors, the disclaimer filed by the complainants cannot avail, and the bill will be dismissed
I. G. Younglove and A. J. Todd, for complainants. Esek Cowen, for defendant. WALLACE, J. The letters l'atent upon wmoh thIS aotIOn IS founded were granted to Lewis Rathbone and William Hailes, November 21, 1865, and are for an improvement in coal stoves. The olaim involved here is as follows:
°AWrmed. See 8 Sup. Ct. Rep. 261.
'HAILES V. ALBANY STOVE 00.
ClArranging a perforated fire-pot, with a grate bottom, within a circular stove, having provision for the admission of air below the point of suspension of said fire-pot substantially as described."
In view of the prior state of the art, and especially in view of the letters patent granted to Zebulon Hunt, June 14, 1864, if the patentees invented anything new, it consisted in a perforated fire-pot for a stove, which required that the upper half of the wall of the fire-pot should be solid, and the lower half perforated with vertical slots or to it in openings, in order to perform the peculiar function the combination of which it was a part. The complainants' expert concedes that in order to do the work required of the fire-pot the vertical slots or openings must extend substantially from the bottom of the fire-pot half-way up to the top of the wall, and must not extend substantially any higher. It is not necessary to considedhe special advantages of this featui"e of the de:vice, or to discuss the question whether, practically, it adds to the efficiency of the stove, or alone, or in combination with the other parts, accomplishes a new result, because there is not a hint in the description of the invention, or in the claim, of any purpose or function for which .this peculiar adjustment of perforations and, solid wall is advantageous. The patent does not point out the length or width of the vertical openings, the size of the perfora,tions, or the necessity or propriety of confining them to the lower half of the wall of the fire-pot, or the necessity or propriety of a solid wall for the upper half. The only definite allusion in the patent to the character of the perforations is found in that part of the general statement of the object of the invention, which speaks of obtaining more perfect combustion by admitting air "through the sides of a suspended fire-pot"at all points," and in that part of the specification which describes, the fire-pot as extending from the enlarged fire-chamber C, down into the air-chamber B, and "made with verticle openings through its sides, for the admission of air into the body of coal within it." Reading the entire description, the conclusion is irresistible that the patentees never conceived that any such peculiar adjustment of the perforations and solid wall was of ' the slightest importance in their inveution. Certainly there is no description which would enable the public to comprehend that the claim was intended to be for a combination in which the fire-pet should preserve these distinct characteristics of the perforations and' the solid wall, or to enable any person skilled in the art to which it appertains, to make a fire-pot such as is required. No person could v.16,no.2-16
ascertain, without experiment, that the operation of a fire-pot, in which the upper half of the wall is solid, is different from one in which only a quarter of the wall is solid, and there is nbthing in the patent to indicate the necessity of any adjustment between the location and proportions of the solid wall and that of the perforated surface. A fire-pot answering the specification is shown in the patent to Zebulon Hunt, and it is conceded that that patent anticipates the complainants' patent, unless the latter is saved because the vertical openings in Hunt's fire-pot extend nearly to the top of the fire-pot from the grate, instead of ending about half-way up. It is true that the drawings of the complainants' patent show a fire-pot in which the vertical openings extend from the grate only about half-wa.y towards the top. But,as no one would infer from a,nything contained in the description or claim that this is an essential or important feature of the fire.pot, it could not be supposed that the patentees intended t<> limit themselves to a having that peculiar feature. The complainants have endeavored to escape defeat by filing a disclaimer since this suit was brought. They disclaim "so much of the claim as covers .perforations or openings in the sides. of a suspended fire-pot extending throughout the entire depth of its sides, and they limit· such perforations or openings to substantially the lower half of the fire-pot;" and they claim "a fire-pot suspended from its upper edge with substantially the upper half of its sides made solid, and'substantially the lower half of its sides containing perfol'ati::ms or openings." This disclaimer was not filed until within a few months of the expiration of the term of the patent. But, assuming there has been no unreasonable delay or neglect in filing the (lisclaimer, it can· not avail here. . If it is true that' th.e patentees defectively or insufficiently described the invention, and claimed more than they had. a right to claim as new, they were' entitled to a reissue of their patent upon Burrenderof tlie original. But it is not the office of a to .reform or alter the description of the invention.' If. a patentee has claimed more than that of which he was the invtmtor, his patent may be valid for all that part which is justly and truly his own, and he may recover upon his patent if the'part which is his own be definitely distinguished from the parts claimed without right; but in such case he canndt recover costs ·unless a diSclaimer has been enclaims, some tered .before .suit commenced. When there are of which he is entitled to and others of which he is not entitled to, the part of the invention which is his own maybe definitely distill-
fiTOH f1. B1UGG.
gnisbable from that which is· not his own, and a disolaimer before suit brought will put him right, and enable him to recovernpon his patent as though it had originally been confined to the proper clarms; and there would seem to be no objection in such a case to eliminating by his disclaimer such parts of the description as , relate to'the claims ;to which he is not entitled and which he abandons: . This, however, is a very different thing from converting a claim from one' thing into a claim for something else, and amend. ing the description to effectuate the claim. This might giv;e the patentee a new patent; it certainly would enable him to grant. himself a reissue without the concurrence of the commissioner of :wo111denable.him, after others had occupied the Jield of patents. invention, and by their intellect and experiments discovered what he bad never pointed out or claimed, except, perhaps, so vaguely that. his was valueless, to deprive them of the fruit of their there are distinct claims in the patent, some of which .efforts. are valid and others not; or, where there is a single claim, but specification by which .thepuplic can definitely disti,nguish what is and belongs to the patentee, and what does not really belong to him, although he. had claimed it, a disclaimer will right the pat. entee'f;l and will work no inju,stice to others. 'fas nothing in the description or This is not such a case. claim of the complainants' patent to indicate to the defendant or public that they were appropriating anything of which the patentees were the inventors. They had a right to suppose that they The bill is dismissed. were laboring in a new field of
and another v.
When redu.etion of prices in the plaintl1fs' sales is the only element of dam. ages, if the essential feature of plaintUfs' structure and of the infringing structure respectively is the patented device, and the device, being onlyapart of the structure, must necessarily be embodied in the complete structure , tor sale, and he is enabled by the presence of such patented device to make hie profit onth,e and he ,is deprived, by the acts of thll detendantdn .ellin/I at lo'wprices the patent¢ device, of thll profits which he otherwise'woulli Have made on the containing the patented device whch he actually' sold, the defendants' infringement must bet held. caused the llotire loss of plaintiffs by thll reduction of prices, afier a proper sum for aoy otbllr patented device in defendants·
· Reversed. See 7 Sup. Ct. Rep. 978.