HARTSHORN v. EAGLE SHADE ROLLER CO. and others.
(Oircutt Oourt,D. Massachusetts. October 11,1883.)
PATEKTS,J!'OR INVENTIONS-INVENTOR'S OATH ON ApPLICA'l'ION FOR PATRNT OU REIBSUE.
Objection being taken by tlle defendants that the oath of the plaintiff to his application for a reissue is Irregular and insufficient, in stating that the originallettel's patent are not "fully operative" instead of" inoperative," held, that the word" "inoperativeorinvalid,", in the statute aut}lOrizing reissues, mean inoperative or lDva.lid in or in part, and that consequently the words "not'fnlly inoperative" ,conform to the true inteptof the law, if the law requ:ire,d an oa;th, whrch it; does not. The statutory requirement qf an affidavit by,a,n applicant for anorigin/llpatent js directory merely; and, if it is irregular or omitted altogether,the pil.tent is not thereby vitiated, In the matter of reissues is !ilola.'Wtequil.'in'g the applicant to take any oath on tIle SUbject cof tM , :Reissue No. 2,756, dated August 27,1867, of letters patent No. 44,624, dated October 1l,1864,held void on account of failure to make application to amend within the required time. But such failure and long delay in the reissue of October al, 1876, of originaHetters patent No. 69,176, dated September 24, 1867, lield not void, on the gropnd that the circumstances of the delay in this case were such that it could n(Jt be accounted laches on the part of the plaintiff, and was one from which no innocent person could have Buffered.
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In Equity. .. .." S. D. Law and B. ThurBton;forcomplainants. O. SmitH andW. k Herrick, f6r'uefendant. Before LOWELL and· NELSON,·· J'J· · LOWELL-, J. The plaintiff owns two reissued patents;. one as in· vento!'; and one as assignee from the inventor, of improvements in shades for window cur.taitia. No. 2,756, which is callE;d the horn reissue; is dated August 27, 1867; the original was No. 44,624, dated October 1'1, 1864. The second, called the Campbell reissufl, was granted October 31, 1876; the original to William Campbell, No. 69,176, is dated September 24, 1867. The Rartshornreissue has been before the courts in the first and second circuits, and its validity does not appear to have been disputed.. It was construed and upheld, and infringements were suppressed. Hartshorn v. Tripp, 7 Blatch£. 120; Hartshorn v. Almy, 1 Holmel;>, 493. TheCampbeU reissue is proved to have been sustaip,ed tip the second circuit, in motions for injunction. Neverthe. the recent decisions of the supreme court will require us to examine the validity of the reissues. A preliminary objection is taken to both reissues that the oath of the inventor to his application for the reissue is irregular and insufficient. It is,in each case, that the original letters patent are not "fully operative, " whereas the defendant insists that it should be that they.are "inoperative," simply-that is, wholly inoperative. The statute authorizing reissues uses the worda "inoperative or invalid," but that means inoperative or invalid in whole or in part. We have never seen a case of reissue in which the original patent
HARTSHORN. v.ljlA.GLE BHADE aOLLER CO.
was totally inoperative. The oath, therefore, conform.s to. the true intent of the law. 'l'he defenda.nt refers us to Whitely y. Swa.yne, 4 Fisher, 107, in which Judge LEAVITT decided that the oath to an application for .areissue should conform to the exact words of the law. circuit hs lately,adopted that The learned circuit judge of the decision without examining the point anew. Poage v. McGowan) 15 FED. REP. 398. . The attention of Judge LEA.VITT does not appear to have been -called to the decisions which hold that the statutory requirement of an affidavit by an applicant for an original patent is directory merely; and, if it is irregular or omitted altogether, the patent is not thereby vitiated. This law accords with all analogies in. similar matters) and with sound reaRon. It would be most unjust that a mere slip in the form of an affidavit) to whicb atteJ:!.tion ought to have been called irithe patent.office, should destroy an. honest patent. The decisions upon this point, beginning in 1813, are : Whittemore v. Outter, 1 Gall. 429; Dyer v. Rich, 1 Mete. 180; cromptfm v. Belknap·MUla, 3 Fisher, 536; Hoe v. Cottrell, 17 Blatchf. 546; [So C. 1 FED. REP. 597;] and see Curtis, Pat. §§ 274, 274a. The point was taken in Hoe v. Bost. Daily Adv. Corp. 14 FED. R:JjJp. 914, but was considered to be fully settled, I,md is not noticed in the judgment. It .wa,s ta,ken before Judge BLATCHFORD in Hoe V. Kahler, 12 FED. REP. l11,hut the facts did not fairly raise the question. These are all the. decisions which we have found as to original patents, and they are all on one side; and they agree with a class of cases in which it is held that a patent once issued cannot be collaterally impeached. Rubber CO. V. Goodyear, 9 Wall. 788; citing Jackson v. Lawton) 10 Johns. 23) and other cases. . With respect to reissues, the argument is stronger) beoause there is no law which requires the applicant for a reissue to take any oath at all on the subject of the invalidity of his original patent. Rev. St. § 4916. This consideration would, of itself; be decisive. Gold &; Stock Tel. 00. v. Wiley, 17 FED. REP. 234. This objection is overruled. The validity of the Hartshorn reissue was not attacked 10 the cases first above referred to) for the reason, probably, that it is clearly warranted by the law as then understood. It is for the same invention as the first patent, in which there is a paragraph which. might stand well enough for the very claim of the reissue. For a careful description of the invention, we refer to Hartshorn v. Tripp and Ha'Y'tshorn v. Almy, ubi supra. Briefly stated, it is an improvement in shade fixtures, by which a roller, with the usual spiral spring for raising the shade) is stopped at any point of its ascent or descent, by merely checking the speed of the roller·.. The stop is effected by means of a pawl engaging with a ratchet, the position and shape of the pawl being such that it will slip by the ratchet when the spe.ed of raising o.rlowering the shade is considerable, and will engage when
it is slight. In the original patent, the pawl is claimed as attached to the bracket or other fixture near the roller. This is an unnecessary limitation of the invention described in the patent, because the pawl may be as well attached to a fixed part of· the roller. The reissue discards this limitation. The application to amend was made more than two years after the date of the patent,and we have to de· cide whether such an expansion can be made after such a lapse of time in the absence of any explanation of the delay. It is pointed out by counsel that in alIthe late cases in the supreme court in which lachesalo.ne vitiated the reissue the delay was very much greater in this case. But the emphatic and reiterated declaration in the judgment in Miller v. Brass 00. 104 U. S. 350, that a delay of more time than would !bereasonably sufficient· to read the patent and ascertain its need of amendment, should be accounted laches in a case where enlargement of the claim is the only amendment, be overlooked. We must hold this reissue void. The first claim of the Campbell reissue is, "in a spring shade roller, having a pawl or detent and a ratchet, or their equivalent, so ar· ranged as to allow the shade to be drawn down or run up without obstruotion, and whioh engage automatically with each other to hold the shade in any desired position, the arrangement of euch pawl,' or detent, on the roller which carries the notched spindle or ratchet, so that when the roller is removed from its brackets, the tension of the spring will 'be preserved." This reissue was taken about 10 years after the original' patent, but under very peculiar oircumstances. Messrs. Munn & Co., patent solicitors, had, in 1867, charge of two applications' for· 'improvements in shade rollers,-one invented by Hartshorn, and one by Campbell. Hartshorn's application was a lit· tie the earlier of the two. Either description might properly sustain a claim for the broad invention of a roller which would maintain its locked position when removed from the brackets, as now claimed in the reissue of Campbell. This broad'claim was inserted in the Hartshorn patent,No.68;502, and ,no interference was declared between Hartshorn and Campbell; but the claim of the latter was limited. It was discovered in 1874, by testimony given in a cause in this court, that Campbell could carry back his invention some months beyond Hartshorn, and thereupon Hartshorn bought the Campbell patent, and both were surrendered and were amended in such a way that the broad claim was dropped from the Hartshorn patent, and taken up by the Campbell patent. In aU this there is no evidence of fraud or laches, but the contrary. The defendants argue that if we look at the Campbell patent alone, he would seem to have neglected for 10 years to enlarge his claim. This is true; but the pub. lie were not injured, for the same claim was found in the patent of Hartshorn. .The invention was not thrown open to the public,-was not abandoned. Campbell, misunderstanding perhaps his rights, or the true state of things, aoquiesced through the solicitors, who
BOSTON RUBBER SHOE 00.
were common to both.parties, in the broad claim of Hartshorn. When the mistake was discovered, it was corrected by a simple exchange of 'claims. We are of opinion that, under these unusual circum· stances, the lateness of the application is explained and shown to have been brought about by an actual mistake, without fraud, and to have been one from which no innocent person could have suffered. This is infringed by:the .defendant's apparatus. His pawls, or detents,differ somewhat from those described in the patent, but not materially, as far as the first claim is concerned. ' Decree for complainant on the Campbell reissue.
BOSTON RUBBER SHOE
(Circuit Oourt j D. Massachusetts. October 11, 1883.)
PA,.,il:NTS FOR INVENTIONS.
The patent of Erskine F. Bickford, No. 196,788, for rubber boot-straps, Dot Ilustained for lack of novelty.
J. L. S. Roberts; for complainant. John K. Beach, for defendants.
LOWELL, J. The patent of Erskine F. Bickford, No. 196,788, dated November 6, 1877, is sued upon here. The single .
"As an improved article of manufacture, a rubber boot provided with a l,"ounded, standing loop, of substanti.ally the same material as the boot; said loop being; made in the shape of,a &taple, alld having its ends flattened and cemented,or otherwise SUitably secured, between the inner and outer layers of said boot, SUbstantially as and for the purposes described."
boot which is described and4rawn in the specification bas a standing loop which opens transvers,ely of the leg, instead of tu,dinally with it. This makes Il.' very conveJ;lient loop, which appears to have made the boot acceptable to the public. The evidence produced by the defendant upon the state of the art shows a patent issued to F. H.Moore, January 15, 1864, No. 41,087, in which a standing loop is described, whioh the patentee says is intended as a substitute for the ordinary woven or webbing boot-straps in common use. It is to be constructed of metal, or any rigid, tough,or hard substance, such as heavy wire or plate metal. The loops are shown as opening transversely of the leg, and the patentee says that they may be grasped with much greater facility than the ordinary straps. This patent was reissued in February, 1864, with a claim &sfollows:
"A strap for and shoes of metal, or other rigi4 or tough material, attached either permanellt!y to the boot·top, or in Buch manner as to admit, aft.er the boot is drawn on)he foot, of being turned or shoved down within or at tb:e:outer side of the boot, substantially as described;" ,