WOLLIIlNSAE 'D. REIHIIlB.
v. Bradford, 16 O. G. 174. If the construction of the prior thing of itself demonstrates that it is within the principle of the patent, then, perhaps, no use need be established, for it might be said to prove itself. Sayles v. Ohicago et N. W. R. 00. 4 Fisher, 584. It is not necessary that the prior invention should have been actually used for the purpose contemplated, but it must have been capable of such use. Pitts v. Wemple, 2 Fishel', 10. In Parker v. Ferguson,l Blatchf. 407, Mr. Justice NEL£ON charged the jury, in substance, that if they believed the prior device was constructed the same as that described in the patent, and was taken away to be used, the evidence was sufficient to establish the fact of a want of novelty, although there was no proof of actual use. The primary inquiry is one of identity between two things. If the identity can only be known by actual use, such use should be proved. If the identity is apparent on inspection, it is not necessary to prove actual use. If there is a reasonable doubt as to identity, want of novelty is not made out. Walk. Pat. § 72. By the weight of authority and of reason, it would seem that if the prior invention was the same as that described in the patent; if it was complete, and capable of producing the same result, and was known in this country,-it is sufficient to sustain the defense of want of novelty. In the present case it is admitted that dump cars embodying the same invention were constructed some years before the date of the patent. It appears that 40 such cars were ordered to be built at car-works in this country by a foreign railroad company, and shipped to that company presumably for use. In our opinion the admitted facts prove that the prior invention was the same as that described in the patent; that it was complete, and capable of the same practical use, and that, therefore, the defense of want of novelty is made out. Judgment for defendant.
WOLI.ENSAK 'V. REIHER.
«(Jlreuit Oourt, N. D. Illinois. October Term, 1884.\
PA.TENT!'! FOR INVENTIONS-REISSUE-LACHES.
Reissued patent No. 10,264, granted to John F. Wollensak for transom-Jlfters, held void by reason of his allowing eight years to elapse without applying therefor; following Miller v. BrasB Co. 104 U. S. 850.
Bannin.fJ et Banning and L. L. Bond, for complainant. Oha,rles T. Brown, for defendant.
GRESHAM, J. The bill avers that on the tenth day of March, 1874, patent No. 148,538 issued to the complainant fora new and useful iniprovement in "transom-lifters;" that afterwards; finding this pat
entto be inoperative a.nd invalid, by reason of defective specifications arising through inadvertence, accident, or mistake, without fraudulent or deceptive intention on his part, the complainant surrendered it, and on December 26, 1882, caused to be issued to him reissued patent No. 10,264; that he applied for the reissued patent in good faith; that he believed no person, firm, or corporation not acting under his authority ever began the manufacture, sale, or use of transom-lifters embodying his invention or improvement, until long after he had Jonsulted counsel, and had taken steps towards applying for his reissue; that in making the application for the reissue, he presented to the patent-office a full sworn statement connected with his applying for and obtaining the original patent, and of his delay in applyjng for the reissue; that his application was rejected on the ground that he failed to make a sufficient explanation or excuse for the delay in making it, but, on appeal, this decision was reversed by the examiners in chief, on the ground that the complainant had satisfactorily explained such delay, and that he was entitled to a reissue with enlarged claims; that he was the first inventor of the improvement described in his reissued patent; that it is good in law, and, so far as he knows or believes, the public has generally acknowledged its validity; that it is of great value, and he has long been engaged in making and selling transom-lifters embodying his invention; that the defendant, without right, has made, used, and sold, and continues to make, use, and sell, transom-lifters embodying the invention described in the reissued patent, and claimed in the third, fourth, fifth, sixth, and ninth claims thereof. Copies 'of both the original and reissued patents are made parts of the bill. With the exception of five additional claims in the reissued patent, it is in all respects, substantially like the original. The suit is brought to enjoin the from infringing the third, fourth, fifth, sixth, and ninth additional claims in the reissue, and for damages. 'fhe defendant demurs to the bill for want of equity. The reissue was applied for more than eight years after the original patent was granted. Does the bill sufficiently explain this long delay? It is contended by the complainant's counsel that a reissue may be applied for and granted at allY time before the expiration of a patent, and even during the extended term, provided adverse rights have not intervened. This view certainly finds no support in Miller v. Brass Co. 104 U. S. 350. When an inventor receives his patent, it is his duty to examine it promptly, see that his invention is properly described, and that his claims are broad enough to embrace it in all its scope. If, upon a mere reading of his patent, it is obvious that he is with broader and more comprehensive claims, he entitled to a must make his application speedily. Failure to do this is a dedication to the public of so much of his invention as is not covered by his claim. The rule of laches is strictly 'applied in such cases. Speak"ing of delay in asking for a reissue to enlarge the scope of the
UNITED STATES V. GUNNING.
the court, in Miller v. Brass 00., supra, say: "And when this is a matter apparent on the face of the instrument, upon a mere comparison of the original patent with the reissue, it is competent for the court to decide whether the delay is unreasonable, and whether the reissue was therefore contrary to law and void." The bill shows no excuse for the long delay in applying for the reissue. The complainant slept upon his rights, and I think the claims which the defendant is alleged to have infringed are void. The demurrer is therefore sustained, and the bill is .dismissed for want of equity.
v. GUNNING and another.
(Clrcuit Court, S. D·. New Yll1'k. December 26,1884.)
PATENTS FOR INVENTIONS-SETTING ASIDE PATENT FRAUDULENTLY OBTAINED -EVIDENCE.
Upon examination of the evidence taken and tiled by the United, States, held, that the denials of the answer, unsupported by evidence on the pa.rt of the defendants, are overcome, and that a dtcree vacating and setting aside the patent thereunder be granted .
It appearing that defendant Ingersoll has not participated in the fraud, and is a bonafide purchaser of an interest in the patent decreed frauuulent set aside, costs will not be decreed against her.
In Equity. G. E. P. IIowara and Louis G. Raegener, Asst. U. S. Attys.,for ora.tor. A. J. Todd, for defendant Ingersoll. WHEELER, J. The question whether this bill to set aside the patent granted to the defendant Gunning as inventor, and the defendant Ingersoll as assignee of one-half of his interest in the inven"tiqn,. fqr fraud in procuring it to be granted, can be maintained by the United States as a party to the grant, imposed upon by the fraud, has been settled in this case, except upon appeal, by the decision of Judge WALLACE overruling the demurrer. U. S. v. Gunning, 18 FED. REP. 511. The only question now is whether the material allegations ·of the bill then adjudged to be sufficient-have been proved by sllfficient evidence. The fraud is alleged to consist in setting up in the application that Gunning was an original and first inventor, when he was not, and knew he was not; and that the imention had not been in public use or on sale for two years prior to the application, when it had been, and he knew it had been. These allegations are denied by the answer. The orator has taken and filed testimony,-the defendants have not,-so it has been used. The answer being responsive, is to be overcome as evidence, and the allegations are to be made out. In analogy to the requirements of evidence for defeating patents, and for