BOLAND V. THOMPSON.
(Oircuit Oourt, S. D. New York. February 18,1886.)
1. PATENTS FOR INVENTIONS-VOID REISSUE.
The first claim of reissued letters patent No. 9,586, granted to Claude N. Boland, February 22, 1881, for an improvement in glove sewing machines, is void; such claim not being found in the original, the application having been filed two years, two months, and eight days from the date of the original, and the rights of the public having intervened.
SAME-ExcUSE FOR DELAY IN APPLYING FOR RlllISSUE.
The patentee was a foreigner, unfamiliar with the English language, and was ignorant that the claim in controversy had been omitted from the origi· na.l patent until a fortnight before the applica.tion for the reissue. Held, that these facts were not sufficient to excuse the delay.
SAME-RIGHTS OF THE PUBLIo-DUTY OF THE COURTS.
To every patent the public is an indirect party. It is for the advantage of the whole people that all meritorious lDventions shall be protected; but it is clearly the duty of the courts to see to it that t1<1 public is not required to pay tribute for that which may be fairly considered as abandoned by the inventor. The claim in controversy was presented in the original application and twice rejected. The applicant knew of the rejection, and his solicitors acquiesced in such ruling. Held, that the proper course to secure the claim was to appeal, and that there was no such inadvertence, accident, or mistake as entitled the patentee to a reissue.
SAME-'-REMEDY FOR REJECTION BY PATENT-OFFICE, APPEAL, NOT REIBBUE.
In Equity. James A. Whitney, for complainant. W. H. L. Lee and B. F. Lee, for defendant. J. This is an equity action founded upon reissued letters patent No. 9,586, granted to Claude M. Boland, February 22, 1881, for an improvement in glove sewing machines. The original letters patent, No. 202,695, were dated April 28,1878. The application for the reissue was filed July 1, 1880, two years, two months, and eight days from the date of the original; The invention consists-in substituting, as a support for the outer feed disk, a bent arm, projecting from the upper part of the casing of the machine, for the upright or curved column resting upon the extended base of the casing; the advantage being that a free space is thus left beneath the disks, permitting material of any size to be sewed upon the machine. The original contained four claims. The reissue contains five. The four claims of the original are substantially repeated in the reissue, and a. new one added. It is this new claim, the first of the reissue, which alone is in controversy. It is in the following words:
"(1) In a sewing-machine, tbe combination of two feed disks, D, DI, arranged in horizontal position and in contact, and a bent arm, D2, which suspends and serves as a journal for the outer disk, whereby a free space is left beneath the latter, as shown and described."
The specification attached to the original application, filed by the inventor, September 22, 1877, contained a claim similar to the one just quoted. It is in these words:
Reported by Charles C. Linthicum, Esq., of the Chicago bar.
"(1) In a glove sewing machine, the combination of an intermittently revolving feed-disk, with ll. second feed-disk, forming frictional contact therewith, and turning on the end of a curved supporting arm arranged, above space below the same, substantially as and for the feed-disks, ,to leave a the purpose set forth."
chine, and tlleir curved support, D2, to 1eave a the work, as, Shvwn and described."
This ellloim was rejected by tlie examiner on the fifteenth of November, 1877, upon reference to the Polmateerpatent of November 23, 1875; and a few days ,thereafter it was amended, and again presented " as follows: "(1) 'fhe feed-disks, n, Dt. arranged with respect to theTemainder of ma-
The claim, as amended, was again rejected oli the twentieth of November, 1877, the reference being the same.'rhe complainant knew of the action of the examiner in this respect, and wrote to his solicitors on the seventh of December, 1877, reiterating the detilll.nd that the first claim referred to should be retained. He also had frequent consultations with them through an interpreter. The first claim of the reissue had therefore been the matter of discussion between the complainant and his solicitors, and between the solicitors and the officials of the patent-office. It had been deliberately rejected, and the ruling was acquiesced in by the solicitors, December 14,1877. In the spring of 1880 the defendant commenced the sale of the infringing machines. Besides the defendant's, other rights intervened; the arhl.ngement of the feed-disks being shown in English and American letters patent granted to Wollenberg and Priesner, the latter be. ing dated August 6,1878. The complainant, on discovering that he could not maintain a. suit against the defendant upon his original patent, promptly applied for a reis.sue. Upon thesefac.ts, can the reissue be sustained? The impression obtained on the argument was that the complainant had made a mer· itorious invention, and the record has been etamined with care to discover, if possible, some theory upon which the patent can be lawfully upheld; but it is thought that there is no way of fairly distinguishing the case in hand from the well. known adjudications upon this subject. No proposition can be advanced in support of the reissue that does not find. an apt and ready anl:lwer in the language of the courts. Every avenue of escape is closed. Among many authorities, the following have been selected as particularly applicable and de. cisive of the questions involved: Wollensak v. Reiher, 115 U. S. 96; S. C. 5 Sup. Ot. Rep. 1187; Coon v. Wilson, 118 U. S. 268; S. C. 5 Sup. Ct. Rep. 537; Mahn v. Harwood, 112 U. S. 355; S. C. 5 Sup. Ct. Rep. 174; Leggett v. Avery, 101 U. S. 256; Millerv. Brass Co., 104 U.S. 350; New York Belting rePacking Co. v. Sibley, 15 Fed.Rep. 386; Arnheim'v. Finster, 24 Fed. Rep. 276; In re Hatchmall, 26 O. G. 738. Great stress is laid upon the fact that the. complainant il!la Fl'enchman, and unfamiliar with the English language. He was, it is said,
ignorant that the claim in dispute had been finally omitted until a fortnight before the application for the reissue. Should such E'Xcuses be accepted by the courts? These questions must be determined upon broad and general principles. The march of the law cannot be arrested or diverted from the broad and traveled highway, to deal specially with each isolated and peculiar transaction. No two cases are precisely similar, and the rule should not be changed because of slight variations upon the facts. Ignorance of domestic law is never an excuse, nor is ignorance of fact, when it is traceable to the culpable negligence of the party who seeks relief. Were it inadvertence and mistake would be synonymous with willful and intentional neglect. To hold that the complainant's failure to understand our language exonerates him, would lead logically to the conclusion that a patent might legally be reissued to a foreigner which would be held invalid if reissued, in like circumstances, to an American. There was enough in this case-far more than ordinarily appears-to put the complainant on his guard; to induce him, at least, to have his patent read, and, if need be, explained, in order that he might ascertain the full extent of the government grant to him: Instead of pursuing this obviously prudent course, he waited supinely for over two years, and now, when other rights have intervened, he answers the charge of laches by saying that he did not know what his patent contained. The law will not permit him to do this. To every patent the public is an indirect party. It is for the advantage of the whole people that all meritorious inventions shall be protected, but it is clearly the duty of the courts to see to it that the public is not required to pay tribute for that which may be fairly as abandoned by the inventor. But, irrespective of the question of laches, Leggett v. Avery, Arnheim v. F'inster, In re Hatchman, New York Belting d: Packing Go. v. Sibley, Mahn v. Harwood, supra, and Shepard v. Garrigan, 6 Sup. Ct. Rep. 493, (Sup. Court, February 1, 1886,) are authorities for the proposition that when a claim has been examined and rejected by the commissioner, the rejection acquiegced in by the patentee, or his solicitor, and the patent reissued without the claim, there is no inadvertence, accident, or mistake which entitles the patentee to So reissue. His remedy is by appeal. The bill is dismissed.
FEDERAL REPORTER. HUDNUT v. LAFAYETTE HOMINY MILLS and others.'
(Oircuit Oowrt, D. indiana. February 22,1886.)
In a suit on reissued letters patent No. 10.057, of March 7, 1882, to Theodore Hudnut, it was shown that one of the alleged infringing machines was made in accordance with an earlier patent, and therefore held that such rna· chine was not an infringement. 2. SAME-REISBUE WITH ENLARGED CLAIMS. It is not competent for a patentee, by a reissue of his patent, procured after a delay of more than 10 years, to so enlarge the scope of his invention as to cover devices, patented III the mean while, which were not embraced ill the original.
In Equity. O. P. Jacobs, for complainant. McDonald, Butler et Mason, for defendants. WOODS, J. Suit for infringement of reissued letters patent No. 10,057, issued to the complainant, for an improvement in hominy mills, March 7, 1882. Besides denying the novelty of the complain. ant's invention and the validity of his reissued letterl:l, the defendants also deny infringement. There are two machines, somewhat different from each other, which the defendants are shown to have made or used, and which consti. tute the alleged infringements. One of these is known in the record of the case as the "Sinker·Davis Machine," and the other as the "Burns The first-named machine, in the particulars in which infringement is alleged, is made in substantial conformity with letters patent No. 57,ti05, dated August 28, 1866, issued to J. A. Welsh, and therefore cannot be regarded as an infringement of com· plainant's patent, which was issued some years later. The other machines in question are shown to have been made in conformity with letters patent No. 247,882, issued to Edward R. Burns, and dated October 4, 1881. This date is earlier than that of the reissued let· ters sued upon, but later than the dates of complainant's original let· ters and the first reissue; the original letters being dated December 26,1871, and the first reissue, (numbered 5,520,) bearing date March 22,1873. Nqw, conceding their validity as inventions, it seems to me quite evident that the Burns patent, or a machine made under it, does not mfringe any claim, either of the original letters of the complainant or of the first reissue, because the combination specified in each claim thereof included the "arms, I," which are not found in the Burns device. The third and fourth claims of the second reissue, however, omit all express reference to the "arms, I," and the question arises whether or not these claims are valid, and have been infringed by the defendants.
by Oharles C. Linthicum, Esq., of the Chicago bar.