The claims in the original read: "(1) The rod with its knob, E, and the oscillating lever. C, for the purpose of releasing a suspended weight by the direct action of a gong-hammer, suhstantiallyas and for the purpose herein described. "(2) In combination with rod, D, and the recessed oscillating lever. a, pivoted as described, the weight, H, and its roller, G, for the purpose of reli.wing friction and removing the rod, D, from the action of the gong-hammer, substantially as herein described,; "(3) In combination with the weight, B, caused to fall, as shown. the bellcrank lever, I, cord, K, and lever, L, for releasing the sliile, 0, and weight, R, lind thus releasing the horses by means of the cord, substantially as herein described."
The specifications in both patents describe the same invention. The defendant's expert found no invention referred to in either the descriptibn or the claims of the reissure not described in the original as instrumental in carrying out the object of the invention. He thought, however, that the claims of the reissue, without covering any new invention, allowl:Jd greater freedom in construction than did the claims of the original. "The rod with its knob, E," one of the elements of the combination in the first original claim, is described in the C'orresponding claim in the reissue as "the rod, D, arranged as described," the "knob, E," being omitted. In the reissue the rod projects in the path of the hammer, as It did in the original, and operates precisely as it did before. The claims in the original covered any rod extending within the sweep of the gonghammer, so that, when struck, it would perform the function of tri pping,' as described. The knob at the end of the rod performed no function independent of the rod, and it was not an operating element in the combination. r'fhe original specification showed that the action of the gonghammer upon the suspended weight was not immediate, or direct, but through intermediate elements, and, literally construed, the claims were not for the invention described, and, while the first claim in the reissue is more accurate, it is still limited to the combination which constitutes the invention,-"a combination of elements, operating substantially as and for the purpose described." Obviously the patentee feared that the original first claim might be held too broad or general, ann for that reason he desired the fourth claim, covering a subdivision of the invention. This claim was fairly embraced in the original first claim. It is more limited than that claim, but it is clearly within the original statement of invention. The reissue contains no claim which might not have been mane and allowed upon the original record. The real invention consisted in the combination of the designated elements acting in co-operation to accomplish a specified result, and the patentee was 110t limited to the precise forms of the elements shown in the drawings. Elements possessing thO' essential qualities and performing the same functions as those described in the specifications. and illustrated in the drawings, although differing in mere mechanical construction or form, were covered by the original patent. A combination patent cannot be evad,ed by a mere formal variation of all or part of the elements. Even if the claims of the reissue be construed as broader than the original
WALKER V. CITY OF TERRE HAUTE.
claims, the former are clearly within the described invention, nn(1 the reissue was applied for in less than three months after the original was granted, and before any new rights had intervened. While an inventor may not obtain a reissue enlarging his invention, he may, under proper conditions, surrender his patent, and obtain a reissue with enlarged claims, not extending, however, beyond the bounds of his described invention. It is not claimed that Bragg obtained his reissue to cover improvements made after the date of his first patent, and the defendant's expert testified that the reissue contained no new invention. The supreme court has never so construell the statute which authorizes reissues as to deny to a patentee, on application made in due time, and before adverse rights have accrued, the right to obtain a reissue broad enough to cover his entire invention as originally described and as he intended to claim it·. In Mar8h v. Seymour, 97 U. S. 348, the supreme court say: "The patentee may redescribe his invention, and include in the description and claims of the specification not only what was weil described lJefnre, but whatever else was suggested or substantially indicated in the old specitication, drawings, or patent-office model, which properly belongell to the invention as actually made and perfected. Corrections may be made in the description, specification, or claims of the patent where the patentee has claimed as new more than he had a right to claim. or where the deSCription. specification. or claim is defective or insufficient; but he cannot, under such an application, make material additions to the invention which were 1I0t llescribed, suggested', nor substantially indicated in the original specifications. dl'awings, or patentoffice model." The statute authorized the granting of the reissued patent. The defense of prior use is not supported by the evidence. BrQwn S: Flanders testified that in 186H, while acting as engineer in connection with engine No.8, of the Boston fire department, he constructed and put into practical use a device which operated automatically on the same principle as the device described in the patent in suit, and his ments were corroborated by four or five witnesses, who at that time were his associates in the same company. If the Flanders mechanism was hi use, as claimed, as early as 1869, the patent in suit is invalid for want of novelty, and a detailed descri ption of it is therefore unnecessary. The complainant introduced a number of witnesses, who testified that during their connection with the f'ame company in 1869, and for several succeeding years, they never saw or heard -of such an automatic device for releasing horses from their stalls. And a still larger number of witnesses, who were employed in other engine-houses in Boston, during the period of alleged .prior use, some of whom visited No.8 from time to time, testified that before the application for the patent in suit they never saw or heard of the Flanders device, or anything like it. A delphia engine company sent a committee to Boston in the spring of 1869 to inspect the engines and fire department of that city, and note all improvements in apparatus and methods, should any be observed. and during the four or five days that the committee spent in Boston, engine-house No. 8 and others were visited and inspected. Flanders
testified that his automatic device was then in use at No. 8,and that it was seen by the committee, and by him explained to them, or some of them; and his statements were corroborated by several witnesses who belonged to the company in 1869, and later. The surviving members of the committee, as well as several members of their company who went with them, were subsequently called, and testified that neither the Flanders device, nor anything like it, was shown to them by him or anyone else, and that they never saw or heard of that device in engine-house No. 8, or elsewhere, during their visit to Boston. The records of the Boston fire, department, covering the period of alleged use, make no mention of such a device, and it is incredible that Flanders should have invented or iJ,ltroduced an improvement of lluch marked utility without bringing to the attention of the fire department, or making an effort.to its obWn .a. pateutfor it. " ',. ' The remaining question is that of infringement. Thecomplainant's t\ll'O attpert witnesses that the device used by the defendant in its contained the invention em braced in the first and fourth claimsofthe patent in suit, and the defendant's only expert witness testified,on cross-examination, to the same effect. It is true that in the defendant's device the trip-rod receives the stroke of the hammer in its backward or reflex while in the device described in 'the Bragg rod receive$the blow iIi .the forward"or direct, stroke of the hammer.· But this mere alteration of the location of the trip-rod would readily occur to any skilled mechanic. The effect of the. is the same, whether the rod receives the blow in the forward or oackward action of Without dwelling in detail upon this and other stru<;tu.ral differences, it ill sufficient to say that I am satisfied the defemiant's device embraces all the elements of the Bragg invention. The Ihave reached. are in harmony with the decrees entered in J]ragg v.Oity of Portland, in the district of Oregon, Bragg v. Oily of San Jqa6, it?-, the northern district of California, and the opinion of Judge SAWYER in Braggv. Oily of Stockton, 27 Fed. Rep. 509., Injunction granwd as prayed for, and the case referred to tlle master to take testimony and report the damages.
'M<JBRIDE tI. GRAND
(OwcuU OouTt,8. D. Iowa, O. D. November 18,1890.)
OF CLAIM-RIDING ATTAOlIMElIT FOB 'PLows. ' :' On a bill of letters patent No. for "a riding at; tachment'!for plows;" complalnant contends' that the/atent covers a combination , ofthr(lewheels 80 arrangea ,as to carry the,downwar pressure of the plow upon tbe eartb, and tbus reduce friction and lighten the draft. anll, also prevent the' pack;ing of ,the eartb at tbe bottom of the furrow. The object aatually sought; as stated in tb,e specifications, was "to vrovide a simple, ",tronlt, durable attachment "for plows that can be more readily applied and adjusted to operate a Vlow steadily; ,and to regulate ,the depth and Width ot·turrow sUces, b;y th.e o41e.rator, s,eated. upon