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FEDERAL REPORTER.
the bankrupt's dealings, without any reference to the rest of his indebtness to Maclean, Maris & Co. It was, therefore, no payment or preference in respect to their other transactions not rescinded, or in respect to the indebtedness remaining dne upon such other transactions, nor was it ever so intended. The right to prove the residue, therefore, was not affected. If the whole indebtedness had been represented by several promissory notes, one of which covered only the last shipment, the cancellation of this last note, upon an unlawful return of the goods represented by it, could have had no effect upon the right to prove the other notes. In re Kingsbury, 3 N. B. R. 318; In re Richter's Estate, 4: N. B. R. 221, 232; In re Lee, 14: N. B. R. 89; In re Holland, 8 N. B. R. 190. See, also, In re Black, 17 N. B. R. 400; In re Currier, 2 Low. 437. This case is in principle essentially the same. Without considering, therefore, the other points raised upon the argument, the motion to expunge should be denied.
GRAHA.M
v.
GENEVA LAKE CRAWFORD MANUF'G
Co.
(Oircuit Court, E. D. Wisconsin. 1.
October 11, 1880.)
IN CLAIM.
Where a person makes an invention, and describes It with other matters of invention in an application for a patent, and a patent issues for such other matters, this fact alone will not preclude him from applying for and obtaining another patent covering the invention described but not claimed in the first application. 2. BAMF..-ApPI,ICATION AND AMENDED ApPLICATION CONSIDERED AS ONE.
Where an application is made for a patent, and is afterwards amended by the withdrawal of parts of the invention, and a second application is filed claiming such parts, and patents afterwards issue on both, the two applications will he considered as parts of one continuous proceeding. 3. DOCTRINE OF RELATION-CONTINUITY OF ApPLICATION.
In such case the continuity of the proceedings, originating in the first appli. cation, will be considered unbroken in determining when the two years begin to run in which the invention claimed on the second application could be sold and publicly used without invalidating such patent.
4.
SALE OR PUBUC USE, WIIEN NOT TO INVALIDATE-TESTING UTILITY.
If necessary, in making tests, an inventor may sell a machine on trial, so as to get it fully and fairly tested, in practical use, by the class of persons for whose use it is intended, and t:luch sale or use, even for more than two years, if made for the purpose of practical test, will not be a sufficient sale or public use to invalidate the patent.
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139 ,
5.
PLEADING-PARTms-·WANT OF TITLE.
The objection that a suit cannot proceed hecause all the parties claimed to. have an interest are not joined as complainants, is not favored when the title claimed to be vested in the parties not joined is disputed, and there are serious doubts as to whether they actually own any interest whatever, and especially. so when such objection is made by a party charged with infringement. 6. SA:IlE-DISCLAIMER.
A party alleged to have an interest in a patent sued on may disclaim all inter" est in favor of complainant, and thus obviate the objection that he should be joined as a party.
7.
INFRINGEMENT-FoRMAL DIFFERENCES.
Wbere there are differences merely in the form and not in the substance, and defendant's machine really shows the various parts described in complainant's patent, it is an infringement.
8.
SAME-EQuIVALENTS.
Where the various parts of defendant's machine exhihit mecbanical parte equivalent to those in c0mplainant's machine, and proJw.ang the same result, an infringement is established. 9. SAME-GRAHAM HARVESTER, No. 74,342. The first and second claims of the Graham harvester patent of February 11, 1868, No. 74,342, held to be valid, and infringed by the Burdick & Le Roy patent of November 12, 1872, No. 133,013.
In Equity. Banning Flanders Banning, for complainant. BottUln, for defendant.
DYER, D. J. This is a bill in equity to restrain the alleged infringement of a patent issued to Alvaro B. Graham, February 11, 1868, for an improvement in harvesters. The complainant is assignee of the patentee, and there are involved in the present controversy thefi.rst and second claims of the patent. These claims are as follows: "(1) The combination, as set forth, in a harvester, of the finger-beam with the gearing carriage, by means of the vibratable link, the draught-rod, and the two swivel-joints,M and M " so that the finger-beam may both rise and fall at either end, and rock forward and backward. (2) The combination, as set forth, in ilo harvester, of the finger-beam, gearing carriage, vibratable link, draught-rod, swivel-joints, and arm, by which the rocking of the finger-beam is controlled."
Several defences are interposed, but before passing to their consideration it may be well to state that the validity of the patent was involve!! in the case of Graham v. Gammon, 7 Biss. 490, and has also since been passed upon in the northern district of Illinois in the case of Graham v. McCormick, (unreported,) which was heard by the circuit judge, and the district judge by whom, the present case is decided, sitting together; and most. of the questions here involved have
140
been passed upon, after most elaborate argument, in the McConnick Case. Further, as preliminary to the consideration of the grounds of defence urged by the defendant, it is important to state, as part of the history of this patent, that the application for the patent wa9 first made February 25, 1864, by placing it in the hands of solicitors in New York, to be by them presented to the patent-office. '1'he application was not, however, in fact filed until December 2, 1865. In its original form it contained five claims, the first of which related to the invention now in suit, and the last four to other improvements. The first three claims were rejected by the patentoffice, December 30, 1865, and an offer was then made to allow the other two claims. This offer was not accepted, and an amended claim was filed March 24, 1866, in place of the first rejected claim. This claim, which had reference to the invention now in controversy, was rejected April 4, 1866. While the first application was still pending, and on the eleventh of February, 1867, a second application was filed, containing, among other things, the two claims now in suit. In June, 1867, the claims which embrace the present invention were withdrawn from the first application, and a patent was issued on that application July 23, 1867, but that patent did not include the invention now in question. A patent for that invention was issued on the second application, February 11, 1868. The original specifications and drawings, which accompanied the first application, contained a description of the invention now under consideration. It is insisted, first, that complainant's patent is invalid because, previous to its issuance, the patentee had procured a patent to himself and others as his assignees, in the specifications and drawings of which the invention now in question was described and delineated, and that, therefore, the prior patent (meaning the patent of 1867) can be issued so as to cover all that was invented by the applicant for the patent in suit; and also that the inventor, A. B. Graham, prior to his application for the patent of 1868, applied for the patent of 1867, in which application he set forth, but did not claim, the invention now in controversy, and that, by his failure at that time to make such claim, he impliedly admitted his device to be old, and was thereby estopped from afterwards claiming the same to be new in any subsequent application. In the McCm'mick Case the court had occasion to consider this objection, and it was held untenable. It was there decided that it was not a proper case for reissue; that there was no defective or in-
GRAHAM V. GENEVA LAKE CRAWFORD lIANUF'a 00.
141
sufficient specification; and that the inventor had not claimed more than he had a right to claim as new. In the opinion, delivered by Drummond, J., it is said: " On general principles we think that where a person has, within the meaning of the patent law, made an invention which he has described in specifications, including other matters of invention, for which last a patent has been issued, that he should not be precluded for that reaS011 alone from applying for and obtaining a patent for that which was not claimed in the first patent. The object of the patent law was to protect a party who made an invention which was useful, provided he complied with the terms of the law and a patent issued for the invention; and unless there is something in the law which declares a patent issued under such circumstances to be invalid, it is the duty of the courts to sustaln a patent for an invention thus made. It is to be borne in mind that the application for the second patent, that of 1868, the one in controversy here, was made while that for the previous patent was pending, and before the prior patent had been issued. Ther.e were thuspendiug before the patent-office two applications at the same time, where the claims were different, and we understand it to be in accordance with the practice of the patent-office to allow applications to be made at the same time, by the same . party, for different parts of the same machine."
In this connection, and as bearing upon this question, I refer to McMillan v. Ree8, 17 O. G. 1222. The further ground of defence is urged that the patent in suit is invalid because the alleged invention was, with the inventor's consent and allowance, in public use and on sale for more than two years prior to his application for a patent therefor. This defence was also interposed in Graham v. McCormick, 8upra, and we had occasion there to consider it. It was there held that, for the purpose of fixing the time when the two years began to run, the application for the patent in suit should be treated as a continuation of the first application, filed December 2, 1865; and that "the continuity of the proceeding which originated in the first application was not broken, up to the time when the patent for the invention in suit was granted in 1868." From this conclusion it would follow that the two years within which the invention could be sold and publicly used without invalidating the patent, began to run December 2, 1863, which was two years prior to the filing of the first application. Some testimony bearing upon the defence under consideration has been taken in the case at bar, and in addition thereto, by stipulation, the testimony upon the same taken in the case of Grb.ham v. McCo1'Tnick, has been submitted.
142
The only machine made in 1863 by Graham, the inventor, which is clearly proved to have been sold, was delivered on trial; and the transactions of the inventor in that year, by which his then nnperfected invention was brought into notice, as was stated by the court in Graham v. McCormick, "should be regarded rather in the light of a use of the invention for such practical tests as the law permits an inventor to make, than as such a public sale or use as is contemplated by the statute. At that stage of the inventor's work his invention was largely in experiment and trial. It could only be tested by practical use in the field, and it was essential that it should be so tested by farmers on their farms. The inventor was then struggling, as inventors often do, to establish the success of· his invention. It was necessary that thorough experimental tests should be made, and that he should have the assistance of others in making them; and it is manifest, we think, that the machines of 1863 were not yet so per. fected as to be practical machines, capable of successful work." I am aware of the opinion of Judge Lowell in Henry v. Francestown Soap-stone Stove Co. 17 O. G. 569, and of his disagreement with Judge Shepley, who delivered an opinion in the same case, reported in9 O. G-. 409; but, upon consideration of all the testimony, I con· elude that what was done by the patentee, Graham, "with reference to the use of the machines in 1863, was intended by him, and was, in fact, for the purpose of expel'iment and as a test of the machines with a view to their perfection. This part of the defence rel'lts upon a claim of forfeiture of rights secured by the patent. To justify the court in sustaining it the proof should be clear and satisfactory. The .right of the infringer to invalidate the patent for this cause should be undoubted." Graham v. McCormick. I must hold this defence insufficient to invalidate the patent. Attack has been made upon complainant's title to the patent in question, and therefore upon his right to maintain this action. In November, 1865, the inventor, A. B. Graham, made a contract with W. B. & C. A. Werden, granting to them the exclusive right to manufacture and sell the improvement in. the machine in question, and providing that such right should continue until the patent about to be applied for should expire. By this contract Graham also agreed that before a patent should be obtained he would make such an asissuance of the patent signment to the Werdens as would secure to all three of the parties jointly, each to have an undivided one-third therein. This, of course, was merely an agreement to assign, but at the same time, viz., November 25, 1865, an assignment was
GRAHAM V. GENEVA LAKE CRAWFORD MANUF'a CO.
143
executed by Graham to the Werdens by which the full and exclusive right to the invention described in specifications then prepared and executed, preparatory to obtaining letters patent, was granted to the Werdens, the same to be held and enjoyed by them "to the full end of the term for which the said letters patent may be granted, as fully and entirely as the same could have been held and enjoyed by him [Graham] if this assignment and sale had not been made." This, it is to be observed, occurred before either the first or second patent was obtained. It is, nevertheless, contended that the Ian. guage of this assignment is so broad as to vest in the Werdens an interest in the invention covered by the patent of 1868, and therefore that the present action cannot be maintained by complainant. It is also to be observed that the patent of 1868 was issued to Graham alone, and that there was thereafter no further assignment of any interest in that patent made to the Werdens. There is evidence tending to show that the contract before referred to, made between Graham and the Werdens, was virtually abandoned by the latter, and that a controversy arose between the parties, which has ever since existed, upon the question as to whether the Werdens have not forfeited their rights and interest even in the patent of 1867. It is evident that there is a serious controversy between the pal'ties upon that question; and without here determining what are its precise merits, and what are the rights of the Werdens, if any, in either the patent of 1867 or 1868, I am of opinion, as was the court upon the same question, in Graham v. lI:fcCormick, supra, that "whatever equities there may be between the parties to the contract of November, 1865, can be adjusted in a controversy between themselves." And as the patent of 1868 was issued to Graham alone, and as no additional assignment of any interest was thereafter made to the Werdens, and since, in view of the controversy between these parties, grave doubts may well exist as to whether the Werdens can claim any interest in the invention covered by that patent, I am of opinion that such controversy and doubt ought not, in this suit, to be resolved in favor of the Werdens; especially as the present objection comes from a third party, the present defendant, who is claimed to be an infringer of the patent. The defendant further insists that .the idea or principle involved in the patent in suit, and which is developed in a combination which enables the finger-beam of the harvester to both rise and fall at either end, and rock forward and backward, is old, and is shown in the fol-
144:
lowing letters patent, to-wit: the Dolph patent, issued in 1857; the Zug patent, issued in 1859; the Dodge patent, issued in 1865; the Bartlett & Dodge patent, issued in 1862; the De Witt patent, issued in 1862; the Ball patent, issued in 1859; the Aultman patents, issued in 1858 and 1859; the Bramer patent, issued in 1865; the Ray & Grant patent, issued in 1865 ; and the Russell patent, issued in 186l. Of these, the Dolph, the Zug, the Ball, and the Bartlett & Dodge patents were considered by Blodgett, J., in Graharn v. Gmnmon, supra, and were held by him as not embracing the Graham device or combination. The Ball and Zug machines were also severally considered by the court in the case of Graham v. M:cCormick, supra,and it was there held that there was nothing in either oUhose machines to prevent or invalidate the cOIl1bination named in the first two claims of complainant's patent. And by the conclusions thus arrived at in those cases, with reference to these several patents, I feel bound. The Aultman patents, the last of which was a reissue, do not anticipate the Graham invention, because they do not, I think, provide for any rocking motion. They only provide for a movement by which the finger-bar may be raised and lowered at either end, or foldecl over .for transportation; and I cannot, from the specifications and drawings, find that they contain the Graham swivel-joints, or the arm for rocking the finger. bar. The same must be said of the De Witt device, which is one for raising and holding a flexible cutter-bar so as to pass over an obstruction, and at the same time allow it to fall below the level of the wheels, and to render it firm, so that it cannot be depressed at any point of its elevation. The rocking feature, which is the essential element of the Graham machine, is wanting. The nature of the Dodge invention, as stated in his specifications, "consists in a novel manner of constructing the main frame of the machine, and of the arrangement of the gearing in connection therewith. It further consists in a novel arrangement of the devices for lifting the cutting apparatus, and also in a self-adjusting pair of pulleys, to be used in connection with the reel." I do not perceive that this patent can be regarded as at all anticipating or limiting the Graham claims now in suit. In the Russell machine, the finger-bar may be raised and lowerecl; but the character of the mechanism, in respect of arrangement of parts, is such, so far as I can judge,as to deprive the finger-bar of a rocking motion. I cannot discover that the drawings show either
GRAHAM
GENEVA LAKE CRA.WFORD MANUF'G CO.
145
the flwivel-joints in Graham's machine, or the arm for controlling the motions of the tinger-bar. Nor do'l think that the Graham machine is anticipated by either the Ray & Grant patent, or the Bramer patent. The remaining, and, as I consider, the most important question in this case, is, does the defendant's machine infringe complainant's patent? The Graham invention, as it is covered by the first claim, consists of a combination composed of six parts, namely, the gearing carriage, finger-bar, vibratable link, draught-rod, and swivel-joints, M and M'; and the arrangement of the combination is such as to permit the rising arid falling at either end, and the rocking forward and backward, of the finger-bar. The second claim embraces the same combination with one additional part, which is the arm or lever by which the rocking of the finger-bar is controlled. As was stated by the court in Graham v. McOormick, "the object of the invention, as set forth in these two claims, seems to be mainly to produce the rocking motion of the finger-beam, as described, and by the method described." The complainant's mechanism consists of the so-called vibratable link, which extends from the shoe to which the cutter-bar is attached backward, aad in the rear of the frame, to a bracket or short arm which is fastened to the frame of the machine, and this vibratable link is connected with the bracket by means of a swivel-joint, identified in complainant's patent as M. Then there is a draught-rod extending from the forward end of the shoe to the forward beam of the main frame, and running forward outside the wheel of the gearing carriage. It is connected with the forward end of the shoe, and with the vibratable link, by what the patentee calls a swivel-joint, M', but which appears to be rather a hook than a swivel-joint cunnection, Then there is a vertical arm extending upward from the vibratable link, which is connected by a rod extending forward, with a lever, by working which backward and fOl'ward the driver may control the tilting and rocking movement of the finger-beam, this movement being dependent upon the free play of the joints at M and M'. Now, the question is, does the defendant, in order to produce the rocking motion in its machine, employ a combination of parts which is the same as or the equivalent of complainant's? Defendant claims under a patent issued November 12, 1872, to Burdick & Le Roy. In the specifications of this patent it is stated that the "invention consists in a novel manner of constructing, attaching, and bracing the inner or main shoe j in a novel arrangev.1l,no.2-10
146
ment of devices for rolling the bar edgewise, in order to change the height of cut as may be necessary, as hereinafter more fully explained." The machine, as appears from the specifications and drawings, consists of a solid frame, the main axle on which the frame is mounted, and the wheels, "all of which parts are constructed and arranged in the ordinary manner." Then there is a. shoe which is placed forward of one of the wheels of the gearing carriage, which is sUPllorted and held at its forward end by means of what the patentee calls a transverse brace, E, and at its rear end by an arm on the side of what is described as a head-block,F; this shoe being provided with two pairs of lugs on its top, between which the arm at the rear end and the brace at the forward end are pivoted. The brace, E, extends crosswise under the frame, and has its outer end swiveled, and mounted loosely on a horizontal rod, G, which is secured lengthwise under the outer side of the frame. It is stated in the specifications that the object of swiveling the end of the brace, and mounting it on the rod, is to permit it to move forward and back when the shoe is rocked or tipped. The head.block, F, consists of a flat, upright plate, provided on its outer side with the arm to which the shoe is The headblock is held by two longitudinal bars or braces, Land K, extend. ing backward under the gearing carriage, and also by a rod, R, extending forward and connected to the tongue of the machine. The lower brace, K, has its forward end pivoted to the lower front corner of the head-block, and its rear end pivoted to a rigid depending arm, on the under side of the frame immediately below the axle. The upper brace, L, has its forward end pivoted to the top of the head.block, and its rear end passed through a slot in the rigid depending arm, and is pivoted to an upright hand.lever, the lower end of which is pivoted to the end of brace K, the latter being extended back of the arm before mentioned. As is stated in the specifications, "the two braces serve to hold the head-block securely in pDsition, so that it cannot move either forward or backward, or laterally, while at the same time they permit a free vertical move· ment, in order that the shoe may rise and fall in conformity with the surface of the ground. By moving the hand-lever, the upper brace, L, is moved lengthwise, and caused to tip the head.block backward or forward, as the case may be, so as to rock the shoe and finger-bar, and change the height of the fingers from the ground." An examination of defendant's modelltnd machine shows that by grasping the lever which extends upward from the horizontal brace.
GENEVA LAKE ORAWFORD MANUF'G 00.
147
L, the movement of the finger-beam may be" controlled, and the desired rocking motion produced; which motion is, so far as I have been able to discover, the same motion as that produced in complainant's machine; and in the defendant's machine this motion is dependent upon the free play of the rear or swivel end of brace, E, where it is connected with the main frame, and with the free movement of the connection of the shoe at its forward end with brace, E, and at its rear end with the arm on the side of the so-called headblock-the free play of these last-named connections being facilitated by the two pairs of lugs on top of the shoe. It should be stated, further, that the rod, R, extending forward from the head-block to its connection with the tongue, is connected with the head-block by means of a hook and a sort of staple or clevis, which has a loose and free connection with the head-block. The mechanism of-the two machines in various particulars is quite unlike in form, and this dissimilarity is more apparent from the fact that defendant's machine is one where the cutting apparatus is forwa.rd of the axle and wheel; but, as before stated, Graham provides in his specifications for a device as applicable to a forward cut as to a rear cut machine. Upon careful consideration of the question, I am of the opinion that the differences between defendant's and complainant's machines are differences of form and not of substance, and that defendant's machine really shows the various parts described in complainant's patent. The rod, R, in defendant's machine, connecting the tongue with the head-block, is the draught-rod in complaina.nt's machine. Its connections are by a hook, and not by a swivel-joint. But, in its attachment to the head·block and the brace, L, in connection with the arm by which the rear end of the shoe has its connection with the head-block, it performs the functions of Graham's draught-rod, and is not, so far as I can see, materially unlike the same rod as shown in Sprague's machine, which was held to be an infringement of complainant's in Graham v. Gammon,8upra. The brace, E, in defendant's machine is the vibratable link in complainant's. It is true that the connection at the rear end with the "main frame is not described in defendant's patent as a swivel-joint, but it is described as having that end swiveled and mounted loosely on a horizontal rod, the object of this swiveling and mounting being to permit it to inove forward and back when the shoe is rocked or tipped. Its connection with the bracket that is fastened to the frame is loose, and is certainly of the nature of a swivel-joint, and its" con-
148
nection with the shoe is of a similar character; and it clearly performs the furwtiolls of the vibratable link in the Graham machine. :L'he formation of the parts which connect the rear end of the shoe with the machine, in connection with which are the longitudinal braces, Land K, is such, certainly, as to permit a swivel-joint movement, although there appears to be in this respect greater complication of mechanism than there is in the Graham machine. Upon the operation of the upright lever, the movement of the cut· ter-bar in the two machines appears to be identical, and this movement is produced by substantially, if not precisely, the same co-operation of pf1rts in the two machines. On examination of the model of the Sprague machine, which it is understood was used on the hearing of GrahanJ, v.Gammon, there can be no doubt that that case was correctly decided; and if the Sprague machine, unlike the Graham machine as it is in various points of construction, is an infringment of the latter, iUs exceedingly difficult to see why the defendant's machine is not also an infringment. The various parts of defendant's machine may be said, I think, to exhibit mechanical parts equivalent to those in complainant's machine and producing the same result, aud I am of the opinion, therefore, that an infringment is established. A point was made upon the argument which has not yet been noticed, namely, that the proofs disclose an agreement of some nature between Alvaro B. Graham, the patentee, and complainant, by which the former may be interested in the result of this suit. The patentee has testified that he has the general management of the patent and of litigation connected with it, and that he has an arrangement by which he is to share in a certain percentage of any amounts recovered; and it was insisted, therefore, that this suit could not further proceed unless A. B. Graham was made a party complainant. But A. B. Graham has since filed in the cause, as I think he may be permitted to do, a waiver or disclaimer of all interest in any decree which may be here rendered, and in any sum or sums of money which may be paid by defendant, pursuant to such decree, for the past or future use of the invention in question; and I think he is now, if he was not before, estopped from making any claim against the defendant under the patent in suit, and hence that it is not necessary that he should be made a party complainant. The case will be sent to a master to assess complainant's damages, and an injunction will issue, according to the usual practice, to re"train further infringement.
COMBINED PATEN'J:S OAN CO. V. LLOYD.
149
COMBINED PATENTS CAN CO.
LLOYD.
(Circuit Court, E. D. Pennsylvania. January 30,1882.) 1. PATENTS-REISSUE-AuTHORITY OF CoMMISSIONER,
The statute of 1870, conferring jurisdiction on the commissioner to reissue any patent invalid by reason of a defective or insufficient specification arising from inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, authorizes the insertion of new claims founded on the original invention, as exhibited by the specifications or drawings, where the claimant uses due diligence in applying for the correction. 2. SUIE- LACHES-EsTOPPEL.
Where the omission in a patent on account of which a reissue was obtained was apparent on the face of the patent, and must have been immediately discoverable, a delay of nearly 13 years in making the applica.tion for the reissue will estop the patentee from claiming thereunder. 3. SAME-METAL MOULDINGS,
The above principle applied to a claim under a reissue of a patent for a new and useful improvement in the manufacture of metal mouldings.
Hearing on Pleadings and Proofs. Bill in equity for injunction against infringement of a. patent. The facts are fully stated in the opinion. Dickerson tX Dickerson, for complainant. Henry Baldwin, Jr., for respondent. BUTLER, D. J. On the thirtieth day of August, 1864, a patent (No. 43, fl79) issued to August Destuoy for a "new and useful improvement in the manufacture of metal mouldings," in which the claims, (two in nnmber), read as follows: "(1) The T-shaped metal moulding, made substantially as and for the pur· pose specified." "(2) The jaws, B, and D, D, either straight or curved, and tool C, constrncted and operating substantially as herein set forth, for the purpose of imparting to the mOUldings the final tonch before they are applied to the article to be ornamented."
On the seventeenth day of April, 1877, the patent was surrendered, and a reissue, (No. 7,609), granted to Herman Miller, with the claims enlarged, and multiplied to four in number,-the third and fourth, (whh:h were new,) reading as follows: "(3) The combination, with a table having a stationary jaw or angle, of movable jaws operating as shown and described, to compress the bent metal against said stationary jaw." ., (4) The combination, with a table having a stationary jaw or angle, and movable jaws as described, of treadles connected with said movable jaws by levers, substantially as and for the purposes here
set forth." by Frank P. Prichard, Esq., of the Philadelphia bar.
150
The complainant, charging infringement, prays for an injunction and account. The respondent denies the validity of the reissued patent, and the charge of infringement. As the infringement alleged respects the third claim alone, our attention will be confined to it. This claim, as we have seen, was not embraced in the original patent. That the matter hereIn described was a part of the invention, as shown by the specifications and drawings, the plaintiff's expert testifies, and the defendant's seems to admit. That additional and enlarged claims may thus be inserted in reissues of patents, under proper circumstances, is too well settled by the decisions to admit of question. The statute of 1870 (which did not materially change the law as previously understood and administered) provides that "whenever any patent is inoperative or invalid, by reason of a defective or insufficient specification, ' ' ' if the error has arisen from inadvertence, accident or mistake, and without any fraudulent or deceptive intention, the commissioner shall, on the surrender of such patent and payment of the duty required by law, cause a new patent for the same invention, ' · '* to be issued to the patentee, in accordance with the patentee's corrected description and specification." That this statute authorizes the insertion of new claims, founded on the original invention as exhibited by the specifications or drawings, in reissues, where the omission results from "inadvertence, accident or mistake," and where the claimant has not, by some act or omission, estopped himself from exercising the right to amend, has been uniformly held, not only by the several circuit courts, but by the supreme court also. In Seymour v. Osborne, 11 Wall. 516, the latter court said:
,e Power is unquestionably conferred upon the commissioner to allow the specifications to be amended if the patent is inoperative or invalid; and, in that event, to issue the patent in proper form, and he may under that authority allow the patentee to redescribe his invention, and to include in the description and claims of the patent not only what was well describf'd before, but whatever else was suggested or substantially indicated in the specifications or drawings, which properly belonged to the invention as actually made and perfected." The reissue there involved, it is true, antedated the statute now in force, but, as respects the question here involved, this is unimpOl·tant, as before indicated. In the last cases in which this subject is discussed, (iHiller v. Brass Co., and James v. Campbell, very
COMBINED PATENTS OAN CO. V. LLOYD.
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tecently decided, and not yet reported,) the right to insert new and enlarged claims is clearly stated. In the first of these cases the court says: ,. If a patentee, who has no corrections to suggest in his specifications, except to make his claims broader and more comprehensive, uses due diligence in returning to the patent-otfice. and says, 'I omitted this,' or ·My solicitor omitted that,' his application may be entertained, and, on proper showing, eorrection may be made," .
4.ndagain: .. Whilst as before stated, we do not deny that 3 claim may be enlarged in a. reissued patent, we are of opinion that this can only be done where an actual mist,aka,has occurred. lie lie lie a real bonafide mistake, inadvertently committed, such as a court of chancery, in cases within its ordinary jurisdiction, would correct. Reissues for the enlargement of claims should be the l'xception,"
In the last of these cases it is said: "Of course, if by actual inadvertence, accident or mistake, innocently committed, the claim does not fully assert or define the patentee's right in the invention, specified in the patent, a speedy application for its correction, before adverse rights have accrued, may be granted, as we have explained in the recent case of Miller v. Brass Co."
The question whether a patent is "inoperativ.e or invalid, by reason of defective or insufficient description or specification," and whether such defect has arisen by "inadvertence, accident, or mistake and without any fraudulent or deceptive intention," appears from the decisions of the court to be submitted finally to the judgment of the commissioner, wherever the circumstances bring it within the jurisdiction conferred upon him by the statute. It is so stated by Mr. Curtis, (Curtis Law of Patents, 282, 282a, 282b,) who cites Stimson v. Railroad Go. 4 How. 380; Woodworth v. Stone, 3 Story, 749, 753; Allen v. Blunt, 3 Story, 742; Jordan v. Dobson, 2 Abb. (U. S.) 308; Rubber Go. v. Goodyear, 7 Wall. 788, and other cases, in support of the proposition; and it has been so understood by the circuit courts, in which it has been repeatedly announced and followed. While the language of the supreme court has on several occasions, exhibited a feeling of restiveness, in view of the abuses which have grown out of the exercise of the extensive powers accorded to the commissioner, no decision, we believe, has y-et been annonncecl inconsistent with the understanding 'and practice just stated. Where the additional matter claimed, however, does not appear by reference to the patent or contemporary records, to be embraced in the invention, or where it plainly appears by such
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ence that the alleged. omission "could not have occurrell through inadvertence or mistake," as said by the court in James v. Campbell, the case is not within the jurisdiction of the commissioner, and a. reissue for additional claims may be declared void. Such, however, is not the case before us. We are thus brought to the inquiry previously suggested, was the patentee estopped by delay and acquiescence from claiming correction of his patent, by means of the reissue obtained? Nearly 13 years elapsed before his application was made. If the matters described in the additional claims were a part of the original invention, (as has been conceded,) and were omitted through "inadvertence, accident or mistake," it is impossible to believe that he did not discover the omission much earlier. In the language of the court in Miller v. Brass Co., it plainly appeared on the face of his patent, and must have been seen on opening th,e paper. The patentee knew what he had invented; must necessarily have understood its scope and extent. He may not have comprehended all the uses to which it might eventually be applied. But to secure a different use simply does not require a different or additional claim. What he did not claim, he must be regarded, in view of his subsequent cond'uct, as intending to dedicate to the public. He cannot, therefore, after others have acted upon what he thus did, be allowed to change position, and thereby suppress their enterprises and destroy their business. This application of the equitable doctrine of estoppel has more than once been suggested by the supreme court, and is announced and applied in Miller v. Brass Co., above cited. Every word there uttered relating to this question is as applicable here as it was there. The court says: "The only mistake suggested is that the claim was not as lJroad as it might have been. 'rbis, if it was a mistake, * * * and if any correction was desired, should have been applied for without delay. 'rhe pretence that it was inadvertence or oversight, which had escaped the patentee's notice for 15 years, is too bald for human credence. * * * It must be remembered that the claim of a specific device or combination, and an omission to claim other devices or combinations, apparent on the face of the patent, are in law a dedication to the public of that which is not claimed. It is a declaration that that which is not claimed is either not the patentee's invention, or, if his, he dedicates it to the public. This legal effect of the patent cannot be revoked., unless the patentee surrenders it, and proves that the specification was framed in inadvertence, accident or mistake, without any fraudulent or deceptive intention on his part; and this should be done with all due diligence and speed. Any unnecessary laches or delay in a matter thus apparent on the record affects the right to alter or reissue the patent for such cause. If two
V.
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years' public enjoyment of an invention, with the consent and allowance of the inventor, is evictence of abandonment, and a bar to an application for a patent. a public disclaimer in the patent itself, should be construed equally favorable to the pnb1ic. Xothing but a clear mistake or inadvertence, and a speedy application for its correction, is admissible when it is sought to enlarge the claim."
The bill must, for the foregoing reasons, be dismissed, with costs, and a decree may be prepared accordingly. McKENNAN, C. J., concurred.
COMBINED PATENTS CAN Co.
LLOYD.-
(Circuit Court, E. D. Pennsylvania. :B'ebruary 4, 1882.) PATENT-DrpuCATION OF CLAIMS-AGGREGATION OF WELL-KNoWN ELEMENTS.
A p:\l.ent contained two claims-the first for a can made of sheet metal, in which the top or bottom is joined to the sides by a dOUble-recessed clamping lap-,j{;int, suhstantially as described; the second for a similar can with the joint capable of being soldered by dipping. Held, that as it appeared from the spetifications that the joint in the can described in the first claim was capable of heing soldered by dipping, the second claim was included in the first, and therefore void. Held, further, that the first claim, interpreted with reference to the specifications, was for a mere aggregation of old and well-known elements, and was also void.
Hearing on Pleadings and Proofs. Bill in equity to restrain infringement of reissued patent No. 7,682, for an improvement in sheet-metal cans. 'fhe answer denied infringement and alleged want of novelty. The facts are sufficiently stated in the opinion. Dickerson « Dickerson, for complainant. Henry Baldwin, Jr., for respondent. McKENNAN, C. J. This suit is founded on reissued letters patent No. 7,fiS2, dated May 15, 1877, to Herman Miller, assignor of the complainant, for an improvement in sheet-metal cans. The original patent was dated June :33, 1R63, and that is the earliest date to which the invention claimed is assigned. The patent contains two claims, viz.: II (1) A can or other vessel made of sheet metal, in which the top or bottom is joined to the sides by a double-recessed clamping lap-joint, substantially as described. (2) A can or other vessel made of sheet metal, in which the top or bottom is joined to the sides by a clamping lap-joint, which is capable of being soldered by dipping, substantially as described."
*Reported by l<'rank P. Prichard, Esq., ofthe Philadelphia bar.