·D1JNBAB V.WHITE'.
15 How. 62. But a patent for a pi-6cess or a product is a different thing from a patent for a principle, as ex:plainedby 'Mr. Justice BRAn:. LEY in Tilghman v. Proctor, ubi supra, in commenting 011 0' Reilly 1'.{orse. A manufacture or product, if-new, may be claimed irrespect. ive of the mode of making it. In Oohn v. U. S. Corset Co. 93 U. S. 366, a patent for a corset having certain features, and which did not describe any process of making it, was defeated by a prior description of the corset. In the present case the patent describes the product, and the mode ofmaking it, and claims it. The tex.t of the specification' sets forth as one of the inventions deposits of nickel having certain characteristics, which are defined, and it states that they were never produced before. There mnst be a decree for the plaintiff as to claims 1 and 4, for prayed in the bill, with costs. an account and an injunction,
as
DUNBAR
and others
'lJ. WHI'1'2
and others.-
(Ow-cuit Oourt, B. D. Louisiana. March, 1882.) L PATENT LAW-REISSUED PATENTS.
A reissued patent which enlarges 4n original patent,l. e., which mAkeR the Invention patented other and more inclusive than the original patent, is void as against intervening rights and the public as well. -
SAME.
The object of the law on the subject of patentsls to advance the interests of the public by securing certain exclusive rights to pil.tentees, and among these rights is that of changing, by a surrender and reissue, the language, where the idea remains the same. .
Albert H. Leonard and J. W. Gurley, for complainants. Joseph P. Hornor and Francis W. Baker. for defendants. BILLINGS, J. The case has been heard, and is submitted for Ii. final decree upon bill, answer, ex.hibits, and depositions. The bill is to protect the rights of a patentee, and is for an injunction and account. Upon the hearing for a preliminary injunction, I directed that deshould be required to keep an account of .0.11' their transactions which should be had, which could be included within the righte granted to complainants. This decree in effect maintained the valid. ity of the complainants' claim. · Reversed. See 7 Sup. Ct. Rep. 72. . Reported by Joseph P. Hornor, Esq., of the New Orleans
bar.
748
REPORTER.
The sole question in the case is this: In a case where the plaintiff's right to recover against the defendant would have been perfect under an original patent, can a surrender and a reissue invalidate that right? Complainants' original patent was granted June 20, 1876. Defendants' patent was issued April 6, 1880. Complainants' reissued patent bears date December 6, 1881. The legal propositions which affect this case were, as it seemed to me at the prior hearing, and as it seems to me after the present hearing, the following: 1. A reissued patent which enlarges an original patent, i. e., which makes the invention patented other and more inc.Iusive than the letters patent, is void as against intervening rights and the public as well. . ,2. Where a patentee in his original claim and specifications describes,his invention in part by specifying amatorial to ,be used, ulJ,t declares that the sole utility or availability of that material in connection with his device is that it has two propertieE\; and in his reissued patent, in his claim and specifications, in the description of his invention, substitutes for his former specification of a material to be used as a part of his device, a description of materials which may be used by specifying only those which have the two properties in which he had formerly declared the utility or availability of the which he then named consisted, there is no enlargement of the tpingpatented, and the reissued patent is, therefore, valid. 3. Where, as in this case, the original claim and specifications were for a textile fabric as an envelope for the shrimp, in connection withcither things, and it was declared that the sole object of its use was to prevent contact (that is, to secure separation) without discoloration; and in the reissued patent, in the claim and specifications, it is declared that any enveloping material may be used which will separate and not discolor,-the change is only that of substituting the description of a thing by naming it, with the addition of its essential, q,uality,-the description of the thing by naining its qualities. 4. The object of the law on the subject of patents is tO'advance the of the publio by securing certain exclusive rights to and among these rights is tha.t of by a surrende.r 'and ;'eissue, the language where the idea remainsthe same. . 5., Let fhere be an account the of the sales or d9fendants' in violation of complainants' patent, and a report thereon, and let the injunction be made perpetbalduring the c61'i.tin. n:1l1C8 of complainants' patent.
BEA.Y V. RA.U.
749
REA.Y, Ex'r, etc., v. BA.u. (Circuit (Jourt, S. D. New York. March 14, 1883.) PATENTS FOR INVENTIONs-INFRINGEMENT-EvIDENCE OF.
Where defendant was called by plaintifi in rebuttal of his own testimony, and it was insisted that defendant, by one answer in regard to a date, established an infringement which had not been the subject of previous testimony, and that this answer was to overthrow his uniform denial of the infringement, and of the infringing device having been made during the life of the patent, with\lut the knowledge and permission of the patentee, held, that such testimony is not sufficient to make out a case of infriqgement.
Arthur v. Briesen, for plaintiff. Edward Fitch, for SHIPMAN, J. This is a bill in equity praying for an injunction and an account, and is founded upon the alleged infringement by the defendant of reissued letters patent No. 2,529, dated March 26, 1867, and of original letters patent No. 41,395, dated January 26, 1864 of said patents being for improvements in envelope machines, and each having been issued to George H. Beay, the plaintiff's tes· tatar, as inventor The original of the reissued letters patent was issued August 25,1868. The bill was filed October iI, 1880, afterthe expiration of No., 2,529, and shortly prior to the expiration of No. 41,395. The bill does hot allege that the defendant has for sale, or was using or was intending to use or to sell, any infringing machines which were madedurillg the term of the patent No. 2,529,in infringement of it. If such an allegation had been made, it would have untrue. When the bill was filed, the defendant, who is a manufa-p. turer 6fthis class of iron work, had no patented machines hand. When the patent expired he had one machine in stock, whIch he had made in accordance with the understanding, and the usual coul-seof business between the patentee and himself, that he should keep ma.chines in stock, so that orders might be promptly filled. " The facts of this case do not it withIn the decision of Judge WHEELER in Diamond Rock Boring Co. v. Sheldon, 1 'FED. REP. 870, but are within his decision in Diamond Rock Boring Co.v;'Rutiand Marble Co. 2 FED. REP. 355. Thet·e-a.re in this branch of the casie' no allegations upon base avrayer for' the defendant's use or sale of machines.' There is, t'herefore, no occasiont.o inquire whether theflrst-named decision 'is sequent opinion of the stipreme court in Root v. 'i65 '0. S. 189.
on