30 F. 625 -

DOBSON V. LEES.

625

OF

PHILADELPHIA. l

WORSWICK

MANUF'G Co.

and another

11. CITY

(DiBfJrict Oourt, E. D. Pennsylvania. March 22,1887.)
PATENTS FOR INVENTIONS-RES ADJUDICATA-FEDERAL CmCUlT COURTS.

The decision of a United States· circuit court, where the subject-matter, pleadings, and the evidence are alike, will be followed by other circuit courts, especially when the validity of a patent is involved.

.

In Equity. Bill for injunction and an account. M. .D. & L. L. Legate, for complainant. McMichael & Warwick, for respondents.

By THE COURT. It is conceded that in the case of Worswick Man1J!g Co. v. f!ity of Buffalo, in the circuit court of the United States for the Northern district of New York, in the Second circuit, (20 Fed. Rep. 126,) the court, upon the same pleadings and evidence as we have in this case, decided that the third claim of the patent here involved is valid, and the defendants were guilty of infringement, and a decree was entered for the plaintiff accordingly· Upon examination of the pleadings and evidence before llS, this concession of the defendant appears to. be well founded. While the decision in that case is not absolutely binding upon this a proper regard for certainty and uniformity in the law requires that C(}urts of one circuit shall follow the decision of another, covering the same question, and especially the same letters patent. A decree will therefore be entered for· the plaintiff granting an injunction and ali account.

DOBSON 11. LEES. l

(Circuit Oourt, E. D. Pennsyl'Dania. April 25,1887.)
PATENTS FOR INVENTIONS-REISSUE-VALIDITY.

Reissued letters patent, containinlt a claim not mentioned in or covered by the original letters patent, are invalid, particularly where the reissued claim was refused upon the original application for the patent.

In Equity. George E. Buckley and Jiranci8 T. (fhamber8, for complainant. Hector T. Fenton, for respondent.
PER CURIAM.

is necessary to consider is that which involves the validity of the reissue
upon which the suit is founded. The reissue is assailed on two grounds: (1) That it is an expansion of the original patent, the sole claim in it
1

In the view we take of this case, the only question it

Reported by C. Berkeley Taylor, Esq.· of the Philadelphia bar.

V.30F.no.8-40

62.6

FEDERAL REPORTER.

not being covered by the original; and (2) tl).at it was not competent for the oommissioner of patents to grant a reissue with this effect, and for this purpose. We find the first ground of objection to be fully sustained by a comparison of the original and reissued patents. The only claim in the reissue is fora combination not claimed in or covered by the original patent, and hence is not· for the same invention described in the latter. Can this defect be corrected by a reissue? The claim in the reissue was before the commissioner, and its allowance urged by the patentee through his solicitor, but was not allowed, being omitted at his instance, and it was thereupon stricken out by the The patent was issued without this claim. and was ,accepted in this form; but a week or two after its issue was sun:endered by the patentee, and a reissue asked for, which wasultimatf'lly granted in its present Under these circtimstances,we regard this case as following clearly within the case of Leggettv. Avery, 101 U. S. 256.. Mr. Justioe BRADLEY.there says:
"It is obvious, on. inspection, that these claims are for SUbstantially the same inventions which were disclaimed before the extension,and are for different inventions from that which was included in and secUJ;ed by the letters patent as ex;tended. The court .b.elow deemed this, among other things, a fatal objection to thevltlidity of. the reissued letters patent.. 'Ye agree with the circuit court.· We think it was a manifest error of the commissioner, in the reissue, to allow to the patentee claim for an invelltiondifferent from that which was described in the surrendered letters, and' which be had thus expressly disclaimed. The pretenSe that an 'error had arisen by.inadvertence, accident,or mistake, I within the meanil,lK of the patent law,. :was too bald for consideration··. The very question 0(. the validity of these lilatlDs had just been considered and decided, with the acquiescence and the express disclaimer of the patentee. If, in any case, where an applicant for letters patent, in order to obtain the issue thereof, disclaims a particular in ventioll or acquiesces in the rejection of a claim thereto, a reissue containing such claim is valid, (Which we greatly doubt,) it certainly cannot be sustained in this case. The allowance of claims once formally abandoned by the applicant, in order to get his letters patent through. is· the occasion of immense frauds against the pUblic. It not unfrequently happens that, after an application has been carefully examined arid compared with previous inventions, and after the claims which such an examination renders admIssible have been settled with the acqUiescence of the applicant, he, or his assignee, when theinyestigationis forg'otten, and perhaps new officers appointed,comesbackto the patent office, and, under the pretense of inadvertence and mistake in the first specification, gets inserted into reIssued letters all that had been previously rejected. In this manner, without an appeal, he gets the first decision of the office reversed, steals a march on the public, and on those who before opposed his pretensions, (if, indeed, the. latter have not been silenced by purchase,) and procures a valuable monopoly to which he has not the slightest title. We have more than once expressed our disapprobation of this practice. As before remarked, we consider it extremely doubtful ",hether reissued letters clln be sustained 'in any case where they contain ·claifus that have once been formally dis,claimed by the patentee; or rejected 'with his and he has consented to Buck'rejection inordt'r tG obtain his letters patent. Under such circumstances, the rejection of the claim can. in no just sense, be regarded as a matter of inadvertence or mistake. Even though it was such, the applicant should seem to be estopped from setting it up on an application for a reissue. "

a

HIGGINS V.

KEUF],'EL.

627

. This Ulse has been followed repeatedly See Shepardv. Carrigan, 116 U. S. 593, 6 Sup. Ct. Rep. 493; .Cartridge Co. v. Cartridge Co., 112 U. S. 624,5 Sup. Ct. Rep. 475; Atwater Co.v. Beecher Co., 8 Fed. Rep. 608; Putna.m v. Hutchinson, 12 Fed. Rep. 127; Edgarton v. Manufacturing Co., 9 Fed. Rep. 450; Streit v. Lauter, 11 Fed. Rep. 309. We caunot distinguish the patentee and his counsel, as to what occurred during the pendency of the application for the patent, and the acceptance of it by the latter, as was earnestly urged in the argument. We must regard the patentee as bound by the acts of his counsel, and give effect to them accordingly. The bill is therefore dismissed, at the costs of the complainant.

HIGGINS

and others

11. KEUFFEL

and others.

(Oirc'Uit Court, 8. D. NffID York.

April 19, 1887.)

Col'YRIGII'l'-REGISTERING LABEL.IN PATENT-OFFICE-NoTICE-NA.:r.rE-DA.TJll.

1. registered a label in the patent-office by the title of "Waterproof Drawing Ink, of these words in one line, in an oblong formed. of double lines, .no notlCe of c0p,yright or name of the owner being printed thereon, except by the words: · Registered, 3,693, 1883." Held that, under tbe act of congress of 1874, the label should at least have contained the word "copyright," with the year in which, and the person by whom, the copyright was taken out, instead of the statement of an entry in the office of the librarian. of congress, as required by Rev. St. U. S. 4962, in order to maintain a suit for infringement, and that a publication such a defective notice Was an abandonment of the copyright.,
   

In. Equity.. Suit for infriIigementof copyright. EdwardW. Cady, for orators. Louis a. Raegener, for defendants. WHEELER,.J. This bill is brought upon a copyright of a labelregistered in the patent-office by the orator Higgins, October 27, 1883, numbered 3,693. Act of June 18, 1874, (Sup. Rev. St. 40; 18 St. 78.) The title by which the label is registered is "Waterproof Drawing Ink." The label itself consists of the same words, in one line, in an oblong formedofdQuble lines. The alleged infringement consists of the words, "Waterproof Black Drawing Ink," in three lines, in a similar oblong, with a medallion, at each end of the lines of words, within the oblong. No notice of a copyright by inscription on the labels is given otherwise than by the word and figures" Registered, 3,693, 1883," printed on their face. The effect of this act of congress is understood to be to require the registration of labels in the patent-office, in place of their deposit in the office of the librarian of congress, to copyright them. Marsh v. Warren, 14 Blatchf. 263. No remedy for infringement is given by that act; but the form of the notice, without which no action could be maintained, is so varied that it ma>, be by the word "Copyright,"