DUNHAM'". DENNISONMANUF'a CO.
667
on the 3d day of February, 1881, for the term of one year, and that a subsequent grant was made extending the term of the lastmentioned patent ,for a new term of one year, which expired on the 3d day of February, 1883; that this extended Austro-Hungarian patent was existinK and unexpired when the patent in suit was granted, and that,the term thereof expired on the 3d day of February, 1883, and before the commencement of this suit,and thereby the said Austro-patent then expired, within the meaning of section 4887 of the Revised Statutes; and that, by reason of the premises, the patent sued on had expired by operation of law prior to the bringing of this suit;. and that this court has no jurisdiction, and ought not to entertain jurisdiction, of this suit, the plaintiff having a complete and adequate remedy at law. This is the substance of the plea, and it has been set.dpwn for argument by the plaintiff. The bill alleges that the AustroHungarian patent has not expired; that it was granted for the term of 15 years from its date, and is now in full force and effect. The quespresented covers the proper meaning and construction of section4887 of the Revised Statutes, and has recently been decided by the supremecourt of the United States in the case of Refrigeratilng Co. v. Ham'mOnd, 129 U. S. 151,9 Sup. Ct. Rep. 225, :where the court held that "under section 4887, although, in the case provided for by it, the United States patent may on its face run for seventeen years from its date, it is to be so Ihl1ited by the courts, as a matter to be adjudicated on evidence in pais, as.to expire at the same time with the foreign patent, not funning in any case more than the seventeen years; but, subject to the latter limitation, it is t9 be in force as long as the foreign patent is in force." This is decisive against the sufficiency of the defendants' plea in this C4lse. Hence it must be ordered that the defendants' plea stand as an answer, or part of an answer, to the plaintiff's bill.
DUNHAM
v.
DENNISON MANUF'a
Co.
(Circuit Cowrt, B. D. New York. December 2O,1889.) L PATENTS POB INVENTIONS-REISSUE 0'8 LETTERS-EXPANSION OF CLAIMS.
Inletters patent No. 277,245, granted May 8,1888, to Joseph T. Dunham. the first olaim is for" a combinedtag and envelope,made substantially as herein shown and described, and consisting of an envelope having at one end a flap of sufficient size to cover one side of the envelope;" in such patent, as reissued, No. 10,488, June 10, 1884, the first and second claims are respectively for "a combined tag and envelope, * * * wherein the flap which closes the mouth of the envelope iB fastened, "etc., and for" a combined tag and envelope, * * * the fiaphaving an eyelet hole, which, when the flap is folded down on the envelopebcoincides with an eyelet hole in the envelope, " etc. Held that, the latter claims, so expanded as to be no longer limited to a flap of suftlcient size to cover the envel0l'e, as was the case in the original patent, are invalid, as including structures and improvements neither described nor claimed ,in the original.
I,IlJ.l,JE..,-EXTENT OF CLAIM-PRIOR STATE OF THE .ART.
, . In .letters patent No. S:h,1l8, granted 24,1885, to Joseph T. Dunham, the first'and second claims are, respectively, for "an envelope having a fiap pro-
668
FEDERAL REPORTER,
vol. 40.
·
Tided with a reinforced hole,and having a similar hole in the front plY' pf ita body, the said holes constructed to register and coincide when the flap is folded down. Whereby the end of the back ply of the envelope body; which extends entirely across the latter, is clamped and removably secured;" and Ior"a mailing tag and envelope having a flap folded over on and secured to the inner face of the front ply of the. body, the said flap being also construoted to take over the free end of the back ply of. the body, as shown, whereby the mouth of the covered the said flap is secured against acoidental opening." Held, that in View of the pnor state of the art as shown by patent No. 81,926, September 8, 1868, to Sigmund Ullman, and other prior stMlctures, the olaims must be restricted to the form of envelope described in the patent, which is so oonstMlcted that the flap oan be opened and the contents inspected without tearing the envelope or breaking the fastening..
In Equity.
Bill forinfringement of patent. Walter S. Poor, for complainant. W. W. Swan, for defelldant.
described. and consisting of an envelope having at one end a flap of sufficient size to cover one side of the envelope, as set forth. (2) In:: combined tag and envelope, the combination, with an envelope, A. having a flap, B, at one end; of the eyelet, D. in the free end of the flap, and the eyelet. C,in that end of
COXE:, J. This is an' equity action founded upon two letters patent granted to the complainant. The first, a reissued patent, No. 10,488, dated June 10, 1884, is for a; combined tag and envelope, and the second, No. 331,1l8,dated November 24, 1885, is for an improvement in envelopes. The reissued patent will be first considered. The defenses are lack of novelty and invention, non-infringement, and that the reissue void because of an unwarrantable expansion of its claims. The original patent, No. 277,245, was dated May 8, 1883. The application for the reissue was filed March 18, 1884,-10 months and 10 days thereafter. The invention of th6 original was limited, as clearly as the drawings and the language of the description and claims could limit it, to an envelope having at one end a flap of sufficient size to cover one side of the envelope. The inventor says: "The object of theinvelltion is tt:} form an envelope with an end flap covering its side, as scribed. . * * * An envelope, A, preferably made of strong proof paper, is provided with an end flap, B, of sufficient size to cover the entire envelope. An eyelet, C, is secured in that end of the envelope opposite to the one to '\V hich the flap, B, is attached, and the flap. B, is provided on its free end with an eyelet, D, which, when the flap, B, is folded over the envelope, rests upon the eyelet, C." He then dename of the consignee is concealed by scribes the manner. writing it on the inside of the flap, so that dealers, engaged in the same business, cannot ascertain the names of their rivals',customers. The name of the consignor is printed on the outer surface of the flap, where also appears the name of the city or town to which the goods are destined, and a notice to carriers that the full name of the consignee may be found on the inner surface. It is evident that the patentee considered this peculiar form of flap the main feature of his invention. It is also clear that an envelope ·which does not include 8 flap large enough to cover its side does not infringe the claims, which are as follows: "(1) A combined tag and envelope made substantially as herein shown and
DUNHAM tl. DENNISON :YANUF'G CO.
669
the envelope opposite the one to which the flap is attached, substantially as herein shown and described, and for the purpose set forth... The specification is perfectly plain. There is no ambiguity about the description, and the claims. in language equally clear, cover what is said" to be the invention, and the whole thereof. Soon after the patent was granted, the defendant, in the summer of 1883, commenced manufacturing tag envelopes which the complainant insists are infringements of the reissue, but frankly admits that they do oat infringe the original patent, for the reason that they do not have the flap, B. The reason for the reissue is thus stated in the complainant's brief: "Soon after putting the patented article on the market, complainant was informed that defendant, a corporation that had for some time manufactnred, in Bost<ln, and made extensive sales throughout the country of a shipping tag, was manufacturing and selling a tag envelope similar to complainant's. Complainant immediately applied to counsel for the purpose of commencing suit against defendant, and was adyised by such counsel, after an examination of his letters patent, and a statement of his invention and application, that his patent was defective, indefinite. and ambiguous in its claiins. so as torendel' it practically inoperative, and that he had better apply t"or a reissue." The patentee himself states that the alleged infringing envelope of the defendant was one of the forms "invented by him but not shown in his patent," and he, therefore, sought a reissue which would cover it. Turning now to the reissue, it is manifest that the effort was to discard the flap, B, as an element of the invention and expand the claims sufficiently to cover an envelope, no matter what the size or shape of its flap. The invention no longer consists in "an envelope with an end flap covering its side," as in the original, but "in a tag provided with means for attaching it to the merchandise and with an envelope or pocket to receive a bill or invoice of the merchandise." The drawings are referred to 8S showing the invention "in its preferred form." The end flap is no longer "of sufficient size to cover the entire envelope," but it must cover it "substantially." The claims of the reissue are as follows: "(1) A combined tag and envelope, substantially as described, wherein the flap which closes the mouth of the envelope is fastened down by the cord or other device which secures the tag to the merchandise. as set forth. (2) A combined tag and envelope. substantially as described, the flap having an eyelet hole which, when the flap is folded down on the envelope. coincides with an eyelet hole in the envelope. whereby the cord or hook for attaching the tag may be passed through both holes, SUbstantially as set forth. (3) In a combined tag 'and envelope, the combination, with an envelope, A, having a flap, B. at one end, of the eyelet, D. in the free end of the flap, and the eyelet, C, in that end of the envelopfl opposite the one to which the flap is attached, substantially as herein shown and described, and for the purpose set forth." The third claim of the reissue is the same as the second of the original, but it is not contended that this claim is infringed. Claims 1 and 2 of the reissue are unquestionably broadened. They are no longer limited toa flap of sufficient size to cover the entire envelope. Should the court hold they are so limited itis admitted that they are not It is thought that expanded claims cannot escape the force of the
670 repeated,. decisions of the supreme court· relating. to reissued patents. The patentee made nO 'inove until the defendant had produced its envelope" which 'could be sold. without infringing the original patent. If he .had been the. first inventor of this new and improved form he might have described and claimed it in the original patent. He did neither. He nowseeks>by the reissue to include structures and improvements which were neither described nor claimed in the original. This he cannot do. The defendant has acquired valuable rights which cannot be trampled upon in this manner. The law upon the subject is too well settled to requirel.lo. citation of authorities, but the case of Ooonv·. Wilson, 113 U. S. 268, 5 Sup. Ct. Rep. 537, seems peculiarly applicable and controlling. Substitute the nomenclature pertaining to envelopes for that relating to collars and the opinion in Coon v. Wilson is as applicable to this controversy as if written for the purposes of this action only: ..Although this reissue .was applied for a little Qver ten months after the original patent was graated, the case is one where it is sOllght merely to enJ.arg<, the claim of the original patpnt, by repeating that claim and adding others j 'where no mistake or inadvertence is shown, so far as the extended flap i, concerned; where the patentee waited until the defendant produced its shortflapped envelope, and then applied for such enlarged claims as toembl'ace the defendant's envelope, which was not covered the claim of the original patent; and w.here it is apparent, from a comparison of the two patents, that the reissue was .made to enlarge the scope of the original·. As the rule is expressed in the recent case of Hahn v. Harwood. 112 U. S. 354, 5 Sup. Ct. Rep. 174, a patent ·cannot be lawfully reissued for the mere purpose of enlarging the claim, unless there has been a clear mistake, inadvertently committed in the wording of the claim, and the application for a reissue is made within a reasonably short period aner the original patent was granted.' But a cleat' mistake, inadvertently comlllitted in the wording of the claim. is necessary, without reference to the length of time. In the present. case, there was no mistake in the wording of tbe claim of the original patent. The description warranted no other claim. It did not warrant any claim co\'ering an ell1Jelope not pruvided with the flap, B." . The second patent in controversy, No. 331,118, dated November 24, 1885, is for an improvement in envelopes intended for mailing samples, and similar matter, and for use tags for marking goods to be shipped. The defenses. are abandonment, lack of novelty and invention and noninfringement. The principal object of the invention, as stated in the specification, was to obviate the which existed in prior devices which ware so constructed, that, in order to get at the contents ofthe envelope, it was necessary to untie the string or remove the fastening which secured the flap. The envelope of the patent is so constructed that the flap can be opened when desired and the contents inspected without tearing the envelope, or removing, or breaking the fastenings. The claims are as follows: "(1) An envelope baving a flap, C, provided with a reinforced hole, 0', and baving a similar hole, c, in the front ply of its body, and the said holes constructe(l to register or coincide when the flap, C, is folded down, whereby the end of the back ply, b, of the envelope body, which extends entirely across the latter, is clamped and removably secured, substantially as sbown and de8cribed.(2),A mailing and tag envelope having a flap, C. folded over on
DUNgAM". DENNJIlONMANUF'a
671
and secured down to the inner face of the front ply of the bOdy, the saId flap being also constructed to take over the free end of the back ply of the body as shown, whereby the mouth of the en velope covered by the said flap, C. is secured agaiilst accidental opening, substantially as and for the purposes set forth." In viilw of what was known when the patent was applied for a broad construction of these claims is out of the question. A construction which would include the defendant's envelope would render the claims void for lack of novelty, for the general features of the patented envelope are shown in the patent, No. 81,962, September 8, 1868, to Sigmund Ullman, in other prior structureS. If the claims are limited to the peculiar construction shown in the specification and drawings the defendant does not infringe. In the defendant's· envelope'one eyelet is used, which aids the gum in fastening the flap down permanently upon the back ply. of the envelope. A large number of exhibits have been inttO;; duced showing the defendant's envelope. These have been changed and mutilated by the witnesses. in illustrating oppo::,ing theories. But both sides j aI?parently, agree that the envelopes made by the defendan't since the<date of this patent are constructed with the eyeletted flap securely fastened. The complainant's brief contains this statement: " After defendant put its tag en velope on the market it changed the construction several times, until it finally adopted the form· introduced in evidence as the infringing specimen. . See complainant's Exhibit ·Taylor and Mayo,' which was received in 1883, and also has the eyelet holes, with washers, only; also complainant's Exhibit' John S. Smith,' which was received in 1884, and has the washers reinforced with a short metallic eyelet, with the eyeletted end tightly gummed down. Also, Exhibit ·Alonzo B. Smith,' received in 1886, with printed advertisement on front. which had the eyeletted end tightly gummed, With washers reinforced by short metallic eyelets. " Evidently, it is not intended that the defendant's envelope shall be opened and the contents removed at the end thus securely fastened. The bill or invoice is inserted at the opposite end; the flap at that end is then fastened down, in the well-known manner, by moistening the gum with which it is provided, or the flap may be tucked in between the In other words, the defendant takes an ordinary envelope with the opening at one end, and at the other end, which is never intended to be opened, he puts an eyelet by washers through the front ply. a portion of the back ply, and the flap of the envelope. The sole object of the eyelet is to provide a suitable hole into which the cord or hook, which fastens the envelope to the merchandise, may be introduced. The effect of the eyelet and washers is to prevent the ply from being left free at. this end. The defendant has not the object of the patent in view and does not adopt the patented device. In complainant's envelope, according to the theory of his expert witness, "the leading idea or principle oHhe invention is the holding down of the back ply of the en-:velope by the overlapping of'the flap thereon, and the omission of any or secure attachment of the flap to said back ply., ** * Theclain;is are limited to this end of the back ply being left free." This feature is entirely w.anting in defendant's envelope. Instead of omitting
672
FEDERAL· REPqRTER,
the !!eoure attachment he has added the metnllic eyelet and washers to the gum of The claims must be restricted to the form and description of the patent, and thus construed they are not infringed. It is unnecessary to examine the other defenses The bill is dism.issed. '
PERKINS .,. EATON
et 01.
(OCrC1.llle aowrt, W. D. M1.chi.gan, S. D. December 24, 1889.) P4TBNTIJ 1'OR !NVENTIONS-h'FRINGEMENT.
Letters patent No. 228,77\1, issued to Willis J. Perkins, June 15,1880, for Improvements in mechanical movements, being a device involVing a combination of mechanicalparts, which in operation produce, by a peculiar method, the rocking of a shaft; with an adjustment for limiting the amount of the rocking movement and WhICh consists of a roller or its equivalent, ,moving freely on a slotted arm with varying tension, is not infringed by the rockin!l' movement used in the Raming-ton type-writer, which movement is, in an essentIal degree, produced by the hand of the operator.
In Equity. On bill tor an injunction. ThfYl7Ul8
Taggart &: Denison, for comrlainant. RichardJJdn, for defendants.
. SEVERE;NS, The complainant seeks in this cause to restrain the de-. {endants from infringing the rights secured to him by:letters patent No. 228,779, issued to him on June 15, 1880, for improvements in mechanical movements. His invention was of a device involving a combination of mechanical parts, which in operation produced, by a peculiar method, the rocking of a shaft, with an adjustment for limiting the amount of the rockIng movement. The meChanical movement was intended by him to provide 1 as he says in his specification, for a ing movement into "a variable oscillating one ; 8econd, to insure a determined amount of movement in a variable oscillating movement; third, or variable strain or tension on the opposite strokes to produce an of an oscillating Or reciprocating movement; fourth, to furnish a motive power tQ change a valve or similar device on engines of aU· classes,-electrical, steam, and hydraulic; fifth, to furnish a motive power whereby a spring or similar device is acted upon by the engine or machine with its full power, until the power stored up is sufficientto instantly change the valve without further drawing upon the power of the engine." According to his specification, his improvements consist:
"Fi1'st. In the combination, with a shaft provided with a slotted device, of a movable device fitted in said slot. and a spring force upon said movable device. Second. In the combination, with l\shaft prOVided with a to be moved in the slot, and a spring Which slotted arm, of a device operates·upon said movable device. Third. In the combination, with a rock. shaft proVided With a slotted arm, of a movable device fitted in the slot, and