CARPENTER STRAW-SEWING MACH. CO. V. SEA.RLE.
809
thereon at 45 per centum ad valorem. The importers protested and brought suit claiming the merchandise to be dutiable at 3 cents per pound as "hollow ware," under the, same schedule and act, (paragraph 201.) The testimony of wholesale dealers was to the effect that, in the trade, the term "hollow ware" was restricted to cast-iron utensils, and did not cover the articles in suit. At the close of the testimony, Asst. U. S. Atty. Henry C. Platt moved for a direction of a verdict for the defendant on the following grounds: (1) That congress had defined the tariff meaning of the term"hollow ware," in the first act in which the words had been used, viz., the act of March 2, 1861, where it was associated (paragraph 44) solely with castings of iron; and in the act of June 30, 1864, (paragraph 352;) the same association was made of hollow ware with cast-iron articles exclusively. (2) That the evidence established the fact that the trade meaninK of the term corresponded with the congressional definition. (3) That the rulings of the treasury department had always been in conformity with such interpretation of the term. W. Wickham. Smith; for plaintiffs. Edward MitcheU, U. S. Atty., and Henry C. Platt, Asst. U. S. Atty_, for defendant. LACOMBE, Circuit' Judge, (orally.) Upon examination of the prior acts, I'llxn satisfied that congress was of the understanding that "hollow ware" meant vessels of tbis general kind,which we have here, made of cast iron. For the reason, therefore, that there seems to have been a to the words "hollow ware," and embodied congressional meaning in statutes before the passage, of the act of 1883, I assume that congress intended to use the words with the same meaning in the later act that it did in the prior act. Verdict directed in favor of the defendant.
OARPENTER STRAW-SEWING MACH.
Co.
17. SEARLE
et oZ.,
(OftrC'lllU Oourt, So D. New York. November 15, 1892.)
L
PATENTS FOB INVENTIONS-REISSUE-NEW ELEMBNT-STBAW-BIUlD SEWING MA.CHINE.
Reissued letters patent No. 10,600, granted May 26, 1885, to the Carpenter StrawSeWing Machine Company, as assignee, of Mary P. C. Hooper, upon original letters patent dated January 4, 1876, for improvements in straw-braid seWing machines, are void as to the amended fifth claim, wherein a new element, viz., a lip, is added. to the combination claimed. For a reissue to be valid as covering" the same invention" as that in the original, within the meaning of Rev. St. § 4916, the ,patentee must have described aud intended to secure in the original the invention of the reissue.
So
SAME-REISSUE- WHAT CONSTITUTES "THE SA.ME INVENTION."
8.
SAME-BnoADENING OF CLAIM-LACHES.
Wllere a claim in reissued letters patent covers a combination to which a new element has been added, it is in legal contemplation "broadened," and is invalid whell it covers machines used for lOng yeara by innocent parties, without infringe.
fF<DERAJ"REPORTER 1
vol. 52.
'-
l!5O,
and without in0'8' CLAIM-LACHIlB.·' '.' :' . . EVel1lllthel.'e the invention covered. by.'rei$$ued letters described in the reisSU!l is narrower, but c9yoers machines used for long . yeal's by in'nocent partles without molestation atldwithout infringement of the dl'iginM patent, auen Il!lllrrowed claim is void. MiU>6r.v, Bras8 Co., 104 U. S. , I I. , · .
In ... Carpenter Company againsUt!isJ1,ellA. othersfor infringement 9fa .patent. Bill dismisaeq;' " " . '.... . M. I' DiftenhQefer, fqr cqmplainant. I!o,W$f)'ff andStf!J?hetJ, E. This isan',.action in equity, based upon issued to the complainant,as aa· signee of !\laryr. C" H9Pper, for inlllacqiJ;les for sewing straw braid: The reissue is dated May 26, 1385, 9 years, 4 and 22 days after the original, 4, 1876. ',fhe .thll't. reissue,,as a, reissue, is vo,id; second, insu f· defenllell of description in specification and drawings; third, lack of novelty and invention; fourth, noninfringement. as follQws:; "(5) The nation fqqt; F, the guide, K, carrying the presser foot,the guid,e, the .lip, s\lbstantially as (1escribed." The wOJ;'da" claim of the original. 'rhus a, to tb,ec.omb,ination of the as follows: ".The claim. . In the. Q!:-iginal specificati9n tl:!einventor invention the oia/presser foot, a lever carrying\tb.¢ipreaser a ,This sentence appetirs in the reissue with the words "and a lip" added. The original says: "Said strips of braid are introduced under a front lip, and from thence under a presser foot, F, to and under a rising and falling back clamp, G." For the first five words of this quotation the reissue substitutes f;ltrip of braid is. " Both original and reissue the following: "The "The' front lip,' uuclei-which the braid have thefollowillg the guide whe,el or foller, E, and presser foot, F, are is all carried by a lever, K," etc. No other mentionM the lip is found intheoriginalpatent. It will be observed that the description of the lip is vague, shadowy and uncertain., With the single statement that tbe braid is introduced under a front lip which is carried by the lever the specification, on begins and ends. The lip is undesignated by a letter of reference,' its IOClltio'n is not poi l1ted out or its function described. There ill abs()lutely nothing to indicate, that it was to operate as "a, separator"-or perform ,the important functions attributed to it irithe reissue.1:G¢Jipnowhereappears in thedrll.wings or in the model filed in the patent office. Indeed, it would be impossible to attach a lip to; thema{jl\ipe ,shown in the modeland drawings. A metal stock .must be zllWpor:tthe lip,
CARPENTER STRAW-SEWING MACH. CO. V. SEARLE.
811
The disctepancybetween the and the reissue can best be illustrated by placing diagrams of the two machines side by side:
:Rei SSu..B ·
It will be observed that the metal stock, carrying the lip, which is essential to the reissue, is entirely 'Omitted from the original. I am constrained to think that no one, however skilled in the art, could dev.elop, from the specification, model and drawings of the original patent, the machine which is now put forward nsan embodiment of the fifth claim of the reissue. The proposition that the omissions could be supplied by picking up suggestions found here and there in the priori art" is entirely too obscure and remote." IVeB v. Sargent, 119U. S. 652, 663, 7 Sup. Ct. Rep. 436. The drawings of the original were, altered in the reissue by removing that part of the braid which projects' beyond the table and which shows the strips of braid as being separated. At this point, beyond the table, a lip could not operate to separate the braids or press them upon the bed plate. The drawings of the original l were in accordance with the statement of the specification that the strips (not the back strip only) are introduced under a front lip. In other words, the drawings of the original conform to the description of the' original and are in direct conflict with the theory of the reissue that the "back strip of braid is introduced under a front lip." The drawingsns they appear in the reissue are not so manifestly inconsistent with that theory. The claim of the original patent was, in the words of the complainant's expert, "too broad." In plain language, if not anticipated, it was' restricted to such narrow limits by letters patent No. 94,046 to Sidney S. Turner, dated April 24, 1869, as to render it valueless. Those engaged in the business of sewing straw braid had, therefore, nothing to fear from the fifth claim of the original. Complainant admits that a machine substantially like the alleged infringing machine was put on the market in the summer of 1877. There is no doubt whatever that for at least five a half years prior to the application for the reissue a large number such were in use in various factories. These mllchines were covered by patents issued subsequent to the original. For at least five years prior to the application for the reissue this use was known to the patentee. Concededly these machines could not be made to pay tribute under the original fifth claim. If they'can be held
I
of
FE1)ERAL REPORTER,
at, all under the fifth claim; of the reissue. it is only by the intmduction of the lip. The excuses which are offered for the alleged errors in the original drawings, specification and model and for the long delaY' in applying for the reissue are, it is thought, insufficient within all the a.uthorities. We have, then, the following facts: First, an original patent and a reissue nine :"years afterwards. Second, the introduction in the claim of the reissU(:lo[an element not found in the corresponding claim of the ··. '!hird,the element thus introduced not found in the drawings tlle original.and but vaguely referred to in the specification. Fourth" drli.wings altered ,in the reissue so as not to be palpably inconthe new claim. Jilifth, adverse equities 'existing during a period of at least five years. It is thought that a reissue cannot be uphelq.$nsuch oircumstances. The misohief at which the reissue decisions strike,is. present here in all itsobjootiQnable features. The origijWll.s,'practically I invlllid. It 'protected nothing. The]Ju bnal; liclul.d'rnothing to fear fr91nthaLclaim. In the lightl){ this fact other parities built .and used machines which, for aught that appeared in the theY had a perfect right to make and use.' For years they were, permitted to do this, unmolested. and without notice. They are 'now l 'after nine years' delay, confronted with a new and different claim which makes unlawful that which was perfectly lawful before. The original claim dormant and useless during this long period the attempt is J;1oW' made to reconstruct from it a claim that is useful. The effort is to make something out of nothing and in that sense the claim is broadened. So muchba$ been written on the subject of reissued patents that confusion often.arises as to the grounds upon which they have been held invalid. Laches need not be present in all cases. I understand the law to be :that a reissue is invalid-ffiiTllti if its claim is broadened after unexcusable delay on the part of the patentee; anu, second, if the claim covers a different invention from the one actually described and shown in the original. The statute (section 4916) provides for "a new patent for,Jhe same invention,"'and there can now be little doubt as to the IDe8I;ling of ,thifl phrase. ,What say ,the authorities? In Topliff v. Topliff, 14.5U. S. 156,12 Sup. Ct·. the court, after reviewing the decisions, restates:the rule as to the power to reissue. It also states the to the rule, the first of which is "that it [the:reissue] shall be for the same invention as the original' patent, as such invention appears .from the specification and claims of slich original." In other cases the court uses the following language; "The his tohave beenin supposing that he was entitled to have inserted in a reissued patent all that he Iliight bave applied for and had inserted iii his original patent. The a,ppellant produces on the argument exhibits tend.iog to show that the. patentee;befwe obtahling his original patf>nt .had made and done'all those things which lire or covered b.r the reissueJ patent. If this were true,
813
it would bt> nothing to the purpose. A reissue can only be granted for the same invention which was originally patented. ... ... ... Hence there is no safe or just rule but that which confines a reissued patent to the sameinven· tion which was described or indloated in the original." Manufacturing 00. v. Ladd. 102 U. S. 408. " If Lc [the patentee] was the author of any other invention than that which he specifical1y describes and claims. though he might have asked to have it patented at the same time. and in the same patent. yet if he has not done so. and afterwards desires to secure it, he is bound to make a new and distinct application for that purpose, and make it the subject of anew and different patent. ... ... ... The law does not allow.them [patentees] to take a reissue for anything but the same invention described and claimed in the original patent." James v. Oampbell. 104 U. S. 356. "We "re of the opinion that the present reissue is in valid so far as the first olaim of. concerned because it is not for the same invention as the original patent. and is therefore within the express exception of the statute." Freeman v. .Asmus. 145 U. S. 226, 241, 12 Sup. Ct. Rep. 939. reis$ue is not only for a broaderolaim mads many years after the original was granted:. for a different fnvention." Matthews v. Machine 06., 105 U. S.54.. . "There was no mistake in the wording Of the olaim of the original patent. The description warranted no other claim. It did not warrant any claim cov· ering bands not 'short or sectional. The description had to be changed in the l'eissu:el:to warrant the new. claims in the reissue. The description in the is not a more clear and satisfactory statement of what is described in the patent, but is i\ description of a different thing, so ingeni. ously worded as to cover collars with continuous long bands and which have no short or sectional bands." Ooon v. Wilson, 113 U. S. 268. 5 Sup. Ct. Rep. 537. "We are. also of opinion. however, that the reissue is void on the other ground. viz., that it contains new matter introduced into the specification, and that it is not for the same invention as that described in the original pat. ent. * ... * In this view. ther£;>fore. the case comes within the rule as stated in Coon v. Wilson. 113 U. S. 268, 277, 5 Sup. Ct. Rep. 537. There. as here. the lapse of time and laches based upon it were considered immaterial. beoause the reissue natent was for a different invention from that described in the originaJ." i'Des v. Sar.qent. 119 U. S. 652, 7 Sup. Ct. Rep. 436. "rhe question of laches. is perhaps immaterial, for the rei'ssue of the Camn· not for the same invention described and claimed in the orig. bell patent inat" Hartshorn v. Bar1'el 00·· 119U. S. 664. 7 Sup. Ct. Rep. 421. "There is no evidenoe of ally attempt to secure by the original patent the inventions covered by the llrst eight claims of the reissue, and those inventions must be regarded as haVing been abandoned or waived, so far as the reissue in question is concerned. In other words. those eight claims are not for the same invention which was originally patented." Parker & Whipple 00. v. Yale Olock 00., 123 U. S. 87. 8 Sup. Ct. Rep. 38. "And as a reissue couldonlybe granttld for the same invention embraced by the original patent, the specification could not be SUbstantially changed, either by the addition of new matter or the omission of important particulars. so as to enlarge the .scope of the invention as originally claimed. * ... ... The evident object of the patentee in seeking- a reissue was not to correct any defects in specification or claim, but to change both, and thus obtain. in fact, a patent for a different invention. This result the law. as we have seen. does not permit." Russell v. Dodge. 93 U. S. 460. "It seems to us Impossible to read this section [4916] carf>fully without coming to the conclusion that a reissue can only be granted fllr the same inven·
8U, thCjl matter' Wl;l'
DEPORTER,
,52, patent
ter.} of, .· l:1hll,\lgi ng ·. dl\cing, be the snbjectof: patent.., :The danger to be provided against was the temptation to amend, a ,so as to whtllh,might hfly,Il(lOllleinto use. or might have been illvented. 1:11 CO. V. Powder Wf,lrks.98 U. S. .' .' .' '. ", ., I",
,111;>. PEl meaQ.t· lllHrsnblltanHY,e, ,mat-
,.1 '.
".
.'"
J
of the a'uthoritiea thus: '· .. Tliere(ote, claim can 'litancI.llny longer upon a .'model alone, nor .. et'en alone n)'lon'adraWing of an ()rigirla1';and indeed neither models, drawings nor des.criptions. noraH of them tOgether. support a reissue claim, except when the description. in thebri'ginalletters patent showstbat the inverttion coveretl' that claim was biten'ded to be secured' jll the' original." Walk.Pat.§'23S/' . , ',' '," , . , . , · .".i ' ··..'. -.' · ,;',
"These quotations, which have perhaps been' rilultiplied urmecessarily, the invenleave no rociulf'or douht that unless' the court clln find c;1esoribed a.s the invention in and that tion, of the the patllnteeinte9dedW Secure it as his in'lention in' jhe,original, the ,reissue is invalid,.,-itfs<not for the same invention. .The' question is pot what thepntentee aettially invented, but what he said;aboutit in the briginal,and the original that the in-vention of the redescribed or intended to,be'clllimed, the ,Tested qythis rule Xcannot think that the' patentee described and intended to secure in the original the invention of the fifth 'claim of the reissued patent. Everything points· to '. a different conclueiorl;The. model,thedrawings, the 'statetiietlt6f invention, the detoSt'he iriference Mriptiim of thecombin.ation. and the.cla'im, all :thafit was notthe of the inventor to in the coml>jpation. The,omissiop; "frqm;the if·it stood aloile might be re.garded as 0. mistakei the,drawings, the descriptionandAhe, claim, consideredseparately,. miglWbe treated. as mistakes, .bat it· is almost inulfedible that f6urmistltkes of this 'character shoj1ld occur and continue unlloticed for If we start the inventioll wa,s what ,PAtentee aeCi1lit,..ed it to in the'. orjgilial, we find . .mQdel, drawings, descripthm and claim in perfectharmQny·. The model ·shows a combination oUhree elements. So do the drawings. The de,scription expressly states that the invention consists in auch a combinaand the daim claims it. If,on otherhadd, the attempt is 'illl.llQe to thepr?vosition that theinventiQD.of the ori'ginal was whij,t the 'patlilntee declare$jt,to be in t,he reissue, we:find the path beset and .inconsistencieB at every turn. Sucwith difficulties, cess in tbis undertaking 'Clan only be reached byaresort to the most 'heroic measures. DelilY'sisnd tergiversations nlustbe excused, omissions must be supPlied, alterationS made and a series of'p]ain and consistelh 'staternents prol)ounced to be mistakes. It is, therefore, thought that the reissue i& AAt for the same invention as the. one actually describedin tbeorigin{ll., ' , '.., ,
the
be
CARPENTER STRAW-BEWING MACH. CO. 'lJ. SEARLE.
815
able brief filed by tbecomplainant contains .tbe followingfranlt and clear statement: . "If of the Carpenter reissue were broader than any claim of the original patent or covered a machine that was not covered by a claim in the original patent, under the decisions of the supreme court it would probably but this is not. the case with the. fifth claim of the Carpenter renot be issue. " This is unquestionably a correct expression of the law. If the claim has been broadened afterntne years' delay the reissue is void. I understand the case ofHubel v.Dick, 28 Fed. Rep. 132, as authority for the proposition that where a broad invalid claim has been permitteod to remain unchanged for a long series of years, until adverse equities have arisen, and a reissue is granted with a new claim, which, though for a larger combination, seeks to hold as infringements ma(Jhines which have beeJ;1lawfully made for years, the reissue is broadened and is therefore void. Adding a new element in such circumstances makes an invention and thus, in legal contemplation, broadens the Claim. At page 137 the court says: I "But it is. said that the sixth claim of the second reissue is narrower than the corresponding claim olthe first reissue, and, therefore, it is not within the sco1)e of the cases which have been cited. It-is, in a certain sense, a nar-. inasmuch as it .contains a larger number of elements; but it describelil:a diff.erent invention. The claim is not a different mode of describing that :W'bich was specified in the first reissue, and is not a limitation and narrowing of the invention which was described therein, but it describes an independent and important invention, and thereby, after a lapse of five years, the patent was enlarged. The principles in regard to the invalidity of. reissues, when unreasonably delayed, have become so well established that they cann()t be successfully avoIded by adding, after an unreasonable delay, in a second reissue,anothet· elemant to a combination described in a void claim in the first reissue, the last added element making aditIerent and previously unclaimed, invention." For these reasons I am constrained to hold the fifth claim invalid. But assume that the foregoing propositions are wrong; assume that the invention of the reissue is described in the original and that the -claim of the 'reissue is narrower; how then stands the (',Rae? It is thought that no one can read the argument in Miller v. Brass Co., 104 U. S. 850, and the other decisions which follow it, without being impressed with the conviction that the injustice which the court sought to correct was the attempt to levy tribute upon innocent parties who did not infringe the original patent and who had a right to feel themselves secure afterclong years of unmolested use. It cannot be doubted that any reissue which permits this wrong is within the mischief of these de.cisions. This case is in some respects sui generis, but there can be no doubt that, if sustained, the reissue will accomplish the very. wrong which has been so sharply denounced by the supreme court. If an inventor, holding a patent with a void claim, has slept upon his rights for years until other rights have become fixed, what possible difference can it make, upon principle, whether he invades those rights and secures an
The
Slt)
REPQ:aTER,vOl.t52.
inequitable, atlYlllltage by J;lroader. claim or: a narrower claim? The complainant here seeks to do by a narrower claim (assuming it to be what other complainants have vainly sO)1ght to do by an expandeqcl,l:\im. It cannot.bedollbted that the is as inin tbe one case' as in the other. In both cases the patents, after years of acquiescence, and in the light of subsequent events, are manipulated to grasp devices which the originals could not lay hold of. this to be lnany: v,}olates the spirit ofthe law. As these .views disposf;), case it IS qot necessary to. 90nsider the other d.ef!mses. The bill-.' 'dismissed, with costs· is ., . .. ' , ".'-.
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';
:
"
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PHILADEr,PlltA'NoVELTY MANUF'G (01lrcuit
11; WEEKS.
oou:it-s. D.NeW York. ji; '-,I .1.
pecemberS.1892.)
'.-,
1.PA:TBNT8 POlt'!NVENTJONS-'-J!lnoIlNT OP: Ct;A'f1f-PRTOlt ART-INPRINGBIIfBNT.
1880; to Isaac'W. Heysingerfor a device for,fiJiyg and binding PAllers·. if sllstainable at aU, must, in villW of tJ!,eprior state of Jbeart; be limited to' structures shown and described; ,Imd. 1's the'f!.rst'claim'18 for a 1l.Iingblip compo!lelJohclamping arm and abase, th'e former:being(pro-vided with'k beel,:which holds tbe arm locked.wbien 'open, the heel ,is 1j,l\41tllere is noinfrin,:rement where this is lacking., chinetor,lDsertlDg viouSly the result of
2. BAIIfE-NoVIWTY+ioMEca&NICAL 'SXILL.
April 8, 1883,.to Wo', for a ma.qli\lohlDg are VOid ,as ooverlng Improvements obmechanical ,skill.
InEquity. Billb'y,ihe Philadelphia Novelty panyagainst AlbertusA. Weeks for infringement ,of patents. hearing. Bill dismissed. Joshua Pusey, forcomplttinant. Hector T. Pinton. for defendant.
ComOn final
COXE, District, Judge. This s'<ltion is, based upon two letters patent. granted to Isaac, W. Hey;singer and by him assigned to the complainant. The first, No. 226;402, is dated April 13, 1880.' and is for a devicefor:filing and papers. The second, No. ,274,941, is dated 3, 1883,and is fora machine for inserting and clinching staples. Both, patents relate to tools for papers together, which are adapted for use upon the: desks of lawyers and conveyancers. The defenses are the usual oues"""':"lack ofn,ovdty and, invention, aggrega· tion and noninfringement. ItisJreely admitted by the complainant that the ,patentee was compelled, by reason of the prior art, to move within narrow limits.; ,Tools yerysimilar to, his, o:perating in substantially the same man.ner and producing the same flesult, were in use at the date of his patents. " The complainant's brief,after considering pre-existing structures; cO,ntains the following:
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