Eby v. King

after stating the case, delivered the-opinion of the court.

As one of the. chief defences in this case turns upon the validity of the reissue, it becomes necessary to compare this in some detail with the original patent No. 134.790. which was granted January 14, 1873.

There were three claims, as follows:

“ 1. The combination of the block b, adapted to revolve as described, and the hook-bolts ee, for supporting a carrier, as described.

“ 2. The combination of the block b and the central vertical shaft and its connections, substantially as described.”

The description in the first claim, as well as in the specifications of the hook-bolts ee, for supporting the carrier, is clearly a mistake. The hook-bolts are lettered mm, and are described in the specification as bolts, “ secured in the framework, the upper ends of which are turned over the block b, as shown,” (in-figure 4,) while ee, which are really hooked arms, shown in figure 2, attached to the block b at the lower end, and supporting the carrier at the upper end, should have been described as arms supporting the carrier.

Had the plaintiff, in his reissue, confined himself to the correction of an error so manifest, we should have found little difficulty in sustaining it; but in his, application, which was made four years after the original patent, he makes no claim that his patent “ was inoperative ,6r invalid, by reason of a defective or insufficient specification,” or by reason of his having claimed “ more than he had a right to claim as new,” or that any error had arisen “ by inadvertence, accident, or mistake,” without which the Commissioner has no right to grant a reissue, but simply prays that he may be allowed to surrender his original patept, and that “ letters patent may be reissued to him for the same invention, upon the annexed amended specification.” He makes no reference at all to, the obvious mistakefin his first claim, and although the vpoint is not distinctly made in. the briefs, we think it a serious question whether the Commissioner of .Patents had any jurisdiction, under Rev. Stat. § 4916, to consider the application upon the bare statement that the patentee desired to surrender his patent and obtain a reissue. The Commissioner is authorized to reissue patents in certain specified cases, and if the petition makes no pretence of setting forth facts entitling the patentée to a reissue, it is exceedingly doubtful whether he obtains any jurisdiction to act at all.

Waiving this, however, the patentee annexed to his application a wholly different description and specification of his invention, as wfell as different drawings, differently lettered, showring

The hook-bolts mm of the original patent, (b' of the reissue,) by the loosening of which the block b (B of the reissue) was permitted to revolve, are not altogether omitted in the reissue, but are mentioned as “ secured, in the frame, and- having their upper ends turned over the block, which allow it to be revolved easily in either direction.” A new feature, however, is introduced in a cross-plate b, under the block as a support. The vertical shaft 0 passes loosely through this plate, and the centre of the block B. This plate is not noticed' in the specification, and is not lettered in the drawing of the original patent, although the end of it is indistinctly shown in figure 2. The claims of the reissue, so far from being confined tó a combination of the circular block, and the arms for supporting the carrier, or to the combination of the block, and the central vertical shaft and its connections, cover broadly any “ movable independent cob-carrier, wherein are combined a supporting and revolving block, a carrying-frame, whose inner end is supported upon said block, and whose outer end is supported upon movable legs, and gearing applied at the inner end of the carrying-frame and capable of acting continuously, whether the carrying-frame is fixed in position, or being moved into a new position, substantially as described.” The second claim is even broader.

Meantime,-however, defendant had, for more than two years preceding the application for the reissue, been manufacturing and selling cob-carriers substantially the same in construction as that shown in the alleged infringing device. It also appears that plaintiff was unable to obtain royalties, or sell licenses under his original patent, by reason of his claims being too

Under the rulings of this court, it is clear that this reissue cannot be supported. Not only was there no claim of a defective or insufficient specification; **none that the patented had claimed as his own invention more than he had a right to claim as new; none of inadvertence, accident, or mistake; but four years after the original patent was issued, the patentee attempts to secure a reissue, with claims broadened for the purpose of covering that which is presumed to have been once abandoned to the public. All that has ever been said by this court in restraint of the practice of reissuing patents applies with full force to this case. White v. Dunbar, 119 U. S. 47 ; Ives v. Sargent, 119 U. S. 652 ; Dunham v. Dennison Manufacturing Co., 154 U. S. 103 .

A further question arises whether, where a patent has been surrendered and reissued, and such reissue is held to be void; the patentee may proceed upon his original patent. In other words, whether the surrender is good, though the reissue be void. As the law stood until 1870, it was held in Moffitt v. Garr, 1 Black, 273 , that the surrender of a patent under the act of 1836 was a legal cancellation of it; that no right could afterward be asserted upon it; and even that suits pending for an infringement of • such patent fell with its surrender, because the foundation upon which, they were commenced no longer existed. See also Reedy v. Scott, 23 Wall. 352 , 364.

By the act of July 8, 1870, Rev. Stat. § 4916, it was declared that the surrender shall take effect upon the issue of the amended patent; but it was intimated in Peck v. Collins, 103 U. S. 660 , that the effect of an adverse decision on the title of a patentee to the invention would be as fatal to the •original letters as to his right to a reissue. In delivering the opinion of the court, Mr. Justice Bradley observed that “ since the decision of this case ” (Moffitt v. Garr) “ it has been uniformly held that if a reissue is granted, the patentee has no rights except such as grow out of the reissued patent. He has none Under the original. That is extinguished.

In McMurray v. Mallory, 111 U. S. 97 , it was held that the patentee, who had surrendered his patent and taken reissued letters on a new specification and for new claims, could not abandon the reissue and resume the original patent by a disclaimer. “ This,” said Mr. Justice Woods, “ could be done only, if it could be done at all, by surrender of the reissued patent and the grant of another' reissue.” See also Gage v. Herring, 107 U. S. 640 .

But, even if the patentee were able to . fall back upon the original patent, counsel for the appellant, as well as his expert, admits that the combination described in the first claim of such patent was anticipated by certain patents to Brinsmead and Bryan, and that described in the second claim was also anticipated by a patent to' one Nimbs. Assuming this to be so,' it Was clearly incompetent for the patentee to abandon these claims m tato and reconstruct his patent upon a different theory, in order to make it salable, or to hold as infringers other manufacturers who, in the meantime, had entered the field, relying upon his original patent as representing what he claimed to have invented and to be his own.

The decree of the court below is, therefore,

Affirmed.