Reissued letters patents No. 7851, granted August 21, 1877, to
Henry H. Eby for an improvement in cob-carriers for cornshellers
are void as being for a different invention from that described and
claimed in the original letters, specification, and claim.
It is doubtful whether the Commissioner of Patents has
jurisdiction to consider and act upon an application for a
surrender of letters patent and reissue when there is only the bare
statement that the patentee wishes to surrender his patent and
obtain a reissue.
Whether, when a patent has been surrendered and reissued, and
such reissue is held to be void, the patentee may proceed upon his
original patent is considered and discussed, but is not
decided.
This was a bill in equity to recover damages for the
infringement of reissued letters patent No. 7,851, granted August
21,
Page 158 U. S. 367
1877, to the plaintiff, Eby, for an improvement in cob carriers
for cornshellers.
The object of the invention was stated to be
"the production of a cob carrier for power cornshellers, to
receive the cobs from the spout of the sheller and deliver them in
any desired direction, which is adapted to be adjusted both
vertically and horizontally upon its supporting frame, and driving
mechanism without interfering with or stopping its operation, and
the (my) invention therein consists in mounting the carrying frame
upon a revolving block at its inner end and upon adjustable legs at
the outer end, and driving the endless belt by cog gearing applied
at the inner end thereof; and, further, in the combination, with
such parts, of the central vertical shaft and its connections for
transmitting power from a pulley to the inner end of the endless
belt, all as fully hereinafter described for effecting the purpose
before explained."
The device is illustrated by the following drawings:
image:a
Page 158 U. S. 368
image:b
The specification further proceeds:
"In operation, the carrying frame is located with reference to
the cornsheller in such manner that the cobs can be discharged upon
the lower end of the endless belt. Motion being communicated to the
pulley, C', the endless belt is operated through the gearing
described, and the cobs moved to and thrown from the outer or upper
end of the carrying frame. The cobs are delivered into a wagon
driven under the end of the carrier, or into any proper stationary
or removable receptacle."
"When desired to turn the carrying frame to either side, to
deliver the cobs in any other direction or into other receptacles,
the outer end is moved bodily around, which moves the block, B, and
the gearing, and the hook bolts, b', may then be tightened up to
hold the parts more rigidly in their new position."
"By means of the devices for supporting the carrier and the
gearing for driving the endless belt at the inner end of the
carrying frame, any extent of movement of such carrying frame is
permitted without stopping the operation of the endless belt, and
this movement is effected with but little inconvenience and delay.
The changing of the direction of the carrying frame both vertically
and horizontally could not be performed with as great facility if
the endless belt were driven otherwise than at its inner end, where
the least movement
Page 158 U. S. 369
is made, or if the said carrying frame were supported by less
efficient means than those described."
There were two claims, which read as follows:
"1. A 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 swung to a new position,
substantially as described."
"2. A movable independent cob carrier, wherein are combined a
carrying frame supported at its inner end upon a revolving block,
and the central vertical shaft and its connections, whereby the
said carrying frame can be adjusted vertically and horizontally
without stopping the operation of the endless belt, substantially
as and for the purposes set forth."
The defenses were that the reissue was void; that the invention
was lacking in patentable novelty, and a denial that the defendant
had infringed.
Upon a hearing upon pleadings and proofs, the court below was of
opinion that the reissue was obtained for the purpose of broadening
the claims to cover existing machines, and was consequently void,
and also that the defendant had infringed neither the original nor
the reissue. Thereupon the court dismissed the bill, and plaintiff
appealed to this Court.
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
As one of the chief defenses 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.
Page 158 U. S. 370
In this patent, Figs. 2, 3, and 4 of which are here given, it is
stated that
b represents a disk or block, resting upon
proper bearings upon the framework,
a, provided with a
central orifice through which passes a shaft; that "the inner end
of the carrier frame is pivoted to arms,
ee, rising from
the block,
b, as shown;" and that "
m m represent
bolts secured in the framework, the upper ends of which are turned
over the block,
b, as shown." The specification
proceeds:
"The carrier may be turned for the purpose of discharging the
cobs in any desired direction by revolving the block,
b,
which supports the carrier frame, and the main portion of the
actuating devices upon its bearings, it being secured in any
desired position by means of the hook bolts,
ee,"
(evidently meaning the hook bolts,
mm, Fig. 4).
image:c
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.
"
Page 158 U. S. 371
The third claim covered a combination of the elements of the
entire carrier, and is not claimed to be infringed, nor is it
necessary to be 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 or 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 patent, 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 mistake in his first claim, and, although the point 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 pretense
of setting forth facts entitling the patentee 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
well as different drawings, differently lettered, showing
Page 158 U. S. 372
different views, though apparently of the same machine, and
making six claims, the fifth and sixth of which correspond with the
first and second claims of the original patent, with the mistake
above mentioned corrected. All these claims were rejected, and the
patentee acquiesced in the rejection of the fifth and sixth, which
do not again appear. Two new claims were substituted, and these
were also rejected, as having been met by former references.
Subsequently a reissue was allowed, with the claims as herein
stated.
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, C, passes loosely through
this plate, and the center 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
to 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
Page 158 U. S. 373
narrow, but that since he had succeeded in having the patent
reissued with broadened claims other manufacturers had submitted to
his demand for royalties.
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 patentee 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 afterwards 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,
90 U. S.
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. . . .
Page 158 U. S. 374
No damages can be recovered for any acts of infringement
committed prior to the reissue. . . . It seems to us equally clear
that, as the law stood when that decision was made, . . . a patent
surrendered for reissue was cancelled in law as well when the
application was rejected as when it was granted. The patentee was
in the same situation as he would have been if his original
application for a patent had been rejected. . . . Surrender of the
patent was an abandonment of it, and the applicant for reissue took
upon himself the risk of getting a reissue or of losing all. A
failure upon the merits, in a contest with other claimants, only
gave additional force to the legal effect of the surrender."
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,
admit 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
in
toto 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.
