1. Where, on the surrender of letters patent, a disclaimer of a
part of the inventions described in them is filed by the patentee
in the Patent Office, and reissued letters are granted for the
remainder,
held that if in a second reissue the disclaimed
inventions are embraced, he cannot sustain a bill to enjoin the
infringement of them.
2.
Quaere, are reissued letters patent valid if they
contain anything which the patentee disclaimed, or in the rejection
of which he acquiesced, in order to obtain the original
letters?
The facts are sufficiently stated in the opinion of the
Court.
MR. JUSTICE BRADLEY delivered the opinion of the Court.
This was a bill in equity filed by the appellants against the
appellees for an injunction to restrain the latter from infringing
certain letters patent for an improvement in plows, and for an
account of profits and an assessment of damages. The letters
patent
Page 101 U. S. 257
were original granted to one Matthew G. Slemmons on the ninth
day of October, 1860, surrendered and reissued on the twenty second
day of June, 1869, extended for seven years from the ninth day of
October, 1874, and again surrendered and reissued on the tenth day
of November, 1874. One of the defenses made by the defendants was,
that the last reissue embraced certain claims for alleged
inventions, which had been expressly disclaimed by the patentee as
a condition of getting the letters extended, and which are the
specific claims which the defendants are charged with infringing.
The fact on which the defense is based seems to be well founded. In
the original letters, granted in 1860, the only thing claimed
was,
"the arrangement of the two curved shoulder beams, A, A, a
clevis, B, transverse bar, D, m, slotted adjustable handles, E, E,
b, and notched and mortised shovels, C, C, e, in the manner and for
the purpose described."
The specification commences by saying, "My invention consists in
the particular arrangement of the several parts in the manner and
for the purpose hereinafter described." Of course this was a claim
for a combination of a number of particulars, and was a very narrow
patent, for no one would infringe it who did not use all the parts
in the combination as described. It is not pretended that the
defendants have done so.
But in 1869 the patentee surrendered these letters and obtained
a reissue, embracing six different claims, which were as
follows:
"1. The two converging beams A A, each one of which has a shovel
standard, A', formed by bending its rear end, substantially as
described."
"2. The converging beams A A, connected together and constructed
with curved shovel standards A' A' upon them, substantially as
described."
"3. The union of the front ends of plow beams, which have their
rear ends bent to form shovel standards, by means of a clevis or
device by which the team is hitched to the implement, substantially
as described."
"4. The converging plow beams A A, having shovel standards A' A'
formed on them, in combination with handles F F and handle
supporting braces E E, substantially as described."
"5. In combination with the foregoing, the manner,
substantially
Page 101 U. S. 258
as described, of adjusting the handles F F, and securing them to
the beams at any desired angle."
"6. Constructing of one piece of metal a plow beam A and a
curved shovel standard A', with a shoulder d formed on the latter,
substantially as described."
The defendants allege that most of these claims were for devices
that had long been in public use, and that the patentee never
attempted to vindicate his title to them by instituting any suits
against those who had used them, and evidence on the subject was
introduced which it would be necessary for us to examine, if the
case depended on this issue. But early in 1874 the patentee, on
behalf of the present complainants and appellants who had purchased
the patent, applied for an extension for another seven years. This
was opposed by those who were interested in the subject matter, and
the acting commissioner of patents refused to grant the extension
unless the patentee would abandon all the claims in the reissued
patent of 1869, except the fifth. Thereupon a disclaimer was filed
accordingly, and the patent was extended for the fifth claim only,
which the defendants have not infringed. This disclaimer was filed
on the 5th of October, 1874; and the extension was granted on the
ninth of the same month. On the same day, another reissue was
applied for, including substantially the claims which had been
rejected and disclaimed. The examiner refused to pass the
application, but it was persisted in, and finally, on the 10th of
November, 1874, the reissue was granted on which the present suit
was brought. This reissue contains the following claims:
"1. Two diverging beams, A A, that have their rear ends bent to
form shovel standards, the said beams being fastened rigidly
together, substantially as described, at and springing from the
point of attachment for the draft."
"2. Two diverging beams, A A, that have their rear ends bent to
form shovel standards, and their front ends fastened rigidly
together and merged into a device, substantially as described,
whereby the plow may be attached to the draft."
"3. The combination, substantially as described, with the two
plow beams A A, of the handles F F, and adjustable handle
supporting braces E E. "
Page 101 U. S. 259
It is obvious, on inspection, that the first and second of 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 secured by the letters patent
as extended. The court below deemed this, amongst other things, a
fatal objection to the validity of the reissued letters patent. We
agree with the circuit court. We think it was a manifest error of
the commissioner, in the reissue, to allow to the patentee a claim
for an invention different from that which was described in the
surrendered letters, and which he had thus expressly disclaimed.
The pretence that an "error had arisen by inadvertence, accident,
or mistake," within the meaning of the patent law, was too bald for
consideration. The very question of the validity of these claims
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 invention, 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 and 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 the investigation is forgotten
and perhaps new officers have been appointed, comes back to the
Patent Office, and, under the pretence 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 whether reissued letters can be sustained
Page 101 U. S. 260
in any case where they contain claims that have once been
formally disclaimed by the patentee, or rejected with his
acquiescence, and he has consented to such rejection in order to
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.
Decree affirmed.
MR. JUSTICE HARLAN did not sit in this case.