1. Where, within four months before their expiration, letters
patent covering a single claim for a combination of several
elements are reissued and extended, with the same description as
before but containing in addition to the original claim one for a
combination of some of the elements only, the reissue is invalid as
to the new claim.
2. Letters patent for a combination of several elements are not
infringed by using less than all the elements.
3. In letters patent for an improvement in cooling and drying
meal during its passage from the millstones to the bolts, the claim
was for the arrangement and combination of a fan, producing a
suction blast; the meal chest; a spout forming a communication
between the fan and the meal chest; a dust room above, to catch the
lighter part of the meal thrown upwards by the current of air; a
rotating spirally flanched shaft in the meal chest conveying the
meal to the elevator; a similar shaft in the dust room conveying
the meal dust to the elevator, and the elevator, taking the meal to
the bolts. Within four months before the expiration of the letters,
they were reissued and extended with two claims, the one a
repetition of the original claim and the other for the combination
of the fan, the communicating spout, the meal chest with the
conveying shaft in it, and the elevator, but omitting the dust room
with its conveying shaft.
Held that the reissue is valid
for the old claim only, and is not infringed by the use of the fan,
spout, meal chest with its conveying shaft, elevator, and dust room
without any conveying shaft in the dust room or other mechanism
performing the same function.
The case is stated in the opinion of the Court.
MR. JUSTICE GRAY delivered the opinion of the Court.
This is a bill in equity for the infringement of letters patent
for an improvement in means for cooling and drying meal, reissued
to John Denchfield and duly assigned to the plaintiffs. The
original letters patent to Denchfield were dated April 20, 1858.
The reissued letters patent were dated January 16, 1872, and
extended for a period of seven years from April 20, 1872. The
circuit court held that the first claim of
Page 107 U. S. 641
the reissued patent was valid and had been infringed, and
entered a decree for the plaintiffs.
See 14 Blatchford
293. The defendants appealed to this Court. The original patent
begins by stating that Denchfield has invented "a new and improved
arrangement of means for cooling and drying meal during its passage
from the grinding stones to the bolts." The reissued patent omits,
in this connection, the words "during its passage from the grinding
stones to the bolts." But both the original and the reissue, after
referring to the same accompanying drawings, proceed as follows,
the words in brackets being inserted in the reissue only:
"This invention consists in the peculiar arrangement of a
suction fan, [conveyor or] conveyors, and elevators, as hereinafter
described, whereby the meal, during its passage from the grinding
stones to the bolts, is thoroughly dried and cooled within a
limited space, the whole forming a simple and economical
device."
Then follows a description which is the same in the original
patent and in the reissue, and is in substance as follows:
"The millstones A and curbs are arranged in the ordinary way on
the bed B. Spouts C carry the meal from the stones down into a
chest D, which is placed horizontally on the flooring of the mill.
This chest is equal in length to the bed, so that all the spouts of
the several stones may communicate with it, and it is divided
horizontally lengthwise by a zigzag partition having openings in
it. Within and at the bottom of this chest is placed a longitudinal
shaft F, having a spiral flanch on it. With one end of this shaft
an elevator F' communicates, which discharges its contents at
e. A fan G is placed in a suitable box H. This box
communicates with a spout I, the lower end of which communicates
with the chest D and the upper end with one end of a chest J in the
uppermost part of the mill. Within that chest, a series of vertical
partitions
i is so placed as to form a winding passage
from its communication with the spout I to an opening at the
opposite end of the chest. That chest also contains a longitudinal
shaft K, having a spiral flanch on it. Both shafts, F K, are
rotated by any proper means. "
Page 107 U. S. 642
The rest of the specification and the claim, both in the
original patent and in the reissue, differing only by inserting in
the reissue the parts printed below in brackets, are as
follows:
"The operation is as follows: the meal passes from the stones A
down the spouts C and into the lower part of the chest D, and is
conveyed by the spirally flanched shaft F into the elevators F',
the shaft F, which is a conveyor, moving the meal in the direction
indicated by the arrows 3. The meal is carried up by the elevators
and discharged at
e directly into the bolts or into
troughs, and may be conveyed by hopper boys or any suitable
conveying device into the bolts. While the meal is thus passed
through the stones A, spouts C, and the chest D, a suction blast is
produced by the fan G, said blast absorbing the moisture or vapor
which the meal contains, and which is heated or warmed by the
friction of the stones A. The meal therefore is dried and cooled,
and, in consequence of the time consumed during its passage through
the spouts C and chest D, will be perfectly acted upon by the
blast, so that all free moisture will be absorbed. A portion of the
finer and lighter particles of flour will follow the blast, and
will be ejected up through the spout I and through the serpentine
or winding passage formed by the parts
i, and will settle
in the outer end of the chest J and be conveyed by the conveyor or
flanched shaft K to a spout
j, through which it falls into
the elevators F' and unites with the meal which is received by the
elevators direct from the chest D. [This compound arrangement for
operating on the meal while passing through the chest D and on the
escaped flour in the chest J, returning the latter to the
elevators, while it is extremely well adapted for large flouring
mills running at high speeds and with a strong suction blast, may
not be either necessary or even practicable in all cases. When the
grinding friction evolves only a moderate degree of heat, the chest
J and its apparatus may be dispensed with, for, the blast being
moderated to correspond, so small a quantity of the fine flour will
be drawn through the spout I that such flour may be ejected on the
mill floor, and be disposed of in any convenient way so as to enter
the bolts.] "
Page 107 U. S. 643
"I do not claim forcing a current of air between a pair of
millstones, while the same is in operation, for the purpose of
keeping the stones in a cool state and preventing the heating of
the grain, for such means, although not very efficient, have been
previously used. But I am not aware that parts arranged as herein
shown, so as to allow the meal to be subjected to the blast during
its entire or nearly entire passage from the stones to the bolts
and ensure the perfect drying and cooling of the meal have been
previously used."
"I claim, therefore, as new, and desire to secure by letters
patent:"
"[1. The arrangement and combination of the suction fan G and
spout I, with the meal chest D, receiving the meal from the
grinding stones and provided with a conveyor shaft F and elevator
F', substantially as and for the purpose set forth.]"
"[2.] The arrangement and combination of the chest[s] D, J,
shafts F, K, elevators F', fan G, and spout I, substantially as and
for the purpose herein shown and described."
No new device was invented by Denchfield, but his improvement
consisted in a new combination of old means and devices. That
combination, as described in the specification of his original
patent, includes seven elements, namely: 1. The meal chest D at the
bottom of the mill, into which the meal falls through the spouts C
from the millstones. 2. the conveying shaft F, which takes the meal
from this chest into the elevator F. 3. The elevator F, which
carries up the meal and discharges it into the bolts or hopper
boys. 4. The fan G, creating a suction blast which cools and dries
the meal during its passage through the millstones, the spouts C,
and the chest D. 5. The spout I, communicating with the fan and
through which the meal dust, following the blast of air, is thrown
upwards into the chest J at the top of the mill. 6. The chest J, in
which the meal dust settles. 7. The conveying shaft K, by which the
meal dust is carried from this chest into the elevator.
The only devices, indeed, which take part in cooling and drying
the meal are the meal chest at the bottom of the mill with the
rotating shaft in it, the spout by which that chest
Page 107 U. S. 644
communicates with the fan, and the fan itself. The other chest
or dust room at the top of the mill collects and saves the lighter
part of the meal thrown upwards by the fan. The rotating shafts in
each chest convey all the meal, after it has been cooled, dried,
and collected, to the elevator, and the elevator takes it to the
bolts. But the fan, with its communicating spout and meal chest,
the dust room, the two conveyors, and the elevator, tend to one
result, the cooling and drying of the meal, without waste or loss,
"on its passage from the grinding stones to the bolts," "the
whole," as stated at the beginning of the specification, "forming a
simple and economical device," and the single claim in the original
patent is for the arrangement and combination of the seven
elements, designating them all with equal distinctness by
appropriate letters.
The reissue was granted more than thirteen years and eight
months after the date of the original patent, and less than four
months before that patent would have expired, and contains two
claims, the second of which is a repetition of the claim in the
original patent.
The first claim in the reissue is for a combination of the "fan
G and spout I, with the meal chest D receiving the meal from the
grinding stones, and provided with a conveyor shaft F, and elevator
F'," and omits all mention of the dust room J and its conveyor
shaft K. This claim, then, is for a combination of five of the
seven elements of the combination for which the patent was
originally granted. The effect is to enlarge the claim; for, while
the original claim was only for these five elements in combination
with the other two elements, and would not have been infringed by
the use of a combination of the five without the other two, the new
claim covers a combination of the five elements, whether used with
or without the two others.
Prouty v.
Ruggles, 16 Pet. 336;
Vance v.
Campbell, 1 Black 427;
Gould v.
Rees, 15 Wall. 187.
The statute in force at the time of the issue of the original
patent authorized a surrender and reissue whenever any patent
was
"inoperative or invalid by reason of a defective or insufficient
description or specification, or by reason of the patentee claiming
in his specification as his own invention more than he
Page 107 U. S. 645
had a right to claim as new."
The statute in force at the time of the reissue made no change
in this, except by striking out the words "description or." Act of
July 4, 1836, c. 357, sec. 13; Rev.Stat. sec. 4916.
The plaintiffs do not contend that in the original specification
the patentee claimed as his own invention more than he had a right
to claim as new, or that there is any defect or insufficiency in
any part of the description or specification other than the final
claim. The descriptive part is, word for word, the same in the
original and in the reissue. It is argued that the claim in the
original patent was too much restricted by including in the
combination elements which were no part of the real invention, and
that this mistake might properly be corrected in the reissue. But
there being no error in the descriptive part of the specification,
any mistake in the claim, which is the more important part, and
upon which other inventors and the public have the right to rely,
as defining the limits of the invention patented, would be apparent
on the face of the patent and could not escape the notice of any
person reading it with the least care and attention.
It is plausibly suggested that
"the claim could be made perfect in form, and consistent with
the description of all that portion of the apparatus which relates
to the invention, by simply striking out the letter of designation
for the upper chest J, and the letter of designation for the
conveyor shaft of that chest K."
But that the inventor did not and does not intend so to amend
his claim is conclusively shown by his having repeated the same
claim, including these very letters of designation, in the second
claim of the reissued patent. His attempt is, while he retains and
asserts the original claim in all particulars, to add to it another
claim which he did not make, or suggest the possibility of, in the
original patent, nor until that patent was about to expire.
To uphold such a claim, made so late, would be to disregard the
principles governing reissued patents, stated upon great
consideration by this Court at the last term in the case of
Miller v. Brass Company, 104 U. S. 350, and
since affirmed in many other cases.
James v. Campbell,
104 U. S. 356;
Heald v. Rice, 104 U. S. 737;
Mathews v. Machine Company, 105 U. S.
54;
Bantz v.
Page 107 U. S. 646
Frantz, 105 U. S. 160;
Johnson v. Railroad Co., 105 U. S. 539;
Moffitt v. Rogers, 106 U. S. 423.
The invalidity of the new claim in the reissue does not indeed
impair the validity of the original claim which is repeated and
separately stated in the reissued patent. Under the provisions of
the patent act, whenever through inadvertence, accident, or
mistake, and without any willful default or intent to defraud or
mislead the public, a patentee in his specification has claimed
more than that of which he was the original and first inventor or
discoverer, his patent is valid for all that part which is truly
and justly his own, provided the same is a material and substantial
part of the thing patented, and definitely distinguishable from the
parts claimed without right, and the patentee, upon seasonably
recording in the Patent Office a disclaimer in writing of the parts
which he did not invent, or to which he has no valid claim, may
maintain a suit upon that part which he is entitled to hold,
although in a suit brought before the disclaimer he cannot recover
costs. Rev.Stat. secs. 4917, 4922;
O'Reilly v.
Morse, 15 How. 62,
56 U. S.
120-121;
Vance v. Campbell, above cited. A
reissued patent is within the letter and the spirit of these
provisions.
The decree of the circuit court proceeds upon the ground that
the first or new claim of the reissue has been infringed; but the
plaintiffs' bill is not so restricted, and alleges generally that
the defendants have infringed the reissued patent. If the
defendants have infringed the second or old claim, the plaintiffs,
upon filing a disclaimer of the new one, are entitled to a decree,
without costs, for the infringement of the old and valid claim.
Considering that the question of the validity of the new claim in
the reissue is a question of law upon the face of the patent, and
that its validity has been sanctioned by the Commissioner of
Patents in granting the reissue, and upheld by the circuit court,
there has been no unreasonable delay in entering a disclaimer, for
the plaintiffs were not bound to disclaim until after a judgment of
this Court upon the question.
O'Reilly v. Morse, above
cited;
Seymour v.
McCormick, 19 How. 96.
The question, then, remains to be considered whether the
evidence before us shows an infringement by the defendants of the
entire combination.
Page 107 U. S. 647
It is proved, and not denied, that the apparatus in the
defendants' mill is substantially like that described in the
plaintiffs' patent so far as regards the first meal chest, the fan,
and the spout connecting with the fan, and also so far as regards
the elevator, and the conveying shaft from the first meal chest to
the elevator -- in short, so far as regards the cooling and drying
apparatus proper and the devices for collecting and conveying the
greater part of the meal, after being cooled and dried, to the
bolts.
The defendants are also proved to have a dust room, by which the
light meal dust thrown upwards by the fan through the spout is
collected and saved. This part of their apparatus is not, indeed,
in form exactly like that of the plaintiffs. The plaintiffs'
patent, with the accompanying drawings, describes a single dust
room with vertical partitions attached alternately to the floor and
to the ceiling and extending part way of the height, against which
partitions the meal dust, as it passes in a serpentine course over
one partition and under the next, strikes, and falls to the floor,
with an opening at the further end of the room to carry off the air
after the meal dust has been deposited. The defendants' dust room
consists of two or three successive chambers, communicating by
spouts or conductors, against the walls or ceilings of which
chambers the meal dust, as it is carried along by the current of
air, strikes, and to the floors of which it falls; with a
ventilator at the top of the uppermost chamber, through which the
current of air passes out, after depositing the meal dust. The
defendants' dust room of several chambers, with a ventilator at the
top of the uppermost one, performs the same function in
substantially the same way, and produces substantially the same
result, as the plaintiffs' dust room with the partitions across it.
In short, the defendants' dust room, or contrivance for collecting
and saving the light meal dust thrown upwards by the fan, is a
substantial equivalent for that of the plaintiffs. The defendants
have therefore infringed this part also of the plaintiffs'
combination.
Gold v. Rees, above cited;
Ives v.
Hamilton, 92 U. S. 426;
Machine Company v. Murphy, 97 U. S.
120.
The remaining part of the plaintiffs' combination is the
conveyor shaft in the dust room, by which the fine meal dust,
after
Page 107 U. S. 648
it has been collected and saved in that room, is transferred to
the elevator and reunited with the rest of the meal. This conveyor
performs, indeed, a subordinate function, analogous to that which
the other conveying shaft and the elevator perform in regard to the
principal part of the meal. But the patentee, in his specification
and in his only valid claim, has made each of the conveyors, as
well as the elevator, a material part of the combination invented
and patented by him. He describes the conveyor shaft in the dust
room with the same particularity as the other parts of his
combination, and he claims it with equal distinctness.
As was said by MR. JUSTICE BRADLEY in
Water Meter Company v.
Desper, 101 U. S. 332,
101 U. S. 337,
"The courts of this county cannot always indulge the same
latitude which is exercised by English judges in determining what
parts of a machine are or are not material. Our law requires the
patentee to specify particularly what he claims to be new, and if
he claims a combination of certain elements or parts, we cannot
declare that anyone of these elements is immaterial. The patentee
makes them all material by the restricted form of his claim. We can
only decide whether any part omitted by an alleged infringer is
supplied by some other device or instrumentality which is its
equivalent."
The defendants' mill contains no conveyor shaft in the dust
room, and no mechanism which performs the same function of removing
the meal there collected. So far as the evidence shows, the meal
deposited upon the floor of that room remains there until it is
shoveled or swept up by manual labor. Its removal by such means
affords no equivalent, in the sense of the patent law, for the
automatic action described in the plaintiffs' patent.
Eames v.
Godfrey, 1 Wall. 78;
Murray v. Clayton,
L.R. 10 Ch. 675, note;
Clark v. Adie, id., 667, 675-676,
and 2 App.Cas. 315.
The new claim in the reissue being invalid, and the defendants
not having infringed the entire combination set forth in the
repetition of the old claim, the decree below can neither be upheld
upon the new claim nor modified so as to apply it to the other
claim, but must be reversed and the case remanded, with directions
to
Dismiss the bill.