When an inventor takes out a patent founded on a claim which
does not include his whole invention, and rests for twelve years,
and then surrenders his patent and takes a reissue with a broader
claim under circumstances which warrant the conclusion that the act
is caused by successful competition of a rival, he will be held to
have dedicated to the public so much of his invention as was not
included in the original claim.
Miller v. Brass Company,
104 U. S. 300,
cited and followed.
This was a bill in equity brought by the appellees to enjoin the
appellants from infringing their rights as assignees of a patent
for an improvement in egg-beaters. The decree below granted the
injunction and determined the amount of profits. From this decree
the defendant below appealed. The invention and claims are set
forth in the opinion of the Court.
MR. JUSTICE MATTHEWS delivered the opinion of the Court.
This is a bill in equity filed by the appellees as assignees
of
Page 111 U. S. 320
Timothy Earle, for an injunction and an account against the
appellants, as infringers of reissued letters patent No. 6,542, for
an improvement in eggbeaters, dated July 13, 1875, for which the
application was filed June 8, 1875, the original No. 39,134, dated
July 7, 1863.
The bill was filed July 14, 1877, an interlocutory decree
declaring the infringement and granting a perpetual injunction was
pronounced July 9, 1879, and a final decree in favor of the
complainants confirming the master's report of the amount of
profits made by defendants was entered April 26, 1881. From this
decree the present appeal is prosecuted.
The following is a copy of the reissued letters patent, in which
the parts in italics are not in the original, and the parts
enclosed in [] are in the original, and excluded from the
reissue:
"To all whom it may concern:"
"Be it known that I, Timothy Earle, of Lincoln (
formerly
Smithfield), in the County of Providence and State of Rhode
Island, have invented [a]
certain new and useful
improvements in egg-beaters, and I do hereby declare that the
following specification, taken in connection with the drawing,
making a part of the same, is a full, clear, and exact description
thereof:"
"Figure 1 is a view of the beater. Figure 2 is another view of
the same, with the rack which works it shown. Figure 3 is a top
view of the same."
"Various devices have been employed for the purpose of beating
eggs more expeditiously than by the familiar hand process. One of
these devices consists of two wire frames, one within the other,
and made to revolve in opposite directions; another consists of a
propeller blade inside of a wire frame, the frame and blades being
made to revolve in opposite directions, and still another consists
of a propeller blade, which is made to rotate, while a pair of
beaters have at the same time a reciprocating motion."
"All these machines, and all others with which I am acquainted,
possess the common fault that the beaters, whether of wire or of
the form of propeller blades, do not cut the yolk and white of the
egg, but literally beat them."
"Now as the albumen of an egg consists of a peculiar thick
Page 111 U. S. 321
glairy substance, it can be worked more effectually with a
cutting instrument than with one which has a blunt edge. In fact,
so well is this understood that housewives [universally]
commonly make use of the blade of a knife for the
purpose."
"My invention is designed to obviate the difficulty referred to,
and consists in the use of
a revolving frame A,
formed
of thin strips of metal of the form shown, and mounted upon a
spindle B, around which it can freely rotate,
and also of
an outer
fixed frame C of the same general form as the
inner one, but large enough to permit the inner frame to rotate
within it.
The outer frame is attached to the spindle B,
and
with it furnishes a support
or frame for the
operative parts of the machine [for it]. The inner frame is
further provided with a series of cutters
or
blades [a a a a]
a a, etc., arranged in any manner
suitable for cutting through the fluid in many different [planes]
places. These cutters
or blades are simply pieces
of sheet tin or other suitable metal of the width of the inner
frame, and
are attached to the same by their ends, as is shown,
and they are all so placed that their edges shall cut the
material to be agitated when the frame A is rotated.
The blades
which form the outer fixed frame C are also placed in a similar
position, and when the machine is in operation, cut through the
current of material which is carried past them by the revolving
frame, and thus aid in the operation in a similar manner. Upon
the top of the frame A is attached a toothwheel D, through which,
by means of the rack E, figure 3, worked by the hand, a rotary
motion is given
to the inner frame A in alternate
directions.
The frame C at its upper end is so formed and
arranged in relation to the pinion D as to leave the proper space
between them, upon either side, to receive the rack E and serve as
a guide or bearing to keep the rack in gear with the pinion, and H
is a circular flange attached to the lower side of the opinion to
prevent the rack from falling down."
"
My invention also relates to the method of holding the
machine in position while it is used. In the previous machines for
this purpose, the machine has been generally attached to or
supported upon and in connection with the vessel which contained
the materials to be operated upon, thus requiring a specific kind
of vessel for the purpose, which, in effect, formed part of the
machine; or the frame of the machine was fixed to some stationary
object, with the revolving beater or beaters projecting downwards
below the machine
Page 111 U. S. 322
into the vessel which contained the matters to be treated,
the vessel being held below the machine and entirely detached from
it. But by my improvement the machine becomes a separate detached
implement which can be used in any vessel, and without any
mechanical fastening of the machine to the vessel or to any other
object. This part of my invention therefore consists in providing
the bottom of the fixed frame C of the machine with a foot F or
other suitable support, to rest upon the bottom of the vessel to
support the lower part of the machine and raise the revolving
beater frame A above the fixed frame C sufficiently to permit it to
revolve freely, and also providing the top of the machine with a
handle G by which the machine can be held upright upon the bottom
of the vessel by one hand, while the beater frame is operated by
the other, as is described."
"When the machine is to be used it is placed with its foot F
resting upon the bottom of the vessel containing the broken eggs.
The left hand bears upon the handle G and holds the machine in
position. The rack E held by the handle in the right hand is
engaged with the pinion D, and the proper motion imparted to the
frame A."
"It is obvious that a continuous rotary motion may be easily
imparted to the frame A by means of a crank and suitable gearing,
and the beneficial effect of the blades or cutters [a a a] A a
etc., would be obtained as well; but I prefer the method described
of communicating motion to the frame A, for the reason that the
machine is more easily cleaned and is more convenient for domestic
use."
"[What I claim as my invention and desire to secure by letters
patent is the use of a series of cutting edges a a a a when
attached to a frame A, which is capable of being rotated
substantially as described for the purpose specified.]"
"
What I claim is:"
"
1. The revolving beater-frame formed of thin plain blades
or cutters, arranged to cut edgewise through the material by their
rotation, substantially as described."
"
2. The combination of the fixed frame which contains and
supports the operative machinery, provided with a foot or support
at the bottom, the handle at the top, and suitable mechanism for
rotating the beater, substantially as described. "
Page 111 U. S. 323
The following is a copy of figure 2 annexed to the
specifications and sufficiently illustrates them:
image:a
The cutting portion of the appellant's beater consists of an
outer frame and inner frame, each of which is made to revolve
around a central spindle by means of a cog wheel and pinion. Each
frame is composed of two curved pieces of tin joined together, or
of one piece joined at its two ends so as to make nearly a circle;
these pieces are thin, plain, flat pieces of tin, and are so
arranged as to cut edgewise through the material by their rotation.
In neither the inner nor the outer frame are there any additional
blades or cutters like the blades a a a a.
Page 111 U. S. 324
It is represented in the following drawing:
image:b
The controversy in the circuit court seemed to be mainly on the
question of infringement, and that turned on the construction to be
given to the first claim of the reissued patent, no point being
made as to the second claim. It was insisted by the defendants
below that their device was not an infringement of the claim as
contained in the original patent, and that a fair construction of
the first claim in the reissued patent would limit it substantially
to the same thing. In deciding the point, the learned judge holding
the circuit court, said:
"The question of infringement of the first claim of the reissued
patent depends upon the construction of the claim. If it should be
properly limited so as to be confined to the frame with the cutters
or blades, which are described in the specification and in the
drawings, to-wit, a frame with the cutters a a a a, then there is
no infringement; but if the claim is to be construed so as to
include a beater frame formed of thin, plain blades, then the
invention which is recited in the first claim is found in the
defendant's egg-beater."
"The devices which were in use prior to the invention of the
plaintiff's assignor were composed of round wire, which, by their
rotation, broke, rather than cut the material. The part of
Page 111 U. S. 325
the invention which is the subject of the first claim consisted
in such an introduction of the knife blade of the housewife, and
the mechanism for operating the blade into an egg-beater, that the
egg could be rapidly cut, and the egg matter could be aerated, and
be beaten into froth. The original, and also the reissued
specification, dwelt upon the particular form of the cutters of the
inner frame, and the original claim limited the invention to the
cutters a a, etc., but the scope of the invention was larger, and
the principle was embodied in any revolving frame composed of thin
and plain, as distinguished from corrugated, cutting surfaces, so
arranged as when rotated to cut edgewise through the material,
provided the frame was constructed and arranged substantially in
the manner described in the specification. It is not claimed that
the reissue is void, upon the ground that it is for a different
invention from that shown or indicated in the original
specification, but such a construction is attempted to be given to
the reissued claim as would limit it to the precise language of the
surrendered patent. The patent was surrendered because the grant
was not coextensive with the invention, and it would be an
unnatural construction of the reissued patent, which should cramp
the claim within the limitations which had been discarded. In my
opinion, the natural meaning of the words which were used is to be
permitted, and, giving to the claim such a freedom of construction,
the defendant's device is an infringement."
We are quite satisfied that the difference between the original
claim and the first claim of the reissued patent, is substantial
and not verbal. The former is necessarily limited to the particular
device described as a frame, with a series of cutting edges
attached in the mode designated, and capable of rotation. The
latter embraces every revolving beater frame, formed of thin plain
blades or cutters, arranged to cut edgewise through the material by
their rotation. It is immaterial whether or not the latter might
have been covered by the language of the specification, as included
in the invention. We are dealing with the claims, and nothing else.
And it cannot be successfully contended that the original claim
implicitly contained all that is expressed in the claim of the
reissued
Page 111 U. S. 326
patent. The original claim has been made broader by the reissue,
so as to embrace the device used by the appellants, which was not
previously an infringement.
And that raises the question, whether, under the circumstances
disclosed by this record, the reissue is valid.
To avoid this question, it is, indeed, contended now by the
appellees, that the two claims, under examination, are identical:
that their apparent differences are merely literal; that their
meaning is the same, and this conclusion is thought to be reached
not by restraining the reissue to the language of the original, but
by a process of construction, by the use of supposed implications,
to expand the words of the original so as to cover everything
embraced in the reissue; the only alternative, indeed, that could
be adopted, to escape the inconsistency of maintaining that claims,
which were diverse, upon the question of infringement, were
identical, upon the question of the validity of the patent. But, as
already intimated, this position is not tenable. There is nothing
in the language or recitals of the original patent, nor are there
any just and reasonable inferences of which they are susceptible,
which justify a construction of the claim, that would embrace any
device, much less to include every mechanical and represented in
the drawings; much less to include ever mechanical arrangement
which embodies a cutting edge with a revolving frame, to cut
instead of break the egg material upon which it is meant to
operate.
The question then recurs, what are the circumstances which
affect the validity of the reissue, and how do they affect it? They
are few, but decisive. The original patent was issued July 7, 1863.
Eleven years after, in 1874, the competition of the appellant's
device became apparent and was felt. In 1875, application was made
for the reissue; the original patent was surrendered and the
reissued patent granted, July 13, 1875. Here is a delay of nearly
twelve years, without the offer of an explanation or excuse,
without even the suggestion of inadvertence or mistake in the
original application. The only inference that can be drawn is that
the discovery and experience of successful competition in 1874
suggested first, and led
Page 111 U. S. 327
to the discovery that the original claim did not cover
everything that might have been embraced, and was not broad enough
to maintain the monopoly desired but not secured.
This brings the case directly within the principle of
Miller
v. Brass Company, 104 U. S. 350, and
the numerous others which have followed it, including that of
Clements v. Odorless Apparatus Company, 109 U.
S. 641, all of which have been decided since the
interlocutory decree in this case was pronounced.
For these reasons
The decree of the circuit court is reversed, and the cause
is remanded, with directions to dismiss the bill, and it is so
ordered.