The question whether delay in applying for a reissue of a patent
has been reasonable or unreasonable is a question of law for the
determination of the court.
The action of the Patent Office in granting a reissue and
deciding that from special circumstances shown it appeared that the
applicant had not been guilty of laches in applying for it is not
sufficient to explain a delay in the application which otherwise
appears unreasonable and to constitute laches.
When a reissue expands the claims of the original patent, and it
appears that there was a delay of two years or more in applying for
it, the delay invalidates the reissue unless accounted for and
shown to be reasonable.
A bill in equity which sets forth the issue of a patent and a
reissue with expanded claims after a lapse of two or more years and
states no sufficient explanation of the cause of the delay presents
a question of laches which may be availed of as a defense upon
general demurrer for want of equity.
The facts which make the case are stated in the opinion of the
Court.
MR. JUSTICE MATTHEWS delivered the opinion of the Court.
This is a bill in equity to restrain by injunction the alleged
infringement by the defendant below of reissued letters patent
Page 115 U. S. 97
No. 10,264, issued to the complainant December 26, 1882, upon
the surrender of original letters patent No. 148,538, dated March
10, 1874, granted to the complainant for a new and useful
improvement in transom lifters. There was exhibited with the bill,
as parts thereof, copies of the original and reissued letters
patent. The defendant demurred to the bill for want of equity. The
demurrer was sustained and the bill dismissed. From that decree
this appeal was taken.
The original patent was confined to two claims, which are also
the first two in the reissued patent. The latter, which in its
specification and drawings is substantially the same with the
original, adds seven additional claims, making nine in all. Of
these, the bill alleges infringement as to the third, fourth,
fifth, sixth, and ninth.
The bill, after averring the issue of the original patent and
referring to the copy set out as an exhibit, contains the following
averments:
"That said letters patent, being afterwards found to be
inoperative or invalid by reason of an insufficient or defective
specification, which insufficiency or defect had arisen through
inadvertence, accident, or mistake and without any fraudulent or
deceptive intention on the part of your orator, were afterwards
surrendered and duly cancelled by the Commissioner of Patents; that
thereupon, and upon due application therefor, reissued letters
patent of the United States No. 10,264 were issued to your orator,
dated the 26th day of December, 1882, granting to him, his heirs,
or assigns, for the term of seventeen years from the said 10th day
of March, 1874, the full and exclusive right of making, using, and
vending to others to be used, the said invention, as by reference
to said reissued letters patent, here in court to be produced, and
a copy of the specification and drawings of which is hereto
attached, will more fully appear; that said reissued letters patent
were applied for in good faith, and not for any fraudulent or
improper purpose; that, as your orator verily believes, no other
person, firm, or corporation not acting under his authority ever
began the manufacture, sale, or use of transom lifters containing
or embodying said inventions or improvements until long after
your
Page 115 U. S. 98
orator had consulted counsel and taken steps toward applying for
said reissue and until long after your orator had applied for and
obtained a reissue of his previous patent on transom lifters,
having broader claims than any now contained in said reissue No.
10,264; that in making said application for said last-mentioned
reissue, your orator presented to the Patent Office a full sworn
statement of facts and circumstances connected with his applying
for and obtaining said original patent No. 148,538, and with his
delay in applying for said reissue; that at the first, said reissue
application was rejected on the ground that such statement did not
show or furnish any sufficient explanation or excuse for said delay
and that your orator had lost his rights to such a reissue by
reason thereof, the examiner citing
Miller v. Brass
Company, 104 U. S. 350, and other cases;
that on appeal, said decision or rejection was reversed by the
examiners in chief constituting the Patent Office Board of Appeal;
that in a long and full opinion said examiners in chief expressly
held that your orator had sufficiently and satisfactorily explained
said delay, and was still entitled to such a reissue, and that a
part of said opinion, referring to claims appearing in said
reissue, and now in controversy, was as follows:"
" All the above claims, moreover, have been rejected upon a
supposed legal bar to enlargement of claim, found in certain recent
decisions of the courts, mainly of the Supreme Court of the United
States, on which the other decisions cited are based. . . . We
find, upon review, that there was a grave defect in applicant's
patent and claims whereby it was inoperative to protect the
invention disclosed by him to the full extent to which he was
entitled. . . . We do not find any evidence of such laches or
delay, after ascertaining the defects of his patent, as to debar or
estop him from the benefits of the statute. We do not find in his
renewed application any attempt to enlarge the scope of his
invention beyond what was originally disclosed, but, on the
contrary, an attempt to secure protection for the invention
contained in the patent."
For the purpose of deciding the question of law arising on the
demurrer to the bill, it is not necessary to set out the several
claims in the original and reissued patents with a view
Page 115 U. S. 99
to a comparison. It is sufficient to say that it is not claimed
that the defendant is guilty of an infringement of either of the
claims in the original patent as repeated in the reissue, and it is
admitted that the claims in the reissued patent, infringement of
which is averred, are expansions of the original claims, not
covered by them but alleged nevertheless to be embraced within the
invention as described in the original patent. This is to say that
if, as a matter of fact, the patentee was the first and original
inventor of the parts and combinations covered by these claims, the
language of the specification to the original patent would
sufficiently embrace them.
It follows from this that if at the date of the issue of the
original patent, the patentee had been conscious of the nature and
extent of his invention, an inspection of the patent, when issued,
and an examination of its terms, made with that reasonable degree
of care which is habitual to and expected of men in the management
of their own interests in the ordinary affairs of life, would have
immediately informed him that the patent had failed fully to cover
the area of his invention. And this must be deemed to be notice to
him of the fact, for the law imputes knowledge when opportunity and
interest, combined with reasonable care, would necessarily impart
it. Not to improve such opportunity, under the stimulus of
self-interest, with reasonable diligence constitutes laches which
in equity disables the party who seeks to revive a right which he
has allowed to lie unclaimed from enforcing it, to the detriment of
those who have in consequence been led to act as though it were
abandoned.
This general doctrine of equity was applied with great
distinctness to the correction of alleged mistakes in patents, by
reissues, in the case of
Miller v. Brass Company,
104 U. S. 350. It
was there declared that where the mistake suggested was merely that
the claim was not as broad as it might have been, it was apparent
upon the first inspection of the patent, and if any correction was
desired, it should have been applied for immediately; that the
granting of a reissue for such a purpose, after an unreasonable
delay, is clearly an abuse of the power to grant reissues, and may
justly be declared illegal and
Page 115 U. S. 100
void; that in reference to reissues made for the purpose of
enlarging the scope of the patent, the rule of laches should be
strictly applied, and no one should be relieved who has slept upon
his rights, and has thus led the public to rely on the implied
disclaimer involved in the terms of the original patent, and that
when this is a matter apparent on the face of the instrument, upon
a mere comparison of the original patent with the reissue, it is
competent for the courts to decide whether the delay was
unreasonable and whether the reissue was therefore contrary to law
and void.
This doctrine has been reiterated in many cases since, and at
the present term has been reconsidered, and emphatically repeated
as the settled law in the case of
Mahn v. Harwood,
112 U. S. 354,
where it is said by MR. JUSTICE BRADLEY, delivering the opinion of
the Court:
"We repeat, then, if a patentee has not claimed as much as he is
entitled to claim, he is bound to discover the defect in a
reasonable time or he loses all right to a reissue, and if the
Commissioner of Patents, after the lapse of such reasonable time,
undertakes to grant a reissue for the purpose of correcting the
supposed mistake, he exceeds his power and acts under a mistaken
view of the law, and the court, seeing this, has a right, and it is
its duty, to declare the reissue
pro tanto void in any
suit founded upon it."
It was also there said that while no invariable rule can be laid
down as to what is a reasonable time within which the patentee
should seek for the correction of a claim which he considers too
narrow, a delay of two years, by analogy to the law of public use
before an application for a patent, should be construed equally
favorable to the public, and that excuse for any longer delay than
that should be made manifest by the special circumstances of the
case.
In the present case, the delay in applying for the reissue was
more than five years. No special circumstances to account for or
excuse the delay are set out in the bill. In lieu of such a
statement, the complainant avers that he presented to the Patent
Office a full, sworn statement of facts and circumstances connected
with his applying for and obtaining his original patent, and with
his delay in applying for the reissue, and that
Page 115 U. S. 101
the examiners in chief decided that he had sufficiently and
satisfactorily explained the delay, and was entitled to the
reissue. But this does not satisfy the law. The question as to
whether the delay had been reasonable or unreasonable is for the
court to determine upon the special circumstances brought to its
attention, and it cannot substitute the decision of the Patent
Office upon that question for its own. The very question is whether
the Patent Office has decided rightly, and, as it is a question of
power and jurisdiction, in which the delay shown is
prima
facie unlawful, it is incumbent on the party seeking to
establish the jurisdiction of the Patent Office to grant the
reissue, to show the facts on which it rests. In every case of a
reissue, that office, either expressly or impliedly, decides the
question of diligence on the part of the patentee, and the grant of
a reissue is a decision that the delay has not been unreasonable.
That, therefore, is the very question for judicial review, in every
suit to enforce a reissued patent in which the question is made,
and as we have seen, the settled rule of decision is that if it
appears, in cases where the claim is merely expanded, that the
delay has been for two years or more, it is adjudged to invalidate
the reissue unless the delay is accounted for and excused by
special circumstances which show it to have been not
unreasonable.
When, therefore, the injunction bill sets out or exhibits both
the original and the reissued patent and it appears from inspection
that the sole object of the reissue was to enlarge and expand the
claims of the original, and that a delay of two or more years has
taken place in applying for the reissue, not explained by special
circumstances showing it to be reasonable, the question of laches
is a question of law arising on the face of the bill, which avails
as a defense, upon a general demurrer for want of equity. This rule
of equity pleading applies in analogous cases, as where, it
otherwise appearing on the face of the bill that the claim is stale
or is barred by lapse of time and it is sought to avoid the effect
of such a bar on the ground that the fraud complained of was
concealed and has been only recently discovered, it is necessary
that
"the particular acts of fraud or
Page 115 U. S. 102
concealment should have been set forth by distinct averments, as
well as the time when discovered, so that the court may see
whether, by the exercise of ordinary diligence, the discovery might
not have been before made."
Beaubien v.
Beaubien, 23 How. 190;
Stearns v.
Page, 7 How. 819;
Moore v.
Greene, 19 How. 69;
Marsh v.
Whitmore, 21 Wall. 178,
88 U. S. 185;
Godden v. Kimmell, 99 U. S. 201;
Badger v.
Badger, 2 Wall. 87,
69 U. S. 95;
Wood v. Carpenter, 101 U. S. 135;
Landsdale v. Smith, 106 U. S. 391.
The decree of the circuit court dismissing the bill for want of
equity was correct, and is
Affirmed.