Claims 2 and 3 of reissued letters patent No. 8876, granted to
Frank H. Fisher September 2, 1879, on an application filed March
29, 1879, for an "improvement in hydraulic mining apparatus," the
original patent No. 110,222, having been granted to Fisher December
20, 1870, namely,
"2. A ball-and-socket joint for connecting the discharge pipe of
a hydraulic mining apparatus with the end of a swivel section, B,
substantially as above described."
"3. The discharge pipe, E, having a semi-cylindrical or
ball-shaped enlargement at its base, in combination with a
corresponding cup-shaped socket, D, on the end of the horizontally
swiveling section, B, substantially as and for the purpose
described,"
are invalid.
A copy of the original patent being found in the record under a
proper certificate from the clerk of the court below, and there
being a stipulation under which it might have been introduced in
evidence from the proceedings in another case, it is to be
considered although there is no separate memorandum of its
introduction in evidence.
There was a first reissue of the patent, granted as No. 5193,
December 17, 1872, but no copy of it being found in the record, it
cannot be presumed that claims 2 and 3 of the second reissue were
found in the first reissue.
The plaintiffs having stated in their bill that the first
reissue or a copy of it was ready in court to be produced, it was
for them to put it in evidence if they desired to excuse the delay
of more than eight years and three months in applying for the
second reissue by showing that the first reissue, granted a little
less than two years after the date of the original patent,
contained claims 2 and 3 of the second reissue.
The question of such delay is to be considered as if there never
had been any first reissue.
Claims 2 and 3 of the second reissue being claims to
sub-combinations less than the whole combination covered by the
single claim of the original patent, and the descriptive parts and
drawings of the two specifications being alike, and it not being
indicated in the original that the invention consisted in anything
less than a combination of all the elements embraced in such single
claim, and the delay not being explained, such claims were unlawful
expansions of the original patent.
Bill in equity. Decree for complainants. Respondents appealed.
The case is stated in the opinion of the Court.
Page 125 U. S. 218
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is a suit in equity, brought in the Circuit Court of the
United States for the District of California by Frank H. Fisher and
Joshua Hendy against Richard Hoskin and others, for the
infringement of reissued letters patent No. 8,876, granted to Frank
H. Fisher, September 2, 1879, on an application filed March 29,
1879, for an "improvement in hydraulic mining apparatus," the
original patent, No. 110,222, having been granted to Fisher,
December 20, 1870. This reissue was a second reissue, and it
appears that there was a first reissue, No. 5,193, dated December
17, 1872, granted on the surrender of the original patent, and that
the second reissue was granted on the surrender of the first
reissue.
The bill of complaint sets forth the fact of the surrender of
the original patent, and the granting of the first reissue, and
that the first reissued patent is "ready in court to be produced"
by the plaintiffs, "or a duly authenticated copy thereof." The bill
also sets forth that the second reissue "was issued for the same
invention as that described in the original letters patent."
There was only one claim in the original patent, as follows:
"The swivel-jointed nozzle and pipes A B D E, combined, as
described, with the lever F, working through slotted post
f, strap
i, lever
c, and pawl and
ratchet
j k, for the purpose specified."
The second reissue contains three claims, as follows:
"1. The swivel-jointed sections A B and ball and socket jointed
section D E, combined, as described, with the lever F, working
through slotted posts
f, strap
i, lever C, and
pawl and ratchet
j K for the purpose set forth."
"2. A ball and socket joint for connecting the discharge pipe of
an hydraulic mining apparatus with the end of a swivel section B,
substantially
Page 125 U. S. 219
as above described."
"3. The discharge pipe E, having a semi-cylindrical or
ball-shaped enlargement at its base, in combination with a
corresponding cup-shaped socket D, on the end of the horizontally
swiveling section B, substantially as and for the purpose
described."
The claim of the original patent and the first claim of the
second reissue are substantially alike. It is not alleged that the
defendants have infringed the first claim of the second reissue, or
that their apparatus would have infringed the claim of the original
patent. The contention is that they have infringed claims 2 and 3
of the second reissue.
The answer sets up that the second reissue contains new matter
which was not contained in the original patent and which describes
and claims that of which Fisher "was not the inventor;" that Fisher
did not discover or invent or make any hydraulic machine, which
machine or combination included either a ball and socket joint, or
ball and socket jointed sections, or a discharge pipe having a
ball-shaped enlargement at its base; that his original patent did
not contain any description of either of those devices and did not
claim them in any combination or otherwise; that all that is said
in the second reissue about a ball and socket jointed section, and
ball and socket joints, and a discharge pipe with a ball-shaped
enlargement at its base, is new matter, which was not contained in
the original patent and was inserted in the second reissue by
Fisher fraudulently, and for the sake of deceiving and misleading
the public, he well knowing that no part of it was his invention,
and also knowing that it was not contained in the original patent,
and that, by reason of such fraudulent insertion of such new
matter, the second reissue is void.
Issue was joined and proofs were taken on both sides, and on the
17th of March, 1882, the case having been heard by the circuit
judge, an interlocutory decree was entered in favor of the
plaintiffs adjudging the second reissue to be valid, and that the
defendants had infringed upon the second and third claims of it,
and awarding a decree to the plaintiffs for profits and damages and
ordering a reference to a master to ascertain them, and a perpetual
injunction in regard to the
Page 125 U. S. 220
second and third claims. Afterwards a rehearing was ordered by
the circuit judge, to be had upon the same testimony. The rehearing
was had before the circuit justice and the circuit judge, and on
the 4th of September, 1882, an interlocutory decree was entered in
the same terms as the first interlocutory decree. On the report of
the master, a final decree was entered, March 7, 1884, awarding to
the plaintiffs a sum of money as profits derived by the defendants
from the infringement.
It is to be gathered from the record that Fisher had at some
time brought a suit against one or both of the present defendants
named Craig for the infringement of the first reissue, and at the
commencement of the taking of evidence on the part of the
plaintiffs in the present suit, the following stipulation is found
entered on the record:
"It is stipulated and agreed by and between the counsel for the
respective parties herein that the evidence taken and on file in
this court in the case of
Fisher v. Craig shall be
considered in evidence in this case, reserving, however, to each
party, the right to introduce such additional evidence as they may
desire. It is further agreed that in case any exhibits introduced
in evidence in said case of
Fisher v. Craig shall be
missing from the files, the same may be supplied, each party
supplying his own exhibits."
It does not appear by the record to what extent the evidence
taken and on file in the same court in the case of
Fisher v.
Craig thus referred to was used on the hearing of the present
case. There is found in the record a paper marked "Exhibit No. 5,"
being a certified copy from the Patent Office, certified March 8,
1873, of the original patent granted to Fisher, with its
specification and drawings. There is no separate memorandum in the
record of the introduction of this original patent in evidence, but
as it is found in the record, under a certificate of the clerk of
the circuit court that it is a part of the record and of the
proceedings in the cause, we must accept it as such, and if
necessary, assume it to have been a part of the evidence taken and
on file in the case of
Fisher v. Craig and covered by the
stipulation above referred to. That stipulation was to the effect
that the evidence
Page 125 U. S. 221
in
Fisher v. Craig should "be considered in evidence in
this case." The first reissue is not found in the record. The
plaintiffs do not appear to have put it in evidence, although the
bill avers that it is ready in court to be produced by them, or a
duly authenticated copy of it. Nor does it appear that the
defendants put it in evidence, although, as the suit of
Fisher
v. Craig was founded upon it, it is to be inferred that it
must have been part of the evidence taken and on file in that case,
and which, by the stipulation, was to be considered in evidence in
this case. Nevertheless, neither party has brought it before
us.
The plaintiffs contend that in order to determine the validity
of the second reissue, that must be compared with the first
reissue, on the surrender of which it was granted; that in the
absence of the first reissue, no such comparison can be made; that
therefore it must be presumed that the first reissue and the second
reissue were both for the same invention, and that it must also be
presumed that the second and third claims of the second reissue
were contained in the first reissue. But we are of opinion that,
the original patent and the second reissue being properly before
us, we have a right to compare them with each other, and that upon
such comparison the question of the validity of the second reissue
must be determined. Under the proffer in the bill of complaint, it
was for the plaintiffs to introduce the first reissue in evidence,
and if they desired to show an excuse for the delay of more than
eight years and three months after the granting of the original
patent in applying for the second reissue by showing that the first
reissue, granted a little less than two years after the date of the
original patent, contained substantially claims 2 and 3 of the
second reissue, they should have affirmatively made good that
excuse by themselves introducing the first reissue in evidence, or
bringing it before us in the record as a part of the evidence taken
and on file in the case of
Fisher v. Craig.
Under the allegations contained in the answer that the original
patent did not claim the devices covered by the second and third
claims of the second reissue and that said second and third
claims
Page 125 U. S. 222
are new matter not contained in the original patent, and that
the second reissue is void by reason of such new matter, the
question is fairly raised on the face of the original patent and
the second reissue as to the effect of the delay of more than eight
years and three months after the date of the original patent in
applying for the second reissue, the case standing, for the purpose
of such comparison, as if there never had been any first
reissue.
In the case of
Wollensak v. Reiher, 115 U. S.
96, the following propositions were laid down by this
Court:
(1) 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.
(2) 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.
(3) Where 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.
These principles are applicable to the present case, and require
that the decree of the circuit court should be reversed. The delay
is not accounted for by the plaintiffs nor shown to be
reasonable.
The descriptive parts of the specifications of the original
patent and the second reissue are substantially alike, and the
drawings of the two are the same, but claims 2 and 3 of the second
reissue are not found in the original patent. The claim in that
patent to the swivel-jointed nozzle and pipes A B D E, combined
with the other parts of the machine and to nothing else, was, under
the decisions of this Court, an abandonment and dedication to the
public of sub-combinations less than the whole combination, after
an unexplained delay such as that in the present case. The second
and third claims of the second reissue are claims to such
sub-combinations. It was not indicated in the specification of the
original patent that Fisher considered his invention as consisting
in anything less
Page 125 U. S. 223
than a combination of all the elements embraced in the
combination claimed in that patent.
In the recent case of
Parker & Whipple Co. v. Yale Clock
Co., 123 U. S. 87, it
was held that what was suggested or indicated in the original
specification, drawings, or Patent Office model is not to be
considered as a part of the invention intended to have been covered
by the original patent unless it can be seen from a comparison of
the original and the reissued patents that the invention which the
original patent was intended to cover embraced the things thus
suggested or indicated in the original specification, drawings, or
Patent Office model and unless the original specification indicated
that those things were embraced in the invention intended to have
been secured by the original patent, and that, where it did not
appear that any attempt had been made to secure by the original
patent the inventions covered by the new claims in the reissue,
those inventions must be regarded as having been abandoned or
waived, so far as the reissue was concerned.
The plaintiffs contend that it appears from the testimony of
Fisher that it was the result of the suit of Fisher Craig, brought
on the first reissue, which convinced him that that reissue was
inoperative, and that he took out the second reissue to remedy the
defect in the first, and that the delay in taking out the second
reissue is explained by the fact that the suit on the first reissue
was pending. But we have not before us the proceedings in the suit
of
Fisher v. Craig to such an extent as to be able to form
any intelligent judgment upon the question as to how far the
proceedings in that suit bear upon the question of the delay in
taking out the second reissue. If the plaintiffs desired to avail
themselves of those proceedings to show such excuse, it was their
duty to have brought them before us, if they were a part of the
evidence in this case, under the stipulation above referred to.
Although the defendants did not incorporate them in the record, and
although the clerk of the court below, in making his return to this
Court, certifies that what is contained in the transcript is a
"full, true, and correct copy of the record (excepting models),
and of all proceedings in the above and therein entitled cause,
and
Page 125 U. S. 224
that the same together constitute the transcript on appeal to
the Supreme Court of the United States in said cause,"
such certificate being entitled in the present cause, it was
perfectly competent for the plaintiffs to have brought before this
Court, and it was their duty to have done so, by certiorari, any
necessary parts of the record which the defendants had omitted to
bring before us.
The decree of the circuit court is
Reversed, and the case is remanded to the Circuit Court for
the Northern District of California with a direction to dismiss the
bill, with costs.