A patent granted in 1871 for an improvement in post office boxes
was reissued in 1872 and again in 1877 and again in 1879. The
original patent limited the invention to a metallic frontage made
continuous by connecting the adjoining frames to each other, and
not merely to the woodwork. There was no mistake, and the original
patent was not defective or insufficient in either the descriptive
portion or the claims. In the progress of the first reissue through
the Patent Office, the applicant, on its requirement, struck out of
the proposed specification everything which suggested any other
mode of fastening than one by which the frames were to be fastened
to each other.
Held that the first reissue could not have
been construed as claiming any other mode of fastening; that
therefore the third reissue could not be construed as claiming any
other mode of fastening, and that, as the defendant's structures
would not have infringed any claim of the original patent, they
could not be held to infringe any claim of the third reissue.
In equity to restrain infringement of letters patent. Decree
dismissing the bill. Complainant appealed. The case is stated in
the opinion of the court.
Page 125 U. S. 451
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is a suit in equity brought by the Yale Lock Manufacturing
Company, a Connecticut corporation, against Thomas L. James to
recover for the alleged infringement of reissued letters patent No.
8,783, granted to the plaintiff as assignee of S. N. Brooks,
administrator of L. Yale, Jr., deceased, July 1, 1879, for an
"improvement in post office boxes," on an application for a reissue
filed May 23, 1879 -- the original patent, No. 119,212, having been
granted to Silas N. Brooks, administrator of Yale, September 19,
1871, on an application filed September 30, 1868, and having been
reissued to said Brooks, as administrator, July 9, 1872, as No.
4,963, on an application for reissue filed May 7, 1872, and having
been again reissued to said Brooks, as administrator, April 24,
1877, as No. 7,625, on an application for reissue filed April 19,
1875. The circuit court dismissed the bill, and the plaintiff has
appealed from its decree. Among other defenses, the answer sets up
that each of the three reissues was not for the same invention as
the original patent, but contained material new matter, and was
therefore invalid. Reissue No. 8,783 was the subject of a suit in
equity, brought in the Circuit Court of the United States for the
District of Connecticut, by the present plaintiff against the
Scovill
Page 125 U. S. 452
Manufacturing Company, in which Judge Shipman, in June, 1880,
gave a decree for the plaintiff as to the first and second claims
of the patent. 3 F. 228.
The original patent contained the following description of the
invention:
"This invention relates to an improvement in
the
construction of the fronts of post office boxes, and consists
in making said fronts, including the doors and box frames, of
metal,
and in securing the frames to the wooden pigeon-holes by
rivets connecting the frames with each other at top, bottom, and
sides. The body of these boxes is to be made of wood in the
usual manner -- namely a series of pigeon-holes -- but the front of
the box and the door frame are made of iron or other suitable
metal. Each door frame or box front is so made that it aids in
covering the edge of the wooden petition or pigeon-holes and is
connected with the other frames above, below, and on each side of
it in such manner that the frames make a continuous frontage, no
part of which can be removed (from the outside) without pulling
down other parts,
and breaking the woodwork, so that a
surreptitious removal of the front of any box, in order to get
possession of its contents, is practically impossible. Each
frame, made, as before stated, of metal, has all around it a flange
a a, which protects the outside of the woodwork. The sides
of the frame
b b enter and fit closely against the wood
forming the pigeon-holes, and may be continuous, or notched out at
intervals, and each frame has attached to it one leaf of two or
more hinges
c c. The door
is of iron, solid at
top, where the lock
d is attached, and having an opening
e below, in which a plate of glass is secured. I prefer to
locate rods
f f behind the plate to prevent the
introduction of a hand if the glass be broken,
and so to
form the door that, when shut, it enters within the frame
(
see g g), so that it cannot be lifted from its hinges.
When the frames are all in place, each frame is riveted through the
woodwork to its four neighbors (
see h h, Fig. 2), and thus
a continuous iron frontage
is formed. Each door
has a small spring bolt
i and a lock
d attached
to it, the two operating together and forming, in the hands of the
postmaster, a perfect safeguard against all entrance to the box by
means of the key, as is more particularly
Page 125 U. S. 453
set forth in
my application for a patent therefor, made
equal date with this."
That patent had two claims, as follows:
"1. The combination of several box frames with each other and
with pigeon-holes, as described, by means of rivets passing through
the frames and the woodwork entering between the said frames, the
combination being substantially as described."
"
2. the above, in combination with the flanges, making part
of the frames, and protecting and enclosing the exterior of the
woodwork, substantially as set forth."
The first reissue No. 4,963, contained the following description
of the invention:
"This invention relates to an improvement in the fronts of post
office boxes, and consists in making said fronts, including the
doors and box frames, of metal,
said box frames being
constructed so as to overlap and cover, in whole or in part, the
front edges of the wooden pigeon-holes to which they are
affixed. The body of the boxes is to be made of wood in the
usual manner,
viz., a series of pigeon-holes, but the
front of the box and the door frame are made of iron or other
suitable metal. Each door frame or box front is so made that it
aids in covering the edge of the wooden partition, or pigeon-holes,
and is connected with the other frames above, below, and on each
side of it in such manner that the frames will make a continuous
frontage, no part of which can be removed from the outside without
pulling down other parts. Each frame, made, as before stated, or
metal, has all around it a flange
a a, which protects the
outside
or edges of the woodwork. The sides of the frame
b b, enter and fit closely against the wood forming the
pigeon-holes, and may be continuous, or notched out at intervals,
and each frame has attached to it one leaf of two or more hinges
c c. The door
may be of any desirable metal,
solid where the lock
d is attached, and having an opening
e below, in which a plate of glass is secured. I prefer to
locate rods
f f behind the plate, to prevent the
introduction of a hand if the glass be broken. The door
is so
constructed that, when shut, it enters within the frame so
that it cannot be lifted from its hinges. When the frames are all
in place, each frame is riveted through the woodwork to its
four
Page 125 U. S. 454
neighbors (
see h h, Fig. 2), and
in this way
forms a continuous
metal frontage.
The door
for each frame has a small spring bolt
i and a
lock
d attached to it, the two operating together, and
forming, in the hands of the postmaster, a perfect safeguard
against all entrance to the box by means of the key, as is more
particularly set forth in
letters patent granted to me on the
24th day of October, 1871, and numbered 120, 177."
That reissue contained two claims, as follows:
"1. The combination of several box frames with each other and
with pigeon-holes, as described, by means of rivets passing through
the frames and the woodwork entering between the said frames, the
combination being substantially as described."
"
2. The combination of two or more metallic frames and doors
and locks with pigeon-holes, said frames having flanges which
protect and enclose, wholly or in part, the front edges of said
pigeon-holes."
In order to a comparison of the specification and claims of the
first reissue with the specification and claims of the original
patent, the parts of each which are not found in the other are
above put in italics.
The specification and claims of reissue No. 8,783 are as
follows:
"This invention consists in an improvement in the construction
of post office boxes, and its chief feature is the combination of a
tier of pigeon-holes made of wood with a continuous frontage of
metal, such frontage consisting of doors and their frames, which
latter cover the ends of the boards which form the pigeon-holes. A
series of wooden pigeon-holes, open at the rear and covered at the
front or on the outside by a permanent glass front, is very old,
and such a series was used for post office boxes, and in hotels as
a receptacle for keys, cards, letters, etc. There has also been in
use a series of wooden pigeon-holes, each provided at one end with
a door, as described in the patent granted to Jacob Beidler, may
28, 1866, but in this patent the door is described as hinged to the
wood, and the construction is consequently insecure, as an ordinary
pocketknife or small chisel will, even in inexperienced hands,
suffice to cut away the wood or pry off the door so that the boxes
may be entered. Pigeon-holes
Page 125 U. S. 455
made of iron or other metal are difficult to construct and very
costly, but such pigeon-holes, each provided with an ordinary metal
door, would be sufficiently secure. Such a degree of security at a
comparatively low cost is attained by covering the front of a
series of wooden pigeon-holes with a continuous metallic frontage
-- that is, a frontage which presents a continuous surface of metal
or, in other words, a surface which covers the ends of the wooden
pigeon-holes in such manner that those portions of the wood to
which the metallic frames are attached cannot be attacked when the
doors making part of the frontage are closed. In constructing
Yale's invention, the body of the boxes or the series of
pigeon-holes is to be made of wood in any usual manner, and the
fronts thereof,
viz., the doors and their frames, are to
be made of iron or other suitable metal. Each door frame is of such
size that it aids in covering the ends of the wooden partitions
that form the pigeon-holes to which it is applied, and these frames
(
see Fig. 1) are of such size and shape that where a
series of them are combined with a series of pigeon-holes, they
cover the whole of the ends of the wood. Each door frame is a plate
of metal
a a which, when in place, overlaps a part of the
ends of the woodwork surrounding the pigeon-hole, the outside of
the frame enclosing a greater area than the orifice of the
pigeon-hole, and each frame has an ear
b b which enters
the pigeon-hole, but this ear may be either continuous or notched
out at intervals. The door is of iron or other metal, solid at top
and having an opening
e below in which a plate of glass is
secured, and is hinged to the frame as at
c c. It is
preferable to locate rods
f f behind the plate so as to
prevent the introduction of a hand if the glass be broken and so to
form and hinge the door that, when shut, it enters within the
frame, so that it cannot be lifted from its hinges when shut. When
the frames are all in place, each frame is riveted or bolted to the
woodwork to fasten it thereto, and is also riveted or bolted to its
four neighbors to secure the frames to each other. (
See h
h, Fig. 2.) Thus, each frame is secured to the woodwork so
that it cannot be removed till the rivet or the woodwork is cut
away or broken. When all the frames are in place, a continuous
Page 125 U. S. 456
metallic frontage protecting the woodwork is presented upon the
outside of the series of boxes -- that is, the side where the
public can approach the boxes. Each door has a lock attached to it,
the bolt of which is actuated through the intervention of an arm
k in the manner and for the purposes set forth in a patent
granted for the invention of Linus Yale, Jr., on the 24th day of
October, 1871, No. 120,177. An iron door in an iron frame is not
claimed as of Yale's invention, as such doors have been used in
safe vaults and for furnaces."
"What is claimed as the invention of said Linus Yale, Jr.,
deceased, is 1. the combination, substantially as specified, of a
series of metallic door frames and doors with a series of wooden
pigeon-holes, whereby a series of post office boxes with a
continuous metallic frontage is formed; 2. the combination,
substantially as described, of a series of wooden pigeon-holes with
a series of metallic door frames and doors, and with rivets or
bolts which attach the frames to the woodwork, whereby a continuous
metallic frontage secured to the woodwork of pigeon-holes is
obtained; 3. the combination, substantially as described, of a
series of wooden pigeon-holes with a series of metallic door frames
and doors, and with rivets or bolts which attach the frames both to
the woodwork and to each other, the combination being substantially
such as described; 4. the combination of a metallic door with a
glass panel and with a frame to which the door is hinged, said
frame being so constructed as to cover a part of the ends of the
wooden partitions forming pigeon-holes, and being applied thereto,
the combination being substantially as specified; 5. the
combination of a post office box or pigeon-hole, open at the rear,
with a metallic frame and door to protect the front end of it."
Claims 4 and 5 were disclaimed by the plaintiff November 29,
1880. Claim 1 of the first reissue was the same as claim 1 of the
original patent, while claim 2 of the first reissue was in these
words:
"2. The combination of two or more metallic frames and doors and
locks with pigeon-holes, said frames having flanges which protect
and enclose wholly or in part the front edges of said pigeon-holes.
"
Page 125 U. S. 457
In the opinion of the circuit court in the present case, 20 F.
903, Judge Shipman says:
"The defendant, as postmaster in the City of New York, and not
otherwise, used in the post office provided and equipped for him by
the United States government wooden post office boxes with metallic
fronts and doors and open at the rear. They were manufactured by
the Johnson Rotary Lock Company. The doors and door frames made a
continuous metallic frontage. The door frames were secured to each
other and to the woodwork as follows: at about the middle of each
vertical edge of each door frame, there was a triangular hole
which, with the corresponding hole in the adjoining door frame,
made a rectangular hole, through which the metal fastening bolt,
completely filling such hole, was passed, the heads of such bolts
overlapping the contiguous edges of adjoining metallic fronts, and
the bolt itself passing through the wooden partition between the
adjoining pigeon-holes and being secured at the back thereof,
within the post office room, by a nut screwed upon the end of the
bolt. There were other boxes constructed substantially as above
described, excepting that the metal front of each pigeon-hole was
fastened to the woodwork by means of flanges and screws, but the
screws which attached the frames to the woodwork did not attach the
frames to each other. Neither series of boxes would have infringed
either claim of the original patent. Each series infringes the
first and second claims of the present reissue unless these claims
are to receive a construction which shall compel the metallic
frontage to be made continuous by rivets, bolts, or fastening which
shall attach the frames both to the woodwork and to each adjoining
frame. The plaintiff insists that these claims should not receive
such a construction, because it has been found that the invention
of the specification of the reissue, although a broader one than
was described in the original patent, is the invention which the
history of the art and the patent show should have been described,
and because the first reissue was promptly applied for, and, as
issued, included in its second claim, in the view of the plaintiff,
the same invention which is described in the first and second
claims of the reissue. The defendant
Page 125 U. S. 458
says, among other thing, that since the cases of
Miller v.
Brass Co., 104 U. S. 350, and
James v.
Campbell, 104 U. S. 356, it has been
settled by the Supreme Court that the Commissioner of Patents, in
allowing the first and second claims, exceeded his jurisdiction
because the invention which was first applied for and was 'complete
in itself' was clearly, specifically, and fully described in the
original specification and in the claim, and an expanded claim
would necessarily include an invention which was not sought to be
described in the original patent, and furthermore that there could
have been no inadvertence or mistake, because the original patent
and the accompanying documents show that the patentee 'did not
intend it [the patent] to embrace any such broad invention' as was
described in the reissue. The defendant also says that the
patentee, in his application for the first reissue, ineffectually
endeavored to alter the description of the invention so as to omit
the fastening of the door frames to each other as a necessary
integral part of the invention, and that the second claim of the
first reissue cannot fairly be construed to permit such omission,
and therefore that the patentee is estopped from insisting upon a
broad construction of the first and second claims of the present
reissue, and that these claims are objectionable on account of the
laches of the patentee. The 'file wrapper and contents' of the
first reissue were not a part of the record in the
Scoville case."
In order to show the changes made in the specification and
claims of the first reissue as they passed through the Patent
Office, the specification and claims of that reissue as granted,
and the specification and claims of the same as applied for, are
here placed [one under the other], the parts of the latter which
are not contained in the former being in italics and brackets, and
being numbered severally from 1 to 8:
"
As Applied For"
"This invention relates to an improvement in the fronts of post
office boxes, and consists in making said fronts, including the
doors and box frames, of metal, said box frames being constructed
so as to overlap and cover, in whole or in part, the front edges of
the wooden pigeon-holes to which they are affixed, [1
and in
securing said frames to said pigeon-holes by rivets or
screws]. The body of the boxes is to be made of wood in the
usual manner,
viz., a series of pigeon-holes, but the
front of the box and the door frame are made of iron, or other
suitable metal. Each door frame or box front is so made that it
aids in covering the edge of the wooden partition, or pigeon-holes,
and [2
may be] connected with the other frames above,
below, and on each side of it in such manner that the frames will
make a continuous frontage, no part of which can be removed from
the outside without pulling down other parts [3
or the several
frames may be secured or otherwise fastened directly to the wooden
pigeon-holes, each one independent of the other, if desired].
Each frame made, as before stated, of metal, has all around it a
flange
a a which protects the outside or edges of the
woodwork. The sides of the frame
b b enter and fit closely
against the wood forming the pigeon-holes, and may be continuous or
notched out at intervals, and each frame has attached to it one
leaf of two or more hinges
c c. The door may be of any
desirable metal, solid where the lock
d is attached and
having an opening
e below, in which a plate of glass is
secured. [4
Cast with the door, and over the opening e
for glass may be a network or ornamental open work admitting
light and at the same time preventing the introduction of a hand if
the glass be broken, or rods f f
may be located behind the
plate for the same purpose]. The door is so constructed that
when shut, it enters within the frame [5
see g g] so that
it cannot be lifted from its hinges. When the frames are all in
place, each frame [6
may be] is riveted through the
woodwork to its four neighbors (
see h h, Fig. 2), and in
this way form a continuous metal frontage, [7
or each separate
frame may be screwed or otherwise fastened to the woodwork
independent of its neighboring frames]. The door for each
frame has a small spring bolt
i and a lock
d
attached to it, the two operating together and forming, in the
hands of the postmaster, a perfect safeguard against all entrance
to the box by means of the key, as is more particularly set forth
in letters patent granted to me on the 24th day of October, 1871,
and numbered 120,177."
"What I claim as the invention of the said Linus Yale, Jr.,
deceased, is first the combination of several box frames with each
other and with pigeon-holes, as described, by means of rivets
passing through the frames and the woodwork entering between the
said frames, the combination being substantially as described;
second, the combination of two or more metallic frames and doors
and locks with pigeon-holes, said frames having flanges, which
protect and enclose, wholly or in part, the front edges of said
pigeon-holes; [8 third,
the combination of several metallic box
frames with each other and with pigeon-holes, said box frames being
secured to said pigeon-holes independently of each other, by means
of screws, or other similar fastening, as described.]"
"
As Granted"
"This invention relates to an improvement in the fronts of post
office boxes, and consists in making said fronts, including the
doors and box frames, of metal, said box frames being constructed
so as to overlap and cover, in whole or in part, the front edges of
the wooden pigeon-holes to which they are affixed. The body of the
boxes is to be made of wood in the usual manner,
viz., a
series of pigeon-holes, but the front of the box and the door frame
are made of iron or other suitable metal. Each door frame or box
front is so made that it aids in covering the edge of the wooden
partition, or pigeon-holes, and is connected with the other frames
above, below, and on each side of it in such manner that the frames
will make a continuous frontage no part of which can be removed
from the outside without pulling down other parts. Each frame,
made, as before stated, of metal, has all around it a flange
a
a which protects the outside or edges of the woodwork. The
sides of the frame
b b enter and fit closely against the
wood forming the pigeon-holes, and may be continuous or notched out
at intervals, and each frame has attached to it one leaf of two or
more hinges,
c c. The door may be of any desirable metal,
solid where the lock
d is attached, and having an opening
e below in which a plate of glass is secured. I prefer to
locate rods
f f behind the plate to prevent the
introduction of a hand if the glass be broken. The door is so
constructed that when shut it enters within the frame, so that it
cannot be lifted from its hinges. When the frames are all in place,
each frame is riveted through the woodwork to its four neighbors
(
see h h, Fig. 2), and in this way forms a continuous
metal frontage. The door for each frame has a small spring bolt
i and a lock
d attached to it, the two operating
together and forming, in the hands of the postmaster, a perfect
safeguard against all entrance to the box by means of the key, as
is more particularly set forth in letters patent granted to me on
the 24th day of October, 1871, and numbered 120,177."
"What I claim as the invention of the said Linus Yale, Jr.,
deceased, is 1. the combination of several box frames with each
other and with pigeon-holes, as described, by means of rivets
passing through the frames and the woodwork entering between the
said frames, the combination being substantially as described; 2.
the combination of two or more metallic frames and doors and locks
with pigeon-holes, said frames having flanges, which protect and
enclose, wholly or in part, the front edges of said pigeon-holes.
"
Page 125 U. S. 462
On the 8th of May, 1872, the Patent Office examiner called the
attention of the applicant to the fact that the following matters
in the new specification were not warranted by the original patent,
namely: the words "or screws," in the part marked "1;" the words
"may be," in the parts marked "2" and "s;" the parts marked "3,"
"4," and "7;" and the third claim, being the part marked "8."
On the 9th of May, 1872, the applicant appealed to the
Commissioner of Patents in person, because the examiner had refused
to examine the case on its merits in view of the introduction of
such new matter; but on the next day the applicant virtually
withdrew his appeal by amending his application as follows: he
erased part 1; he erased the words "may be," in parts 2 and 6, and
substituted in each case the word "is;" he erased parts 3 and 4,
and substituted for the latter the words, "I prefer to locate rods
f f behind the plate to prevent the introduction of a hand
if the glass be broken." He also erased part 7, and claim 3, part
8, and submitted the case for further action. The application was
then reconsidered and twice rejected, and from the second rejection
the applicant appealed to the examiners in chief, who reversed the
decision of the examiner and the reissue was granted, July 9,
1872.
In view of these facts, Judge Shipman, in his decision in the
present case, said:
"It is unquestionable that the patentee, when he made his
original application, intended to say that his invention did not
consist simply in making, by his combination of metallic doors,
door frames, and wooden boxes, a continuous metallic frontage, but
that it also consisted in the way in which the frontage was made
continuous,
viz., by the connection of the adjoining
frames with each other. His definite and exact specification shows
that he supposed that his patentable invention was thus limited. He
described with precision and clearness that his metallic frontage
was to be
Page 125 U. S. 463
so constructed that the frames were to be fastened to each other
at top, bottom, and sides, and not merely to the woodwork. 'A
specific invention, complete in itself,' was described, 'fully and
clearly, without ambiguity or obscurity.' Under the definitions
which are given in the decisions which have been referred to, and
in
Manufacturing Co. v. Ladd, 102 U. S.
408, of the inadvertence, accident, or mistake which
permits a reissue when a patent is said to be inoperative on
account of a defect or insufficiency in the specification which
arose through such inadvertence or mistake, and also of the nature
of the defectiveness or insufficiency which is meant by the
statute, there was no mistake, although the patentee might have
fallen into an error of judgment, or into an erroneous conclusion
of fact; and furthermore, the original patent, according to the
definitions contained in the recent and perhaps in the earlier
cases was not defective nor insufficient either in its descriptive
portion or in its claims. The second claim of the first reissue,
construed in the light of the contemporaneous facts which are shown
in the 'file wrapper and contents,' cannot be fairly construed to
mean a metallic frontage irrespective of the fastening of the
frames to each other through the woodwork. Were this claim to be
construed without study of the history of the application as it
made its way through the Patent Office and of the amendments which
it was compelled to undergo, it would probably receive the
construction which naturally belongs to the first claim of the
present reissue. But the patentee abandoned, under pressure from
the Patent Office, the clauses in the application which made the
fastening of the frames to each other to be optional, and abandoned
also a proposed third claim which described the box frames as
secured to the pigeon-holes 'independently of each other, by means
of screws, or other similar fastening.' In view of the fact that
the Patent Office excluded from the descriptive part of the
specification suggestions of any other method of fastening than
that by which the frames were to be fastened to each other, it
would be singular if the intent of the office was to include in the
second claim such other method of construction. If this claim has
properly, and the
Page 125 U. S. 464
applicant knew that it was intended to have, a narrow
construction (and of this knowledge I think there can be little
doubt), the plaintiff would not insist that the first and second
claims of the present reissue ought, in view of the decision in
Miller v. Brass Co., supra, to be so construed as to be
any broader than the third claim, which requires the combination of
door frames, doors, and pigeon-holes to be by means of rivets or
bolts which attach the frames both to the woodwork and to each
other."
It was held that there was no infringement, and, on that ground,
the bill was dismissed.
We concur in these views of the circuit court and in the result
which it reached. In view of the numerous recent decisions of this
Court on the subject of reissued patents, it would serve no good
purpose to expand or amplify the views so well expressed by the
judge at circuit. They are supported by the decisions in
Miller
v. Brass Co., 104 U. S. 350;
Mahn v. Harwood, 112 U. S. 354;
Parker & Whipple Co. v. Yale Clock Co., 123 U. S.
87;
Matthews v. Iron Clad Mfg. Co.,
123 U. S.
374.
Our conclusion makes it unnecessary to consider the defense
raised in the answer and urged in argument that the post office
boxes used by the defendant were used by him as postmaster of the
United States at the City of New York; that the boxes were the
property of the United States and were rented by it to sundry
persons; that the rent was a part of the postal revenue of the
United States, and was not a source of personal emolument to the
defendant; that it was not within the power of the defendant to
remove or alter the boxes, and that the use of such boxes at the
post office while the defendant was postmaster was not an
infringement of the patent by him and did not make him liable to
this suit.
Decree affirmed.