The second claim in reissued letters patent No. 5785, granted
March 10, 1874, to Edward W. Leggett for an improvement in lining
oil barrels with glue,
viz.:
"for a barrel, cask, etc., coated or sized by the material and
by the mode or process whereby it is absorbed into and strengthened
the wood fibre, substantially as herein described,"
is void as it is an expansion of the claim in the original
patent so as to embrace a claim not specified therein.
Page 149 U. S. 288
The first claim therein,
viz.,:
"the within described process of coating or lining the inside of
barrels, casks, etc., with glue, wherein the glutinous material,
instead of being produced by reduction from a previously solid
state, is permitted to attain only a certain liquid consistency and
is then applied to the package and permitted to harden thereon for
the first time, substantially as herein set forth and
described,"
is void: (1) because it was a mere commercial suggestion, and
not such a discovery as involved the exercise of the inventive
faculties, and (2), by reason of such prior use as to prevent the
issue of any valid patent covering it.
The invalidity of a new claim in a reissued patent does not
affect the validity of a claim in the original patent, repeated in
the reissue.
The poverty or pecuniary embarrassment of a patentee is not
sufficient excuse for postponing the assertion of his rights or
preventing the application of the doctrine of laches.
The case is stated in the opinion.
MR. JUSTICE JACKSON delivered the opinion of the Court.
This is a suit in equity, brought April 8, 1887, in the Circuit
Court of the United States for the Southern District of New York by
Edward W. Leggett, a citizen of New York, against the Standard Oil
Company, an Ohio corporation, for the alleged infringement of
reissued letters patent No. 5,785, granted to the complainant March
10, 1874, for an "improvement in lining oil barrels with glue."
The original patent, No. 143,770, was issued October 21, 1873.
The specification and claim of this original patent are as
follows:
"Be it known that I, Edward Wright Leggett, of the City, County,
and State of New York, have invented an improved process of coating
or lining the inside of barrels, casks, etc., for the purpose of
rendering the same impervious to water, oil, or any contained
substance, of which the following is a specification: "
Page 149 U. S. 289
"This invention relates to that class of processes employed for
the coating or lining of the insides of barrels for the
above-mentioned purpose, and consists in preparing from any
suitable glutinous substance glue, said glue being permitted to
attain but a certain consistency, and then applied directly as a
coating or lining."
"In carrying out my invention, I proceed as follows: take any of
the materials from which glue may be made and proceed in the usual
or any suitable manner for the manufacture of glue until the soup
has attained a certain consistency."
"This consistency must be considerably less than that which is
required wherein semi-fluid, solid, or cake glue is to be produced,
and while it is in this half-finished state, so to speak, it is
applied directly to the inside of the barrel or cask, where, after
due evaporation, it will be found that said cask or barrel is lined
thoroughly and completely with glue, inasmuch as a pressure of
steam generated by the heat applied is sufficient to force the thin
glutinous fluid well into the pores and recesses of the wood, thus
insuring a perfect lining."
"I am aware that barrels, etc., have been lined or coated with
glue when said glue has been subjected to process of reduction by
dilution from its original consistency to a sufficiently liquid
state, but I am not aware of any process wherein the glutinous
material has been permitted to attain only its proper consistency
and then applied directly, thus saving the time, labor, and expense
heretofore employed by continuing the manufacture of the glutinous
soup until it has attained a semifluid or gelatinous consistency,
thus necessitating a reduction by dilution and reheating before it
is fit for application, as set forth in this specification,
traveling over, as it were, the same ground, backward and forward,
two or three times, whereas by my process this trouble is entirely
dispensed with by operating as within described."
"This invention has nothing to do with the glue-lined barrel as
an article of manufacture, but relates particularly to a new and
inexpensive process of constructing a glue-lined barrel, cask,
etc."
"Heretofore, the glue has been taken in its complete state
Page 149 U. S. 290
as an article of manufacture, has been reheated, diluted, and
then applied, but such a process necessarily carries with it all
the expense of preparing the glue at first as an article of trade
or commerce."
"My process contemplates taking the glue when at a proper
consistency, and applying it to the inside of the package,
permitting it to harden for the first time upon that surface."
"I claim as my invention:"
"The within-described process of coating or lining the inside of
barrels, casks, etc., with glue wherein the glutinous material,
instead of being produced by reduction from a previously solid
state, is permitted to attain only a certain liquid consistency,
and is then applied to the package, and permitted to harden thereon
for the first time, substantially as herein set forth and
described."
An application for the reissue of this patent was filed February
2, 1874, and contained substantially the same specification. It
repeated the claim of the original patent, and in addition thereto
made a second claim for "a barrel, cask," etc., "coated or sized by
the material any by the mode or process substantially as herein
described." On February 6, 1874, the examiner rejected the second
claim thus made for the reason
"that a barrel coated by the process described has no features
or characters to distinguish it from a barrel coated with glue as
prepared in the ordinary way."
Thereafter the patentee amended the specification on which the
reissue was applied for by inserting the following:
"The distinguishing feature of this improvement may be found on
examination to be the superior integrity of the lining by the use
of soup glue. By its peculiar character, it is more freely absorbed
by the wood, penetrating into fiber deeper than by the ordinary
mode. Hence, the sizing or coating is not only upon the surface,
but penetrates into the wood, thereby presenting a thicker covering
to the action of the oil, and this sizing is not liable to be
broken off or cracked in handling the cask, as part of the coating
is absorbed into the fiber and cells of the wood, which gives
additional strength to it. "
Page 149 U. S. 291
The reissue was thereupon allowed March 10, 1874, with a second
claim for
"a barrel, cask, etc., coated or sized by the material and by
the mode or process whereby it is absorbed into and strengthened by
the wood fiber, substantially as herein described."
In both the original and reissued patents, the specifications
disclaim any idea or invention in a glue-lined barrel as such. The
first claim of the reissue, like the first claim of the original,
is limited to a process, and the specification of the original
declares that the invention "relates particularly to a new and
inexpensive process of constructing a glue-lined barrel, cask,
etc." The reissued specification broadens this description by
adding at this point the following words: "better adapted to the
purpose designed by coating and sizing, as set forth, than by the
ordinary means," and by the additional paragraph in the
specification of the reissue, above recited.
Among the defenses set up in the answer were (1)
noninfringement; (2) want of patentable novelty in the invention;
(3) anticipation thereof by various other specified American
patents, and (4) prior use of the patented process by a large
number of persons in New York, Pennsylvania, Ohio, and
Massachusetts, whose names are given.
After replication filed, and after some of the proofs had been
taken by the respondent on the question of prior use of the
patented invention by other persons, the complainant, by leave of
court, filed an amended bill setting up, in addition to the
averments of the original bill, the claim that, prior to the issue
of his original patent, he had disclosed his secret or process to
the defendant company on its promise that no use would be made of
the process or any part of it without his consent, but that the
defendant, disregarding this promise, did use said process without
his permission, and thereby violated its said agreement with him,
by reason whereof the defendant, in equity, should be estopped from
denying or in any way questioning the validity of the complainant's
invention and the letters patent issued therefor.
The defendant filed a supplemental answer denying the new
averments of the amended bill, and interposed the defenses of
Page 149 U. S. 292
the statute of limitations and of laches so far as the amended
bill sought or attempted to hold it liable in any way on the
alleged promise not to use complainant's secret or process.
Replication having been filed, and voluminous proofs taken on the
questions presented by the pleadings, the court, on the hearing
upon the merits, entered a decree dismissing the complainant's bill
with costs. From that decree the present appeal is prosecuted. The
opinion of the court below is reported in 38 F. 842, and the ground
upon which the decision proceeded was that there was a lack of
patentable invention in the thing patented.
We are of opinion that there is no error in the judgment of the
court below for various reasons. In the first place, the second
claim of the reissue, secured as it was by important changes in the
specification of the original patent, was a manifest enlargement or
broadening of the patent. It is not pretended that there was any
mistake, accident, or inadvertence in either the specification or
the claim of the original patent such as would render it void or
inoperative and warrant the granting of a reissue thereof with an
additional and enlarged claim. After the complainant had secured
his patent for the process, which was all he could claim under the
original specification, he ascertained that he was still not
protected against the use by the defendant of barrels, casks, etc.,
coated or lined by the process covered by his patent, and it was
then that he conceived the idea of a reissue which should be broad
enough to include not only the claim set forth in the original, but
also a claim for a barrel, cask, etc., coated or sized with glue,
by the process described. This was in effect an expansion of the
claims in order to embrace an invention not specified in the
original patent, and therefore rendered the second claim of the
reissue invalid under the well settled rule of this Court, as
announced in
Miller v. Brass Company, 104 U.
S. 350;
Mahn v. Harwood, 112 U.
S. 354;
Wollensak v. Reiher, 115 U. S.
96, and other cases. It is shown by the complainant's
own testimony that he procured the reissue for the purpose of
having it cover barrels, so as to make the defendant an infringer.
Furthermore, to give the second claim of the
Page 149 U. S. 293
reissue any validity in its application to the barrel cannot be
permitted in view of the rejection of the second claim first
presented in the application for reissue, and which necessitated
the modification or the specification as above stated, and which
declared that the "distinguishing feature of his improvement
may be found on examination to be the superior integrity,
of the lining by the use of soup glue," etc. The second claim being
allowed upon this amendment of the specification, if it had any
validity at all, cannot properly cover the coated barrel, cask,
etc., as a product, but would have to be limited in its operation
to the "glue soup," or material used in coating or sizing barrels,
and the alleged superiority thereof in being absorbed into and
strengthened by the wood fiber in some way distinguishable from and
superior to the coating with glue in the ordinary way. But there
is, however, no testimony in the record that barrels coated or
sized by the complainant's process are in fact distinguishable from
barrels lined in the ordinary way, or that barrels so "glued" are
any better than those coated by the old process. The testimony
shows that barrels lined under either the old or the new process
are practically indistinguishable.
This second claim of the reissue, being a manifest attempt to
broaden the original patent, cannot, in view of the amended
specification on which it was based or procured, be held to cover a
glue-lined barrel as an article of manufacture, which was
distinctly disclaimed by the original specification.
But the invalidity of this new claim in the reissue does not
impair the validity of the original claim, which is repeated, and
made the first claim of the reissued patent.
Gage v.
Herring, 107 U. S. 640,
107 U. S. 646.
The complainant's rights therefore must be determined upon the
validity of the claim of the original patent, and upon the estoppel
set up against the defendant, growing out of its alleged promise
not to use his process or secret without his consent. This latter
claim cannot possibly be sustained, for the reason that the
promise, if made, in no way misled or deceived the patentee to his
injury or damage. According to his own testimony, he had not
Page 149 U. S. 294
applied and had not thought of applying for a patent on his
process at the time of disclosing his secret, but shortly
thereafter he concluded that he had acted unwisely in imparting it
to the defendant, and at once applied for and obtained his original
patent for the very purpose of protecting himself against the
defendant's use thereof. He did not, therefore, rely upon that
alleged promise, but took proceedings by obtaining a patent to
directly guard against its violation. He did not disclose his
process to the defendant as an invention, or as one which he
proposed to patent. Under such circumstances, no estoppel arises
against the defendant from questioning the validity of the patent,
which was not then in existence and which the defendant did not
know was to be claimed as an invention.
So far as the alleged promise embodies any element of a contract
or of an undertaking to compensate the complainant for the use of
his so-called "secret," the statute of limitations and laches
interposed by the defendant was clearly a bar to any recovery on
that ground, because the alleged promise, if the proof was
sufficient to establish it, was made in September, 1873, and the
amended bill seeking relief thereon was not filed until January 13,
1888, some 14 or 15 years later. This lapse of time not only
constitutes a bar such as the statute of limitations interposes,
but shows such laches as will clearly preclude any right to relief.
McLean v. Fleming, 96 U. S. 245;
Speidel v. Henrici, 120 U. S. 377;
Galliher v. Cadwell, 145 U. S. 368,
145 U. S.
372.
No sufficient reason is given for this delay in suing. It is
sought to be excused on the ground of the plaintiff's poverty
during this period, but in the case of
Hayward v. National
Bank, 96 U. S. 611,
96 U. S. 618,
this Court said that a party's poverty or pecuniary embarrassment
was not a sufficient excuse for postponing the assertion of his
rights. So that this alleged promise of the defendant can in no way
avail the complainant in the present case either as a ground on
which to predicate any claim for relief or as an estoppel upon the
defendant from denying the validity of the patent.
In addition to these difficulties in the way of the
complainant's
Page 149 U. S. 295
succeeding in this case, his alleged invention was clearly
anticipated by the prior use and sale of liquid glue, or size, used
for various purposes, including that of coating barrels. The
patentee's claim of novelty is based upon the theory that, prior to
1873 and 1874, oil barrels were lined with the ordinary glue of
commerce dissolved into a hot liquid glue of the proper
consistency, and that the discovery made by him, after repeated
experiments, was that the same effect could be accomplished with
better and less expensive results by using the hot liquid or "glue
soup" at a proper consistency in the process of manufacture, before
it had been prepared for commercial purposes by drying, and that by
the use of "glue soup," labor, expense, and the loss incident to
the process of drying the jelly glue, so as to render it marketable
in that shape, were avoided. In other words, the claim of invention
in his patent is that previous to his discovery, the process in
lining barrels with glue had been to melt the dried glue of
commerce and pour it into a barrel, close up the barrel, and roll
it around until the inside surface thereof was thoroughly coated,
and that his discovery made it cheaper for the oil people to
manufacture their own glue, and use it in the same manner, but
before it had been dried.
This use of the liquid glue before drying differed in no
essential respect from the use of the liquid glue which had been
obtained by melting the dried glue of commerce, and certainly does
not rise to the dignity of invention. It would have occurred, and
did occur, as the testimony shows, to manufacturers of glue where
there was occasion or necessity for using glue in large quantities.
The alleged invention was properly held by the court below to be a
commercial suggestion that would naturally occur to anyone engaged
largely in the use of glue. It was well known that liquid glue had
these coating and sticking qualities before it had ever been dried
for commercial purposes, and to use it in its liquid state
certainly did not embody the quality of invention. The only object
or reason in drying the glue at all is to preserve it for
transportation and commercial purposes, it being, in its liquid or
jelly condition, susceptible to atmospheric influences, under
Page 149 U. S. 296
the operation of which it is more liable to be spoiled than when
dried. It may be true, as claimed, that the adhesive qualities of
glue before it is dried are somewhat superior to what they are
after the glue has been dried and then remelted for actual use. But
this is merely a question of degree, and the application of the
"glue soup" before drying cannot properly be called a discovery
such as involves the exercise of the inventive faculties.
But aside from this, and even admitting that such a discovery
and use of liquid glue would involve invention or patentable
novelty, it is clearly established by the evidence in the record
that there had been such a prior use of the alleged discovery as to
preclude the issue of any valid patent covering it. Whatever
advantages there may be in using liquid glue or "glue soup" before
it is dried over a similar use of remelted dried glue were well
known prior to the date of the complainant's application for the
patent in question. It is shown by the testimony that in various
general publications and trade journals published in Germany in the
years 1869, 1870, and 1871 and circulated in this country, the
advantages of using hot or liquid glue are set out, as well as the
description of the manufacture of glue jelly by different parties
and in different localities, and from extracts produced from these
journals, which are standard authorities on chemical industries and
contain information on the subject in question, it is shown that
manufacturers in Germany were making and selling liquid glue in its
jelly form for the same purposes and uses for which the glue in its
dried form is ordinarily used, and that it was considered better
and cheaper to use it in that condition rather than go to the
expense and labor of first drying it. In the glue industries both
in this country and in Germany, the fact was well recognized that
the adhesive qualities of glue, before it was dried, were superior
to what they were after the glue had been dried for commerce, and
that by using it before drying, there would be a great saving of
time, expense, and loss. It was shown that in some instances the
glue jelly was prepared and put away in hermetically sealed casks
for commercial use in the future.
Page 149 U. S. 297
In addition to these publications relating to the use of "glue
soup," it is shown that glue in that state or condition had been
used in the extensive glue factory of Peter Cooper & Company at
Williamsburg (now a part of Brooklyn), New York, as early as 1859
or 1860. It is proven that in the Cooper factory, barrels used for
the purpose of shipping neat's foot oil were lined or coated with
hot liquid glue that had never been dried, substantially in the
same manner and by the identical process described in complainant's
patent. In fact, the process on which he claims a patent was well
known at that factory long prior to the date of his alleged
invention, and no one seems to have had any idea that it was either
new or could be considered such a secret or discovery as involved
invention, or was entitled to protection.
It is furthermore shown by the testimony that precisely this
same process of lining oil barrels with hot "glue soup" was used in
the oil regions of Pennsylvania and Ohio as early as 1861.
It is not deemed necessary to go into this evidence more in
detail. It is not successfully impeached or contradicted by the
complainant. In addition to this, the complainant concedes in his
own testimony that his "glue soup" is the same thing as "sizing,"
which was in use long prior to the date of his invention by
manufacturers of writing and wallpaper.
It being thus clearly established that the use of liquid glue
was well known to glue manufacturers and oil refiners, and had been
actually applied in the very way and for the very purposes
described by the complainant long before the date of his alleged
invention, it is too clear for discussion that he could have no
valid patent which would cover a process for using liquid glue for
coating or sizing purposes as a new discovery or invention, and our
conclusion therefore is that the decree of the court below was
clearly correct, and should be
Affirmed.