3. In such case, the court ought not to be required to explore
the history of the art to ascertain what the patentee might have
claimed; he is bound by his statement describing the invention.
4. A patentee cannot claim in a patent the same thing claimed by
him in a prior patent, nor what he omitted to claim in a prior
patent in which the invention was described, he not having reserved
the right to claim it in a separate patent and not having
seasonably applied therefor.
5. Letters patent for a machine cannot be reissued for the
purpose of claiming the process of operating that class of
machines, because, if the claim for
Page 104 U. S. 357
the process is anything more than for the use of the particular
machine patented, it is for a different invention.
Powder
Company v. Powder Works, 98 U. S. 126,
reaffirmed.
6. The government of the United States has no right to use a
patented invention without compensation to the owner of the
patent.
7.
Query, can a suit be maintained against an officer
of the government for using such an invention solely in its behalf,
and must not the claim for compensation be prosecuted in the Court
of Claims.
The facts are fully stated in the opinion of the Court.
MR. JUSTICE BRADLEY delivered the opinion of the Court.
This case is founded on a bill in equity filed by Christopher C.
Campbell, the complainant below, against Thomas L. James, United
States postmaster in and for the City of New York, to enjoin him
from using a certain implement for stamping letters which the
complainant claims to have been patented to one Marcus P. Norton,
by letters patent dated April 14, 1863, and surrendered and
reissued on the 23d of August, 1864, and again surrendered and
reissued on the 3d of August, 1869, and again, finally, on the 4th
of October, 1870. The complainant claims to be assignee of Norton,
the patentee. Other persons claiming an interest in the patent were
made parties to the suit. The circuit court rendered a decree in
favor of the complainant and adjusted the rights of the several
parties to the amount of the decree. The defendant, James,
appealed. The other parties, not being satisfied with the decree as
it affected their mutual interests, also appealed. The case is now
before us in all its aspects. Supposing the court below to have had
jurisdiction of the case, the first question to be considered will
be the liability of the principal defendant, James, to respond for
the use of the machine or implement in question.
That the government of the United States when it grants
Page 104 U. S. 358
letters patent for a new invention or discovery in the arts,
confers upon the patentee an exclusive property in the patented
invention which cannot be appropriated or used by the government
itself without just compensation, any more than it can appropriate
or use without compensation land which has been patented to a
private purchaser, we have no doubt. The Constitution gives to
Congress power
"to promote the progress of science and useful arts by securing
for limited times to authors and inventors the exclusive right to
their respective writings and discoveries,"
which could not be effected if the government had a reserved
right to publish such writings or to use such inventions without
the consent of the owner. Many inventions relate to subjects which
can only be properly used by the government, such as explosive
shells, rams, and submarine batteries to be attached to armed
vessels. If it could use such inventions without compensation, the
inventors could get no return at all for their discoveries and
experiments. It has been the general practice, when inventions have
been made which are desirable for government use, either for the
government to purchase them from the inventors and use them as
secrets of the proper department or, if a patent is granted, to pay
the patentee a fair compensation for their use. The United States
has no such prerogative as that which is claimed by the sovereigns
of England, by which it can reserve to itself, either expressly or
by implication, a superior dominion and use in that which it grants
by letters patent to those who entitle themselves to such grants.
The government of the United States, as well as the citizen, is
subject to the Constitution, and when it grants a patent, the
grantee is entitled to it as a matter of right, and does not
receive it, as was originally supposed to be the case in England,
as a matter of grace and favor.
But the mode of obtaining compensation from the United States
for the use of an invention, where such use has not been by the
consent of the patentee, has never been specifically provided for
by any statute. The most proper forum for such a claim is the Court
of Claims, if that court has the requisite jurisdiction. As its
jurisdiction does not extend to torts, there might be some
difficulty, as the law now stands, in prosecuting
Page 104 U. S. 359
in that court a claim for the unauthorized use of a patented
invention, although where the tort is waived and the claim is
placed upon the footing of an implied contract, we understand that
the court has in several recent instances entertained the
jurisdiction. It is true it overruled such a claim on the original
patent in this case, presented in 1867, but according to more
recent holdings, it would properly now take cognizance of the case.
The question of its jurisdiction has never been presented for the
consideration of this Court, and it would be premature for us to
determine it now. If the jurisdiction of the Court of Claims should
not be finally sustained, the only remedy against the United
States, until Congress enlarges the jurisdiction of that court,
would be to apply to Congress itself. The course adopted in the
present case, of instituting an action against a public officer,
who acts only for and in behalf of the government, is open to
serious objections. We doubt very much whether such an action can
be sustained. It is substantially a suit against the United States
itself, which cannot be maintained under the guise of a suit
against its officers and agents except in the manner provided by
law. We have heretofore expressed our views on this subject in
Carr v. United States, 98 U. S. 433, where
a judgment in ejectment against a government agent was held to be
no estoppel against the government itself.
But as the conclusion which we have reached in this case does
not render it necessary to decide this question, we reserve our
judgment upon it for a more fitting occasion.
The subject matter of the patent on which the bill in this case
was founded is an implement or stamp for postmarking letters and
cancelling revenue and postage stamps. The original patent, dated
April 14, 1863, exhibited two stamps connected together by a
cross-bar which was attached to a handle, one stamp being intended
for printing the postmark and the other for cancelling the postage
stamp, both operations being performed by a single blow. The stamps
consisted of small hollow belocks, or cylinders, in which were
inserted and fastened the types which produced the impressions
desired. In one were placed the lettered types which produced the
postmark, and in the other a single type which blotted or
Page 104 U. S. 360
cancelled the postage stamp. The patentee, in his specification,
described the invention as follows:
"The nature of my improvements, herein described, consists in
the employment and combination of a device for cancelling postage
or other stamps by means of wood, cork, or similar material
inserted in a tube or recess therein for the purpose of effacing or
blotting such stamps with indelible ink. It also consists in the
combination of a cancelling device, having wood, cork, rubber, or
any similar material for the type or blotter therein, with any
postmarking device so as to blot, cancel, or efface postage stamps
with indelible ink at the same time and operation of postmarking of
letters, packets, &c., &c."
"To enable others skilled in the art to which my invention
relates to make and use the same, I will here proceed to describe
the construction and operation thereof, which is as follows,
to-wit: I construct the postmarking stamp (D) of any suitable
material. (E), Fig. 3, is the mortice or recess of suitable
dimensions to receive the type for the month, the day of the month,
and the year, around which is the name of the place where used, and
is the same as the postmarking device described in my letters
patent, bearing date the sixteenth day of December, 1862, and which
is secured to the cross-piece (B) in the same manner and by the
same means as described and set forth in the said patent, which is
also the case with the cancelling device (C)."
"I construct the cancelling stamp or device (C) of any suitable
material, of any size required in diameter, and in length to
correspond to the postmarking device (D). (F), Fig. 3, is the tube
or recess in the device (C) for the purpose of receiving the
blotting or cancelling device (G), Figs. 2 and 5, which device is
made of wood, cork, rubber, or similar material, so as to closely
fit the said tube or recess (F), Fig. 3. The face of this device
may contain a plan or form for cancelling with indelible ink, like
that shown at Fig. 2, or it may have any plan or form for that
purpose thought best to devise or use. This device (G) may project
somewhat below the lower end of the said tube (F), as seen at Fig.
5, and may also project below the face of the postmarking or rating
device (D), Figs. 2 and 3, and it may be driven out of the said
tube or recess by means of a pin or bolt operating through the hole
(A), Figs. 3 and 5, for the purpose of repairs, or to replace it by
a new one. The said tube or recess (G) may be any size in diameter
required or any depth desired. The said cancelling stamp or device
(C)
Page 104 U. S. 361
being thus constructed with cork, rubber, or other elastic
substance for type or blotter, will receive and hold on the face
thereof ink in quantities sufficient to blot or cancel the postage
stamp in such manner as to prevent the possibility of the said
postage stamp being cleansed of the cancelling ink by any chemical
or other process, for the said ink would be so effectually put
thereon that any attempts to remove it therefrom would entirely
destroy the said postage stamp, and thereby render the same
incapable of a second or reuse. The said cork, rubber, or other
elastic substance, as aforesaid, will render the said stamp capable
of an easy and rapid use, for there being a yielding of the same
when the blow is given, the operator will not tire as soon by a
constant or continued use of the same as though it were of solid
metal, and the same will greatly aid in raising the entire stamp
from the paper and postage stamp when the impression shall have
been given by the operator. The said blotter or type can be more
easily repaired or replaced by a new one at less expense than if
made of solid metal. The said cork, rubber, or other elastic
material may extend upward to the said cross-bar (B), and there be
connected to the same by a screw or pin bolt, if desired, which
will be the same in effect and in operation."
"Having thus described my invention and improvements in marking
and cancelling stamps, what I claim and desire to secure by letters
patent of the United States of America, therein, is:"
"1. The cancelling device (C) with wood, cork, or rubber type or
blotter (G) therein, or any device substantially the same, so as to
cancel the postage stamp with indelible ink, substantially as
herein described and set forth."
"2. I also claim the cancelling device (C) with wood, cork, or
similar material forming the type or blotter (G) therein, in
combination with the cross-piece (B), and with the postmarking
device (D), substantially as herein described and set forth."
We have given the description and claim in full for the purpose
of better comparing it with the reissued patent on which the suit
was brought, and which is dated Oct. 4, 1870. It will be seen that
the invention claimed is very specific and definite in its
character. In the first place, the cancelling device is claimed
separately, consisting of a hollow tube in which is inserted the
cancelling type or blotter made of wood, cork, rubber, or other
elastic substance. The nature of the substance of which the blotter
was to be made is emphasized thus:
Page 104 U. S. 362
"The said cork, rubber, or other elastic substance as aforesaid
will render the said stamp capable of an easy and rapid use, for
there being a yielding of the same when the blow is given, the
operator will not tire as soon by a constant or continued use of
the same as though it were of solid metal, and the same will
greatly aid in raising the entire stamp from the paper and postage
stamp when the impression shall have been given by the operator.
The said blotter or type can be more easily repaired or replaced by
a new one, at less expense than if made of solid metal."
It is plain, therefore, that elasticity in the material of which
the blotter was to be composed was a distinctive feature of the
blotting device thus separately claimed. Besides the advantages
referred to in the foregoing extracts, its superior adaptability to
hold indelible ink was evidently regarded by the inventor as
important. From the facts appearing in the case, it is quite clear
that a separate claim of this blotting device could not have been
sustained had it not presented these special characteristics -- had
it not, in fact, contained all the elements it did contain. The
patentee himself, as will be more fully seen hereafter, had,
shortly before his application for this patent, obtained a patent
for a double stamp exactly like the one patented in this, except
that the blotter type was made of "steel, or other material which
would answer the purpose." Of course he could not claim a blotter
of like material in the patent now under consideration. And the
record is full of evidence to show that hand types for stamping
letters and other characters with or without the use of ink had
long been constructed of almost every kind of material. The general
form of the instrument was old. Stamps fastened to what is called a
brad awl handle, adjusted thereto centrally, so as to balance the
pressure, was used for seals and other instruments for making
impressions of every sort from time immemorial, and hand stamps of
the same general description, having a cylindrical type holder in
place of a seal, made hollow for inserting and holding the type,
had long been used in the Post Office Department. It was not
without good cause, therefore, that the separate claim for the
cancelling device, as a distinct invention, was confined to an
elastic type or blotter enclosed in a hollow tube. In like manner,
the combination of devices in
Page 104 U. S. 363
the entire instrument, forming the subject of the second claim,
was necessarily specific in its character, being restricted by the
special construction of the cancelling device. The specific form of
a cross-bar to sustain the type holder, and balance the effect of
the blow or pressure when making the impression, was substantially
contained in the common hand type, long before used for printing
names on linen with indelible ink. This instrument consisted of a
metallic trough or receiver to hold the type, the bottom of which,
at its middle part, was attached to a wooden brad awl handle.
Inserting the types for a postmark in one end of this device, and
the type for blotting the postage stamp in the other, it would be a
complete double stamp like that claimed by Norton, the patentee.
The fact that it might require a stronger piece of metal for post
office uses than was required for stamping letters on cloth, or
that the type holder would be better adapted to the purpose by
being divided into two compartments, does not detract from the
substantial similarity of the instruments. Given the idea of
stamping the postmark and blotting the postage stamp with one
instrument at a single blow, it required but little invention, in
view of what was then in common use, to adjust the printing
apparatus to the handle by means of a block, shoulder, or
cross-bar, or other similar device. The needs and requirements of
the instrument would soon be developed, and manifest themselves to
any skilled workman in that branch of mechanics.
The evidence does not show to our satisfaction that Norton was
by any means the first inventor of a double post office stamp, so
constructed as to make the postmark and cancel the postage stamp at
one blow. If that fact was important, the burden of proof was on
the complainant to show that Norton's invention antedated those of
others proven in the cause, of which there were several independent
of each other. But there is no satisfactory proof that Norton ever
produced, prior to 1862, or, at most, prior to 1861, any other
double stamp than one which he patented in 1859. In connection with
one C. A. Haskins, he obtained a patent in October, 1857, for a
hand stamp attached to a standard with a projecting arm, and
provided with a spring to lift it from the paper automatically,
after the blow which made the impression was given. This stamp was
an elaborate
Page 104 U. S. 364
and complicated contrivance of wheels and cylinders for
arranging and manipulating the types for making letters and figures
showing the month and day of the month in the postmark. It had no
hint of any secondary apparatus for effacing a postage stamp at the
same time. But in August, 1859, Norton obtained a patent for the
use of his assignees, Reynolds and Low, which did contain a device
for effacing the postage stamp. Low seems to have been associated
with him in the patent of 1857 in the way of furnishing money, but
what was the nature or extent of the assignees' real interest in
the patent of 1859 is not made to appear. The application for this
patent was dated May 3, 1859, but when filed in the Patent Office
is not shown. The principal feature of the stamp described in this
patent was also an elaborately contrived device for arranging the
types for the letters and figures in the postmarking stamp,
something in same line with that described in the patent of 1857,
no claim for which, however, was allowed. But to the postmarking
stamp, which was fixed to the handle in the ordinary way, was
attached on one side, entirely outside of the bearing of the
handle, a flat piece of metal to be used as a blotter, for which,
in combination with the postmarking stamp, a claim was allowed. It
is clear to us that this was the stamp to which Norton alluded, and
which he asked to have the privilege of testing in the post office
at Troy, in his letter to the Assistant Postmaster General of the
11th of April, 1859, on which much stress has been laid by the
complainants. The letter does not give a description of the stamp
he wished to test, but it concludes with these words:
"I herewith enclose you an envelope containing a postmark from
the stamp on the left, and an erasure upon the stamp made at the
same operation of postmark. As
now constructed, is
believed to work well."
This is a clear intimation that what he desired to have tested
had been recently brought to its existing form. In a former part of
the letter, he had said:
"While the order given by your department was in force, I was
unable, in consequence of sickness, to thoroughly test my stamp. It
was used upon about three thousand letters only during that time. I
have since made some changes in it which seem to make it a much
better thing for the purpose designed. Now I ask the opportunity to
test
Page 104 U. S. 365
it without any expense to the government."
An order was made by Mr. King, the Assistant Postmaster General,
on the 4th of May, 1859, authorizing the postmaster at Troy to use
for postmarking letters at his office for the term of three months
"Norton's improved marking stamp." The application for the patent
had been prepared and sworn to the day previous to this order,
namely, May 3, 1859. In this application, the description of the
invention commences thus:
"The nature of my invention consists in constructing, combining,
and arranging a hand stamp, hereinafter described, so as to contain
a cylinder with the initials of each and every month in a year, and
two other cylinders with figures for the respective days of each
and every month; also a cylinder with figures to represent ten
years, more or less as the case may be, which cylinders shall
revolve upon the same shaft with each, and within a stationary form
of type, and thereby print the month, the day of the month, and the
year in connection with each, and each in connection with and at
the same time of the printing of the subject matter upon the
aforesaid stationary form of type. It also consists in attaching a
blotter, hereinafter described, to the hand stamp aforesaid, upon
one or two sides thereof, for the purpose of cutting, blotting,
cancelling, or effacing 'the frank' or postage stamp, so as to
prevent a second use of the same, while at the same time the name
of the 'post office,' the year, the month, and the day of the month
is printed upon the envelope and one side of the said frank or
postage stamp, thereby giving a good impression of the same and
prevent undue wear of the said postmarking stamp in consequence of
being used upon the uneven surface made by the said frank or
postage stamp."
Now if Norton had, as he pretends, invented, as early as 1854,
the stamps for which he took out his subsequent patents in 1862 and
1863, it is hardly conceivable that he should have taken out the
patents for 1857 and 1859 in the form in which they stand. The fact
that he did take them out reduces it almost to a demonstration that
he had not invented any such stamps at this time.
It is true he produces a caveat filed by him in 1853, which has,
or had, an amendment bearing date "Tinmouth, Vt., Aug. 7, 1854,"
which amendment contained a full description of
Page 104 U. S. 366
the double stamp as finally exhibited in his patent of 1863, and
the reissue thereof. But this amendment was shown to have been
surreptitiously introduced by him amongst the papers of the office
certainly as late as 1864, ten years after its pretended date. In
his examination as a witness in this cause he admitted that he made
the paper referred to in the summer of 1864, when his assignees,
Shavor and Corse, were applying for a reissue of the original
patent now in question, and that it was used in that application;
but he pretends that it was a copy of a paper which he made and
sent to the Patent Office in 1854. No such original paper, however,
has ever been found in the Patent Office, and on a regular charge
for the offence of making the surreptitious paper and introducing
it amongst the files, he was found guilty in September, 1871, and
debarred, by order of the Commissioner of Patents, from further
access to the papers of the office.
This amendment caveat, therefore, as well as the testimony of
Norton on the subject, may be laid out of view.
A witness by the name of Sherwood, a machinist and modelmaker,
was examined, who produced a sheet or two of items of account,
copied from his books, showing charges against Norton for work on
"stamps" in 1857, 1859, 1860, and 1862. There were four items in
1857 under date of May, for certain hours of work, charged thus:
"May 8. To three hours, finish stamp." There was a large number of
items of similar character in the other years named, particularly
in January and March, 1859, and August, September, November, and
December, 1862, corresponding, as will be observed, with the times
when Norton must have been getting up his models for his different
patents. The witness was unable to distinguish the kind of stamps
he worked on at these different dates, except that he professed to
feel quite sure that the first one would postmark a letter and
cancel a stamp thereon at the same time. Describing, on his
cross-examination, the stamp which he thus referred to, he
says:
"It was a dating wheel stamp, the wheels giving the dates, with
a die for the office and year in the top of the frame that held it,
blotting or cancelling at one end the impression given by a blow on
the lever by the hand."
Now this description applies aptly to both the stamp patented
in
Page 104 U. S. 367
1857 and to that patented in 1859, except that it was the latter
only which had the blotting attachment. We think it perfectly
apparent that the witness had, by a very natural mental process,
confounded the instruments together and imagined that the blotter
was attached to the first, instead of the second, invention. His
examination took place twenty years after the date of the accounts,
and he relied solely on his memory as to the character of the
articles which he worked upon.
This is really the strongest evidence that can be found in the
record affording any ground for the conclusion that Norton ever
produced any double stamp at all prior to the one he patented in
1859. The testimony of Mr. King, the former Assistant Postmaster
General, when compared with his own contemporary letters and other
circumstances, clearly indicates that he had quite naturally
confounded the device of one date with that of a later date. Other
evidence was relied on, but all of such a loose and indefinite
character that no reliance can be placed on it in support of the
complainant's theory. And it is quite significant that no stamp of
the kind claimed, made at the period in question, was produced in
the examination. Had such stamps ever been in existence, it is
strange that they should have altogether disappeared.
Now there is abundant evidence in the record to show that double
stamps were conceived of and used before 1859, and that about that
time they sprung up spontaneously in various parts of the country.
It was but recently that there had been any demand for their
construction, since postage stamps had not been in general use in
the country for any long period. They were first authorized to be
issued and used by the Act of March 3, 1847 c. 63, 9 Stat. 188, but
it was optional to use them or not. By the Act of March 3, 1851, c.
20, postage on single letters was reduced from five cents to three
on being prepaid. 9 Stat. 587. It was not till the passage of the
Act of March 3, 1855, c. 173, that all postage, except on letters
to or from a foreign country, was required to be prepaid. This law
first brought postage stamps into universal use, and, as they must
be cancelled, two impressions had to be made on a letter -- one for
the ordinary postmark, giving the place and date of mailing the
letter, the other for cancelling or effacing
Page 104 U. S. 368
the postage stamp. This required two blows and produced double
work. But without any great exercise of ingenuity, postmasters and
clerks in various places improvised double stamps, generally by
screwing, welding, or binding to the side of the common stamp an
appendage to serve as a blotter at the same time. This was done by
Ezra Miller at Janesville, Wisconsin, as early as January, 1859, or
in 1858, and by General Dix in New York, and one Powers in Buffalo,
in the summer of 1860. There is also evidence that a similar
appendage for the purpose of stamping a large figure 5, to show the
postage due, was invented and used by one Rees in the Philadelphia
post office as early as 1845, when the rates of postage were five
and ten cents, and that one Ireland devised and used at the same
office a like appendage for cancelling postage stamps as early as
1853. Other similar devices were referred to in the evidence. The
adoption of a more artistic and convenient form of the instrument
thus spontaneously originated, as its use was continued and became
more imperative, was a matter of course. Norton's particular form
and construction of the double stamp, as described in his patent of
1863, was undoubtedly an improvement, but we should expect to find,
as we do find, that he was restricted in his claim to the
particular form and construction set forth in his
specification.
A reference to Norton's application for the original patent in
question in this case, a copy of which is in evidence and which,
being preserved of record in the Patent Office, may properly be
referred to, shows that the functionaries of that office regarded
it important that the instrument sought to be patented should be
specialized with particularity. This application was presented to
the office on the 5th of January, 1863, and was rejected on the
21st of February. On the 21st of March, 1863, the application was
renewed in a letter addressed by Norton to the Commissioner of
Patents, and after certain amendments were made to the
specification, the patent was allowed to pass. The most important
amendment was the insertion of that portion of the specification
commencing with the words, "The said cancelling stamp or device (C)
being thus constructed with cork, rubber, or other elastic
substance for type or blotter," and so on, to the end of the
paragraph.
Page 104 U. S. 369
This amendment derives further importance and illustration from
the letter of Norton above referred to, in which a renewal of the
application was made and which was dated at the National Hotel, in
Washington, March 21, 1863. In that letter, the writer says:
"I do not understand that the device referred to in your letter
of the 21st of February last is 'a common ink cancelling stamp,
such as has been used for years in our post offices for blotting
and thus cancelling post office stamps.' The devices to which you
undoubtedly refer have always been made of metal entirely or of
wood entirely. Wood was found to answer no purpose, because not at
all durable, so metal ones were used.
Now this device consists
of a barrel or tube into which wood, cork, rubber, or some such
material is inserted for the purpose of holding an indelible ink in
quantities sufficient to blot the postage stamp so thoroughly
as to prevent the same being washed or cleansed by a chemical
mixture and again being used in payment of postage.
This tube
or barrel holds firmly the elastic substance therein, and prevents
the same from undue wear and exposure. The elastic substance
therein, being worn out, can again be replaced at the office
where used, thus saving the trouble and expense of returning the
same to the gov't contractors for such repairs.
This therefore
constitutes a new device, composed of two distinct parts in
combination, producing new results, besides blotting the postage
stamp."
"This device being new, its combination with the postmarking
device for the purposes set forth in the specification is of course
new. Upon these two claims I therefore most respectfully ask a
patent. "
On the same day that this letter was received, according to the
memorandum on the file wrapper, the specification was returned to
the applicant to enable him to amend it, and was reexamined on the
26th of March, and favorably passed upon on the 1st of April. No
one can read the patent in the light of these contemporary
documents and of the previous history of the stamp without arriving
at the conclusion that so far as the blotting device was separately
concerned, the invention consisted of, and was confined to, a tube
containing a type blotter made of an elastic substance, as
contradistinguished
Page 104 U. S. 370
from iron or other hard substance. The iron or steel blotter had
been patented in 1862, as already mentioned and as will be shown
more fully hereafter. There was not, there could not have been, any
inadvertence or mistake in confining the invention to the
combination described and claimed in the patent.
The second claim is merely that of a combination of this
specific device with the other parts of the apparatus. As the
patentee says in his letter to the commissioner, "This device being
new, its combination with the postmarking device for the purposes
set forth in the application is of course new." In other words, the
substantive invention for which the applicant desired a patent was
the blotting device constructed specifically in the manner and for
the purpose described. The addition of the combination claim was
for the purpose of possibly securing the combination if the
principal claim should be found to be untenable.
Perhaps we have gone more minutely into the evidence relating to
the progressive improvements in this instrument than was necessary
to show that the claim of the patent was not more restricted than
it should have been. The Court ought not to be called upon to
explore the entire history of an art in order to ascertain what a
patentee might have included in his patent had he been so disposed.
If he was the author of any other invention than that which he
specifically describes and claims, though he might have asked to
have it patented at the same time, and in the same patent, yet if
he has not done so, and afterwards desires to secure it, he is
bound to make a new and distinct application for that purpose, and
make it the subject of a new and different patent. When a patent
fully and clearly, without ambiguity or obscurity, describes and
claims a specific invention, complete in itself, so that it cannot
be said to be inoperative or invalid by reason of a defective or
insufficient specification, a reissue cannot be had for the purpose
of expanding and generalizing the claim so as to make it embrace an
invention not described and specified in the original. It is
difficult to express the law on this subject more aptly and
forcibly than in the words of Mr. Justice Grier, in the case of
Burr v.
Duryee, 1 Wall. 531, where, in delivering
Page 104 U. S. 371
the unanimous opinion of the Court, he says:
"The surrender of valid patents, and the granting of reissued
patents thereon, with expanded or equivocal claims, when the
original was clearly neither 'inoperative nor invalid,' and whose
specification is neither 'defective nor insufficient,' is a great
abuse of the privilege granted by the statute, and productive of
great injury to the public. This privilege was not given to the
patentee or his assignee in order that the patent may be rendered
more elastic or expansive, and therefore more 'available' for the
suppression of all other inventions."
Of course, if, by actual inadvertence, accident, or mistake,
innocently committed, the claim does not fully assert or define the
patentee's right in the invention specified in the patent, a speedy
application for its correction, before adverse rights have accrued,
may be granted, as we have explained in the recent case of
Miller v. Brass Company, supra, p.
104 U. S. 350. But
where it is apparent on the face of the patent or by contemporary
records that no such inadvertence, accident, or mistake as claimed
in a reissue of it could have occurred, an expansion of the claim
cannot be allowed or sustained.
Turning now to the reissued patent on which the present suit was
brought, which is the third reissue, dated Oct. 4, 1870, we find
the invention described as follows:
"The nature of my said invention and improvements herein
contained and described consists in the employment and combination
of a device or die used for the more complete and perfect
cancellation of postage stamps or letter franks by means of soft
wood used endwise, or of cork, rubber,
or other suitable
material, whereby such stamp or frank is effaced and cancelled
in and by indelible or other ink in the manner substantially as
herein described and set forth."
"It also consists in the combination of a postage stamp
cancelling device or die, constructed of wood, cork, rubber,
or
any suitable material, with any suitably arranged and
constructed postmarking stamp or device, so as to cancel, efface,
or destroy the postage stamp or letter frank with indelible or any
suitable ink at the same time, blow, or operation of the stamp or
instrument by which the postmark is given or made upon the letter,
envelope, or packet, substantially as herein described and set
forth. "
Page 104 U. S. 372
"It also consists of the postmarking of letters, envelopes, or
packets, and in the cancellation of the postage stamp or stamps
thereon, with, in, or by any suitable ink, or similar material, by
means of some soft wood used endwise against the postage stamp, or
by the means of cork, rubber,
iron, or steel, or by means of
any other suitable material so combined with the postmarking
stamp or instrument as to cancel, efface, or destroy the postage
stamp or stamps at one and the same blow or operation of the entire
instrument thus constructed for that purpose, whereby to prevent a
second or reuse of such postage stamp or stamps."
After some details as to the mode of construction, the
specification proceeds:
"The said cancelling type or die can be easily repaired, or
replaced by a new one, whenever desired, and at very little
expense; and such cancelling die or type G may extend upward to the
said cross-bar B, and there be connected to the same by means of a
screw, pin, or small bolt. In
such case, there would not be any
tube or pipe surrounding said cancelling die or type G. The
operation and effect produced would in such case of construction be
the same."
"The said postage stamp cancelling device, die, or type G may be
of any desired distance from the aforesaid postmarking or dating
device or stamp D, or it may be securely
fastened to the
immediate side of the said postmarking and dating part or
stamp or device D by any convenient and suitable mechanical
means."
"The said cancelling die, type, or device G I prefer to use made
of cork, as it will hold a much greater quantity of cancelling ink
upon and in the lower face thereof, and when it comes in contact
with the printed surface of the postage stamp, such surface will
become somewhat and sufficiently broken by means thereof, and thus
and thereby inject into or impregnate such broken surface with the
said cancelling ink, whereby such postage stamp, so operated upon
and filled with such ink, cannot be sufficiently cleansed by any
means as to enable it to be reused, or used a second time, in fraud
upon the postal revenue, without immediate detection of the
same."
"Soft wood, used endwise, will answer nearly the same purpose.
Still, long and continued use after the granting of my said patent,
April 14, 1863, has fully proven the superiority of the cork for
the cancelling die or type used upon postage stamps as aforesaid. .
. . "
Page 104 U. S. 373
"I also construct my said postage stamp cancelling device, die,
or type of
cast-iron, steel, or other suitable metal,
substantially as shown at G', Figs. 5 and 6, and which may be
secured to the said cross-bar or piece B in like manner as the said
tube or cylinder C, Figs. 2 and 4, and which is done either by
screw and nut where the same unites with the said cross-bar, or it
may there be firmly fastened by means of suitably constructed and
arranged pins or rivets, or the same may be soldered to the under
side of said cross-bar or piece B, or otherwise attached thereto. .
. ."
"
The aforesaid metal cancelling device, die, or type G',
Figs. 5 and 6, may also be fastened or secured to the immediate
side of the said postmarking device by any good and sufficient
means, substantially as hereinbefore described and set forth,
in reference to the said device C, or tube or cylinder, constructed
to receive and contain the said type or die G, Figs. 2, 3, and
4."
"Such metallic device, die, or type may also have upon its lower
face or lower surface any suitable configuration deemed best to use
for the purpose of cancelling the postage stamp in, with, or by any
suitable ink at the same time, blow, and operation of the
instrument or apparatus, as hereinbefore stated and set forth."
"In any and every case, the postmarking of the letter, envelope,
or packet, and the effacing or cancellation of the postage stamp or
letter frank thereon representing value, are done at the same time
and by the same blow or operation of the said several devices and
parts, constructed and combined in the manner and by the means
substantially as herein described and set forth."
"Both the postmarking and cancellation of the said postage stamp
are done with indelible or other and suitable ink, used for such
cancellation or effacing of the postage stamp."
Omitting much more of this verbose specification, containing,
amongst other things, a dissertation on the supposed advantages and
importance of the invention, we add the summary of the patentee's
claims, which is as follows:
"What I claim, and desire to secure by letters patent of the
United States of America, is:"
"1. The postage stamp cancelling device, cylinder, or tube C,
containing a die or type, G, made of cork, wood,
or other
suitable material, or any equivalent for said cylinder or tube
C,
or for the said cancelling die or type G, whereby to
efface, cancel, or destroy the postage stamp with indelible or
other ink in the manner and for the purposes substantially as
herein described and set forth. "
Page 104 U. S. 374
"2. The cancelling device, cylinder, or tube C, with cork or
wood, or
any substantial equivalent thereof, forming the
die or type G, therein, in combination with the cross-bar or piece
B, and with the postmarking device D, substantially as and for the
purposes herein described and set forth."
"3.
The postmarking of letters, envelopes, and packets, and
the cancellation of the postage stamps thereon with ink, at
one and the same blow or operation of the instrument in the manner
and by the means substantially as herein described and set
forth."
"4.
The employment and combination of a postmarking device,
with a postage stamp cancelling device, both being operated by
one and the same handle, for the postmarking of letters, envelopes,
or packets, and for the cancellation of the postage stamps thereon
with indelible or other ink, in the manner substantially as herein
described and set forth."
By these extracts from the specification and the summary of
claims it appears perfectly obvious that the patentee has embraced
in the reissued patent several matters of supposed invention
different from and additional to the invention which formed the
subject of the original patent. And it is principally, if not
wholly, these new and additional claims which the appellant James,
as postmaster of New York, is charged with infringing.
In the first place, a new form of the cancelling device is set
forth and claimed, different from that described in the original
patent, to-wit, a cancelling type or die attached directly to the
cross-bar, without any tube or pipe surrounding and holding the
same. This is not contemplated or hinted at in the original patent.
The latter does suggest, it is true, that "the cork, rubber, or
other elastic material may extend upward to the cross-bar, and
there be connected to the same by a screw or pin bolt, if desired,"
but this suggestion had reference to a type enclosed, at the same
time, by a surrounding cylinder, which formed the distinctive
feature of the invention. The context shows that nothing more was
intended by the suggestion than the extension of the type upward
through the cylinder and fastening it in a particular way. The
thought seems to have occurred to the patentee that it might be an
advantage, under some circumstances, in additional to fastening
the
Page 104 U. S. 375
type in the cylinder by compression, to extend it through the
cylinder and fasten it to the bar to secure it from any danger of
falling out of the cylinder by becoming loose. Not a hint was given
that the cylinder could be dispensed with. This was an
afterthought. The cylinder was clearly and distinctly set forth as
a necessary constituent of the device and an essential element in
the combination of which the blotting device consisted.
The bearing which this new feature in the reissued patent has on
the case is evinced by the fact that one of the devices used for
several years in the post office, which is complained of as an
infringement of the patent, was a naked blotter made of cork,
directly attached to the cross-bar, without any enclosing cylinder
to support it; also by the fact that the other device used in the
post office during the defendant's term of office consisted of an
iron blotter directly attached to the side of the postmarking stamp
without any enclosing cylinder.
In our judgment, this addition to the patent was no part of the
original invention, and could not lawfully be embraced in the
reissue, and that the claim for it is therefore void. It is true
that this particular feature is not made the subject of a distinct
claim. But it is described as part of the invention, and would
probably be included in the general and sweeping terms employed in
the claims that are made. Regarded as not being a part of the
original invention, those claims cannot stand if they are construed
to include it; if they are construed so as not to include it, then
the use of this form of device by the defendant cannot be adjudged
an infringement of the patent.
Another new matter, forming no part of the original invention
but expressly disclaimed in the original patent, is the making of
the blotter of cast iron, steel, or other suitable material. The
original specification, in various forms of expression, excludes
such materials. The words "wood, cork, rubber, or any similar
material" have this intention, as shown by the context. A claimed
advantage is that
"the said cork, rubber, or other elastic substance, as
aforesaid, will render the said stamp capable of an easy and rapid
use, for there being a yielding of the same when the blow is given,
the operator will
Page 104 U. S. 376
not tire as soon by a constant or continued use of the same
as though it were of solid metal. The said blotter or type
can be more easily repaired or replaced by a new one, at less
expense,
than if made of solid metal."
This language amounts to an express disclaimer of solid metal.
The merit claimed for the invention was that the elastic materials
proposed to be used for the blotter, and the use of which the
patent throughout supposes possible by the support received from
the surrounding cylinder, were far superior to solid metal and
other solid and inelastic substances. How, after this, it could be
supposed that the use of solid metal as a material for the type
blotter was included in the invention, and that a claim for it was
omitted through inadvertence and mistake, it is difficult to
understand. Besides, as already seen and will be again adverted to,
the use of steel or other material that would answer the purpose
had already been described and claimed in Norton's patent of 1862.
We think that any claim in the reissued patent which can be fairly
construed to embrace a blotter made of metal is void, and that the
use of such a blotter by the defendant did not afford the patentee
or the complainant any just ground of complaint.
In connection with this branch of the subject, it is observable
that the patentee has added two new diagrams to his drawings for
the purpose of exhibiting and illustrating this new ground of
claim. This fact, though not decisive, is strongly corroborative of
the conclusion which we have reached on the subject.
The third addition in the reissued patent to the invention
described in the original is that of the process of stamping
letters with a postmark and cancelling the postage stamp, at one
and the same blow or operation of the instrument, in the manner and
by the means described and set forth. Leaving out of view the
history of the art prior to the invention claimed by the patentee,
what possible pretense can there be for contending that the general
process was part of the invention which formed the subject of the
original patent? Suppose it be true that Norton was the first
inventor of this process, was that process the invention which he
sought to secure in the original patent? A patent for a process and
a patent
Page 104 U. S. 377
for an implement or a machine are very different things.
Powder Company v. Powder Works, 98 U. S.
126. Where a new process produces a new substance, the
invention of the process is the same as the invention of the
substance, and a patent for the one may be reissued so as to
include both, as was done in the case of Goodyear's vulcanized
rubber patent. But a process and a machine for applying the process
are not necessarily one and the same invention. They are generally
distinct and different. The process or act of making a postmark and
cancelling a postage stamp by a single blow or operation, as a
subject of invention, is a totally different thing in the patent
law from a stamp constructed for performing that process. The claim
of the process in the present case, however, is not so broad as
this. It is for the process or act of stamping letters with a
postmark and cancelling the postage stamp at one and the same blow
or operation of the instrument,
in the manner and by the means
described and set forth. Perhaps this claim amounts to no more
than a claim to the exclusive use of the patented instrument or
device. If it is anything more, it is for a different invention
from that described in the original patent. If it is not for
anything more, the question is brought back to the instrument or
device itself which forms the subject of the patent, and which has
been already considered.
The last claim, to-wit,
"The employment and combination of a postmarking device with a
postage stamp cancelling device, both being operated by one and the
same handle, for the postmarking of letters, envelopes, or packets,
and for the cancellation of the postage stamps thereon with
indelible or other ink, in the manner substantially as herein
described and set forth,"
may admit of two constructions. It may either amount to a claim
for a combination of any kind of devices for stamping and blotting
or for a combination of the particular devices described in the
patent. Inasmuch as these specified devices, as we have already
shown, embrace new devices not described in the original patent,
the claim is too broad in either of its aspects to be advanced in a
reissue of that patent, unless the patentee was really the inventor
of the general combination of such devices in a double stamp, and
was entitled to add a
Page 104 U. S. 378
claim therefor to such reissue. We have seen that his original
patent was for a specific blotting device, and for the combination
of such specific device with a post stamping device in the same
instrument. Could he, in a reissue of the patent, lawfully make the
broad claim of the combination of any and all devices for blotting
and post stamping, at one and the same time, in one and the same
instrument? This would be, it is true, only adding a new claim to
his patent, but greatly enlarging its scope and making it to
embrace every kind of double stamp that can be conceived. Did he
forget to insert this claim in his original patent? Was it omitted
through accident and mistake? When we examine his original
application, the changes it underwent, the careful exclusions as
well as inclusions which it contained, and the particularity of the
specific combination which he did claim, could he, after the lapse
of more than a year (if we take the date of his first application
for a reissue as the time for consideration), be allowed to return
to the Patent Office and pretend that he had inadvertently omitted
the principal claim of the whole thing? If he was, or pretended to
be, really the inventor of the entire double stamp, did not the
patent on its face show that the invention was not secured to him
-- that it contained no such claim? And was not this omission
obvious on inspection? The truth is that when he made his original
application and got his original patent, all the documents show
demonstrably that he did not intend it to embrace any such broad
invention. That was not the invention he sought to secure. Having
obtained a patent for his specific device and combination, if he
afterwards wished to claim the general combination, and had not
already abandoned it by taking a narrower patent, he was bound to
make a new application for that purpose. Patentees avoid doing this
when they can, and seek to embrace additional matters in a reissue
in order to supersede and get possession of the rights which the
public, by lapse of time or other cause, have acquired in the mean
time. It is for this very reason that the law does not allow them
to take a reissue for anything but the same invention described and
claimed in the original patent.
But these broad claims in the reissued patent, if construed
according to the latitude in which they are expressed, are void
Page 104 U. S. 379
by reason of embracing inventions which had been patented both
in England and in this country prior to the patentee's application
for the original patent.
A stamp with a postmarking device and a blotting device combined
in one instrument was described in an English patent, dated April
24, 1860, granted to one David G. Berri. As shown in the drawing,
the postmarker and blotter were attached to one metallic plate,
analogous and equivalent to the cross-bar described in Norton's
patent, to the center of which plate the handle was attached, so
that the instrument was equally balanced. The particular object of
the patent was to secure a method of hinging the plate containing
the types on to the fixed plate to facilitate the insertion and
change of the types. But the double stamp is fully exhibited; and
the patentee, in the specification, says:
"In conclusion to the foregoing description, it may be here
necessary to note that my improved date stamp may be employed
either in connection with the double or obliterating mark, as
represented, or separately, in conformity with the usual
requirements."
The same combination of postmarker and blotter in one instrument
was also exhibited in Norton's own patent of Aug. 9, 1859. As he
did not then reserve the process of stamping letters with such an
instrument, nor the combination of a postmarker and a blotter, and
did not make any simultaneous application therefor, he could not
afterwards obtain a patent for such process and combination, but
would be restricted to such particular combination or process as
might be exhibited in a new device or apparatus.
We have already referred to this patent of 1859, and will here
only quote from the specification, to show the construction of the
stamp, and the scope which the patentee claimed his invention to
possess. He says:
"
The blotter (J) is fastened to the frame (B) upon one
side thereof by the use of the shaft (D), one end of which passes
through the upper part of the said blotter, and which is firmly
secured to the said frame by means of the nut (C), or by using it
for the nut in place of the said nut (E) as aforesaid. This blotter
is then and thereby retained in a fixed and strong position by
means of the screw (S) in connection with the said shaft (D), the
blotter (J) or nut (E),
Page 104 U. S. 380
and is for the purpose of cutting, inking, blotting, effacing,
and effectually cancelling the frank or postage stamp, while, at
the same time and operation, the name of the post office, the year,
the month, and the day thereof are given upon the envelope or
letter at one side of the said frank or postage stamp, and not upon
it as now practiced, in order to efface and to cancel it under the
operation of stamping, which unduly wears out the marking stamp,
gives a bad and unintelligible impression, and is in direct
violation of the rules or statute of the Post Office Department.
This stamp may have another blotter like (J), which shall be upon
the opposite side thereof, by the use of which the frank or postage
stamp would be cut, inked, blotted, effaced, and cancelled upon any
part of the letter or envelope where it may be placed. One blotter
like (J), however, is believed to answer the required purpose.
This blotter (J) may be made of any size or shape, and of any
material to answer the end or purpose sought to be obtained.
The face, which receives the ink and which comes directly upon the
frank or postage stamp, is grooved or cut, thereby leaving various
projections, which have a sharp or knife edge sufficient for each
to cut entirely through the frank or postage stamp, but not through
the envelope immediately under the same, while at the same time the
places thus cut are inked by he same sharp edged projections or
cutters on the face of the said blotter as aforesaid. The said
blotter (J) should be made of the best kind of
cast steel,
and in such shape as not to break any part thereof. The projections
upon the face of the said blotter may be kept sharp and in cutting
order by filing and sharpening them when dull."
The claim of this patent is as follows:
"Having thus set forth and described my invention, what I claim
and desire to secure by letters patent of the United States
is:"
"The blotter (J), connected or attached to the main part of any
'post office postmarking stamp' for the purpose of cutting and
inking, blotting, and effacing so as to successfully cancel the
frank or postage stamp of any letter or any package at the same
time and operation of marking or printing upon such letter or
package the name of any post office, the year, the month, and the
day of the month, substantially as and for the purpose herein set
forth."
Another patent was taken out by Norton on the 16th of December,
1862, for a double stamp, containing a combination of
Page 104 U. S. 381
the postmarker and blotter and the cross-bar connecting them,
and to which they were attached. The drawings attached to this
patent exhibit exactly the same form of instrument which is
exhibited and described in the drawings and specification of the
patent sued on in this case. The blotter, however, instead of being
confined to wood, cork, or other elastic material, was proposed to
be made of "steel, or other material which will answer the
purpose," and to have on its face circular cutters, enclosed in
circular rings, to cut the postage stamp at the same time that it
defaced it with ink. The invention is described in the
specification as follows:
"The nature of my improvement consists in so constructing
cancelling stamps that the same shall cut the postage stamp, or any
stamp similar thereto, without injury to the contents of the
envelope or packet enclosed therein, and at the same time cause a
heavy circular mark upon the inside, and one upon the outside of
that part of the stamp or letter frank cancelled by the cutting
device, so that said postage stamp or letter frank shall readily
show cancellation in ink, and when removed from the letter or
packet on which the same may have been cancelled, it shall be
reduced to parts or pieces whereby a second use of the said stamp
or frank is thus prevented although it may have been previously
cleaned by a chemical or other process."
"It also consists in the employment and combination of a
cancelling stamp with a cutting and inking device thereon, with a
postmarking or rating stamp, so that the cancelling of the letter
frank and the postmarking on the envelope or packet shall be
effectually done by the means fully described hereinafter."
"To enable others skilled in the art to which my invention
relates to make and use the same, I will here proceed to describe
the construction and operation thereof, which is as follows,
to-wit: I construct the postmarking stamp (D) of steel or any
material which will answer the purpose. (G) is the mortice or
opening to receive the type for the month, the day of the month,
and the year, around which is the name of the place where used. (E)
is a screw for the purpose of holding the type in the said openings
(G). This stamp is secured or firmly fastened to the block or
cross-piece (B), Figs. 1, 2, and 3, by means of the screw (K),
which is held in its placed by means of the small screw
(
a), Figs. 1 and 2, which is placed near one side of the
said screw (K) so as to prevent the same from becoming loose by
reason of turning backwards. "
Page 104 U. S. 382
After further directions as to the construction of the
cancelling stamp, he adds:
"The cross-piece (B) is made of iron or steel, and in width the
same as the diameter of the said rating and cancelling stamp, and
of any thickness required. The said cancelling stamp (
c)
is securely fastened to the said cross-piece (B), and at any
desired distance from the said rating stamp (D), as seen at Figs.
1, 2, and 3, and in the same manner as that of the said stamp (D).
(H) is a screw-bolt or stem, the lower end of which is screwed into
the center of the said cross-piece (B). The handle (A) is then
screwed upon the said bolt or stem (H), and firmly upon the said
cross-piece (B), thereby making a strong and reliable joining of
the handle to the whole stamp."
The claim in this patent is first, for the cancelling stamp
separately, and secondly as follows:
"I also claim the combination of the cancelling stamp (c) and
the postmarking or rating stamp (D) with the cross-piece (B),
substantially as and for the purpose herein described and set
forth."
It is hardly necessary to remark that the patentee could not
include in a subsequent patent any invention embraced or described
in a prior one granted to himself, any more than he could an
invention embraced or described in a prior patent granted to a
third person. Indeed, not so well, because he might get a patent
for an invention before patented to a third person in this country,
if he could show that he was the first and original inventor and if
he should have an interference declared.
Now a mere inspection of the patents referred to above will show
that after December, 1862, Norton could not lawfully claim to have
a patent for the general process of stamping letters with a
postmark and cancelling stamp at the same time; nor for the general
combination of a post stamper and blotter in one instrument; nor
for the combination of a post stamper and blotter connected by a
cross-bar, for all these things, in one or other specific form,
were exhibited in these prior patents.
Any such claim, therefore, in the reissued patent of 1870 must
be inoperative and void, as well because the thing claimed was
anticipated in former patents as because it would be for a
Page 104 U. S. 383
different invention from that contained and described in the
original patent. We may therefore dismiss from consideration the
third and fourth claims of the reissued patent. If they are to be
construed as being broader and claiming more than the original
patent, they are void; if to be construed as claiming nothing more,
they are simply redundant, because the first and second claims
embrace all that was in the original, and more.
The case, then, upon the patent, is narrowed down to the claim
of the specific device of the blotter as described and claimed in
the original patent, and the combination thereof with the
postmarking device in one instrument by means of the cross-bar.
This being the case, it will be pertinent next to inquire whether
the defendant used that device or combination. If he did not, it is
unnecessary to pursue the subject further.
As we have already seen, the cancelling stamp or device
described in the patent consisted of a cylinder, corresponding in
length to the postmarking device and containing a type of wood,
cork, rubber, or other elastic material, slightly projecting
therefrom. It does not appear that this device was ever used by the
defendant. The stamp used by him until January, 1876, had a blotter
of cork, it is true, but it was not the specific device described
in the patent and to which the patent was restricted. The cork was
not enclosed in a cylinder as demanded by the patent. It was a
naked piece of cork directly attached to the cross-bar by a common
wood screw, passing through a hole in the cross-bar, and driven
into the cork, firmly holding it to the bar. This device, of
course, was different from that which was patented. The only other
stamp used by the defendant had a steel blotter, connected with the
postmarker by a solid metallic plate or mass of metal and having no
cylinder. Neither of these devices infringed the complainant's
patent, construed as we consider it must be in order to have any
validity at all.
The decree of the circuit court will be reversed, and the cause
remanded with directions to dismiss the bill of complaint; and it
is
So ordered.
Page 104 U. S. 384
MR. JUSTICE MILLER dissenting.
As regards the right to a patent for an invention like this,
which can be of use to no one but the government of the United
States and which is therefore in effect a contract by the United
States that it will not use that which is essential to some of its
most important operations without paying to the patentee whatever
he may demand for the use of his invention, I have great doubt -- a
doubt which it would have been necessary to solve in this case if
the majority of the Court had believed the patent sued on
valid.
In the opinion just delivered, they have held that while the
original patent to Norton might have been valid for some purposes,
the reissued patent is void because it is not for the same
invention. In this view I do not concur.
The general post office and its branches had long been in search
of an instrument which by one blow -- one strike of the hand --
would mark the name of the place where a letter was mailed and the
time, and so deface the postage stamp on the letter as would make
it impossible to be used again.
This had been done by the use of a single die, which held the
type indicating date, &c., and which was made to cover the
stamp also, so that the date obliterated the stamp by covering it.
For reasons not necessary to mention, this did not answer, and it
became desirable to have an instrument which at one stroke defaced
the stamp and made beside, but apart from the stamp, the postmark
date.
Many attempts to do this had been made with more or less
success. Most of them failed because the handle which conveyed the
power from the hand of the operator was so placed in regard to
these two marking instruments that they did not strike with entire
unity in point of time on all the space of the letter to be covered
by the two instruments. In my opinion the record shows that Norton
was the first man to accomplish this result by uniting these two
marking instruments by a cross-bar between them and placing the
shank or handle common to them both so precisely in the center
between them on the cross-bar that the stroke brought the type and
the obliterating device on to the surface of the paper
precisely
Page 104 U. S. 385
level, and with precision as to time, over the space which they
were designed to cover.
This, I think, was the principal merit of his invention.
Connected with it, however, and essential to it was his device for
obliterating the stamp. In his original patent, this is described
as a cylinder into which is fastened something which receives the
indelible ink used to obliterate the stamp and which imparts it to
the surface of the stamp by the blow or strike already mentioned.
This, he said in his original patent, was made of wood, cork,
rubber, or other suitable material.
It was discovered by experience afterwards that iron was a more
suitable material than wood, or cork, or rubber, and in the reissue
of the patent, on which this action is founded, iron is mentioned
as one of these suitable materials.
I do not think this should invalidate the reissue if the
original patent was good. If iron was a suitable material it was
covered by the original patent. If better than the materials
specifically named, that did not exclude it from the original
patent nor make the reissue void.
Nor do I concur in the opinion that the combination of the
printing and erasing instrument by a cross-bar and shank or handle,
which brought the force employed in the stroke to act equally and
simultaneously on all the surface to be impressed, was anticipated
by any other patent or any other invention.
It would serve no good end to go into all the testimony with the
elaborate care which characterizes the opinion of the Court on
these disputed points. I therefore content myself with stating the
principal points in which I differ with that opinion.