A patent for ball covers issued to James A. Osgood May 21, 1872,
reissued April 11, 1876, held invalid as to the new and enlarged
claims, because there was unreasonable delay in applying for it,
the only object of the reissue being to enlarge the claims.
The principles announced in the case of
Miller v. The Brass
Company, 104 U. S. 350, in
reference to reissuing patents for the purpose of enlarging the
claims, reiterated and explained.
It was not intended in that case to question the conclusiveness,
in suits for infringement, of the decisions of the Commissioner of
Patents on matters of fact necessary to be decided before issuing
the patent except as the statute gives specific defenses; but those
defenses are not the only ones that may be made; if it appears that
the Commissioner has granted or reissued a patent without authority
of law, this will be a good defense, as, where the thing patented
is not a patentable invention, or where a reissue is for a
different invention from that described in the original patent,
&c.
A patent cannot be lawfully reissued for the mere purpose of
enlarging the claim, unless there has been a clear mistake
inadvertently committed in the wording of the claim, and the
application for reissue is made within a reasonably short time.
Whether there has been such an inadvertent mistake is, in general,
a matter of fact for the Commissioner to decide; but whether the
application is made in reasonable time is matter of law, which the
court may determine by comparing the reissued patent with the
original, and, if necessary, with the records in the Patent Office
when presented by the record.
The application for a reissue in such cases must be made within
a reasonable time, because the rights of the public, conceded by
the original patent, are directly affected and violated by an
enlargement of the claim, and the patentee's continued acquiescence
in the public enjoyment of such right for an unreasonable time
justly deprives him of all right to a reissue, and the Commissioner
of lawful authority to grant it.
No invariable rule can be laid down as to what is a reasonable
time within which the patentee must seek for the correction of a
claim which he considers too narrow. It is for the court to judge
in each case, and it will exercise proper liberality toward the
patentee. But as the law charges him with notice of what his patent
contains, he will beheld to reasonable diligence. By analogy to the
rule as to the effect of public use before an application for a
patent, a delay of more than two years would, in general, require
special circumstances for its excuse.
Page 112 U. S. 355
As, in the present case, there was a delay of nearly four years,
and the original patent was plain, simple, and free from obscurity,
it was held that the delay in seeking a correction by reissue was
unreasonable, and that the Commissioner had therefore no authority
to grant it, and the patent was held invalid so far as the claims
were broader than those in the original patent.
This was a suit in equity for alleged infringement of a patent
praying for an accounting, for damages, and a perpetual injunction.
Decree below for defendants, dismissing the bill, and appeal to
this Court by plaintiff. The facts are stated in the opinion of the
Court.
MR. JUSTICE BRADLEY delivered the opinion of the Court.
This suit was brought on a patent relating to leather covers of
"baseballs and other similar articles." The patent was originally
issued to one James H. Osgood, of Boston, under date of May 21,
1872. The bill states that Osgood afterwards assigned this patent
to Louis H. Mahn, the complainant below, appellant here. On the
11th of April, 1876, it was reissued, and the suit is brought on
the reissue against the Harwoods, charging infringement. Except in
stating the nature of the invention, and the claims, the
specifications of the original and reissued patents are precisely
alike. The description and accompanying drawings are not
changed.
Briefly stated, the specification describes a leather ball cover
composed of two hemispherical parts, each being molded into form
when in a wet state, and, after being dried, sewed together on to
the ball by a peculiar stitch, called a double herringbone stitch;
then a second cover made in precisely the same manner, and sewed on
to the ball, outside of the first cover, in such manner that the
stitches of the two covers may cross each other at right
angles.
In the original patent it is stated that the nature of the
invention consists first in the employment of a new stitch, called
the double herringbone secured stitch whereby only one stitch can
be broken at a time; second, in the employment of a binder
Page 112 U. S. 356
of leather next the yarn of a baseball, or as a first cover to
other round articles, so stitched and put on that the outer
covering when applied shall have its seams at right angles, or
breaking joints, with the seams of the first cover; third, in
making the leather covers of a hemispherical shape, by compression
and crimping in properly shaped moulds with plungers, while wet,
after which they are dried in shape and then softened by moisture,
stretched on and sewed. The claims of the original patent are the
two following, namely:
"1. A ball exterior, composed of two crimped hemispherical
covers,
A and
B, having their respective seams,
x and
y, break joints, substantially as set
forth."
"2. In combination with a ball whose exterior is composed of two
hemispherical covers,
A and
B, with their
respective seams,
x and
y, breaking joints, I
claim the double herringbone stitch formed of two threads, in the
manner herein set forth."
The letters
A and
B in the drawing, designate
the two covers, one outside of the other, and the letters
x and
y designate the respective stitches of
those covers.
The whole invention claimed therefore in the original patent,
was first, the two leather covers (an outside one and an inside
one), with their respective seams crossing at right angles, and
second the double herringbone stitch in combination with the two
covers.
In the reissue it is stated that
"The nature of the invention consists first in the cover of a
baseball formed of two pieces of leather suitably secured to each
other; second, the seams of a baseball united by the double
herringbone knotted lock stitch; third, a baseball covering
consisting of an outer and an inner covering applied to the ball
independently of each other; fourth, a baseball covering consisting
of independent outer and inner coverings made of hemispherical
sections, the seams of the inner and outer covers arranged
relatively to each other to break joints,"
and this reissue has the four following claims, namely:
"1. A baseball cover formed of two pieces of leather, secured to
each other by a single seam, substantially as and for the purpose
specified. "
Page 112 U. S. 357
"2. A baseball cover having its seam united by the double
herringbone knotted lock stitch, substantially as and for the
purpose specified."
"3. The covering of a baseball consisting of an outer and an
inner covering, each of which is composed of two pieces of leather,
and applied to the ball independently of each other, substantially
as and for the purpose specified."
"4. A baseball covering composed of independent inner and outer
coverings, made up of hemispherical sections, the seams of the
inner and outer covers arranged relatively to each other, to break
joints, substantially as and for the purpose specified."
It is apparent that, in the reissue, the claim of invention is
greatly enlarged. The patentee claims therein first, any and every
single baseball cover formed of two pieces of leather, fastened
together by a single seam, substantially as and for the purpose
described; secondly, any and every baseball cover having its seam
united by the double herringbone stitch, substantially, etc.;
thirdly, every and any use of two covers on a baseball, each made
of two pieces of leather, and applied to the ball independently of
each other, substantially, &c. The fourth claim is nearly
equivalent to the first claim of the original patent. The others
are all new.
It is clear, therefore, on the face of the patents, that the
only object of the reissue was to enlarge the claims. The
description was not altered in the least. The claims in the
original patent were clear and explicit, one of them being
substantially retained in the reissue. Nothing was altered, nothing
was changed but to multiply the claims and to make them broader.
And this was done, not for the benefit of the original patentee,
but for that of his assignee, and was done after the lapse of
nearly four years from the granting of the original patent. The
case seems to come clearly within the principles laid down in
Miller v. Brass Co., 104 U. S. 350, and
if we were right in the conclusions arrived at in that case, we do
not see how we can sustain the patent sued on in this. The counsel
for the appellant seems to be aware of this, and, in his argument,
directs his efforts mainly to attack the principles there
expressed,
Page 112 U. S. 358
although they have been frequently reiterated in subsequent
cases. We deem it proper therefore to say, once for all, that the
views announced in
Miller v. Brass Co., on the subject of
reissuing patents for the purpose of expanding and enlarging the
claim, were deliberately expressed and are still adhered to. As the
reasons for those views were quite fully gone into at that time, it
is unnecessary to repeat them at large. A few additional
observations will suffice.
It was not intended then, and is not now, to question the
conclusiveness, in suits for infringements of patents, of the
decisions of the commissioner on questions of fact necessary to be
decided before issuing such patents, except as the statute gives
specific defenses in that regard. But the statutory defenses are
not the only defenses which may be made against a patent. Where it
is evident that the commissioner, under a misconception of the law,
has exceeded his authority in granting or reissuing a patent, there
is no sound principle to prevent a party sued for its infringement
from availing himself of the illegality, independently of any
statutory permission so to do. This is constantly done in land
cases where patents have been issued which the land officers had no
authority to issue, as where the lands have been previously
granted, reserved from sale, or appropriated to other uses.
Stoddard v.
Chambers, 2 How. 284,
43 U. S. 318;
Easton v.
Salisbury, 21 How. 426;
Reichart
v. Felps, 6 Wall. 160;
Silver v.
Ladd, 7 Wall. 219;
Meader v.
Norton, 11 Wall. 442;
Best v.
Polk, 18 Wall. 112;
Morton v.
Nebraska, 21 Wall. 660;
Leavenworth Railroad v.
United States, 92 U. S. 733;
Newhall v. Sanger, 92 U. S. 761;
Sherman v. Buick, 93 U. S. 209.
In cases of patents for inventions, a valid defense, not given
by the statute, often arises where the question is whether the
thing patented amounts to a patentable invention. This being a
question of law, the courts are not bound by the decision of the
commissioner, although he must necessarily pass upon it.
See
Brown v. Piper, 91 U. S. 38;
Glue Co. v. Upton, 97 U. S. 3;
Dunbar v. Myers, 94 U. S. 187,
94 U. S.
197-199;
Atlantic Works v. Brady, 107
U. S. 199;
Slawson v. Grand
St.
Page 112 U. S. 359
Railroad Co., 107 U. S. 649,
107 U. S. 652;
King v. Gallun, 109 U. S. 99,
109 U. S.
101.
In this very matter of reissued patents, it has also been
frequently decided that it is a good defense in a suit on such a
patent to show that the commissioner exceeded his authority in
granting it. Such a defense is established by showing that the
reissued patent is for a different invention from that described in
the original, inasmuch as the statute declares that it must be for
the same invention.
Burr v.
Duryee, 1 Wall. 531,
68 U. S. 574;
Gill v. Well, 22
Wall. 1;
Collar Co. v. Van
Dusen, 23 Wall. 530,
90 U. S. 560;
Wood Paper
Patent, 23 Wall. 566, and many other subsequent
cases. The same defense may be established by showing from the
record that there was no inadvertence, accident, or mistake in
drawing up the specification of the original patent, for the
statute only gives a reissue when the original is defective by
inadvertence, accident, or mistake. Thus, in
Leggett v.
Avery, 101 U. S. 256,
259, the reissued patent embraced a claim which had been presented
on the application for the original patent and rejected. It was
apparent, therefore, that the omission of that claim in the
original was not, and could not have been, the result of
inadvertence, accident, or mistake, but was the result of design on
the part of the commissioner and acquiescence on the part of the
patentee, and so far as that claim was concerned, the reissued
patent was properly held to be void.
See also James v.
Campbell, 104 U. S. 356,
104 U. S. 368.
The proper remedy of the patentee, when a claim applied for is
rejected, is an appeal, and not an application for a reissue.
Such are some of the instances in which a patent issued contrary
to law is held to be void. And it is no doubt a general rule that
where the commissioner has exceeded his authority in granting or
reissuing a patent, such fact furnishes a good defense to a suit
brought for its infringement. There are stronger reasons for this
defense against patents for inventions, which directly affect the
citizen, than exist in the case of patents for land, which directly
affect the government, and only indirectly the citizen.
Now in our judgment a patent for an invention cannot
Page 112 U. S. 360
lawfully be reissued for the mere purpose of enlarging the
claim, unless there has been a clear mistake inadvertently
committed in the wording of the claim, and the application for a
reissue is made within a reasonably short period after the original
patent was granted. The granting of such reissues after the lapse
of long periods of time is an abuse of the power, and is founded on
a total misconception of the law. The Commissioner of Patents has
evidently proceeded, in these cases, on the view that a patent may
be reissued after any lapse of time, for the purpose of making a
broader claim, by merely showing that the claim might have been
broader than it was, and that it was inadvertently made too narrow
at the time. In this we think he has been entirely in error. Lapse
of time may be of small consequence on an application for the
reissue of a patent on account of a defective specification or
description, or where the original claim it too broad. But there
are substantial reasons, not applicable to these cases, why a claim
cannot be enlarged and made broader after an undue lapse of time.
The rights of the public here intervene, which are totally
inconsistent with such tardy reissues, and the great opportunity
and temptation to commit fraud after any considerable lapse of
time, when the circumstances of the original application have
passed out of mind, and the monopoly has proved to be of great
value, make it imperative on the courts, as a dictate of justice
and public policy, to hold the patentees strictly to the rule of
reasonable diligence in making applications for this kind of
reissues.
Conceding that it is for the Commissioner of Patents to
determine whether the insertion of too narrow a claim rose from
inadvertence, accident, or mistake, unless where the matter is
manifest from the record, the question whether the application for
correction and reissue is or is not made within reasonable time is,
in most, if not all, of such cases, a question which the court can
determine as a question of law by comparing the patent itself with
the original patent, and, if necessary, with the record of its
inception. The reason for this was fully explained in the case of
Miller v. Brass Company. The taking out of a patent which
has, as the law requires it to have,
Page 112 U. S. 361
a specific claim is notice to all the world, of the most public
and solemn kind, that all those parts of the art, machine, or
manufacture set out and described in the specification, and not
embraced in such specific claim, are not claimed by the patentee;
at least, not claimed in and by that patent. If he has a distinct
patent for other parts, or has made application therefor, or has
reserved the right to make such application, that is another matter
not affecting the patent in question. But, so far as that patent is
concerned, the claim actually made operates in law as a disclaimer
of what is not claimed, and of all this the law charges the
patentee with the fullest notice.
Then what is the situation? The public is notified and informed,
by the most solemn act on the part of the patentee, that his claim
to invention is for such and such an element or combination, and
for nothing more. Of course, what is not claimed is public
property. The presumption is, and such is generally the fact, that
what is not claimed was not invented by the patentee, but was known
and used before he made his invention. But whether so or not, his
own act has made it public property, if it was not so before. The
patent itself, as soon as it is issued, is the evidence of this.
The public has the undoubted right to use, and it is to be presumed
does us, what is not specifically claimed in the patent. Every day
that passes after the issue of the patent adds to the strength of
this right, and increases the barrier against subsequent expansion
of the claim by a reissue under a pretense of inadvertence and
mistake. If any such inadvertence or mistake has really occurred,
it is generally easily discernible by an inspection of the patent
itself, and any unreasonable delay in applying to have it corrected
by a surrender and reissue is a just bar to such correction. If the
specification is complicated and the claim is ambiguous or
involved, the patentee may be entitled to greater indulgence, and
of this the court can rightfully judge in each case. No precise
limit of time can be fixed and laid down for all cases. The courts
will always exercise a proper liberality in favor of the patentee.
But in any case, by such delay as the court may deem unnecessary
and unreasonable, the right to a reissue will be regarded as having
been abandoned and
Page 112 U. S. 362
lost, and the commissioner will be held to have exceeded his
authority in granting it. Whenever it is manifest from the patent
itself, compared with the original patent and cognate documents of
record, or from the facts developed in the case, that the
commissioner must have disregarded the rules of law by which his
authority to grant a reissue in such cases is governed, the patent
will be considered as void to the extent of such illegality. It is,
then, a question of law, not a question of fact. As before stated,
the case is entirely different from that of a reissue by reason of
a defective specification or description, or on account of the
claim being too broad. In these cases, the public interest is
promoted by the change; while a reissue for the purpose of making a
claim more broad and comprehensive is injurious to the public,
since it takes from the public the use of that which it previously
enjoyed, and which the original patent acknowledged its right to
enjoy. We repeat, then, if a patentee has not claimed as much as he
is entitled to claim, he is bound to discover the defect in
reasonable time or he loses all right to a reissue, and if the
Commissioner of Patents, after the lapse of such reasonable time,
undertakes to grant a reissue for the purpose of correcting the
supposed mistake, he exceeds his power and acts under a mistaken
view of the law, and the court, seeing this, has a right, and it is
its duty, to declare the reissue
pro tanto void in any
suit founded upon it.
The truth is (as was shown in
Miller v. Brass Co.) that
this class of cases -- namely reissues for the purpose of enlarging
and expanding the claim of a patent -- was not comprised within the
literal terms of the law which created the power to reissue
patents. But since the purpose of the statute undoubtedly was to
provide that kind of relief which courts of equity have always
given in cases of clear accident and mistake in the drawing up of
written instruments, it may fairly be inferred that a mistake in a
patent whereby the claim is made too narrow, is within the equity
if not within the words of the statute. Yet no court of equity,
considering all the interests involved, would ever grant relief in
such a case without due diligence and promptness on the part of the
patentee
Page 112 U. S. 363
in seeking to have the error corrected. It is just one of those
cases in which laches and unnecessary delay would be held to be a
bar to such relief. And in extending the equity of the statute so
as to embrace the case, the courts should not overlook or disregard
the conditions on which alone courts of equity would take any
action, and also on which alone the Commissioner of Patents has any
power to grant a reissue.
As we have already stated, no invariable rule can be laid down
as to what is reasonable time within which the patentee should seek
for the correction of a claim which he considers too narrow. In
Miller v. Brass Company, by analogy to the law of public
use before an application for a patent, we suggested that a delay
of two years in applying for such correction should be construed
equally favorable to the public. But this was a mere suggestion by
the way, and was not intended to lay down any general rule.
Nevertheless, the analogy is an apposite one, and we think that
excuse for any longer delay than that should be made manifest by
the special circumstances of the case.
In the present case, there was a delay of nearly four years. The
application for a reissue, though made in the name of the patentee
and signed by him, was not made for his benefit, but for the
benefit and apparently at the instance of his assignee, the present
appellant. The specification is very plain and free from
complexity, and, as we have already stated, the claims in the
original patent were clear and explicit. There was no ambiguity,
and nothing to prevent the patentee from seeing at once, on
inspecting his patent, whether his whole invention was claimed or
not. We can see no possible excuse, and none has been attempted to
be shown, for allowing the patent to stand the length of time it
did without any attempt to have it amended. The reissue was made
against law apparent on its fact, and nothing is shown in the
record to remove this illegality. The case is clearly within the
principle laid down in
Miller v. Brass Company, and the
patent must be regarded as void so far as the new and expanded
claims are concerned. As this leaves only the fourth claim to be
considered, and as it is clear
Page 112 U. S. 364
from the evidence in the case that the appellants did not
infringe that claim, the decree of the circuit court must be
affirmed.
MR. JUSTICE MILLER, dissenting.
In this case, I avail myself of the first occasion which has
fairly required it to give expression to my views in opposition to
those expressed by the court in several cases in which reissues of
patents have been held invalid.
The principle on which the present case is decided, and which,
if not the only ground of that decision, is emphasized in the
opinion as the controlling ground, is that of laches in the
application for the reissue. It is quite clear from the opinion
that if in all other respects the patentee had been entitled to the
reissue of the patent on which he relies in this case, it would
give him no protection, because this Court is of opinion that,
under the circumstances, the application for it came too late.
This proposition of the court does not grow out of any statute
of limitation governing such applications, nor because the original
patent, and, of course, the reissue, does not have a considerable
time to run before it expires by law, but because the court,
applying to the transaction, as it came before the Commissioner of
Patents, the equitable doctrine of laches -- of improper delay --
holds that, on that principle, the party came too late, and the
reissue is invalid. The distinction between the instrument being
void, and merely voidable, is so well known that it can hardly be
supposed to have escaped the attention of the court, and, since the
judgment in this case can bind no one but the parties to it, the
patentee, in another suit on the same patent, against another
party, by showing reasonable excuse for his delay, may prove his
patent to be valid, and in that suit he must recover, though he
fails in this.
Thus, every infringer will have the right to retry, when he is
sued, the question of whether the Commissioner of Patents exercised
a sound discretion in allowing the surrender and reissue of the
patent. Such a doctrine renders the labors of the
Page 112 U. S. 365
Patent Office, with its commissioner and corps of trained
examiners, of very little value, and subjects the final decision in
favor of a patentee to the reexamination of any number of juries on
the very facts which were passed upon by the officers appointed by
law for the purpose of deciding the questions necessary to the
validity of the patent.
The doctrine is well established that a grant by the government,
within its lawful authority, evidenced by a patent under its seal,
and the signature of the executive, cannot be impeached
collaterally. It must be recognized as valid in all courts when it
is introduced as evidence of the right which it confers, and can
only be avoided by a direct proceeding by way of
scire
facias or bill in chancery to set aside the grant for some of
the reasons which made its original issue a wrongful act. In such
case, the government which issued the patent, by its Attorney
General or other proper officer, in a court of competent
jurisdiction, obtains a decree setting the patent aside, whereby it
is rendered of no avail against all persons interested in the
matter, as well as the government.
For decisions which establish this doctrine, if there could be
any doubt about it, I refer to the following cases:
United States v.
Stone, 2 Wall. 525;
United States v.
Throckmorton, 98 U. S. 61,
98 U. S. 70;
Mowry v.
Whitney, 14 Wall. 434, which is the case of a
patent for invention, and where the whole subject is fully
discussed.
Undoubtedly there are cases of patents, with all the solemn
formalities attesting their validity, which are properly rejected
by the courts when offered in evidence because they show upon their
face that no authority existed for their issue. The power to grant
the rights which they profess to confer did not exist. Either it
did not exist at all or it did not exist in the officers or
tribunal which issued the patent. In such cases, the court can see
from the face of the instrument the nature of the grant and the
power which the law confers on the officer who issued it, that it
is wholly void, and that no evidence to be now produced or which
could have been produced before that officer could authorize the
grant or make it valid. Such
Page 112 U. S. 366
an instrument is void
ab initio -- is void always and
everywhere -- for want of power in those who made it.
Can the present case come under this exception?
Clearly not. The question of laches, of undue delay in making
application to correct "
a mistake, accident, or
inadvertence," by reason of which the patentee does not get
the full benefit of his invention, must depend on many
circumstances which cannot appear on the face of the reissued
patent. No mistake can be corrected until it is discovered. The
period of this discovery is always a matter of proof, which may be
of the most varied character. If the discovery of the mistake was
soon after the issue of the patent, and the delay defeated the
right to the reissue, this was a matter into which the Patent
Office should inquire. The duty to do so devolved on it, and the
right to decide it necessarily followed. While the dates of the
original patent and of the application for a reissue might seem to
show an unreasonable delay, this appearance might have been removed
by evidence which afforded a full justification for it. Very long
delays have been justified by the decisions of this Court when set
up as objections to patents.
See Smith v. Goodyear Dental
Vulcanite Co., 93 U. S. 486.
That patents for inventions were intended by Congress to have
this conclusive and unimpeachable character is manifest from the
legislation on this very point. ยง 4920 of the Revised Statutes,
which was originally enacted in 1836, sets forth five distinct
defenses, which may be pleaded to an action for infringement of a
patent right. They are as follows:
"1. That, for the purpose of deceiving the public, the
description and specification filed by the patentee in the Patent
Office was made to contain less than the whole truth relative to
his invention or discovery, or more than is necessary to produce
the desired effect, or"
"2. That he had surreptitiously or unjustly obtained the patent
for that which was in fact invented by another, who was using
reasonable diligence in adapting or perfecting the same; or"
"3. That it had been patented or described in some printed
publication prior to his supposed invention or discovery thereof;
or "
Page 112 U. S. 367
"4. That he was not the original and first inventor or
discoverer of any material and substantial part of the thing
patented; or"
"5. That it had been in public use or on sale in this country
for more than two years before his application for a patent, or had
been abandoned to the public."
The statute also requires the defendant in such cases to give
the patentee notice with great particularity of the persons who are
prior inventors, or have knowledge of prior use of the invention,
and when and by whom it has been used.
It will be observed that while these defenses go to the validity
of the patent, they all resolve themselves into want of novelty, or
of priority of invention, or discovery, except the first and the
last.
Neither laches nor fraud is here mentioned as a defense to the
patent.
Why were these five points made matter of defense by statute?
and why were no others mentioned? The answers to these two
questions are obvious, and they are conclusive of the question
before us.
The answer to the first question is that these defenses go to
impeach the patent and destroy its value as evidence in that case,
and by the law, as it stood then, and as it stands now, this cannot
be done without a special statute to authorize it.
And the reason why no other grounds for impeaching the patent
were allowed to be set up in defense was that Congress intended
that all other causes for impeaching the patent should be
prosecuted in the usual mode of
scire facias or bill in
chancery brought by the proper law officers of the government to
set it aside and annul it.
If Congress had intended that the patent, issued with all the
necessary formalities, should be assailed collaterally for every
reason that might have been urged against its issue originally, it
would have said so in short terms, and not have enumerated
particular or special reasons for which it may be so attacked.
That laches is not one of these reasons is clear, and affords an
unanswerable argument that it was not intended that it should be a
ground of defense for its infringement in such actions.
Page 112 U. S. 368
The careful and studied enumeration of matters going to impeach
the patent, where a suit is brought to enforce rights granted by
it, is the strongest affirmation that no others are admissible for
that purpose in that kind of suit. In
United States v.
Throckmorton, the Court said that
"in so important a matter as impeaching the grants of the
government under its seal, its highest law officer should be
consulted, and should give the support of his name and authority to
the suit."
In
Mowry v.
Whitney, 14 Wall. 441, it is said that a suit by an
individual could only be conclusive in result as between the
parties, and would leave the instrument valid as to all others, and
the patentee might be subjected to innumerable vexatious suits to
set aside his patent.
"It would seriously impair the value of the title which the
government grants, after regular proceedings before officers
appointed for the purpose, if the validity of the instrument by
which the grant is made can be impeached by anyone whose interest
may be affected by it, and would tend to discredit the authority of
the government in such matters."
If the principles of the opinion in the present case are sound,
then in every case where an action at law is brought, the jury must
sit in judgment on the action of the Commissioner of Patents as to
the existence of laches, where that is alleged, and as there may be
a dozen jury trials in suits against as many different parties for
infringing the same patent, each jury deciding on its own
impression of the evidence before it, the question of the validity
of the reissue can never be settled, nor the patentee or the public
know whether his patent is valid or worthless.
Such a departure from the settled rules of law as applicable to
these instruments cannot be justified in a court until authorized
by legislative power.
In several cases which have preceded this one, especially
Miller v. Brass Company, 104 U. S. 350,
where this doctrine has been stated in the opinion, other grounds
were also given as the foundation of the judgment. I had hoped,
when we came to a case where the question
must be decided,
my brethren would
Page 112 U. S. 369
not adopt it, on full consideration. This must be my apology for
any apparent acquiescence in it heretofore. I am of opinion that
reissued patents are entitled to the same consideration as other
patents issued by the government.