'FEDERAL REPQR'J;'EB.
JENKINS and another SAME 'IJ.
'IJ.
STETSON.
FERGUSON.
'(Circuit Oourt, D. Ma88aohu8,eea. September 20.1887.) 1. PATlllNTS FOR INVENTIONS-OLAtMS IN REISSUE-SUBCOMBINATIONS.
'Subcombinations may be claimed in a reissue of letters patent. if shown in the 'original as performing the same function. even though (llaimed only as a pa,t ofa largllr combination. '
,
2.
SAME.
is applied for less than six months after the grant of the originalpatElUt, in which combinations are described which are found in the ori/;\'ina,J 'patent, being merely sUbcombinations of the combination therein de· scrib!ld; such reissue will not be held void simply for the absence of a show' ing of, inadvertence or mistake. '
8.
SAMlll-BROADER OLAIMS IN RE1SSUE.
Reissued letters patent. granted December 24, 1872"to J Hyslop. Jr.· for an improve:cnent in machines for making shoe-sbanks, described an arrangement!>f a fixed bending-die for bending a plate to form the middle curve of the' apd actuating devices therefor, in a machine for cutting and punch· ing' said 'blanks. so as to receive the blanks from said, cutting devices, and bend and']dlscharge them'automatically. Reissue of April 0, 1878, described, ,in sucli'lL machine, a plate, a convex-faced bender-plate, and 0. concave face, in combination. Held, that the latter description. embracing fewer elements thalltheJ:ormer, was broader in its claims. and the reissue so far void.! Reissulld,letters patent, granted to J. Hyslop, Jr." December 24, 1872, for an improvement in machines for making shoe-shanks, described bending-dies constructed and arranged to form the middle bend and the reverse bends by one and'th'e' saine operatioli of, tne dies; Reissue of April 0, 1878, claimed a fixed beIidhig-die, movable bending-die, and projections whereby the middle and reverse bends of the shoe-shank are formed. Held that, while the sec· ond claim was mOre specific, it described the same and was not broader than the first. ,",
,. SAME.
InEquity.
of
to
Rep. 684, and note.
'Concerning the validity of reissues of letters patent, see .Asmus v. Alden, 27 Fed.
399 a shoe·shank, lmd actuating devices therefor, in a machine adapted for cutting and punching said blanks, in such manner that the blanks are received from the cutting devices, and bent and discharged auin the tomatically,substantiallyas specified. ' "(3) The said bending-dies, cOllstructed and arranged to form the middle bend and the reverse bends by one and the same operation of the dies, substantially as specified." On April 9, 1878, more than five years after this, a second reissue was granted, with a further expansion' of claims to the number of six, which are here given, except the first" which is the same in both flues as in the original: "(2) In a machine for making metallic shoe-shanks, the plate, d!l., the,convex-faced bender-plate, w. and the concave face,'D, in combination, fOF the purpose above specifired., , ," , ,. "(3) In a machine 'for making metallic shoe-shanks, the with and movable bending-die, of a' pair of stopthe fixed or stationary 'pins, c2isecured wthe top, and plate, d 2, at the bottom, of the mov.ab1l:\:ilie, for arresting and holding the blanks, as, described. ,', "(4) In unl,\chine for making metallic shoe-shanks, the,colllbination, with ,the ()F,atationary bending-die and movable bending-die, of a pair Of pins OF pfI)jeciioliS, 62, e;tending from the bender-plate, Whereby the mid. dIe and reverse'bendsof a metallic sho&shankareformed'atone and the same opElration,as described. : "(5) Ina 'machine for making metallic shoe-shanks, the combination of the -cutting and punching mechanism, chuw, m, h, stop-pins, &, dies, 'D, W, alld arranged and operating in relatioll to each other tially as def$Wib¢"wlwreby the shoe-shank is cut and ppnched, conducted to dies" presse(i into shape, and automatically. ,' "(6) In a machine for making metallic, shoe-shanks, in combination With ,tlie concave-faced statiohinydia, 'D, the' reciprocating convex-faced bender. plate or die, W, with stop-pins,c2, projecitions, 6 2, and Pfutei d 2, secured thereto, as described, for the purposes Thespedifications and drawings ate in substance the same'in'the reissues as in the original patent. The validity or the first reissue is at'tacked Cln the gtound that inadvertence, acCident, or; 'mistake is ,ilhown, such as would warrant the granting ofa 'reissue under tliestatand, secondly, because the reissue contains br()ader claims than the originl\lpatent. , hearing is upon dernurrer. The bill al'leges that the patent surrendered ,for good andlega.l'cause,ahddulr 'reissued. The combinationswhich go to make upthe two additional 'claims in the first reissue are found described, in the original patent. They are in fact but subcombinations of the generalcombinatioh which constitutes the'only claim in the original patent. The reissue was applied for in less than six months after the grant of the originlllpatent. Under these circumstancE\s, I iirnnot 'prepared to hold that the reissue 'is void because no iUlI,dvertence '6r mistake is shown. As to the second ,objection, I do not understand that the law as it now exists; tinder the recent decision's of the supreme courf,precludes patentee from obtaining a reissue with broader claims than those covered by his original , patent, provided that he is not guiltY of laches, in applying for such reinventiOtl as' the origihlll. In issue, and the' reissue' is 'for the , ,
was
a.
400
FEDERAL REPORTER.
Miller v. Bra88 00., 104 U. S. 850, the court say: "But in reference to reissues made for the purpose of enlarging the scope of the patent, the ruleoflaches should be strictly applied; and no one should be relieved who has, slept upon his rights, and has thus led the public to rely on the itilpliea dischiimer involved in the terms of the original patent." ,In the present case itis not seriously contended that there was unreasonable delay in applYIng for the first reissue. Nor can it be said that the 'new and' broader Claimsofthe first reissue are for a different invention from that described in the original patent, because the specifications and drawings in both are in substance identicaJ. As I have already said, the two additional claims of the first reissue are subcombinations of the more genel'alclaim intheoriginal patent. A subcombinationmay be claimed in a reissue if it was shown' in tHe original as performing the same function,even ,thC?ugh.it ,was claimed only as a part of a larger combination. cited. ; ,... Walk. Pat. 'rhe original specification states that "the invention relates to the Organization of a machine by whibh, from sheet steel or other metal of req'uisite width. shanks for boots and shoes are cut, punched, and bent, lind nave their the operations being continuous or ..automatiCaIly,,Successiv6;and the illvention consists in thecombination and arrangement of mechanism for cutting, punching, and bending shoeshanks." It is sought by this language, which also appears in the reissues,t@ limit the scope of the invention to the combination of the cutting, punching; and bending devices which are embraced in the first , claim; But this language of the patent does not, it seems to me, forbid the patentee from making additional claims for subcombinations ina reissue seasonably applied for, provided thqse subcombinations are fOUJ,ld described in the original patent. Upon the whole I fail to find any valid objection to the validity of the first reissue. , As to the second reissue, it is apparent that any claims therein which are broader than those covered by the first reissue are void by rAason of want of due diligence in making the aP.plication. The plaintiffs seek to uphold the secon.d and fourth claims ofthe second reissue, on the ground that they are the same in substance, or more narrow than the second and third claims of the first reissue. Gage v Herring, 107 U. S. 640, 2 Sup. Gt. Rep, 819; ,Gould v. Spicer, 151?ed. Rep. 844; Oote v. Moffitt, Id. 845. So far nsthe, second claim of the first reissue and the second claim of second reissue,! am unable. to agree withthepJaintiffs that they are for the ,same combination. The words "and actuatlng device therefor, in a machine adapted fQr cutting and punching said blanks, in such manner that the blanks are received in the bending-dies from the cutting dearvices," in, the ,second claim of the first leissue, make it clear that rangeruent. by that claim embraced more elements than ar-e conreissue, and consequently tained in the, corresponding claim of .tpe,claim intb,esecondr("issue is broader,apd therefore void. But with 'J:llSpect to the third eIaimofthenrst reissue, and the fou.rth .claim of the se<;O/:ld, .jt seems to me thatboth are'for same (lombination. In the ,prst claim is for constructed and arranged
HAT-SWEAT MANUF'G CO. V. DAVIS SEWING-MACHINE CO.
401
to form the middle bend and the reverse bends, by one and the same operation, substantially as described; in the second reissue, the claim is for the fixed bending-die, movable bending-die. and pins, or projections, fiJ, whereby the middle and reverse bends of the shoe-shank are formed. While the language of the claim is more specific in the second reissue, the elements which go to maJre up the combination are the same as those described in the first reissue. It follows tbat the demurrer to the bill must be overruled; and itis so ordered. Demurrer overruled.
HAT-SWEAT MANUF'G
Co.
'11. DAVIS SEWING-MACHINE
(Oircuit Oourt, No
J). 1{ew
York. October 14, 1887.)
<PATENTS FOR INVENTIONS-bfFmNGEMENT-lNJUNCTION.
On motion for preliminary injunction. it appeared that the utility and value of the patent (letters patent No. 218,220, of August 5, 1879, to John Bigelow, for an improvement insweat·bands for hats and caps) had long been recog· nized by the trade. A large number of licenses had been taken, some volun· tarily, others upon settlement of litigation. The invention had been thorQUt{hly investigated in the patent-office, and there had also been a qua8i adJudICation in its favor in the circuit court of a neighboring circuit. The defendant admitted infringement, but set up want of patentable novelty. The affidavits submitted in support of want of novelty were made, some by licensees, some by affiants who had made contrary statements out of and some by persons who in former litigation had been sworn, but had not pointed out these instances of anticipation. Many manufacturers testified that they knew of no prior use. Held, that these facts raised a presumption that the patent was valid,and, as the loss to the defendant from granting the injunction would be trifling as compared with that which the complainant would Buffer from its refusal, the writ should issue.
In Equity. junction.
Bill fo1' infringement.
On motion for a preliminary in-
John R. Bennett, for complainant. Edmund Wetmore, for defendant.
COXE, J. The complainant is the assignee of letters patent No. 218" 220, granted August 5, 1879, to John Bigelow, for an improvement in sweat-bands for bats and caps, popularly known as the "Concealed in manufacturing and sellStitch Sweat.» The complainant is ing, and in granting licenses to others to manufacture and sell, hatsweats unoer various patents owned by it. One of the most valuable of these is the patent in controversy. . The capital stock of the complainant is $300,000. A large number of workmen find employment in manufacturing its products, and its business is prosperous and extensive. This flourishing industry has been built up and sustained through a long period of years by the enterprise, pluck, and energy of tbe.men who have managed the affairs of the complainant. After the introduction of the "conceale"d stitch sweat» its