Citation Numbers: 22 F. 98
Judges: Sawyer
Filed Date: 9/1/1884
Status: Precedential
Modified Date: 9/9/2022
(orally.) This is a suit in equity upon a reissued patent. The patent was reissued 11 years after the date of the issue of the original patent, and it enlarges the claims of the patent very materially. The reissued patent embraces a claim for the process, as
In the ease of James v. Campbell, 104 U. S. 357, it was held that a process is a very different thing from the mechanism by which it is carried out, and is a di fferent and distinct patentable invention. 1 am unable to take this case out of the rule laid down in Miller v. Brass Co. 104 U. S. 850, which holds that after so long a period of lime a patent cannot bo enlarged by a reissue so as to embrace matters nos within the original patent. When that ease was first decided I was uncertain how far the supreme court intended to go, but the court has affirmed it and reaffirmed it, I suppose, half a dozen times since, down to t ie very last part of the present term of the court, showing that it was intended to hold rigidly to the strictest rule laid down in that case. In some of the cases only five years had elapsed, but in this there were eleven. I am unable to take it out of the rule in that ease without utterly disregarding the decisions of the supremo court. On the part of the complainants here it is sought to take the case out of the rule cited on the principle stated in Morey v. Lockwood, 8 Wall. 240, and Russell v. Dodge, 93 U. S. 461.
Tn Russell v. Dodge the patent was issued .in 1869 and reissued in 1870, within a year. No such question as this is involved in that case. That patent was for tanning a certain kind of leather with hot fat, and it is nowhere intimated in the specifications of the patent or the claim that cold fat could or would perform the same offices and be equally practicable as hot fat: but it turned out that cold fat was as good as hot fat, or, at least, that it practically answered the same purpose, and the patentee thereupon applied for and afterwards obtained a reissue covering cold fat. The supreme court held the patent to be void as covering matters not suggested or indicated in the original specifications and patent, and said that it was not a case like Morey v. Lockwood, quoting a passage from the decision in the latter caise, wherein the party who applied for the reissue had endeavored to obtain a patent for the whole invention in his original application, and the patent-office had refused to grant it to him, and compelled him to strike out of his original application and claim the parts which were afterwards inserted in the reissued patent, and for tins reason it was the fault of the office that lie did not get his patent for his entire invention.
The question there was not as to the time within which the application for a reissue must be made, but related to the extent to which the patentee could go, under the circumstances, in inserting new matter. The court said, in Russell v. Dodge, that it is not a case like the former one of Morey v. Lockwood, and quote the passage referred to saying that, under the circumstances of this case, the rule adopted in
I am, therefore, unable to take it out of these cases, and I must hold the patent void in those points in which it was claimed to be infringed; and the bill must therefore be dismissed.