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cause the pin, d, which projects on both sides of the block, B, to fall into ono of the notches, e, provided in the casing. Thus the rod, with block, B, and universal link, E, is held in place by the action of spring, F, and pin, d, and can be moved only by turning the rod, C, slightly on its axis, so as to disengage the pin, d, from the notch, e. It will be seen that whenever the hand of the operator*should happen to loose its hold upon the rod, the spring, F, will cause the pin, d, to fall into the next notch and arrest the further movement of the block, B, and thereby the movement of the transom. The transom may thus be locked at any desired position. The rod, C, is provided at its lower end with handle, H, arranged with an opening for the finger, so that the rod may be with convenience turned and lifted or lowered at will. For transoms hinged at the lower edge of the frame (shown in Figs. 1 and 2) the transom with loop, D, hangs in the universal link, E. The casing, A, with adjusting block is affixed above. When operating the same the block bears with its shoulders, h, upon the inner face of casing, A. For transoms hinged at the upper frame, as shown in Figs. 3 and 4, the casing is fastened below, so that the adjusting block may be held by the lowest notch, e. While the transom is closed the universal link hangs downward from the loop, D. In this case, when operated, the bearing between block and casing is reversed, and is taken up by a pin, 9, penetrating through the ear of the block and resting upon the outer face of the casing, A. For oblique transoms the lifter is atħixed as shown in Fig. 5. Fig. 6 shows a transom hinged at the side. The casing of lifter is affixed vertically at the hinged side, the adjusting block being in the highest notch when the transom is closed. For transoms hinged in the middle the lifter may be affixed either above or below the hinged cen. ter. For sky-lights the lifter is affixed as shown in Fig. 7. It will be seen that the universal link, E, with its two swiveling loop ends, will always be ready to form a connection between the transom loop, D, and the ear, b, of the adjusting block, no matter which way the transom may be hinged.
“What I claim as my invention, and desire to secure by letters patent, is: (1) The casing, A, with a slot, a, containing the adjusting block, B, with upright rod, c, in combination with chain-link, E, and loop, D, all arranged and constructed in the manner as shown, and for the purpose specified.* (2) The adjusting block, B, rod, C, pin, d, and spring, F, in combination with casing, A, provided with a slot, a, and notches, e, e, for the purpose set forth.”
The specification of the complainant's patent undertakes broadly to describe the invention, intended to be embraced in it, as “any construction, combination, or arrangement of parts which shall support the long or operating rod, and prevent it from being bent or displaced by the weight of the transom." But, having reference to the state of the art at the date of the alleged invention, and the claims of the patent, the patentee must be limited to the combination with a transom, its lifting-arm and operating rod, of a guide for the upper end of the operating rod, prolonged beyond the junction with the lifting-arm, so as to prevent the operating rod from being bent or displaced by the weight of the transom.
Putting by the question whether this is a patentable invention, in view of the existing state of the art, the claim must be regarded as a narrow one, and limited to the particular combination described. In that view, the defendant's arrangement is no infringement. The difference between the two devices is pointed out, and, as we think, satisfactorily, by Mr. Dayton, an expert witness, on behalf of the defendant.
He says: “When the sash is opened in the Reiher transom not an ounce of its weight falls upon, either laterally or obliquely, the upright rod. The Reiher transom is provided at its lower end with a block which runs in a guide, and which is so constructed, with inner flanges and an external pin, arranged to bear respectively upon the inner and outer faces of the slotted guide which he emplojs, and which is fixed on the frame, as to receive all the pressure resulting
from the weight of the transom. The handle or the long upright rod in the said Reiher transom is designed and serves wholly as a means of reaching the foot of the lifting-arın, and pushing it upward or drawing it downward. As I before stated, not a particle of inward or lateral pressure falls upon the end of this rod by reason of the weight of the transom. In my judgment, such upright rod may for this purpose as well be absent as present. I stated that the sole purpose of the long upright rod was to reach and lift the foot of these block with the end of the lifting-rod. To be accurate, I also state that it* serves additionally to operate a novel locking device, with which said footpiece of the lifting-arm is provided. So far, then, as the function of the guide, G', in the Wollensak patent, or the upper guide in the numbers 1 and 3 of the Wollensak transom model is concerned, I find that the Reilier transom presents a totally different structure, operating on a totally different principle from that exhibited in the Wollensak transom model.
“In my judgment, the improvements of Mr. Reiher, as exemplified in the Reiher transom exhibit, are based upon and proceed from a totally different point in the state of the art of transom lifters from that admitted to be old in the passage quoted from Wollensak's patent specifications, and upon which Wollensak's improvements are based. It is a matter of common knowledge, I believe, and it is certainly within my personal knowledge, that transoms or flap windows were, long prior to the date of Wollensak's original patent, provided with a pivoted brace, the foot of which was movable against the frame of such window or door. This is precisely the point in the art to which Mr. Reiher in his transom lifter has applied his improvements. His improvements do not involve the removal of the weight of the transom from a direct bearing against the frame at the foot of the lifting-arm, and have not that object. Mr. Reiher sought, evidently, only to provide a ready locking device by which the foot of the lifting.arm may be secured at any point quickly, and by which he may at once reach the locking device and lift the transom, through the medium of the long upright rod. Said long upright rod in his case is not, therefore, made stronger or weaker with a view to prevent its bending, and is only strong enough in any case to enable him to push up the foot of the lifting-arm, and by rotating the rod, to unlock his novel fastening device. There was no fault in the old structure upon which Mr. Reiher has made his improvements like that assigned to the old device upon which Wollensak has improved, namely, the bending of the vertical rod having a lifting-rod connected therewith, because said lifting-arm did not, in the old device attacked by Reiher, have any vertical rod at all, and because the lifting-arm distinctly* bore against the frame instead of against the rod."
It follows that the decree of the circuit court, dismissing the bill for want of equity, was correct. It is accordingly affirmed.
(115 U. S. 96)
WOLLENSAK 0. REIHER.1
(May 4, 1885.) PATENT LAW-REISSUE-LACH ES.
If a patentee fails, within a reasonable time, to correct a claim which he considers too narrow, he loses the right to a reissue. Appeal from the Circuit Court of the United States for the Northern District of Illinois.
Ephraim Banning, Thos. A. Banning, and L. L. Bond, for appellants. Wm. A. McKenney, for appellee.
MATTHEWS, J. This is a bill in equity to restrain by injunction the alleged to infringement by the defendant below of reissued letters patent No. 10,204,*
iS. C. 22 Fed. Rep. 651.
issued to the complainant December 26, 1882, upon the surrender of original letters patent No. 148,538, dated March 10, 1874, granted to the complainant for a new and useful improvement in transom lifters. There was exhibited with the bill, as parts thereof, copies of the original and reissued letters patent. The defendant dem urred to the bill for want of equity. The demurrer was sustained, and the bill dismissed. From that decree this appeal was taken.
The original patent was confined to two claims, which are also the first two in the reissued patent. The latter, which, in its specification and drawings, is substantially the same with the original, adds seven additional claims, making nine in all. Of these, the bill alleges infringement as to the third, fourth, fifth, sixth, and ninth. The bill, after averring the issue of the original patent, and, referring to the copy set out as an exhibit, contains the following averments:
“That said letters patent, being afterwards found to be inoperative or invalid, by reason of an insufficient or defective specification, which insufficiency or defect had arisen through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention on the part of your orator, were afterwards surrendered, and duly canceled by the commissioner of patents; that thereupon, and upon due application therefor, reissued letters patent of the United States, No. 10,264, were issued to your orator, dated the twenty-sixth day of December, 1882, granting to him, his heirs, or assigns, for the term of seventeen years from the said tenth day of March, 1874, the full and exclusive right of making, using, and vending to others to be used, the said invention, as by reference to said reissued letters patent, here in court to be produced, and a copy of the specification and drawings of which is hereto attached, will more fully appear; that said reissued letters patent were applied for in good faith, and not for any fraudulent or improper purpose; that, as your orator verily believes, no other person, firm, or corporation, not acting under his authority, ever began the manufacture, sale, or use of transom lifters containing or embodying said inventions or improvements until long after your orator had consulted counsel and taken steps towards applying for said reissue, and until long after your orator had applied for and obtained a reissue of his previous patent on transom lifters, having broader claims than any now contained in said reissue No. 10,264; that in making said application for said last-mentioned reissue, your orator presented to the patent-office a full, sworn statement of facts and circumstances connected with his applying for and obtaining said original patent No. 148,538, and with his delay in applying for said reissue; that at the first said reissue application was rejected, on the ground that such statement did not show or furnish any sufficient explanation or excuse for said delay, and that your orator had lost his rights to such a reissue by reason thereof, the examiner citing Miller v. Brass Co. 104 U. S. 350, and other cases; that, on appeal, said decision or rejection was reversed by the examiners in chief constituting the patent-office board of appeal; that, in a long and full opinion, said examiners in chief expressly held that your orator had sufficiently and satisfactorily explained said delay, and was still entitled to such a reissue; and that a part of said opinion, referring to claims appearing in said reissue, and now in controversy, was as follows:
" • All the above claims, moreover, have been rejected upon a supposed legal bar to enlargement of claim, found in certain recent decisions of the courts, mainly of the supreme court of the United States, on which the other decisions cited are based.
* We find, upon review, that there was a grave defect in applicant's patent and claims, whereby it was inoperative to protect the invention disclosed by hiin to the full extent to which he was entitled. * * We do not find any evidence of such laches or delay, after ascertaining the defects of his patent, as to debar or estop him from the benefits of the statute. We do not find in his renewed application any at
tempt to enlarge the scope of his invention beyond what was originally disclosed, but, on the contrary, an attempt to secure protection for the invention contained in the patent.'
For the purpose of deciding the question of law, arising on the demurrer to the bill, it is not necessary to set out the several claims in the original and reissued patents, with a view to a comparison. It is sufficient to say that it* is not claimed that the defendant is guilty of an infringement of either of the claims in the original patent as repeated in the reissue; and it is admitted that the claims in the reissued patent, infringement of which is averred, are expansions of the original claims, not covered by them, but alleged, nevertheless, to be embraced within the invention as described in the original patent. This is to say that if, as a matter of fact, the patentee was the first and original inventor of the parts and combinations covered by these claims, the language of the specification to the original patent would sufficiently embrace them. It follows from this that if, at the date of the issue of the original patent, the patentee had been conscious of the nature and extent of his invention, an inspection of the patent, when issued, and an examination of its terms, made with that reasonable degree of care which is habitual to and expected of men in the management of their own interests, in the ordinary affairs of life, would have immediately informed him that the patent had failed fully to cover the area of his invention. And this must be deemed to be no tice to hiin of the fact, for the law imputes knowledge when opportunity and interest, combined with reasonable care, would necessarily impart it. Not to improve such opportunity, under the stimulus of self-interest, with reasonable diligence, constitutes laches which in equity disables the party who seeks to revive a right which he has allowed to lie unclaimed from enforcing it, to the detriment of those who have, in consequence, been led to act as though it were abandoned.
This general doctrine of equity was applied with great distinctness to the correction of alleged mistakes in patents, by reissues, in the case of Miller v. Brass Co. 104 U. S. 350. It was there declared that where the mistake suggested was merely that the claim was not as broad as it might have been, it was apparent upon the first inspection of the patent, and if any correction was desired, it should have been applied for immediately; that the granting of a reissue for such a purpose, after an unreasonable delay, is clearly an abuse of the power to grant reissues, and may justly be declared illegal and *void; that, in reference to reissues made for the purpose of enlarging the scope of the patent, the rule of laches 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 implied disclaimer involved in the terms of the original patent; and that when this is a matter apparent on the face of the instrument, upon a inere comparison of the original patent with the reissue, it is competent for the courts to decide whether the delay was un reasonable and whether the reissue was therefore contrary to law and void.
This doctrine has been reiterated in many cases since, and at the present term has been reconsidered, and emphatically repeated as the settled law, in the case of Mahn v. Harwood, 112 U. S. 354, S. C., ante, 174, where it is said by Mr. Justice BRADLEY, delivering the opinion of the court: “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 a 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.” It was also there said that, while no invariable rule can be laid down as to what is a reasonable time within which the patentee should seek for the correction of a claim
which he considers too narrow, a delay of two years, by analogy to the law of public use before an application for a patent, should be construed equally favorable to the public, and that excuse for any longer delay than that should be made manifest by the special circumstances of the case.
In the present case the delay in applying for the reissue was more than five years. No special circumstances to account for or excuse the delay are set out in the bill. In lieu of such a statement, the complainant avers that he presented to the patent-office a full, sworn statement of facts and circumstances connected with his applying for and obtaining his original patent, and with his delay in applying for the reissue, and that the examiners in chief decided that he had sufficiently and satisfactorily explained the delay, and was entitled to the reissue. But this does not satisfy the law. The question as to whether the delay had been reasonable or unreasonable is for the court to determine, upon the special circumstances brought to its attention; and it cannot substitute the decision of the patent-office upon that question for its own. The very question is whether the patent-office has decided rightly, and, as it is a question of power and jurisdiction, in which the delay shown is prima facie unlawful, it is incumbent on the party seeking to establish the jurisdiction of the patent-office to grant the reissue, to show the facts on which it rests. In every case of a reissue, that office, either expressly or impliedly, decides the question of diligence on the part of the patentee; and the grant of a reissue is a decision that the delay has not been unreasonable. That, therefore, is the very question for judicial review, in every suit to enforce a reissued patent, in which the question is made; and, as we have seen, the settled rule of decision is that if it appears, in cases where the claim is merely expanded, that the delay has been for two years or more, it is adjudged to invalidate the reissue, unless the delay is accounted for and excused by special circumstances, which show it to have been not unreasonable.
When, therefore, the injunction bill sets out or exhibits both the original and the reissued patent, and it appears from inspection that the sole object of the reissue was to enlarge and expand the claims of the original, and that a delay of two or more years has taken place in applying for the reissue, not explained by special circumstances showing it to be reasonable, the question of laches is a question of law arising on the face of the bill, which avails as a defense, upon a general demurrer for want of equity. This rule of equity pleading applies in analogous cases; as where, it otherwise appearing on the face of the bill that the claim is stale, or is barred by lapse of time, and it is sought to avoid the effect of such a bar on the ground that the fraud complained of was concealed, and has been only recently discovered, it is necessary that "the particular acts of fraud or concealment should have been set forth by distinct averments, as well as the time when discovered, so that the court may see whether, by the exercise of ordinary diligence, the discovery might not have been before made.” Beaubien v. Beaubien, 23 How. 190; Stearns v. Page, 7 How. 819; Moore v. Greene, 19 How. 69; Marsh v. Whitmore, 21 Wall. 178, 185; Godden v. Kimmell, 99 U. S. 201; Badger v. Badger, 2 Wall. 87, 95; Wo v. Carpenter, 101 U. S. 135; Landsdale v. Smith, 106 U. S. 391; S. C. 1 SUP. CT. REP. 350.
The decree of the circuit court dismissing the bill for want of equity was correct, and is affirmed.