of 44 feet on Fourteenth street, on the south by a line parallel with New York avenue, on the west by the west line of the lot, and on the north by the line of New York avenue. But the inherent difficulty in this view arises from the description in the marshal's advertisement and in his deed for the property actually sold and conveyed. That description will not cover the ground included in the supposed parallelogram. Further, if the front of the building is conceded to be on Fourteenth street, the lot over which the statute extended the mechanic's lien would not be the ground between New York avenue and a line running parallel with and 44 feet from it. In such case, the ground covered by the lien would rather be that which lies north of a line commencing 44 feet south of the north-east corner of the lot, and extended at right angles from Fourteenth street until it strikes New York avenue. But a conclusive answer to the suggestion, based upon the mechanic's lien law, is that, so far as the record discloses, Plant and Emory did not, when enforcing their claims, assert a lien-upon the ground within the beforementioned parallelogram. We are of opinion, upon the whole case, that the record fails to show that any part of lot 7, outside of the piece upon which the building at the northeast corner of the lot stands, was sold or conveyed by the marshal to Richards; consequently, for the purposes of this suit, and as between the parties thereto, all of lot 7, except the part actually covered by the building, must be deemed to be embraced by the original decree, and to be subject to sale, as therein adjudged, in satisfaction of the demands of complainants. Whether that part of the lot upon which the building stands is still the property of Mackall-that is, whether the sale and conveyance of the marshal is valid in respect, at least, of that part of the lot-we do not determine. We forbear any expression of opinion upon that question, because it is evident that the complainants did not seek, nor the court below intend, by the original decree, to subject to sale the ground on which the building stands; and also because the validity of the marshal's sale is directly involved, as we are informed by counsel, in a distinct suit upon our docket, not yet reached. The decree must be reversed, and the cause remanded, with directions to the court below to set aside the decree from which this appeal is prosecuted, and to order the sale, in satisfaction of the complainants' demands, and in such mode as may be consistent with the practice of the court and with law, of lot 7 outside of the part upon which the building known as the Palace Market stands. It is so ordered. *377 (112 U. S. 354) MAHN . HARWOOD and others. (December 1, 1884.) 1. PATENTS FOR INVENTIONS-OSGOOD BALL-COVERS. A patent for ball-covers, issued to James H. 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. 2. SAME-REISSUE-ENLARGING CLAIMS. The principles announced in the case of Miller v. Brass Co. 104 U. S. 350, in reference to reissuing patents for the purpose of enlarging the claims, reiterated and ex. plained. 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 inves. tion, or where a reissue is for a different invention from that described in the original patent, etc. 4. SAME-ENLARGEMENT OF CLAIMS IN REISSUE. 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. 5. SAME-APPLICATION, WHEN Made. 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. 6. SAME-WHAT IS A REASONABLE TIME. 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 towards the patentee. But as the law charges him with notice of what his patent contains, he will be held 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. 7. SAME-DELAY OF FOUR YEARS. *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. Appeal from the Circuit Court of the United States for the District of Massachusetts. Thos. Wm. Clarke, for appellant. J. E. Maynadier, for appellee. BRADLEY, J. This suit was brought on a patent relating to leather covers of "base-balls 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 eleventh of April, 1876, it was reissued, and the suit is brought on the reissue against the Harwoods, chargng 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 moulded into form when in a wet state, and, after oeing dried, sewed together on to the ball by a peculiar stitch, called a double nerring-bone 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. 998 In the original patent it is stated that the nature of the invention consistsFirst, in the employment of a new stitch, called the double herring-bone secured stitch, whereby only one stitch can be broken at a time; second, in the employment of a binder of leather next the yarn of a base-ball, 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 fol. Icwing, namely: "(1) A ball exterior, composed of two crimped hemispher 356 *358 *357 ical 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, r and y, breaking joints, I claim the double herring-bone 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, 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 herring-bone stitch in combination with the two covers. In the reissue it is stated that "the nature of the invention consistsFirst, in the cover of a base-ball formed of two pieces of leather suitably secured to each other; second, the seams of a base-ball united by the double herring-bone knotted lock-stitch; third, a base-hall covering consisting of an outer and an inner covering applied to the ball independently of each other; fourth, a base-ball 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 base-ball cover formed of two pieces of leather, secured to each other by a single seam, substantially as and for the purpose specified. (2) A base-ball cover having its seam united by the double herring-bone knotted lock-stitch, substantially as and for the purpose specified. (3) The covering of a base-ball 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 base-ball 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 base-ball cover formed of two pieces of leather, fastened together by a single seam, substantially as and for the purpose described; secondly, any and every base-ball cover having its seam united by the double herringbone stitch, substantially, etc.; thirdly, every and any use of two covers on a base-ball, each made of two pieces of leather, and applied to the ball independently of each other, substantially, etc. 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, 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. 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 R. Co. v. U. S. 92 U. S. 733; Newhall v. Sanger, Id. 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, 197-199; Atlantic Works v. Brady, 107 U. S. 199; S. C. 2 SUP. CT. REP. 225; Slawson v. Grand St. R. Co. Id. 652; S. C. 2* SUP. CT. REP. 663; King v. Gallun, 109 U. S. 101; S. C. 3 SUP. CT. REP. 85. 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, 574; Gill v. Well, 22 Wall. 1; Collar Co. v. Van Dusen, 23 Wall. 530, 560; Wood Paper Patent, Id. 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. 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. 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 di-, rectly affect the government, and only indirectly the citizen. Now, in our judgment, a patent for an invention cannot 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 v.58-12 098. +362 *361 time is an abuse of the power, and is founded on a total misconception of the Jaw. 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 is 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 Co. The taking out of a patent which has, as the law requires it to have, 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 use, 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 lost, and the commissioner will be held to have |