880 MATHEWS
J'EDERAL REPORTER.
and others
t1. FLOWER
and others.
«(Mc'Uit Oo'Urt, E. D. Michigan. October 26, 1885.) l. PATENTS-IMPROVEMENT.
a. J.
A patent cannot be issued to an inventor for anything which is either claimed or described in a former patent issued to himself, but he may patent an improvement thereon.
SAl\IE-VOID-REISSUE.
Where a patent is declared void because too broad, the defect may be cor· rected by a reissue.
BAME-APPLICATION-REJECTION-RES ADJUDICATA.
Where the commissioner of patents has rejected an application for are· issue, on a reference to a prior patent, because it covered a different inventian from that disclosed in the .origmal invention, this, though reversed, will not operate as an estoppel, because rea addudicata, upon the parties in a judicial proceeding under the patent afterwards reissued.
In Equity. BROWN, J. It is scarcely necessary to say that this case not to be embarrassed by a reconsideration of the questions involved in Flower v. Detroit, 22 Fed. Rep. 292. That was a bill by the present defendants against a corporation which was making use of hydrants elaimed to be protected by plaintiffs' patent; and the case turned upon the validity of a patent issued to Thomas R. Bailey, March 14, 1876, (reissue No. 6,990,) which had been purchased by the defendants. The several points raised upon the argument of this case were considered with great care, and we see no reason for revising our rulings. We proceed to take up the several pleas in their order. 1. That in 1858 Mathews and Race procured patent No. 19,206, and afterwards and in 1872 Mathews, as the of such patent, procured a reissue of the same, (No. 4,887,) and to procure such reissue stated that the invention consisted in a loose case or jacket around the body of the hydrant, by which Mathews, as far as he could do, secured to himself a grant for the said invention, which is the same invention as that described in the letters patent sued upon, so that it results that the said Mathews is estopped from claiming any rights or equities in any way to said invention. If it were true that complainants had previously obtained a patent for the same invention secured to them by the patent in suit, and that this prior patent had expired, it would doubtless qe a complete answer to this bill, since a man cannot have two patents for the same invention. James v. Oampbell, 104 U. S. 356; Suffolk 00. v. Hayden, 3 Wall. 315; Morris v. Huntington, 1 Paine, And this disability extends, not only to what is claimed in the first patent, but to that which is described therein as the patentee's invention. If a man cannot have a patent for what another has claimed or described in a prior patent, much less can he have one for what he himself has claimed or described;
George L. Roberts, for plaintiffs. Edward J. Hill, for defendants.
:MATHEWS V. FLOWER.
831
for he thus shows that he has anticipated himself. James v. Oampbell, 104 U. 8. 356, 382. The question, then, is whether, in their reissue No. 4,887, Race and Mathews actually claimed or described the invention subsequently secured to them by the patent in suit. In this prior patent the invention is said to consist-First, in the employment of a loose case or jacket around the body of the hydrant, whereby both the hydrant and the case, or the hydrant alone, may be detached, and removed or withdrawn, as hereinafter set forth. The drawing, however, shows this loose case or jacket to be surrounded at its upper end by an elbow projecting from the superterrene portion of the hydrant, so that, while it permits the hydrant to be withdrawn without disturbing the case, it does not obviate the danger of breakage to the hydrant by the elevation of the case through the action of the frost. The claim, too, is for a protecting case or jacket, E, sur· rounding the body of the hydrant, and forming a separate and removable part from the elbow, D, substantially as and for the purpose set forth. The invention described in reissue No. 10,452 is said to consist iu an improvement upon this patent, "in which the distinguishing feature is a detached case or jacket surrounding the hydrant-stock and imbedded in the ground, but more specifically in combining a case or jacket with the hydrant-stock; the said jacket being loosely fitted to said and adapted to have end-play to compensate for the heaving by frost, sliding both at top aud bottom, and keeping a dead-air space between said hydrant-stock and jacket; further, in so forming and connecting the loose case or jacket above specified, that it extends above the surface of the ground, and conforms to the general outline of the hydrant itself, and may be driven back to place upon the elbow at the bottom when the frost has expended its force." The claim is for (1) "the detached case or jacket, B, combined with a hydrant to have end-play or vertical motion, to compensate for heaving by frost; the said case, B, forming a comparatively close sliding joint with the hydrant both at top and bottom, the upper part of same passing outside of the main stock of the hydrant, so that any change in its position can be easily ascertained, and the case driven back to its place without disturbing the hydrant. The object of the first patent was a secure a loose case or jacket around the hydrant, so that the hydrant might be withdrawn without disturbing the case. The improvement consisted in so connecting the case with the hydrant that the upheaval of the case a few inches by the frost would not injure or break the hydrant. Unless a person who patents a new article 01' device is thereafter estopped from patenting ttn improvement upon such article or device, there is no estoppel in this case. 2. That patent No. 96,959, the original of the reissue in suit, has been declared ,"oid by the supreme court in the case of Mathews v. Machine Co., and consequently the complainants had no patent to J)
832
FEDERAL REPORTER.
amend when they applied for this reissue, and the same is void. It is true that the opinion of the supreme court was that this patent could not be sustained because the claim was too broad; but such are. precisely the patents which, by Rev. St. § 4916, the commissioner is authorized to reissue; that is, in the language of the act: "Whenever any patent is .. .. '" invalid '" '" .. by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new." If defendants' proposition were sound, the whole provision with respect to reissues would be nullified. The case of Jones v. McMurray, 2 Hughes, 527, is not controlling. In that case the supreme court had declared the whole invention disclosed in the original patent void for want of novelty, and not merely invalid for want of a proper specification and claim, as in this case. 3. If the third plea be not a substantial repetition of the first, in somewhat different language, we are unable to understand it, and it is therefore overruled. 4. That after the filing of the application for the original patent in this case, October 29, 1868, it was rejected on reference to the prior patent of Bailey of March 10, 1868, which covered and anticipated all the alleged claims of Race and Mathews; that this decision has never been reversed or modified, and therefore is an adjudication and estoppel of record. The answer to this is that this action was superseded by the actual issue of patent No. 96,959 to Race and Mathews. We do not understand there is anything in the action of the commissioner in rejecting an application which operates as an estoppel or as res a,djudicata upon the parties in this court. Unless it be a good defense to a patent that the application for it was once rejected, this is not a good plea. 5. That Race and Mathews were duly notified that the patent to Bailey anticipated all the claims to the loose casing described in their application of October, 1868, and that on receiving such notice Math. ews says, in his deposition on file in the case of Flower v. Detroit, that he thereupon called upon Bailey, and asked him to disclaim the same in favor of Race and Mathews because they were the inventors of it, and that Bailey refused to do so, wherefore the complainants are estopped, etc. It is impossible for us to see how Mathews' assertion of a claim of right as against Bailey, and his request to Bailey to withdraw in his favor, could estop him from setting up the priority of his invention when that was the very claim he made when he requested Bailey to withdraw. It is not alleged that Bailey was deceived in any way, or that he took any action upon the faith of Mathews' request, which would make it bad faith in the latter to deny the validity of his patent. 6. That Race and Mathews, prior to 1872, applied for a reissue of No. 19,206, and therein claimed the same invention claimed in reissue No. 10,452, and to that end made oath that they made said invention prior to October 29, 1857, and thereupon obtained reissue
MATHEWS ". FLOWER.
838
No. 4,887, relating back to the date of the original patent in 1858, which thus gave them their prior patent for said invention described jn No. 10,452. This is practically the same as the first plea. The fact is that Race and Mathews, in their application for patent No. 19,206 did not claim the same invention claimed in the reissue now in suit. 7. That, after filing their application for the reissue of patent No. 96,959, a decision was made by the patent-office holding that the claims covered an invention different from that set forth in the original patent, "and they are therefore objected to on the ground that they are based on new matter," which decision has never been reversed nor superseded, but operates as an adjudication and estoppel of record. This plea is objectionable upon the same ground that the fourth plea was held to be bad. Whatever action adverse to the plaintiff was taken in the patent-office was superseded by the actual reissue of the patent, and it is for the court to determine whether such reissue is good or bad by a comparison of the same with the original patent. 8. That an appeal has been taken from the decree of this court dismissing the bill in the case of Flower v. Detroit, and a supersedeas bond filed, whereby the plaintiffs are estopped from claiming any benefit or advantage from said decree. Assuming that the appeal to the supreme court in the case of Flower'v. Detroit vacated the decree of this court, and prevents complainants from claiming any rights by virtue thereof, of which there is considerable doubt, (Freem. Judg. §§ 328, 433,) it certainly does not estop them from prosecuting a suit upon their own patent, the validity of which was not necessarily involved. and was not passed upon, in that case. The decision of this court turned entirely upon the validity of the Bailey patent. 9. This plea is similar to the first, and is bad for the same reason. 10. This plea claims that plaintiff is estopped by certain admissions of Mathews in giving testimony in the Detroit Case. We do not understand how this could operate as an estoppel. The remainder of the plea seems to be a substantial repetition of the others that have already been disposed of. 11. This plea is also a repetition, in substance, of the first, and therefore bad for the same reason. We have found considerable difficulty in getting at the substance of some of these pleas; but, upon the best consideration we have heen able to give them, we have come to the conclusion that none of them are a bar to the plaintiffs' bill. The reissue in this case is not open to the usual objection that the patentee has thereby songht to secure an expansion of his original claims, since the claim is actually narrower than that of the original. In the case of Mathews v. Machine Co., 105 U. S. 54, the court construed the original claim as covering any and every loose jacket having an end-play to compensate for the heaving of the frost, and having the upper end passing around the hydrant. It was intimated, however, that if this patv.25F,no.14-53 I
884
ent had been confined to a hydrant jacket closed at the bottom, and resting on a. flange of the main elbow, it might, perhaps, have been sustainable; but it was held not to be so confined by reason of the patentee's stating only that the lower end preferably shuts into a flange of the elbow. To secure the benefit of this suggestion of the court, the reissue was applied for and obtained. As heretofore observed in discussing the second plea, the case seems to be one where, under the express language of the statute, a disclaimer might be perU. S. 354, 360, 362; S. C. 5 Sup. mitted. Mahn v. Harwood, Ct. Rep. 174. We think there was no unnecessary delay in making this disclaimer. The construction of the original claim was doubtful; and we think that the patentee was not called upon to correct it until its meaning had been settled by the decision of the supreme court. Walk. Pat. § 521; O'Reilly v. Morse, 15 How. 62, 121; Seymour v. McCormick, 19 How. 96, 106; Silsby v. Foote, 20 How. 378,387. There is no question about the infringement in this case. Defendants are shown to be manufacturing under the Bailey patent, and the two hydrants are identical with respect to the patented features. We do not think that the waste-water spout attached to the bottom of the case in the early hydrants manufactured by the Niagara Manufacturing Company would prevent the case from operating to compensate for the heaving of the earth by frost, or that its discontinuance makes any substantial change in the action of the casing. Indeed, it would seem to offer much less resistance to the upward movement of the casing than the flange around the bottom of the Bailey casing, which never seems to have occurred to the patentee as an obstacle to its successful working. To prElvent the hydrant from freezing at its junction with the water-main, it must be long enough to reach below the frost-line. At this point, then, the earth would be sufficiently yielding to permit the slight upward movement occasioned by the action of the frost upon the upper portion of the casing. The question of priority of invention as between plaintiffs and Bailey was presented as a prominent feature in the Detroit Case, but was not passed upon, as the case was disposed of upon other grounds; nor is it in issue here, as there is no stipulation that the testimony in that case may be considered upon this motion. This disposes of all the objections to the bill, and an order will be entered granting an injunction as therein prayed.
'lJlE CITY QF .LINOOLN. THE CITY 011' LINCOLN. s POST
'D. THE CITY 011' LINCOLN.
(District Oourt, S. D. NeJUJ York. December 21, 1885.) 1. WHARVES-BREAKING DOWN OF WHARF-INJURY TO CARGO-Locus 0]' TORT -ADMIRALTY JURISDICTION-CRITERION-STATEMENT OF CASE-RULE 59.
A wharf, loaded with steel-blooms, which hlld been discharged from the steam-ship City of L., gave way beneath the weight, throwing the blooms into the water. On suit brought against the steam-ship and the wharfinger, the latter denied the jurisdiction of the admiralty court, on the ground that the negligence alle&,ed was a tort committed upon the wharf, i. e., upon the land. Held, that In cases where the negligence and the injury occur in different places, the criterion is the place where the substance and the consummation of the injury are effected. As in this case the injury was caused wholly by the water into which the blooms were thrown, if the breaking down of the Wharf occurred through the wharfinger's negligence, such negligence was a marine tort of which a court of admiralty has jurisdiction.
2. SAME-DEFECTS IN WHARF-LIABILITY.
The evidence showing that the wharf was decayed and out of repair, and that the wharfinger had wholly failed to keep himself properly informed of its defects, and consequently had failed to make it secure, held, that he could not be absolved from the charge of negligence. A ship is not necessarily answerable, without regard to her own negligence, for the sufficiency of the pier at which she discharges. Until a consignee has notice of the discharge of goods, and a reasonable time to remove them, if accepted, the ship, as carrier, remains liable, except as modified by the bill of lading, as insurer of the goods, which she is bound to deliver sllfely to the consignee, and may thus be answerable for the sutil ciency of the wharf. If the consignee, after such notice and reasonable time, neglect or refuse te> receive the goods, the ship having the goods in her custody, though no longei insurer, is still bound as bailee, to care for their safety, or to store them on account of the owner; but she is bound to reasonable care only, and this duty relates back to the selection of the wharf.
8.
SAME-SUFFICIENCY OF WHARF-LIABILITY 0]' SHIP.
4.
LIABILITY OF SHIP-SAFETY OF CARGo-NOTICE TO CONSIGNEE.
Ii.
SAME-CONSIGNEE'S NEGLECT TO RECEIVE-REASONABLE CARE.
6. SAME-BILL OF LADING-SELECTION OF WHARF-REASONABLE CARE.
By a stipulation of the bill of lading under which the steel-blooms were brought by the Cit:r. of L., if the consignee was not ready to receive them, the ship had the right 'to deposit them on the dock or wharf, at the consignee's risk of fire, loss, or injury." Held, that the risk of the consignee, under the above clause, did not embrace the selection of the wharf by the ship, and that the ship was still liable for reasonable care until the consignee had accepted the goods. As the evidence showed that the consignee had had ample notice and time to remove the goods, and had repeatedly promised but neglected to do so, the ship was liable for reasonable care only; but as the evidence indicated that the ship should have known that the wharf was unfit for a heavy cargo, such as this, the ship's selection of it, and discharge upon it, were not such reasonable care of the goods as to entitle her to exemptIOn from all liability. ) The wharfinger had previously sued the steam-ship at law for the injury to the wharf by overloading, and the steam-ship had counter-claimed in that suit for the detention of the vessel, as well as for the loss of these same blooms. The jury rendered a verdiet that neither should recover of the other. Held, that the verdict of the jury must be interpreted as a finding that both were
7.
PREvIOUS SUIT AT LAW-VERDICT-How BINDING IN ADMIRALTY.
{Reported by Edward G, Benedict, Esq., of the New York bar.