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can patent shall be absolutely fixed at its inception, as by the term pressed on the face of the foreign grant having the shortest term, but may extend beyond that period in consequence of the extension of the foreign patent by acts in pais, done by the patentee in compliance with the foreign patent law, that is a concession that the duration of the domestic patent is dependent in one respect on the life of the foreign patent; and, if dependent upon it in one respect, it ought to be regarded as dependent upon it in all respects. At all events if acts done by the 'entee in conformity with the foreign law operate to extend the foreign patent beyond the term specified on the face of the original grant, and thereby to prolong the American patent, by parity of reasonin/l; an sion to do acts required by the foreign law, which works an absolute forfeiture of the foreign grant, ought to extinguish the domestic patent. No valid reason can be assigned, I apprehend, why the omission of acts required to be done by the foreign law in order to preserve the life of the foreign patent should have no effect on the duration of an American patent issued under section 4887, so as acts done by the patentee in compliance with the foreign law are allowed to give the American patent.a duration that it would not otherwise have. The whole controversy seems to hinge on the question whether the term of the domestic patent is fixed at its inception by the terms expressed on the face of the shortest foreign patent, or whether the life of the American patent may be to an extent uncertain, and is subject to contingencies affecting the life of the foreign patent. The supreme court of the United States appear to have adopted the latter view. It follows, of course, that if the true construction of section 4887 is that a patent subject to its provisions comes void when the foreign patent other words, if the life of the domestic patent is dependent upon that of the foreign then the commissioner of patents has no authority, under section 4887 , to issue American letters after the foreign patent· has ceased or determined. It would hardly be contended I suppose that the commissioner would be authorized to grant a monopoly of an invention after an event has occurred that in law determines the duration of the monopoly, and which event,if it had occurred after the grant was made, instead of before, would at once have rendered the same void. Commissioner FISHER in the Case 0] Musket, 2 Com. Dec. 106, shortly after the passage of the act of July 8, 1870, held that section 4887 was intended to allow foreign inventors to secure a monopoly of their inventions in this country after they had been patented abroad, but only for so long a period as the foreign monopoly continued; and that to a casual reader would seem to be the obvious purpose of the statute. The last clause of the section, "but. every patent granted for an invention which has been previously patented in a foreign country shall be so limited as to expire at the same time with the foreign patent," etc., as I think, that there is a foreign patent for the invention in force when the American patent issues, the actual existence of which foreign patent is to determine the duration of the domestic patent. If there is no such foreign patent in force when the American patent but if a foreign patent v.38F.no.l0-53
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has been theretofore granted for the invention and it has la.psed, and become void, ,there is no authority in law,. in my opinion, for the AmelJican grant. The result is that the Peters & Donald patent is adjudged to be void. 2. The next question concerns the validity of reissued letters patent No. 10,826, issued to James E. Boyle, April 19, 1887, and the facts on which that controversy depends are substantially undisputed. The original patent on which: the reissue was obtained was numbered 291,139, and was dated January 1, 18S4. In the construction. of the" flushing apparatus" or water-closet covered by the original letters, Boyle, the inventor, employed what.is commonly: called an "injector" to exhaust the air confined between two traps located beneath the bowl or seat of the flushing apparatus. The apparatus was so arranged that when in use water falling through a pipe from the water. tank or reservoir into the bowl passed. by the mouth of the "injector" which w:as connected by a pipe with the confined air-chamber between the traps., and by the operprinciple tended to exhaust the air and to create ation of a a vacuum in suchchatnber, the purpose of creating a vacuum being to induce a more powerful outflow of water from the bowl through the traps and into the soil-pipe, by the aid of atmospheric pressure on the surface of the water in the' bowl. The idea of constructing a water-closet or flushing apparatus with double traps underneath the seat, and a confined air-chamber between the same, from which the air might be withdrawn when the closet was 'used, so as to induce a more powerful outflow; was not novel. The same method of construction was shown in the Peters & Donald patent before mentioned, but Peters & Donald employed a different device to exhaust the air between the traps. Although injectors, and the principle upon which they operated, were well-known, and although they were in use for various purposes, it may be conceded that Boyle was the first.toemploy them in the construction of a flushing apparatus or water-closet. Being an old device, he could not claim the injector independently, or otherwise than in. combination with other devices forming a part of his improved sanitary water-closet. The first and most important claim in the original letters patent was for "a flushing apparatus, consisting of a reservoir tank; a flushing chamber, adapted to be filled therefrom; a valve controlling the admission of water from said tank to said chamber; a suction .inje'tltor, arranged beneath the outlet from said chamberjaflushing pipe leading from said injector; and a sucmon or air pipe communicating with said injector,-all combined, * *'1L substantially as set forth, Whereby the water in escaping from said chamber into thefiushing pipe traverses said injector; and sucks air from said suction pipe.''' , It will thus be seen that the "injector" was one of six elements in theoombination covered by the first claim of the originallettersNo. 291,139. ·On January 2,1885, Boyle made application for a reissue, stating, in substance, in his. application therefor, that his patent was "inoperative to protect the invention intended to be covered by it," because "the principal claims in said patent were defeotive,or inin that they appear to be limited to combinations embodying
HuBER'
V:
N. -o.NEUlON
MANUF'G CO.
835
the flushing chamber as an element, whereas that chambel' was not essential to his invention' in its generic features;", that he believed he had introduced a new principle for operating double-trapped siphon closets, namely;, that of producing a vacuum by causing falling flushing water to act as an injector, but "that through inadvertence or mistake of judgment his claims were drawn with less breadth than his specifications,and did not, as they should, cover broadly the application of such principle;" that "such inadvertence or mistake arose by and in consequence of a misunderstanding between" the inventor and his patent solicitor, 'and by reason of" the inventor's want of familiarity with the technical meaning of the language used in patent claims." It is admitted ,thatthe idea of obtaining a reissue was suggested by the granting of letters patent No. 308,358 to Frank B. Hanson, under date of November 25, 1884, for an improvement in water-closets, which latter patent by one of its claims covered a.: flushing apparatus the same, substantially, as that described in the first claim of the Boyle patent, above set forth, omitting only the "flushing chamber." Boyle's sole purpose in asking for a reissue was. confessedly, to eliminate the "flushing chamber" as a constituent' element of the com bination covered by certain claims of his original pa.tent, particularly the first claim. In other words, he desired to recast his claims so as to obtain a patent for a flusbIng apparatus like that described above in the first claim, minus the flushing chamber. A reissue was eventually granted in accordance with such desire. A claim · was allowed in the reissued letters for a "flushing apparatus * * * consisting of the combination of a reservoir tank, a flushing valve controlling the outlet thereof, a flushing pipe for conveying water therefrom to the bowl of the closet, a suction injector arranged in connection with said pipe, and to be traversed by the descending flushing water, and a suction pipe in connection with said injector, whereby the water, in flowing from said tank downward through the flushing pipe, traverses said injector,and sucks the air from said suction pipe." The effect was clearly to expand the claims of the original patent by as much as the addition of the flushing chamber to the combinations claimed in the original patent had served to limit them. Plow Co. v. Kingman, 129 U. S. 294, 9 SUll' Ct. Rep. 259. NotwithAtanding the expansion of the claims in the reissue, it is strenuously insisted that the main feature of Boyle's flushing apparatus (that which was essentially novel) consisted in the use of an injector operated by faUing flushing water to pump air from between the two traps; that such fact was clearly shown and mented upon in the original specification; that the flushing chamber was not essential to the operation of that device, a single reservoir tank being sufficient for that purpose; that by inadvertence or mistake a Don- essential limitation was put upon the claims of the original patent that covered the illjector device; ,that in consequflnce thereof the original patent was inoperative to fully secure the invention intended to be claimed; and that the patent was for suchreasoDs properlyreissued,-itbeing a case where the claims have simply been altered to cover more accurately the invention described in the original specification.
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FEDERAL REPORTER, vol. 38.
SOma oftbese propositions require carefulconsideratioD,; and,in the first platle, it will be well to understand clearly what is meant by the assertion that theoriginal,patent was "inoperative to protect the invention protects intended to be covered by it." The original patent the flushing apparatus that was claimed as a whole in the first claim, and carefully described in ,the drawings. It also protects all the combinations claimed in the several claims of the original patent. It was not necessary to change Il \,Vord in the specification, or alter a line in the drawings, to fully secure the apparatus so claimed; Ilnd it appears that that was the identical flushing apparatus or water-closet which the patentee intended to manufacture, and that his licensee is now manufacturing. It cannot be said, therefore, thattheorigimtl patent was "inoperative or invalid" in the sense that what the patentee claimed and intend.' ed to manufacture he cannot hold in consequence of the original specification being either "defective or insufficient." In the light of these facts, when the patentee asserts that the original patent was "inoperative," no more is meant than that a particular combination of parts might have been claimed originally (and possibly would have been allowed) that was not claimed, and that the original patent was inoperative to protect that particular combination, because no right to protection wasasserted. Now, even conceding, for the purposes of the decision, that the original patent was "inoperative" in the sense in which that word is used in seo,. · tion 4916 of the Revised Statutes, which authorizes a reissue, the queRtion remains whether the failure of the inventor to claim what the original patent does nut protect because it was not claimed was due "to inadvertence, accident, or mistake," in the sense of the statute. All of the evidence that was before the commissioner tending to show inadvertence or mistake (such as the affidavit of the inventor and his solicitor and other documents) was offered by the complainant in th present ' case, and was supplemented by some additional testimony. Under such circumstances, I understand the law to be that the court may review the commissioner, on the point that the original patent the was inoperative by, reason of inadvertence and mistake, at least to the extent of whether, as a matter oflaw, what was described and alleged to be a mistake is such a mistake as will warrant a reissue. Miller v. Bms8 Co., 104 U. S. 355; Leggett v. Avery, 101 U. S. 256; Mahn v. Harwood, 112U. S. 359, 5 Sup,Ct. Rep, 174; Coon v. Wilson, 113 U. S. 277, 5 Sup. ,Ct. Rep. 537; Tltrner v. Stamping Co., 111 U. S. 319,4 Sup. Ct. Rep. 401. In his filed with the commissioner, Mr. Fraser, the solicitor 'Yho obtained Boyle's original patent, as well as the reissue, describes the mistake alleged to have been committed by him and the patentee as tersely perhaps as it is described. He says: . "Deponent clearly understood that the invention in' question introduced a: new principle in ,vater-closet .flushing apparatus,-that of exhausting the air by means of an injector.-and so described the invention in the specification. but that in drawing the claims he inad vertently incorporated the flnshing apparatus as an element,therein. being at the time under the impression that
BUBER fl. N. O. NELSON HANUF'G CO.
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the said flushing chamber was essential to the operation of the invention, whereas in fact the said chamber is essential only to the operativeness of the devices for producing the', afterwash,' for refilling the bowl, which devices are claimed specifically in claim 4 of said patent." It will be observed that the mistake thus despribed bv Mr. Fraser consisted in his being under the impression when he drew"the claims of the original patent that" the flushing chamber was essential to the operation of the invention, whereas it was essential only to -the operativeness of the devices for producing the afterwash.» This statement is a little obscure, because he does not explain whether by the use of the word "invention" in the paragraph quoted he means the injector device only, or the flushing apparatus considered as a whole. I take it for granted, however, that Mr. Fraser did not use the word "invention" in the restricted sense first mentioned, and would not be so understood. He is. evidently an expert of too much experience to assert that he acted for a moment under the mistaken, impression that it was necessary to employ a "flushing chamber" as well as a "water-tank," in order that the falling flushing water traversing the injector might operate to suck or pump air from between the two trapsj and that was the sole function of the injector device. Drawing No.6, attached to the original patent, and Mr. Fraser's explanation of the purpose of that drawing, contained in the original specification, shows that he clearly understood that the falling flushing water traversing the injector would perform its function of pumping air from between the traps equally well whether the water proceeded from a reservoir having one compartment or a dozenj and that fact was obvious to an ordinary observer who had any knowledge of the principle upon which an injector acts. Therefore, in the paragraph quoted, Fraser must be understood as asserting merely that he incorporated the "flushing chamber" as an element in the several combinations claimed in the original patent because he desired and intended to describe and claim an operative flushing apparatus or 'Vater-closetj that is to say, one that would do the work required of such an apparatus, and prove a marketable invention. It is manifest from other statements made by Mr. Fraser in the course of his testimony that in his opinion a flushing apparatus minus the "flushing chamber" with its attendant devices for securing an afterwash would be practically uselessj that some provision for refilling the bowl after the injector had ceased to act, thereby sealing the upper trap, was essentilj,l to the successful operation of the flushing apparatus or water-closet, considered a wholej and that, in drafting the several claims of the original patent, he intentionally (and with great care, as it would seem) included the flushing chamber, for the reason that it was one of the essential parts of the flushing apparatus, without which the apparatus would not be serviceable. Boyle's filed with the commissioner, describes no mistake, inadvertence, or accident. He contents himself with the general statement that a misunderstanding existed between him and his solicitor, but what the misunderstanding was does not appear. From his testimony on the trial of this case it is made manilest, however, that he, as well as Fraser, was of the opinion when
/ FEDERAL REPORTER, 'Vol. 38.
afterwash, would be practically valueless becauile it WQulq.cOIDl}land no sale. He adJ:l.lits that he made a flushing apparatus, such as is last indicated, (that ls, ariapparatus minus the flushing cl1afuherj) thatitwas not satisfactory; that it was not intended to be operative,and (as I understand him) was never intended'as a design for a water-closet that he expected to m.anUfacture or sell. THe result is that, if Boyle and Fraser made any mistake or labored under any misapprehension when the original patent waS taken out, it consisted in the assumption that the omission of the flushing chamber on which the" afterwash" devices depended, and without which there Was no meaM of securing' ahafterwash automatically, so far as the patentee had. then discovered, would leave a practically valueless combinj,ttion, and hence that tbere was no need of claming such a combination·. When the statements df Mr. Boyle and his patent solicitor a"e carefully and fairly analyzed that appears to be all that can reasonably be said in support of the contention that the claims of the original patent were due to iuad vertence and mistake. But, conceding that the parties named acted on the assumption last stated, it does not appear that even that assumption was erroneous. On the contrary, the testimony shows to my entire satisfaction that Fraser waS right in supposing that Boyle's flushing apparatus without the flushing chamber would be incomplete, and for that reason practically valueof Boyle's invention, less. Mr. Hanson, who, subsequently to the secured a patent on a water-closet having a single water reservoir and an injector, but no flushing chaml?er or provision for an afterwash, and who by so doing caused Boyle to apply for a reissue that would invalidate Hanson's patent, is compelled to admit that a water-closet constructed according to the specification of his patent is defective and unsalable, and for that reason has never been put upon the market. Boyle,' Hanson, and Fraser substantially agree that some mechanism to secure an afterwash automatically (that is to say, some mechanism to flush the closet, and refill the bowl at the end of the flush, by a single pull on the lever) is essential to the successful operation' of a flushing apparatus; that without such mechanism an apparatus constructed with double traps and an injector to exhaust the air between the traps would be useless in the sense that there would be no demand for such an apparatus. It would seem, indeed, that Boyle displayed qUite as much (if not inore) ingenuity in devising the mechanism to produce an afterwash as in employan injector, which was an old device,to pump air from between the traps. Now, in the case of Mahn v. Harwood, 112 U. S; 359, 360, 5 Sup: Ct. Rep. 174, it was said that "a patent for an invention cannot lawfully be:reissued for the mere purpose of enlarging the claim, unless there hair been a clear mistake, inadvertently committed, in the wording of the claim;" and the same remark is repeated in CoO?1. v. Wilson, 113 U. S. 277,5 Sup. Ct. Rep. 537. In MiUer BrMa Co., 104 U. S. 355, the court said:
the ,to, hIs<deslgo, but wIthout tlie flushmg chamber,to se,curean cordmg
v;
N. O. NELSON MANUF'G: CO·
.. Whilst '" '" .. we do deny that a claim may be enlarged in a reissued patent, we ,are of opinion that this can only be done when an actual mistake has occurred: not from a mere errOl' of judgment, but a real bona fide mistake. inadvertently committed, such as a court of chancery. in cases within its ordinary jurisdiction, would correct." So far as I can see, the testimony in the case does not tend to establish that either Boyle or Fraser acted so inadvertently or labored under any such misapprehension, either of matters of law or fact, when the claims of the original patent were formulated, as justified a reissue of th(l patent under the law as declared in these cases. It was obvious to them, as it is to any one,'that the injector would perform its function as well with a single water-tank as with a tank and flushing chamber combined. They both believed that a water-closet constructed according to. BoyIe's design; but without provision for an after wash, would be valueless in the market, and in that they were right. The patentee had discovered no method of producing an afterwash automatically by using a single water-tank, and hence both he and his solicitor regarded the flushing chamber as one of the essential, features of the flushing apparatus intended to be manufactured, and accordingly claimed it industriously in all of the important claims. Conceding that they claimed the "injector" in combination with a part that was non-essential to its operation, and thereby limited the claim, yet they did so in pursuance of a well-defined purpose that was not based upOn_ a misconception of matters of fact or ignorance of the law, so far as the record before the commissioner, or the proof this case, shows. It is an important fact that must be kElpt in mind in the consideration of this case that the injector'was an' old device when Boyle adopted it, and that it could only be claimed in combination with other parts, which would, together, produce a new result or effect, or constitute a new machine. Reckendorfer v. Faber, 92 U. S: 357; Boyle placed it in combination with certain other old parts ()11 devices that he deemed necessary to employ to make a: new flushing apparatus that would be operative and useful, and by so doing made each element of the combination material, and was undoubtedly entitled to' be protected in the use ,of the .combination so formed and claimed. WaterMeter .Qo. v,. Dewper, 101 U. S. 337. His sole purpose in asking for a reissue, however) appears to have been to slough off one element of the combination, and soreduce the parts embraced in the claim that it would be impossible, for any other person to use an "injector" in the construction of a double-trapped water-closet without paying tribute to his Vatent;As the claims are stated and enlarged in the reissue it would be unlawful for a mechanic to us the injector in the construction of aHushing apparatus l even if he-should succeed in doing what Boyle failed to accomplish,__that is to say, in prpducing an afterwashautomaticallY' by the use of a single tank,-because the parts with which the injector has been combined in the claims of the reissue are so few that they, must necessarily all he used towotk the injector. In other words, the claims in or sOllleo(them at least;llre now so broad as to practically cover the i njectot as a thing susceptible of being separ1!otely
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claImed. If it was new, and had not been claimed ·in the original patent, it might be proper to intE\rpret the law liberally in favor of the inventor to enable him to realize the full benefit of his invention. The fact is; however, that an injectoris. an old device, and that BoyIe merely adopted it, and applied it to a new use, and should be limited to that in which,8s it appears, he deliberately placed it, and claimed it. Prouty v. Ruggles, 16 Pet. 341; Eamr,s v. Godfrey, 1 Wall. 79. . I am fm'ced to the conclusion that the reissued letters, granted under the circumstances and for'the purposes heretofore stated,-that is, merely to enlarge the claims,-cannot be sustained as a valid grant. Burr v. Duryee, 1 Wall. 531; Gill v. Wells, 22 Wall. 1; ana cases heretofore In theftrst place, although the original patent was inoperative to protect a particular combination not claimed therein, to which the inventor now conceives himself to be entitled, yet the failure to claim it was not due to any such inadvertence Or mistake as will now entitle him to claim it, the inevitable result being to expand the old claims; and 8econdly, the failure to claim such combination originally-even if it was one that' ought to have been allowed if claimed-oc<,urred under such circumstances, and was accompanied with such full knowledge of all material facts, as amounted to an abandonment of that particular combinaifon to the publio. The bill il3 accordingly dismissed.
NATIONAL CABLll:
Ry. Co.
tI.
l\1T.
ADAMS
& E.P. I. Ry. Co.
(Oircuzt (Jourt, B. D. Ohio, W. D. May 24, 1889.)
1.
PATENTS-ENDLESS' ROPE RAILWAyS-ANTICIPATION.
The first claim of letters patent No. 195,872, for "improvement in endlessrORe traction railways." granted to Asa E.Hovey, September Hl, 1877, which is the construction andaz:rangement togetber of the brackets * * * and rails * * * forming the frame or skeleton for a rope tunnel for endlesstope traction railways. said brackets forming a support for the w,roove rails, and {or the planking forming the sides or shell of the tunnel, ' is void for want of inVention, having been. anticipated by.the Gardner patent No. 19,786, of March 23, 1858, the Thompson patent No. 131,918, of October 1, 1872, and the structure used in 1878 by the OlayStreet Hill Road of San Francisco, Cal. Any differences in construction and material between the structure described by the first claim of the Hovey patent, and the devices covered by the prior patents and nsed by the Clay-Street Hill Road, do not constitute invention, but merely involve ordinary mechanical skill, and are not patentable.
..
8.
SAME-INFRINGEMENT.
If such first claim could be sustained by limiting its scope. so as to make it cover all of the elements described in the specifications, it is not infringed by the structure used by defendant, the Mt. Adams & Eden Park Inclined Railway Company.
"
SAME-ANTICIPATION.
The first branch of the sixth claim of said letters patent, in reference to the combination,. "with the rope tunnel or chamber, of pulleys journaled in the same, upon which the rope runs, " Wall anticipated boY the Gardner patent, and Is not patentable. . .