Ives v. Sargent, 119 U.S. 652

This is a bill in equity filed by the appellant to restrain the alleged infringement of the complainant’s rights, as the assignee of Frank Davis, of reissued letters-patent No. 9901, for an improvement in door-bolts. The original patent was No. 202,158, dated April 9, 1878. The application for the reissue was filed April 1, 1881, the reissued letters-patent being dated October 18, 1881. The alleged infringement is of the third and fourth claims. As the case turns wholly upon the validity of the reissued patent, it is important, for purposes of comparison, to set out the original and the reissue in parallel p. 653columns. So much of the original as is excluded from the reissue is marked in brackets, and the additions made by the reissue are in italics. They are as follows:

The invention consists in combining a cylindrical outer case with an inner case, p. 654coning with an inner [casing,] structed and recessed as hereconstructed and recessed as inafter described, said cases hereinafter described, said [cas- combining to inclose the operings] combining to inclose the ating mechanism, and to form operating mechanism, and to a fulcrum and guide therefor; form a fulcrum and guide in combining with said cases therefor; [and] in combining, a bolt, pitman, and crank, and with said [casings,] a bolt, pit- in a pitman or connecting rod man, and [hub, so constructed performing the functions of and arranged as to operate in tooth pitma/n a/nd spring, as the the same without pivot-pins above are hereinafter more or any additional devices, all fully set forth and claimed. as] hereinafter more fully [described] and claimed.

on the front end the whole length of the case. Another slot, b3, opposite the slot b2, extends bachward from the end dish, as shown in Fig. 4. These slots leave the parts b4 b4 of the inner case, as shown in Fig. 4. A groove, b6, extends across the case between the parts b6 and b8 of the case. A longitudinal slot, b7, bisects this p. 656f»56 OCTOBER TERM, 1886.

C designates the door-bolt, crank, the spri/ng being made having guide-pins c on its side, long enough for the purpose. and near its rear end a recess, The lug c on the bolt is so ar-c', in which works the lower ranged relative to the connec-end of crank-arm D', formed tions of the spring as to give it in one piece with flat hub D. the required degree of tension Said lower end of crank-arm or “ set upf it is called. The D' is connected by pitman E tension bends the spri/ng over to the front part of said bolt. the lug c, as shown in Fig. 3. Said hub D, when in position The key has its shank squa/re p. 657for use, extends up through, said slot b7, so that its square or similarly shaped central hole is in a line with trans verse groove b6 of inner casing B, and opposite holes a a of outer casing A. The prismatic shank of the key is passed through said holes and groove, and operated as usual to shoot or draw the bolt.

1. The combination, with a door-bolt and operating mechanism, of a cylindrical exterior case and a recessed inner case, said cases combining to inclose the operating mechanism, and to form a fulcrum and guide p. 658crum and guide therefor, sub- therefor, substantially as set stantially as set forth. forth.

The invalidity of the reissued patent is maintained by the appellee on two grounds : 1st, that the reissue embraces a dit p. 659ferent invention in the third and fourth claims from any de scribed or contained in the original specification; and, 2d, that, if it were otherwise, the patentee and assignee had, at the time of the application for a reissue, lost their rights to correct, the defects in the original by their own laches. It was upon the latter of these grounds that the Circuit Court proceeded in dismissing the bill. The undisputed facts on this part of the case are stated by the Circuit Court in its opinion, and are as follows:

The application for the reissue was not made until after the lapse of nearly three years from the date of the original patent; that is, from April 9, 1878, until April 1, 1881. It may be assumed, as the effect of the evidence, that Davis, in p. 660describing to his solicitor, Terry, the invention which he wished to have patented, specifically designated and described the pitman-spring as his substantial invention, distinct from the combination of which it formed a part in the first and second claims of the patent. In his testimony on this point, iir answer to the question, “What did you describe to him as the invention which you wished to have patented ? ” Davis states, “ I explained to Mr. Terry that I had got the spring, answering for a spring, and also for turning the bolt, a pitman-spring. I didn’t know the term at that time; ” and also that he wished to have patented “ this pitman-spring, and this guard, lever, and that purchase it had in holding the bolt out or back; also, in moving the bolt out and back.” Terry, also, on the same point, says, that Davis “ brought the invention or bolt to me and stated that he wanted to get it patented. He also stated what his invention was, as he considered it, that he wanted patented, and the thing that he wanted patented particularly was the pitman or connecting-rod, which answered the double purpose of pitman and spring, and in connection with the crank held the bolt when it was shoved out of the case and when it was drawn within the case.” Terry also states that he sent “ a letter of instructions with the model, setting forth Mr. Davis’ wishes as he had expressed them to me.” The specification, as prepared by the solicitor in Washington, was returned to Terry and by him exhibited to Davis, who signed the application, as he states, after he had examined it and supposed it to be right, “covering the spring which I intended to be patented.” Mr. Terry states that he does not recollect whether he himself read over the specification and examined the claims at the time Mr. Davis signed the papers, or not. On this application the patent was issued, and it does not appear to have been read or examined by any of the parties in interest until after the appellee commenced making the bolts now alleged to be an infringement. It was then discovered for the first time that the original patent did not cover the claim as now made, and the reissue was obtained to effect that purpose.

We are also of opinion, however, that the reissue is void on the other ground, viz., that it contains new matter introduced into the specification, and that it is not for the same invention as that described in the original patent. In support of the reissued patent, on this ground, it is contended, on the part of the appellant, that the invention of the pitman-spring device is shown in the drawings, which are the same both in the original and the reissued patents. All that can be said in respect to the drawings is, that they show the pitman-spring device as a part of the bolt intended to be covered by the patent, and described as a combination of which that device forms a part. There is nothing whatever in the drawings to p. 663show that the patentee claimed to be the inventor of that part separate from the combination, as a distinct novelty, useful by itself, or in any other combination; neither is it so described in the specification. The operating mechanism of the bolt, as distinct from the' casings, which are described as forming a fulcrum and guide to it, is described as “ a bolt, pitman, and hub so constructed and arranged as to operate in the same (said casings) without pivot pins or any additional devices.” It is argued, on this language, that the only additional device usual in such cases is a spring, and that, therefore, the meaning of the specification is that no separate spring was required, and from that the inference is to be made that the pitman should operate both as a pitman and a spring; but this inference is entirely too obscure and remote. It is not obvious that the additional device referred to was a spring, and there is nothing in the language to suggest, what is clearly and fully expressed in the amended specification, that “the pitman and spring E, Fig. 3, is a straight harddrawn wire, and is connected to the bolt and crank by suitable pivotal connections.” So that in the original description there is nothing to show of what material the pitman is made so as to operate as a spring, and there is no assertion in it of its performing the double function of pitman and spring.