Nash., Chattanooga & St. Louis Ry. Co. v. United States, 113 U.S. 261 (1885)

“ Be it remembered that on the 10th day of November, 1871, this cause was heard before the Judges of the Circuit Court of p. 263the United States for the Middle District of Tennessee, at Nashville, upon its equity side, upon the bill of complaint, exhibits, previous proceedings, and agreement of parties, in the presence of R. McPhail Smith, United States district attorney representing the complainant, and E. H. Ewing and W. F. Cooper, solicitors of the defendant, when it appeared -to the court that since the last term, in and by virtue of an act of Congress in that behalf, a compromise of all the matters in litigation between the parties had been entered into and fully consummated upon the following terms, stipulations and conditions, namely: The defendant, the Nashville and Chattanooga Railway Company, for and in consideration of the return and surrender to it, by the United States, of its road as it existed at the time of the said return and surrender, with all the iron, crossties, bridges, and other fixtures, appurtenances and effects in any wise appertaining and belonging to the said road, and returned, surrendered and turned over therewith, and for and in consideration of the rolling stock, depot houses, and all other property and effects sold and delivered by the United States to the said defendant, and for which compensation is claimed by said bill, and for and in consideration of the transfer and assignment of said road, rolling stock, fixtures, appurtenances, and all other said property and effects as aforesaid by the United States to the said defendant, with all the rights of the United States therein, acquired by conquest or otherwise, and for and in consideration of the settlement, satisfaction and discharge of all mutual claims and accounts between the parties, as they existed on the 1st day of June, 1871, admitted that there was due from the defendant to the United States on that day the sum of one million of dollars, and agreed to pay the same as follows: One half of said sum, five hundred thousand dollars, to be paid ten years after the 1st of June, 1871, and the other half twenty years from said date, with interest upon the whole of said principal sum, until paid, at the rate of four per cent, per annum, payable semi-annually on the 1st day of December and June, counting from the 1st of June, 1871, the said principal and interest made payable at ------, and secured y the bonds of the Nashville and Chattanooga Railroad p. 264Company, and a mortgage on the company’s road, property, income, and franchise.

“ And it is further found by the court, in accordance with the terms of said agreement of compromise and settlement, that there was due from the defendant to the United States on the 1st day of June, 1871, for and on account of the claim set forth in the bill of complaint, after allowing all credits thereon for services rendered by the defendant, to and for the use of the complainant, for mail service, or military transportation, or on any other account, prior to the day last aforesaid, a balance amounting to the sum of one million dollars, to bear interest p. 265from said day at the rate of four per cent, per annum, payable semi-annually on the 1st day of June and December of each year, one half of said principal, to wit, the sum of five hundred thousand dollars, to be paid on the 1st day of June, 1881, and the remainder thereof, to wit, the sum of five hundred thousand dollars, to be paid on the 1st day of June, 1891.

The decree of 1871 states that, “ in and by virtue of an act of Congress in that behalf, a compromise of all the matters m litigation between the parties has been entered into and fully consummated upon the following terms, conditions and stipulations : ” that one of the considerations for the sum of $1,000,000, thereby agreed to be paid and secured by the Nashville and Chattanooga Railroad Company to the United p. 267NASHVILLE, &c., RAILWAY CO. w. UNITED STATES. 267

ends, to and beyond the ends of the collar. The rear Imtton-hole is thrown into the top or p. 270body of the collar above the band or binding of the same.

The *use of the short or see- The rear button-hole a is p. 271artiondl bands produces a saving ranged in the top or body of the of material, as compared to the collar, above the head or binding old style of continuous band, at the lower edge of the same, and furnishes a collar that whichposition of the button-hole, hugs the neckband in superior in connection with the graduatmanner, without springing back ed bands, produces a collar that so as to come in contact with hugs the neckband in superior the collar. manner without springing back, so as to come in contact with the coat-collar. The shorter graduated bands produce also a considerable saving of material, as compared to the old style of continuous band, that extends at uniform width along the lower part of collar. .*

cations are. Every patent so reissued, together with the corrected specification, shall have the same effect and operation in law, on the trial of all actions for causes thereafter arising, as if the same had been originally filed in such corrected form; but no new matter shall be introduced into the specification, nor in the case of a machine patent shall the model or drawigns be amended, except each by the other; but when there is neither model nor drawing, amendments may be made upon proof satisfactory to the Commissioner that such new matter or amendment was a part of the original invention, and was omitted from the specification by inadvertence, accident or mistake, as aforesaid.” The word “ specification,” when used separately from the word “ claim,” in § 4916, means the entire paper referred to in § 4888, namely, the written description of the invention “ and of the manner and process of making, constructing, compounding and using it,” and the claims made. The word “specification,” meaning description and claims, is used in that sense in 4884, 4895, 4902, 4903, 4917, 4920 and 4922. In some cases, as in §§ 4888 and 4916, the words “specification and claim” are used, and in § 4902 the word “description” and the word “specification” are used. But it is clear that the word “specification” when used without the word “claim” means description and claim. If, then, the original patent is within the statute as to either its “ description ” or “ claim,” or both, the reissue was valid. But what meaning shall be given to the remainder of the section ? It will be observed that two terms are employed, “ invalid ” and “ inoperative.” The word “ invalid ” plainly refers to cases where, from either of the causes stated, the patent is a nullity and should never have been issued. Its application is limited to patents void for insufficiency of the specification. If the word “ inoperative ” is to be construed as meaning the same thing, its use was superfluous. We are then driven to seek another meaning for it, and this is not difficult to find. Where the subject of an invention is plain, from the drawing or model, or both, and the specification is defective, in that the language used fails to fully describe the thing invented, then, as to the part of the invention omitted, the specification may well be said to be inoperative. This p. 275principle has received the general sanction of the courts, in a long line of authorities.

The Circuit Court adopted the view, that a band, composed of two sectional bands, starting from the centre, and proceedmg with a graduated curve and increasing width, would not make the whole band any less a continuous band with a graduated curve and increasing width towards each end; that the use of a continuous band of the latter description would not make the parts of it each side of the centre any the less sec>onal bands; that neither would be a continuous band of uniorm width, and, as compared with that, there would be a saving of material by the use of either arrangement; and that 1 made no difference, in the Wilson invention, whether there was a vertical seam in the centre of the band or not, provided p. 276m OCTOBER TERM, 1884.

The defendants’ collars have a band of continuous material from end to end of the collar, and the back button-hole in the body of the collar, but the band is not of uniform width throughout, being narrowed in the centre. It has, as a whole, the same style of graduated curve which the Wilson collar has. The defendants’ collars were first made and sold after the original patent of Wilson was granted, and after the defendants had seen sectional band collars made under it. The first of the defendants’ four collars was made and sold in February, 1878, and the other three in March, or April, or May, 1878. The reissue was applied for March 11, 1878, and Wilson testifies that his impression is, that he had previously heard of the de-. fendants’ collars. It is evident that the reissue was obtained because the defendants’ collar, with a continuous band, had been put on the market, and for the purpose of obtaining claims which would certainly cover such a collar. The changes made in the specification and claims show this. The specification of the reissue, in stating what the invention consists of, omits the statement that it is a collar having sectional bands, and states that it is a collar having curved and graduated bands. It also omits the statement that the bands start from the centre, or from a point between the centre and the ends, and states that the curved and graduated bands extend along the lower edge of the collar, from the centre, or from a point between the centre and the ends. The statement of the invention, in the original patent, did not cover the defendants’ collars, nor did the claim of that patent. The 2d claim of the reissue is substantially the same as the claim of the original patent. But the 1st and 4th • claims of the reissue, corresponding with the changes made in the description, ignore the short or sectional bands, and refer only to a curved and graduated band. The 3d claim preserves the short bands, curved and graduated. As the defendants p. 277collars do not have the short or sectional bands, and so do not infringe the 2d and 3d claims of the reissue, the question arises as to the validity of the 1st and 4th claims, which it is alleged are infringed.

The final decree in this case was entered July 28,1881. The decisions of this court in Miller v. Brass Co., 104 U. S. 350, and James v. Campbell, 104 U. S. 356, were made January 9, 1882. Under those decisions, and many others made by this court since, the 1st and 4th claims of the reissue cannot be sustained. Although this reissue was applied for a little over three months after the original patent was granted, the case is one where it is sought merely to enlarge the claim of the original patent, by repeating that claim and adding others; where no mistake or inadvertence is shown, so far as the short or sectional bands are concerned; where the patentee waited until the defendants produced their continuous band collar, and then applied for such enlarged claims as to embrace the defendants’ collar, which was not covered by the claim of the original patent; and where it is apparent, from a comparison of the two patents, that the reissue was made to enlarge the scope of the original. As the rule is expressed in the recent case of Malin v. Harwood, 112 U. S. 354, 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 a reissue is made within a reasonably short period after the original patent was granted.” But a clear mistake, inadvertently committed in the wording of the claim, is necessary, without reference to the length of time. In the present case, there was no mistake in the wording of the claim of the original patent. The description warranted no other claim. It .did not warrant any claim covering bands not short or sectional. The description had to be changed in the reissue, to warrant the new claims in the reissue. The description in the reissue is not a more clear and satisfactory statement of what is described in the original patent, but is a description of a different thing, so ingeniously worded as to cover collars with continuous long ands and which have no short or sectional bands. The p. 278drawings show no continuous band; and the statement in the original patent, that “ the use of the short or sectional bands produces a saving of material, as compared to the old style of continuous band,” shows that the patentee was drawing a sharp contrast between the only bands he contemplated—short or sectional bands—and a continuous band, of one piece of material, as long as the collar. The original patent industriously excluded from its scope a continuous band. In the reissue, to cover a continuous graduated band, the two bands B B are converted into a single band composed of the parts B B, and, while that is described as extending along the top or body of the collar, the “ shorter graduated bands ” are described as saving material, as compared with an old style continuous band, of uniform width.