International Terra Cotta Lumber Co. v. Maurer

Coxis, J. The complainant contends that, the original letters patent are no part of the bill and that the questions affecting the validity of the reissues cannot be considered on demurrer. It will be observed that the averments of the bill having reference to the original are almost identical with those employed in alleging the reissues, upon which the action is founded. In each instance the language is explicit and exact, leaving no doubt that tho pleader intended to make all those instruments a part of the bill without incumbering the record with copies, in externo. Pro-fert and oyer are tendered in the most formal manner. The instruments thus alleged are public documents, at all times open to examination. It is thought, therefore, that they are presented to the court as part of the bill and that objections thereto may be taken by demurrer. Bogart v. Hinds, 25 Fed. Rep. 484. [620] In the original specification the patentee, after stating that he is the inventor of a new and useful composition of matter, proceeds to describe ingredients of which it is composed and the various steps by which the composition is reduced to the form of logs ready for sawing. He then says: “ On cooling, the logs are removed to the mill and sawed into planks, boards, and dimension stuff, as lumber from wood is. manufactured, and subsequently fashioned in the workshop into such forms and articles as demanded by purchasers. This material, being free from grit and tough in texture, can be cut, sawed, bored, grooved, planed, and carved with edged tools, and before or after such treatment can, after slipping and glazing, be submitted to a second firing, with fine results in ornamentation obtained.” On the 10th of October, 1888, the application for a reissue was filed. Reissue No. 10,419 (division 1) with the exception of a few immaterial verbal changes is identical with the original. At the head of the printed copy of the specification of No. 10,420 (division 2) furnished by the patent-office, are these words: “.Application for reissue filed October 16, 1888.” It is urged that this date must be considered as the date of the application. This position is untenable: First, because an unverified declaration of this character is not proof (Electrical Accumulator Co. v. Julien Electric Co., 38 Fed. Rep. 117, 140;) and, second, because the allegation of the bill that the application was made on the 10th of October, 1883, is admitted by the demurrer. Regarding division 2 it is argued that the attempt is made to claim a much broader invention by the omission of one of the elements of the original. The claims in question are here placed side by side, the italics in each show the matter not found in the other. Original. • “ A composition of matter to be used for fire-proofing and other purposes, consisting of kaolin clay, free from sand or sandy clay, and resinous sawdust, in the proportions specified, prepared with water, machine-pressed, dried, burned, and, subsequent to firing, sawed or wrought with edged tools, in manner described in the foregoing specification. ” Division 2. “A composition of matter to be used for fire-proofing and other purposes, consisting of kaolin clay, free from sand or sandy clay, and resinous sawdust, in the proportions specified, prepared with water, machine-pressed, dried, burned, and adapted, when burned, to be sawed or wrought with edged tools in a manner described in the foregoing specification”. The original claim covers a composition of matter having the following-ingredients and features combined in the proportion and manner described. (1) Kaolin clay, free from sand. (2) Resinous sawdust. (3) Prepared with water. (4) Machine pressed. (5) Dried. (6) Burned. (7) Sawed or wrought after firing. In division 2 the last element (7) is omitted from the claim and the description is correspondingly altered. The- composition claimed is completed without this additional step. True, the suggestion is made that the composition may be sawed or wrought with edged tools, but whether this is done or not is entirely optional. The language “and adapted, when burned, to be sawed or wrought with edged tools” has no legal significance and might as well have been omitted from the claim. A log untouched by saw or edged [621] tool would infringe the reissue, but not the original. To this extent, therefore, the claim is expanded; it seizes upon structures which would escape from the grasp of the original. It is said that the element of sawing and cutting was no part of the original invention. This may be so, but there can be little doubt that it was fully described in the specification and made a part of the claim of the original, and that the object of the reissue was to got rid of it. By reason of the omission the reissue, in question, is for a different and broader invention. The demurrer not only attacks the bill in its entirety, but there are special grounds of demurrer which relate to each of the reissued letter’s patent separately. This practice is proper. Eq. Rule 32; North v. Earl of Strafford, 3 P. Wins. 148; 1 Daniell, Ch. Pl. & Pr. (Perk. Ed.) p. 650. The demurrer may be sustained in part, and overruled in part. Powder Co. v. Powder Works, 98 U. S. 126, 140; Novelty Co. v. Rouss, 39 Fed. Rep. 273. The special demurrer marked “Fifth” relates to so much of the bill as refers to reissue No. 10,420, and clearly presents the question above discussed, viz.: that the reissue is not for the invention originally patented. This demurrer should be sustained. Manufacturing Co. v. Ladd, 102 U. S. 408; Coon v. Wilson, 113 U. S. 268, 5 Sup. Ct. Rep. 537; Plow Co. v. Kingman, 129 U. S. 294, 9 Sup. Ct. Rep. 259; Yale Lock Manuf’g Co. v. Berkshire Nat. Bank, 135 U. S. 342, 379, 10 Sup. Ct. Rep. 884. Very little is said in defendants5 brief regarding No. 10,419 (division 1) but it is insisted that it is void because, being identical with the original, there was no defect in the latter justifying a reissue. It is argued that if the reissue is valid now the original must have been valid and operative in October, 1883, and, therefore, the commissioner was without .jurisdiction to grant the reissue. No authority is cited in support of this contention and, on principle, no just reason can be advanced in its behalf. Although I have been unable to find a decision based upon precisely this state of facts the case which approximates it most closely is Giant Powder Co. v. Nitro Powder Co., 19 Fed. Rep. 509. The court there says: “Patents may be reissued in divisions. It is not necessary that all claims ,in the reissue should be included in one patent. They are often issued in divisions, and I suppose that á patent might be reissued in divisions in the identical language as to some of the claims, the changes being included in another or separate division or patent; that is to say, all claims,or inventions which are fully covered and operative may be reissued by themselves in one division in the identical language of the original surrendered patent, and all other claims, on amendments to the specifications, and covering the invention shown by the amended specifications, in another division or patent,” A patentee who reissues his patent for tire purpose of correcting a clerical error or improving the phraseology of the description ,may do an unnecessary act but why should it work a forfeiture of an invention justly his own? The public are in no way affected; they lose nothing; the patentee gains nothing. To hold the reissue invalid, in such circumstances, would be to follow an ingenious syllogism to an arbitrary and inequitable conclusion. It frequently happens that a patent,is reissued [622] with the original specification and claims intact and a number of new claims added. The courts have frequently held the new claims to be invalid, but have permitted the original claims to stand. Gage v. Herring, 107 U. S. 640, 2 Sup. Ct. Rep. 819; Mahn v. Harwood, 112 U. S. 354, 5 Sup. Ct. Rep. 174; Walk. Patents, § 248. There can be no real distinction between these cases and the case at bar. The special demurrer marked “Fifth” is sustained, in other respects the demurrer is overruled.