9. If an assignee of a part of the whole of a patent does not join with
the patentee in surrendering and obtaining a reissue of the patent,
but afterwards accepts the reissue and transfers a part of the
interest in it which was originally vested in him by the patentee,
this is an expressed ratification by him of the act of the patentee
in obtaining the reissue. Id.
10. If the patent does not relate to a machine, the specification, if
defective, may be made more definite and certain so as to embrace
the claim made, or the claim may be so modified as to correspond
with the specification; but this is the extent to which modifications
can be made in such cases. Atlantic Giant Powder Co. v. California
Powder Works.
II. Under section 53 of the Act of 1870 (16 U. S. Stat. 205) a reissue is
not authorized unless the original patent is inoperative or invalid
from a defective or insufficient specification, or the claim of the
patentee exceeds his right. Id.
12. In determining the propriety of a reissue, no new matter can be
introduced except in cases of machine patents. Id.
13. Reissues, under the statute, must be for the same invention which
was embraced in the original patent, or, if reissued in divisional
parts, each division must be for some distinct and separate part of
that invention. Id.
14. Where the inventor originally filed specifications embracing both
compounds and cognate processes, but afterwards filed amended
specifications omitting the compounds, and the patent issued upon
the amended specifications which were alone attached thereto, upon
an application for reissues in divisions, the Commissioner of
Patents is limited in his reissues to the invention embraced in the
amended specifications attached to the original patent, and cannot
look at the specifications first filed, and afterwards abandoned, to
ascertain what the invention sought to be patented was. Id.
131
15. Where a patent is surrendered and a reissue obtained, a second
reissue on surrender of the first must be limited to the invention
embraced in the first reissue. Id.
16. On an application for a reissue of a patent under the Act of 1836, the
Commissioner was not authorized to look beyond the patent as
originally granted, with the specifications and diagrams thereto
annexed, and the models deposited in the Patent Office, for the
purpose of ascertaining what invention was intended to be
patented. Id.
17. Nöbel's patent having been issued in 1865, his rights accrued and
they must be determined under the provisions of the Act of 1836,
and there being no model, upon an application for a reissue made
prior to the passage of the Act of 1870, he would be limited in the
VOL. II-45
reissue to the invention as described, substantially indicated or
suggested in the original patent and the specifications and draw-
ings appended thereto. Id.
18. The legal rule is that, prima facie, a reissue is for the same invention
as that originally patented. United States & Foreign Salamander
19. The patent law not only prohibits the introduction of new matter
into a reissue, but also the enlargement of the original claim grow-
ing out of the subsequent advancement of the art. Id.
20. Under the Act of 1836, with amendments up to 1861, the inventor
was entitled to a reissue where the new claim was clearly justified
by his drawings or specification or models, or either, and he was
allowed to amend his specifications or models, if necessary, so as
to cover more fully what, upon experience, had proven to be a
meritorious part of his invention. Calkins v. Bertraud.
21. The scope and object of reissues discussed. Putnam v. Yerring-
22. The original patent to complainant's assignor, for improvement in
cotton-presses, was confined to portable revolving cotton-presses.
The application of the invention to revolving presses generally was
first claimed when the original patent was applied for in 1866, and
then abandoned, designedly, and not through inadvertence, acci-
dent, or mistake. The original patent was surrendered and re-
issued in 1872, and the improvement was therein claimed as appli
cable to all cotton-presses, stationary as well as portable: Held,
that the reissued patent was invalid. Wicks v. Stevens.
23. Where it appears, on a comparison of the original and reissued
patents, as a matter of law, that the reissued patent is not for the
same invention as that embraced and secured in the original pat-
ent, the reissued patent is invalid. Stevens v. Pritchard.
2.1. The subject of reissues examined and discussed. Id.
25. Reissues can only be granted for the invention embodied in the
original patent. Tucker v. Tucker Mfg. Co.
26. A reissue need not follow the exact language of the original pat-
ent, but may contain a fuller description of the invention, previ-
ously imperfectly described (Wells v. Gill commented on). Pearlv.
Ocean Mills.
27. No matter how valuable and meritorious an invention may be, a
patentee has no right, by reissuing his patent, to gradually widen
the scope of his claims so as to keep pace with the progress of
invention. Swain Turbine & Manufacturing Co. v. Ladd.
488
28 A reissue may be granted with an expanded claim, to secure to a
patentee the benefit of the invention described but not claimed in
Rejected Applications-Res Adjudicata.
the original, when caused by the inadvertence of the inventor.
Lorillard v. McDowell.
29. The principle involved in all reissues is, that there can be nothing
given in the reissue which was not in the original specifications or
drawings. Vogler v. Semple.
30. A reissue cannot be made to cover anything which was not in the
original invention. Id.
31. It is not necessary that a reissue should embrace everything found
in the original, since the prohibition of the act is limited to the
adding of new matter to the specifications. Albright v. Celluloid
Harness-Trimming Co.
32. There is no obligation upon the patentee to claim all things in the
reissue which were claimed in the original invention. Id.
See ASSIGNEE, I; COMBINATION, 2; CONSTRUCTION OF PAT-
ENTS, 3, 5, 6, 10; DISCLAIMER, I; NEW MATTER, I;
PARTICULAR PATENTS, 7, 27, 35, 36; PRACTICE, 2; PRE-
SUMPTION, I.
See ABANDONMENT, I; DATE OF APPLICATION, I.
See ABANDONMENT, I; ASSIGNMENT, 3.
See ANNULLING PATENTS, I; SCIRE FACIAS, I.
1. The application of the doctrine of res adjudicata to parties to
former actions and their privies, considered.
2. A suit against three of the defendants in the Court of Common
Pleas of the City and County of New York resulted in a decree
that two licenses under letters patent were fraudulent and void:
Held, that these defendants were estopped from denying in a suit
by the same complainant in a federal court brought for the infringe-
ment of the letters patent, that the licenses were fraudulent and
void Held, also, that the decree of the state court was res adjudi-
cata against all the privies of the said defendants, whose rights
were acquired from them after the making of said decree. Id.
3. The complainant brought a suit, in another district, against the
defendant, founded upon the same patent, and the court in that
suit declared three of the claims void for want of novelty, but sus-
tained the fourth claim and entered an interlocutory decree re-
ferring the case to the master to take an account: Held, that as the
decree was not final, it did not make the question of the novelty of
the claims res adjudicata. Rumford Chemical Works v. Hecker.
4. Although an interlocutory decree entered in another suit between
the same parties, under the same patent, does not conclude them,
it does not follow that the controversy between the litigants re-
mains open, as it would have remained, if there had been no previ-
ous adjudication. Id.
5. Where a court has decreed the title to a patent to be in the com-
plainant, in an action brought for the purpose of determining the
rights of the parties, such decree makes that question res adjudi-
cata, and the defendants to the suit will be estopped from contro-
verting it in another suit, so long as such decree stands unreversed.
Consolidated Fruit Jar Co. v. Whitney.
6. Wright and another defendant were enjoined by the Circuit Court
in another circuit from manufacturing a sieve infringing Mann's
patent. Pendente lite Mann died; the suit was revived by his exe-
cutor; the defendants were decreed to have infringed Mann's pat-
ent, and the case was referred to a master to assess damages.
Complainant purchased the patent, and, before the master's report
came in, filed this bill in this court against Wright and one Her-
ring, whom, since the decree in the former suit, Wright had asso-
ciated with him in the same manufacture here: Held, that com-
plainant is in privity to the decree in the former suit, and that
Wright and his present partner Herring are also in privity thereto,
so that each of them is bound thereby. Dayton v. Wright.
7. The defendants in this case denied the validity of the patent, and
alleged some instances of prior use not set up in the former case,
but only cumulative upon the same point: Held, that the parties
and subject-matter, being before the court in the former case,
the defendants would be bound by its decree, and that as only
an interlocutory decree had been entered therein, this court must
presume that if new evidence had been discovered material to
the issue, the former case would be opened and the new proof let
in on proper application to that court. Id.
Results--Scope of Patent.
1. Where a claim of the patent appears to be for a result, produced
substantially “in the manner and for the purposes" described, the
claim will be construed to be for the mechanism, set forth in the
specifications, by which the result is produced, and not for the re-
sult itself. Henderson v. Cleveland Co-operative Stove Co.
604
2. The principle, of construing a claim for a result to be a claim for
the means by which the result is produced, is applied to all cases
where a result is claimed, whether there is any reference to the
specifications in the claim or not. Id.
See CLAIMS, I; PARTICULAR PATENTS, 9, 13, 83; PATENTABIL-
ITY, 3; SCOPE OF PATENT, 2.
See LICENSE FEE; PROFITS AND DAMAGES, 18.
1. The manner of repealing British patents by scire facias explained.
Attorney-General v. Rumford Chemical Works.
1. A prior description of a part cannot invalidate a patent for the
whole. Westinghouse v. Gardner & Ranson Air Brake Co.
2. Where there is a slight change in a machine, by which a new result
is brought about, and which might be the subject of a patent, courts
do not incline to extend the invention beyond the mere change,
although they may incline to sustain the patent; but where some-
thing elementary is discovered, and constitutes fairly a part of the
invention of the patentee, then no other inventor or manufacturer
ought to be permitted to use that elementary part, without paying
tribute to the first inventor. Cornell v. Downer & Bemis Brewing
3. The words " 'as specified," in the claims of a patent, do not neces-
sarily limit such claims to the particular mode of practising the in-
vention described in the patent. Lorillard v. McDowell.
4. Where a patentee has described one mode of practising his inven-
tion, as the law requires him to do, he must be understood as
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