57 F. 631 | 2d Cir. | 1893
By the decree of the circuit court, it was adjudged that the fourth claim of the reissued patent Flo. 11,153, granted to John Boyd Dunlop for an improved wheel tire for cycles, was valid, and had been infringed by the defendant. The defendant contended, and now insists, that the fourth claim of the reissue is void, because it is for a different invention than that covered by the original patent to Dunlop, and because the original patent was surrendered, and the reissue obtained, not to correct a mistake, but merely for the purpose of securing by that claim a patent for a broader, invention.
The original patent was for an invention which Dunlop had patented in England March 8,1889, and embodying an improvement upon an invention patented by him in England in 1888. It was applied for in this country March 11, 1890, and, as appears by the file wrapper, was allowed by the patent office April 7, 1890, in the form asked for, without any amendment to the description or claim recited in the application. The final fee was not paid, however, for several months thereafter, and the patent was issued September 9, 1890. The patent relates to pneumatic wheel tires for vehicles, especially bicycles, consisting essentially of an 'annular air cushion, which is secured to the rim of the wheel. Prior to the application for the patent, as appears from earlier patents and publications, tires formed of elastic tubes filled with compressed air, and secured in a variety of ways to the rims or fellies of ordinary wheels, both of bicycles ■ and other vehicles, were old. The tires had been composed of an interior, expansible tube of rubber, inclosed in a nonexpansible strengthening and confining envelope of canvas, both inclosed in an outer envelope, and the tire, as a whole, had been attached to the rim or felly of the wheel in various ways. The invention of the original patent consisted in a new organization of parts which were old in previous pneumatic tires, whereby two improvements were effected, — one in the tire itself,
The specification of the original patent describes the invention as follows:
“In carrying- out my invention, I employ an external covering, A, composed of a layer or fold of India rubber, which is thickened at that portion which comes in contact with the ground. An inner expansible tube, B, also of India rubber, contains the air or gas under pressure. O is the metallic rim of the wheel, which is somewhat flattened to obtain a large hearing surface, and enveloped with a protective strip, a, of canvas, cloth, linen, or the like. Strips, D, of caoutchouc or other elastic substance, are interposed between the edges of the rim, 0, and the folds or layers, h, c, of canvas or linen, hereinafter more particularly referred to, so as to protect the latter from being cut by ihe edge's of said rim, O. A strengthening fold or layer, b, of cloth, linen, or canvas, which is cemented or otherwise affixed to the inner surface of the external covering, A, envelops the inner tube, B, and the rim, 0, to which latter it is cemented, or otherwise securely fastened, so as to retain the tire thereon in an efficient manner; a strengthening fold or layer, c, of linen or canvas, being attached to the inner surface of the before-mentioned layer, b, and cemented to Ihe linen or canvas layer, a, encircling the metallic rim, O. The enveloping folds or layers of canvas, b, c, effectually resist any undue pressure that may he exerted by the contained air or gas at any particular point, and thus prevent deformation of the tire. The said folds or layers, moreover, serve to effectually maintain the tiro in the desired position on the metallic rim, 0, of the wheel.”
The claim of the. original patent was as follows:
“In hollow, air-inflated wheel tires for cycles and other vehicles, the combination with an inner expansible tube, B, and outer protective covering, A, of strengthening folds or layers, b, c, of cloth, canvas, or linen, and protective strips, D, of caoutchouc, interposed between the edges of the rim, 0, and strengthening fold or layer, b, substantially as and for the purposes herein set forth.”
After the patent was granted, and in October, 1890, a corporation, the Thomas Inflatable Tire Company, was organized in this country for the purpose of acquiring certain United States patents for pneumatic tires which had been granted to Amos W. Thomas in March, 1889. Before the application was made for the reissue of the complainant’s patent, this corporation had been advertising its rights under Hie Thomas patents, and warning the public against infringements, and insisting that ihe pneumatic tires made under the Dunlop patent were infringements; and this was
At the hearing in the circuit court the complainant abandoned any charge of infringement by the machines of the defendant, except as to the fourth and fifth claims, and the court adjudged that the fifth claim was void' for want of novelty.
The fourth claim of the reissue is as follows:
“Tlie combination, witb the rim of a cycle wheel and an inflated, expansible, tubular tire, of a tubular, nonexpansible confining- envelope surrounding the said tire, and formed or provided with flaps or free edges toned over and cemented to the inner face of the rim, as set forth.”
It is obvious that the protective strips which are incorporated into the claim of the original patent, but which are omitted in the
There are cases in which the description of an invention, and the claims sought to be founded upon it, by the applicant for a patent, are so plain and unequivocal upon the face of the application itself that the judicial mind cannot be convinced that he intended to describe and claim any other invention than that for which the patent was granted; and in such cases the courts ought not to hesitate to review the decision of the commissioner upon the question of inadvertence, accident, or mistake, and should refuse to be bound by it, when the record upon the application for the reissue discloses that no explanatory facts or circumstances, adequate to account for the error, were brought to his attention. This seems to be such a case, and the reissue record itself leaves little, if any, room to doubt that there was no error on the part of the patentee to necessitate the surrender of the original patent. But when the fact is recalled that the English patent, the foundation of the original and the reissue, was not for any invention claimed in the reissue which was not secured by the original, and when the circumstances attending the origin and preparation of the application for the reissue are recalled, it seems difficult to escape the conclusion that the original was surrendered, not to correct a mistake, but to obtain a new patent, covering inventions to which the patentee had no right, and which could be used as a sword and a shield in the business competition of rival patent owners.
If, in the description of the invention, the patentee had indicated
“A reissue must loe fo-r the same invention intended to he embraced in the original patent, and the specification cannot he substantially changed, either by the addition of new matter, or the omission of important particular's, so as to enlarge the invention as intended to be originally claimed'.” Plow Co. v. Kingman, 129 U. S. 299, 9 Sup. Ct. Rep. 259.
We are unable to entertain any doubt that the patentee intended to claim originally just what he did claim; that there was no
The decree of the circuit court is reversed, with costs, and the cause remanded to the circuit court, with instructions to dismiss the bill.