195 F. 940 | 7th Cir. | 1912
(after stating the facts as above).
The patent record in suit presents a case quite similar to that of a patent ambiguity in a contract, which, as Lord Bacon said, could not be “holpen by averment.” The enlarged opening appears in the patent drawings, and is referred to in the amended claims, but without any explanation of its purpose, or any suggestion of usefulness or function. After reading all there is in the patent, the uncertainty still remains. When the file wrapper is examined, it is found that the enlargement of the opening is made part of the amended claims, but why this was done is just as uncertain as before. The ambiguity is emphasized, but the doubt is not dispelled. So we have an element shown in the drawings, and counted on in the claims, whose purpose
In Osgood Dredgee Co. v. Metropolitan Dredging Co., 75 Fed. 670, 673, 21 C. C. A. 491, defendant’s declarations or admissions tending to show patentability were shown in evidence. “In that class of litigation in which the results can affect no interests except those of the parties to it, the court may well give weight to declarations of that nature;- but with reference to a patent for an invention, which is of ■public concern, such declarations are of little consequence and neither the inventor -nor the alleged infringer can be permitted to substitute his' own acts or opinions for the judgment of the court. It is a thoroughly well-settled principle of patent law that in clear cases the court may, of its own motion, adjudge a patent invalid, even if its invalidity is not set up by the alleged infringer. Much more would it refuse to be controlled by evidence of this kind which the complainant ' thus brings to our attention.”
“Were-it important to inquire which of these two men would be most likely to produce a' working machine having the necessary char
On the other hand, the evidence may properly show the prior art, the problem presented to the inventor, and all the surrounding circumstances, in order that the specifications and claims may be read in the light of the inventor’s actual knowledge, and such information as the law imputes to him. Field, C. J., in Giant Powder Co. v. California Vigorit Powder Co. (C. C.) 4 Fed 720, 727, 728. Thus, a broad claim, when applied to the disclosures of the prior art (pre snmed to be known to the inventor), must be limited accordingly, Buies of construction must be applied, to learn what the claim means. A latent ambiguity arises, and to explain it the court may put itself in the position of the inventor, and seek to know what he knew, and what the law required him to know. But this is quite a different thing from allowing him, by testimony showing what he tried to do, and how he unfortunately failed, to make a new contract, based on evidence never disclosed either to the Patent Office or the public, and which never saw the light until it became necessary for his assignee to broaden the contract, and include something which the patentee gave up, even though he gave it up through mistake of law.
Two cases were cited on the argument in support of the contention that the testimony of Hardie is admissible. These were Ball & Socket Fastener Co. v. Kraetzer. 150 U. S. 111, 14 Sup. Ct. 48, 37 L. Ed. 1019, and Steward v. American Lava Co.. 215 U. S. 161, 30 Sup. Ct. 46, 54 L. Ed. 139. In both these cases, however, the testimony was rather in the nature of an admission, made against interest, and was not self-serving in its character, as were the persuasive explanations of the patentee in this case. Technically speaking, Hardie had no interest, because he. had assigned his patent; but his statements were not against his interest, he having none, but were in support of his assignee’s attempt to broaden the scope of the public disclosure of his specifications and claims.
Disregarding this evidence, as we must, we have the case, of an element not defined, vital to the validity of the patent as now construed by appellees, and which is utterly without function or use. Within the loosest construction of the statute requiring full, clear, concise description, the appellees’ contention respecting the lawful scope of the patent in suit cannot be sustained. Merrill v. Youmans, 94 U. S. 568, 24 L. Ed. 235; Bates v. Coe, 98 U. S. 31, 25 L. Ed. 68; Incandescent Lamp Patent, 159 U. S. 465, 16 Sup. Ct. 75, 40 L. Ed. 221.
Within the rules of Blease v. Garlington, 92 U. S. 1, 23 L. Ed. 521, and Nelson v. United States, 201 U. S. 92, 114, 26 Sup. Ct. 358,
The decree appealed from is reversed, with direction to dismiss the bill for want of equity.