Giant Powder Co. v. California Powder Works

concurring specially. Upon a careful consideration of the case of Seymour v. Osborne [supra], Í am satisiied that the supreme court intended to lay down the rule broadly, that on an application for the re-issue of a patent the commissioner, in ascertaining the invention intended to be patented, and for which a reissue may be granted, has no authority to look beyond the patent as originally granted with the specifications and drawings thereto annexed, and the models deposited in the patent office, “except in certain special cases ns provided in a recent enactment,” referred to and cited by the court, viz.: 10 Stat. 200 (11 Wall. [78 U. S.] 544, 545). The enactment referred to is found in the last clause of section 58 of the act of 1870, and is in the following words: “But when there is neither model nor drawings, 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.” This is the only exception the court recognizes to the rule as broadly and specifically stated, and repeated in different forms in the course of the opinion; and the exception is referred to “as provided by a recent enactment” — that is to say, the exception depends upon that provision of the statute. The provision was not in the act of 1830. As the exception is held to depend upon this enactment, it, of course, did not exist under the act of 1S3G; and under that act there was. in the opinion of the supreme court, no exception to the rule as laid down by that tribunal. The original patent to Nobel was. issued in 1SG5, under the pro visions of the act of 1S3G; and he could only obtain such rights as were secured to him by that act. On an application for a re-issue at any time during the five years intervening between the issue of the original patent and the passage of the act of 1870, under the rule established by the supreme court, there being no model, he would have been limited in the re-issue to the invention as described, suggested, or substantially indicated, or shown in the original patent and the specifications and drawings appended thereto. • Beyond this he could not go, and nowhere in the original patent and the specifications and drawings annexed to it is the subject-matter of the re-issued patents numbers 4S18 and 4S19 in any way suggested. These re-issues, therefore, could not have legally been made under the act of 1830. The rights of the parties must be determined under the provisions of that act, and the right to patents for these inventions, if it ever existed, lapsed by a failure to perfect it while that act was still in force. The proceeding for obtaining a re-issue since the passage of the act of 1870, so far as form is concerned, must be in accordance with the latter act. But to allow a party under the provision cited to go outside of the evidence recognized under the act of 1S30 to establish a right to a re-issue of a patent for an invention made and patented under that act, would be going beyond the mere forms and modes of proceedings, and would be to grant him a new right by restoring a right to a patent, if one ever existed, which had once been lost either by carelessness or design under the laws then in force, and after the public had acquired a right in the subject-matter by several years unobstructed legal use — the right to an original patent having been lost by lapse of time, and to a re-issue by failure to indicate the whole invention in the specifications finally adopted and annexed to the parent first issued. The last clause of section 53 of the act of 1S70, so far as granting a new right is concerned, in my judgment has no retroactive operation; and it can only apply to re-issues of patents originally issued since the passage of the act.

This is as far as it is necessary to go.in this case, and I prefer not to consider or determine the extent of the exceptions made by that provision until a case arises under a patent originally issued under the act of 1870. On these grounds I concur in the judgment ordered.

This is a suit for an alleged infringement of three letters-patent, with a prayer that the defendants be decreed to account for and pay to the complainant the gains and profits derived by them from the manufacture, use or sale of the invention patented, and be restrained from further infringement. All of these patents are re-issued letters. They purport to be founded, two of them upon an original patent issued to Alfred Nobel, in October, ISCió, and the other one upon an original patent issued to an assignee of Nobel in April, 1808. Upon the validity of the latter re-issue no question is made. The validity of the other re-issues is assailed upon the alleged ground that they describe and claim a different invention from that described and claimed in the original patent, and their validity is the question presented by the demurrer.

The several patents, original and re-issued, are referred to in the bill and made part of it, so that the question raised as to the validity of the re-issues is distinctly presented. It appears from inspection of the schedule annexed to the original patent to Nobel of October, 1805, giving a description of his alleged invention, and which constitutes a part of the patent, that he declares that he has “invented the use of nitro-glyc-erine or analogous substances as a substitute for gunpowder,” and then proceeds to indicate the manner in which the nitro-glyc-erine can be used so that the “liquid, which when exposed cannot be wholly decomposed and exploded, shall by confinement be subjected to heat and pressure by which its total and immediate decomposition and explosion” may be effected. There is no mention in the schedule of any mixture of the nitro-glycerine with other substances so as to form a new compound. The only reference to any mixture is in a paragraph which, in describing the manner of using the nitroglycerine, states that it should be first prepared by adding a mixture of sulphuric and nitric acids. The schedule then gives in detail four modes in which the explosion of the nitro-glycerine can be effected. The first is by exploding in contact with it a quantity of gunpowder confined in a waterproof tube or case; the second is by an electric spark, or by passing a powerful current of electricity through a fine wire immersed in the liquid; the third is by inserting in the liquid a thin case containing lime and water, or any substances which in combining evolve heat; and the fourth is by a fuse. The schedule closes by a declaration that what the patentee claimed as his invention and desired to secure by letters-patent was ' uie use of nitro-glycerine or its equivalent substantially in the manner and for the purpose described.”

It is plain from this statement that the patent was for a process and not for a compound. It was for modes of using the liquid and not for any new compound of known or unknown ingredients.

In the following year, in June, 18CG, Nobel, whose letters-patent extended for seventeen years, assigned his interest in them, and the invention secured, for the residue of that period, to the United States Blasting-Oil Company, a corporation created under the laws of New York. In April, 18G0, this company surrendered the original letters, and obtained in their place four new divisional letters-patent for the residue of the period then unexpired, designated respectively as re-issue No. 3377, division A.; re-issue No. 3378, division *286B; re-issue No. 3379, division C; re-issue No. 33S0. division D.

In March, 1S72, the company surrendered "this last divisional re-issue, designated No. 33S0, division D, and obtained for it two new divisional letters-patent, numbered and designated as re-issue No. 4S1S, division D, and re-issue 4S19, division E. It is with reference to tiie validity of these two last reissues that the contention in this case arises. No. 4S1S is for two compounds, one consisting of nitro-glycerine and gunpowder, and the other of nitro-glycerine and gun-cotton. No. 4S19 is for a compound consisting of nitro-glycerine and rocket powder. Neither ■of these re-issued patents is for any process, or mode of exploding nitro-glycerine, or for any particular use of the liquid. Both of them are for new compounds, made by uniting old and well-known substances. There is no connection or relation between the inventions or discoveries covered by them and the invention or discovery described and claimed in the original patent. If, therefore, we are restricted in our examination to the original patent and the schedule annexed, the re-issues cannot be sustained. Can we look ■beyond that patent and schedule, which is a part of the patent, to ascertain what the original patentee • had, in fact, at the time invented or discovered, though not described in his specifications or covered by his claim?

The statute of 1870, under which these reissues were granted, provides that “whenever any patent is inoperative or invalid by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than lie had a right to claim as new, if the error has arisen by inadvertence, accident or mistake, and without any fraudulent or deceptive intention, the commissioner shall, on surrender of such patent and the payment of the duty required by law, cause a new patent for the same invention, and in accordance with the corrected specifications to be issued to the patentee;” and the commissioner is authorized in his discretion to cause several patents to be issued for distinct and separate parts of the thing patented upon demand of the applicant. But the act declares that “no new matter shall be introduced into the specifications, nor in case of a machine patent shall the model or drawing 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 part of the original invention, and was omitted from the specification by inadvertence, accident, or mistake, as aforesaid.”

It is by this law that the last re-issues must be determined. As here provided, no re-issue is permitted, unless the original patent is inoperative or invalid from a defective or insufficient specification, or the claim of the patentee exceeds his right; and then only in case the error committed has arisen in the manner indicated. In determining the propriety of the re-issue no new matter can be introduced into the specification, except in case of a machine patent, to which class the one under consideration does not belong. It is only with respect to patents of that character where no model or drawing exists, that, in our judgment, any notice can be taken, by the commissioner, of matter outside of the original specification and claim. Tarr v. Webb [Case No. 13,757]. In machine patents, models and drawings can be examined in connection with the specification, and the latter changed, restricted, or enlarged so as fully to describe tire actual invention made. If the patent do 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, in our judgment, to which modifications can be made in such cases.

Judged by the law, there can be, in our opinion, no reasonable doubt as to the invalidity of the re-issues. The original patent to Nobel was neither inoperative nor invalid by reason of any defective cr insufficient specification. That specification was unambiguous, and covered all that was claimed. And if this were otherwise, no new matter not relating to the process claimed, but relating to a compound made by uniting glycerine with other substances could be added to the specification. This is the explicit provision of the statute.

If Nobel had made other inventions or discoveries — compounds of nitro glycerine with other substances or different modes of using the liquid (as it would seem, from the memorandum annexed to the bill that he had), he might have applied for and obiained separate patents for them. Sarven v. Hall [Case No. 12,369], But such compounds or different modes of use cannot be included in a reissued patent when the original never embraced them, without sanctioning a doctrine which would open the door to all soits of extortion and fraud, and impose an oppressive burden upon the industries of the country.

By the terms of the statute, a re-issue must be for the same invention which is embraced by the original patent, or if the re-issue be in divisional parts, each division must be for some distinct and separate part of that invention. The two letters-patent under consideration in .the present caso are not only for inventions not embraced by the original patent, but are not embraced by the first reissue, upon the surrender of which they were re-issued, designated as re-issue No. 33S0, division D. That re-issue was oniy for a process, a mode of applying and using nitroglycerine, simple or compounded, and not for any new explosive compounds, as inaccurately stated in the bill. This will be seen by examination of the letters referred to and *287made part of the bill. The two letters Issued upon the surrender of that re-issue are, therefore, invalid within the ruling of Chief Justice Taney, in Knight v. Baltimore & O. R. Co. [Case No. 7,882],and might have been disposed of without showing, as we have done, that they were invalid because they were for inventions not covered by the original patent.

*287We do not question the doctrine so earnestly pi'essed by counsel upon the argument that all presumptions in support of the action of the commissioner in granting the reissues must be indulged, and that his ruling upon all matters not apparent upon the face of the patents themselves cannot be collaterally assailed. We rest our judgment upon a comparison of the original and the re-issued patents, and hold as a matter of construction that the latter are not on their face issued for the same invention, or any distinct and separate part thereof; and that for this reason the commissioner exceeded his authority in issuing them. Seymour v. Osborne, 11 Wall. [78 U. S.] 544.

The defendants must have judgment on the demurrer, with leave to the complainant to amend the bill by striking out all such parts as relate to the re-issued patents No. 4818 and No. 4819.