Leishman v. Associated Wholesale Electric Co.
Decision Date | 11 August 1943 |
Docket Number | No. 9970.,9970. |
Citation | 137 F.2d 722 |
Parties | LEISHMAN v. ASSOCIATED WHOLESALE ELECTRIC CO. |
Court | U.S. Court of Appeals — Ninth Circuit |
John Flam, of Los Angeles, Cal., for appellant.
Leonard S. Lyon, of Los Angeles, Cal., and Gibson Yungblut, of Cincinnati, Ohio, for appellee.
Before MATHEWS, HANEY, and STEPHENS, Circuit Judges.
Appellant, LeRoy J. Leishman, brought an action against appellee, Associated Wholesale Electric Company, for infringement of claims 7-11 of reissue patent No. 20,827.1 Defenses were that the claims were invalid, and that, if valid, they were not infringed. The District Court held the claims invalid2 and, on May 1, 1941, entered judgment dismissing the action. From that judgment an appeal was taken on September 4, 1941. We dismissed the appeal as not having been taken in time.3 The Supreme Court reversed our judgment and remanded the case for decision on the merits.4
The original patent (No. 2,108,538) was applied for by appellant on December 15, 1934, and was issued to him on February 15, 1938. The reissue patent (No. 20,827) was applied for by appellant on May 23, 1938, and was issued to him on August 16, 1938. The original patent consisted of a specification, a drawing and six claims (claims 1-6). The specification, the drawing and the six claims of the original patent were incorporated, without change, in the reissue patent. The reissue patent included six additional claims (claims 7-12). Otherwise, the original and the reissue were identical.
This action was commenced on September 12, 1938. On January 16, 1939, while the action was pending in the District Court, claim 5 was disclaimed in its entirety.5 Hence both the original patent and the reissue must be construed as if claim 5 had never been included in either;6 for the disclaimer "speaks from the date of the original patent."7
Appellee contends that claims 7-11 of the reissue patent are not for the same invention as the original patent and hence are invalid. The contention is based on § 4916 of the Revised Statutes, 35 U.S.C.A. § 64, which provides: "Whenever any patent is wholly or partly 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 he 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 * * * cause a patent for the same invention,8 and in accordance with the corrected specification, to be reissued * * *."
Thus a reissue patent must be for the same invention as the original patent. Otherwise it is invalid.9 An original patent and a reissue patent are not for the same invention unless what is covered by the reissue was disclosed in the original and was intended to have been covered and secured by the original.10 And this intention "must appear from the face of the instrument."11 Hence the questions here to be considered are whether what is covered by claims 7-11 of the reissue patent was disclosed in the original patent, and whether it appears from the face of the original that what is covered by claims 7-11 of the reissue was intended to have been covered and secured by the original.
A combination embodying this invention is illustrated in the original patent drawing, here reproduced.
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