Cormick Harvesting Mach Co v. Aultman Co Same v. Co

• Decision Date: 21 March 1898
• Docket Number: AULTMAN-MILLER,Nos. 130 and 131,s. 130 and 131
• Citation: 169 U.S. 606,18 S.Ct. 443,42 L.Ed. 875
• Parties: McCORMICK HARVESTING MACH. CO. v. C. AULTMAN & CO. et al. SAME v.CO
• Court: U.S. Supreme Court

169 U.S. 606

18 S.Ct. 443

42 L.Ed. 875

McCORMICK HARVESTING MACH. CO.

v C. AULTMAN & CO. et al.

SAME

v. AULTMAN-MILLER CO.

Nos. 130 and 131.

March 21, 1898.

This was a question certified to this court by the circuit court of appeals for the Sixth circuit, involving the authority of a primary examiner of the patent office to reject as invalid claims of an original patent which were incorporated in an application for a reissue.

It appears that the McCormick Harvesting Machine Company filed a bill in equity in the United States circuit court for the Northern district of Ohio against C. Aultman et al., and also one against the Aultman-Miller Company, in each of which it was sought to restrain the defendant from the future infringement of two patents covering automatic twine binders for harvesting machines. As the interests of the several defendants were closely identified, the two cases were heard together.

The question certified involves only patent No. 159,506, issued to Marquis L. Gorham, Rebruary 9, 1875, and the other patent sued upon will therefore not be considered. The record shows that there was filed in the patent office by the executrix of Gorham an application for a reissue of this patent, in which were included several claims o the original patent, as well as many new claims. Upon consideration, the assistant or primary examiner decided that claims 3, 10, 11, 25, and 26 of the original patent should be rejected for want of patentable novelty, and reference was made to prior patented devices. No appeal was taken from this decision, and subsequently, in compliance with a request, the original patent was returned to the plaintiff corporation, which had become the owner thereof. Thereafter these suits were brought against the defendants upon the original patent.

In the circuit court it was decided that as the original claims 3, 10, 11, 25, and 26 had been determined by the examiner to be invalid, and no appeal had been taken from that decision, but the same had apparentiy been acquiesced in, the adverse action must be regarded as fatal to the claims in question, and to the same extent as if the rejection had been incident to the original application for the patent. 58 Fed. 778.

Upon appeal the circuit court of appeals decided that there was no infringement by the defendants as to claims 25 and 26, but that there was infringement of claims 3, 10, and 11 of the original patent, unless it should be determined that they were invalidated by their being rejected by the examiner upon an application for a reissue of the same; and, desiring instruction upon this point, it certified to this court the following question: 'If the owner of a patent applies to the patent office for a reissue of it, and includes among the claims in the application the same claims as those which were included in the old patent, and the primary examiner rejects some of such claims for want of patentable novelty, by reference to prior patents, and allows others, both old and new, does the owner of the patent, by taking no appeal and by abandoning his application for reissue, hold the original patent, the return of which he procures from the patent office, invalidated as to those of its claims which were disallowed for want of patentable novelty by the primary examiner in the proceeding for reissue?'

R. H. Parkinson, for McCormick Harvesting Mach. Co.

Thos. A. Banning and Edmund Wetmore, for C. Aultman & Co.

Mr. Justice BROWN, after stating the facts in the foregoing language, delivered the opinion of the court.

The validity of the claims in question depends upon the view taken of the action of the examiner in rejecting them when incorporated in an application for a reissue of the patent, upon the ground that the claims were wanting in patentable novelty, as evidenced by prior patents cited by him. No appeal was taken from this decision, and the matter lay in abeyance for nearly two years before the plaintiff corporation, which had in the meantime become the owner of the patent, abandoned the application for a reissue, and requested and obtained from the patent office the return of the original patent.

It has been settled by repeated decisions of this court that when a patent has received the signature of the secretary of the interior, countersigned by the commissioner of patents, and has had affixed to it the seal of the patent office, it has passed beyond the control and jurisdiction of that office, and is not subject to be revoked or canceled by the president, or any other officer of the government. U. S. v. Schurz, 102 U. S. 378; U. S. v. American Bell Tel. Co., 128 U. S. 315, 363, 9 Sup. Ct. 90. It has become the property of the patentee, and as such is entitled to the same legal protection as other property. Seymour v. Osborne, 11 Wall. 516; Cammeyer v. Newton, 94 U. S. 225; U. S. v. Palmer, 128 U. S. 262, 271, 9 Sup. Ct. 104, citing James v. Campbell, 104 U. S. 356.

The only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent. Moore v. Robbins, 96 U. S. 530, 533; U. S. v. American Bell Tel. Co., 128 U. S. 315, 364, 9 Sup. Ct. 90; Lumber Co.v . Rust, 168 U. S. 589, 593, 18 Sup. Ct. 208. And in this respect a patent for an invention stands in the same position and is subject to the same limitations as a patent for a grant of lands. The power to issue either one of these patents comes from congress and is vested in the same department. In the case of...