American Automotoneer Co. v. Porter

• Citation: 232 F. 456
• Decision Date: 04 April 1916
• Docket Number: 2704,2705.
• Parties: AMERICAN AUTOMOTONEER CO. et al. v. PORTER. PORTER v. AMERICAN AUTOMOTONEER CO. et al.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

232 F. 456

AMERICAN AUTOMOTONEER CO. et al. v. PORTER.

PORTER v. AMERICAN AUTOMOTONEER CO. et al.

Nos. 2704, 2705.

United States Court of Appeals, Sixth Circuit.

April 4, 1916

C. N Butler, of Philadelphia, Pa., for complainants.

R. A Parker, of Detroit, Mich., for defendant.

Before KNAPPEN and DENISON, Circuit Judges, and COCHRAN, District judge.

DENISON Circuit Judge.

Infringement suit on patent for electric motor controller regulator issued January 16, 1906, to Weyand, as No. 810,240, and reissued to Electric Service Supplies Company, January 28 1908, as reissue No. 12,744, upon reissue application filed March 18, 1907. The first nine claims of the reissue are identical with the nine and only claims of the original; the remaining reissue claims 10-32, are of seemingly broader character. Infringement is alleged of claims 1, 2, 11, 25, 29, and 30. The District Court held claims 1, 2, and 29 to be valid and infringed, and claims 11, 23, and 30 to be void, because broader than the art permitted. Both parties appeal.

The invention pertained, commercially, to that form of controller used by the motormen of electric cars in turning the current on and off. All parties accepted it as essential that the 'on' motion should be step by step, with a distinct stop between each two steps, while the 'off' motion should be--or at least the motorman should be left free to make it-- a continuous sweep. The purpose of the class of devices to which those of both parties belong is to compel the motorman to use the step by step method for the 'on' motion, instead of leaving this result to his voluntary and skilled manipulation. This result is accomplished by devices in connection with the (customarily) vertical controller rod and the removable operating handle which, when placed in position, suitably engages the rod and so makes it revolve; and more specifically by attaching, rigidly to the top of the controller box and surrounding the rod, a plate called a base-plate, and by attaching to the rod, so as to revolve with it, a similar plate called a cover-plate. Between these two plates were inserted pawl and ratchet devices; the pawl or dog being upon the lower side of the cover-plate, and the ratchet teeth or stops being carried by the upper face of the base-plate. All these were old; the questions involved pertain to the construction and arrangement of detent and stops, of handle and cover-plate, and of cover-plate and base-plate.

The first question we meet is whether the reissue was invalid, because broadened. It was applied for within 15 months from the original issue, and neither laches nor abandonment can be urged against it from mere lapse of time. The reissue was very frankly for the sole purpose of broadening the claims. No consequential error in the specification was suggested, and the only 'inadvertence, accident, or mistake' alleged was the omission to make the additional claims which were said to have been necessary to make the monopoly or protection of the patent as broad as the invention disclosed by the specification and drawings. The mistake or inadvertence was that of the applicant, induced by a negligent or unskillful solicitor.

The question is most squarely presented by claim 29, as follows:

'In an electric controller regulator, the combination with a controller of a base mounted thereon and provided with cams and stops, a rotatable cover on the base having a pawl which co-operates with the cams and stops to intermittently arrest the cover, a jaw on the cover, an operating handle engaging the controller rod and jaw to connect said rod and cover, and a coupling to secure the cover to the base without interfering with its rotation.'

When this is compared with other claims, it is seen that its identifying thought, and so what must be deemed the invention of this claim, is the use of the handle to lock together and cause to turn in unison the cover-plate and controller rod; and this, of necessity, carries the implication that, when the handle is not in position, the rod and cover-plate will be disconnected. The claims of the original patent did not reach and protect the invention thus described. Two or three of the claims included, as elements, directly or by necessary implication, the handle and the controller rod and the jaws for locking the handle to the cover; but in such claims these elements were grouped in combination with a large number of other elements not involved in this thought, and it follows that these claims were so narrow as not to protect broadly the idea of making the rod and cover coupling in this way.

Defendant urges that reissue for the purpose of such expansion is invalid-- even if there are no 'intervening rights'-- and presses upon us the Supreme Court and the Seventh Circuit decisions below cited. The question has not been as expressly treated in this circuit as seems desirable, and we proceed to its consideration. If it were an original question, it would, as we see it, present no difficulty. The Patent Act of 1836, by section 13, provided that:

'Whenever any patent * * * shall be inoperative or invalid by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification as his own invention more than he had or shall have a right to claim as new, if the error has or shall have arisen by inadvertency, accident or mistake, * * * it shall be lawful for the Commissioner * * * to cause a new patent to be issued to the said inventor, for the same invention * * * in accordance with the patentee's corrected description and specification. ' Act July 4, 1836, c. 357, 5 Stat. 122.

The act of 1870, by section 53, uses practically the same language, save that 'specification' is substituted for 'description and specification.' The statutory conditions thus become (1) 'inoperative or invalid;' (2) 'a defective or insufficient specification;' (3) 'inadvertence, accident, or mistake;' and (4) 'the same invention.'

It is well understood that at the time of the first statute 'specification' was an inclusive term, covering what, in later nomenclature, are identified as 'specification' and 'claims'; and though in 1870 the distinct identity of claims was recognized, it is not to be supposed that the re-enactment of this part of the act of 1836 contemplated any different definition of the terms used than had been understood and accepted with reference to the same terms in the earlier statute. Indeed, the last edition of Walker on Patents (4th Ed. Secs. 111, 173) says that the claims are part of the specification. See, also, Macomber, pages 71 ^[1] and 822. ^[2] Thus giving to the statute its necessary interpretation when applied to the present-day subdivision of the statutory word 'specification,' we find it distinctly declared that a reissue may be granted when the patent is inoperative by reason of defective or insufficient specification or claims

The statute does not say 'wholly inoperative'; and although a patent may, in the strict sense, be operative if it grants any monopoly of anything, yet if it fails to secure to the inventor the monopoly of his actual invention, it surely does not operate according to the intent of the law. Thomson v. Wooster, 114 U.S. 104, 115, 5 Sup.Ct. 788, 29 L.Ed. 105; Giant Co. v. Nitro Co. (C.C., Sawyer, C.J.) 19 F. 509, 510. Further, we find the statute saying, '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,' and this means (interpreting 'specification' according to its true force) inoperative by reason of defective description or insufficient claims or invalid by reason of too broad claims.

'Inadvertence' is a word of broad meaning. The act of the patentee, through his solicitor, in drafting or accepting claims not commensurate with the invention, may be considered a mistake of law or a mistake of fact. In the typical case it is rather of the latter character, and is made because he does not appreciate the part which certain elements play in the operation and the value of the device described; but whether we call it a mistake of law or fact, it cannot very well escape the appellation 'inadvertent,' ^[3] unless, in truth, it is considered and deliberate. Leggett v. Avery, 101 U.S. 256, 260, 25 L.Ed. 865; Yale v. Berkshire, 135 U.S. 342, 403, 10 Sup.Ct. 884, 34 L.Ed. 168; Grand Rapids Co. v. Baker (C.C.A. 6) 216 F. 341, 351, 132 C.C.A. 485. This latter question-- whether the error really was inadvertent or was deliberate-- is primarily committed to the Patent Office for its decision. If the Patent Office, by general rule or by action in a particular case, should hear conflicting evidence upon that question and decide it, the courts would not lightly review that decision. None the less does this result follow when the Patent Office sees fit to accept and act upon an ex parte affidavit. It is only when other parts of the record (as the former, deliberate abandonment of the broader claim) conclusively show that the error was not inadvertent that there seems to be reason for disregarding the prima facie case made out by the Patent Office decision.

The further and last statutory condition is that the reissue must be for 'the same invention.' It is true that, for purposes of determining infringement, the identity of the patented invention is fixed by the claims; but to apply the same test to identity of invention as between original and reissue loses sight of the difference between the real invention and the originally patented invention, and unless there is such a difference, there is no occasion for reissue. To recognize that difference and permit it to be corrected is the whole purpose of...