Corbin Cabinet Lock Co v. Eagle Lock Co

• Decision Date: 30 October 1893
• Docket Number: No. 42,42
• Citation: 37 L.Ed. 989,14 S.Ct. 28,150 U.S. 38
• Parties: CORBIN CABINET LOCK CO. v. EAGLE LOCK CO
• Court: U.S. Supreme Court

150 U.S. 38

14 S.Ct. 28

37 L.Ed. 989

CORBIN CABINET LOCK CO.

v EAGLE LOCK CO.

No. 42.

October 30, 1893.

Chas. E. Mitchell and John P. Bartlett, for appellant.

Benj. Price and W. H. Thurston, for appellee.

Mr. Justice JACKSON delivered the opinion of the court.

The appellant brought this suit against the appellee for the infringement of two letters patent granted to Henry L. Spiegel for improvements in cabinet locks,—one being reissue letters patent No. 10,361, dated July 31, 1883, and the other No. 316,411, dated April 21, 1885,—both of which were assigned by Spiegel to Frank W. Mix. and by Mix to the appellant. They relate to what are known in the trade as 'machine' locks, so called from the fact that they are adapted for insertion in mortises cut entirely by machinery or routing tools, and thus distinguished from the 'old-style' lock previously used, which was adapted only for mortises cut or chiseled by hand. The locks covered by the patents are used chiefly on furniture.

It is alleged that the defendant's lock, which is substantially that covered by the Morris L. Orum patent of August i2, 1882, infringes the first claim of the reissue, and the three claims of the patent of 1885. The defenses set up as to the reissue are that the first claim thereof is for a different invention from that described in the original patent; that it is an expansion of the original claim, and is not infringed. As to the patent of 1885, the defenses interposed are that it is anticipated by other persons and patents, and want of patentability. The opinion of the court below, dismissing the bill, is reported in 37 Fed. Rep. 338. From that decree the present appeal is prosecuted.

The history of the art on this subject is so fully set forth in the opinion of Mr. Justice Brown in the case of Duer v. Lock Co., 149 U. S. 216, 13 Sup. Ct. Rep. 850, (decided at the last term of this court,) that it need not be repeated here.

No special consideration was given by the court below to the first claim of the reissue patent, and, while it was not seriously insisted in oral argument before this court that there was error in the judgment of the court below on this branch of the case, counsel for appellant have nevertheless contended in their brief that the first claim of the reissue patent is valid, and was infringed. It becomes necessary, therefore, to examine the question raised on the reissue patent.

The original patent on which the reissue is founded was No. 241,828, dated May 24, 1881. It appears from the file wrapper and contents that in his original application the patentee made three claims, the first being for 'cabinet lock having its rear plate projecting at each side of the lock-case, at G, G, substantially as and for the purpose specified;' the second was for a lock having such projecting rear plate, and having its front plate provided with a slit and strip; and the third claim was for a lock having such projecting rear plate, and having the upper part of such projection bent towards the front plate, as at G'. Each of these claims was rejected by the patent office,—the first and broader claim on reference to the Gory patent, No. 138,148, dated April 22, 1873, the second on reference to the Bishop patent, No. 201,219, dated March 12, 1878, and the third on the ground of no invention.

In the letter of rejection it was suggested to the applicant that a 'single specific claim, limited to its [the lock's] exact construction,' might be allowed. This suggestion was accepted, all three claims originally filed were canceled, and there was substituted and allowed a single claim, as follows: 'A cabinet lock having its rear plate projecting beyond each side of the lock case, as at G, G, and having the upper part of each projection bent toward the front plate, D, combined with the front plate, D, said front plate having a slit, n, and strip, m, substantially as and for the purposes specified.'

Having originally sought broader claims, which were rejected, and having acquiesced in such rejection, and having withdrawn such claims, and substituted therefor this narrower claim, describing a particular or specific lock, as such, neither the patentee nor his assignees can be allowed, under the authorities, to insist upon such construction of the allowed claim as would cover what had been previously rejected. Shepard v. Carrigan, 116 U. S. 593, 6 Sup. Ct. Rep. 493; Roemer v. Peddie, 132 U. S. 313, 10 Sup. Ct. Rep. 98; Royer v. Coupe, 146 U. S. 524, 13 Sup. Ct. Rep. 166.

Aside from the operation of this estoppel, it is perfectly clear that the action of the patent office in rejecting the three original claims was correct, for the 'old-style' lock, which was in use long prior to the date of the Spiegel so-called invention, had a projecting front plate and a projecting rear plate which necessarily included a space between them. So, too, the lock of the Gory patent had a projecting rear plate, but lacked the bent-in feature and slitted front plate. But the Spiegel patent presented no patentable differences. The specification and claim of the original patent, as allowed, described and covered a lock, per se, of a special construction, and did not extend to or include anything in combination therewith.

In the application for reissue, filed April 28, 1883, the original specification was amended in two material respects. The new matter consisted of a statement describing how a mortise should be formed, and how the lock is to be combined therewith so as to be held laterally therein, as follows: 'By means of the portions of the walls of the mortise which are in front of the lockingplate, G', and in the rear of the front plate of the lock.' And there was also added this further statement: 'It will thus be seen that the lock is prevented from lateral displacement by the projections upon the back plate, in combination with the corresponding shape of the mortise, and that it is prevented from vertical displacement by the thin strip, m, and bent part, G'.' With these additions to the original specification, there were allowed, in the reissue, the original claim and three new claims, as follows:

'(1) A cabinet lock having its front plate and rear plate extending laterally beyond the body of the lock, in combination with the mortise, whose walls enter the space between the front and rear plate, whereby fastening screws are dispensed with, substantially as described.

'(2) A cabinet lock having its front plate and rear plate extending laterally beyond the body of the lock, and having also the edge, G', upon the rear plate bent toward the companion plate, substantially as described, and for the purpose specified.

'(3) A cabinet lock having the thin strip, m, and the slit, n, at the lower corner of its outer plate, substantially as described, and for the purpose specified.'

Of these reissue claims, the first is the only one which it is insisted the defendant's lock infringes. It is perfectly manifest that the new matter in the reissue specification was inserted to lay the foundation for either changing the original claim, or the patent covered thereby, or for the purpose of expanding that claim so as to make it cover, substantially, what had been rejected on the original application. An examination of the proceedings in the patent office, in connection with the original application and the claim of the original patent, renders it perfectly obvious that the first claim of the reissue is not for the lock, as such, but is for a combination...