Cormick Harvesting Mach Co v. Aultman Co Same v. Co, AULTMAN-MILLER

CourtUnited States Supreme Court
Writing for the CourtBROWN
Citation169 U.S. 606,18 S.Ct. 443,42 L.Ed. 875
PartiesMcCORMICK HARVESTING MACH. CO. v. C. AULTMAN & CO. et al. SAME v.CO
Docket NumberAULTMAN-MILLER,Nos. 130 and 131
Decision Date21 March 1898

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

Page 607

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

Page 608

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...

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51 practice notes
  • Fresenius United States, Inc. v. Baxter Int'l, Inc., Nos. 2012–1334
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • July 2, 2013
    ...to deal with all [the patent's] claims ... and might declare them to be invalid.” McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 612, 18 S.Ct. 443, 42 L.Ed. 875 (1898). The patentee was required to surrender the original patent in order to obtain a reissued patent, and th......
  • National Business Systems, Inc. v. AM Intern., Inc., No. 82-2393
    • United States
    • United States Courts of Appeals. United States Court of Appeals (7th Circuit)
    • January 24, 1985
    ...in the Courts of the United States, and not in the department which issued the patent," quoting from McCormick Harvesting Co. v. Aultman, 169 U.S. 606, 609, 18 S.Ct. 443, 444, 42 L.Ed. 875 (1898) Id. at 59. We concluded that a prior reissue proceeding would have no effect on subsequent liti......
  • Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, No. 16–712.
    • United States
    • United States Supreme Court
    • April 24, 2018
    ...of the patentee." American Bell Telephone Co., 128 U.S., at 370, 9 S.Ct. 90 ; see also McCormick Harvesting Machine Co. v. Aultman, 169 U.S. 606, 609, 18 S.Ct. 443, 42 L.Ed. 875 (1898) ( "[A granted patent] has become the property of the patentee"); Brown v. Duchesne, 19 How. 183, 197, 15 L......
  • Digital Equip. Corp. v. Parker, Civ. A. No. 78-1842-Z.
    • United States
    • United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
    • April 2, 1980
    ...no authority for the Commissioner to set aside or annul the outstanding patent. McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 18 S.Ct. 443, 42 L.Ed. 875 (1898). See Iowa State Univ. Research Found. v. Sperry Rand Corp., 444 F.2d 406 (4th Cir. 1971). See also 37 CFR § 1.1......
  • Request a trial to view additional results
49 cases
  • Fresenius United States, Inc. v. Baxter Int'l, Inc., Nos. 2012–1334
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • July 2, 2013
    ...to deal with all [the patent's] claims ... and might declare them to be invalid.” McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 612, 18 S.Ct. 443, 42 L.Ed. 875 (1898). The patentee was required to surrender the original patent in order to obtain a reissued patent, and th......
  • National Business Systems, Inc. v. AM Intern., Inc., No. 82-2393
    • United States
    • United States Courts of Appeals. United States Court of Appeals (7th Circuit)
    • January 24, 1985
    ...in the Courts of the United States, and not in the department which issued the patent," quoting from McCormick Harvesting Co. v. Aultman, 169 U.S. 606, 609, 18 S.Ct. 443, 444, 42 L.Ed. 875 (1898) Id. at 59. We concluded that a prior reissue proceeding would have no effect on subsequent liti......
  • Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, No. 16–712.
    • United States
    • United States Supreme Court
    • April 24, 2018
    ...of the patentee." American Bell Telephone Co., 128 U.S., at 370, 9 S.Ct. 90 ; see also McCormick Harvesting Machine Co. v. Aultman, 169 U.S. 606, 609, 18 S.Ct. 443, 42 L.Ed. 875 (1898) ( "[A granted patent] has become the property of the patentee"); Brown v. Duchesne, 19 How. 183, 197, 15 L......
  • Digital Equip. Corp. v. Parker, Civ. A. No. 78-1842-Z.
    • United States
    • United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
    • April 2, 1980
    ...no authority for the Commissioner to set aside or annul the outstanding patent. McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 18 S.Ct. 443, 42 L.Ed. 875 (1898). See Iowa State Univ. Research Found. v. Sperry Rand Corp., 444 F.2d 406 (4th Cir. 1971). See also 37 CFR § 1.1......
  • Request a trial to view additional results
2 books & journal articles
  • Ending Patent Subsidies in China
    • United States
    • Landslide Nbr. 14-2, December 2021
    • December 1, 2022
    ...‘private property of the patentee.’ American Bell Telephone Co. , 128 U.S., at 370; see also McCormick Harvesting Machine Co. v. Aultman , 169 U.S. 606, 609 (1898) (‘[A granted patent] has become the property of the paten-tee’); Brown v. Duchesne , 19 How. 183, 197 (1857) (‘[T]he rights of ......
  • Are Patents Property That Is Protected by the U.S. Constitution?
    • United States
    • Landslide Nbr. 14-2, December 2021
    • December 1, 2022
    ...‘private property of the patentee.’ American Bell Telephone Co. , 128 U.S., at 370; see also McCormick Harvesting Machine Co. v. Aultman , 169 U.S. 606, 609 (1898) (‘[A granted patent] has become the property of the paten-tee’); Brown v. Duchesne , 19 How. 183, 197 (1857) (‘[T]he rights of ......

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