Dunham v. Dennison Manuf Co

• Decision Date: 26 May 1894
• Docket Number: No. 294,294
• Citation: 14 S.Ct. 986,154 U.S. 103,38 L.Ed. 924
• Parties: DUNHAM v. DENNISON MANUF'G CO
• Court: U.S. Supreme Court

154 U.S. 103

14 S.Ct. 986

38 L.Ed. 924

DUNHAM

v DENNISON MANUF'G CO.

No. 294.

May 26, 1894.

This was a bill in equity for the infringement of two patents for inventions granted by the United States to the plaintiff; the one a reissue, dated June 10, 1884, of a patent issued May 8, 1883, for 'a new and improved combined tag and envelope,' and the other an original patent, dated November 24, 1885, 'for certain improvements in envelopes.'Upon a hearing in the circuit court on pleadings and proofs, the bill was dismissed, for the reasons stated in the opinion of Judge Coxe, which was as follows:

'This is an equity action founded upon two letters patent granted to the complainant.The first, a reissue patent (No. 10,488), dated June 10, 1884, is for a combined tag and envelope; and the second (No. 331,118) dated November 24, 1885, is for an improvement in envelopes.

'The reissued patent will be first considered.The defenses are lack of novelty and invention, noninfringement, and that the reissue is void because of an unwarrantable expansion of its claims.The original patent, No. 277,245, was dated May 8, 1883.The application for the reissue was filed March 18, 1884, ten months and ten days thereafter.

'The invention of the original was limited, as clearly as the drawings and the language of the description and claims could limit it, to an envelope having at one end a flap of sufficient size to cover one side of the envelope.The inventor says: 'The object of the invention is to form an envelope with an end flap covering its side, as hereinafter described.* * * An envelope, A, preferably made of strong, waterproof paper, is provided with an end flap, B, of sufficient size to cover the entire envelope.An eyelet, C, is secured in that end of the envelope opposite to the one to which the flap, B, is attached; and the flap, B, is provided on its free end with an eyelet, D, which, when the flap, B, is folded over the envelope, rests upon the eyelet, C.'He then describes the manner in which the name of the consignee is concealed, by writing it on the inside of the flap, so that dealers engaged in the same business cannot ascertain the names of their rivals' customers.The name of the consignor is printed on the outer surface of the flap, where also appears the name of the city or town to which the goods are destined, and a notice to carriers that the full name of the consignee may be found on the inner surface.

'It is evident that the patentee considered this peculiar form of flap the main feature of his invention.It is also clear that an envelope which does not include a flap large enough to cover its side does not infringe the claims, which are as follows:

"(1) A combined tag and envelope, made substantially as herein shown and described, and consisting of an envelope having at one end a flap of sufficient size to cover one side of the envelope, as set forth.

"(2) In a combined tag and envelope, the combination, with an envelope, A, having a flap, B, at one end, of the eyelet, D, in the free end of the flap, and the eyelet, C, in that end of the envelope opposite the one to which the flap is attached, substantially as herein shown and described, and for the purpose set forth.'

'The specification is perfectly plain.There is no ambiguity about the description, and the claims, in language equally clear, cover what is said to be the invention, and the whole thereof.

'Soon after the patent was granted, the defendant, in the summer of 1883, commenced manufacturing tag envelopes, which the complainant insists are infringements of the reissue, but frankly admits that they do not infringe the original patent, for the reason that they do not have the flap, B.

'The reason for the reissue is thus stated in the complainant's brief: 'Soon after putting the patented article on the market, complainant was informed that defendant, a corporation that had for some time manufactured in Boston, and made extensive sales throughout the country of, a shipping tag was manufacturing and selling a tag envelope similar to complainant's.Complainant immediately applied to counsel for the purpose of commencing suit against defendant, and was advised by such counsel, after an examination of his letters patent, and a statement of his invention and application, that his patent was defective, indefinite, and ambiguous in its claims, so as to render it practically inoperative, and that he had better apply for a reissue.'

'The patentee himself states that the alleged infringing envelope of the defendant was one of the forms 'invented by him, but not shown in his patent,' and he therefore sought a reissue which would cover it.

'Turning now to the reissue, it is manifest that the effort was to discard the flap, B, as an element of the invention, and expand the claims sufficiently to cover an envelope, no matter what the size or shape of its flap.The invention no longer consists in 'an envelope with an end flap covering its side,' as in the original, but 'in a tag provided with means for attaching it to the merchandise, and with an envelope or pocket to receive a bill or invoice of the merchandise.'The drawings are referred to as showing the invention 'in its preferred form.'The end flap is no longer 'of sufficient size to cover the entire envelope,' but it must cover it 'substantially.'The claims of the reissue are as follows:

"(1) A combined tag and envelope, substantially as described, wherein the flap which closes the mouth of the envelope is fastened down by the cord or other device which secures the tag to the merchandise, as set forth.

"(2) A combined tag and envelope, substantially as described, the flap having an eyelet hole which, when the flap is folded down on the envelope, coincides with an eyelet hole in the envelope, whereby the cord or hook for attaching the tag may be passed through both holes, substantially as set forth.

"(3) In a combined tag and envelope, the combination, with an envelope, A, having a flap, B, at one end, of the eyelet, D, in the free end of the flap, and the eyelet, C, in that end of the envelope opposite the one to which the flap is attached, substantially as herein shown and described, and for the purpose set forth.'

'The third claim of the reissue is the same as the second of the original, but it is not contended that this claim is infringed.Claims one and two of the reissue are unquestionably broadened.They are no longer limited to a flap of sufficient size to cover the entire envelope.Should the court hold that they are so limited, it is admitted that they are not infringed.

'It is thought that these expanded claims cannot escape the force of the repeated decisions of the supreme court relating to reissued patents.

'The patentee made no move until the defendant had produced its envelope, which could be sold without infringing the original patent.If he had been the first inventor of this new and improved form, he might have described and claimed it in the original patent.He did neither.He now seeks by the reissue to include structures and improvements which were neither described nor claimed in the original.This he cannot do.The defendant has acquired valuable rights which cannot be trampled upon in this manner.

'The law upon this subject is too well settled to require a citation of authorities; but the case of Coon v. Wilson, 113 U. S. 268, 5 Sup. Ct. 537, seems peculiarly applicable and controlling.Substitute the nomenclature pertaining to envelopes for that relating to collars, and the opinion in Coon v. Wilson is as applicable to this controversy as if written for the purposes of this action only: 'Although this reissue was applied...