Edgarton v. Furst & Bradley Mfg. Co.

• Decision Date: 19 July 1881
• Citation: 9 F. 450
• Court: U.S. District Court — Northern District of Illinois
• Parties: EDGARTON and others v. FURST & BRADLEY MANUF'G CO. and others.

9 F. 450

EDGARTON and others v. FURST & BRADLEY MANUF'G CO. and others.

United States Circuit Court, N.D. Illinois.

July 19, 1881

Thomas H. Dodge, for complainants.

West &amp Bond, for defendants.

BLODGETT D.J.

These two suits are for infringement of letters patent issued on the fifth day of October, 1858, to George Whitcomb, for an improvement in horse hay rakes. The patent was reissued June 16, 1868, in two parts, as reissues No. 2,994 and 2,995, and on the fifth of October, 1872, was extended for a further term of seven years.

The first suit is brought by the owners of the original term, and the second by the owners of the extended term.

The defences set up are:

First the invalidity of the reissued claims involved in this suit second, that the devices covered by the reissued patent were in public use, with the knowledge or consent of the patentee for more than two years prior to his application for this patent, and also that they were publicly known and used by others for more than that time; third, that the improvements in question are anticipated by the older art; and, fourth, that the defendants do not infringe.

The patent in question has reference to what are known as wire-tooth horse hay rakes, and the claims of the patent alleged to be infringed by the defendants are the second and fourth of reissue No. 2,994, which are as follows:

'Second. The combination and relative arrangement of the hinged rake-head with the supporting axle and carrying wheels, substantially as shown and described, whereby the head is supported above the rear upper edge of the axle, as shown, and the lower ends of the teeth, when gathering the hay, occupy positions in rear of the tread of the wheels, and forward of a vertical plane on a line with the rear edge of the wheels, substantially as shown in the accompanying drawings.

'Fourth. The arrangement of the rake-head, E, and foot-treadles, H J and G K, or either, in relation to each other and the axle, B, substantially as and for the purposes set forth.'

In his specifications, forming part of the original patent, the patentee inserted a disclaimer as follows:

'I do not claim the wire teeth, F, attached to the head, E, as shown, for such device, mounted on wheels, is in quite common use.'

This disclaimer is wholly omitted from the reissued patent, and the only claim in the original patent was:

'The arrangement of the treadle, J K, lever, I, rake-head, E, arms, G K, bar, F, joint, C, and adjustable rope, L, substantially as and for the purposes set forth.'

This patent was before the United States circuit court of Massachusetts in June, 1872, in the case of Brown v. Whittemore, 5 Fish. 524, Mr. Justice Clifford and Judge Lowell, presiding, and the two claims now in question were sustained under the facts in that case, and it was again before the same court, Judge Lowell, presiding, in December, 1879, in the case of Edgarton v. Beck, and the fourth claim sustained under the facts in that case. In the first of these cases the court said:

'The record does not contain a copy of the original patent, and there is no evidence of what changes, if any, are found in the reissue. In the absence of such evidence we must, of course, assume that the action of the patent-office was well warranted by the facts, and that the reissued patent is open to only such objections as might have been raised to the original patent.'

In Brown v. Whittemore the second point made in this case seems to have been urged, and the court said:

'Upon a very careful examination of the evidence we are of opinion that the combinations of the second and fourth claims were not only invented by Whitcomb, but that they had not been publicly used or sold with his consent before the time in question. * * * And, though the evidence is not all on one side, yet the preponderance of it is that the combination of the treadle for raising the rake-head with the other devices was not fully discovered and used before June, 1856.'

In Edgarton v. Beck the contest seems to have been mainly over the questions of novelty and infringement.

But the proofs in Brown v. Whittemore, on the question of prior use and sale with the consent of the patentee, and in Edgarton v. Beck, on the question of novelty, do not seem to have been the same as in the cases now before the court; and the original patent is before this court, which was not before the court in the Whittemore Case.

Of course, if the testimony in these cases was substantially the same as that in the cases heretofore decided by the learned judges in the Massachusetts circuit court, I should feel wholly bound by their decisions and the construction of the patent given by them. But, as it is evident from the inspection of this record that I have a different combination of facts to deal with from what has been heretofore presented, I must consider these cases in the light of their own evidence.

The first objection to the second claim is that it comes within the disclaimer of the original patent.

'I do not claim the wire teeth, F, attached to the head, E, as shown, for such a device, mounted on wheels, is in quite common use.'

What is it that Whitcomb here disclaims? My own construction is that it is the rake-head, E, mounted on wheels, as described in his specification and shown in his drawing; and this rake-head and mode of mounting it is described in his original specifications in the following language: 'The back end of the shafts or thills, C C, extend a trifle back of the axle, B, and to the back end of the thills, beyond the back part of the axle, a rake-head, E, is connected by joints or hinges, C, the hinges being at the under side of the rake-head, as shown clearly in figure 1, so that the head may work thereon as a fulcrum.'

Figure 1, in the drawing of the original patent and in the reissued patent, shows the rake-head made of a square stick of timber, with an eye-bolt passing through from corner to corner, which, with an eye-bolt or staple passing through the end of the thill, makes the joint or hinge by which the rake-head is attached to the carriage. By this arrangement the teeth hang nearly in a line with the periphery of the wheel, the points coming to the ground just back of the tread of the wheel.

Naturally enough the curved rake teeth will hang or move somewhat in the line of the periphery of the wheel, and they will hang just back of the tread of the wheel.

If I am right in my construction of this disclaimer, there can be no doubt that the second claim of the reissue is for the very thing which Whitcomb disclaimed and said was in common use in his original specification. He brings this case clearly within the principle laid down by the supreme court of the United States in Leggett v. Avery, 101 U.S. 259:

'We think it was a manifest error of the commissioner in the reissue to allow the patentee a claim for an invention different from that which was described in the surrendered letters, and which he had thus expressly disclaimed. The pretence that an error had arisen by inadvertence, accident, or mistake, within the meaning of the patent law, was too bald for consideration. The very question of the validity of these claims had just been considered and decided with the acquiescence and the express disclaimer of the patentee. If in any case, where an applicant for letters patent, in order to obtain the issue thereof, disclaims a particular invention or acquiesces in the rejection of a claim thereto, a reissue containing such claim is valid, (which we greatly doubt,) it certainly cannot be sustained in this case.'

Then, again, they say, on the same page:

'As before remarked, we consider it extremely doubtful whether reissued letters can be sustained in any case where they contain claims that have once been formally disclaimed by the patentee, or rejected with his acquiescence, and he has consented to such rejection in order to obtain his letters patent. Under such circumstances, the rejection of the claim can in no just sense be regarded as a matter of inadvertence or mistake. Even though it was such, the applicant should seem to be estopped from setting it up as an application for a reissue.' So, too, in the bottle-stopper case, lately before Judge Shipman, (Putnam v. Tinkham, 4 F. 411,) the learned judge says:

'The claim is as follows: 'The internally located bottle stopper, B, provided with a hinged or jointed handle or bail C, composed of two elastic legs or branches, and an eye or finger loop, as and for the purpose set forth.' He virtually disclaims rigid handles, and says that his invention is designed to avoid such a method of construction. It is useless to say that by a rigid handle he merely meant a bail without spring action, for the entire paragraph shows that he also meant a handle so jointed or hinged to the stopper that it could be turned away from the mouth of the bottle. He intended to point out that his handle or bail was both hinged to the stopper and had elastic legs. The reissue covers a device in which the bail is attached to the stopper in any manner. The hinged construction is briefly alluded to as one which accomplishes a certain result. * * * In the original patent the patentee informed the public, with precision, and after deliberation, that his invention was an improvement upon a rigid handle, and limited himself to a hinged or jointed handle. It has now become important for the plaintiff to possess himself of the territory which his assignor attempted to occupy, but abandoned, and the ownership of which he virtually disclaimed. A...