Heidbrink v. Charles H. Hardessen Co., No. 3919.

CourtUnited States Courts of Appeals. United States Court of Appeals (7th Circuit)
Writing for the CourtALSCHULER, EVANS, and PAGE, Circuit
Citation25 F.2d 8
Decision Date03 April 1928
Docket NumberNo. 3919.
PartiesHEIDBRINK et al. v. CHARLES H. HARDESSEN CO.

25 F.2d 8 (1928)

HEIDBRINK et al.
v.
CHARLES H. HARDESSEN CO.

No. 3919.

Circuit Court of Appeals, Seventh Circuit.

April 3, 1928.


F. A. Whiteley, of Minneapolis, Minn., for appellants.

Geo. E. Kirk, of Toledo, Ohio, for appellee.

Before ALSCHULER, EVANS, and PAGE, Circuit Judges.

EVAN A. EVANS, Circuit Judge.

Appellants brought suit to enjoin infringement of two patents, the Heidbrink reissue patent, No. 15,873, issued July 22, 1924, and the Heidbrink reissue patent, No. 15,874, issued July 22, 1924. Each covers "anæthetic apparatus." The first-named patent replaced patent No. 1,309,686, bearing date July 15, 1919, while the second replaced patent No. 1,265,910, dated May 4, 1918.

Appellee is a distributor. McKessen, the manufacturer of the infringing machine, is the real defendant.

A prior adjudication (Heidbrink v. McKessen C. C. A. 290 F. 665), is relied upon by appellee. This decision is advanced because, as appellee asserts, it is res adjudicata and because of its persuasiveness.

In the Ohio District Court suit was on the two original patents. The decree was for the defendant. On appeal, the decree was affirmed. The Court of Appeals held that patent No. 1,265,910 was void and the claims in issue of patent 1,309,686 were not infringed.

Heidbrink promptly applied to the Patent Office for reissue patents, which were granted. Appellants rely on claims 2 to 10

25 F.2d 9
inclusive, of the first, and claims 1 to 7, inclusive, of the second, reissue patent

Respecting the first reissue patent, it is significant that: (a) No court ever held the claims of the original patent invalid. (b) No court ever held the original patent inoperative. (c) No court ever held that patentee had claimed more than his invention permitted. (d) Appellants unsuccessfully endeavored to bring appellee within the language of the original patent. (e) From the date of the issue of appellants' original patent to the date of the reissue patent — four years ten months — appellee was engaged in the business of manufacturing and selling the alleged infringing machine. Its predecessor had invested large sums of money in its business. (f) Appellants during this entire period knew that appellee was so engaged in manufacturing and selling these machines. (g) The claims of appellants' reissue patent are broader than the claims of the original patent, and were broadened for the sole purpose of including appellee's machine.

The conditions under which the Commissioner of Patents may grant a reissue patent are defined by the statute. R. S. § 4916, or section 9461, U. S. Compiled Statutes (35 USCA § 64).1

The Commissioner of Patents is not empowered to grant reissue patents except as authorized by this section. Miller v. Brass Co., 104 U. S. 350, 26 L. Ed. 783; Mahn v. Harwood, 112 U. S. 354, 5 S. Ct. 174, 6 S. Ct. 451, 28 L. Ed. 665.

It is apparent from a reading of Judge Dennison's opinion that the original patent was neither invalid nor inoperative. With equal certainty it may be stated that no contention was made that the invalidity of the original patent was due to defective or insufficient specification or to patentee's "claiming as his own invention more than he had a right to claim." It is likewise apparent from the record that there was no error upon the part of the applicant traceable to inadvertence, accident or mistake which resulted in his securing claims which did not describe his invention.

We are unable to understand upon what theory the Patent Office proceeded in allowing this reissue patent.

Even though the statutory requirements were met in other respects, which they were not, patentee's attempt to broaden his claims should, under the existing circumstances, have defeated his efforts to secure this reissue patent; for a patent cannot lawfully be reissued for the purpose of enlarging the claim unless (a) there has been a clear mistake inadvertently committed in the wording of the claim, and (b) the application for a reissue is made within a reasonably short period after the original patent was granted. Mahn v. Harwood, supra. The evidence fails to show a mistake inadvertently committed, and the application for a reissue patent was not made within a reasonable period after the grant of the original patent.

In the last-cited case, the court said:

"The granting of such reissues after the lapse of long periods of times is an abuse of the power, and is founded on a total misconception of the law. * * * Lapse of time may be of small consequence on an application for the reissue of a patent on account of a defective specification or description, or where the original claim is too broad. But there are substantial reasons, not applicable to these cases, why a claim cannot be enlarged and made broader after an undue lapse of time. The rights of the public here intervene, which are totally inconsistent with such tardy reissues; and the great opportunity and temptation to commit fraud after any considerable lapse of time, when the circumstances of the original...

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5 practice notes
  • Moist Cold Refrigerator Co. v. Lou Johnson Co., No. 13811.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • 28 Febrero 1955
    ...3 Cir., 129 F.2d 608, certiorari denied 317 U.S. 654, 63 S.Ct. 50, 87 L.Ed. 526, and Heidbrink v. Charles H. Hardessen Co., 7 Cir., 25 F.2d 8, ceriorari denied 278 U.S. 629, 49 S.Ct. 29, 73 L.Ed. 548. These cases are plainly distinguishable on their facts. Each declared reissue patents to b......
  • Foxboro Co. v. Taylor Instrument Companies, Civil Action No. 1034.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court of Western District of New York
    • 16 Noviembre 1944
    ...the reissue are different in scope from the original claims affected by the disclaimer. In Heidbrink v. Charles H. Hardessen Co., 7 Cir., 25 F.2d 8, the Court in holding a reissued patent invalid noted that the claims of the reissued patent were broader than the claims of the original paten......
  • Kalich v. Paterson Pacific Parchment Co., No. 10119.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • 30 Julio 1943
    ...Electric Company v. Richmond Street & Interurban Railway Co., 7 Cir., 178 F. 84; Heidbrink et al. v. Charles H. Hardessen Co., 7 Cir., 25 F.2d 8; James v. Campbell, 104 U.S. 356, 26 L.Ed. 786; Topliff v. Topliff, 145 U.S. 156, 12 S.Ct. 825, 36 L.Ed. 658; Lorraine et al. v. Townsend et a......
  • General Radio Co. v. Allen B. Du Mont Laboratories, No. 7749.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (3rd Circuit)
    • 12 Mayo 1942
    ...specification, to be reissued * * *." R.S. § 4916, 35 U.S.C.A. § 64. 3 In Heidbrink v. Charles H. Hardessen Co., 7 Cir., 1928, 25 F.2d 8, certiorari denied, 278 U.S. 629, 49 S.Ct. 29, 73 L.Ed. 548, Judge Evans, speaking of an attempt to cure the error of a functional claim by reissue, ......
  • Request a trial to view additional results
5 cases
  • Moist Cold Refrigerator Co. v. Lou Johnson Co., No. 13811.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • 28 Febrero 1955
    ...3 Cir., 129 F.2d 608, certiorari denied 317 U.S. 654, 63 S.Ct. 50, 87 L.Ed. 526, and Heidbrink v. Charles H. Hardessen Co., 7 Cir., 25 F.2d 8, ceriorari denied 278 U.S. 629, 49 S.Ct. 29, 73 L.Ed. 548. These cases are plainly distinguishable on their facts. Each declared reissue patents to b......
  • Foxboro Co. v. Taylor Instrument Companies, Civil Action No. 1034.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court of Western District of New York
    • 16 Noviembre 1944
    ...the reissue are different in scope from the original claims affected by the disclaimer. In Heidbrink v. Charles H. Hardessen Co., 7 Cir., 25 F.2d 8, the Court in holding a reissued patent invalid noted that the claims of the reissued patent were broader than the claims of the original paten......
  • Kalich v. Paterson Pacific Parchment Co., No. 10119.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • 30 Julio 1943
    ...Electric Company v. Richmond Street & Interurban Railway Co., 7 Cir., 178 F. 84; Heidbrink et al. v. Charles H. Hardessen Co., 7 Cir., 25 F.2d 8; James v. Campbell, 104 U.S. 356, 26 L.Ed. 786; Topliff v. Topliff, 145 U.S. 156, 12 S.Ct. 825, 36 L.Ed. 658; Lorraine et al. v. Townsend et a......
  • General Radio Co. v. Allen B. Du Mont Laboratories, No. 7749.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (3rd Circuit)
    • 12 Mayo 1942
    ...specification, to be reissued * * *." R.S. § 4916, 35 U.S.C.A. § 64. 3 In Heidbrink v. Charles H. Hardessen Co., 7 Cir., 1928, 25 F.2d 8, certiorari denied, 278 U.S. 629, 49 S.Ct. 29, 73 L.Ed. 548, Judge Evans, speaking of an attempt to cure the error of a functional claim by reissue, ......
  • Request a trial to view additional results

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