Heidbrink v. Charles H. Hardessen Co.

• Decision Date: 03 April 1928
• Docket Number: No. 3919.,3919.
• Citation: 25 F.2d 8
• Parties: HEIDBRINK et al. v. CHARLES H. HARDESSEN CO.
• Court: U.S. Court of Appeals — Seventh Circuit

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 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 application have passed out of mind, and the monopoly has proved to be of great value, make it imperative on the courts, as a dictate of justice and public policy, to hold the patentees strictly to the rule of reasonable diligence in making applications for this kind of reissues."

What is a reasonable time has been the subject of investigation in many cases. Such a period cannot be defined so as to fit all cases, for what is reasonable in one case may be unreasonable in another. Wollensak v. Sargent, 151 U. S. 221, 14 S. Ct. 291, 38 L. Ed. 137. We conclude that in the present case the lapse of more than four years from the date of the original issuance of the patent was unreasonable. Hoskin v. Fisher, 125 U. S. 217, 8 S. Ct. 834, 31 L. Ed. 759; Wollensak v. Sargent, supra; Mahn v. Harwood, supra; Gardner v. Herz, 118 U. S. 180, 6 S. Ct. 1027, 30 L. Ed. 158; Miller v. Bruse Co., 104 Ill. 350; Bantz v. Frantz, 105 U. S. 160, 26 L. Ed. 1013; Flame Oil Stove Co. v. Glazier (C. C. A.) 119 F. 157; Thomson-Houston Electric Co. v. Sterling Meter Co. (C. C.) 150 F. 589.

Respecting the second reissue patent No. 15874, somewhat different questions arise.

Certain of the statutory requirements are present. To illustrate, certain claims of the original patent were declared void. Speaking of them, the court said (290 F. 669):

"With this statement of the situation, we come to his two claims of 1,265,910. We are compelled to think that they are invalid because functional. They are apparently most deliberately and skillfully drafted to cover any means which any one ever may discover of producing the result; that is, to accomplish the one thing while avoiding the other. We think they are clearly to be condemned under the rule stated in O'Reilly v. Morse, 15 How. 62, 112, 14 L. Ed. 601, Risdon v. Medart, 158 U. S. 68, 77, 15 S. Ct. 745, 39 L. Ed. 899, and the many...