Mahn v. Harwood

CourtUnited States Supreme Court
Writing for the CourtBRADLEY; MILLER
Citation28 L.Ed. 665,112 U.S. 354,5 S.Ct. 174
PartiesMAHN v. HARWOOD and others
Decision Date01 December 1884

112 U.S. 354
5 S.Ct. 174
28 L.Ed. 665
MAHN
v.
HARWOOD and others.
December 1, 1884.

Thos. Wm. Clarke, for appellant.

J. E. Maynadier, for appellee.

BRADLEY, J.

Page 355

This suit was brought on a patent relating to leather covers of 'base-balls and other similar articles.' The patent was originally issued to one James H. Osgood, of Boston, under date of May 21, 1872. The bill states that Osgood afterwards assigned this patent to Louis H. Mahn, the complainant below, appellant here. On the eleventh of April, 1876, it was reissued, and the suit is brought on the reissue against the Harwoods, charging infringement. Except in stating the nature of the invention, and the claims, the specifications of the original and reissued patents are precisely alike. The description and accompanying drawings are not changed. Briefly stated, the specification describes a leather ball-cover composed of two hemispherical parts, each being moulded into form when in a wet state, and, after being dried, sewed together on to the ball by a peculiar stitch, called a double nerring-bone stitch; then a second cover made in precisely the same manner, and sewed on to the ball, outside of the first cover, in such manner that the stitches of the two covers may cross each other at right angles.

In the original patent it is stated that the nature of the invention consists—First, in the employment of a new stitch, called the double herring-bone secured stitch, whereby only one stitch can be broken at a time; second, in the employment of a binder

Page 356

of leather next the yarn of a base-ball, or as a first cover to other round articles, so stitched and put on that the outer covering when applied shall have its seams at right angles, or breaking joints, with the seams of the first cover; third, in making the leather covers of a hemispherical shape, by compression and crimping in properly shaped moulds with plungers, while wet, after which they are dried in shape and then softened by moisture, stretched on and sewed. The claims of the original patent are the two following, namely: '(1) A ball exterior, composed of two crimped hemispherical covers, A and B, having their respective seams, x and y, break joints, substantially as set forth. (2) In combination with a ball whose exterior is composed of two hemispherical covers, A and B, with their respective seams, x and y, breaking joints, I claim the double herring-bone stitch formed of two threads, in the manner herein set forth.' The letters, A and B, in the drawing, designate the two covers, one outside of the other; and the letters, x and y, designate the respective stitches of those covers. The whole invention claimed, therefore, in the original patent, was—First, the two leather covers, (an outside one and an inside one,) with their respective seams crossing at right angles: and, second, the double herring-bone stitch in combination with the two covers.

In the reissue it is stated that 'the nature of the invention consists—First, in the cover of a base-ball formed of two pieces of leather suitably secured to each other; second, the seams of a base-ball united by the double herring-bone knotted lock-stitch; third, a base-ball covering consisting of an outer and an inner covering applied to the ball independently of each other; fourth, a base-ball covering consisting of independent outer and inner coverings made of hemispherical sections, the seams of the inner and outer covers arranged relatively to each other to break joints;' and this reissue has the four following claims, namely: '(1) A base-ball cover formed of two pieces of leather, secured to each other by a single seam, substantially as and for the purpose specified.

Page 357

(2) A base-ball cover having its seam united by the double herring-bone knotted lock-stitch, substantially as and for the purpose specified. (3) The covering of a base-ball consisting of an outer and an inner covering, each of which is composed of two pieces of leather, and applied to the ball independently of each other, substantially as and for the purpose specified. (4) A base-ball covering composed of independent inner and outer coverings, made up of hemispherical sections, the seams of the inner and outer covers arranged relatively to each other, to break joints, substantially as and for the purpose specified.' It is apparent that, in the reissue, the claim of invention is greatly enlarged. The patentee claims therein—First, any and every single base-ball cover formed of two pieces of leather, fastened together by a single seam, substantially as and for the purpose described; secondly, any and every base-ball cover having its seam united by the double herringbone stitch, substantially, etc.; thirdly, every and any use of two covers on a base-ball, each made of two pieces of leather, and applied to the ball independently of each other, substantially, etc. The fourth claim is nearly equivalent to the first claim of the original patent. The others are all new.

It is clear, therefore, on the face of the patents, that the only object of the reissue was to enlarge the claims. The description was not altered in the least. The claims in the original patent were clear and explicit, one of them being substantially retained in the reissue. Nothing was altered, nothing was changed, but to multipl the claims and to make them broader. And this was done, not for the benefit of the original patentee, but for that of his assignee; and was done after the lapse of nearly four years from the granting of the original patent. The case seems to come clearly within the principles lait down in Miller v. Brass Co. 104 U. S. 350, and if we were right in the conclusions arrived at in that case, we do not see how we can sustain the patent sued on in this. The counsel for the appellant seems to be aware of this, and, in his argument, directs his efforts mainly to attack the principles there ex-

Page 358

pressed, although they have been frequently reiterated in subsequent cases. We deem it proper, therefore, to say, once for all, that the views announced in Miller v. Brass Co., on the subject of reissuing patents for the purpose of expanding and enlarging the claim. were deliberately expressed and are still adhered to. As the reasons for those views were quite fully gone into at that time, it is unnecessary to repeat them at large. A few additional observations will suffice. It was not intended then, and is not now, to question the conclusiveness, in suits for infringements of patents, of the decisions of the commissioner on questions of fact necessary to be decided before issuing such patents, except as the statute gives specific defenses in that regard. But the statutory defenses are not the only defenses which may be made against a patent. Where it is evident that the commissioner, under a misconception of the law, has exceeded his authority in granting or reissuing a patent, there is no sound principle to prevent a party sued for its infring gement from availing himself of the illegality, independently of any statutory permission so to do. This is constantly done in land cases where patents have been issued which the land officers had no authority to issue; as, where the lands have been previously granted, reserved from sale, or appropriated to other uses. Stoddard v. Chambers, 2 How. 318; Easton v. Salisbury, 21 How. 426; Reichart v. Felps, 6 Wall. 160; Silver v. Ladd, 7 Wall. 219; Meader v. Norton, 11 Wall. 442; Best v. Polk, 18 Wall. 112; Morton v. Nebraska, 21 Wall. 660; Leavenworth R. Co. v. U. S. 92 U. S. 733; Newhall v. Sanger, Id. 761; Sherman v. Buick, 93 U. S. 209.

In cases of patents for inventions, a valid defense, not given by the statute, often arises where the question is whether the thing patented amounts to a patentable invention. This being a question of law, the courts are not bound by the decision of the commissioner, although he must necessarily pass upon it. See Brown v. Piper, 91 U. S. 38; Glue Co. v. Upton, 97 U. S. 3; Dunbar v. Myers, 94 U. S. 187, 197-199; Atlantic Works v. Brady, 107 U. S. 199; S. C. 2 SUP. CT. REP. 225; Slawson v. Grand St.

Page 359

R. Co. Id. 652; S. C. 2 SUP. CT. REP. 663; King v. Gallun, 109 U. S. 101; S. C. 3 SUP. CT. REP. 85. In this very matter of reissued patents it has also been frequently decided that it is a good defense in a suit on such a patent to show that the commissioner exceeded his authority in granting it. Such a defense is established by showing that the reissued patent is for a different invention from that described in the original; inasmuch as the statute declares that it must be for the same invention. Burr v. Duryee, 1 Wall. 531, 574; Gill v. Well, 22 Wall. 1; Collar Co. v. Van Dusen, 23 Wall. 530, 560; Wood Paper Patent, Id. 566; and many other subsequent cases. The same defense may be established by showing from the record that there was no inadvertence, accident, or mistake in drawing up the specification of the original patent; for the statute only gives a reissue when the original is defective by inadvertence, accident, or mistake. Thus, in Leggett v. Avery, 101 U. S. 259, the reissued patent embraced a claim which had been presented on the application for the original patent and rejected. It was apparent, therefore, that the omission of that claim in the original was not, and could not have been, the result of inadvertence, accident, or mistake, but was the result of design on the part of the commissioner and acquiescence on the part of the patentee; and, so far as that claim was concerned, the reissued patent was properly held to be void. See, also, James v. Campbell, 104 U. S. 368. The proper remedy of the patentee, when a claim applied for is rejected, is an appeal, and not an application for a reissue.

Such are some of the instances in which a patent issued contrary to law is held to be void. And it is no doubt a general rule that where the commissioner has...

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210 practice notes
  • Marconi Wireless Telegraph Co of America v. United States United States v. Marconi Wireless Telegraph Co of America 8212 12, 1943, Nos. 369
    • United States
    • United States Supreme Court
    • June 21, 1943
    ...L.Ed. 1122, as though they were claims whose function is to exclude from the patent all that is not specifically claimed. Mahn v. Harwood, 112 U.S. 354, 361, 5 S.Ct. 174, 178, 6 S.Ct. 451, 28 L.Ed. 665; McClain v. Ortmayer, 141 U.S. 419; 423-425, 12 S.Ct. 76, 77, 78, 35 L.Ed. 800; Milcor St......
  • A.C. Aukerman Co. v. R.L. Chaides Const. Co., No. 90-1137
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • March 31, 1992
    ...150 U.S. 193, 14 S.Ct. 78, 37 L.Ed. 1049 (1893); Wollensak v. Reiher, 115 U.S. 96, 5 S.Ct. 1137, 29 L.Ed. 350 (1885); Mahn v. Harwood, 112 U.S. 354, 5 S.Ct. 174, 28 L.Ed. 665 (1884). Laches may be defined generally as "slackness or carelessness toward duty or opportunity." Webster's Third N......
  • Johnson & Johnston Associates v. R.E. Service, No. 99-1076.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • March 28, 2002
    ...is the claims that measure the invention."). The claims thus give notice of the scope of patent protection. See, e.g., Mahn v. Harwood, 112 U.S. 354, 361, 5 S.Ct. 174, 28 L.Ed. 665 (1884) ("The public is notified and informed by the most solemn act on the part of the patentee, that his clai......
  • General Electric Co. v. Hygrade Sylvania Corporation
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • March 30, 1944
    ...sued for its infringement from availing himself of the illegality, independently of any statutory permission so to do." Mahn v. Harwood, 112 U.S. 354 at page 358, 5 S.Ct. 174, 177, 6 S.Ct. 451, 28 L.Ed. 665. But was the action of the Commissioner in issuing the patent in compliance with the......
  • Request a trial to view additional results
210 cases
  • Marconi Wireless Telegraph Co of America v. United States United States v. Marconi Wireless Telegraph Co of America 8212 12, 1943, Nos. 369
    • United States
    • United States Supreme Court
    • June 21, 1943
    ...L.Ed. 1122, as though they were claims whose function is to exclude from the patent all that is not specifically claimed. Mahn v. Harwood, 112 U.S. 354, 361, 5 S.Ct. 174, 178, 6 S.Ct. 451, 28 L.Ed. 665; McClain v. Ortmayer, 141 U.S. 419; 423-425, 12 S.Ct. 76, 77, 78, 35 L.Ed. 800; Milcor St......
  • A.C. Aukerman Co. v. R.L. Chaides Const. Co., No. 90-1137
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • March 31, 1992
    ...150 U.S. 193, 14 S.Ct. 78, 37 L.Ed. 1049 (1893); Wollensak v. Reiher, 115 U.S. 96, 5 S.Ct. 1137, 29 L.Ed. 350 (1885); Mahn v. Harwood, 112 U.S. 354, 5 S.Ct. 174, 28 L.Ed. 665 (1884). Laches may be defined generally as "slackness or carelessness toward duty or opportunity." Webster......
  • Johnson & Johnston Associates v. R.E. Service, No. 99-1076.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • March 28, 2002
    ...the claims that measure the invention."). The claims thus give notice of the scope of patent protection. See, e.g., Mahn v. Harwood, 112 U.S. 354, 361, 5 S.Ct. 174, 28 L.Ed. 665 (1884) ("The public is notified and informed by the most solemn act on the part of the patentee, that h......
  • General Electric Co. v. Hygrade Sylvania Corporation
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • March 30, 1944
    ...for its infringement from availing himself of the illegality, independently of any statutory permission so to do." Mahn v. Harwood, 112 U.S. 354 at page 358, 5 S.Ct. 174, 177, 6 S.Ct. 451, 28 L.Ed. 665. But was the action of the Commissioner in issuing the patent in compliance with the......
  • Request a trial to view additional results

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