Miller v. Brass Company

CourtUnited States Supreme Court
Writing for the CourtBRADLEY
Citation26 L.Ed. 783,104 U.S. 350
PartiesMILLER v. BRASS COMPANY
Decision Date01 October 1881

104 U.S. 350
104 U.S. 350
26 L.Ed. 783
MILLER
v.
BRASS COMPANY.
October Term, 1881

APPEAL from the Circuit Court of the United States for the District of Connecticut.

The facts are stated in the opinion of the court.

Mr. John S. Beach for the appellants.

Mr. C. R. Ingersoll, contra.

MR. JUSTICE BRADLEY delivered the opinion of the court.

This is a suit brought by Edward Miller & Co. against The Bridgeport Brass Company to restrain the infringement of a patent, and for an account of profits, &c. The patent was for an alleged improvement in lamps, and was originally granted to Joshua E. Ambrose, Oct. 16, 1860, for fourteen years, and was extended for seven years longer. It was twice surrendered and reissued, once in May, 1873, and again in January, 1876. The court below dismissed the bill on the ground that the second reissue, No. 6844, on which the suit was brought, was not for the same invention which was described and claimed in the original patent. We agree with the Circuit Court in the conclusion to which it came. The original patent described a combination of devices, amongst other things, two domes or reflectors, one above the other, elevated above a perforated cap through which a wick tube and a vapor tube ascended. It was claimed that this combination of devices,

Page 351

especially including the two domes, which admitted the external air between them for producing a more perfect combustion, would make a lamp which, without a chimney and without danger of explosion, would burn those hydro-carbons which are volatile and contain an excess of carbon. The invention proved a failure, but it was found that the use of one of the domes (and the other parts), with the restoration of the chimney, would be a real improvement, and both the complainant and the defendant made such lamps in large quantities. Fifteen years after the original patent was granted, the patentee (or rather his assignee) discovers that the improved lamp was really a part of his original invention, and that by inadvertence and mistake he had omitted to claim it. We think, however, that the court below was clearly right in holding that the invention specified in the second claim of the reissued patent (which is the one in question here) is not the same invention which was described and claimed in the original patent. The latter was for a double dome without a chimney, the peculiarity of the supposed invention being the use of the double dome as a means of dispensing with the chimney. The reissue is for a single dome with a chimney. It is not only obviously a different thing, but it is the very thing which the patentee professed to avoid and dispense with.

But there is another grave objection to the validity of the reissued patent in this case. It is manifest on the face of the patent, when compared with the original, that the suggestion of inadvertence and mistake in the specification was a mere pretence; or if not a pretence, the mistake was so obvious as to be instantly discernible on opening the letters-patent, and the right to have it corrected was abandoned and lost by unreasonable delay. The only mistake suggested is, that the claim was not as broad as it might have been. This mistake, if it was a mistake, was apparent upon the first inspection of the patent, and if any correction was desired, it should have been applied for immediately.

These afterthoughts, developed by the subsequent course of improvement, and intended, by an expansion of claims, to sweep into one net all the appliances necessary to monopolize a profitable manufacture, are obnoxious to grave animadversion.

Page 352

The pretence in this case that there was an inadvertence and oversight which had escaped the notice of the patentee for fifteen years is too bald for human credence. He simply appealed from the judgment of the office in 1860 to its judgment in 1876; from the commissioner and examiners of that date, to the commissioner and examiners of this: and upon a matter that was obvious on the first inspection of the patent. If a patentee who has no corrections to suggest in his specification except to make his claim broader and more comprehensive, uses due diligence in returning to the Patent Office, and says 'I omitted this,' or 'my solicitor did not understand that,' his application may be entertained, and, on a proper showing, correction may be made. But it must be remembered that the claim of a specific device or combination, and an omission to...

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220 practice notes
  • Henry J. Kaiser Company v. McLouth Steel Corp., Civ. A. No. 16900.
    • United States
    • United States District Courts. 6th Circuit. United States District Court (Western District Michigan)
    • July 6, 1966
    ...by the specification, which constitutes a dedication to the public. Edward Miller & Co. v. Bridgeport 257 F. Supp. 404 Brass Co., 104 U.S. 350, 352, 26 L.Ed. 783 First of all, it is doubtful whether the claim of vertical blowing would have been obvious to steelmakers in 1950 in view of the ......
  • Altoona Publix Theatres v. Americancorporation Wilmer Vincent Corporation v. Americancorporation, TRI-ERGON
    • United States
    • United States Supreme Court
    • March 4, 1935
    ...13, is such a part of the patentee's original conception as to entitle it to the benefit of the reissue statute. See Miller v. Brass Co., 104 U.S. 350, 355, 26 L.Ed. 783; Hoffheins v. Russell, 107 U.S. 132, 141, 1 S.Ct. 570, 27 L.Ed. 332; Gage v. Herring, 107 U.S. 640, 645, 2 S.Ct. 819, 27 ......
  • 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
    ...other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed." 104 U.S. 350, 352, 26 L.Ed. 783 (1881). Just a few years later, the Court repeated that sentiment in another reissue patent case: "[T]he claim actually ma......
  • 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
    ...held sufficient to justify a reissue even with slightly broadened claims." Monogram Mfg. Co. v. Glemby, supra, citing Miller v. Brass Co., 104 U.S. 350, 26 L.Ed. 783 and Topliff v. Topliff, 145 U.S. 156, 12 S.Ct. 825, 36 L.Ed. 658, R.S. § 4916. To the facts disclosed by the File Wrapper his......
  • Request a trial to view additional results
220 cases
  • Henry J. Kaiser Company v. McLouth Steel Corp., Civ. A. No. 16900.
    • United States
    • United States District Courts. 6th Circuit. United States District Court (Western District Michigan)
    • July 6, 1966
    ...by the specification, which constitutes a dedication to the public. Edward Miller & Co. v. Bridgeport 257 F. Supp. 404 Brass Co., 104 U.S. 350, 352, 26 L.Ed. 783 First of all, it is doubtful whether the claim of vertical blowing would have been obvious to steelmakers in 1950 in view of the ......
  • Altoona Publix Theatres v. Americancorporation Wilmer Vincent Corporation v. Americancorporation, TRI-ERGON
    • United States
    • United States Supreme Court
    • March 4, 1935
    ...13, is such a part of the patentee's original conception as to entitle it to the benefit of the reissue statute. See Miller v. Brass Co., 104 U.S. 350, 355, 26 L.Ed. 783; Hoffheins v. Russell, 107 U.S. 132, 141, 1 S.Ct. 570, 27 L.Ed. 332; Gage v. Herring, 107 U.S. 640, 645, 2 S.Ct. 819, 27 ......
  • 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
    ...other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed." 104 U.S. 350, 352, 26 L.Ed. 783 (1881). Just a few years later, the Court repeated that sentiment in another reissue patent case: "[T]he claim actually ma......
  • 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
    ...held sufficient to justify a reissue even with slightly broadened claims." Monogram Mfg. Co. v. Glemby, supra, citing Miller v. Brass Co., 104 U.S. 350, 26 L.Ed. 783 and Topliff v. Topliff, 145 U.S. 156, 12 S.Ct. 825, 36 L.Ed. 658, R.S. § 4916. To the facts disclosed by the File Wrapper his......
  • Request a trial to view additional results

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