Toledo Computing Scale Co. v. Moneyweight Scale Co.

• Decision Date: 06 April 1910
• Docket Number: 27,617.
• Citation: 178 F. 557
• Parties: TOLEDO COMPUTING SCALE CO. v. MONEYWEIGHT SCALE CO.
• Court: U.S. District Court — Northern District of Illinois

178 F. 557

TOLEDO COMPUTING SCALE CO. v. MONEYWEIGHT SCALE CO.

No. 27,617.

United States Circuit Court, N.D. Illinois, Eastern Division.

April 6, 1910

Rector Hibben & Davis, for complainant.

Charles F. Morse and Staley & Bowman, for defendant.

SANBORN District Judge.

Suit for infringement of the De Vilbiss patent No. 12,137, for a computing scale, called the 'Toledo scale,' reissued July 28, 1903, application filed November 16, 1901. The original is No. 649,915, dated May 22, 1900. The defenses are invalidity of reissue, want of novelty, and no infringement. The reissue is claimed invalid because alleged to be for a different subject-matter than the original, no inadvertence or mistake other than a possible error of judgment in accepting the original claims, and that the original patent record expressly concedes the invalidity of the subject-matter. More in detail, it is urged in defense that the only mistake was an error of judgment in acquiescing in the various rulings of the Patent Office as to divisions and questions of aggregation, and in purposely conceding all claims relating to computing scales in order to obtain a patent on a form of disk bearing. Defendant's machine is referred to here as the 'Moneyweight' scale, and plaintiff's as the 'Toledo.'

Can the reissue be sustained with the rule of liberal construction applied, consistently with the decisions of the federal courts? Topliff v. Topliff, 145 U.S. 156, 12 Sup.Ct 825, 36 L.Ed. 658; Parker & Whipple Co. v. Yale Clock Co., 123 U.S. 87, 8 Sup.Ct. 38, 31 L.Ed. 100; McCormick v. Aultman, 169 U.S. 606, 18 Sup.Ct. 443 42 L.Ed. 875; Mahn v. Harwood, 112 U.S. 354, 5 Sup.Ct. 174, 6 Sup.Ct. 451, 28 L.Ed. 665; Corbin, etc Co. v. Eagle Lock Co., 150 U.S. 38, 14 Sup.Ct. 28, 37 L.Ed. 989; Dobson v. Lees, 137 U.S. 258, 11 Sup.Ct. 71, 34 L.Ed. 652; Miller v. Brass Co., 104 U.S. 350, 26 L.Ed. 783; Franklin Co. v. Illinois, 138 F. 58, 70 C.C.A. 484 (in this circuit). While the statute does not limit the time within which reissue must be applied for, yet it is settled that the patentee must act promptly upon discovery of the error (Ives v. Sargent, 119 U.S. 652, 7 Sup.Ct. 436, 30 L.Ed. 544), especially after public use of the device covered by the reissue claims, or after such an act as would have been infringement if the reissue claims had been in the original grant.

In this case there was no delay after the patentee discovered the alleged mistakes, nor any public use or infringement prior to reissue. The question is thus narrowed to an inquiry whether there was such inadvertence or mistake as to authorize a reissue. Certain mistakes, even though present, are not enough. Examples of these are mistakes creating public rights acted on, or arousing an estoppel in favor of another patentee, as in Dobson v. Lees, and mistakes attended with negligence or laches. The first two examples are not found in this record, because there was no public use, nor any estoppel, nor delay; but it is insisted that the patentee abandoned his invention by canceling all his original claims relating to computing scales.

As to the finality of the decision of the Commissioner finding inadvertence or mistake, the earlier rule was that the granting of a reissue closed all inquiry into the existence of inadvertence, accident, or mistake, unless it appeared that the Commissioner had no jurisdiction, having exceeded his authority. Seymour v. Osborne, 11 Wall. 516, 20 L.Ed. 33. But this has been modified, in harmony with that applying to other executive action. The rule now is that the question whether the whole record shows inadvertence or mistake is one of law, which will be reviewed by the courts. While inadvertence and diligence are usually mixed questions of fact and law, yet as all the facts are generally of record, without dispute or conflict, the proper deduction is a conclusion of law. This agrees with the almost universal rule governing executive decisions, which are, except in cases of deportation of aliens, reviewable for mistake of law, but not of fact, or mixed law and fact. United States v. California, etc., Co., 148 U.S. 31, 43, 13 Sup.Ct. 458, 37 L.Ed. 360. In Huber v. N. O. Nelson Mfg. Co., 148 U.S. 270, 13 Sup.Ct. 603, 37 L.Ed. 447, it was held, approving the rule adopted by the Circuit Court, that, where all the evidence presented to the Patent Office by the patentee applying for reissue is offered in an infringement suit, the court could review the finding at least to the extent of determining whether, as a matter of law, what was alleged to be a mistake was such as warranted a reissue. Franklin v. Illinois, supra; Featherstone v. Bidwell, 57 F. 631, 6 C.C.A. 487. The matter was thus 'manifest from the record,' according to the rule laid down in Topliff v. Topliff.

Mistake or inadvertence making a patent inoperative or invalid may be that of the patentee or his solicitor, either in preparing the specification or claims. If the solicitor fails to understand and properly describe or claim the real invention, by making claims so broad as to be anticipated, or so narrow as to be inoperative, this is such mistake as to authorize a reissue, if authorized on other grounds. Topliff v. Topliff. This kind of mistake is the one particularly claimed by complainant, although the specification is also alleged to be imperfect.

The computing scale in question is clearly shown in the drawings, which appear later, and are the same in the original and reissue applications, except as to certain extra features abandoned. It is not complicated, though multifarious, including some 46 elements, all found, in some form, in the prior art. It is used chiefly in grocery stores, and has had a very large sale. Some 3,000 were marketed even before the reissue was applied for. When it is desired simply to ascertain the cost of an article sold at a certain price by the pound, it is placed on the scale, and the index hand swings to the right and stops at a place on the price computing table at the top of the machine indicating the pounds and fraction of a pound which the article weighs.

The clerk then looks down the right-hand side of the index hand until his eye rests upon the price per pound, when he sees the total price in figures immediately adjoining and slightly below the point where the pound price appears. If a dollar's worth of sugar at six cents a pound is desired, he puts enough sugar on the scale to make the index swing to the dollar mark indicated opposite the price per pound. And if a certain weight or valued quantity is wanted in a jar or basket, he places the receptacle on the scale and moves the tare weight to the right until the scale balances, then going through precisely the same operation as before. The operations are rapid and accurate. What the adding machine does in a bank the computing scale does in a grocery.

The Toledo reissue does not fall within the express terms of the statute relating to reissues, being section 4916, Rev. St. (U.S. Comp. St. 1901, p. 3393), because the claims were broadened. It is there provided that whenever a patent is inoperative or invalid by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had the right to claim as new, if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, a new patent may be issued for the balance of the term, on surrender of the original. Now the main difficulty with the original patent was in taking claims much too narrow; not in claiming more than the patentee was entitled to. So that the statute does not expressly cover the case. The general power of reissue, however, does not depend on statute, but on the general spirit and purpose of the Constitution, and the laws relating to patents. This was held by the Supreme Court in 1831, in an opinion by Chief Justice Marshall, in the case of Grant v. Raymond, 6 Pet. 218, 8 L.Ed. 376. And it is thoroughly established, since the passage of section 4916 in 1836, that a reissue may broaden a claim in a proper case, as well as narrow it. Topliff v. Topliff. For a time patents reissued with broadened claims were quite obnoxious to the courts, on account of the fraud and injustice connected with the reissue proceedings. The later tendency, however, is much more favorable. The law encourages honest reissues, condemning only those which are fraudulent, unjust, or negligent. Topliff v. Topliff; Eames v. Andrews, 122 U.S. 40, 7 Sup.Ct. 1073, 30 L.Ed. 1046; Peoria v. Cleveland, 58 F. 227, 7 C.C.A. 197; Houghton v. Whitin, 153 F. 740, 83 C.C.A. 84; Mathews v. Flower (C.C.) 25 F. 830, Brown, Circuit Judge. The question, therefore, is whether the Toledo reissue was fair and just, giving to the patentee the invention, and only the invention, which he actually made, but failed through mistake to obtain.

Mistake in the specification is claimed; but while it is crude and inartistic, lacking clearness and coherence, yet it is possible, by aid of the drawings, to understand how the machine works. Whatever were its defects and errors, they were not, as I think, the proximate cause of the inoperation and practical uselessness of the original patent. The claims, on the other hand, are of a character far different.

Twenty-nine claims, in all, were drawn by the solicitors for the patentee in the original proceedings, 11 of them in the application. Inasmuch as the prior art covered substantially all the elements of the combination which constituted the patentee's sole claim to invention, it was the business of the solicitors to claim the combination as a unitary structure, and not the specific things going to make it up, as well as to avoid broadening the individual...