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cident, or mistake" on its part, and that the error was solely that of the Circuit Court of Appeals for the Second Circuit. Indeed, in his affidavit annexed to the petition for the reissue, Mr. Coffin, after giving a history of the litigation concerning patent No. 495,443, says:
"Until the rendering of the said decisions of the Circuit Court of Appeals for the Second Circuit, in the suits against the Union Railway Company and against the Hoosick Railway Company, your petitioner, Thomson-Houston Electric Company, was satisfied that the subject-matters of letters patent Nos. 424.695 and 495,443 were distinct and separate; but, in order that the question of identity of the subject-matters of the claims of the two letters patent aforesaid should be determined upon final hearing after full proofs, your petitioner caused testimony to be taken, in a suit brought by it against the Jeffrey Manufacturing Company in the United States Circuit Court for the Southern District of Ohio, and brought the said cause on for final hearing, on pleadings and proofs, before his honor, Judge Thompson, who handed down an opinion dismissing the bill of complaint in said cause, and from the decree entered on said decision your petitioner appealed to the United States Circuit Court of Appeals for the Sixth Circuit."
He also says that:
"As matter of fact, in the Circuit Court of the United States for the District of Connecticut, in the suit of Thomson-Houston Electric Company v. Winchester Avenue Railroad Company et al., the defendants contended that the broadest form of the invention of Charles J. Van Depoele, patented in said letters patent No. 495,443, was inseparably involved in prior letters patent to the same inventor, among them being the letters patent No. 424,695 aforesaid."
The president of the complainant company thus admits that the particular infirmity of the later patent, on which it was finally adjudged invalid, was the subject of contention in the very first case of alleged infringement instituted by the complainant, and that after adjudication of invalidity by the highest court of one circuit it prepared another case in another circuit and prosecuted it to the highest court of that circuit. He says that the object of the latter prosecution was to get an adjudication on a final hearing and on an appeal from a final decree. If that were the sole object, why did not the complainant take an appeal from the sweeping final decree dismissing the bill in the Mahar Case, which must have been ready for appeal long before the Jeffrey Manufacturing Company's Case? I can conceive of no reason, except that an appeal in the Mahar Case (fourteenth decision) would have gone to the same high court that had already, on appeals from interlocutory orders granting preliminary injunctions, twice adjudged (ninth and thirteenth decisions) certain claims of its patent to be void, while an appeal in the Jeffrey Manufacturing Company's Case (fifteenth decision) would have gone to a court that had affirmed (eighth decision) an interlocutory order for a preliminary injunction.
Furthermore, Mr. Coffin, in his affidavit above referred to, after mentioning certain interference proceedings in the Patent Office while the application for patent No. 495,443 was pending there, says:
"During the pendency of the several interferences herein before cited, and in order to meet the requirements of the Patent Office in the several interference proceedings, and in order to protect the rights of the said Charles J. Van Depoele in the inventions declared by the Patent Office (at the request of persons other than Charles J. Van Depoele, or those acting for him or on his behalf) to be at issue in the said several interferences, the said Charles J. Van Depoele,
or those acting for him or on his behalf, were required to amend the specification and claims of the application, serial No. 230,649 (which resulted in the grant of the letters patent No. 495,443), to the end that the claims of the said application, serial No. 230,649, should not only be distinct and separate from the claims of the subsidiary application, serial No. 288,759 (which resulted in the grant of the letters patent No. 424,695), but should also cover and include the issues involved in the several interferences; that, at the conclusion of the interference proceedings in which the divisional application, serial No. 288,759, was involved, and before the grant of the letters patent No. 424,695, the solicitor for Charles J. Van Depoele instructed the Patent Office to erase from the specification of the patent application No. 230,649 certain allowed claims which formed part of the divisional application, but that the Patent Office neglected to do so."
What claims were thus directed to be erased Mr. Coffin does not say. They may have been some or all of the claims subsequently held to have been covered by patent No. 424,695. The patentee knew, or was bound to know, within a short time after receiving patent No. 495,443, that the claims which his solicitor had instructed the Patent Office to erase, because they formed a part of patent No. 424,695, had been retained in patent No. 495,443. He therefore knew, or was bound to know, that a question existed as to whether a portion of his claims were not void for double patenting. If the claims which the patentee's solicitor instructed the Patent Office to erase, and which that office for some unexplained reason failed to erase, were wholly or in part the claims that were subsequently adjudicated to be invalid because of double patenting, the application for a reissue, after years of struggle in the courts to save what had thus been directed to be erased, certainly should have been refused. The failure of the proofs now before the court to show what claims of patent No. 495,443 were ordered to be erased does not help the complainant. If they were not the claims subsequently held to be void, the complainant should have shown that fact. As the proofs now stand, they seem to show that the patentee had good reason to doubt the validity of his patent as to some of its claims from the date of its issue, and the affidavit of Mr. Coffin shows that he, the complainant's president, has had knowledge of the facts on which that doubt must have existed. With knowledge of these facts, the complainant has continued its litigation. In Wollensak v. Sargent, 151 U. S. 221, 14 Sup. Ct. 291, 38 L. Ed. 137, it is said that a patentee cannot retain his right to correct a mistake in his patent while he speculates on the chances of including omitted claims in a reissue of another patent. With equal propriety it may be said, I think, that a patentee cannot retain his right to a reissue of a particular patent while he speculates on the chances of saving that patent in its original form by long and costly suits in sundry courts. This was the view taken by the Circuit Court of Appeals for the Sixth Circuit in the Milloy Electric Company's Case; and, although the complainant's counsel contend that the decision in that case is erroneous, it commends itself to my judgment, and I think I ought to follow it.
The bill of complaint will be dismissed, with costs.
DE LONG HOOK & EYE CO. v. FRANCIS HOOK & EYE & FASTENER CO. (Circuit Court, W. D. New York. October 5, 1906.)
PATENTS-INFRINGEMENT-HOOK AND EYE PACKAGE.
The Richardson patent, No. 676,824, for a hook and eye package, in view of the limitation placed thereon by the Patent Office and acquiesced in by the patentee, is of narrow scope, and restricted to the precise method shown of securing to a card carrier, in combination with a row of hooks and eyes secured to said card by two rows of thread stitching, a series of invisible eyes by one of said rows of thread stitching; the operation of securing the same being one with that of securing the hooks and loop eyes. As so construed, held not infringed.1
In Equity. On final hearing.
William C. Strawbridge, for complainant.
HAZEL, District Judge. The bill charges infringement of letters patent No. 676,824, dated June 18, 1901, issued to Thomas De Q. Richardson, for hook and eye package, which patent is now owned by complainant. The patent relates to mounting invisible eyes on a carrier card associated with hooks and what are known as loop eyes. The specification and claims describe two rows of hooks and eyes threadstitched to a card carrier and so-called invisible eyes also sewed or stitched thereto; the latter being secured to the card by one of the rows of stitching by which the hooks and loop eyes are secured. It is substantially stated in the specification that the manner of attaching the hooks and eyes and invisible eyes to the carrier is accomplished by "one and the same sewing operation." The stitching operation by which the hooks and loop eyes are secured to the card carrier is also apparently effective to secure thereto the invisible eyes. The principal object of the patentee was to supply to the trade a card bearing not only the hooks and loop eyes, but in addition thereto the invisible eyes, without enlargement of the card or the necessity of material alteration in the machines used in mounting the hooks and loop eyes. The patentee says:
"I prefer to secure the hooks and eyes by thread to the card by passing thread through the card and through the thread-engaging bends of the hooks and eyes. It is manifest, however, that the engagement of the thread with the hooks or eyes by passing directly through the thread-engaging bends of the same is not essential."
It is further stated in the specification that, as a result of the specific arrangement of mounting the articles upon the card
"The operation of securing the invisible eyes upon the face of the card is one with the operation of securing the ordinary hooks and loop eyes upon the card, whereby a minimum of time and labor in the formation of the package is secured."
"Any preferred and suitable form of stitches may be employed to secure the thread-engaging bends of the sets of hooks and loop eyes and the thread1 See note at end of case.
engaging bends of the invisible eyes to the card, and the operation may, of course, be performed by hand or by machine"
It will be noted, despite the declaration in the specification, that threading the bends of the hooks and eyes was not essential; that the principal achievement was the specific arrangement by which one and the same stitching operation secured the hooks and loop eyes and the invisible eyes upon a card. No other or different attaching means are suggested in the patent. Claim 1, which is involved, reads as follows: "(1) A commercial package of hooks and eyes comprising a carrier card and a row of hooks and loop eyes, two rows of thread stitching which secures said hooks and eyes to the card, and a series of invisible eyes secured to the card by one of said rows of thread stitching, substantially as set forth."
The defenses are want of novelty and noninfringement. There is considerable question as to the validity of the patent, but whatever doubt thereof existed in the mind of the commissioner of patents has been resolved in favor of the patentee. It is not thought necessary to disturb this conclusion, as this court likewise considers the novelty of the patent in grave doubt. Notwithstanding the broad language of the specification, the Richardson patent is exceedingly limited and concededly belongs to a narrow art. The claims contained in the original application for a patent covered broadly the method of stitching invisible eyes upon the card in connection with two rows of hooks and loop eyes. The Patent Office rejected the broad claims, on the ground that, in view of the prior art, there was no novelty in the claimed invention, citing, as anticipatory, the patent to Kirkham, No. 7,526, of July 30, 1850. Upon appeal the patent in suit was granted; claim 1 being limited to a "series of invisible eyes secured to the card by one of the rows of thread stitching, substantially as set forth." The patentee acquiesced in such limitation and amended the claim to conform thereto. Therefore the scope of claim 1 cannot be enlarged, or even given a construction of such liberality as to include the defendant's method of attachment, as shown by the proofs. The file wrapper in evidence shows that the patent would not have been granted had the patentee persisted on claims broader than those finally accepted by him. specification nowhere suggests the defendant's method of attachment, and in these circumstances the rule announced in Haines v. McLaughlin, 135 U. S. 584, 10 Sup. Ct. 876, 34 L. Ed. 290, is thought to apply. It is there stated:
"A claim limited by the Patent Office and acquiesced in by the patentee should not be enlarged by construction beyond the fair interpretation of its terms."
I am of the opinion that the claim must be limited to the precise method of securing to a card carrier, in combination with a row of hooks and eyes, secured to said card by two rows of thread stitching, a series of invisible eyes by one of said rows of thread stitching; the operation of securing the same being one with that of securing the hooks and loop eyes.
Does the defendant infringe the patent in suit? On first inspection defendant's arrangement of the invisible eyes upon its card carrier impresses one as being a clever imitation of complainant's method of at
tachment. The proofs, however, indicate a different process of manufacture. By complainant's process the hooks and eyes, together with the invisible eyes, are preferably stitched upon the card by a common thread which passes through one of the engaging bends of the invisible eye and the engaging bend of the adjacent loop eye. In defendant's operation the hooks and loop eyes are first stitched upon the card in the manner shown in the patent to Kirkham, and afterwards, and by a second operation, the invisible eyes are attached by forcing a bend thereof under the thread loops and between the bends of the loop eyes. In other words, in the defendant's arrangement, the invisible eyes are not stitched underneath the thread stitching by which the hooks and eyes upon complainant's cards are secured, but they are inserted between the loop of thread which serves to retain in place the row of loop eyes.
Complainant contends that, even if the claim is restricted in its scope to the specific method of attachment described in the specification, the defendant nevertheless infringes, inasmuch as it secures the invisible eyes upon the card by a process of stitching or by inserting or pressing them under the stitching between the arms of the loop eyes at the same time that the hooks and loop eyes are stitched to the card. This contention, however, is not sustained by the evidence. If I were convinced that defendant secured or attached the invisible eyes to the cards by the identical operation that secured the loop eyes thereto, I would not hesitate to hold such method an evasion of the complainant's specific method of mounting its invisible eyes. Upon this point, the witness Francis, for the complainant, substantially testifies that the invisible eyes are "pushed under the threads where they are held by the two arms of the loop eye in an upright position." The witness James, an employé of defendant, when asked regarding its manner of attaching the invisible eyes upon the cards, testified that the defendant had been "sewing them that way for at least two or three years, putting them on, attaching them that way." No further evidence was given on the subject, and none is found in the record except the Francis patent, No. 716,698, dated December 3, 1902. There is some indefiniteness regarding defendant's method of attachment of the invisible eyes, but it is not established by the proofs that they were sewed or secured to the card carrier by the same operation which secured the hooks and loop eyes thereto. On the contrary, the evidence indicates that the invisible eyes were not attached until after the hooks and loop eyes were stitched to the card.
The defendant contends that the cards manufactured by it are covered by the patent to Francis, which shows that the invisible eyes are forced between the two loops of the loop eyes and under the loop of stitching holding said eyes, forming a sort of spring-lock arrangement. Whether this is the method practiced by the defendant is not absolutely clear. Certainly the practicability of a so-called spring-lock engagement of the loop eye would seem to be involved in doubt, but this suggestion, in view of the testimony showing that defendant pushes or presses the invisible eye under the stitching between the arms of the loop eyes after the hooks and loop eyes have been stitched to the