PEORIA TARGET CO. v. CLEVELAND TARGET CO. et al., 58 F. 227

TAFT, Circuit Judge, after stating tbe facts as above, delivered tbe opinion of tbe court. Tbe reissue of tbe patent to tbe administrator of Stock is based on tbe ground that Stock intended to claim as tbe chief feature of his patent a pivoted carrier, without regard to any particular releasing device, so arranged that tbe rotary motion .of the carrier, independent of tbe rotary motion of tbe swinging arm, would give to the target an additional axial rotation, which would prevent tbe target from “wobbling” in tbe air, and give it a sailing-movement, like that of a bird.

Tbe first question is, therefore, what must have appeared to tbe commissioner before be bad authority to enlarge the claims in a reissue so as to include in them this feature? Tbe mechanical parts of tbe device, as shown in tbe drawings, were not changed in tbe reissue. Tbe change consisted in explanations in tbe specifications of tbe advantages of this pivotal connection between tbe carrier and tbe swinging arm, by which an independent, rotary motion was imparted to tbe target.

Tbe reissued patent also introduced new claims, embracing, in broad terms, such pivotal connection between tbe target carrier and tbe throwing arm.

Section 4916 of tbe Revised Statutes provides: “Whenever any patent is inoperative or invalid by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own in-volition or discovery more than ho had a right to claim as new, if the error has alisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the commissioner shall, on the surrender of such patent and the payment of the duty required by law, cause a new patent for the same invention, and in accordance with the corrected specification, to be issued to the patentee, or, in case of his death or an assignment of the whole or any undivided part of the original patent, then to his executors, administrators, or assigns, for the unexpired part of the term of the original patent. * * *'> The supreme court of the United States has held that while this section, literally construed, would only authorize reissues to correct specifications or claims defective or inoperative because too broad, it would construe the

section liberally to give the commissioner of patents power to grant a reissue to expand claims which had been made too narrow by reason of accident, inadvertence, or mistake, without fraud. But it has been held in a number of cases that the commissioner is without power to grant a reissue unless it shall clearly appear that Hie patent, as originally issued, was defective and inoperative for the invention intended; that this defect and inoperativeness arose through inadvertence and mistake; and, finally, that the patentee had not, by lapse of time and laches, abandoned his right to have the correction made.

With respect to the proof of inadvertence, accident, or mistake, the action of the commissioner is conclusive, if there is any evidence before Mm tending to show such accident, inadvertence, and mistake as will, in law, warrant a reissue. With respect to whether the original patent is inoperative and defective, the court has always reserved the right to review the action of the commissioner.

If it shall appear from an examination of the new and old patents that the old patent was not defective or inoperative, but was for a complete invention, and that the reissue was taken out to secure another and different invention lurking in the mechanical arrangement of parts, the supreme court has aiwavs held the reissue void. Parker & Whipple Co. v. Yale Clock Co., 123 U. S. 87, 8 Sup. Ct. Rep. 38.

Again, if an. examination of the patent-office record discloses that there was no evidence before the commissioner of accident, inadvertence, or mistake, such as to warrant; him in reissuing the patent, or that, there was record evidence, of a conclusive character, showing that there could have been no accident, inadvertence, or mistake, the supreme court has not hesitated to hold a. reissue void. This is manifest; from an examination of the decisions of that court. In the case of Huber v. Manufacturing Co., —the last case in which the supreme court has had occasion to consider the question of reissues,—148 U.

S. 270, 13 Sup. Ct. Rep. 603, the supreme court expressly approved the language of Judge Thayer in the court below, to be found in Huber v. Manufacturing Co., 38 Fed. Rep. 836, where, considering the question of his power to review the action of the commissioner in granting a reissue, he said: “All of the evidence that was before the commissioner, tending to- show inadvertence and mistake, (such as the affidavit of the inventor and his solicitor, and other documents) was offered by the complainant in the present case, and was supplemented by some additional testimony.

Under such circumstances, I understand the law to be that the court may review the finding of the commissioner on the point that the original patent was inoperative by reason of inadvertence or mistake; at least, to the extent of determining whether, as a matter of law, what was described and alleged to bo a mistake is such a mistake as will warrant a reissue.” Justice Bradley, in Mahn v. Harwood, 112 U. S. 354-362, 5 Sup. Ct. Rep. 174, and 6 Sup. Ct.

Rep. 451, said that— “Whenever it is manifest from the patent itself, comparecí with the original patent and cognate documents of record, or from the facts developed in the case, that the commissioner must .have disregarded the rules of law by which his authority to grant a reissue in such eases is governed, the patent will be considered as void to the extent of such illegality.

It is then a question of law, not a question of fact” The fact which the commissioner of patents must have found, and which there mnst have been some evidence before him tending to show, was that when Stock filed his first specifications, knowing the additional advantage that would be obtained from the pivotal connection of the carrier with the swinging arm, because of the additional axial rotation of the target caused thereby, he intended to claim broadly such pivotal connection.

If all that he had in mind as to the .good result of the pivotal connection was the automatic releasing of the target at a particular time, and all that he intended to claim was the use of that pivotal joint between the carrier and the swinging arm, in connection with the other parts of the releasing device, because it was necessary to make operative his releasing device, then he was not entitled to a reissue to broaden his claims so as to 'include any pivotal connection between the carrier and the swinging arm, uncombined with his releasing device.

Therefore, the question now to he determined is whether there was any evidence before the commissioner of patents which justified him in holding that Stock, at the time he filed his original application, intended .to claim, broadly, the device of a pivotal connection between the carrier and the swinging arm, without regard to the releasing device, which should give the target an additional axial rotation. • In the first place, the original patent shows no defect or inopera-tiveness on its face. The drawings, the specifications, and the claims show nothing but an improved device for releasing the target.

The pivoted connection of the carrier with the swinging arm manifestly plays an important

part in the releasing device, and there is not the slightest suggestion in the specifications or claims ihat it has any other function than that. It admits of serious doubt whether we ought not to hold that the reissue is so plainly for an invention different from that described and covered in the orig'nal that the reissue is void. Parker & Whipple Co. v. Yale Clock Co., 123 U. S. 87, 8 Sup. Ct. Rep. 38. It might' be forcibly argued that the first patent was for a releasing device and the reissue ivas for a throwing device.

The argument would be supported by the omission in the reissue of the word “gradually,” found in the old specification, where the movement of the carrier on the pivot is described. A gradual movement of the carrier would seem to be necessary to make the releasing device in Figs. 6 and 7 of the drawings work at all, whereas the independent pivotal movement of the carrier must be rapid to give any perceptible addition to the axial rotation of the target.

But we' prefer to put our conclusion in this case on the absence of any evidence before the commissioner, upon which he could base; a finding of an accident, inadvertence, or mistake in the required respects. It will be noted from what we have said that 'the original patent suggested nothing of the mistake claimed, on its face. What other evidence was there? There was first the oath of the administrator, who spoke on information and belief, and with no personal knowledge on the subject; and them there was the oath of Kimball, who was present with Stock in New York.

Neither states that Stock intended to claim what was claimed in the reissue. This was indispensable. The fact that Stock was sick when he made his application, and the fact that he was not satisfied with the patent when issued, do not show that he intended to describe or claim that which was contained in the new specifications and claims, nor is there anything in the original application to show it. The evidence before the commissioner, as a matter of law, therefore, was insufficient to show the mistake or accident upon which, alone, he was entitled to reissue the patent.

If Stock had intended to claim what is now contained in the reissue, the failure of the first patent to include it must have been apparent to him, on inspection, and it is inconceivable that he should have delayed action in procuring a reissue. It is attempted to explain his delay by his illness, hut it appears that after he received the original patent he made three different applications for other patents, with respect to which he consulted Munn & Co., in New York, and Taylor E. Brown, his patent solicitor, in Chicago.

When he applied for the patent, and when he received it, there were others pecuniarily interested with him in it, whose interest would have prompted an immediate application for reissue, if the mistake was so apparent to him, and so easy of explanation. There was evidence adduced to the court below that Stock was disappointed in ins patent, but there is an almost total absence of evidence tending to show that his disappointment arose from a failure to claim, broadly, a pivoted carrier, with a resulting addition to the target’s axial rotation.

In his examination in chief in ike court below, Kimball, the president of the Peoria Target Company, who went with Stock to New York for the purpose of obtaining the original patent, and who was interested in the patent when Stock was making his application for it, testifies that, after Stock received the patent from the patent office, he “heard him make a great fuss about it; seemed to be disgusted. He said the patent didn’t amount to anything. I think I heard him say it was not worth going to New York after, or words to that effect. He talked with Mr. Jack, Mr. Walker, and myself on two or three occasions.

He made a good many complaints about his patent. * * * Question. I understand, then, that what Mr. Stock thought he was achieving by his machine was to throw targets without tongues? Answer. I guess that is about it. Q. Did he have any other effects produced by his machine? A. Riot that I know of. Q. Did you ever discuss with him the question in what respect, or in what particular, the original patent was defective? A.

If I did, I don’t remember what was said at the time.” Frank Jack, the secretary of the Peoria Target Company, stated that Stock returned from 3STew York in July, 1883, and said he had a scheme to throw targets without a tongue; that he delayed until December because there was no tongueless target on the market; that he saw Stock after he received the patent; that he expressed himself forcibly, and somewhat profanely, about the way the claims read; said it was not what he wanted at all; that there were other ways of releasing the target, which others could use, and which Munn & Co. should have prevented. ' Damm, witness for defendants, testified that he heard Stock make complaints about his patent after he returned home, and said that he ought to have a patent that would cover everything that would drop below'its plane.

He did hot think the patent sufficiently broad to cover all manner of dropping devices.

West, the solicitor, in the employ of Munn & Co., who prepared Stock’s original application, called for the defendant, testifies emphatically that the principal feature of the patent, as explained to him, was the dropping movement of the clip for discharging the target at the proper interval of time, and Stock did not disclose to him that the turning of the clip produced any rotary movement of the target itself; that Stock seemed well, and looked well; that he was clear in his mind, and described to him clearly his invention; that he saw Stock twice thereafter with reference to other patents.

West’s credibility is attacked because he accepted $50 for services rendered by him in making searches of Munn & Co.’s record, and a report to defendant’s counsel, with reference to facts important in connection with his own evidence. While it might have shown more delicacy on^ his part to have declined the employment, under the circumstances, we do not think it impeaches his credibility. The fact may make him a partisan witness, but nothing more. In rebuttal, Kimball, the president of the Peoria Target Company, took the stand, and then, for the first time, testified that, when he heard.

Stock describe his invention to West, Stock explained the necessity for the target revolving in the air, in order to fly; that he distinctly remembers hearing him say that, unless the target spins fast enough, it will not go fast enough; and that he did not lay any great stress on the dropping motion of his trap. It also appears from the record evidence of the patent office that in one of the patents, application for which was made by Brown on behalf of Stock, he claimed the advantage derivable from a pivotal carrier in adding axial rotation to the target.

The application for this patent was made as late as October 13, 1884, and this application was made after Brown, as the patent solicitor for Stock, had seen and examined the specifications and patent issued to Marqua in May, 1884, in which a pivoted carrier was shown, and the advantage of an additional axial rotation was dwelt upon in the specifications, and the pivoted feature was claimed in the patent claims, and allowed by the patent office. The claim made in Stock’s application of October 13,1884, was rejected by the patent office because it was anticipated by M'arqua’s patent, issued in July.

This rejection was acquiesced in by Stock’s administrator on the application of October 13, 1884, and a patent thereafter accepted, which did not include it. The petition lor the reissue in the original patent 295,302 was not made until March 27, 1885, after it had become certain that Marqua’s patent stood in the way of any patent for a pivoted carrier which should not antedate his. Taylor E.

Brown, one of the solicitors in the present case, testified that Stock called upon him, and consulted him about obtaining a reissue of the patent of March 18, 1884; that he said to him (Brown) that the letters patent did not express his invention, and thought he could have it corrected by simply returning it to the commissioner with a request to that effect; that, with some difficulty, it was explained to him that in order to correct his patent a reissue must be had, and to accomplish that a new application must be made out and filed.

The next day Stock left for home, without deciding what he would do about a reissue, and said he would write about the matter. In the mean time, Brown examined the original letters patent, and came to the conclusion that he had sufficient ground for the application for -a reissue. Brown recollects that he saw the Marqua patent of July 15, 1884, in the Official Gazette, about that time, and it seemed to him it would interfere with the Stock patent. If it were true that Stock had intended to make the claims which were contained in the reissue, why did not Brown say so in his evidence?

His silence upon that point is the strongest evidence to this court that it was not until after he himself had examined Stock’s original patent, and had seen the patent issued to Marqua, that he discovered that in the original patent was a device upon which Stock might have made the claim which appears in ihe reissued patent; that is,, that Stock might have made the claim, if, in fact, he intended to make the claim, and had realized the value of a pivotal carrier in its effect upon the axial rotation of the target.

Brown says that he advised him (Stock) that he would have to make an application for a reissue in order to correct the patent and secure the claims, and yet Brown himself made an application for Stock on another- patent, in which he set up this claim with reference to a pivoted carrier, in October, 1884, and thereafter, as solicitor for the administrator, acquiesced in its rejection. Learned counsel advance the theory that Brown made a mistake of law in this, hut there is no evidence to support the theory. Brown does not say he made any such mistake.

Brown’s advice to Stock that his objections io the original patent could be cured by reissue, only, and Ms subsequent conduct in including the broad claim for a pivoted carrier in an application for another patent, can only be reconciled on tbe bypotbesis, wbicb is sustained by everything else in tbe case, that Stock’s objections to bis original patent were based on some other ground than that it tailed to claim, broadly, tbe pivoted carrier.

Except an indefinite statement of Kimball, president of complainant, that Stock told West that it was important to 'have tbe target spin in tbe air,, there is nothing in the case tending to show that Stock intended to claim a pivoted carrier, broadly, as in the reissue. Kim-ball’s statement is weakened by tbe fact that though be made an affidavit for tbe reissue, and testified in chief, be said nothing of wba.t Stock told West until rebuttal, and this, to meet West’s evidence.

On tbe other band, everything in the case tends, convincingly, to establish the fact to be that the advantage of the pivotal connection of the carrier, in giving the target additional axial rotation, was an afterthought, not in Stock’s mind at the time he made his original application, and acquired months after the patent was issued, after consulting with his solicitor, and after learning of Marqua’s patent.

We fully agree with the court below that the evidence shows that the reissue to Stock’s administrator, with its new claims, plainly copied from Marqua’s claims, was applied for and obtained for the purpose of “overreaching” Marqua’s patent, and without any just ground therefor.' We are therefore of opinion that, as there was no evidence before the commissioner tending to show the inadvertence, mistake, or accident required by the statute, which would warrant the reissue in the form in which the commissioner issued it, and as the additional evidence adduced only confirms us in the opinion that no such inadvertence, accident, or mistake actually existed, the new and additional claims in the reissued patent are void.

Our conclusion upon the evidence makes it unnecessary for us to consider the objection made to the validity of the reissue, based on the ground that by the acquiescence of Stock’s administrator in the rejection of the broad claim for a pivoted carrier, in the application for a patent filed October 13,1884, he was estopped from subsequently making the same claim in an application for a reissue of the patent applied for December 23, 1883. 2. The second question is whether defendant’s device is an infringement of the first claim of complainant’s original and reissued patent. The first claim is: “

(1) Tbe combination with tbe throwing arm of a target-throwing device of a clip for holding the target, arranged to automatically drop below the upper surface of the throwing arm for releasing the target, substantially as described.” The various devices shown in Fig. 2, Fig. 3, Fig. 4, Fig. 5, Fig. 6, and Fig. 7 of the original and reissued Stock patent leave no doubt that the one thing which was present in every one of the devices was the holding of the target by a piece rising above and at right angles to the plane of the throwing arm, in front of the outer edge or rim of the saucer-shaped target,.thereby holding the target, and releasing it when it dropped automatically below the plane, and away from in front of the rim.

In Fig. 2 the automatic dropping of the piece is accomplished by the centrifugal force of the carrier or swinging arm in overcoming the resistance of a yielding spring. In Fig. 3 the target is held in a slightly different way, but the operation is much the same. The dropping of the plate that holds the target drops the burton ont of the way of the target at the end of the sweep of (he swinging arm. Fig. 4 operates much in the same way. In each case the piece which holds the target drops below its shoulder by reason of the action of the centrifugal force on the yielding power of the spring.

In Fig-. 5 the button drops into a slot as it turns with the movement of the swinging arm. In Fig. 6 there is no sx>ring, but the target is held to The throwing arm, A, by the block of rubber, B, held to the bent plate, O, and hinged to the plate, P, which is pivoted upon the upper side of the arm, A. To the under side of the arm, A, is secured the slotted plate, q, the slot of which concides with the slot, d, ma.de in the arm, A.

The edge of the plate, q, is rounded, and projects beyond the sides and end of the arm, A, as shown at q’, and the under side of the plate, o, is formed or provided with the toe, o’, which, as the throwing arm swings about, moves the plate, q, until it reaches the; slot, when working upon the hinge, it falls into the slot carrying the bent plate, o, and the rubber, b, below the plane, and thus releases the target. Fig. 7 is substantially the same device.

In the Hebbard carrier, the target is held in the carrier by two fingers, one of which, is pronged, and the other of which is kept pressed against the side of the target by the tension of a spring. The holding force of the spring-head finger is overcome by the centrifugal force generated by the swinging of the carrier and that of the throwing arm, and the target is released from between the fingers. Devices 1, 2, 3, and 4 of the Stock patent, and the defendant’s device, do resemble each other 'in this, namely, that the centrifugal force overcomes the retaining force of a spring to release the target.

But the claim in the Stock patent is limited to a device by which there shall be a positive release of the target, by a dropping away of the piece which holds it, and not by the gradual overcoming of a spring directly applied to the side of the target. In several of the devices, the dropping of the holding piece is secured without the aid of a spring. The one feature that is common to the Stock devices is the dropping of the piece out of the way of the target. The claim is for this, and not for the overcoming of a spring which holds the target by direct pressure.

It is very doubtful whether a broad claim for the release of a target by the opposition of the centrifugal force to the retaining power of a spring was novel when Block applied for liis patent in December, 1883, because, under the much earlier Ligowslcy patent, the target was held by a tongue inserted between two jaws held together by a spring, and was released by the centrifugal force overcoming the retaining power of the spring operating upon the jaws.

Stock, in Ms original and in his reissued patent, adhered to the positive dropping ont of the way of the target of the piece which held it in front of its outer rim.

Now, it is true, if the target were rested on its convex side, and a piece were inserted against the onter rim downwards, and there were an arrangement for the lifting of the piece by the nse of a spring, with the result that there were an upward movement, instead of a downward one, out of the plane of the target, such a device would be the same device as the one described in Stock’s patent; and the same might be true of a device for moving the obstacle away from in front of the target in a sideway direction.

But the difficulty with the complainant’s case is that the difference between Stock’s releasing device and Hebbard’s is not confined to the difference between a sideway and a dropping motion of a holding piece. The difference is between the sudden releasing of a target by the positive dropping of a piece from in .front of it and the gradual release of a target by á gradual reduction of the friction or pressure force which holds it. For that reason, we do not think that the first claim of the Stock patent was infringed.

We are of opinion that the court below was right in dismissing the bill, and the decree of that court is affirmed.