text:
Union Metallio Cartridge Company v. United States Cartridge Company/Opinion of the Court

Letters patent of the United States, No. 27,094, were issued to Ethan Allen, February 14, 1860, for 14 years, for an 'improvement in machine for making percussion cartridge cases.' A reissue of this patent was granted, in two divisions, No. 1,948 and No. 1,949, May 9, 1865, the application for the reissue having been filed April 7, 1865. The specification of No. 27,094 set forth two improvements: (1) An arrangement or mechanism to trim the open end of the case of the cap-cartridge, to make the articles all alike and true; (2) striking up or forming the swelled end to form the recess for the priming, as shown at Z, from that of Y, at one stroke, in distinction from spinning them. There were two claims in No. 27,094: (1) The trimming mechanism; (2) striking or forming the hollow rim at one stroke or operation. In reissuing the patent, the trimming mechanism was made the subject of No. 1,949, and the other improvement, (the subject-matter of claim 2 of No. 27,094,) was made the subject of No. 1,948. This suit is brought for the infringement of No. 1,948 alone. So much of the specification and claims of No. 27,094 as relates to the subject of No. 1,948, is copied below on the left hand, and the specification and claims of No. 1,948 are copied below on the right hand, the parts of each not found in the other being in italic:

''Original. No.'' 27,094.

'Be it known that I, Ethan Allen, of the city and county of     Worcester, state of Massachusetts, have invented certain new      and useful improvements in machinery for making loadedcaps or      cap-cartridges; and I hereby declare the following to be a      full, clear, and exact description of the construction and      operation of the same, reference being had to the      accompanying drawings, in which Fig. 1 is a top view or plan,      and Fig. 2 a side view; the same letters indicating the same      parts in both.

'My improvements relate to the construction or formation of     the case of the cap cartridge in the form shown at Z, or      nearly so, and consist *  *  * in striking up or forming the      swelled end to form the recess for the priming, as shown at      Z, from that of Y, at one stroke, in distinction from      spinning them, as has heretofore been done.

'The construction of my improvements, as shown in the     drawings, is as follows: J is the driving pulley to receive      motion, and its shaft is provided with cranks or eccentrics      at each end, to which the rods, H and H', connect, the shaft      turning in suitable bearings in the frame or base, K. * *  * F      is a slide receiving motion by H', and moving in the ways, G,      G, carrying the mandrel, B, which passes through the movable die, D, which has a spring to keep or      move it back towards F, and an enlargement in its center, to      facilitate placing the case, A', to be taken by B. The end of      D, next to E, has a hole fitting on the outside of the case,      A. E is a die with an adjusting screw. Y is a case as it     comes from the press, and Z shows the same after being      trimmed and set; or, in other words, gone through the      following operation, to-wit: *  *  *

It (the case or shell) 'is placed in D or A' to be taken on     B and carried forward until its end projects (sufficiently to      form its rim) out of D, when F, meeting D, carries it with A      in that position up against E, which flattens the end, and      forms the hollow rim, as shown in section at Z, Fig. 2; and      the motion of J continuing, the parts all return to their      respective places, ready for another, which, during the same      time, has been prepared, as before described; the finished      case dropping between the dies, D and E, or, if sticking in      D, is punched out by the first motion of the next one and      falls out of its way.

'Having thus fully described my invention, what I claim     therein as new and desire to secure by letters patent is *  *      *.

'''Second. I claim striking or forming the hollow rim at one     stroke or operation, as above set forth and described.' Reissue. No.'' 1,948.

'Be it known that I, Ethan Allen, of the city and county of     Worcester, and state of Massachusetts, have invented certain      new and useful improvements in machinery for making  loaded      caps or cap-cartridges; and I hereby declare the following to      be a full, clear, and exact description of the construction      and operation of the same, reference being had to the      accompanying drawings, in which Fig. 1 is a top view or plan,      and Fig. 2 is a side view, and pertains to a machine which is      the subject of another reissue of these letters patent.

'My improvements relate to the construction or formation of     the case of a metallic cartridge, and consist in an      arrangement of mechanism for forming or striking up the      swelled end to form the recess for the priming, as shown at      Z, from that of Y, at one stroke or operation, in distinction      from spinning them, as has heretofore been done.

'The construction of my improvements, as shown in the     drawings, is as follows: K is the base of the machine; J, the      driving pulley, which is provided with a crank or eccentric,      to which the rod, H', is connected; F is a slide receiving      motion by H', and moving in ways, G, G, carrying the mandrel,      B, which passes through the die, D; the die, D, has a spring      to keep or move it back towards F, and a hopper-like opening      in the upper side to facilitate placing the case, A, to be      taken by B ''and carried into the die, D. The mandrel, B, has a      shoulder, a sufficient distance from the end, to allow it to      enter the cartridge shell just the right distance, and leave      enough metal to be pulled into the head of the cartridge. The     die, D, is just the right size to be filled by the shell, A,      when pressed into it by the punch or mandrel, B''. E is a die     with an adjustable screw, and the case may be carried against      it to form the head or rim, or that may be carried against      the die, D, by similar mechanism to F and H'; Z is a case or      shell after being headed, formi g the cavity for the      fulminating powder.

'The operation is as follows, viz., motion, being given to     pulley, J, is communicated through H' to F and B, and the      cases or shells are placed in the recess or in an inclined      tube, which feeds them to the punch, B. The shell is taken on      the punch, B, and carried through the die, D, until the end      projects sufficiently to form its rim, when F, meeting D,      carries it with A in that position up against E, which      flattens the end and forms the hollow rim, as shown in section at Z, Fig. 2; and, the motion of J continuing, the      parts all return to their respective places, ready for      another shell, which, during the same time, has been placed      in position, as before described, and the punch, B, taking on      another shell, is carried into the die, D, and presses out      the one before headed, which drops between the dies, D and E,      when the operation is repeated as before.

'I claim the mandrel which carries the cartridge shell, in     combination with the die, D, which admits the same, and      against which the closed end of the cartridge shell is      headed, substantially as described.

'''Second. I claim the die, D, constructed and operating for     the heading of cartridge shells, substantially as described''.'

The following are the drawings of the original and of the reissue:

The Allen machine, as organized for heading, and making a flange upon, cartridge shells, consists mainly of a mandrel, a die, and a bunter, which are combined together in order to operate. The mandrel is a rod with a shoulder upon it, the rod beyond the shoulder being of such diameter as to enter the cartridge shell which is to be headed with a pretty close fit, and the shoulder being at right angles to the rod, and formed to support the edge of the shell at the open end of the cartridge during the operation of heading. The die is a block of metal with a hole in it, of just the size of the outside of the shell, and the axes of the die and mandrel are in the same line. The bunter is a piece of metal so located that it is opposite one end of the die. The machine is also provided with a gutter, which is a prolongation of the hole in the die, but open on top, into which shells are to be introduced prior to being acted upon by the machine. When an unheaded shell is placed in this gutter, with the mandrel as far retracted from the die as possible, the mandrel advances, inserts itself into the shell, and shoves the shell into the die with its closed end projecting beyond the die a sufficient distance to afford metal from which the flange may be formed. In this position the outside of the shell is supported by the die, the inside of the shell by the mandrel, and the edges at the open end of the shell by the shoulder on the mandrel. The die, mandrel, and shell then advance together, and the closed end of the shell is forced against the bunter, the shell being thus squeezed down so as to form the flange of the cartridge. The mandrel then retreats, and, as it retreats, slips out of the shell, leaving the headed shell in the die, and, when the mandrel is fully out of the shell, the die is in its old position. The shell cannot follow the mandrel, owing to the fact that it is now headed, and that its head is on that side of the die which is furthest from the mandrel. After the mandrel has retreated sufficiently far from that end of the die which is nearest the mandrel, a second unflanged shell may be placed in the gutter. The mandrel then ad-vances and enters the shell as before, and the advance of this shell on the end of the mandrel drives out the shell which has just been headed, and was sticking in the die. After this second shell has been driven far enough into the die, it is headed as the first shell was, and is, in turn, pushed out by a third shell; and so on in succession. In the operation of the machine the shell is forced into one end of the die, and expelled at the other end, so that the shell moves in the same ine, and in the same direction, from the time it is first acted upon by the mandrel until it is completely expelled from the die. The end of the die furthest from the mandrel is the anvil or rest against which the shell is headed by the conjoint action of the die and the bunter, the flange being formed fully at the time when the die and bunter are as near as possible the one to the other.

The description in the original patent of the mechanism for striking up or forming at one stroke the swelled end to form the recess for the priming, describes the die, D, as movable, and as being carried with the case or shell, and the mandrel, B, in it, against the stationary die, E. This is the description to which the second claim of the original patent refers when it claims 'striking or forming the hollow rim at one stroke or operation, as above set forth and described.' The drawings represent that arrangement, and no other. In the reissue it is stated that the case or shell may be carried against the die, E, to form the rim, or the die, E, may be carried against the die, D, by similar mechanism, to the slide, F, and the rod, H'. It is also stated that the cases or shells are placed in the recess, or gutter, or in an inclined tube, which feeds them to the punch or mandrel, B. Nothing was said in the specification of the original patent about carrying the die, E, against the die, D, or about feeding the cases or shells by an inclined tube.

Allen having died, Sarah E. Allen was duly appointed his executrix, in February, 1871. In November, 1873, she applied to the commissioner of patents for an extension of No. 1,948 and of No. 1,949. The application was opposed by E. Remington & Sons. Much testimony was taken on both sides. The day of hearing was February 4, 1874. The commissioner of patents decided to grant the extension, and rendered the following decision, (5 O. G. 147:) 'This is an application by the executrix of the estate of Ethan Allen, for the extension of reissued patents Nos. 1,948 and 1,949, granted May 9, 1865. The original patent was granted to Ethan Allen, February 14, 1860, and comprehended a combined apparatus for trimming the open ends, and then heading the closed ends, of blanks for forming metallic cartridge shells. These operations are each performed automatically but independently, by different portions of the machinery. Reissue No. 1,948 comprehends the mechanism for heading the shell, and No. 1,949 that for trimming it. No testimony is presented relating to the latter, and it may be dismissed from consideration. Some interpolations of new matter appear in the former, but they have been disclaimed, rendering the scope of the patent unequivocally that of the invention originally described and illustrated in drawing and model. The device in question consists of a hollow recessed sliding die, a reciprocating mandrel, having a shoulder permitting it to enter a shell the proper distance for heading, and a stationary bunter, organized into a machine which operates as follows: The mandrel being withdrawn into the back portion of the die, which serves merely as a guide for it, a shell with its open end to the rear is placed in the recess of the die, in the path of the mandrel. As the mandrel advances, it enters the shell, and carries it into the die until its closed end projects a little in front for heading. At this point the stock of the mandrel strikes the rear of the die and carries it forward until the projecting end of the shell strikes a fixed anvil and is headed. The mandrel and die then retreat, carrying the headed shell, the die being forced back by a spring to its original position, and the mandrel continuing until it has withdrawn from the shell and passed the feeding recess. The headed shell remains in the die until it is forced out by the advance of the next shell. This is the machine patented, and the claims of the patent are as follows: '(1) The mandrel which carries the cartridge shell, in combination with the die, D, which admits the same, and against which t e closed end of the cartridge shell is headed, substantially as described. (2) The die, D, constructed and operating for the heading of cartridge shells, substantially as described.' This was the first successful organized automatic machine for heading cartridge shells. It has undergone various improvements, however, and, as built and (according to the testimony of the witness Cook) used by the inventor, it is not now in use. It, however, furnished the essential principle of construction which has been maintained in all succeeding heading machines of its class. The hollow die and reciprocating mandrel to receive and carry forward the shell to be headed, and at the same time force out the preceding headed shell, are the chief elements of the machines which have produced the vast quantity of shells that have come into the market since the date of this invention. The rear or guide portion of the die is omitted in the present machines; and, instead of a recess in the die, a special feeding device is employed; also, instead of advancing the die against the anvil, it is now made stationary, and the anvil is advanced, the die spring being transferred to it. Whether this latter modification, which is the principal one, and is admitted to effect materially superior results in heading the larger sizes of shells, is in legal contemplation an equivalent construction mechanically improved, or a substantive invention, has been the subject of much contention in this application. I am, however, so entirely convinced that the matter introduced into the reissue, describing the holding die as stationary, and the bunter as movable, was new matter describing a substantially different invention from the original, possessing different functions, that I have required, as a condition precedent to extension, that this new matter, together with that of the inclined tube for feeding, should be absolutely disclaimed. With such disclaimer, the patent is extended.'

With a view to the extension the following disclaimer was filed on the fourth of February, 1874:

'To the Commissioner of Patents: Whereas, reissued letters     patent of the United States were, on the ninth day of May, A.      D. 1865, granted to Ethan Allen, of Worcester, in the county      of Worcester, state of Massachusetts, numbered 1,948; and      whereas, the Union Metallic Cartridge Company are now the      sole owners of said reissued letters patent; and whereas,      Sarah E. Allen of said Worcester, as the executrix of the      goods and estate of said Ethan Allen, is the sole owner of      any extended term of said letters patent which may hereafter      be granted; and whereas, the Union Metallic Cartridge Company      aforesaid have an equitable interest in the extended term of      said letters patent: Now, therefore, the said Union Metallic      Cartridge Company and the said Sarah E. Allen, executrix as      aforesaid, respectfully show to the honorable commissioner of      patents that through inadvertence, accident, or mistake, the      words 'or that may be carried against the die, D, by similar      mechanism to F and H',' were inserted in the descriptive part      of said reissued letters patent No. 1,948, which words were      not in the descriptive part of the original letters patent of      said Ethan Allen; and thereupon your petitioners disclaim the      said movable die, E, as being of the invention of said Ethan      Allen, except in so far as the same by fair construction may be deemed the mechanical equivalent      of the die, E, described and shown in said original letters      patent and the drawing thereof. And whereas, the said     reissued letters patent No. 1,948, in the descriptive part      thereof, contain the words 'or in an inclined tube,' which      words are not found in the descriptive part of the original      letters patent of said Ethan Allen, but said words were      introduced into the specification of said reissued letters      patent by inadvertence, accident, or mistake, your      petitioners disclaim such inclined tube as being of the      invention of the said Allen.

SARAH E. ALLEN, Executrix.

'UNION METALLIC CARTRIDGE CO.

'M. HARTLEY, President.'

The following additional disclaimer was filed on the thirteenth of February, 1874:

'To the Honorable the Commissioner of Patents: Whereas,     reissued letters patent of the United States were, on the      ninth day of May, A. D. 1865, granted to Ethan Allen, of      Worcester, in the county of Worcester and state of      Massachusetts, numbered 1,948; and whereas, the Union      Metallic Cartridge Company, of Bridgeport, state of      Connecticut, are now the sole owners of said reissued letters      patent; and whereas, Sarah E. Allen, of said Worcester, as      the executrix of the goods and estate of said Ethan Allen, is      the sole owner of any extended term of said letters patent      which may be granted: Now, therefore, the Union Metallic      Cartridge Company and Sarah E. Allen, executrix, as      aforesaid, respectfully show to the honorable commissioner of      patents, that, through inadvertence, accident, or mistake,      the words 'or that may be carried against the die, D, by      similar mechanism to F and H',' were inserted in the      descriptive part of said reissued letters patent No. 1,948,      which words were not in the descriptive part of the original      letters patent of said Ethan Allen; and thereupon your      petitioners disclaim the said movable die, E, (called a      bunter,) as being of the invention of said Ethan Allen, thus      leaving the description of said die, E, the same as shown in      the original letters patent, and the drawings thereof. And     whereas, the said reissued letters pattent numbered 1,948, in      the descriptive part thereof, contain the words 'or in an      inclined tube,' which words are not found in the descriptive      part of the original letters patent of said Ethan Allen, but      said words were introduced into the specification of said      reissued letters patent by inadvertence, accident, or      mistake, your petitioners disclaim said inclined tube as      being of the invention of said Ethan Allen. This disclaimer     is absolute, and is filed as an additional disclaimer to that      filed February 4, A. D. 1874, in which certain reservations      were made.

UNION METALLIC CARTRIDGE CO.

'M. HARTLEY, President.

'SARAH E. ALLEN, Executrix.

'New York, February 9, 1874.'

The certificate of extension of No. 1,948 was as follows:

'Whereas, upon the petition of Sarah E. Allen, of Worcester,     Massachusetts, executrix of the estate of Ethan Allen,      deceased, for the extension of the patent granted to said      Ethan Allen, February 14, 1860, and reissued May 9, 1865,      numbered 1,948, for 'machine for making cartridge cases,' the      undersigned, in accordance with the act of congress, approved      the eighth day of July, 1870, entitled 'An act to revise,      consolidate, and amend the statutes relating to patents and      copyrights,' (the said Sarah E. Allen, executrix, having      filed a 'disclaimer' to that part of the invention embraced      in the following words: 'or that may be carried against the      die, D, by similar mechanism to F and H';' also the words 'or      in an inclined tube,') did, on this thirteenth day of      February, 1874, decide that said patent ought to be extended:      Now, therefore, I, Mortimer D. Leggett, commissioner of      patents, by virtue of the power vested in me by said act of      congress, do renew and extend the said patent, and certify      that the same is hereby extended for the term of seven years      from and after the expiration of the first term, viz., from      the fourteenth day of February, 1874; which certificate,      being duly entered of record in the patent-office, the said patent has now the same effect      in law as though the same had been originally granted for the      term of twenty-one years.

'In testimony whereof, I have caused the seal of the     patent-office to be hereunto affixed this thirteenth day of      February, 1874, and of the independence of the United States      the ninety-eighth.

[Seal.]

'M. D. LEGGETT, Commissioner.'

Sarah E. Allen, executrix, having, on the twenty-first of February, 1874, assigned her title to the extended term of No. 1,948 to the Union Metallic Cartridge Company, it brought this suit in equity against the United State Cartridge Company on the eighteenth of March, 1874, for the infringement of No. 1,948. The bill alleged an assignment by the executrix to the plaintiff, of her title to No. 1,948, on the tenth of February, 1871; an assignment by the plaintiff to her, on the seventh of February, 1874, of all of its title to No. 1,948; the extension; and the assignment of the extended term. The assignments above mentioned have been duly proved. The bill makes no reference to any disclaimer. The machine of the defendant has the die, D, stationary, and the die, E, or bunter, movable, and it has an inclined tube for feeding. The die, D, the mandrel, B, and the bunter, E, are, as tools, the same as those in the plaintiff's machine. The mandrel enters the shell, pushes it into the die, D, supports it on the inside while it is being headed, and the unheaded shell expels the headed shell from the die, D, as in the plaintiff's machine. The die, D, supports the outside of the shell while it is being headed, and the end of that die acts as an anvil against which the flange is formed by the joint operation of such anvil and the bunter, as in the plaintiff's machine. The flange is fully formed at the time when the end of the die, D, and the bunter are as close together as the operation of the machine will permit them to be, which is true, also, of the plaintiff's machine. In the defendant's machine, as in the plaintiff's, the unheaded shell enters at one end of the die, D, and is expelled from the other end, and moves always in the same direction with relation to the die, D, from the time that the mandrel first takes charge of it, until, after being headed, it is expelled from the die. But in the defendant's machine the die, D, stands still and the bunter moves towards it to head the shell, while the drawings of No. 27,094 and No. 1,948 show a stationary bunter, and the die, D, moving towards it, to head the shell.

The answer denies that the reissue was lawful, and avers that the original patent was surrendered to claim inventions not made by Allen; that the reissue No. 1,948 is not for the same invention was the original patent; that as the reissue was void, the extension also was void; that the commissioner granted the extension only on the express condition precedent, that certain new matter unlawfully introduced into the reissue (as decided by him) should be absolutely disclaimed, and that only upon such disclaimer should the patent be extended; and that said condition has not been complied with. It denies infringement. Proofs having been taken, the case was heard before Judge SHEPLEY, and he decided it in favor of the plaintiff, on the thirteenth of April, 1877, and entered a decree holding No. 1,948 to be valid, and to have been infringed, and awarded an account of profits and damages, before a master, from February 10, 1871, except as to the period from February 7, 1874, to February 21, 1874, and a perpetual injunction restraining the defendant from making, using, or vending 'machines for heading cartridge shells, having a die, mandrel, and bunter,' excepting five machines specially named, the question as to the use of which was reserved till the master should make his report. The decision of Judge SHEPLEY (2 Ban. & A. 593, and 11 O. G. 1113) says: 'In the machine admitted to be used by the defendant are found substantially the same die, mandrel, and bunter, operating in the same manner to form the flanged head of the cartridge and to expel the shell after being headed, except that in defendant's machine the bunter moves towards the die to head the shell, while in the Allen machine the die moves towards the bunter to head the shell. The fact, as proved, that, especially in the case of cartridges of larger sizes, there is an advantage in having the die stationary, while the bunter moves towards it, is not sufficient alone to show that this latter form of the machine is not an equivalent of the other, all the elements of the combination existing alike in both, and acting alike in combination. It is conte ded on the part of the defendant that the action of the commissioner of patents, in requiring a disclaimer of so much of the reissued patent as claimed in specific terms the use of the movable bunter and the stationary die, as an equivalent for the movable die and the fixed bunter, before granting an extension, is conclusive upon the complainant, but we do not so regard it. The patentee, without describing equivalents, is entitled to use equivalents, and to treat the use of equivalents by others as an infringement, and this, upon the evidence in the record, appears to be a clear case of such a use.'

The master made a report as to profits, to which exceptions were filed by both parties. On the hearing of the exceptions the case was reheard before Judge LOWELL on the question as to whether the original decree should be reversed. He rendered a decision (7 Fed. Rep. 344) in which he said: 'Allen's original patent described a machine organized to move a 'die' against a 'bunter,' and, by their contact, to form a flange or head upon the metallic cartridge, which was carried by the die. The defendant's machines brought a movable bunter against a fixed die. This was an improved form of the machine, and was, perhaps, a patentable improvement; but it was the same machine, and was an undoubted infringement. This improvement was invented by Allen himself, but, after he had obtained his patent, and when he asked for a reissue, he inserted in his description of the mechanism this modified and improved form. The commissioner required him to disclaim this part of his description, as a condition precedent to granting the reissue. Judge SHEPLEY held that the disclaimer did not prevent the patentee from enjoining the use of machines having this improvement. It is now argued, and, certainly, with much force, that Leggett v. Avery, 101 U.S. 256, holds the patentee to this disclaimer, as an estoppel. I appreciate the argument, but do not consider myself bound to reverse Judge SHEPLEY's decision, which I should not feel at liberty to do unless my mind were entirely satisfied that he was wrong. No one can doubt that, if a patentee obtains a patent upon his solemn admission of certain facts, he shall never thereafter be permitted to controvert them. This is Leggett v. Avery. Judge SHEPLEY, though giving his opinion before that case was decided, could not have overlooked this point. I understand him to decide that the admission in this case was not of a fact of invention, but of the propriety of inserting a certain clause in the descriptive part of the specification, and, if this were not so, still, if the patentee's invention and his patent rightly included this form, as an equivalent, it was a mere nullity, like an admission of law, to confess that it did not include it. This is the idea shortly expressed by Judge SHEPLEY; and I do not see any necessary conflict between it and the decision of the supreme court.'

The exceptions of both parties were overruled, and a decree was entered for the plaintiff for $40,367.26, profits to April 23, 1877, without damages. From this decree both parties have appealed to this court; but the plaintiff waived its appeal at the bar. Many questions were discussed at the hearing which we deem it unnecessary to consider, because we are of opinion that the disclaimer made has the effect to so limit the construction of the claims of the reissue that the defendant's machine cannot be held to infringe those claims. The opposition to the extension proceeded, among other things, on the ground that reissue No. 1,948 was so worded as to cover a machine having a stationary die and a movable bunter,-one not within the language of the scope of the original patent, not indicated therein as the invention of Allen, and not described, and a substantially new and different invention. That the commissioner intended that the extension should not be granted unless there should be a disclaimer of all claim to have No. 1,948 cover a machine with a stationary die and a movable unter, and that the second disclaimer filed was such a disclaimer, and that the patent extended cannot be held to be one which covers, by any claim, the defendant's machine, is, we think, entirely clear.

The commissioner, in his decision, says that the 'interpolations of new matter' in No. 1,948 'have been disclaimed,' and that such disclaimer renders 'the scope of the patent unequivocally that of the invention originally described and illustrated in drawing and model.' The disclaimer is referred to as limiting the scope of the patent, that is, the extent of its claims, and as reducing such scope and extent to what the drawings and model illustrated, namely, a movable die and a stationary bunter, to the exclusion of a stationary die and a movable bunter. The commissioner adds that it had been the subject of much contention in the application for the extension whether the modification of having a stationary die and a movable anvil, which, he said, it was admitted, effected materially superior results in heading the larger sizes of shells, was, in legal contemplation, an equivalent construction mechanically improved, or a substantive invention, and that he is so entirely convinced that the matter introduced into the reissue, describing the holding die as stationary and the bunter as movable, was new matter, describing a substantially different invention from the original, possessing different functions, that he had required, as a condition precedent to extension, that this new matter should be absolutely disclaimed. The new matter introduced into the reissue in respect to the moving of the bunter or die, E, was introduced into the descriptive part by inserting the words 'or that' (the die, E,) 'may be carried against the die, D, by similar mechanism to F and H';' but it was also introduced into the two claims by the use of the words 'substantially as described' in those claims. This reissue took place under section 13 of the act of July 4, 1836, c. 357, (5 St. 122), which provided for a surrender and the issuing of a new patent 'for the same invention' 'in accordance with the patentee's corrected description and specification.' This provision was repeated in section 53 of the act of July 8, 1870, c. 230, (16 St. 205,) now section 4916 of the Revised Statutes, with the additional enactment that 'no new matter shall be introduced into the specification.' But where new matter was, even before the act of 1870, introduced into the description, and in such manner as to enlarge the claim, and cause the patent to be not 'for the same invention,' the reissue was invalid to the extent that it was not for the same invention.

It is quite clear that Allen had not, before the granting of the original patent, made any machine in which the die, D, was stationary and the bunter movable. If that arrangement was a 'new improvement of the original invention,' and was invented by Allen, and after the date of the original patent, he could, under section 13 of the act of 1836, have had a 'description and specification' of it 'annexed to the original description and specification,' on like proceedings as in the case of an original application, and it would have had 'the same effect, in law,' from 'the time of its being annexed and recorded,' 'as though it had been embraced in the original description and specification;' or he could have applied for a new patent for the improvement. Such last-named provision of section 13 of the act of 1836 was repealed by the act of 1870, and was not re-enacted therein, nor is it found in the Revised Statutes. But it was never lawful to cover, by the claims of a reissue, an improvement made after the granting of the original patent. The statute in force in regard to disclaimers, when the disclaimers were filed in this case, was section 54 of the act of 1870, which provided 'that whenever, through inadvertence, accident or mistake, and without any fraudulent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or disco erer, his patent shall be valid for all that part which is truly and justly his own, provided the same is a material or substantial part of the thing patented; and any such patentee, his heirs or assigns, whether of the whole or any sectional interest therein, may, on payment of the duty required by law, make disclaimer of such parts of the thing patented as he shall not choose to claim or hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent. Said disclaimer shall be in writing, attested by one or more witnesses, and recorded in the patent-office, and it shall thereafter be considered as part of the original specification, to the extent of the interest possessed by the claimant and by those claiming under him after the record thereof.' This word 'claimant' is an evident error, for 'disclaimant,' as 'disclaimant' is the word used in section 7 of the act of March 3, 1837, c. 45, (5 St. 193), which was the first statute providing for a disclaimer. This error is perpetuated in section 4917 of the Revised Statutes.

It is a patentee who 'has claimed more than that of which he was the original or first inventor or discoverer,' and only 'such patentee,' or his assigns, who can make a disclaimer; and the disclaimer can be a disclaimer only 'of such parts of the thing patented as he shall not choose to claim or hold by virtue of the patent or assignment.' A disclaimer can be made only when something has been claimed of which the patentee was not the original or first inventor, and when it is intended to limit a claim in respect to the thing so not originally or first invented. It is true that, in so disclaiming or limiting a claim, descriptive matter on which the disclaimed claim is based, may, as incidental, be erased, in aid of or as ancillary to the disclaimer. But the statute expressly limits a disclaimer to a rejection of something before claimed as new or as invented, when it was not new or invented, and which the patentee or his assignee no longer chooses to claim or hold. It is true that this same end may be reached by a reissue, when the patentee has claimed as his own invention more than he had a right to claim as new; but if a claim is not to be rejected or limited, but there is merely 'a defective or insufficient specification,'-that is, description, as distinguished from a claim,-the only mode of correcting it was and is by a reissue.

It is apparent that the commissioner, when he said that the disclaimer affected 'the scope of the patent,' and that the matter introduced into the reissue was 'new matter, describing a substantially different invention from the original, possessing different functions,' and that he had required it to be absolutely disclaimed, 'as a condition precedent to extension,' meant that he had required such new matter-that is, the arrangement of a stationary die and a movable bunter-to be disclaimed, as an invention of Allen, covered by the reissue.

What was done was in accordance with this view. In the first disclaimer, that of February 4, 1874, it is said that, by inadvertence, accident, or mistake, the words, 'or that may be carred against the die, D, by similar mechanism to F and H',' were inserted in the descriptive part of No. 1,948, and were not in the descriptive part of the original patent. Thereupon the petitioners disclaim, not such descriptive words as a description merely, but they disclaim 'the movable die, E, as being of the invention of' Allen, but with this limitation or reservation: 'except in so far as the same, by fair construction, may be deemed the mechanical equivalent of the die, E, described and shown' in the original patent and its drawings. It was sought to reserve the question of the mechanical equivalency of the stationary die and movable bunter with the movable die and stationary bunter, and not have the disclaimer absolutely reach and cover the former, but still leave the claims to cover it. But this was evidently not satisfactory to the commissioner, and he required  further disclaimer. So the one of February 13, 1874, was filed, which states on its face that it 'is absolute, and is filed as an additional disclaimer' to the first one, 'in which certain reservations were made.' In this second disclaimer the language as to the inserted words is the same as in the first, and the statement of disclaimer is that the 'petitioners disclaim the said movable die, E, (called a bunter,) as being of the invention' of Allen, 'thus leaving the description of said die, E, the same as shown in the' original patent and drawings. The reservation was expunged. The effect of the disclaimer was to limit the claims of the reissue to a machine with the stationary die, E, shown in the original patent and drawings, and to prevent their any longer covering, even if they had before covered, a movable die, E, or bunter. Such was the effect of the disclaimer on the reissue without reference to the extension. But the certificate of extension itself states that the executrix had 'filed a disclaimer to that part of the invention embraced in the following words: 'or that may be carried against the die, D, by similar mechanism to F and H'," and what is extended is No. 1,948 with such disclaimer. After an extension has been obtained on the condition precedent of making such disclaimer, the disclaimer cannot be held inoperative as respects the extended term.

We regard this case as falling within the principles laid down in Leggett v. Avery, 101 U.S. 256. There the original patent was issued in October, 1860. It was surrendered and reissued in June, 1869, and extended in October, 1874. As a condition of obtaining the extension, the patentee disclaimed the specific claims which the defendants in the suit were charged with infringing, the extension having been opposed, and the commissioner having refused to grant it unless the patentee would abandon all but one of the six claims of the reissue, there having been but one claim in the original patent. This was done, and the extension was granted for only one of the six claims, which one the defendants had not infringed. Three days after the extension was granted a reissue was applied for, including substantially the claims which had been thus disclaimed. The reissue was granted, two of the claims in it being for substantially the same inventions which had been so disclaimed before the extension, and for different inventions from the invention secured by the patent as extended. A reference to the record of the case in this court shows that the commissioner decided that the extension would be granted provided the disclaimer should be filed, and that the disclaimer concluded with the words, 'reserving right to reissue in proper form.' This court held that the commissioner erred in allowing in the second reissue claims which had been expressly disclaimed, because the validity of such claims had been considered and decided with the acquiescence and express disclaimer of the patentee; and that this was a fatal objection to the validity of the second reissue.

The acquiescence and disclaimer must be regarded as equally operative to prevent those who hold the reissue in suit, whether in respect to the time before or after the extension, from being heard to allege that persons who use machines with a stationary die, D, and a movable bunter, E, infringe the claims of the reissue. The disclaimer was one of the fact of invention. It could not lawfully be anything but a disclaimer of the fact either of original invention or of first invention. It was not merely the expunging of a descriptive part of the specification, involving only the propriety of inserting such descriptive part in the specification, but it was a disclaimer of all claim based on such descriptive part, because the claims were made to cover such descriptive part by the words 'substantially as described,' in the two claims. The question of fact is not open now as to whether Allen invented at any time the stationary die, D, and movable bunter, E, or as to whether it was, or is, or cou d be, a mechanical equivalent for the movable die, D, and stationary bunter, E, because those questions are concluded by the disclaimer. It is conceded by the plaintiff that if, by the operation of the disclaimer, it is estopped to say that a stationary die, D, and a movable bunter, E, are the equivalent of the movable die, D, and the stationary bunter, E, the defendant does not infringe. The decree of the circuit court is reversed, with costs to the United States Cartridge Company, on both appeals, and the case is remanded to that court, with direction to dismiss the bill, with cost.


text: Talk:Union Metallio Cartridge Company v. United States Cartridge Company/Opinion of the Court

license: Creative Commons - Attribution Share-Alike - https://creativecommons.org/licenses/by-sa/4.0/


text:
United States v. Great Falls Manufacturing Company

This is an appeal from a judgment in favor of the Great Falls Manufacturing Company, a corporation of the state of Virginia, for the sum of $15,692 as compensation for all past and future use and occupation by the United States of certain land, water-rights, and privileges claimed by that company, and all consequential damages which it may legally assert by reason of the execution of a certain one of the plans adopted by the government for supplying the cities of Washington and Georgetown with water. The case made by the finding of facts, is, in substance, as will be now stated:

On the thirty-first of August, 1852, congress appropriated $5,000 to enable the president to cause the necessary surveys and estimates to be made for the best means of supplying those cities with good and wholesome water. 10 St. 92, c. 108. In execution of that act, President Fillmore transmitted to congress the report of Gen. Totten, of the corps of engineers, recommending the construction of an aqueduct from the Great falls of the Potomac, situated in the state of Maryland, about 16 miles distant from Washington. The Great falls form a series of rapids extending for about one-half or three-fourths of a mile, in the course of which the river falls about 70 feet; from which to the tide-level at Washington there is a further fall of about 70 feet. Just above these rapids is Conn's island, lying near the Maryland shore, and distant about 1,400 feet from the Virginia shore. At its head, extending up the stream, are several small islands called the Cyclades, separated from each other and Conn's island by narrow channels. On the Virginia side, is a body of land known as the Toulson tract, extending along the river from a point opposite the middle of Conn's island to a point below the Great falls, and running back a distance of about half mile. A considerable portion of it is elevated ground, well adapted to the construction of mills and manufactories, which may be supplied with water-power from the river, and by canals, races, or other artificial water-ways. Before the construction by the government of the dam and other works to be presently referred to, Conn's island divided the Potomac river into two unequal channels, about 98 per cent. of the water passing through the Virginia channel, and 2 per cent. through the Maryland channel, at low stages; the total flow at low water being estimated at about 1,065 cubic feet per second, or 700,000,000 gallons daily. Of these lands, water-rights, and privileges, the Great Falls Manufacturing Company claimed to be the owner at and prior to the before-mentioned appropriation of $5,000.

On the third of March, 1853, congress appropriated, 'to be expended under the direction of the president of the United States, for the purpose of bringing water into the city of Washington, upon such plans and from such places as he may approve, one hundred thousand dollars: provided, that if the plan adopted by the president should require water to be drawn from any source within the limits of Maryland, the assent of the legislature of that state should first be obtained.' 10 St. 206, c. 97. On the third of May, 1853, the legislature of Maryland passed an act giving her assent to the purchase by the United States of such lands, and to the construction of such dams, reservoirs, buildings, and other works, within her limits, as might be required under any plan adopted by the president for supplying Washington with water. That act provided that if the United States could not agree with the owners for the purchase of land, earth, timber, stone, or gravel required for the construction of such works, or in case the owner thereof should be a feme covert or under age, non compos mentis, or a non-resident, 'it shall, nevertheless, be lawful for the United States to enter upon such lands, and to take and use such materials, after having first made payment or tendered payment for the same at the valuation assessed thereon,' in the manner prescribed in that act; also, that before the act should take effect, the United States 'shall agree to such conditions as the Chesapeake & Ohio Canal Company may consider necessary to secure the canal from injury in carrying into effect any plan that may be adopted for supplying the city of Washington with water as aforesaid.' Then following certain appropriations by congress for the purpose of executing the said plan: $250,000 'for continuing the work on the Washington aqueduct,' (10 St. 664, Act March 3, 1855, c. 175;) $250,000, or so much thereof as was necessary, 'for paying existing liabilities for the Washington aqueduct, and preserving the work already done from injury,' (11 St. 86, Act August 16, 1856, c. 129;) and $1,000,000 'for continuing the Washington aqueduct,' (11 St. 225, Act March 3, 1857, c. 108.)

By an act entitled 'An act to acquire certain lands needed for the Washington aqueduct, in the District of Columbia,' approved April 8, 1858, (11 St. 263, c. 14,) it was, among other things, provided: 'Whereas, it is represented that the works of the Washington aqueduct, in the District of Columbia, are delayed in consequence of the proprietors' refusal, in some cases, to sell lands required for its construction at reasonable prices, and because in other cases the title to the said land is imperfect, or is vested in minors or persons non compos mentis, or in a feme covert, or in persons out of the District of Columbia; and whereas, it is necessary for the making of said aqueduct, reservoirs, dams, ponds, feeders, and other works, that a provision should be made for condemning a quantity of land for the purpose: Therefore, be it enacted, etc., that it shall and may be lawful for the United States, or its approved agent, to agree with the owners of any land in the District of Columbia, through which said aqueduct is intended to pass, for the purchase or use and occupation thereof; and in case of disagreement, or in case the owner thereof shall be a feme covert, under age, non compos, or out of the District of Columbia, on application to a judge of the circuit court of said district, the said judge shall issue his warrant, under his hand, to the marshal of the said district to summon a jury. * * *' The rest of the act is limited to mere details.

On the twelfth of June, 1858, (11 St. 323, c. 154,) the further sum of $800,000, and so much of the $250,000 as was not used under the act of August 18, 1856, were appropriated 'for the completion of the Washington aqueduct.' Thereafter, on the twenty-seventh of July, 1858, proceedings were commenced by the United States, before a justice of the peace in Maryland, for the assessment of the damages which the dam of the Washington aqueduct proposed to be constructed at the Great falls should cause to the appellee, of which the latter had due notice. The damages were assessed at $150,000; but, in November of the same year, the inquisition, upon the application of the United States, was set aside by the circuit court of Montgomery county, Maryland, and another one was ordered. But there was no further prosecution of these proceedings.

By an act approved March 3, 1859, (11 St. 435, c. 84,) the dams, aqueducts, water-gates, reservoirs, and all improvements connected therewith, constructed or to be constructed by the United States for the conveyance of water from the Potomac river, above the Great falls, to the cities of Washington and Georgetown, were directed to be placed by the president 'under the immediate care, management, and superintendence of a properly qualified officer of the United States corps of engineers to be appointed by him, who shall act under the department of the interior,' etc.; his decision 'to be subject only to appeal to the secretary of the interior.' On the twenty-fifth of June, 1860, (12 St. 106, c. 211,) congress appropriated the sum of $500,000 for the aqueduct, 'to be expended according to the plans and estimates of Capt. Meigs, and under his superintendence.' On the twentieth of November, 1862, articles of agreement were executed between the secretary of the interior, in the name of the United States, and the Great Falls Manufacturing Company, wherein was recited the claim of the latter for compensation for the use by the former of certain lands and water-rights at the Great falls, the cost that would ensue to both parties from any further delay in the settlement of their differences, and the anxiety of the government to prosecute the work in question, and whereby such claim was referred to arbitrators, one of whom was the late Benjamin R. Curtis, with power to examine into, decide upon, and award such compensation, if any, as the claimant may be entitled to for the use and occupation of said land and water-rights, and all consequential damages that the company might legally claim by reason of the execution of the several plans adopted by the government in the location and construction of the dams and other works of the Washington aqueduct. Pursuant to this agreement, the United States and the claimant appeared by counsel before the arbitrators, witnesses were examined, and documentary evidence was submitted by the respective parties.

At the hearing the Great Falls Manufacturing Company filed with the arbitration a specific description of the lands to which they asserted title, and which they claimed would be affected by the improvements made or proposed to be made. The United States filed the specifications of their proposed plans of operations, being four in number. The arbitrators made an award in writing on the twenty-eighth of February, 1863, all the costs and expenses of which, including $12,000, the amount of compensation charged by them, were paid by the secretary of the interior out of the appropriations for the completion of the Washington aqueduct. By the award it was determined that the amounts to which the company was entitled as compensation and damages for the use and occupation by the United States of the land, water-rights, and privileges claimed by it, were as follows: If the first plan of improvements was carried into execution, $63,766; if the second, $50,000; if the third, $77,200; if the fourth, $15,692. The fourth plan involved the construction of a dam of masonry from the Maryland shore to Conn's island, and gave the United States the right to deepen the channels in the Maryland side of Conn's island, near its head, so as to supply the aqueduct with whatever quantity of water the dams would yield. The claimants presented to the arbitrators title deeds and proofs, showing a valid title in it to the Toulson tract, Conn's island, and the Cyclades. Objections were presented and urged on behalf of the United States, but the arbitrators held the title of claimants to be valid and satisfactory. No other title than that of claimant is asserted.

The conduit through which the water supply of the city of Washington is drawn was completed on the fifth of December, 1863. On the fourth of July, 1864, congress appropriated the sum of $150,000 'for the purpose of constructing the dam of solid masonry across the Maryland branch of the Potomac river, near the Great falls, and for constructing the conduit around the receiving reservoir, and for paying existing liabilities and expenses, engineering, superintendence, and repairs of said aqueduct.' 13 St. 384, c. 244. On the thirtieth of July, 1864, the United States entered into a contract for the construction of that dam, and, proceeding to construct it, took possession of so much of Conn's island as was required for the purpose of securing the dam and making a permanent abutment for it. And on July 28, 1866, the further sum of $51,687 was appropriated 'to complete the dam in the Potomac river at the head of the aqueduct, from the shore to Conn's island, with cut stone.' 14 St. 316. The dam so constructed is about 1,176 feet long. It extends from a point on the Maryland shore, just below the feeder or mouth of the aqueduct, across the channel between Falls island and Conn's island, to its abutment on the latter island, closing the Maryland channel of the river entirely across. It was constructed substantially in conformity with the fourth of the alternative plans presented to the arbitrators by the United States. Conn's island, in connection with the the Maryland shore and the dam, forms such a basis as is necessary for the purpose of supplying the aqueduct, having its upper end open to receive the flow of the water as needed. There is no other island or natural formation which could be utilized for forming a suitable basin without carrying the aqueduct much further up the river. So that if that island was not used it would be necessary to incur the expense of a larger aqueduct, and to carry the dam across to the Virginia shore, either above or below the island, or build some structure to take the place of the island. From any point below the rapids the elevation is insufficient to admit of the distribution of water by aqueduct; but there is sufficient elevation for that purpose from any point above them. The uses of the aqueduct require the entire flow of the water in the Maryland channel in the low stages of the river. The water drawn through it is distributed in the cities of Washington and Georgetown for the use of the government in its buildings, navy-yard, fountains, etc., and for the municipal and domestic uses of the said cities and their inhabitants. The cost of the present dam is $77,250, while that of the aqueduct is nearly four millions of dollars.

It is also found as a fact that the value of the water for the uses to which this is applied is derived from its elevation, which will admit of its flow or descent through the city; and when found at sufficient elevation to admit of being distributed by its natural flow, it possesses great value, and is paid for by cities, when taken from the control of private owners, according to its value.

Upon this state of facts, the court of claims found, as a conclusion of law, that the claimants were entitled to the judgment from which the present appeal is prosecuted.

''Sol. Gen. Phillips'', for appellant.

[Argument of Counsel from 653 intentionally omitted]

B. F. Butler and C. F. Peck, for appellee.

Mr. Justice HARLAN, after stating the facts in the foregoing language, delivered the opinion of the court:


text: Talk:United States v. Great Falls Manufacturing Company


text:
United States v. Great Falls Manufacturing Company/Opinion of the Court

The articles of agreement of November 20, 1862, between the secretary of the interior and the Great Falls Manufacturing Company made ample provision for the protection of the public interests; for the right was reserved to the party dissatisfied to proceed by suit in equity in the proper court of this district for the purpose of having the award set aside or changed, and of obtaining such a decree, subject to review by this court, as was just and equitable. There is no doubt of the good faith of the effort of the parties to accommodate their differences, or that it was of the highest importance to the government that the obstacles should be be removed to the successful completion of the work, upon which large sums had been expended. In the opinion of the court below, and in the arguments of counsel, the authority of the secretary of the interior to make the government a party to that agreement is discussed; but, in the view we take, it is unnecessary to determine that question. Our decision may be satisfactorily placed on other grounds.

From the report and documents transmitted to congress by President Fillmore it appears that, in the judgment of the engineer department, the best mode of supplying the cities of Washington and Georgetown with wholesome water was by an aqueduct from the Great falls of the Potomac; also, that such a plan necessarily involved the construction of a dam at that point in the river. Ex. Doc. (Senate) No. 48, pp. 2, 35, 48, 32d Cong. 2d Sess. By the annual report, under date of December 4, 1863, of Mr. Usher, secretary of the interior, congress was informed that 'certain parties having from time to time made claim to heavy damages for the diversion of the water from the Potomac river,' his immediate predecessor, 'with a view to settle and end this claim, entered into an agreement of arbitration with the claimants.' The parties referred to were the present claimants, as appears by the agreement of arbitration, by the official documents submitted to congress, and by the proceedings in the courts of Maryland for an assessment of the damages which the proposed dam should cause to the Great Falls Manufacturing Company. The secretary said: 'Pursuant to this agreement, the arbitrators met from time to time, and finally submitted their award, by which they adjudged in favor of the claimants upon each and all of the plans and modes submitted to them, being three [four] in number, for the construction of the dam across the Potomac, and also $12,000 for their own fees as arbitrators, and $761.84 for the expenses of arbitration. The sums being large, I did not feel justified in applying the the existing appropriation for the completion of the aqueduct to the payment thereof, preferring to submit the whole matter to congress for its determination. It appears from the report of the experienced engineer in charge of the work, as must be obvious to every observer, that an ample supply of water for the use of the cities of Washington and Georgetown, for many years to come, can be obtained from the Potomac by the erection of a tight dam, extending from the Maryland shore to Conn's island, to a height which will give a head of six feet in the aqueduct, and yield a daily supply of 65,000,000 gallons,' etc. After expressing the opinion that such a dam could not work injury to the proprietors of the water-rights claimed at the Great falls, the secretary recommended that a reasonable sum be appropriated to pay the expenses of the arbitration, and that the cost previously estimated of a dam across the main channel be diminished to that of the proposed dam over the east channel.

In conformity with that recommendation, congress, by the act of July 4, 1864, made the appropriation of $150,000 for the purpose of constructing the proposed dam of solid masonry, and for paying the existing liabilities and the expenses connected with the engineering, superintendence, and repairs of the aqueduct. Immediately thereafter a contract was made for the construction of that dam. In his next annual report, under date of December 5, 1864, the secretary informed congress that the work upon the dam and the aqueduct required the expenditure of the additional sum of $51,945. For that amount an appropriation was promptly made. With the secretary's report was transmitted to congress that of the engineer in charge, who stated that 'the question of land damages and water-rights at the Great falls still remains unsettled.' The dam was completed to its present height in 1867, and is used as an indispensable part of the system by which the cities of Washington and Georgetown have been supplied with water. Beyond doubt the land and the water-rights and privileges in question have for nearly 20 years been held and used by officers and agents of the government, without any compensation whatever having been made therefor to the claimant. By what authority have they appropriated to public use the property of the claimant? The answer to this question will determine whether the present demand of the claimant arises out of an implied contract, and therefore enforceable by suit against the United States in the court of claims.

It seems clear that these property rights have been held and used by the agents of the United States, under the sanction of legislative enactments by congress; for the appropriation of money specifically for the construction of the dam from the Maryland shore to Conn's island was, all the circumstances considered, equivalent to an express direction by the legislative and executive branches of the government to its officers to take this particular property for the public objects contemplated by the scheme for supplying the capital of the nation with wholesome water. The making of the improvements necessarily involved the taking of the property; and if, for the want of formal proceedings for its condemnation to public use, the claimant was entitled, at the beginning of the work, to have the agents of the government enjoined from prosecuting it until provision was made for securing, in some way, payment of the compensation required by the constitution,-upon which question we express no opinion,-there is no sound reason why the claimant might not waive that right, and, electing to regard the action of the government as a taking under its sovereign right of eminent domain, demand just compensation. Kohl v. U.S. 91 U.S. 374. In that view, we are of opinion that the United States, having by its agents, proceeding under the authority of an act of congress, taken the property of the claimant for public use, are under an obligation, imposed by the constitution, to make compensation. The law will imply a promise to make the required compensation, where property, to which the government asserts no title, is taken, pursuant to an act of congress, as private property to be applied for public uses. Such an implication being consistent with the constitutional duty of the government, as well as with common justice, the claimant's cause of action is one that arises out of implied contract within the meaning of the statute, which confers jurisdiction upon the court of claims of actions founded 'upon any contract, express or implied, with the government of the United States.'

This case is materially different from Langford v. U.S. 101 U.S. 341. That was an action in the court of claims against the United States to recover for the use and occupation of certain lands and buildings to which the claimant asserted title. It there appeared that, throughout the whole period of such occupation and use, the title of the claimant was disputed by the government, and that possession was taken and held by its agents in virtue of a title asserted to be in the United States. The jurisdiction of the court of claims was attempted to be sustained upon the ground that the government, in taking and using the property of an individual, against his consent and by force, could not, under the relations between it and the citizen, commit a tort, but was under an implied obligation, created by the constitution, to pay for the property, or for the use of the property, so taken. This proposition was held to be untenable under the facts of that case, for the reason that, while individual officers of the government might be guilty of a tort, if the property so held by them was in fact private property, yet, if the government never recognized the property as private property, taken by its agents for public use, it could not be held liable for its value as upon implied contract. In the same case it was said: 'We are not prepared to deny that when the government of the United States, by such formal proceedings as are necessary to bind it, takes for public use, as for an arsenal, custom-house, or fort, land to which it asserts no title, but admits the ownership to be private or individual, there arises an implied obligation to pay the owner its just value. It is to be regretted that congress has made no provision by any general law for ascertaining and paying this just compensation. And we are not called on to decide that when the government, acting by the forms which are sufficient to bind it, recognizes the fact that it is taking private property for public use, the compensation may not be recovered in the the court of claims. On this point we decide nothing.'

The question thus reserved from decision is substantially the one now presented. In the present case there were, it is true, no statutory proceedings for the condemnation of the claimant's property rights. Such proceedings, as has been stated, were instituted by the United States in one of the courts of Maryland, in which the property rights of the claimant were expressly recognized. But they were abandoned. One reason, perhaps, for such abandonment was that, in the judgment of the officers of the United States, a fair assessment of damages could not be had in the mode prescribed by the Maryland statute. Be this as it may, it is clear, from the record, that the government did not assert title in itself to this property, at the time it was taken. Having abandoned the proceedings of condemnation, the proper officers of the government, in conformity with the acts of congress, constructed the dam from the Maryland shore to Conn's island, the doing of which necessarily involved the occupation and use of the property, as contemplated in what was called the fourth plan for bringing water from the Great falls to Washington and Georgetown. In such a case, it is difficult to perceive why the legal obligation of the United States to pay for what was thus taken pursuant to an act of congress, is not quite as strong as it would have been had formal proceedings for condemnation been resorted to for that purpose. If the claimant makes no objection to the particular mode in which the property has been taken, but substantially waives it, by asserting, as is done in the petition in this case, that the government took the property for the public uses designated, we do not perceive that the court is under any duty to make the objection in order to relieve the United States from the obligation to make just compensation. In reference to the title which the government will acquire, as the result of this suit, there would seem to be no difficulty. The finding of the court is that the claimant exhibited to the arbitrators a valid title to the lands in question. It does not appear that the company has ever parted with that title; and the finding is that no title except that of the claimant is asserted. What has been said is sufficient to dispose of the case, and requires an affirmance of the judgment. It is so ordered.


text: Talk:United States v. Great Falls Manufacturing Company/Opinion of the Court


text:
Torrent Arms Lumber Company v. Rodgers

''B. F. Thurston, Geo. W. Dyer, and R. A. Parker'', for plaintiff in error.

C. C. Chamberlain, for defendant in error.

WOODS, J.

title: Torrent Arms Lumber Company v. Rodgers


text: Talk:Torrent Arms Lumber Company v. Rodgers


text:
Torrent Arms Lumber Company v. Rodgers/Opinion of the Court

This was an action at law brought June 25, 1879, by Alexander Rodgers, the defendant in error, against the Torrent & Arms Lumber Comp ny, the plaintiff in error, to recover damages for the infringement of reissued letters patent for 'a new and improved machine for rolling saw-logs,' dated June 25, 1873, granted to Rodgers as the assignee of Esau Torrent, the original patentee. The lumber company pleaded the general issue, with notice that, among other things, it would give in evidence, and insist in its defense, 'that the said patentee and his assignee, the plaintiff, unjustly obtained the reissued patent for matters and principles embraced in such reissue not included in the original patent or specification therefor, and for what was in fact invented by another, to-wit, John Torrent, of the city of Muskegon, who was using reasonable diligence in adapting and perfecting the same;' that John Torrent 'made his application for a patent therefor on January 29, 1873, and his patent was granted August 12, 1873, and the plaintiff and his assignee had knowledge prior to the application for such reissue of the aforesaid application for patent by the said John Torrent, and the said principles so patented by the said John Torrent had (by him) been used at the city of Muskegon, aforesaid, by said John Torrent and others.' Upon the trial in the circuit court, Rodgers, to maintain the issue on his part, introduced in evidence the original letters patent, dated August 25, 1868, granted to Esau Torrent for 'a

new and improved machine for rolling saw-logs,' the assignment of said letters patent by the patentee to Rodgers, and the reissued letters patent granted to Rodgers as the assignee of Torrent, applied for June 25, 1873, and issued and dated July 15, 1873.

The specification and claims of the original and reissued patents were both illustrated by the annexed drawings. The original specification is here reproduced, so as to show the changes made in the reissue. The parts in italics are found in the reissue and not in the original, and the parts inclosed in brackets are found in the original and not in the reissue:

'Be it known that I, Esau Torrent, of Muskegon, in the county of Muskegon and state of Michigan, have invented a

new and improved machine for turning [rolling saw] logs; and I do hereby declare that the following is a full, clear, and exact description thereof, which will enable others skilled in the art to which it appertains to make and use the same; reference being had to the accompanying drawings forming [a] part of this specification: 'Fig. 1 is a side view of my improved machine, parts of the frame being broken away to show the construction. Fig. 2 is a detail sectional view of the same taken through the line, x, x, of Fig. 1. Similar letters of reference indicate corresponding parts in the different figures of the drawing. My invention has for its object to furnish an improved device for turning or rolling logs to or upon the carriage of circular or other saw-mills, which shall be simple in construction, effective in operation, and conveniently operated; and it consists in the application for that purpose of a toothed bar connected with means for giving it the necessary movement; and, further, in the construction and combination of the various parts, as hereinafter more fully described. A represents [a part of] the frame-work, and B [represents] the log carriage of a [an ordinary] saw-mill [about the construction of which parts there is nothing new.] C is a [an upright] bar having teeth, c1, attached to its forward side, and which [moves up and down between the posts, D, attached to the frame, A,] has a vertical as well as horizontal movement, controlled by suitable guides. The lower end of the toothed arm, C, is pivoted to and between two blocks, E, which moves up and down in grooves in the inner sides of the posts, D, as shown in Fig. 2, and in dotted lines in Fig. 1. This construction enables the upper end of the [upright] bar, C, to move back and forth to adjust itself to the size of the log to be rolled or turned upon the c rriage, B, and also to enable the teeth, c1, to pass the log when the bar is descending in the inner sides of the posts, D, as shown in Fig. 2, and in dotted lines in Fig. 1. This construction enables the upper end of the [upright] bar, C, to move back and forth to adjust itself to the size of the log to be rolled or turned upon the carriage, B, and also to enable the teeth, c1, to pass the log when the bar is descending. To the rear side of the lower end of the bar, C, is attached, or upon it is formed, a block, arm, or projection, c2, to which is attached the end of the rope or chain, F, by means of which the said [upright] bar, C, is raised to turn the log. This manner of attaching the hoisting chain forces the upper end of the said bar, C, forward, causing the teeth, c1, to take a firm [firmer] hold upon the log to be rolled. The chain or rope, F, passes over a pulley, G, secured in a proper position [immediately] beneath a log deck, H, and thence down to the barrel or drum, I upon [of] the shaft, J, to which one [its] end of it is securely attached. Upon [To] the shaft, J, is also attached the large friction pulley, K, to which motion is given by the small friction pulley, L, secured upon [attached to] the shaft, M, to which shaft is also attached the pulley, N, by means of which motion is communicated to the apparatus from the driving power of the mill. One end of the shaft, M, works in stationary bearings attached to or connected with the frame of the mill, and its other end works in bearings secured upon [attached to] the bridge-tree, O, one end of which is pivoted to the frame, A, and the other [end of which] rests upon the cam, P, of the cam-shaft, Q, so that by means of said cam-shaft the bridge-tree, O, may be raised or lowered to bring the friction-pulley, L, into or remove it from contact with the friction-pulley, K. R is a brake-bar which may be made of wood or other suitable material. One end of this [the] brake-bar [R] is pivoted to the frame, A, or [to] some other suitable support, and its other end is connected with one [the] end of the bridge-tree, O, by the bar, S, so that as the friction-pulley, L, is moved away from the [friction] pulley, K, the brake may be applied to the friction-pulley, K, either to hold the bar, C, stationary, or to allow it to descend with any desired rapidity. To one end of the cam-shaft, Q, is attached a lever or arm, T, having a weight, U, suspended from its end, which may be regulated so as to hold the friction-pulley, L, against the [friction] pulley, K, with any desired force. The lever or arm, T, may be operated to throw the friction-pulley, L, into or out of gear with the friction-pulley, K, by means of levers or cords, as may be desired or found most convenient.

'Having thus described my invention, [what] I claim as new and desire to secure by letters patent [is]--

'1. The toothed-bar herein described, operating substantially in the manner and for the purpose specified.

'[1] 2. The toothed-bar, C, pivoted at its lower end between the blocks, E, which are adapted to slide in vertical grooves formed in the posts, D, whereby the said bar, C, is rendered vertically movable and capable of adjustment to suit logs of different sizes, substantially as herein set forth [and shown.]

'3. The combination [arrangement] of the pivoted brake, R, connection, S, and pivoted bridge-tree, O, [in which is formed the outer bearing for shaft, m,] substantially as herein shown and described, [whereby pulley, L, is removed from contact with pulley, K, and the brake brought into contact with the latter and vice versa simultaneously, as herein set forth.]

'[2] 4. The combination with [and arrangement with relation to] the bar, C, of the cord or chain, F, pulley, G, shaft, J, drum, I, friction-pulleys, K, L, and adjustable shaft, M, [all] substantially as set forth [and shown.]

'[4] 5. The combination [arrangement] of the cam, P, and shaft, [P,], and weighted arm, T, with [relation to] the connected brake and bridge-tree, to operate as and for the purpose described.'

It appeared by the bill of exceptions that the only claim of the reissued patent upon which the plaintiff relied, or which was considered under the instructions of the court to the jury, was the first claim. The plaintiff relied simply upon the infringement of the toothed-bar and its mode of operation. He did not allege infringement of any combination claim, or of the device, or any of its parts, by which the movement of the toothed-bar was produced. The plaintiff also introduced evidence tending to show, as he claimed, infringement by the defendant of the first claim of the reissued patent, and evidence tending to show the damages sustained by him by reason of such infringement. The defendant, to sustain his defenses, introduced in evidence letters patent 'for certain improvements in log-turners' issued to John Torrent, dated August 12, 1873, upon his application therefor filed January 29, 1873. In this patent a wedge-shaped tooth-bar is shown hinged at its lower end to an upright shaft, in order that it might adjust itself in proper position to take hold of a log and roll it to and on the carriage of a saw-mill. The apparatus was shown in combination with inclined ways upon the log-deck, provided with a stop to hold back the logs which lay side by side in a series on the log-deck, and it was intended that the log-turning device should separate the last log in the series from the others, and roll it over from the deck upon the carriage. The first claim of the patent was 'the toothed-bar, the bottom of which is pivoted to an upright reciprocating shaft, as described.' The specification of the patent was illustrated by the annexed drawing:

The defendant then introduced evidence tending to show that the machine the use of which by him was charged by the plaintiff to be an infringement on his reissued letters patent, was constructed according to the patent of John Torrent, just described. The evidence having been closed, the defendant asked the court to charge the jury 'that in view of the pleadings and proof, and the claims and disclaimers of the plaintiff regarding the portion of his patent claimed to be infringed, the jury are instructed to render a verdict for the defendant.' The court refused to give this charge. After receiving the charge of the court upon the case, as presented by the pleadings and evidence, the jury returned a verdict for the plaintiff for $960, on which the court rendered judgment. The writ of error in this case brings up that judgment for review. The refusal of the court to direct the jury to return a verdict for the defendant is, among other things, assigned for error. We think the charge requested should have been given, because, in our opinion, the first claim of the reissued patent, which is the only one that the plaintiff insisted had been infringed, is void.

The testimony showed that it was the practice in saw-mills to 'slab' the logs after they were placed on the carriage; that is, to saw off slabs on two or four sides of the log. To accomplish this it was necessary that the log should be turned on the carriage. An inspection of the drawings and specification of Esau Torrent's original patent shows that his device was for the turning of logs upon their axes when placed upon the carriage of a saw-mill, so that the opposite parts of the log might be successively presented to the saw, and slabs cut therefrom. It was no part of the purpose of the contrivance to roll the log from one place to another, as from one part of the log-deck to another, or from the log-deck to the carriage. On the contrary, the drawing shows that the device was so made as to prevent the rolling of the log from one place to another. This was accomplished by knees considerably higher than the diamether of the log, against which the log was pressed, and which held it in position and formed part of the means by which the log was made to revolve on its axis. When placed in contact with the knees, the log was in the right position to be subjected to the action of the saw. It is not possible with this device to roll the log from one place to another except by raising it, if that could be done, to the top of the knees and tumbling it over them to the other side; and if this were done, it would defeat the object of the invention by moving the log off the carriage and away from the saw.

In the reissue the specification is modified so as to make a radical change, not only in the purpose, but in the mechanism of the invention. In the original patent the invention was declared to be an improved device for turning or rolling logs upon the carriage of a saw-mill. In the reissue the invention was declared to be a device for turning or rolling logs to or upon the carriage. The device, as described in the reissued patent, is adapted, not only to turn logs on their axes, but to roll them from one place to another, as from one part of the log-deck to another, or from the log-deck to and upon the carriage. This requires a change of mechanism. To turn a log when on the carriage without change of its location requires that the toothed-bar should be placed as closely as possible to the side, or within the side of the carriage, and there must be knees to prevent a change in the location of the log. To roll a log to the carriage, or to roll a log from the log-deck upon the carriage, the toothed-bar must be at a distance from the carriage at least as great as the diameter of the log, and the slot in which it works must be extended accordingly, and the knees are not only unnecessary, but would be an obstruction to the operation of the device. The movement of a toothed-bar in turning a log on a carriage against the resistance of the knees is necessarily in the same plane, while the movement of a toothed-bar in rolling a log towards, or upon a carriage is necessarily in constantly changing planes, as the bar follows the changing position of the log. The change of the specification, therefore, includes an omission of the knees, a change in the location of the toothed-bar, a change in its movements, and a change in the effect produced by its movements. The reissue, consequently, covers a different invention from that described in the original patent. It embraces a different machine, intended for different purposes and performing different functions, from that described in the original patent.

When we turn to the claims of the reissued patent we find a corresponding enlargement of the scope of the patent. The claims of the original patent are substantially reproduced in the reissued patent, except that a combination instead of an arrangement of the different parts was claimed. But a new claim is added, namely, the first, which is as follows: 'The toothed-bar herein described operating substantially in the manner and for the purpose described.' Each of the claims of the original patent was for a combination. But the first claim of the reissue covers the toothed-bar operating substantially in the manner described, without reference to the mechanism by which it was moved, segregated from the combination and claimed as a distinct invention of the patentee. The operation of the toothed-bar is enlarged in the first claim of the reissue. In the original patent it was used in connection with the knees set upon the log carriage to prevent the log changing its place, and to aid in giving the log a rotary motion on its axis. In the first claim of the reissue, construed in connection with the changed specification, the toothed-bar may be used with or without the knees. The knees are used when the toothed-bar is employed for revolving the log on its axis, and they are omitted when the toothed-bar is used for rolling the log over and moving it from one place to another. Both the specification and claims of the reissue are enlarged to include an invention not described or included in the original patent.

The application of John Torrent for his patent, d ted August 12, 1873, was filed January 29, 1873. The invention covered by his patent was the alleged infringing machine used by the defendant. After the patent of John Torrent had been applied for, and his invention fully described in his application, and nearly five years after the grant of the original letters patent to Esau Torrent, the latter applied for the reissue with its expanded specification and claims. The reissue was clearly intended to forestall John Torrent's INVENTION AND INCLUDE IT IN THE CLAIMS OF THE REISSUED PATENT OF ESAu Torrent. We find, therefore, that the specification and first claim of the reissue was an enlargement of the claims of the original patent, and covered an invention not covered or described therein; that the reissue was not applied for until nearly five years after the date of the original patent, and not until another inventor had made a substantial advance in the art to which the original patent belonged, which the assignee of the original invention, it may be fairly inferred, desired to include in the monopoly of his patent, and that he sought to accomplish this by its reissue. The first claim of the reissued patent was therefore void. This conclusion is sustained by many decisions of this court, some of which may be found in the following cases: Gill v. Wells, 22 Wall. 1; The Wood Paper Patent, 23 Wall. 568; Powder Co. v. Powder Works, 98 U.S. 126; Ball v. Langles, 102 U.S. 128; James v. Campbell, 104 U.S. 356; Heald v. Rice, Id. 737; Miller v. Brass Co. Id. 350; Johnson v. Railroad co. 105 U.S. 544; Bantz v. Frantz, Id. 160; Wing v. Anthony, 106 U.S. 142; S.C.. 1 SUP. CT. REP. 93. Especial attention is called to three decisions of this court which are peculiarly apposite: Clements v. Odorless Excavating Co. 109 U.S. 641; S.C.. 3 SUP. CT. REP. 525; McMurray v. Mallory, 111 U.S. 97; S.C.. 4 SUP. CT. REP. 375; and Mahn v. Harwood, ante, 174, decided at the present term.

It follows, from the views we have expressed, that the plaintiff below failed to show any cause of action against the defendant. The court should, therefore, have charged the jury, as requested, to return a verdict for the defendant. Its refusal to do so was error, for which the judgment must be reversed, which is accordingly done, and the cause is remanded to the circuit court, with instructions to grant a new trial.


text: Talk:Torrent Arms Lumber Company v. Rodgers/Opinion of the Court


text:
Town of Martinton v. Fairbanks

Robert Doyle, for plaintiff in error.

Thomas S. McClelland and ''Geo. A. Sanders'', for defendant in error.

WOODS, J.

title: Town of Martinton v. Fairbanks


text: Talk:Town of Martinton v. Fairbanks

title: Talk:Town of Martinton v. Fairbanks