Supreme Court of United States.
*426 Mr. George Harding and Mr. William A. Macleod for the appellant.
Mr. Chauncey Smith and Mr. Thomas L. Wakefield for the appellees.
MR. JUSTICE WOODS delivered the opinion of the court, and, after stating the case, proceeded as follows:
The evidence leaves no doubt in our minds that the first claim of Moffitt's reissued patent is broader than any claim of his original patent. The original patent covered an elongated heel-shaped former, set eccentrically upon its shaft. This was an essential part of the invention described in the original patent. The specification declares: "I use a `former,' A, of a shape adapted to give the desired shape to the counter, and set eccentrically on the shaft B." The "former" shown by the drawings is elongated and heel-shaped in cross-section. The specification further declares: "The `former,' as will be seen, projects further from its axis on one side than on the other, so as to conform nearly to the general form of the curves of the inside of the shaped counter. This gives a rolling *427 action in addition to the squeezing over the whole body of the counter."
The specification of the reissued patent omits both of these statements, and thus allows a "former" to be made, if desired, with a circular cross-section, and to be set concentrically on its shaft. It is, therefore, clear that it covers a contrivance essentially different from that described in the original specification and claim.
The first claim of Moffitt's reissued patent differs materially from the specification and first claim of the original patent in another particular. The original specification thus describes the means by which the blank stock is pressed against the "former:" "Beneath the former I place a roller, C, having a profile, as shown, the converse of and conforming to that of the former, the shaft of the roller having its bearings in the main frame, D." It is also stated that "instead of a single roll a pair of auxiliary rolls may be used, as in Fig. 4, one on each side of the single one." In the first claim of the reissued patent the device of one or three rolls is expanded to cover "any mechanism for holding and shaping the blank over" the "former."
It, therefore, appears that the specification and first claim of the original patent were intended to cover an elongated heel-shaped former, eccentrically set upon its shaft, against which the material of which the counter was to be made was pressed by a revolving roller or rollers, and that the first claim of the reissued patent was expanded so that it might cover a `former' circular in cross-section, concentrically set, and revolving in the semi-circular groove of a stationary mould, by which the material was pressed against the former.
The difference between the device covered by the specification and first claim of the original patent, and the device which might be embraced by the specification and first claim of the reissued patent, is essential and palpable.
If the evidence proves any infringement, it is of the first claim only of the complainant's reissued letters-patent by the use of the machine covered by the patent granted to Louis Coté June 2, 1874.
The purpose of the complainant to cover by his reissued *428 patent the invention described in the Coté patent is clear and is not denied. It is evident that the Coté machine does not infringe the original patent of Moffitt. The "former" described in the original specification of Moffitt being elongated in cross-section and eccentrically set upon its shaft, could not have either a rotating or reciprocating movement in the semi-circular grooved mould of the Coté patent, and by no stretch of construction could the stationary grooved mould of the latter patent be considered the equivalent of the cylindrical revolving rollers of Moffitt's original patent.
The specification and first claim of the reissued patent are a plain attempt to include a device which was not and could not be fairly covered by the original patent. That claim is, therefore, for that reason void. Gill v. Wells, 22 Wall. 1; The Wood Paper Patent, 23 id. 566; Powder Company v. Powder Works, 98 U.S. 126; Ball v. Langles, 102 id. 128; Miller v. Brass Company, 104 id. 350; James v. Campbell, id. 356; Heald v. Rice, id. 737; Bantz v. Frantz, 105 id. 160; Johnson v. Railroad Company, id. 539. And the evidence shows no infringement of any other claim of the reissued patent.
The decree of the Circuit Court dismissing the bill was therefore right, and must be
Affirmed.
