Bechman v. Wood

15 App. D.C. 484, 1899 U.S. App. LEXIS 3533

• Court: Court of Appeals for the D.C. Circuit
• Decided: April 4, 1899
• Docket: No. 120
• Status: Published

Opinion

Mr. Justice Morris

delivered the opinion of the Court:

A motion or petition for rehearing was filed in this cause and a rehearing on printed briefs was allowed. Briefs have been filed both on behalf of the parties to the interference and on behalf of the Patent Office, which regarded some of its rules of practice as being seriously affected by our decision in the case, and likewise by other counsel as amicus curise in view of other suits in which the same questions as in this are supposed to be involved. But we fail to find from a careful examination of the arguments submitted, and a full reconsideration of the whole subject matter, any reason to induce us greatly, if at all, to modify our former opinion. The scope and meaning of that opinion, however, seem to have been somewhat misunderstood; and consequently it is proper that we should consider some of the arguments advanced in opposition to the positions supposed to be taken in it, and restate those positions with greater distinctness, if further statement be needed.

In the first place, it is argued, both on behalf of the appellee and of the Patent Office, that our decision tends to overthrow a long-established practice of the Office, and greatly to restrict the right of amendment. The practice in question is thus stated in the brief of the counsel for the Commissioner:

“It has been the long established practice of the Office, in declaring an interference between two or more applications showing distinct and independent species of the same class of inventions, where only one of the applications contained a generic claim which dominated the specific claims of the other application, to make the generic claim the issue of the interference, and to put the specific claims under the broad issue.”

And it is also argued, that our former opinion, in declaring, as it is assumed to have done, that there was no interference in fact between the parties, exceeded the jurisdiction of the court, which is claimed to be restricted in interference cases to the determination of the single question of priority of invention.

We think that in both of these propositions there is great misapprehension of the purport of our opinion and decision.

The right of amendment is allowed to a very great extent in the Patent Office. Amendment of applications is not only permitted, but even encouraged and suggested by the examiners; and this is very properly done, since the proceedings are in great measure ex parte, and it is' exceedingly desirable that patents should go out only for those things which the applicants therefor have actually discovered or invented, and of the true extent of which they themselves have not always in the first instance an adequate appreciation. We have no desire to interfere in any manner with that liberal and beneficent policy, to question its propriety, or to restrict its application. But there is a very great difference between the allowance of amendment and the effect of amendment when allowed. Liberality of amendment within reasonable limits is now also the rule in courts of law; but such liberality of amendment is never permitted to contravene existing or intervening rights, or to override the settled principles of law.

It is not unusual, for example, when no sufficient cause of action has been stated in a declaration, and a demurrer to it has for that reason been sustained, to allow such amendment as would state a good and sufficient cause of action. Nor is it unusual in suits on account to allow amendment by the addition of new items to the bill of particulars or new counts to the declaration. But it is the well established rule of law, that, when such amendments are made, defenses — such, for instance, as that of the Statute of Limitations — might be intei’posed to them with effect, which might xxot have been sustained to the original declaration, if such defenses had accrued in the meantime. And yet it can not reasoxxably be said that the right of amendment is restxdcted or unduly impaired because the amendment when made is open to a new defense which was not available before.

We do ixot questiorx the propriety of the practice, prevalent in the Patent Office, according to the statement of the counsel for the Commissioner', of permitting applicants for patents for narrow claims and specific devices, subsequently to broaden their applications so as to present broad or generic claims for their inventions. Certainly the first inventor of a specific device to accomplish a certain purpose has the right to advance a broad claim for his invention that would cover all similar or equivalent devices; and yet through misapprehension of the extent of his discovery, he may, in the first instance at least, have confined himself to the narrow or restricted claim of his special device. Possibly the man who invented the first printing machine might have claimed the whole art of printing for his invention, and covered under his claim all subsequently devised printing machines. To the claimant, who is entitled to make the claim, it is proper, through the process of amendment in the Office, so to broaden his claims as to seek protection for his real discovery to its fullest extent.

But another and a very different question is presented when other rights have intervened and accrued. When an applicant for a patent has ■ restricted himself in the first instance to a narrow claim of a specific device to effect a certain result, and subsequently another applicant comes into the Office with another narrow claim for another specific device to effect the same result, and thereafter the first applicant broadens his claim into a generic one so as to cover and dominate all special devices to effect such result, assuming that their specific devices ■ have actually been invented in the order of their application to the Office, all the amendment in the world and the utmost liberality of amendment will not justify the destruction of the right of the second applicant to his own specific device. And, of course, the fact that the second applicant may have been the first to make the broad generic claim, and that the first applicant then broadened his claim into generic proportions, can not affect this conclusion. This is what happened in the present case.

Now, it was right and proper for the second applicant to make the broad claim; it was right and proper for the first applicant thereupon to broaden his own so as to present the same generic claim; and it was eminently right and proper that the parties should then be declared by the Office to be in interference. It would have been right and proper to declare an interference, even though the first should not have broadened his claim at all; for in the present instance, the second applicant, by advancing the broad claim, would have dominated the special claim of the first applicant; and á declaration of interference was therefore unavoidable. So far from holding that there was no interference in fact between the parties, we can not see how the Office could have failed to declare an interference on the broad claim. It was on the broad claim alone that the interference was declared. The narrow claims are not put into the interference, except in so far as the narrow claim of each party is dominated by the broad claim of the other. In the absence of the broad claim, it may be assumed that there is no interference on the narrow claims; and none has been declared.

We consider, therefore, that on the broad claim of the issue the parties were properly declared in interference. At the time of the declaration, of course, the facts were unknown. It might be that the second applicant might be shown to have been the first and original inventor of any device; that the first applicant, even if he was the first to invent, might have lost his right by laches; that the first applicant might have taken the invention from the second; or any of the numerous conditions might be shown which are usual in cases of interference. But a peculiar condition of things was manifested by the testimony and the development of the cause. The first applicant was found to be the true first and original inventor of his own special device, and apparently the first inventor of any device of the kind. The second applicant was likewise found to be the true first and original inventor of the special device stated in his application. But, this being the order of invention, the second applicant could not, under any principle of law or any theory of justice, be allowed the broad claim which would have dominated the invention of his predecessor in the field; and neither could that predecessor be allowed the broad claim, for the reason that he had not advanced it before the arrival of the other party on the field of invention. By making only the narrow claim for a special device in the first instance he left the field open for all who would make other different devices to accomplish the same purpose; and it would not be right and just that he should, after the invention of such- another device by another person, be permitted to go back and broaden his claims so as to sweep this second device within the scope of his own original application, even though the broad claim might properly have been advanced in the beginning, and even though, under other circumstances, he might have effectively broad-. ened his claim in the course of the prosecution of the application and procured or entitled himself to a patent for such broad claim.

The case is somewhat analogous to one of laches. One, who has conceived an invention, may delay as long as he pleases to reduce it into practice — even ten, twenty, thirty years; but he does so at the risk that some one else may enter the field of invention and by an earlier reduction to practice nullify the effect of the earlier conception. So, if an inventor comes to the Patent Office with an application, in which he first restricts himself to a narrow claim for a specific device, but which he is entitled, by the process of amendment, to broaden into a generic claim, and if he does in fact so broaden it, he may entitle himself to a patent for the broad claim, unless in the meantime the right of some other person has accrued to some other narrow claim for a similar device to effect the same purpose, which would be dominated by the broader claim of the first applicant.

The question, it seems to us, is not one of the right of amendment, but of the effect of amendment upon intervening right. We do not think that it is just that rights, ■ which have previously accrued, should be overthrown by amendments subsequently made. And this we understand to be the positive decision of the Supreme Court of the United States in the case of Railroad Co. v. Sayles, 97 U. S. 554. In that case it was said, as we have already cited it, that “the law does not permit such enlargements of an original specification, which would interfere with other inventors who have entered the field in the meantime, any more than it does in the case of reissues of patents previously granted.”

That case- is precisely in point. Tt was, it is true, a suit for infringement; but it deals specifically with this question of the enlargement of an original application by subsequent amendment, and it was upon this point that the law was laid down, as stated. We are bound by that statement of the law, and it is not open to us to disregard it. As said by Mr. Justice Bradley in that case, the principle is precisely the same as in reissue cases, in which it has repeatedly been held that the patentee is not entitled to broaden his claim so as to include in it the inventions of others made subsequently to the grant of his patent. Newton v. Furst & Co., 119 U. S. 373; White v. Dunbar, 119 U. S. 47; Brown v. Davis, 116 U. S. 237; Miller v. Brass Co., 104 U. S. 350. See, also, Topliff v. Topliff, 145 U. S. 156, and Powder Co. v. Powder Works, 98 U. S. 126.

What we have decided, therefore, and what we here reiterate, is — not that it was not competent for the appellee, or for either or both parties,To amend their several claims to the most liberal extent — not that there was no interference in fact between the parties upon the broad claim constituting the issue in this case, for there was interference in fact — not that there should have been no declaration of interference in the case, for we do not see how such declaration could have been avoided — not that either or both parties were not entitled to make the broad claim, for both were entitled to make it and to come to an issue upon it— but that, under the special circumstances of the case, as developed by the proof, neither party was entitled to prevail against the other on that broad claim, the first applicant being estopped from setting it up against the second applicant in consequence of the intervening right of the latter to his own special device, and the second applicant being precluded from having the benefit of it by reason of the fact that he was not the first in the field of invention.

But it is objected that in interference cases the power of this court is strictly limited to the determination of the question of priority of invention as between the parties to the interference, and that neither the question of patent-ability of the invention nor the propriety of the declaration of interference is open for consideration. As a general proposition, this is certainly correct, and we have repeatedly so held. Hisey v. Peters, 6 App. D. C. 68; Doyle v. McRoberts, 10 App. D. C. 445; Foster v. Antisdel, 14 App. D. C. 552. Nor have we, any reason for departure from that proposition here.

The patentability of the invention in controversy has nowhere been questioned ; and the propriety of the declaration of interference has distinctly been affirmed. In our former opinion there was reference, perhaps unnecessary, to the fact that there was no interference in fact between the two special devices of the parties; nor, in the absence of the broad claim, is there any interference in fact now claimed to exist between these two special devices. Only the broad claim has been put into the issue. The narrow claims are not to be found in it, except, as we have said, in so far as the broad claim dominates both of them. Whatever may have been said in regard to the want of interference in fact between the parties is to be confined to the matter of these two special devices, with reference to which no interference has been declared. Indeed, we understand that separate patents have been, or will be, granted to the parties for these several special deyices.

But our conclusion that neither party here is entitled to a judgment of priority for the broad claim of the issue is not antagonistic to the theory that in interference cases only the question of priority of invention can properly be considered. A judgment of priority of invention is the usual preliminary in interference cases to the issue of a patent to the successful contestant. But when the testimony develops the fact that neither party is the first inventor of the device in controversy, how can the court, with any propriety, adjudge priority to either ?

Let us suppose that A and B are rival inventors; that their applications for the same identical invention are pending in the Patent Office at the same time; that A was the first in the order of time to make application; that it was shown by the testimony that B was in fact an independent inventor of the device, but that A had undoubtedly and beyond all question anticipated him in the possession of the invention; and yet that A, on cross-examination, was compelled to admit that the invention was not his, but that he had appropriated it in its entirety from another person, other than B. Now, B in this case could not have judgment of priority of invention; for it would have been shown conclusively that A, or some one else, had anticipated him in the invention; and, most undoubtedly, A could not have such judgment in his favor, in view of his confession that he had not made the invention at all, but had stolen it. A court certainly should not be expected in such a case as that to commit the manifest absurdity of adjudging priority of invention in favor of a person who confessed himself not to be in any manner entitled to the invention.

That, of course, would be an extreme and exceptional case. ' But it would not differ in principle from the case now under consideration. Here, if either of the two parties is entitled to the broad claim of the issue, it is the appellee. But if the record shows, as we hold that it does, that he is now estopped from setting it up, which, while it operates against him, does not operate to transfer the right to his opponent, he is now necessarily precluded from having a judgment in his favor for priority of invention. The case, of course, is peculiar;' and it is the peculiar attitude of -the parties towards each other which leads to the unusual result. But, in our opinion, the same conclusion would necessarily follow in any similar case.

It is argued, further, that the appellee did not for the first time set up the broad claim after the intervention of the appellant and the application of the latter for a patent therefor; and that we were mistaken in so holding. It is urged that the equivalent of the broad claim appears among the canceled claims of Wood’s original application. Now, if this were the fact, it might well be that all the present discussion would have been unnecessary, and Wood would be entitled to a patent for the broad claim. But we do not so understand the case; nor was it so understood in the Patent Office. Apart from the question whether canceled and abandoned claims can be regarded as pending so far as to preclude all subsequent claimants from advancing the same claims, and so far as to give vitality to subsequent claims of the same party, in regard to which we need not here express an opinion, we do not think that claim three of the appellee’s original specification, to which we are referred, is the equivalent of the broad claim of the issue. That claim three is as follows :

“The combination in a printing press of two form beds, a traveling impression cylinder coacting with each of said, form beds, a double set of tapes passing around said impression cylinders and forming a taped pathway, and means for intermittently drawing said tapes forward relatively to the form beds when the impression cylinders are out of impression, substantially as described.”

The broad claim of the issue, which it may be proper here to reproduce, is this :

“ In a printing press the combination of a pair of parallel beds, a pair of impression cylinders, means for reciprocating the cylinders respectively over the beds, and mechanism independent of the cylinders for transferring sheets from one impression cylinder to the other.”

It has been held by the tribunals of the Patent Office, and we understand it to be conceded, that the patentable feature of the invention is the “ mechanism independent of the cylinders for transferring sheets from one impression cylinder to the other,” all the other features being old and well known in the art. This in the issue is a generic claim; but in our opinion the original claim three of the appellee’s specification is plainly specific. It is by express terms restricted to a special transferring mechanism consisting of a pathway of tapes.

We adhere to our conclusion that the appellee did not advance the broad claim of the issue until after the appellant had filed his application therefor ; and therefore he is not entitled to any judgment of priority for such broad claim. And we repeat our former opinion that neither party is entitled to a judgment of priority of invention orto a patent for the broad issue.

The clerk of the court will certify this opinion and the proceedings in this court to the Commissioner of Patents according to law.