Mr. Justice W(5ods,
after stating the case, delivered the opinion of the court.
The appellee-insists that the invention covered by the second claim Of the reissued patent, of which infringements is charged, is neither described in the specification nor claimed in the claim of the original • patent, and that the reissue is therefore broader than the original patent, and consequently void.
It takes but slight comparison of the patents to show that this contention sis well founded. ■ The original patent was for a complicated contrivance, consisting of a number of old devices combined, and specially adapted, to the fastening of metallic coverings to buildings, and for use in .all other places where metals require fastening and their contraction, and expansion require accommodation. To make the invention of any practical value for the purpose' suggested in the specification, .and for use in the “ other places ” referred to, all' the parts of the device therein described, except, perhaps, the rubber cord, which is only for temporary' use in applying the device, are absolutely essential. Nowhere in the specification' is it indicated or suggested- that any part of.the de\ice described can be dispensed with. It is-'perfectly clear, that'the stud and bottom-plate of the contrivance are absolutely necessary to the only specific use mentioned in the specification. If these are left out there is ho connection between the two materials to .be fastened together; namely,.the metal roof and the wooden
sheathing under it. As the declared purpose of- the invention is the fastening of these two materials together, it is difficult to see how the parts of the device essential to the fastening can be discarded, and the invention still remain perfect and unchanged.
On recurring to the second claim of the reissued patent, we find that the metal roof to be .fastened, .the stud, the bottom-plate, and the screw which fastens the metal roof to the stud, are all eliminated from the invention, a,nd there is nothing left but the adjusting-bolt (3) and the slotted side-plate (4 4). As thus left, it is impossible to apply in a practical manner the device to the fastening of sheet-iron to a roof, or the fastening of any sheet metal to anything whatever.
If the second claim of the reissued patent, as insisted by appellants, covers the fish-plate joint used by the appellee, it must cover a combination of (1) the two materials to be fastened together; (2) two slotted- side-plates on opposite sides of the materials to be fastened, which serve as clamps to hold such materials in position ;• (3) the adjusting-bolt. The claim is so interpreted by the expert witness of appellants. Under the original patent the materials or things to be fastened together are the metallic covering of the roof and the. under surface of the wooden sheathing on which it is laid. The slotted plates or flanges are fastened to the under side of the sheathing by the bottom-plate, which connects the flanges, and- they form a support for the adjusting-bolt; but the slotted flanges do :not embrace or clamp any part of the wooden sheathing or. any patt of the metallic covering of the roof, much less do they embrace or clamp at the same time the sheathing and the metallic covering, which are the things to be fastened together. But in the reissued patent the slotted plates not only furnish bearings for the bolt, but perform a new and essential function, of furnishing a strong lateral support to the materials to be fastened together by clamping the same between them.
We find, tbérefoi’e, that in the reissued patent several of the devices essential to the combination described in the original patent are left out and a separate claim made for the parts which remain, and to these parts a new.-and essential function is given, which they could not perform under the original patent.
It is, therefore, perfectly clear that the second claim of the reissued patent was not covered by the original patent.. It describes another device operating in a different way and for a different purpose.
Under tire circumstances of this case there can, in our opinion, be but one conclusion, and that is, that the second claim of .the reissued patent is void.
There was no error in the original patent caused by inadvertence, accident, or mistake^'which could have escaped the notice of the patentee and his associates for fifteen years. It is not open to dispute- that the fish-plate joint, precisely such as the appellants claim is covered by their reissued patent, was in general use during nearly the entire life of the original patent. Why did not the patentee earlier • discover that all this use of the fish-plate joint was. really an infringement on his patent and apply for a reissue and assert his rights ? He has rested supinely until the use qf the fish-plate joint lias become universal, and then, after a lapse of fifteen years, has attempted by a reissue to extend his patent to cover it. We think it is-perfectly clear that the original patent could not be fairly construed to embrace the device used by the appellee, which appellants insist is covered .by their reissue. If the reissued patent covers it, it is broader than the original, and is, therefore, void.
Giant Powder Co.
v.
Cal. Vigorit Powder Co.,
6 Sawyer, 508;
Powder Company
v.
Powder Works,
98 U. S. 126;
Ball
v.
Bangles,
102 id. 128;
James
v.
Campbell,
104 id. 356.
Even if the patentee had the right to a reissue..if applied for in seasonable time, he has lost it by his laches and unreasonable delay.
Miller
v.
Brass Company,
id. 350.
• The defence of want of novelty set up in the answer is, in our-opinion,, also sustained by the evidence. The. testimony shows that the device of employing slotted plates and bolts to allow of expansion and contraction caused by changes in temperature was applied in the manufacture of locomotives long before the year 1843, the earliest date at which Johnson, the original patentee, claims to have conceived his invention. By this contrivance the expansion and contraction of the boiler of the locomotive upon its frame, caused by alternate heating and
cooling, were accommodated. This device was in common use before the year 1843, and it much more nearly resembles the fish-plate joint used for uniting the iron rails of a railroad, than it does the contrivance described in the original patent of Johnson.
Many other instances of the application of the principle of this device prior to the date of Johnson’s original patent are shown by the evidence. Among these were the use by the Newcastle and Frenchtown Railroad Company, in 1837, of iron rails embodying substantially the present fish-plate joint, and the use of the same device by the Oswego and Syracuse Railroad Company in 1848. In the first of these instances but one plate was used for each joint, and there was an oblong hole in one end only of every rail. In the second instance two plates were used to every joint, and the holes in both ends of the plates were oblong.
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Mr. Justice W(5ods,
after stating the case, delivered the opinion of the court.
The appellee-insists that the invention covered by the second claim Of the reissued patent, of which infringements is charged, is neither described in the specification nor claimed in the claim of the original • patent, and that the reissue is therefore broader than the original patent, and consequently void.
It takes but slight comparison of the patents to show that this contention sis well founded. ■ The original patent was for a complicated contrivance, consisting of a number of old devices combined, and specially adapted, to the fastening of metallic coverings to buildings, and for use in .all other places where metals require fastening and their contraction, and expansion require accommodation. To make the invention of any practical value for the purpose' suggested in the specification, .and for use in the “ other places ” referred to, all' the parts of the device therein described, except, perhaps, the rubber cord, which is only for temporary' use in applying the device, are absolutely essential. Nowhere in the specification' is it indicated or suggested- that any part of.the de\ice described can be dispensed with. It is-'perfectly clear, that'the stud and bottom-plate of the contrivance are absolutely necessary to the only specific use mentioned in the specification. If these are left out there is ho connection between the two materials to .be fastened together; namely,.the metal roof and the wooden
sheathing under it. As the declared purpose of- the invention is the fastening of these two materials together, it is difficult to see how the parts of the device essential to the fastening can be discarded, and the invention still remain perfect and unchanged.
On recurring to the second claim of the reissued patent, we find that the metal roof to be .fastened, .the stud, the bottom-plate, and the screw which fastens the metal roof to the stud, are all eliminated from the invention, a,nd there is nothing left but the adjusting-bolt (3) and the slotted side-plate (4 4). As thus left, it is impossible to apply in a practical manner the device to the fastening of sheet-iron to a roof, or the fastening of any sheet metal to anything whatever.
If the second claim of the reissued patent, as insisted by appellants, covers the fish-plate joint used by the appellee, it must cover a combination of (1) the two materials to be fastened together; (2) two slotted- side-plates on opposite sides of the materials to be fastened, which serve as clamps to hold such materials in position ;• (3) the adjusting-bolt. The claim is so interpreted by the expert witness of appellants. Under the original patent the materials or things to be fastened together are the metallic covering of the roof and the. under surface of the wooden sheathing on which it is laid. The slotted plates or flanges are fastened to the under side of the sheathing by the bottom-plate, which connects the flanges, and- they form a support for the adjusting-bolt; but the slotted flanges do :not embrace or clamp any part of the wooden sheathing or. any patt of the metallic covering of the roof, much less do they embrace or clamp at the same time the sheathing and the metallic covering, which are the things to be fastened together. But in the reissued patent the slotted plates not only furnish bearings for the bolt, but perform a new and essential function, of furnishing a strong lateral support to the materials to be fastened together by clamping the same between them.
We find, tbérefoi’e, that in the reissued patent several of the devices essential to the combination described in the original patent are left out and a separate claim made for the parts which remain, and to these parts a new.-and essential function is given, which they could not perform under the original patent.
It is, therefore, perfectly clear that the second claim of the reissued patent was not covered by the original patent.. It describes another device operating in a different way and for a different purpose.
Under tire circumstances of this case there can, in our opinion, be but one conclusion, and that is, that the second claim of .the reissued patent is void.
There was no error in the original patent caused by inadvertence, accident, or mistake^'which could have escaped the notice of the patentee and his associates for fifteen years. It is not open to dispute- that the fish-plate joint, precisely such as the appellants claim is covered by their reissued patent, was in general use during nearly the entire life of the original patent. Why did not the patentee earlier • discover that all this use of the fish-plate joint was. really an infringement on his patent and apply for a reissue and assert his rights ? He has rested supinely until the use qf the fish-plate joint lias become universal, and then, after a lapse of fifteen years, has attempted by a reissue to extend his patent to cover it. We think it is-perfectly clear that the original patent could not be fairly construed to embrace the device used by the appellee, which appellants insist is covered .by their reissue. If the reissued patent covers it, it is broader than the original, and is, therefore, void.
Giant Powder Co.
v.
Cal. Vigorit Powder Co.,
6 Sawyer, 508;
Powder Company
v.
Powder Works,
98 U. S. 126;
Ball
v.
Bangles,
102 id. 128;
James
v.
Campbell,
104 id. 356.
Even if the patentee had the right to a reissue..if applied for in seasonable time, he has lost it by his laches and unreasonable delay.
Miller
v.
Brass Company,
id. 350.
• The defence of want of novelty set up in the answer is, in our-opinion,, also sustained by the evidence. The. testimony shows that the device of employing slotted plates and bolts to allow of expansion and contraction caused by changes in temperature was applied in the manufacture of locomotives long before the year 1843, the earliest date at which Johnson, the original patentee, claims to have conceived his invention. By this contrivance the expansion and contraction of the boiler of the locomotive upon its frame, caused by alternate heating and
cooling, were accommodated. This device was in common use before the year 1843, and it much more nearly resembles the fish-plate joint used for uniting the iron rails of a railroad, than it does the contrivance described in the original patent of Johnson.
Many other instances of the application of the principle of this device prior to the date of Johnson’s original patent are shown by the evidence. Among these were the use by the Newcastle and Frenchtown Railroad Company, in 1837, of iron rails embodying substantially the present fish-plate joint, and the use of the same device by the Oswego and Syracuse Railroad Company in 1848. In the first of these instances but one plate was used for each joint, and there was an oblong hole in one end only of every rail. In the second instance two plates were used to every joint, and the holes in both ends of the plates were oblong.
There are other instances of the use of this device for joining iron rails, which the record discloses. The evidence leaves no doubt upon our minds that the device now used by the appellee and which is alleged to be an infringement on appellants’ patent, was _ well known and publicly used for several years before the application of Johnson for his original patent in 1857.
. An attempt is made to elude the force of the testimony on the question of novelty by introducing evidence to show that Johnson, as early as the year 1843, made a small model of a device similar, as is claimed, to the present fish-plate joint, and also some drawings upon the fly-leaf of a book, of the same contrivance, and these it is claimed show that Johnson was the first inventor of the fish-plate joint, and that his patent, after-wards obtained in 1857, cut off the claims of intermediate inventors, if any such there were.
We have examined the model referred to, and cannot see that it contains any suggestion of the fish-plate joint. It is simply an oblong strip of sheet-iron, having its sides bent over so as to form flanges, and with four oblong holes in each flange corresponding with similar holes in the other, and a bolt to pass through the corresponding holes in the flanges. The model is a single piece of sheet-iron, supposed to represent an
iron rail! There is no suggestion that it is to be connected with any other rail, and there are no plates or bars with which to make the connection. If the model suggests anything, it is simply the use óf a bolt in slotted 'holes, vfrhich, as the testimony in this case shows, was a device in common use in many ways long before' the year 1843.
• It is alleged that the model spoken of was made by Johnson when he was about • twenty years of age. It does not appear that at this time he had ever seen an iron rail such as those to which a fish-plate joint can be applied, or that he had-ever seen a- railroad. According to his testimony the model when finished was placed by him upon the plate under the eaves of a woodhouse, where.it remained unseen by. any one for thirty-three years, until the spring, of 1876, when he returned to the place where he had lived in 1843; and got the model for the purposes of this suit.
It is sufficient to say that the proof fails to show that he, in 1843, or at any time before the fish-plate joint for uniting iron rails came into use, was the inventor of that device, or that he ever invented it at all. It .was not described in his original patent, and he never set up any claim to it until the year 1872, when its use had become universal wherever railroads were constructed. . _ •
On' both grounds, therefore, the invalidity of the reissued patent and wait of novelty in the invention which appellants contend was covered by the original patent, we are of. opinion that the Circuit Court was right in dismissing the bill.
Decree affirmed..