Morris v. Royer. abutments or clamps to prevent or regulate end expansion, and levers, or handles, or their equivalents, to guide the bending, substantially as described. "II. A stationary or poised wood-bending form in combination with the cords, levers, and drum, or their equivalents, and the eccentric clamp, or its equivalent, in the manner and for the purpose set forth. "III. In combination with the stationary form, levers, and abutments, I claim the employment of hooks, or hooks and pins, or their equivalents, that shall embrace the ends of the wood, to restrain the wood in shape, and permit the removal of the abutments after the completion of each operation." S. S. Fisher, for complainant. George M. Lee, for defendants. OPINION OF THE COURT: This is a bill in equity, charging, in the usual form, that the defendants have infringed the exclusive right of the complainant to certain improvements in a machine for bending wood, originally patented to him March 11, 1856, and for which he obtained a reissued patent dated May 27, 1862. The bill prays for an injunction and an account of profits. In their answer, the defendants allege, as grounds of defense: first, that the reissued patent is fraudulent and void, as not being for the same invention claimed in the original patent; second, that complainant's patent is void for want of novelty in the invention; third, that defendants have not infringed the complainant's right under his patent. I. As to the first ground of defense, namely, the invalidity of the reissued patent to the complainant, it is not alleged or claimed that there was actual fraud in obtaining it; but it is insisted that it is constructively fraudulent, as being an unwarranted modification or enlargement of the Morris v. Royer. claim of the original patent. The argument is that the original patent provided only for fixed fulcrums for the levers used in the operation of wood bending; whereas, in the reissue, he provides for bending, not only by levers on fixed fulcrums, but also by straps connecting the ends of the levers, and bending the wood without fixed fulcrums. But a reference to the original patent will show clearly that both methods were in the contemplation of the invention, as suited to effect the object of his invention. He refers distinctly to the use of levers "for bringing the piece to the required shape, by connecting the levers with a strap at each end; the strap being placed at the back of the piece required to be bent, and then drawing the ends of the levers together, which bends the piece around the form." In the specification of the reissued patent, after referring to the patented machine as belonging to the class "in which the form or mold is first applied at or near the center of the piece to be bent, and the bending process is continued from that point toward each end, which I call bending outward," and describing minutely the devices by which the work may be effected by levers with fixed fulcrums, he says: "Another mode of using the handles (or levers) is to dispense with the fulcrum pins, so that in the operation of bending, while power is applied as before to the end of the handle, and the resistance is the unbent wood, the point of support is no longer fixed but shifting, being found in the bending strap, or point of contact of the strap and wood with the mold." And this, he adds, "was the method originally used by me." But without further reference to the claims and specifications of the two patents, in reference to the question whether the reissue is a departure from the original patent, in claiming the machine without the fixed fulcrums, I will refer briefly to the evidence, which is conclusive on this point. And it may be remarked here that the identity of the invention claimed in the original patent and that claimed in the reissued patent, is a question to be decided Morris v. Royer. by the evidence. If the case is at law, it is for the jury; if in chancery, for the court, as the facts proved may require. Now, Mr. Clough, an expert witness for the complainant, in answer to an interrogatory put to him as to the claims of the original and reissued patents, says: “The description of the apparatus described by Morris (referring to the original patent) is the same, and refers to the same drawings as are contained in the reissued letters patent." And in answer to another question, this witness says: “He (Morris) describes various modes of bending, including a mode in which the levers are not used on fixed fulcrums, but does not claim any mode except those in which fixed fulcrums to the levers are used. The same witness, in another part of his deposition, says: "In one mode described in Morris' specification, he dispenses with the fulcrum pin, so that the point of resistance is no longer fixed, but shifts in the bending strap or wood." It is clear, then, as well by a comparison of the complainant's original and reissued patent, as by the testimony of the expert referred to, there is no such departure from, or expansion of, his invention as described in the original patent, as will invalidate the reissue on the ground of a constructive fraud. The complainant plainly describes the use of his bending machine without a fixed fulcrum, in his original specification, though he does not claim it as a part of his invention. In applying for a reissue, he distinctly claims this method of wood bending as a part of the combinations included in his patent. This he had an unquestioned right to do. The authorities on this point are numerous and explicit. O'Reilly v. Morse, 15 How. 112; Battin v. Taggart, 17 How. 83. It is hardly necessary to add that the law is well settled by numerous adjudications, that there is always a strong legal presumption that a reissued patent is for the same invention described in the specification of the original patent. This presumption arises from the fact that upon the surrender of the original patent, and an application for a Morris v. Royer. reissued patent with an amended specification, it is the duty of the Commissioner of Patents to see that the reissue is for the same invention described in the original patent, or if any part is not described, or inadvertently omitted, that, in fact, it was a part of the invention of the patentee. And in the latter case it is competent for the commissioner to receive testimony, and, on satisfactory proof, to treat it as a part of the invention, which may be properly claimed in the reissued patent. 3 Story, 744; 2 Wood. & Min. 138; 15 How. 112. And it also seems to be well settled that the action of the Commissioner of Patents, in granting a reissue, can not be questioned or impeached, unless on the ground of actual fraud in obtaining it, a palpable incongruity between the original and reissued patent, or an excess of authority on the part of the commissioner. 17 How. 84; Law's Dig. 617, secs. 2-8. The exception to the complainant's reissued patent, on the ground of fraud, can not therefore be sustained. II. The objection to the complainant's claim in this suit, on the ground of the want of novelty in his patented invention, will now be briefly noticed. Evidence has been adduced by the defendant to prove the existence of several wood-bending machines, anterior to the date of the patent to the complainant, and which, it is insisted, embody all the elements of the several combinations claimed in his reissue. Models of several of these machines have been exhibited for the inspection of the court, and are referred to in the testimony of the experts. Among others, a patent to Thomas Blanchard, dated December 18, 1849, and reissued to him November 15, 1859, for a wood-bending machine, is relied on as anticipating the invention patented to the complainant, Morris. I do not propose to describe the several machines relied on by the defendants to impeach the novelty of the complainant's combination. Whether they are substantially identical with the latter, is a question of fact to be decided according to the evidence. And on this point, the testimony of several learned and reliable experts has Morris v. Royer. been taken, which is remarkably harmonious and entirely satisfactory to the court. It is not necessary to refer minutely to the description of the complainant's machine, as set forth in his specification. It will be sufficient to refer to the first and third claims of his reissued patent, in order to a correct understanding of the testimony of the experts. No infringement of the second claim being alleged by the complainant, it is not necessary to refer to it. The complainant, after describing his improvements, disclaims any connection with machines for bending wood by a rotating form. He claims: 1. "A wood-bending form, to which timbers are made to conform by bending them from the center or inner end of the desired curve outward, when used in combination with abutments or clamps to prevent or regulate end expansion, and levers or handles, or their equivalents, to guide the bending, substantially as described." 3. "In combination with the stationary form, levers, and abutments, I claim the employment of hooks, or hooks and pins, or their equivalents, that shall embrace the ends of the wood, to restrain the wood in shape, and permit the removal of the abutments after the completion of each operation." The first of these claims is for the combination of a stationary form, to which the wood is made to conform by bending from the center outward, with abutments and clamps to prevent or regulate end expansion, and levers or their equivalents to guide the bending. The third claim is a combination of the parts described in the first claim, with the addition of hooks, or hooks and pins, or their equivalents. The witness, Renwick, an expert, examined by the complainant in reference to the Blanchard patent, says: "That the improvements specified in the reissued letters patent to John C. Morris are not anticipated by anything that is described or specified in the said Blanchard patent; but, on |