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cannot be limited to the useful construction, by means of any disclaimer; for it is not the office of a disclaimer to reform or to alter the description or claim of an invention.' Its function is to eliminate from letters patent all claims for inventions which were not new with the patentee, and all claims for things which were not inventions with him.'

§ 198. The right to file disclaimers is expressly limited to cases where the actual invention of the patentee is a material and substantial part of the thing patented. Parts of com

binations do not come within this category, for a combination is an entirety; and if one of the elements is given up, the thing claimed disappears. The disclaimer provisions cannot be made to modify and thereby save combination claims, for unless the combination is maintained the whole of the invention fails."

§ 199. The statutes also provide, that in order to save a patent by a disclaimer, the part retained must be definitely distinguishable from the part eliminated. It does not follow, however, that each claim of a patent must be wholly disclaimed, or wholly retained. On the contrary, there are cases where two or more inventions are covered by one claim; and in such cases, a disclaimer may be made to expunge one of those inventions from that claim, without disturbing the others."

In the first of the cases just cited, the claim was: "The forming of packing for pistons or stuffing boxes of steam engines, and for like purposes, out of saturated canvas, so cut that the thread or warp shall run in a diagonal direction from the line or centre of the roll of packing, and rolled into form, either in connection with the india-rubber core, or other elastic material, or without, as herein set forth.” Litigation showed that such a thing, without a core, was

1 Hailes v. Stove Co. 123 U. S. 587, 1887; White v. Mfg. Co. 24 Off. Gaz. 205, 1883.

2 Cartridge Co. v. Cartridge Co. 112 U. S. 642, 1884.

Revised Statutes, Sections 4917

and 4922.

4 Vance v. Campbell, 1 Black. 429, 1861.

5 Tuck v. Bramhill, 6 Blatch. 95, 1868; Taylor v. Archer, 8 Blatch. 318, 1871.

old, and the patentee therefore entered a disclaimer to that part of the claim which covered the packing without the core. Justice BLATCHFORD held that disclaimer to be proper, and to be effectual.

In the second case cited, the claim was, "The use and application of glue, or glue composition, in the tubing, substantially as described, for the purpose of making the flexible tubing gas tight, whether of cloth or rubber or other gum." During the pendency of the suit, and after considerable testimony had been taken, a disclaimer was entered to that part of the claim of the patent which claimed as an improvement in flexible tubing for illuminating gas, the use and application of glue; thereby limiting the claim to the use and application of glue composition in the tubing, substantially as described. This disclaimer was also upheld by the same distinguished chancellor who upheld the disclaimer in the other case.

$ 200. There is one difference between the two disclaimer sections, of the Revised Statutes, which it is now requisite to mention. Section 4917 contemplates disclaimers as being proper whenever a patentee has claimed more than that of which he was the first inventor; while Section 4922 attends only to cases wherein the excess is a material or substantial part of the thing patented. This qualification should be inserted in the two sections, as construed together, because Section 4922 is the only one that prescribes any evil result from a failure to disclaim. Neither section visits any infliction on any patentee, for omitting to disclaim anything which is an immaterial part of the thing patented. If, therefore, a patentee omits to disclaim such a part when he discovers it to have been known before his invention thereof, or learns that it is not an invention at all, he thereby loses no right, and incurs no inconvenience. To file a disclaimer, in such a case, is an act which is at once harmless and unnecessary.

$201. Reissue patents, as well as original patents, are

'Hall v. Wiles, 2 Blatch. 199,1851; Peek v. Frame, 5 Fisher, 212, 1871.

entitled to the benefits of the law relevant to disclaimers; and that too, even where the matter disclaimed was not claimed in the original, but only in a reissue granted upon its surrender.' But no claim which was in an original patent, and is absent from a reissue thereof, can be reclaimed by a disclaimer of the changes made by the reissue. Where an original patent was surrendered, and then reissued in several divisions; that is to say, where several reissue patents were granted for separate inventions described in an original patent, a suit based upon one of those divisions will be unaffected by the fact that a claim in another division, is invalid for want of novelty, or for want of invention. The statute relevant to disclaimers has no application to such cases.'

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§ 202. Fraudulent or deceptive intention, if it existed on the part of a patentee, when claiming materially more than that of which he was the first inventor, or when claiming that which was not patentable, will rightly prevent him from receiving any benefit from a disclaimer. This statutory provision is in harmony with the principles of equity: a system which always declines to extract persons from trouble which arose from their own moral turpitude.

$203. The statement in Section 4917, that under the circumstances therein mentioned, a patentee's patent shall be valid as to all that part of the invention which is truly and justly his own, is to be construed in connection with the provision in Section 4922, that the patentee shall not be entitled to recover in any suit, if he unreasonably neglects or delays to enter a disclaimer. When so construed, the two sections enact that where a patentee claims materially more than that which he was the first to invent, his patent is void, unless he has preserved the right to disclaim the surplus,

'O'Reilly v. Morse, 15 Howard, 62, 1853; Gage v. Herring, 107 U. S. 646, 1882; Yale Lock Co. v. Sargent, 117 U. S. 553, 1886; Schillinger v. Gunther, 17 Blatch. 69, 1879; Tyler v. Galloway, 12 Fed.

Rep. 567, 1882.

2 McMurray v. Mallory, 111 U. S. 109, 1883.

3 Elastic Fabrics Co. v. Smith, 100 U. S. 111, 1879.

and that he may fail to preserve that right, by unreasonable neglect or delay to enter a disclaimer in the Patent Office.

§ 204. Neglect or delay to file a necessary disclaimer, begins when knowledge is brought home to the patentee, that the inventor upon whose account the patent was granted, was not the first inventor of a particular thing claimed in the patent and material to the subject of the patent as a whole.' If, however, there is reasonable ground for difference of opinion relevant to the question whether the prior patent, or the prior process, or the prior thing, so brought home to the knowledge of the patentee, really negatives the novelty of anything claimed by him; then unreasonable delay to file a disclaimer will not begin until that question is finally settled by the courts. Even a still further short delay is not fatal to the right to disclaim; and if the patent has expired when the occasion for a disclaimer is established, no disclaimer can be filed or is necessary. The question whether the delay to enter a disclaimer, in a particular case, was or was not unreasonable, is a mixed question of law and fact, to be decided by the jury in accordance with proper instructions from the court. In the case of Seymour v. McCormick, the Supreme Court, when speaking of the question of the necessity for a disclaimer in that case, and of the question of unreasonable delay in entering one, said: "Under the circumstances, the question is one of law." The peculiar collocation of the paragraph, has caused some courts,' to suppose that the question thus characterized, was the question of delay; but really it must

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'O'Reilly. Morse, 15 Howard, 121, 1853; Singer v. Walmsley, 1 Fisher, 558, 1860; Parker v. Stiles 5 McLean, 44, 1849.

2 Seymour . McCormick, 19 Howard, 106, 1856; Potter v. Whitney, 1 Lowell, 87, 1866; Hill v. Biddle, 27 Fed. Rep. 561, 1886.

Kittle v. Hall, 30 Fed. Rep. 39, 1887.

4 Yale Lock Co. v. Sargent, 117

U. S. 553, 1885.

5 Brooks . Jenkins, 3 McLean, 449, 1844; Washburn e. Gould, 3 Story, 122, 1844; Burden v. Corning, 2 Fisher, 477, 1864.

6

Seymour v. McCormick, 19 Howard, 106, 1856.

Singer v. Walmsley, Fisher, 558, 1860; Parker v. Stiles, 5 McLean, 44, 1849.

have been the question of necessity. The latter depended wholly upon the construction of the patent, and was therefore a question of law. Whether or not a particular instance of delay was unreasonable, must largely depend upon the circumstances which surrounded the person chargeable therewith. What those circumstances were is a question of fact. Whether they constituted an excuse for the delay, is a question of law. Whether or not a particular instance of delay to enter a necessary disclaimer, was unreasonable, is therefore a mixed question of law and of fact.

§ 205. No costs can be recovered in any infringement suit, the final decision of which shows a necessity for a disclaimer, unless such a disclaimer was entered in the Patent Office before the commencement of the suit.' This rule applies even to cases where the delay to enter the disclaimer was not unreasonable.' But a verdict on all the

claims of a patent, entitles the plaintiff to costs, even if, after that verdict, he files a disclaimer to one or more of the claims of that patent."

Judge LOWELL has said that where a plaintiff sues on a part of the claims of his patent only, the defendant will not be permitted to raise any issue relevant to the validity of any other claim, with intent to show a necessity for a disclaimer, and thus to escape costs. His Honor based this opinion on the fact that more expense might be incurred in litigating such a collateral issue, than would be justified by the amount of the costs depending upon its decision. But general rules of law can hardly be based on considerations of what is expedient in a part only of the cases to which those rules purport to apply. It may happen that the costs involved in a particular litigation are large, while the expense involved in proving a necessity for a disclaimer of

1 Revised Statutes, Section 4922; Reed v. Cutter, 1 Story, 591, 1841; Burdett v. Estey, 5 Bann. & Ard. 309, 1880; Proctor v. Brill, 16 Fed. Rep. 791, 1883.

2 O'Reilly v. Morse, 15 Howard,

121, 1853; Yale Lock Co. v. Sargent, 117 U. S. 553, 1885.

3 Peek v. Frame, 5 Fisher, 212, 1871.

American Bell Telephone Co. v. Spencer, 8 Fed. Rep. 512, 1881.

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