[United States Circuit Court-Southern District of New York.] MACAULEY V. THE WHITE SEWING MACHINE COMPANY ET AL. Decided September 20, 1881. 21 O. G., 204. SUSPENSION OF INJUNCTION-AFFIDAVIT. Motion for a further suspension of the issuance of an injunction denied for the insufficiency of the affidavit. Mr. C. W. Betts for the plaintiff. Mr. S. A. Duncan for the defendants. BLATCHFORD, J.: The issuing of the injunction was suspended for two months, "with a view to enable the defendants either to change their machinery or to obtain a license from the complainant under said letters patent." The affidavit for this motion sets forth only that the officers of the company have been endeavoring to change the machine of the company so as to avoid infringement, and to that end have tried several different forms of mechanisin; that no one of such forms has proved so reliable as to warrant its adoption, and that they are in good faith making further experiments to accomplish said result. There is no suggestion by affidavit that there is any probability of success. As to the license-fee offered to be deposited in respect of future machines, I am not satisfied that it is a proper and adequate fee, even if, on other grounds, the relief asked were proper. The motion as made is denied. [United States Circuit Court-Northern District of Illinois.] EDGARTON ET AL. v. THE FURST & BRADLEY MANUFACTURING COMPANY ET AL. When the record is substantially the same as that in a prior case the rule of comity prevails and the findings of the court will be followed; but when the defenses and proofs are not the same the rule does not apply. 2. DISCLAIMER-ADMISSION OF COMMON USE AMOUNTS TO. The statement in an original specification that certain prescribed parts or combinations of parts are in quite common use" amounts to a disclaimer, and is a statement of fact which prevents the reclaiming of such parts by a reissue. 3. MECHANICAL TERMS-CERTAIN NOT SYNONYMOUS. In a limited state of the art "mounted on" is not the same as "suspended from." 4. COMBINATION-PARTS DISCONNECTED AND INOPERATIVE DO NOT CONSTITUTE VALID. Parts wholly disconnected from each other and from the machine, and which are inoperative for any purpose as enumerated in the combination claimed, do not constitute a valid combination. 5. SAME-CERTAIN COMBINATIONS VOID FOR UNCERTAINTY. A combination claim naming two independent sets of devices used for producing different operations or results, and containing the words "or either, in relation to each other" and to auother part not affected by either of them, is void for uncertainty. 6. REISSUE Patent No. 2,994 DECLARED Void. Whitcomb's Reissue Patent No. 2,994, for an improvement in horse hay-rakes, is void, because the improvement claimed had been in public use for more than two years prior to the original application for a patent. Mr. Thomas H. Dodge for the complainants. BLODGETT, J.: These two suits are for infringement of letters patent issued on the 5th day of October, 1858, to George Whitcomb, for an improvement in horse hay-rakes. The patent was reissued June 16, 1868, in two parts, as Reissues Nos. 2,994 and 2,995, and on the 5th of October, 1872, was extended for a further term of seven years. The first suit is brought by the owners of the original term and the second by the owners of the extended term. The defenses set up are, first, the invalidity of the reissued claims involved in this suit; second, that the devices covered by the reissued patent were in public use, with the knowledge or consent of the patentee, for more than two years prior to his application for this patent, and also that they were publicly known and used by others for more than that time; third, that the improvements in question are anticipated by the older art; and, fourth, that the defendants do not infringe. The patent in question has reference to what are known as wire-tooth horse hay-rakes, and the claims of the patent alleged to be infringed by the defendants are the second and fourth of Reissue No. 2,994, which are as follows: 2. The combination and relative arrangement of the hinged rake-head with the supporting-axle and carrying-wheels, substantially as shown and described, whereby the head is supported above the rear upper edge of thea xle, as shown, aud the lower end of the teeth, when gathering the hay, occupy positions in rear of the tread of the wheels and forward of a vertical plane on a line with the rear edge of the wheels, substantially as shown in the accompanying drawings. 4. The arrangement of the rake-head E and foot-treadles H J and G K, or either, in relation to each other and the axle B, substantially as and for the purposes set forth. In his specifications, forming part of the original patent, the patentee inserted a disclaimer, as follows: I do not claim the wire teeth F, attached to the head E, as shown, for such device mounted on wheels is in quite common use. This disclaimer is wholly omitted from the reissued patent, and the only claim in the original patent was The arrangement of the treadle J K, lever I, rake-head E, arms G K, bar F, joint C, and adjustable rope L, substantially as and for the purposes set forth. This patent was before the United States Circut Court of Massachusetts in June, 1872, in the case of Brown v. Whittemore et al. (5 Fish., 524), Mr. Justice Clifford and Judge, Lowell presiding, and the two claims now in question were sustained under the facts in that case, and it was again before the same court, Judge Lowell presiding, in December, 1879, in the case of Edgarton et al. v. Beck et al., and the fourth claim sustained under the facts in that case. In the first of these cases the court said: The record does not contain a copy of the original patent, and there is no evidence of what changes, if any, are found in the reissue. In the absence of such evidence we must, of course, assume that the action of the Patent Office was well warranted by the facts, and that the reissued patent is open to only such objections as might have been raised to the original patent. In Brown v. Whittemore the second point made in this case seems to have been urged, and the court said: Upon a very careful examination of the evidence we are of opinion that the combinations of the second and fourth claims were not only invented by Whitcomb, but that they had not been publicly used or sold with his consent before the time in question. * * And though the evidence is not all on one side, yet the preponderance of it is that the combination of the treadle for raising the rake-head with the other devices was not fully discovered and used before June, 1853. In Edgarton et al. v. Beck the contest seems to have been mainly over the questions of novelty and infringement; but the proofs in Brown v. Whittemore on the question of prior use and sale with the consent of the patentee and in Edgarton v. Beck on the question of novelty do not seem to have been the same as in the cases now before the court, and the original patent is before this court, which was not before the court in the Whittemore case. Of course, if the testimony in these cases was substantially the same as that in the cases heretofore decided by the learned judges in the Massachusetts circuit court, I should feel wholly bound by their decisions and the construction of the patent given by them; but as it is evident from the inspection of this record that I have a different combination of facts to deal with from what has been heretofore presented, I must consider these cases in the light of their own evidence. The first objection to the second claim is that it comes within the disclaimer of the original patent: I do not claim the wire teeth F, attached to the head E, as shown, for such a device mounted on wheels is in quite common use. What is it that Whitcomb here disclaims? My own construction is that it is the rake-head E, mounted on wheels, as described in his specification and shown in his drawing, and this rake-head and mode of mounting it is described in his original specifications in the following language: The back end of the shafts or thills C C extend a trifle back of the axle B, and to the back end of the thills, beyond the back part of the axle, a rake-head, E, is connected by joints or hinges C, the hinges being at the under side of the rake-head, as shown clearly in Fig. 1, so that the head may work thereon as a fulcrum. Figure 1 in the drawing of the original patent and in the reissued patent shows the rake-head made of a square stick of timber with an eyebolt passing through from corner to corner, which, with an eyebolt or staple passing through the end of the thill, makes the joint or hinge by which the rake-head is attached to the carriage. By this arrange ment the teeth hang nearly in a line with the periphery of the wheel, the points coming to the ground just back of the trend of the wheel. Naturally enough the curved rake-teeth will hang or move somewhat in the line of the periphery of the wheel, and they will hang just back of the tread of the wheel. If I am right in my construction of this disclaimer, there can be no doubt that the second claim of the reissue is for the very thing which Whitcomb disclaimed and said was in common use in his original specification. He brings this case clearly within the principle laid down by the Supreme Court of the United States in Leggett v. Avery (101 U. S., 259; 17 O. G., 445): We think it was a manifest error of the Commissioner in the reissue to allow to the patentee a claim for an invention different from that which was described in the surrendered patent, and which he had thus expressly disclaimed. The pretense that “an error had arisen by inadvertence, accident, or mistake" within the meaning of the patent law was too bald for consideration. The very question of the validity of these claims had just been considered and decided, and decided with the acquiescence of the patentee and an express disclaimer on his part. If in any case where an applicant for a patent, in order to obtain the issue thereof, disclaims a particular invention or acquiesces in the rejection of a claim thereto, a reissue containing such claim is valid (which we greatly doubt), it certainly cannot be sustained in this case. Then, again, they say on the same page: As before remarked, we consider it extremely doubtful whether reissued letters can be sustained in any case where they contain claims that have once been formally disclaimed by the patentee or rejected with his acquiescence, and he has consented to such rejection in order to obtain his letters patent. Under such circumstances the rejection of the claim can in no just sense be regarded as a matter of inadvertence or mistake. Even though it was such, the applicant should seem to be estopped from setting it up as an application for a reissue. So, too, in the bottle-stopper case lately before Judge Shipman, Putnam v. Tinkham (4 Federal R., 411), the learned judge says: The claim is as follows: "The internally-located bottle-stopper B. provided with a hinged or jointed handle or bail, C, composed of two elastic legs or branches, aud an eye or finger loop, as aud for the purposes set forth." He virtually disclaims rigid handles, and says that his invention is designed to avoid such a method of construction. It is useless to say that by a rigid handle he merely meant a bail without a spring action, for the entire paragraph shows that he also meant a handle so jointed or hinged to the stopper that it could be turned away from the mouth of the bottle. He intended to point out that his handle or bail was both hinged to the stopper and had elastic legs. The reissue covers a device in which the bail is attached to the stopper in any manner. The hinged construction is briefly alluded to as one which accomplishes a certain result. In the original patent the patentee informed the public, with precision and after deliberation, that his invention was au improvement upon a rigid handle, and limited himself to a hinged or joiuted haudle. It has now become important for the plaintiff to possess himself of the territory which his assiguor attempted to occupy but abandoned, and the ownership of which he virtually disclaimed. A comparison of the two patents shows that the case is clearly within the principles which have been recently and frequently announced by the Supreme Court as applicable to reissues. The reissue is void because it is on its face for a different invention from that which was embraced in the original patent. Russell v. Dodge, 93 U. S., 460; Railway Company v. Sayles, 97 U. S., 554; Powder Company v. Powder Works, 98 U. S., 126; Leggelt v. Avery, 17 O. G., 445. These authorities seem to fully meet this case, and I can put no other construction upon them than that this claim is void by reason of the original disclaimer. This patentee had no right, after having stated positively to the world and to the Patent Office that he did not claim the idea of mounting the rake-head upon the top of the carriage, by a reissue to claim this as an element of invention by himself. But if there is room for doubt as to the soundness of this position, I am also clear that the defendants do not infringe this claim. The claim is for the combination, &c., whereby the head is supported above the rear upper edge of the axle, as shown. The defeudants' rake-head is suspended behind or in the rear of the axle by brackets hung, so to speak, behind the axle, instead of being supported above the axle. In Edgarton v. Beck, Judge Lowell says: The difficulty with the second claim of the reissue as applied to this case is that the patentee has seen fit for some reason to describe his rake-head as supported above pper edge of the axle, and the defendant's rake-head is on a line with the axle. It may be that this limitation was unnecessary, but it is found in the second claim, and I do not feel at liberty to disregard it. The inspection of the two models before me shows that the distinction taken by Judge Lowell was mechanically and technically correct. The specification and drawing described the particular manner and place where and how the patentee Whitcomb supported his rake-head upon the carriage. Judge Lowell sees fit to confine him to that special method of so supporting his rake-head. The defeudants do not literally support their rake head upon the axle at all, but by means of the brackets they suspend or hang it in the rear of the axle, so that a different function or mode of operation is accomplished by defendants' rake-head from what is accomplished by the Whitcomb rake-head. The Whitcomb rake-head having for its point of motion the place of attachment to the thills by its hinge, necessarily made it more difficult to keep the teeth upon or near the ground while gathering the load, while by the pecu |