first and second claims. This right is affirmed that he wanted to get it patented. He also by the appellant and denied by the appellee. stated what his invention was, as he considered The invalidity of the reissued patent is main-it, that he wanted patented, and the thing that tained by the appellee on two grounds: (1) that he wanted patented particularly was the pitman the reissue embraces a different invention in or connecting rod, which answered the double the third and fourth claims from any described purpose of pitman and spring, and in connec[659] or contained in the original specification; and tion with the crank held the bolt when it was (2) that, if it were otherwise, the patentee and shoved out of the case and when it was drawn assignee bad, at the time of the application for within the case." Terry also states that he sent a reissue, lost their rights to correct the defects"a letter of instructions with the model, setting in the original by their own laches. It was forth Mr. Davis' wishes as he had expressed upon the latter of these grounds that the circuit them to me." The specification, as prepared court proceeded in dismissing the bill. The by the solicitor in Washington, was returned to undisputed facts on this part of the case are Terry and by him exhibited to Davis, who stated by the circuit court in its opinion and are signed the application, as he states, after he had as follows: examined it and supposed it to be right, COVering the spring which I intended to be patented." Mr. Terry states that he does not recollect whether he himself read over the specification and examined the claims at the time Mr. Davis signed the papers, or not. On this application the patent was issued, and it does not appear to have been read or examined by any of the parties in interest until after the appellee commenced making the bolts now alleged to be an infringement. It was then discovered for the first time that the original patent did not cover the claim as now made, and the reissue was obtained to effect that purpose. [660] "The inventor, a carpenter by trade and not an educated man, invented the device in November, 1877, and applied, in January, 1878, to Mr. Terry, a patent solicitor in New Haven, to procure him a patent, specifying, as the invention to be patented, the pitman, which, in connection with the crank, held the bolt and answered the double purpose of pitman and spring. Terry, being in ill health and therefore not then doing business, sent the case to his agent in Washington, with Davis' instrucions. In due time the papers were returned to Terry and were signed by Davis, who read them and supposed that the application covered the spring which he intended to be patented.' Terry did not read the application. The patent was received by Davis in April, 1878. It does not appear whether it was then examined or not. The plaintiff did not see the patent until after it was assigned to him, on May 28, 1879. Whether he then read it or not he does not know; but in the latter part of 1880, after the defendant had begun to infringe, he did read it and supposed, from the drawings, that the pitman spring, as a separate invention, was secured by the patent, until he was undeceived by Mr. Terry. In the spring of 1878 the plaintiff received from Davis a license to use the pitman spring upon another than the patented bolt. In September, 1880, Sargent & Co. commenced work upon the patterns for the infringing bolt, and made the first bolts December 1, 1880." Ives v. Sargent, 21 Blatchf. 417. The application for the reissue was not made until after the lapse of nearly three years from the date of the original patent; that is, from April 9, 1878, until April 1, 1881. It may be assumed, as the effect of the evidence, that Davis in describing to his solicitor, Terry, the invention which he wished to have patented, specifically designated and described the pit man spring as his substantial invention, distinct from the combination of which it formed a part in the first and second claims of the patent. In his testimony on this point, in answer to the question, "What did you describe to him as the invention which you wished to have patented?" Davis states, "I explained to Mr. Terry that I had got the spring, answering for a spring and also for turning the bolt-a pitman spring. I didn't know the term at that time;" and also that he wished to have patented “this pitman spring, and this guard, lever, and that purchase it had in holding the bolt out or back; also, in moving the bolt out and back." Terry also, on the same point, says that Davis brought the invention or bolt to me and stated It is admitted in argument by the counsel for the appellant that there was negligence; it is contended, however, that it was not the negli gence which in law is imputable to the patentee or the appellant, but the negligence of the solicitor employed by the patentee to obtain the patent. Counsel say, "It was the Washington solicitor's disobedience to instructions which caused the mistake, and Terry's neglect to revise the application before sending for Davis to sign it, which prevented its discovery." The rule of diligence required in such cases, as the result of previous decisions of this court, is stated in Wollensak v. Reiher, 115 U. S. 96, 99 [29: 350, 351.] in these words: "It follows from this, that if, at the date of the issue of the original patent, the patentee had been conscious of the nature and extent of his invention, an inspection of the patent, when issued, and an examination of its terms, made with that reasonable degree of care which is habitual to and expected of men in the management of their own interests in the ordinary affairs of life, would have immediately informed him that the patent had failed fully to cover the area of his invention. And this must be deemed to be notice to him of the fact, for the law imputes knowledge when opportunity and interest, combined with reasonable care, would necessarily impart it. Not to improve such opportunity, under the stimulus of self interest, with reasonable diligence, constitutes luches, which in equity disables the party who seeks to revive the right which he has allowed to lie unclaimed from enforcing it to the detriment of those who have in consequence been allowed to act as though it were abandoned." In Mahn v. Harwood, 112 U. S. 34, 362 [28: 665, 668], it was stated that "If a patentee has not claimed as much as he is entitled to claim, he is bound to discover the fact in a reasonable time or he loses all right to a reissue; and if the Commissioner of Patents, after the lapse of such reasonable time, undertakes to grant a reissue (661) [662] for the purpose of correcting the supposed mis-scure and remote. It is not obvious that the It is also settled that while no invariable rule can be laid down as to what is a reasonable time within which the patentee should seek for the correction of a claim which he considers too narrow, a delay of two years, by analogy to the law of public use, before an application for a patent, should be construed equally favorable to the public, and that excuse for any longer delay than that should be made manifest by the special circumstances of the case. Wollensak v. Reiher, and Mahn v. Harwood [supra]. In the present case no special circumstances in excuse for the delay are alleged. The excuse proffered is simply an attempt to shift the responsibility of the mistake, as originally made, from the patentee to his solicitor; but no excuse is offered why the patentee did not discover the negligence and error of his solicitor in due time. On the contrary, he assumed, without examination, that the specification and claims of his patent were just what he had desired and intended they should be, and rested quietly in ignorance of the error and of his rights for nearly three years, and then did not discover them until after others had discovered that he had lost the right to repair his error by his neglect to assert it within a reasonable time. We are therefore of opinion that the circuit court was clearly in the right in deciding the reissue void as to the third and fourth claims, on the ground that the right to apply for it had been lost by the laches of the patentee and his assignee. We are also of opinion, however, that the reissue is void on the other ground; viz., that it contains new matter introduced into the specification, and that it is not for the same invention as that described in the original patent. In support of the reissued patent, on this ground, it is contended, on the part of the appellant, that the invention of the pitman-spring device is shown in the drawings, which are the same both in the original and the reissued patents. All that can be said in respect to the drawings is that they show the pitman-spring device as a part of the bolt intended to be covered by the patent, and described as a combination of which that device forms a part. There is nothing whatever in the drawings to 1663] show that the patentee claimed to be the inventor of that part separate from the combination, as a distinct novelty, useful by itself, or in any other combination; neither is it so described in the specification. The operating mechanism of the bolt, as distinct from the cas ings, which are described as forming a fulcrum and guide to it, is described as a bolt, pitman, and hub so constructed and arranged as to operate in the same (said casings) without pivot pins or any additional devices." It is argued, on this language, that the only additional device usual in such cases is a spring, and that, therefore, the meaning of the specification is that no separate spring was required, and from that the inference is to be made that the pitman should operate both as a pitman and a spring; but this inference is entirely too ob what is clearly and fully expressed in the amended specification, that " the pitman and spring E, figure 3, is a straight, hard-drawn wire, and is connected to the bolt and crank by suitable pivotal connections." So that in the original description there is nothing to show of what material the pitman is made so as to operate as a spring, and there is no assertion in it of its performing the double function of pitman and spring. In this view, therefore, the case comes with in the rule as stated in Coon v. Wilson, 113 U. S. 268, 277 [28: 963, 966]. There, as here, the lapse of time and laches based upon it were considered immaterial, because the reissued patent was for a different invention from that described in the original. "The description had to be changed in the reissue, to warrant the new claims in the reissue. The description in the reissue is not a more clear and satisfactory statement of what is described in the original patent, but is a description of a different thing.' We are therefore constrained to the conclusion that the addition of the third and fourth claims, with the corresponding alterations in the specification, is such an expansion of the invention as originally described as to destroy its identity, and to that extent to avoid the reissued patent. For these reasons, the decree of the Circuit Court is affirmed. True copy. Test: James H. McKenney, Clerk, Sup. Court, U. S. LUCIUS L. HUBBARD, Piff. in Err., v. NEW YORK, NEW ENGLAND AND WESTERN INVESTMENT COMPANY. (See S. C. Reporter's ed. 696–702.) Contract-construction of—suit for commissions on sale of railroad-review of evidence-instruction to find for defendant, sustained. In an action by a representative of the defendant Company to recover commissions on the sale of u railroad, this court holds, upon a review of the enthe territory controlled by the plaintiff and included tire evidence, that the business did not originate in within his contract; that he is not entitled to recover, either under his contract or the common counts, and that the court below properly instructed the jury to find for the defendant. [No. 103.] Argued Dec. 17, 20. 1886. Decided Jan. 17, 1887. IN ERROR to the Circuit Court of the United States for the District of Massachusetts. Aƒ. firmed. The history and facts of the case appear in the opinion of the court. Messrs. William Warren Vaughan and Robert Dickson Smith, for plaintiff in error. Mr. Hugh Porter, for defendant in error. Mr. Justice Matthews delivered the opinion of the court: This is an action at law brought by the plaint [696] [697] iff in erro a citizen of Massachusets, against | duties towards said Corporation as of the ut "Section 3. The said Corporation shall have power to borrow money and to receive money in deposit and pay interest thereon, and to loan money within or without this State at any rate of interest not exceeding that now or hereafter allowed by law to private individuals, and to discount loans; and in computation of time thirty days shall be a month and twelve months a year; and to make such loan payable either within or without this State, and to take such securities therefor, real and personal, or both, as the directors and managers of said Corporation shall deem sufficient, and may secure the payment of such loans by deeds of trust, mortgages, or other securities, either within or without this State; may buy and sell negotiable paper or other securities; may open and establish a real estate agency; may purchase and sell real estate, and shall have power to convey the same in any mode prescribed by the by-laws of such Corporation; may accept and execute all such trusts, whether fiduciary or otherwise, as shall or may be committed to it by any person or persons, or by order of any court or tribunal or legally constituted authority of the State of Illinois, or of the United States, or elsewhere; may make such special regulations in reference to trust funds, or deposits left for accumulation or safe keeping, as shall be agreed upon with the depositors or parties interested, for the purpose of accumulating or increasing the same; may issue letters of credit and other commercial obligations, not, however, to circulate as money, and may secure the payment of any loan made to said Company in any way the directors may prescribe. The home office of the Company was at Chicago, but a branch was established in New York City, which became, and was at the time of the transactions in question in this suit, the main office at which its business was chiefly transacted. The Company also directed the establishment of branch offices at Philadelphia and Boston. The relation between the defendant and the plaintiff grew out of a contract entered into between them, having in view the establishment of the office in Boston. A contract in writing was entered into between them on the 17th day of December, 1879, the substantial parts of which are as follows: The plaintiff, Hubbard, agreed "to open and take charge of a branch oflice of said Corporation at Boston, Mass.; to devote his best energies and time to the interests of said Corporation, as far as may not be inconsistent with a duc regard 1698] for the interests of such legal clients as he may bave from time to time, always considering his 119 U. S. U. S. Book 30. " On its part, the defendant agreed "forthwith to elect said party of the second part one of its directors, with the title of assistant vice president; to give said party of the second part the Idirection of said office designated as the Eastern Division, subject, of course, to the by-laws of said Corporation now in force or hereafter to be enacted; to furnish said office and its furniture, all the books, signs, circulars, and advertising, which said Corporation may require; to pay the salary of its book-keeper and of such other employes as may be deemed necessary and proper, and generally to pay the running expenses of said office; to pay to said party of the second part the sum of eighteen hundred dollars ($1,800) per year as 'salary,' together with all expenses of travel incurred by him on its behalf, and a further amount, as 'commissions,' to be determined as follows; to wit, all business originating in said 'Eastern Division,' which shall include the whole of Maine, New Hampshire, Vermont, and Massachusetts, or transacted at said Boston office, shall be 'valued'according to the amount of gross profit coming therefrom to said Corporation, or which can be rightfully claimed by it. After deducting from the aggregate of such profits for each year the sum of fifty-four hundred dollars ($5,400), plus the amount of book-keeper's salary said party of the second part shall be entitled to one thirc of the balance as commissions, as above. Set tlement shall be made between said parties as often as once a month, said party of the second part becoming entitled to said 'commissions' pro rata as soon as the same shall have been earned and received, and shall exceed in the aggregate the amount of $5,400, plus salary of book keeper, as above set forth, and shall be paid 'ir kind.' "Said party of the first part shall favor as much as practicable said Boston office, to the end that parties within its precincts may deal directly with it. All legal services required by said party of the first part, for itself or others in suits or proceedings in court, or in the draw ing of railroad deeds and mortgages, shall be entitled to extra compensation from said party of the first part.” It was also provided that" This agreement shall go into effect from and after the sale or purchase by said party of the second part at par of ten thousand dollars ($10,000) of the capital stock of said party of the first part and pay. ment therefor, and shall be in force for one year, at the end of which time there shall be a general accounting together of said parties, and a new agreement may be made and entered into, if the mutual interests of said parties may so require." This agreement went into effect, according to its terms, by the plaintiff taking and paying for $10,000 of its capital stock at par on the [699] [700] 24th of December, 1879. On the 5th of June, It also appeared from the evidence-the the purchase. The object of this contract was The cause was tried by a jury, when, at the The error assigned is in the ruling of the court in this instruction to the jury. The principal question, in our view of the case, is one of fact; it is whether, within the meaning of the contract between the parties, made December 17, 1879, the business in question, out of which these profits arose, originated in the Eastern Division, as therein described, or was transacted at the Boston office. Upon a careful review of the entire evidence, giving to the plaintiff the benefit of all infer ences which might reasonably have been drawn by the jury, we are of the opinion that the court below did not err in instructing the jury to find a verdict for the defendant. In our opinion, it clearly appears from the evidence, in which there was no conflict, that the business did not originate in the Eastern Division, and was not transacted at the Boston office. It would serve no useful purpose to go into any detail of the testimony, which, we think, admits of no different conclusion. [701] The plaintiff's declaration, in addition to James H. McKenney, Clerk, Sup. Court, U. S. END OF VOLUME 119. |