
119 U.S. 652 (1887)
IVES
v.
SARGENT.
Supreme Court of United States.
Argued December 15, 1886.
Decided January 10, 1887.
APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE DISTRICT OF CONNECTICUT.
Mr. H.T. Blake for appellant.
Mr. John S. Beach for appellee.
MR. JUSTICE MATTHEWS delivered the opinion of the court.
This is a bill in equity filed by the appellant to restrain the alleged infringement of the complainant's rights, as the assignee of Frank Davis, of reissued letters-patent No. 9901, for an improvement in door-bolts. The original patent was No. 202,158, dated April 9, 1878. The application for the reissue was filed April 1, 1881, the reissued letters-patent being dated October 18, 1881. The alleged infringement is of the third and fourth claims. As the case turns wholly upon the validity of the reissued patent, it is important, for purposes of comparison, to set out the original and the reissue in parallel *653 columns. So much of the original as is excluded from the reissue is marked in brackets, and the additions made by the reissue are in italics. They are as follows:


                 Original.                            Reissue.
    "Specification forming part                 "Specification forming part
  of letters-patent No. 202,158,              of reissued letters-patent No.
  dated April 9, 1878. Application            9901, dated October 18, 1881.
  filed January 29, 1878.                     Original No. 202,158, dated
                                              April 9, 1878. Application
                                              for reissue filed April 1, 1881.
  To all whom it may concern:                 To all whom it may concern:
    Be it known that I, FRANK                   Be it known that I, FRANK
  DAVIS, of North Adams, in                   DAVIS, of North Adams, in
  the county of Berkshire and                 the county of Berkshire and
  state of Massachusetts, have                state of Massachusetts, have
  invented certain new and useful             invented certain new and useful
  improvements in door-bolts;                 improvements in door-bolts,
  [and I do hereby declare that]              of which the following is a
  the following is a [full, clear,            description.
  and exact] description [of my
  invention, which will enable
  others skilled in the art to
  which it appertains to make
  and use the same, reference
  being had to the accompanying
  drawings, and to letters
  of reference marked thereon,
  which form a part of this specification.]
    [This invention is an improvement]          The improvements are on
  on letters-patent                           the door-bolt, for which letters-patent
  [No. 190,561,] granted to [the              were granted to me
  undersigned] May 8, 1877.                   May 8, 1877.
    The [nature of said] invention              The invention consists in
  consists [chiefly] in combining             combining a cylindrical outer
  a cylindrical outer casing                  case with an inner case, constructed



*654
  with an inner [casing,]                     and recessed as hereinafter
  constructed and recessed as                 described, said cases
  hereinafter described, said [casings]       combining to inclose the operating
  combining to inclose the                    mechanism, and to form
  operating mechanism, and to                 a fulcrum and guide therefor;
  form a fulcrum and guide                    in combining with said cases
  therefor; [and] in combining,               a bolt, pitman, and crank; and
  with said [casings,] a bolt, pitman,        in a pitman or connecting rod
  and [hub, so constructed                    performing the functions of
  and arranged as to operate in               both pitman and spring, as the
  the same without pivot-pins                 above are hereinafter more
  or any additional devices, all              fully set forth and claimed.
  as] hereinafter more fully [described]
  and claimed.
    In the accompanying drawings                In the accompanying drawings
  Fig. 1 [represents the device               Fig. 1 shows the bolt in
  as a whole] in perspective.                 perspective. Fig. 2 is a perspective
  Fig. 2 [represents] a perspective           view of the inner case
  view of the inner [casing                   and portions of some of the
  and contents.] Fig. 3 is a                  working parts. Fig. 3 is a
  [detail] view of the bolt [and              view of the bolt, spring and
  its attachments.] Fig. 4 is a               crank. Fig. 4 is a detail view
  detail view of the inner [casing.]          of the inner case, and Fig. 5
  Fig. 5 is a detail view                     is a detail view of the outer
  of the outer casing.                        case.
                                                To enable others to make and
                                              use my improvements in door-bolts,
                                              I will describe them in
                                              detail.
    [A designates a cylindrical                 A, Figs. 1 and 5, is a cylindrical
  metalic outer casing or sleeve,             metallic outer case, having
  which is provided with opposite             the holes a a near its rear
  openings a a near its rear                  end, and hole a¹, through which
  end, and with a hole a¹, for                a screw a², Fig. 1, passes into
  attachment by means of screw                the inner case B, to hold the
  a² to inner casing B.                       two cases together. The inner
    It is obvious that any known              cylindrical case, B, Figs. 2 and
  equivalent fastening may be                 4, is made to fit closely into



*655
  substituted for said screw.                 the outer case, and has on its
  Said casing A is preferably a               front end a disk in which is
  mere shell of steel, but both               the central opening, b. On its
  the material and thickness can              front end the flange b¹ is
  be considerably varied without              formed, against which the
  departing from my invention.                outer case comes. A slot, b²,
                                              Fig. 4, extends from the disk




  Inner casing B is of brass,                 on the front end the whole
  cast-iron, or other cheap metal,            length of the case. Another
  and has such diameter as allows             slot, b³, opposite the slot b², extends
  it to pass readily into said outer          backward from the end
  casing or sleeve, and to be conveniently    disk, as shown in Fig. 4.
  withdrawn therefrom.                        These slots leave the parts b4 b4
  It is provided at the                       of the inner case, as shown in
  front end with a disk, which                Fig. 4. A groove, b6, extends
  has a central opening, b, for               across the case between the parts
  the passage of the bolt, and                b5 and b8 of the case. A longitudinal
  an annular flange, b¹ which                 slot, b7, bisects this



*656
  prevents it from being forced               groove and is cut through the
  back too far within said exterior           case.
  casing. The bottom of                         C, Fig. 3, is the bolt, made
  said inner casing B has a broad              with the lugs c c, only one of
  longitudinal slot, b², extending           which is used. The projecting
  from end to end, and communicating          end is round, the part within
  with a similar longitudinal                 the case is rectangular, one of
  slot, b³, in the top of                the narrower sides fitting into
  said casing B, which extends                the slot b², and the other into
  about two-thirds of the length              b³. Its rear end is made narrower
  of said casing, beginning just              and thinner to make
  behind said front disk. The                 room for the crank, as shown
  interior of the forward part                in Fig. 3.
  of said inner casing is thus entirely       The crank D is made in the
  removed, leaving vertical                   usual form, and is arranged
  walls b4 b4 on each side of                 in a position to bring the hole
  the space thus produced. This               through its larger end in line
  space is separated by a transverse          with the groove b6 on the inner
  partition, b5, from a transverse            case and with the openings a a
  groove, b6, in the bottom                   in the outer case.
  of which is a longitudinal slot,            The pitman and spring E,
  b7. A transverse partition, b8,             Fig. 3, is a straight hard-drawn
  at the rear of said groove and              wire, and is connected to the
  slot, forms part of the rear                bolt and crank by suitable pivotal
  end of casing B, and has in                 connections. As shown in
  its top screw-threaded hole or              the drawings, its ends are bent
  socket b,9 for the reception of             at right angles to its length and
  fastening screw a².                         pass into holes in the bolt and
    C designates the door-bolt,               crank, the spring being made
  having guide-pins c on its side,            long enough for the purpose.
  and near its rear end a recess,             The lug c on the bolt is so arranged
  c', in which works the lower                relative to the connections
  end of crank-arm D', formed                 of the spring as to give it
  in one piece with flat hub D.               the required degree of tension
  Said lower end of crank-arm                 or "set up," it is called. The
  D' is connected by pitman E                 tension bends the spring over
  to the front part of said bolt.             the lug c, as shown in Fig. 3.
  Said hub D, when in position                The key has its shank square

*657


  for use, extends up through                 to fit the hole in the crank, with
  said slot b7, so that its square            a round part near the handle
  or similarly shaped central                 to turn in the case, as shown
  hole is in a line with transverse           in Fig. 1.
  groove b6 of inner casing
  B, and opposite holes a a of
  outer casing A. The prismatic
  shank of the key is
  passed through said holes and
  groove, and operated as usual
  to shoot or draw the bolt.
    I do not confine myself to
  the exact details of construction
  shown, as these may be
  somewhat modified in various
  ways without departing from
  the spirit of my invention.
    The working parts of my
  mechanism are more firmly
  secured and more perfectly
  protected than in my former
  patent, as hereinbefore recited.
  I also deem the shape of my
  new hub and crank preferable
  for practical working.]
    Having [thus] described my                  Having described my improved
  [invention], what I claim as                bolt and its mode of
  new, and desire to protect by               operation, what I claim as
  letters-patent, is                         new, and desire to secure by
                                              letters-patent, is 
    1. The combination, with a                  1. The combination, with a
  door-bolt and operating mechanism,          door-bolt and operating mechanism,
  of a cylindrical exterior                   of a cylindrical exterior
  [casing,] and a recessed inner              case and a recessed inner case,
  [casing,] said [casings] combining          said cases combining to inclose
  to inclose the operating                    the operating mechanism, and
  mechanism, and to form a fulcrum            to form a fulcrum and guide



*658
  and guide therefor, substantially           therefor, substantially as set
  as set forth.                               forth.
    2. The combination of [casing]              2. The combination of case
  A, having opposite holes                    A, having opposite holes a a,
  a a, with inner [casing] B,                 with inner case B, having
  having transverse groove b6                 transverse groove b6 and slot
  and slot b7, [flat hub] D, [having          b7, crank D, and the bolt and
  crank-arm D',] and the                      pitman, substantially as set
  bolt and pitman, substantially              forth.
  as set forth.
    3. [The combination of cylindrical          3. The combination of the
  outer casing A with                         bolt C, provided with the lug
  inner casing B, having annular              c, pitman E, operating as a
  front flange b¹, side walls b4 b4,          pitman and spring, and crank
  transverse partitions b5 and b8,            D to hold the bolt, substantially
  transverse groove b6, and slot              as set forth.
  b7, said casings being securely               4. In a cylindrical door-bolt,
  fastened together and adapted               the pitman E, arranged and
  to receive the bolt and working             adapted to operate as a pitman
  mechanism, substantially                    and spring, substantially as
  as set forth.]"                             set forth."

It will be observed that the first and second claims of the reissued patent are substantially the same as the first and second claims of the original patent, but as there is no allegation or proof of any infringement by the appellee of either of these they may both be dismissed from further consideration. The third claim of the original patent is omitted from the reissue, its place being taken by the third and fourth claims of the latter. The whole question is, whether the patentee and his assignee are entitled, under the circumstances of the case, to claim the pitman E, operating as a pitman and spring in a door-bolt, as a distinct and separate invention, irrespective of its combination with the exterior and interior cases mentioned in the first and second claims. This right is affirmed by the appellant and denied by the appellee.
The invalidity of the reissued patent is maintained by the appellee on two grounds: 1st, that the reissue embraces a different *659 invention in the third and fourth claims from any described or contained in the original specification; and, 2d, that, if it were otherwise, the patentee and assignee had, at the time of the application for a reissue, lost their rights to correct the defects in the original by their own laches. It was upon the latter of these grounds that the Circuit Court proceeded in dismissing the bill. The undisputed facts on this part of the case are stated by the Circuit Court in its opinion, and are as follows:
"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's instructions. 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 Blatchford, 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 *660 describing to his solicitor, Terry, the invention which he wished to have patented, specifically designated and described the pitman-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 that he wanted to get it patented. He also stated what his invention was, as he considered it, that he wanted patented, and the thing that he wanted patented particularly was the pitman or connecting-rod, which answered the double purpose of pitman and spring, and in connection with the crank held the bolt when it was shoved out of the case and when it was drawn within the case." Terry also states that he sent " a letter of instructions with the model, setting forth Mr. Davis' wishes as he had expressed them to me." The specification, as prepared by the solicitor in Washington, was returned to Terry and by him exhibited to Davis, who signed the application, as he states, after he had 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.
It is admitted in argument by the counsel for the appellant *661 that there was negligence; it is contended, however, that it was not the negligence 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, 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 laches, 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. 354, 362, 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 for the purpose of correcting the supposed mistake, he exceeds his power, and acts under a mistaken view of the law; the court, seeing this, has a right, and it is its duty, to declare the reissue pro tanto void in any suit founded upon it."
*662 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, 115 U.S. 96, 100; Mahn v. Harwood, 112 U.S. 354, 363.
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 *663 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 casings, 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 obscure and remote. It is not obvious that the additional device referred to was a spring, and there is nothing in the language to suggest, what is clearly and fully expressed in the amended specification, that "the pitman and spring E, Fig. 3, is a straight hard-drawn wire, and is connected to the bolt and crank by suitable pivotal connections." So that in the original descript on 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 within the rule as stated in Coon v. Wilson, 113 U.S. 268, 277. 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.
