Poppenhusen v. Falke.

as well to flat sheets and plain surfaces as to those which were moulded or wrought into irregular and configurated forms. On this point, it is not necessary to enlarge here, but we affirm the views stated in the opinion denying the motion for a preliminary injunction.

After the original tin foil patent had been sustained by a verdict, and by a provisional injunction immediately following that verdict, a motion was made before Judge Ingersoll for an attachment for an alleged violation of the injunction. This motion was denied, on the ground that it was not proved that the metal plates used by the defendants in that motion were equivalents of tin foil, and within the scope of the injunction. We do not doubt the correctness of Judge Ingersoll's decision of that motion. The litigation, up to that point, had related to the fact of the invention rather than to its scope. The particular subject-matter upon which the attention of the triers appears to have been expended, was the validity of the patent, so far as it secured the exclusive right to use tin foil in the manufacture of embossed or configurated forms. Neither on the trial before the jury, nor on the motion for an injunction, does there appear to have been any effort to fix the limits of the invention, either by construction or by proof, so far as these limits depended upon the question as to what materials were or were not equivalents of tin foil. In his opinion, Judge Ingersoll remarked: "Since the injunction issued, the defendants have not used or applied tin foil in the process of vulcanization, as above described. They have, however, used sheets of brass and sheets of tin, something like roofing-tin, for that purpose; and it is claimed that the sheets so used are an equivalent for tin foil, and therefore equally to be prohibited to be used by the defendants. It is not claimed that all plates or sheets of tin or other metals are an equivalent for tin foil. The opinion of the Court on granting the injunction is against any such claim; for the Court say, that it had been common, before the patent to Meyer, to place the material between plates of tin or other metal, so that the material would be in close contact with the plates, to preserve its form. It is ad

Poppenhusen v. Falke.

mitted, that there is a substantial difference between such plates or sheets of metal and tin foil. But it is claimed, that the sheets of brass and tin used by the defendants are an equivalent for tin foil; that they are substantially like it; that they perform substantially the same office in substantially the same way. They are not rigid. They are somewhat flexible, but not sufficiently flexible to make them an equivalent for tin foil. They cannot be moulded into any desired shape and form, as tin foil can. They are like rigid, plain plates or sheets fitted only for plain surfaces. They cannot be said to be tin foil, or its equivalent; and the defendants were restrained only against the use of tin foil or its equivalent. The plaintiff claims that the patent is for the use and application, not only of tin foil, but also of all sheets of metal that are not rigid. This construction was not put upon the patent, either on the trial at law, or on the application for the injunction. Such construction was not claimed on either of those occasions. The defendants were not restrained from the use and application of tin or other sheets of metal that were not rigid, but only from the use and application of tin foil or its equivalent. Tin foil does not include all sheets of metal that are not rigid. If it is to be claimed that the patent is for the use and application of all sheets of metal that are not rigid, the defendants should, if the patent will bear that construction, have an opportunity to show that the use and application of such sheets was not new when the patent was obtained. As yet, no such construction has been put on the patent." Since the rendition of that opinion, the patent has been reissued; and, according to our construction, it embraces the use and application of all metal plates that are sufficiently flexible to be used in substantially the same way, with substantially the same results, that tin foil could be used, when applied not only to irregular but to plain flat sheets of the compound. It covers, in our judgment, all plates that are sufficiently flexible to admit of their being rolled upon the compound, substantially in the manner described in the reissued Meyer patent, and so firmly united as to expel the air, and secure the adhesion of the plates and

Poppenhusen v. Falke.

compound, through the process of vulcanization, without the necessity of other pressure or force. We are of the opinion that the proofs in the present case fully maintain the claim that the original invention of Meyer was co-extensive with this construction of the reissued patent.

The defendants allege that they use other pressure or force; and that they confine the mass, or series of plates of metal and sheets of compound, between rigid outside plates of iron, held together by means of clamps or screw bolts, and thus compress the pile. But we have searched the evidence in vain, for proof of the necessity or utility of these outside iron plates. We think that, as the defendants use them, these iron plates hold between them the soul and body of Meyer's invention. Upon the proofs, we judge them to be neither material nor useful, and cannot see how they relieve the defendants from the charge of infringement.

It was suggested, on the argument, that it would appear, by a comparison of the original and reissued patents, in the light of Judge Ingersoll's opinions, that the object of the reissue was to extend the monopoly secured by the patent beyond. the limits assigned to it by those opinions. This may be, and doubtless, is, true. It is quite likely, too, that the necessity, or at least desirableness, of a reissue, was first suggested by the remarks of Judge Ingersoll, in defining the original patent. But the inference that we are asked to draw from this fact, that the reissue was, therefore, fraudulent and void, is wholly inadmissible. It not unfrequently happens, that a judicial interpretation of the specification or claim of a patent, or of both, discloses to the inventor and patentee, for the first time, the defects in the instrument, and shows him that he has unwittingly restricted his rights within narrower limits than his discovery, or has so inartificially described his invention, that he has failed to secure any substantial advantage by it. Such a disclosure furnishes a proper occasion for a surrender and reissue, when the error was inadvertent, and is clearly within the beneficent design of the statute. The judicial mind gives a legal construction to the language of the instrument, and

In re Conant.

this construction may reveal the fact that the terms used fail to cover the invention. To hold that the inventor should not be allowed to restate his claims by the use of new terms, would defeat the object of the law, and abridge or strangle the inventor's rights, by reason of the imperfect language in which he had attempted to clothe his discovery.

It is hardly necessary to add, that we discover no evidence of fraud, tending to invalidate the reissued tin foil patent. A perpetual injunction must, therefore, issue.

NELSON, J. I concur in the foregoing opinion.

IN RE FREDERICK J. CONANT, A BANKRUPT.

The two years' limitation in regard to the bringing of suits by or against an assignee of a bankrupt, prescribed in the 8th section of the Bankruptcy Act of August 19th, 1841, (5 U. S. Stat. at Large, 446,) applies only to suits growing out of disputes in respect to property and rights of property of the bankrupt, which come to the hands of the assignee, and to which adverse claims existed while in the hands of the bankrupt and before the assignment.

Such limitation has no reference to suits growing out of the dealings of the assignee with the estate after it comes into his hands.

(Before NELSON, J., Southern District of New York, May 19th, 1862.)

THIS was a question adjourned into this Court by the District Judge, for hearing and determination, under the 6th section of the Bankruptcy Act of August 19th, 1841, (5 U. S. Stat. at Large, 445.) A petition was filed in the District Court, by M. T. Taggart and others, for the purpose of vacating an order made on behalf of the general assignee of Frederick J. Conant, a bankrupt, for the sale of a certain lot of land in the State of Illinois, as belonging to the estate of the bankrupt, on the ground that it was made through inadvertence and misapprehension of a true statement of the facts, without notice to the petitioners or to the person whom they represent, and to his or their prejudice. The purchaser

In re Conant.

of the lot under the sale by the assignee appeared and opposed the petition. The petitioners claimed title to the lot under a prior sale, by an order of the Chancellor of the State of New York, upon a creditor's bill.

NELSON, J. It is not important to state the facts relied on in the petition, to maintain it upon the merits, as the only question which has been adjourned to this Court by the District Court for decision is, whether or not the short bar of two years' limitation to suits, prescribed in the 8th section of the Bankruptcy Act, applies to the case. That section provides, that the Circuit Court shall have concurrent jurisdiction with the District Court of all suits at law and in equity, which may and shall be brought by an assignce of the bankrupt, against any person or persons claiming an adverse interest, or by such person against such assignee, touching any property, or rights of property, of said bankrupt, transferable to, or vested in, such assignee; and no suit at law or in equity shall, in any case, be maintainable by or against such assignee, or by or against any person claiming an adverse interest touching the property and rights of property aforesaid, in any Court whatsoever, unless the same shall be brought within two years after the declaration and decree of bankruptcy, or after the cause of suit shall first have accrued.

It is obvious, from a careful perusal of this section, that the limitation applies only to suits growing out of disputes in respect to property and rights of property of the bankrupt which come to the hands of the assignee, and to which adverse claims existed while in the hands of the bankrupt, and before the assignment. These disputes or claims affect the assets of the bankrupt, and an adjustment of them either by compromise or suit is indispensable to a settlement and distribution of the estate among the creditors. A short bar, by limitation, to suits brought either by the assignee or the adverse claimant, furnishes a fit and appropriate remedy against delay, where compromise is impracticable. The last clause of the section seems conclusive in favor of this construction.