PATENT CASES

DECIDED IN THE

SUPREME COURT

OF

THE UNITED STATES.

MOFFITT v. GARR ET AL.

(1 Black, 273.)

1. The surrender of a patent under the 13th section of the act of July 4, 1836, in judgment of law, extinguishes it—is a legal cancellation of it, and no right can afterwards be asserted upon it.

2. Suits pending for an infringement of such a patent fall with its surrender, because the foundation upon which they were commenced no longer exists.

3. But moneys recovered or paid under a patent previous to its surrender cannot be recovered back afterwards.

ERROR to the Circuit Court of the United States for the Southern District of Ohio.

The plaintiff in error, who was also plaintiff below, filed a declaration in case against defendants in error, for the infringement of letters patent of the United States, granted to him November 30, 1852, for an improvement in grain separators. This declaration was filed March 22d, 1859. On the 25th of October following, one of the defendants filed the following plea: "And now comes the said John M. Garr and says that the said John R. Moffitt ought not further to maintain this action against him; because, he says, that since the commencement thereof and before the 17th day of May, 1859, to wit, on the day of the said John R. Moffitt surrendered to the United States the patent before that time issued to him, and for the alleged infringement of which this suit is brought, and this he is ready to verify. Wherefore," &c. To this plea the plaintiff demurred, and the court overruled the demurrer Judgment for defendant. The plaintiff took this writ of error.

Argument for the plaintiff in error.

Mr. Lee and Mr. Fisher, of Ohio, for plaintiff in error: There may be a surrender of letters patent which is not made for the purpose of reissue under the 13th section of the act of July 4, 1836. The plea does not aver that the plaintiff's patent was surrendered under, or by virtue of, the 13th section of the patent act; nor does it aver that it was surrendered for the purpose of obtaining a reissue; or that it was surrendered because of a defective or insufficient description or specification; or because the claim was too broad; or because the patent was from any cause void or voidable; nor even that the patent was canceled.

The question of the right of a patentee to surrender his patent, before the act of 1836, and independently of any statute authorizing him to do so, was fully considered in the discussion of the case of Grant v. Raymond, 6 Peters, 218; but neither the court, nor either of the distinguished counsel, seemed to doubt, for a moment, that he possessed such power. Batten v. Taggart, 17 How., 74. If the right to make such a surrender exists independently of any statute, the making of the surrender does not imply or involve any statutory or other defect in the patent. And where a patent has been so surrendered or abandoned, an action may still be maintained for infringements committed before the surrender or abandonment. If the patentee surrenders his patent at the end of six years, it is the same as if it had been originally granted to him for six years, and that, for violations of his exclusive privileges committed during those six years, his remedy is as complete as if the patent had stood to the end of his term. It would seem as if this proposition did not admit of doubt or argument. If the surrender of the patent vacates it from the first, then the patentee has been a trespasser from the beginning. He may have been the first and original inventor of a useful improvement; his patent may have been regularly issued; it may have been tested and declared valid in the courts of last resort; and his right to enjoy his monopoly to the end of the full term may have been indisputable. Yet, if he surrenders the latter half of that monopoly to the people, he renders the first half void. He ought to be compelled to refund every penny he had received as patentee, whether peaceably or by the judgment of a competent tribunal. This would be monstrous. But, if he has any rights under the first half of the grant, he is entitled to full rights. If he is entitled to keep the pay received from those who have used and paid, he is also entitled to demand and recover his pay from those who have used and not paid. He might have brought and maintained such an action before the surrender. Why not as well afterwards, when suits may be brought

Argument for the plaintiff in error.

any time within six years after the expiration of a patent for infringements committed before? The right of the patentee, we insist, is not divisible. That portion of it which is in possession is no more legal than that which remains in action.

The application of these principles to the present case is obvious. The plea avers a simple surrender of the patent, made two months after an action had been actually brought to recover damages for a previous infringement. It does not aver cancellation or reissue. The court, by overruling the demurrer, held such a plea to be a bar to such an action. We think the error obvious, upon the principles above set forth.

But if this surrender were, in fact, made under the authority of the 13th section of the act of July 4, 1836, and only by virtue of that section, then we maintain: A surrender of a patent for correction and reissue, by virtue of the statute, does not render the patent void ab initio. If the patentee still chooses to risk a suit upon the original patent, he may recover upon it for infringements committed before it was surrendered. In support of this proposition we submit the considerations just urged. If the patent is vacated from its issue, then every exercise of exclusive ownership has been illegal. If not, then infringers ought, at least, to be compelled to pay that which honest men have been willing to give the patentee.

This court has, as it seems to us, expressly refused to affirm the English doctrine, that a surrender and reissue vacated the original patent. Shaw v. Cooper, 7 Pet., 314; Grant v. Raymond, 6 Pet., 220. See also Ames v. Howard, 1 Sumner, 488; Stanley v. Whipple, 2 McLean, 37; Woodworth v. Stone, 3 Story, 753, 754; Woodworth v. Hall, 1 Wood & Minot, 257; Eastman v. Bodfish, 1 Story, 529.

But, again: It is urged, and as the main objection, that by the very act of surrender, under the statute, the patentee admits that his original patent is void, and, therefore, he is estopped from asserting its validity in a suit for its infringement.

To this we answer that he makes no such admission, even by the act of statutory surrender.

The 13th section provides that whenever any patent which has heretofore been granted, or which shall hereafter be granted, shall be inoperative or invalid by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification more than he had or shall have a right to claim as new, if the error," &c.

A patent, then, may be reissued, if it be-1st, inoperative; or, 2d, invalid. Looking to what follows, the word "inoperative"

Argument for the defendant in error.

manifestly refers to the defective specification, and the word "invalid," to the claim of "too much," which, under the act of 1836, rendered the patent absolutely void.

A patent "inoperative" because of a "defective or insufficient " specification is not necessarily void. The specification may not describe the invention as clearly as might be desired, or so comprehensively as to cover a particular evasion of the patent, or it may fall short of describing the whole of the invention, illustrated by the model and drawings. In such case this court (Batten v. Taggart, 17 How., 84) held that the patentee had a right "to restrict or enlarge his claim, so as to give it validity and to effectuate his invention."

But an enlargement of the claim is a claim for something more; and if such a claim be valid, the original claim must be valid also, for "the greater includes the less."

The history of the litigation upon patents shows that many patents have been surrendered and reissued after they had been the subject of fierce controversy, and had repeatedly been declared. valid by the courts of the United States. The validity of the famous Woodworth patent had been established in Massachusetts and Ohio. See Brooks v. Bicknell, 3 McLean, 250; Washburn v. Gould, 3 Story, 122; Woodworth v. Sherman, 3 Story, 171. And yet the patent was afterwards reissued. Woodworth v. Stone, 3 Story, 751; Woodworth v. Edwards, 3 Wood & Minot, 136 et seq.

So also with the Howe sewing machine patent.

The plea having averred surrender only, but not cancellation, the court could not know judicially but that the original patent was still in existence. The acts of surrender and cancellation are distinct, and are so recognized by the court in the case of Batten v. Taggart, 17 How., 80.

Mr. Stanbery, of Ohio, for defendant in error: I will consider, in their order, the grounds for reversal relied on by the plaintiff. 1. "That there may be a surrender of letters patent, which is not made for the purpose of reissue, under the 13th section of the act of July 4, 1836."

It does not seem of any moment to consider whether there may not be a surrender, under that 13th section, without a reissue; for if such surrender is allowable, as the plaintiff alleges, still it is a surrender under that section; and the question remains, as to the effect of the surrender.

The plaintiff argues, that there may be a surrender independently of the statute, and that such a surrender would not necessa

Argument for the defendant in error.

rily imply that the patent was invalid. In support of this position, Grant v. Raymond, 6 Peters, 218, is cited.

No such question arose in that case, for the surrender in that case was in virtue of the statute then in force. The real question was as to the new patent issued after the surrender; for the statute then in force only provided for a surrender, and did not expressly authorize the reissue.

I find it difficult to understand what the plaintiff means by a surrender of a patent, independent of the statute. A patentee may, perhaps, (though it is by no means clear,) destroy his patent by cancellation. That is his own act; but he cannot surrender his patent to himself. The act implies a party capable of receiving the surrender.

Now, what is alleged in our plea is a surrender to the United States—that is, to the party from which the grant emanated. This sort of surrender is authorized by law, and it is the only sort of surrender contemplated by the statute. We have, therefore, under this plea, nothing to do with any other surrender than that anthorized by the statute.

It is further claimed by the plaintiff, that "a surrender, under the 13th section, does not render the patent void ab initio. If the patentee chooses to risk a suit upon an original patent, he may recover upon it for infringements committed before it was surrendered."

I do not consider it necessary to go into the inquiry whether, for all purposes and in all aspects, the original patent, after its surrender, is to be considered as void from its inception. We are only concerned, in this case, as to the operation or effect of the original patent as a cause of action, or a continuing cause of action after the surrender. We do not aver that, at the commencement of the suit, the plaintiff's patent was void; but we merely say, that, after the suit was brought, the plaintiff surrendered his patent. This the plaintiff admits. What, then, is the effect of a surrender upon an action pending at the time of the surrender?

The surrender is to be allowed when the patent "shall be inoperative or invalid by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification, as his own invention, more than he had, or shall have, a right to claim as new."

These are the conditions on which alone, according to the statute, the surrender is authorized. When, therefore, the patentee avails himself of this permission, he must be taken to admit that his