specification may be removed, and false statements of fact may be expunged, provided that no new construction is thereby given to what remains. For the sole purpose of a disclaimer is to amend excessive Claims by eliminating from them the separable excess; and whatever else it may accomplish must be wholly subordinate and auxiliary to that end. § 650. Disclaimer Affects only the Excess which it Eliminates from the Claim. The effect of a disclaimer is confined to the excess which it removes from the apparent protection of the patent. Except as to this the patent remains operative to the same extent as before the disclaimer was filed. The disclaimer of a void. Claim does not affect such other Claims of the patent as by themselves are valid, nor does the disclaimer of the excessive portion of a Claim impair the force of what is not disclaimed. Thus the disclaimer neither adds to the patent, nor makes it cover more than it formerly embraced.2 The disclaimer of a species does not affect a Claim for the genus which includes it, nor does the disclaimer of an apparatus except when used for a particular purpose prevent the patentee from claiming it in connection with the purpose so described. thereafter read as if the disclaimer were incorporated in it." 16 O. G. 905 (906). That a disclaimer may eliminate all of the descriptive matter which relates to the parts disclaimed, see Tarrant v. Duluth Lumber Co. (1887), 39 O. G. 1425; 30 Fed. Rep. 830. That a disclaimer may remove matter first set up in a re-issue, and may relate to the Description as well as to the Claim, see Schillinger v. Gunther (1879), 16 O. G. 905; 17 Blatch. 66. 8 That objectionable phrases in the specification may be removed by disclaimer, see American Wood Paper Co. v. Heft (1867), 3 Fisher, 316. That an unintelligible specification cannot be cured by disclaimer, see Ralston v. Smith (1865), 11 H. L. 223. The patent stands ceases to be part of the invention, see Dunbar v. Myers (1877), 94 U. S. 187; 11 O. G. 35. That a void Claim being disclaimed the rest are good, see O'Reilly v. Morse (1853), 15 How. 62. 2 That a disclaimer adds nothing to the patent nor can it make the patent cover more than it did before, this being the province of a re-issue, see White v. Gleason Mfg. Co. (1883), 17 Fed. Rep. 159; 21 Blatch. 364; 24 O. G. 205; Foxwell v. Bostock (1864), 4 De G. J. & S. 298. 8 That the disclaimer of one species does not affect the genus, see Walsh v. Shinn (1879), 16 O. G. 1006. That a disclaimer of apparatus except when used for a special purpose does not admit it to be old, or bar the patentee § 650. 1 That the matter disclaimed from claiming it for that purpose, see VOL II. 19 after the disclaimer as if it had been originally issued in the amended form, and both its Claims and its Descriptions are interpreted and applied without reference to the matter that has been withdrawn.4 § 651. Origin and Nature of Disclaimer as a Method of Saving an Otherwise Lost Suit. A disclaimer, considered as a method of avoiding a defence based on an excessive Claim, was also introduced into our Patent Law by the act of 1837. Prior to that act the patentee could not recover on a patent in which he claimed more than he had actually invented. It was his duty not only to describe his invention with exactness, neither withholding from the public the knowledge of any material part thereof nor misleading them by asserting the materiality of that which in itself was not essential, but to distinguish the invention to be covered by the patent from all other arts or instruments by a certain and specific Claim. Upon this Claim the fortunes of the patent turned. If it were narrower than the invention the scope of the protection afforded by the patent was nevertheless restricted to its terms. If it were broader than the actual invention it was false, at least in part, and as the court had no means of determining, as matter of law, how far the Claim was true nor of separating the true allegations from the false, the entire Claim was necessarily regarded as invalid. The act of 1836, while it made this defect curable by re-issue, also provided that when a defendant in an action for infringement prevailed over the Black v. Thorne (1872), 10 Blatch. 66; 5 Fisher, 550; 2 O. G. 388. That an unfounded Claim being disclaimed the patent stands for the residue as if so originally issued, see McCormick v. Seymour (1854), 3 Blatch. 209; Clark v. Kenrick (1843), 12 M. & W. 221. That after an amendment by disclaimer a patent cannot be so construed as to render the amendment nugatory, see Atlantic Giant Powder Co. v. Hulings (1884), 21 Fed. Rep. 519. That where a disclaimer withdraws a new re-issue Claim, and leaves only what was covered by the original, if any new matter remains in the Description it must be discarded, see Schillinger v. Cranford (1885), 4 Mackay, 450; 37 O. G. 1349. That a disclaimer cannot be used to explain that which remains in the patent, see Tetley v. Easton (1857), 2 C. B. N. s. 706. plaintiff on this ground of defence, the court might award costs to either party in its discretion, if the defendant had used any part of the invention which was truly claimed as new. This provision enabled the court to shield the honest but mistaken patentee from some of the consequences of his error, leaving him, under other provisions of the same. act, to amend his Claim and thus protect himself from further violations of his rights. The act of 1837 extended, and made more immediately applicable, these benign provisions. While conferring on the owner of the patent the power to amend at once by filing a disclaimer, it enacted that in all those cases where a disclaimer might properly be filed the patent should be good and valid for so much of the invention claimed as was truly and honestly the invention of the patentee, if it were in itself a patentable invention and separable from the matter falsely claimed. It further enacted that the plaintiff claiming under such a patent should be entitled to maintain his suit in spite of this defect, if the right to amend the patent by disclaimer had not been already forfeited by an unreasonable delay, but that he should recover no costs against the defendant unless he had filed such disclaimer in the Patent Office prior to the commencement of the suit.1 § 651. 1 In Tuck v. Bramhill (1868), 3 Fisher, 400, Blatchford, J. (406) “But the defendant contends that the disclaimer in this case, if properly made at all, cannot affect the issues in this suit, because it was not filed till after the commencement of the suit. In other words, the defendant contends that the plaintiff cannot recover in this suit because the Claim, as it stood when the suit was brought, embraced more than that of which the plaintiff was the first inventor. In urging this view, the defendant relies on the general principle of law to that effect, as recognized before the act of March 3, 1837, was passed, and on the provision of section 7 of that act, that 'no such disclaimer shall affect any action pending at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing the same;' and he insists that the Claim of the patent must be construed, for the purposes of this suit, as if no disclaimer had been filed. . . . (408) This is not so. It is true that Judge Story, in Reed v. Cutter, 1 Story, 590, 600, says that if a disclaimer is filed during the pendency of a suit, the plaintiff will not be entitled to the benefit thereof in that suit, and that the same judge, in Wyeth v. Stone, 1 Story, 273, 294, says that the disclaimer mentioned in section 7 must be interpreted to apply solely to suits pending when the disclaimer is filed in the Patent Office, and the disclaimer mentioned in section 9 to apply solely to suits brought after the disclaimer is so filed, and that the proviso to section 7, as to the disclaimer's affecting a pending suit, prevents its affect Under these provisions the patent is no longer open to this defence except where the disclaimer was unreasonably de ... ing in any manner whatsoever a suit pending at the time it is filed. (409) I cannot concur, however, in Judge Story's view of the provision in section 7 as to the disclaimer's affecting a pending suit. I understand that provision to mean that a suit pending when a disclaimer is filed is not to be affected by such filing, so as to prevent the plaintiff from recovering in it, unless it appears that the plaintiff unreasonably neglected or delayed to file the disclaimer. The 'unreasonable neglect or delay' mentioned in section 7 manifestly refers to the unreasonable neglect or delay mentioned in section 9, and the disclaimer mentioned in section 9 is clearly the disclaimer provided for in section 7. Moreover, the provision of section 9, that the plaintiff, where he is entitled to recover under that section, shall not recover costs unless he has entered a disclaimer, prior to the commencement of the suit, of what he claimed without right, is a strong implication that where he does not enter the disclaimer until after the commencement of the suit he may still recover in the suit, if other wise entitled to do so, but without recovering costs. And such has been the view heretofore held by Mr. Justice Nelson, in this circuit. In Guyon v. Serrell, 1 Blatch. 244, he allowed a recovery, without costs, in a case where a disclaimer was filed after suit was brought; and in Hall v. Wiles, 2 Blatch. 194, 198, he says: If the disclaimer was entered in the Patent Office before the suit was instituted, the plaintiff recovers costs in the usual way, independently of any question of disclaimer. But if, in the progress of the trial, it turns out that the disclaimer ought to have been made as to part of what is claimed, the plaintiff may recover, but will not be entitled to costs.' Of course, it follows that if a disclaimer is made after suit brought, the plaintiff may still recover, but without costs." 6 Blatch. 95 (102). That the plaintiff may recover for the infringement of his actual invention though he has filed no disclaimer, unless he has been guilty of unreasonable delay, see O'Reilly v. Morse (1853), 15 How. 62; Hall v. Wiles (1851), 2 Blatch. 194. That an excessive Claim inserted by mistake may be disclaimed pending suit and the suit saved, though without costs, see Matthews v. Spangenberg (1882), 23 O. G. 92; 20 Blatch. 482; 19 Fed. Rep. 823. That where a proper disclaimer ha. been filed the plaintiff may recover on the Claims not disclaimed, see Schillinger v. Gunther (1879), 17 Blatch. 66; 16 O. G. 905. That a patentee may have his remedy though no disclaimer is filed, it not being a condition precedent, see Hotchkiss v. Oliver (1848), 5 Denio (N. Y.), 314. That the court may increase the damages under Sec. 14, act of 1836, though no disclaimer was filed, see Guyon v. Serrell (1847), 1 Blatch. 244. That under the act of 1837, when the patent claims too much, a suit can be saved only where the thing rightfully claimed can be distinguished from the excess, see Vance v. Campbell (1861), 1 Black, 427. That in order to save the costs a disclaimer must be filed before suit, as well as with reasonable diligence, see Tuck v. Bramhill (1868), 6 Blatch. 95; 3 Fisher, 400; Reed v. Cutter (1841), 1 Story, 590; 2 Robb, 81. That the filing of a disclaimer before suit affects only the costs, if there is no question of unreasonable delay, see Dunbar v. Myers (1877), 94 U. S. 487; 11 ferred, but the defendant is not liable for costs on any action brought while the patent still remains in its defective state.2 § 652. Disclaimer a Nullity unless Original Claim Actually Ex cessive. A disclaimer filed without sufficient cause is a nullity under this as well as the former section of the act. If there is no real excess of Claim, according to the construction given to its language by the court, the filing of a disclaimer by the plaintiff, pending suit, does not admit his inability to recover costs.2 A disclaimer leaving the patent to claim the entire invention, as the courts must have construed it had the disclaimer not been filed, is equally inoperative both as an amendment and upon the costs.3 The same is true of a disclaimer of a part or act not claimed in the patent, and of such 0. G. 35; Tuck v. Bramhill (1868), 3 filing of a disclaimer, the patentee can Fisher, 400; 6 Blatch. 95. That a disclaimer being filed during suit, the plaintiff can recover no costs, see Hayes v. Bickelhoupt (1885), 32 O. G. 133; 23 Fed. Rep. 183; Burdett v. Estey (1878), 15 O. G. 877; 15 Blatch. 349. That under the act of 1837 a disclaimer may be filed after the commencement of a suit, and the court will duly protect the interest of the defendants, see Smith v. Nichols (1874), 21 Wall. 112. 2 That under Sec. 9, act of March 3, 1837, the plaintiff can recover for the infringement of such part of the device as is truly his, though his specification embraces more than he has a right to claim and no disclaimer is filed, see Tuck v. Bramhill (1868), 3 Fisher, 400; 6 Blatch. 95. That Claims not sued on need not have been cured by disclaimer, in order to warrant a preliminary injunction, see Duff v. Calkins (1883), 25 O. G. 601. That where the Claim of a patent is declared invalid too nearly to the expiration of the patent to allow of the recover on the valid Claims, notwithstanding his failure to disclaim, see Kittle v. Hall (1887), 30 Fed. Rep. 239. That where a disclaimer was made pending suit, and the defendant was not prejudiced thereby, the proceedings need not be recommenced, see Libbey v. Mt. Washington Glass Co. (1886), 36 O. G. 572; 26 Fed. Rep. 757. § 652. 1 That a disclaimer, filed without necessity, is a nullity, and does not affect the costs of the suit, see Sharp v. Tifft (1880), 17 O. G. 1282; 18 Blatch. 132; 2 Fed. Rep. 697; 5 Bann. & A. 399. 2 That a disclaimer of something not claimed in the patent is a nullity, see Sharp v. Tifft (1880), 17 O. G. 1282; 18 Blatch. 132; 2 Fed. Rep. 697; 5 Bann. & A. 399. 8 That where a disclaimer leaves the patent to claim the whole thing invented just as it must have been construed before, it has no effect on the costs, see Sharp v. Tifft (1880), 18 Blatch. 132; 17 O. G. 1282; 2 Fed. Rep. 697; 5 Baun. & A. 399. |