this presumption is rebutted only when, from a comparison of the two specifications, it is evident that a substantial difference exists between them.2 In aid of this presumption, the re-issue raises a presumption of the identity of the subject-matter which can be overcome only by strong and controlling evidence, see Smith v. Goodyear Dental Vulcanite Co. (1877), 93 U. S. 486; 11 O. G. 246; Birdsell v. McDonald (1874), 6 O. G. 682; 1 Bann. & A. 165; Klein v. Russell (1873), 19 Wall. 433; Hussey v. Brad ley (1863), 5 Blatch. 134; 2 Fisher, 362; Potter v. Holland (1858), 4 Blatch. 238; 1 Fisher, 382; O'Reilly v. Morse (1854), 15 How. 62; French v. Rogers (1851), 1 Fisher, 133. That there is also a strong general presumption in favor of the validity of a re-issue and the consequent identity of the inventions, see Dederick v. Cassell (1881), 9 Fed. Rep. 306; 20 O. G. 1233; 14 Phila. 503; Thomas v. Shoe Mach. Mfg. Co. (1878), 3 Bann. & A. 557; 16 O. G. 541 ; American Middlings Purifier Co. v. Atlantic Milling Co. (1877), 3 Bann. & A. 168; 4 Dillon, 100; Reissner v. Anness (1877), 13 O. G. 870; 3 Bann. & A. 176; Smith v. Goodyear Dental Vulcanite Co. (1877), 93 U. S. 486; 11 O. G. 246; Miller & Peters Mfg. Co. v. Du Brul (1877), 12 O. G. 351; 2 Bann. & A. 618; Tucker v. Tucker Mfg. Co. (1876), 10 O. G. 464; 2 Bann. & A. 401; 4 Clifford, 397; Stevens v. Pritchard (1876), 10 O. G. 505; 4 Clifford, 417; 2 Bann. & A. 390; Salamander Felting Co. v. Haven (1875), 3 Dillon, 131; 9 O. G. 253; Doherty v. Haynes (1874), 4 Clifford, 291; 6 O. G. 118; 1 Bann. & A. 289; Bantz v. Elsas (1874), 6 O. G. 117; 1 Bann. & A. 351; La Baw v. Hawkins (1874), 6 O. G. 724; 1 Bann. & A. 428; Guidet v. Barber (1873), 5 O. G. 149; Jordan v. Dobson (1870), 2 Abbott, 398; 7 Phila. 533; 4 Fisher, 232; Blake v. Stafford (1868), 3 Fisher, 294; 6 Blatch. 195; Morris v. Royer (1867), 3 Fisher, 176; 2 Bond, 66; Forbes v. Barstow Stove Co. (1864), 2 Clifford, 379; Hussey v. Bradley (1863), 2 Fisher, 362; 5 Blatch. 134; Hussey v. McCormick (1859), 1 Fisher, 509; 1 Bissell, 300; Woodworth v. Edwards (1847), 3 W. & M. 120; 2 Robb, 610; Allen v. Blunt (1846), 2 W. & M. 121 ; 2 Robb, 530. That the fact that a re-issue was granted after a severe contest raises a strong presumption in its favor, see Consolidated Bunging Apparatus Co. v. Peter Schoenhofen Brewing Co. (1886), 28 Fed. Rep. 428; 37 O. G. 786. 2 In Thomas v. Shoe Machinery Mfg. Co. (1878), 3 Bann. & A. 557, Clifford, J.: (560) "Where the Commissioner accepts a surrender of an original patent and grants a new patent, his decision in the premises, in a suit for infringement, is final and decisive, and is not re-examinable in such a suit in the circuit court, unless it is apparent upon the face of the patent that he has exceeded his authority, and that there is such a repugnancy between the old and the new patents that it must be held as matter of legal construction that the new patent is not for the same invention as that embraced and secured in the original. Seymour v. Osborne, 11 Wall. 543. .. Courts of justice will avoid such a conclusion, if they can reasonably do so, by a proper applica tion of the maxim that patents are to receive a liberal construction, and, if practicable, be so interpreted as to uphold and not destroy the right of the inventor. Turrill v. Railroad, 1 Wall. 491; Ames v. Howard, 1 Sum. 482; Blanchard v. Sprague, 3 Sum. 279; Glue Co. v. Upton, 6 O. G. 837. Slight changes will not sustain such a defence, Description, drawings, and model of the re-issue are always so construed, if possible, as to confine the re-issue to the original invention. Claims apparently in excess of the original inven nor will the court in any case declare the patent void on that account, if, by the true construction of the two instruments, the invention secured by the two instruments is not substantially different from that embodied in the original patent. Inquiries in such a case are restricted to a comparison of the terms and import of the two patents in view of the drawings and Patent Office model. If from these it results that the invention claimed in the reissue is not substantially different from the one described, suggested, or indicated in the specification or drawings of the original patent or Patent Office model, the re-issued patent must be held valid, as all other alterations and amendments plainly fall within the intent and purpose of the provision in the act of Congress which allows a surrender and re-issue; or in other words, if the re-issued patent does not, upon the face of the instrument, embrace anything not substantially described, suggested, or indicated in the specifications, drawings, or model of the original, the defence that the re-issued patent is not for the same invention as the original must be overruled." 16 O. G. 541 (542). the original patent." 6 O. G. 724 (725). Further, that the re-issue is presumed to be for the same invention until by comparing it with the original patent the want of identity clearly appears, see Searles v. Bouton (1881), 21 O. G. 1784; 12 Fed. Rep. 140; 20 Blatch. 426; Smith v. Goodyear Dental Vulcanite Co. (1877), 93 U. S. 486; 11 O. G. 246; Doherty v. Haynes (1874), 4 Clifford, 291; 6 O. G. 118; 1 Bann. & A. 289; Seymour v. Marsh (1872), 6 Fisher, 115; 2 O. G. 675; 9 Phila. 380. That the question of identity between a re-issue and its original is a question of construction, not of evidence, if the court can understand the inventions from the patents, see Heald v. Rice (1881), 104 U. S. 737; 21 O. G. 1443; Seymour v. Osborne (1870), 11 Wall. 516. That the Claims of the re-issue should be construed, if possible, so as to cover only the real invention described in the original, see Brainard v. Cramme (1882), 12 Fed. Rep. 621; 22 O. G. 769; 20 Blatch. 530; Swain Turbine & Mfg. Co. v. Ladd (1877), 11 O. G. 153; 2 Bann. & A. 488. That a re-issue may be construed by the original, see Tyler v. Galloway (1882), 20 Blatch. 445; 22 O. G. 2072; 12 Fed. Rep. 567; Coburn v. Schroeder (1882), 22 O. G. 1538; Tyler v. Welch (1880), 3 Fed. Rep. 636; 18 Blatch. 209; 17 O. G. 1508; Manufacturing Co. v. Ladd (1880), 102 U. S. 408; 19 O. G. 62; Klein v. Russell (1873), 19 Wall. 433; Ely v. Monson & Brimfield Mfg. Co. (1860), 4 Fisher, 64. In La Baw v. Hawkins (1874), 1 Bann. & A. 428, Nixon, J.: (429) "The act of the Commissioner in accepting a surrender and granting a reissue, is final and conclusive, and not re-examinable in a suit in the Circuit Court, unless it is apparent, upon the face of the patent, that he has exceeded his authority, or that there is such a a repugnancy between the old and the new patent that it must be held as matter of legal construction that the That where one part of the re-issue new patent is not for the same inven- seems void, it may be construed with tion as that embraced and secured in the other parts and the whole together tion are restricted by interpretation, and void Claims are rejected without prejudice to such as have been properly allowed. The entire re-issue specification is considered as an may stand, see Carew v. Boston Elastic Fabric Co. (1871), Clifford, 356; 5 Fisher, 90; 1 O. G. 91. That where a re-issue broadening the Claims is granted after a delay of four and a half years it will be construed as covering the same matter as the original, see Albany Steam Trap Co. v. Felthousen (1885), 32 O. G. 1239. That where a specific and complete invention is fully described, and all the papers including the application, etc., show that this was what the patentee intended to claim, there can have been no inadvertence, and the re-issue cannot be broadly construed even though the actual invention were wider than that described, see Yale Lock Mfg. Co. v. James (1884), 28 O. G. 917; 20 Fed. Rep. 903; 22 Blatch. 294. That a re-issue as well as an original patent is to be so construed, if possible, as to cover the real invention according to the construction given to it by the patentee, see Klein v. Russell (1873), 19 Wall. 433. 4 That the Claims of the re-issue will not be enlarged by construction, but will be confined to the original invention, if capable of that interpretation, see Tyler v. Welch (1880), 3 Fed. Rep. 636; 17 O. G. 1508; 18 Blatch. 209. and first inventor or discoverer, his patent is valid for all that part which is truly and justly his own, provided the same is a material and substantial part of the thing patented, and definitely distinguishable from the parts claimed without right; and the patentee, upon seasonably recording in the Patent Of fice a disclaimer in writing of the parts which he did not invent, or to which he has no valid claim, may maintain a suit upon that part which he is entitled to hold, although in a suit brought before the disclaimer he cannot recover costs. Rev. Stat. Sects. 4917, 4922; O'Reilly v. Morse, 15 How. 62, 120, 121; Vance v. Campbell, above cited. A re-issued patent is within the letter and the spirit of these provisions." 23 O. G. 2119 (2120). Further, that void Claims in a reissue do not affect the valid Claims, see Reed v. Chase (1885), 25 Fed. Rep. 94; 33 O. G. 996; American Diamond Rock Boring Co. v. Sheldon (1885), 25 Fed. Rep. 768; 33 O. G. 1598; Giant Powder Co. v. Safety Nitro Powder Co. (1884), 10 Sawyer, 23; 27 O. G. 99; 19 Fed. Rep. 509; Reay v. Raynor (1884), 22 Blatch. 13; 26 O. G. 1111; 19 Fed. Rep. 308; Dryfoos v. Wiese (1884), 22 Blatch. 19; 26 O. G. 639; 19 Fed. Rep. 315; Havemeyer v. Randall (1884), 21 Fed. Rep. 404; Hayes v. Bickelhoupt (1884), 21 Fed. Rep. 567; 29 O. G. 368; 22 Blatch. 463; Worden v. Searls (1884), 21 Fed. Rep. 406; Odell v. Stout (1884), 22 Fed. Rep. 159; 29 O. G. 862; Gold & Stock Telegraph Co. v. Wiley (1883), 17 Fed. Rep. 234; Wood v. Packer (1883), 17 Fed. Rep. 650; Cote v. Moffitt (1883), 15 Fed. Rep. 345; Starrett v. Athol Mach. Co. (1883), 23 O. G. 1729; 14 Fed. Rep. 910; Schillinger v. Green 5 In Gage v. Herring (1882), 107 U. S. 640, Gray, J.: (646) “The invalidity of the new Claim in the re-issue does not indeed impair the validity of the original Claim, which is repeated and separately stated in the re-issued patent. Under the provisions of the Patent Act, whenever through inadvertence, accident, or mistake, and without any wilful default or intent to defraud or mislead the public, a patentee in his specification has claimed more than that of which he was the original honest effort to amend the original specification in conformity with the essential character of the invention, as shown by the state of the art at the date of the original patent, and only when it is incapable of any reasonable construction, without extending it beyond the limits of the actual invention, is it held to be a departure from the original patent, and on that account invalid.7 § 685. Third Proposition: Amendment by Re-issue not Permitted unless the Imperfections in the Original Patent Arose without Fraud, and from Inadvertence, Accident, or Mistake. The third proposition asserts that a re-issue cannot be allowed for the correction of an error unless it occurred through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention. way Brewing Co. (1883), 24 O. G. 495; 17 Fed. Rep. 244; Fetter v. Newhall (1883), 21 Blatch. 445; 25 O. G. 502; 17 Fed. Rep. 841; Tyler v. Galloway (1882), 12 Fed. Rep. 567; 20 Blatch. 445; 22 O. G. 2072. That a void Claim in a re-issue may be disclaimed, see Tyler v. Galloway (1882), 12 Fed. Rep. 567; 20 Blatch. 445; 22 O. G. 2072. 6 In Crandall v. Parker Carriage Goods Co. (1884), 20 Fed. Rep. 851, Coxe, J.; (852) "Where it can be seen that the patentee seeks, by apt words of description, to secure what he has honestly invented and nothing more, the court should hesitate to regard with favor the accusations now so freely made against re-issued patents." 28 O. G. 369 (370). That a re-issue should be construed in view of the state of the art at the time the original was granted, see Garneau v. Dozier (1880), 102 U. S. 230; 19 O. G. 61. That the state of the art when the original was filed may be shown on the question of identity between the original and re-issue to interpret the original as This proposition rests in part compared with the re-issue, see Eachus v. Broomall (1885), 115 U. S. 429; 33 O. G. 1265. 7 See § 746 and notes, post. § 685. 1 In Coon v. Wilson (1885), 113 U. S. 268, Blatchford, J.: (277) "As the rule is expressed in the recent case of Mahn v. Harwood, 112 U. S. 354, a patent cannot be lawfully reissued for the mere purpose of enlarging the Claim, unless there has been a clear mistake inadvertently committed in the wording of the Claim, and the application for a re-issue is made within a reasonably short period after the original patent was granted.' But a clear mistake, inadvertently committed in the wording of the Claim, is necessary without reference to the length of time." 30 O. G. 889 (891). In Ex parte Conklin (1874), 1 MacArthur, 375, MacArthur, J.: (378) "It will be seen by the terms of the statute that in order to entitle a party to the re-issue of a patent it is incumbent on him to show that it is inoperative or invalid by reason of a defective or insufficient specification, or that the patentee had claimed more than he in upon the doctrine of fraud and in part upon the doctrines of estoppel and abandonment. A wilful attempt to deceive the public, whether by express misrepresentation or by obscurity and insufficiency of statement, is a fraud. It violates the fundamental principles of contract, upon which the right of an inventor to his patent privilege depends. If such an attempt be proved, the patent is void ab initio; its errors are incapable of remedy by any method of amendment; and the inventor forfeits, as a penalty for his wrong-doing, the entire protection he might otherwise have obtained.2 An intentional misrepre vented, and that the error had arisen by inadvertence, accident, or mistake, and without any fraudulent intention. Uuless these circumstances exist in an application of this character, I can find no authority by which the Commissioner can re-issue a patent; as he is an officer of special and limited power, his action must be restricted to the particular cases mentioned in the statute. I refer to these requirements of law because, if the original patent is neither inoperative nor invalid, and if no error has been occasioned by accident or mistake, there must be a presumption of law and fact that the patentee has abandoned to the use of the public everything which he may have invented, but which he did not include in his Claims and specifications. The law presumes that every one who applies for a patent will embody his invention in specifications sufficiently definite to preserve as much of his discovery as he desires to protect by a patent. If, from mistake, he has overlooked anything within the scope of his invention, he may surrender his patent on that ground, and claim a new one, in accordance with amended specifications. The party asking this relief must be denied it unless he brings himself within the statute. When he knows all the facts relating to his own case, but, through culpable negligence or misconduct, has failed to claim all of his discovery, the law will not extend its aid to him, but will leave him to enjoy only such limited advantages as he has actually secured. The law reserves its remedies for the careful and vigilant who may have been misled from any of the causes mentioned in the statute." 5 O. G. 235 (236). In Jordan v. Dobson (1870), 4 Fisher, 232, Strong, J.: (237) "If the defect or insufficiency of the specifications of the surrendered patents had not arisen from inadvertence, accident, or mistake, and without fraudulent intention, the Commissioner had no right to re-issue the patent." 2 Abbot, 398 (404); 7 Phila. 533 (535). See also Ex parte Whitely (1886), 36 O. G. 1243; Bate Refrigerating Co. v. Eastman (1885), 24 Fed. Rep. 645; 32 O. G. 517; Clements v. Odorless Excavating Apparatus Co. (1884), 109 U. S. 641; 26 O. G. 353; Flower v. Rayner (1881), 5 Fed. Rep. 793; 19 O. G. 425; Meyer v. Maxheimer (1881), 20 O. G. 1162; 20 Blatch. 15; 9 Fed. Rep. 99; Giant Powder Co. v. California Vigorit Powder Co. (1880), 18 O. G. 1339; 6 Sawyer, 508; 4 Fed. Rep. 720; Giant Powder Co. v. California Powder Works (1875), 3 Sawyer, 448 ; 2 Bann. & A. 131; Knight v. Baltimore & Ohio R. R. Co. (1840), Taney, 106; 3 Fisher, 1; Opinion Atty. Gen. (1836), 3 Op. At. Gen. 165. 2 This doctrine rests not merely upon general principles of law, but upon the |