U.S. Supreme Court
Smith v. Nichols, 88 U.S. 21 Wall. 112 112 (1874)
Smith v. Nichols
88 U.S. (21 Wall.) 112
1. Under the seventh and ninth sections of the Patent Act of 1837, which authorize a patentee, when by mistake &c., he may have made his specification too broad, to make disclaimer of such parts of the thing patented as he does not claim under it and to record his disclaimer in the Patent Office &c., with various provisos as to its effect on suits pending and as to unreasonable neglect and delay in entering the disclaimer at the Patent Office, the patentee may file a disclaimer as well after as before the commencement of a suit. It would, however, in case of its being filed after, be the duty of the court to see that the defendant was not injuriously taken by surprise and to impose such terms as right and justice might require. The question of unreasonable delay would be open for the consideration of the court, and the complainant could recover no costs.
2. A mere carrying forward of an original conception patented -- a new and more extended application of it -- involving change only of form, proportions, or degree -- the substitution of equivalents doing the same thing as did the original invention by substantially the same means with better effects -- is not such invention as will sustain a patent. It is the invention of what is new, and not the arrival at comparative superiority or greater excellence in that which was already known, which the law protects as exclusive property and which it secures by patent.
3. Hence, where a textile fabric, having a certain substantial construction and possessing essential properties, has been long known and in use, a patent is void when all that distinguishes a new fabric is higher finish, greater beauty of surface, the result perhaps of greater tightness of weaving and due to the observation or skill of the workman or to the perfection of the machinery employed.
Smith, a holder of a patent from the United States, filed a bill on the 19th of November, 1868, against Nichols in the court below to enforce and protect his rights as patentee. The subject matter of the patent was an elastic woven fabric, especially adapted to use in forming gores for what are known as Congress or gaiter boots, though applicable to other uses.
On the 22d of January, 1870, he filed a disclaimer of right to certain matters included in his patent, and on the 27th of May, 1872, of certain other matters so included, both chanrobles.com-red
being alleged to have been included through inadvertence and mistake. These disclaimers were made in virtue of the seventh and ninth sections of the Patent Act of 1837, sections which read thus:
"SECTION 7. Whenever any patentee shall have, through inadvertence &c., made his specification of claim too broad, claiming more than that of which he was the original or first inventor, some material and substantial part of the thing patented being truly . . . his own, any such patentee . . . may make disclaimer of such parts of the thing patented as the disclaimant shall not claim to hold by virtue of the patent &c., which disclaimer shall be in writing &c., and recorded in the Patent Office. . . . But 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."
"SECTION 9. Whenever by mistake &c., any patentee shall have, in his specification, claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the first and original inventor or discoverer, . . . in every such case, the patent shall be deemed good and valid for so much of the invention or discovery as shall be truly and bona fide his own. . . . And every such patentee &c., shall be entitled to maintain a suit at law or in equity on such patent for any infringement of such part of the invention or discovery as shall be bona fide his own. . . . But in every such case in which a judgment or verdict shall be rendered for the plaintiff, he shall not be entitled to recover costs against the defendant unless he shall have entered at the Patent Office, prior to the commencement of the suit, a disclaimer of all that part of the thing patented which was so claimed without right, provided however that no person bringing any such suit shall be entitled to the provisions contained in this section who shall have unreasonably neglected or delayed to enter at the Patent Office a disclaimer as aforesaid."
The defendants, relying on Wyeth v. Stone, [Footnote 1] a case decided by Story J., set up that in consequence of these disclaimers being filed after the suit was brought, the suit could not be chanrobles.com-red
entertained under the said seventh section, inasmuch as the concluding part of that section prevented the disclaimer from affecting any action "pending at the time of its being filed," and the suit thus stood as one of a patentee with a patent for things which he confessed were already known -- a void patent, therefore. And in addition that as to the second disclaimer -- that filed on the 27th of May, 1872, and therefore more than four years after the bill was filed -- the second proviso of the ninth section about unreasonable neglect and delay in entering it at the Patent Office applied.
But the court did not consider this a sufficient reason for sending the complainant out of court and compelling him to file a new bill, and it therefore heard the case on its merits.
Proceeding, then, with a general statement as to these.
The fabric patented, as limited by the two disclaimers, was asserted in the bill to be a new manufacture, and that its distinguishing merit consisted in the fact that while it was extremely elastic, it might be shaped or cut either crosswise or bias without detriment to its elastic properties, the rubber cords which gave to it those properties being so held by the weft threads of the fabric that they could not "creep" or slip so as to withdraw themselves from their proper position by any force of tension that might be needed in adapting them to their intended use.
It appeared, indeed, that owing to the excellent manner of weaving and perhaps from other causes, the fabric had gone into extensive use, and for the especial purpose of elastic gores in gaiter boots was in fact the only fabric now largely used. The evidence, however, showed that a fabric substantially the same in construction and possessing virtually the same properties had been known and used in this country previous to the fabric produced and patented by Smith, and that the superiority of the fabric patented was due solely either to improved machinery or to the greater mechanical skill employed in the formation of the fabric, by chanrobles.com-red
which an excellence in degree was obtained, but not one in kind.
The court accordingly dismissed the bill. And the complainant took this appeal.