Wing v. Anthony/Opinion of the Court

by William Burnham Woods

United States Supreme Court

106 U.S. 142

Wing  v.  Anthony

It is manifest that the reissued patent was taken out for the purpose of embracing under its monopoly what was not included by the original patent. The original patent was not, in the language of the statute, 'inoperative or invalid by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new.' The original claim was for a mechanism, namely, 'a plate-holder in combination with the frame in which it moves, constructed and operating in the manner and for the purpose' set forth in the specification. The claim of the reissued patent is plainly for a process, namely, 'the bringing of the different portions of a single plate, or several smaller plates, successively into the field of the lens of the camera, substantially in the manner and for the purpose specified.' This claim would cover any mechanism by which the different parts of the plate could be brought into the field of the lens. In fact, the specification of the reissued patent suggests a different contrivance, namely, the causing of the lens of the camera to be made adjustable in different positions with respect to the plate, while the plate remains stationary, so that different portions of the plate may be brought into the field of the lens. It is quite clear that the original patent covers a mechanism to accomplish a specific result, and that the reissued patent covers the process by which that result is attained, without regard to the mechanism used to accomplish it. The reissue is, therefore, much broader than the original patent, and covers every mechanism which can be contrived to carry on the process.

In the case of Powder Co. v. Powder Works, 98 U.S. 126, it was held by this court that when original letters patent were taken out for a process, the reissued patent would not cover a composition unless it were the result of the process, and that the invention of one involved the invention of the other.

The converse of this proposition was decided by this court in the case of James v. Campbell, 104 U.S. 356. In that case the court said that a patent for a process and a patent for an implement or a machine are very different things, and decided, in substance, that letters patent for a machine or implement cannot be reissued for the purpose of claiming the process of operating that class of machines, because if the claim for the process is anything more than for the use of the particular machine patented, it is for a different invention. To the same effect precisely is the case of Heald v. Rice, 104 U.S. 737. The present case falls within the rule laid down in the authorities cited.

Southworth's invention, as described in his original patent, must be limited to what is there set forth, namely, a mechanism for bringing successively different portions of the plate within the field of the lens. He did not discover the law that to get the best effect in taking pictures the plate, or part of the plate, on which the picture was to be taken should be brought into the field of the lens, nor did he invent the method of doing this by tilting the camera itself into different positions with respect to the object to be pictured. This law was known, and the practice mentioned was followed, long before Southworth's invention. His device was simply a new and specific means to take advantage of a well-known law of nature. In his reissue, by claiming as his invention the process of bringing different parts of the plate successively into the field of the lens, he seeks to put himself in as good a position as if he had been the first to discover the law referred to, and the first to invent the method of taking advantage of the law by tilting his camera into different positions. In claiming the process, he excludes all other mechanisms contrived to accomplish the same object. This he could not rightfully do.

We are of opinion that the claim of the reissued patent is for a different invention from that described in the original patent, and that the reissue is therefore void. Gill v. Wells, 22 Wall. 1; The Wood-paper Patent, 23 Wall. 566; Powder Co. v. Powder Works, 98 U.S. 126; Ball v. Langley, Id. 128; Miller v. Brass Co. 104 U.S. 350; Janes v. Canbell, Id. 356; Heald v. Rice, Id. 737; Johnson v. Flushing & North Side R. Co. 105 U.S. 539; Bantz v. Frantz, Id. 160.

The decree of the circuit court must be affirmed.

Notes