Appeal from the District Court of the United States for the Eastern District of Wisconsin; Ferdinand A. Geiger, Judge.
Before EVANS, SPARKS, and ALSCHULER, Circuit Judges.
This action for patent infringement grows out of the activities transpiring at the Jones Island sewage plant at Milwaukee, Wisconsin. Appellee owned certain United States letters patent respectively covering a process and an apparatus for purifying sewage and analogous liquids. They, together with their dates of issuance and expiration, are set forth in the margin.*fn1 Excepting the reissue patents, they will hereinafter be referred to by the last three numerals of their respective numbers.
The original Jones Island plant was held to infringe the first four of appellee's patents in the order named above in City of Milwaukee v. Activated Sludge, Inc. (C.C.A.) 69 F.2d 577, hereinafter referred to as the City Case. The Sewerage Commission of the City of Milwaukee, a separate municipal corporation, constructed and operated the Jones Island plant, and it was adjudged an infringer of the same four patents. See Sewerage Commission of City of Milwaukee v. Activated Sludge, Inc. (C.C.A.) 69 F.2d 594, and also Sewerage Commission v. Activated Sludge, Inc. (C.C.A.) 81 F.2d 22.
The action at bar was instituted on June 1, 1934, and originally charged infringement or threatened infringement of all the patents above referred to, except Reissue No. 19,577, which was subsequently substituted for No. '561, of which it was a reissue, as hereinafter set forth. Pursuant to public advertisement of the Sewerage Commission, bids had been submitted for the construction of an extension to the Jones Island sewage plant and, pursuant thereto, various contracts were awarded. The successful bidding contractors were originally made parties to this action. For lack of jurisdiction, service was quashed as to two, and by permission of the court, the Sewerage Commission was permitted to intervene and file its answer. Prior to the trial, appellee dismissed its bill as to the first three above named patents, and at the opening of the trial the issues were further limited to claim 2 of Reissue Patent No. 19,577, claim 2 of No. '587, and claim 3 of No. '017. At the conclusion of the evidence, appellee, by permission of the court, dismissed its action with prejudice as to all the contractors with respect to the issue of infringement, direct or contributory, of Reissue Patent No. 19,577. The court found all the claims last referred to valid, and that none of the appellants were possessed of any right or license under any of the patents in suit, and that they were all owned by appellee, who had the right to sue for past infringements thereof; that the appealing contractors had contributorily infringed claim 2 of No. '587, and claim 3 of No. '017 by constructing and by supplying materials and machinery for the construction of the extension to the Jones Island plant; that appellant, the Sewerage Commission, had infringed, and was continuing to infringe, claim 2 of No. '587, and claim 2 of Reissue No. 19,577 by constructing the extension to the Jones Island plant, and was threatening to infringe claim 3 of No. '017 by its operation of the extension to the Jones Island plant, and had infringed and continued to infringe claim 3 of No. '017 by the operation of the original Jones Island plant. It was held that the appealing contractors should be held harmless and should be indemnified by the Sewerage Commission for any damage found due from them, upon accounting, by reason of their contributory infringement.
Apparatus patent No. 19,577 is a reissue of patent No. 1,341,561. After the institution of the instant action, but prior to the trial, Judge Lindley of the District Court held claims 1, 2 and 3 of the latter patent invalid. Guthard v. Sanitary District of Chicago, 8 F.Supp. 329. Immediately thereafter, on February 16, 1935, appellee filed a disclaimer of claims 1, 2 and 3 of the original patent, and at the same time filed an application for its reissue, which was granted on May 20, 1935, as Reissue No. 19,577. On the issue day of the instant action, notice of appellee's motion to file a supplemental bill of complaint, claiming infringement of Reissue No. 19,577, was served on appellants, and the motion was granted on May 20, 1935.
The reissue patent is for apparatus, and discloses and claims a specific form of sewage tank in which the liquid is caused to flow in a helix around and around the tank, and through it from one end to the other. It is more particularly described in Judge Lindley's opinion, and it is conceded that the aeration tanks of the new extension of the Jones plant infringe claim 2 of the reissue patent, if valid. Claim 2 of the original patent and claim 2 of the reissue patent are set forth in the margin.*fn2
It was first contended by appellants that the reissue was invalid because there was no evidence before the Commissioner of Patents of such accident, inadvertence or mistake as to entitle appellee to the reissue under Rev. St. § 4916, 35 U.S.C.A. § 64. The statute does not define the words "accident," "inadvertence" and "mistake," and perhaps that was not necessary on account of their general lack of ambiguity, as here used. It is clear, however, that when relied upon as a basis for a reissue, the accident, inadvertence or mistake must be real and in good faith and not simulated. To establish such basis, the statute does not require an oath to support it, and the Commissioner in passing upon the petition may supplement its disclosures with any pertinent information gained from the records in his office.
In support of this contention, appellants rely upon Union Switch & Signal Co. v. Louisville Frog, Switch & Signal Co. (C.C.A.) 73 F.2d 550; and Firestone Tire & Rubber Co. v. United States Rubber Co. (C.C.A.) 79 F.2d 948, 960. In the first case, the petition merely recited that the error in the original claim arose through inadvertence, accident or mistake, and this statement was entirely unsupported. In the second case, the petition merely contained the unsupported averment that the failure to present original claims of the scope indicated by the petition for a reissue arose inadvertently through an oversight of the inventor. In each of these cases, the petition for reissue constituted merely an effort to recapture claims which had been rejected earlier, and of course each reissue was properly held invalid. In the Firestone Case, the court said,
"While the statute is not specific as to that which constitutes inadvertence, accident, or mistake, and the courts have read into it a right to reissue where justified by equitable principles, Keller v. Adams-Campbell Co., 264 U.S. 314, 317, 44 S. Ct. 356, 68 L. Ed. 705, it seems to us clear from the authorities that while great liberality must be accorded the inventor who has failed in his original application to claim his true invention, and that upon substantial showing that he has failed to do so through some error innocently made, the decision of the Commissioner as to his right to a reissue will not be reviewed, yet, where no basis for a conclusion that there was such error is either asserted or proved, or where the evidence is conclusive that there was none, the reissue is void."
We understand this to be the rule applicable to such cases, and it is supported by the current of authority. It is worthy of note that most of the judicial expression on this subject involves cases where the original claims were sought to be enlarged by the reissue. See Mahn v. Harwood, 112 U.S. 354, 5 S. Ct. 174, 6 S. Ct. 451, 28 L. Ed. 665; Van Kannel Revolving Door Co. v. Winton Hotel Co. (C.C.A.) 276 F. 234; American Automotoneer Co. v. Porter (C.C.A.) 232 F. 456; Wayne Mfg. Co. v. Coffield Motor Washer Co. (C.C.A.) 227 F. 987; Justi v. Clark (C.C.A.) 108 F. 659.
In the instant case, there was no effort to broaden the original claim or to recapture that which had theretofore been denied. The reissue claim merely sought to narrow the original claim which Judge Lindley had held too broad. These matters were disclosed to the Commissioner at the earliest possible moment after that decision. The patentee had died and the entire history of his various patents was in the Commissioner's possession, with whatever information that may have accorded him. Under these circumstances, the patent was reissued under the rule which accords to a patentee great liberality, and we do not feel justified in disturbing the action of the Commissioner in this respect.
It is urged by appellants that the original inventor must have intended to claim the subject matter of the reissue claim, and that there is an absence of showing in this respect. The cases relied upon in support of this contention involved reissues which either broadened the original claims, or claimed a different invention from that disclosed by the original patent. Here, however, the original claim included, but was broader than, the reissued claim, and of course the patentee originally intended to claim everything which his original claim included. The fact that he failed to limit his original ...