Is Brown v. Davis still good law?

Opinion · Supreme Court of the United States

Brown v. Davis

Brown v. Davis, 116 U.S. 237 (1886)

Type: Opinion
Court: Supreme Court of the United States
Jurisdiction: Federal
Date: 1886-01-11
Topic: general

How later courts describe this case

the lever is an essential element of the combination, and replacing it with the human hand avoids infringement

Citator

UpLaw has not yet analyzed Brown v. Davis. The absence of a flag is not a finding that it is good law.

Cited by: 36 opinions

Headnotes

Patent Law — Claim Construction Where a patent claim recites a lever "or its equivalent" as an element of the combination, the lever or its equivalent is an essential element of the claim, and infringement is not established where the lever is dispensed with and the human hand substituted, even though in the patented machine the hand was applied to work the lever. 116 U.S. at 241
Patent Law — Validity A reissued patent claim that enlarges the original claim to cover a shifting arrangement not substantially using the rotating crank-shaft described in the original is a claim that could not lawfully have been granted in the original patent; as a claim in a reissue it is invalid where the application for reissue was made nearly eleven years after the original patent was granted, after machines shifting by other means had gone into use subsequent to the date of the original, and no sufficient excuse is shown for the laches and delay. 116 U.S. at 242-243
Patent Law — Prior Invention In view of a prior, completed invention disclosing the shifting of the shoes by a movable cross-bar operated by hand, the shifting apparatus of the patent must be limited to the special arrangement of the rotating crank-shaft described and shown in the drawings; the words "substantially as described" in the claims properly confine them to that shifting mechanism. 116 U.S. at 242
Patent Law — Reissue Introducing new matter into the specification of a reissue for the purpose of reaching machines that the claims of the original patent would not reach, and of laying a foundation for broadened claims, is improper and precludes giving those claims a construction that would extend their scope. 116 U.S. at 243-244
Patent Law — Infringement Where the shifting mechanism of the patent, including its rotating crank-shaft, is an element in each claim, in view of the prior invention, and the defendant's machine does not use that mechanism, the claims are not infringed. 116 U.S. at 244

BROWN v. DAVIS,116 U.S. 237(1886)

6 S.Ct. 379

BROWN Othersv. DAVIS Others

APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE NORTHERN

DISTRICT OF NEW YORK.

Argued December 17, 1885.

Decided January 11, 1886.

Claim 2 of reissued letters patent No. 8589, granted to Charles F. Davis and William Allen, February 18, 1879, for an "improvement in grain drills" (the original patent, No 74,515, having been granted to said Davis as inventor, February 18, 1868), namely: "The shoes or hoes of a seed planter, attached to the main frame, substantially as described, in combination with a lever, or its equivalent, whereby they can be shifted at the pleasure of the operator, from a straight to a zigzag line, orvice versa," makes the lever, or its equivalent an essential element of the combination; and the claim is not infringed, where the lever is dispensed with and the human hand is substituted, although in the patent the hand is applied to work the lever. In view of a prior invention, claims 1 and 3 of the reissue, which were not made in the original patent, were held to be limited to the special shifting apparatus of the patent, because, if extended to cover shifting arrangements not substantially using a rotating crank-shaft, they became claims which could not lawfully have been granted in the original patent, and, as claims in a reissue, were invalid, because the application for the reissue was made nearly eleven years after the original patent was granted, and after machines effecting the shifting by other means than a rotating crank-shaft had gone into use subsequently to the date of the original, and no sufficient excuse was given for the laches and delay. It appeared as a fact, that new matter was introduced into the specification of the reissue for the purpose of reaching machines which the claims of thePage 238original patent would not reach, and of laying a foundation for claims 1 and 3 of the reissue. Claims 4, 5 and 6 of the reissue were held not to be infringed, because the shifting mechanism of the patent, with its rotating crank-shaft, was an element in each claim, in view of a prior invention, and was not used by the defendant.

This was a suit in equity on an alleged infringement of a patent. The facts are stated in the opinion of the court.

Mr. E.E. WoodandMr. B.F. Thurstonfor appellants.Mr. S.D. Bentley(Mr. William F. Cogswellwas with him on the brief) for appellees.

MR. JUSTICE BLATCHFORD delivered the opinion of the court.

This is a suit in equity, brought in the Circuit Court of the United States for the Northern District of New York, on re-issued letters patent No. 8589, granted to Charles F. Davis and William Allen, February 18, 1879, for an "improvement in grain drills," the original patent, No. 74,515, having been granted to said Davis, as inventor, February 18, 1868. The application for the reissue was filed January 24, 1879. The defences set up in the answer are, want of utility and novelty, invalidity of the reissue, and non-infringement. The specifications of the original and reissued patents are here placed side by side, the parts in each not found in the other being in italic:

Original.Reissue.

"Be it known that I, Charles | "Be it known that I, Charles F. Davis, of Auburn,in the| F. Davis, of Auburn, county county of Cayuga,andState | of Cayuga, State of New York, of New York, have invented | have invented certain new and certain new and useful improvements | useful improvements in grain in grain drills;and| drills,of whichthe followingisI do hereby declarethe following | a full, clear and exact description, to be a full, clear, and exact | reference being had to the descriptionof the same, reference | accompanying drawings, making being had to the accompanying | part of this specification,

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drawings, making | in which Figure 1 represents aapart of this specification, in | planor top viewof the drill, which Figure 1 represents a | with the seed-box removed,topplan of the drill, with the | (but its position shown by seed-box removed, but its position |dottedlines,) to show the parts shown byredlines, to | underneath it.Fig. 2 represents show the parts underneath it. | the crank-rod or shaftFigure2 represents the crank-rod | to which the front ends of the or shaft to which the front | drag-bars are attached, detached ends of the drag-bars are | from the machine. attached,whendetached from |Fig. 3 represents an end view the machine.Figure3 represents | of the drill, with the wheel removed, an end view of the drill, | to show the parts behind with the wheel removed, to | it, and representing, by show the parts behind it, and |full anddotted lines, the representing, byblack, dotted | several operative parts, andand redlines, the several operative | their positions under the parts, and their positions | changes of the machine or its under the changes of the | parts. Similar letters of reference machine or its parts. Similar | denotecorrespondingletters of reference,where they| parts in all thefigures.occur in the separate figures, | denotelikeparts in allofthe |drawings. | | The object and purpose of | The object and purpose of my inventionareto shift or | my inventionisto shift or change the seeding shoes or | change the seeding shoes or hoes from a straight to a zigzag | hoes from a straight to a zigzag line, andvice versa, and, | line, andvice versa, and further, to so hang the shoes | further, to so hang the shoes or hoes, as, in addition to the | or hoes, as, in addition to the shifting process, to admit of | shifting process, to admit of being raised separately, or the | being raised separately, or the whole series together, as may | whole series together, as may be found necessary. | be found necessary. | To enable others skilled in | To enable others skilled in the art to make and use my | the art to make and use my invention, I will proceed to | invention, I will proceed to

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describe the same with reference | describe the same with reference to the drawings: | to the drawings:

[EDITORS' NOTE: FIGURES 1-3 IS ELECTRONICALLY NON-TRANSFERRABLE.]

Upon an axle, A, supported | Upon an axle, A, supported on the usual carrying wheels, | on the usual carrying-wheels,

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B B, is mounted a main frame, | B B, is mounted a main frame, C, and on the main frame a | C, and on the main frame a seed-box, D, the slides of which | seed-box, D, the slides of which may be operated in any of the | may be operated in any of the well-known ways. In bearings, | well-known ways. In bearings, E, in the front portion of | E, in the front portion of the main frame, is hung, so as | the main frame, is hung, so as to rock or turn therein, a zigzag | to rock or turn therein, a zigzag or crank shaft, F, (shown detached | or crank-shaft, F, (shown detached in Fig. 2,) and to the | in Fig. 2,) and to the cranks or wrists,a a a, of this | cranks or wrists,a a a, of this shaft are connected,seriatim, | shaft are connected,seriatim, the drag-bars,b b b, by means | the drag-bars,b b b, by means of bows or yokes,c, each bow | of bows or yokes,c, each bow or yoke taking two of said | or yoke taking two of said wrists, as shown in Fig. 1. To | wrists, as shown in Fig. 1. To the rear ends of these drag-bars, | the rear ends of these drag-bars,b, are attached the shoes |b, are attached the shoes or or hoes, G, in any of the usual | hoes, G, in any of the usual well-known ways. In the projecting | well-known ways. In the projecting rear portion of the main | rear portion of the main frame C there is hung a shaft, | frame C there is hung a shaft,d, upon which there is a lever, |d, upon which there is a lever,e, by which it can be rocked or |e, by which it can be rocked or rolled in its bearings. At | rolled in its bearings. At suitable distances upon this | suitable distances upon this shaftdthere is placed a series | shaftdthere is placed a series of levers,f f, one for each shoe | of levers,f f, one for each shoe or hoe, which are kept in their | or hoe, which are kept in their proper positions on the shaft by | proper positions on the shaft by pins, 1, 1, or other suitable devices, | pins, 1, 1, or other suitable devices, but which can be moved | but which can be moved independent of the shaft or of | independent of the shaft or of each other, or all together, as | each other, or all together, as will be explained. The levers | will be explained. The leversfhave a hub or swell,g, at |fhave a hub or swell,g, at their central portions, where | their central portions, where they are slipped on to the shaft | they are slipped on to the shaft

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d; and into each one of these |d; and into each one of these hubs is set a pin, 2, which is | hubs is set a pin, 2, which is above the pins 1, 1, in the shaft, | above the pins 1, 1, in the shaft, so that each lever can be turned | so that each lever can be turned upon the shaft; but, when the | upon the shaft; but, when the shaft is rocked or turned, then | shaft is rocked or turned, then all the levers are worked simultaneously. | all the levers are worked simultaneously. To the forward | To the forward ends of these leversfthe shoes | ends of these leversfthe shoes or hoes are respectively connected | or hoes are respectively connected by a link or hinged rod, | by a link or hinged rod,h, the rearward-projecting ends |h, the rearward-projecting ends of said levers serving as handles | of said levers serving as handles for the operator to seize and | for the operator to seize and work separately, when necessary | work separately, when necessary to do so, or he can raise | to do so, or he can raise the whole series by seizing and | the whole series by seizing and working the levere. One end | working the levere. One end of the shaftdprojects through | of the shaftdprojects through the timber of the main frame, | the timber of the main frame, for convenience of placing the | for convenience of placing the parts, and upon it is a lever, H, | parts, and upon it is a lever, H, and a spring-locking lever,i, | and a spring-locking lever,i, connected with it, both of which | connected with it, both of which levers the operator may grasp | levers the operator may grasp at once, and by pressure first | at once, and by pressure first unlock the catch, and then move | unlock the catch and then move the main lever, H, and the shaft | the main lever, H, and the shaftd, as well as the parts connected |d, as well as the parts connected with it. The catch or locking-lever | with it. The catch or locking-leveritakes into or against |itakes into or againstastop-plate,j, on the main |thestop-plate,j, on the main frame, when not otherwise controlled. | frame, when not otherwise controlled. The upper portion of | The upper portion of the lever H serves as a handle to | the lever H serves as a handle work it by, and to the lower | to work it by, and to the lower end of it is pivoted a rack-bar, | end of it is pivoted a rack-barm, which takes into a pinionn, |or connecting-rod, m, which

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fastened on the end of the crank | takes into a pinion,n, fastened or zigzag shaft F, and, when | on the end of the crank or zigzag the pinionnis turned, the crank | shaft F, and, when the shaft is also turned, and, as it | pinionnis turned, the crank-shaft is turned, it shifts the shoes or | is also turned, and, as it is hoes into a zigzag or a straight | turned, it shifts the shoes or line, as the case may be. When | hoes into a zigzag or a straight the lever H, and the zigzag | line, as the case may be. When shaft F, and their several connected | the lever H, and the zigzag shaft and operative parts, are | F,and the connecting-bar m, and in the positions shown by the | their several connecting andblacklines in Figs. 1 and 3, the | operative parts, are in the shoes or hoes G are then in a | positions shown by thefullstraight line across the machine; | lines in Figs. 1 and 3, the shoes but, when the lever H | or hoes G are then in a straight is shifted into the position | line across the machine; but, shown by theredlines in Fig. | when the lever H is shifted into 3, it turns the shaft and moves | to the position shown by the the parts connected with them, |dottedlines in Fig. 3, it turns and the shoes or hoes will then | the shaft and moves the parts stand in a zigzag line across | connected with them, and the the machine, as shown by the | shoes or hoes will then stand in aredlines, or in what may be | zigzag line across the machine, termed two lines, one in advance | as shown by thefulllines, or in of the other; and, that | what may be termed two lines, the shoes or hoes may be thus | one in advance of the other; moved into one or two lines, | and,in orderthat the shoes or and still be susceptible of being | hoes may be thus moved into raised up separately, or in their | one or two lines, and still be series capacity, their connections | susceptible of being raised up and attachments must all | separately, or in their series capacity, be hinged or yielding. When | their connections and there is an odd number of shoes |theattachments must all be or hoes on the machine, the odd | hinged or yielding. When one should be in the rear series, | there is an odd number of shoes in which case there would be | or hoes on the machine, the odd no necessity of locking the | one should be in the rear series, lever H when the shoeswereso | in which case there would be no

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arranged, as the greater resistance | necessity of locking the lever on the greater number | H when the shoesareso arranged, would always keep them so. | as the greater resistance But, if an even number of shoes | on the greater number be used, and an equal number | would always keep them so. in each row, then the lever | But, if an even number of shoes would have to be locked or | be used, and an equal number fastened in both of its positions. | in each row, then the lever | would have to be locked or | fastened in both of its positions. | It is obvious that other mechanical | It is obvious that other mechanical devices may be used | devices may be used for for shifting the shoes or hoes | shifting the shoes or hoes from from a straight into a zigzag | a straight into a zigzag line, line, orvice versa. I have devised | orvice versa. I have devised several ways of accomplishing | several ways of accomplishing this movement,as, for| this movement.The rack-barinstance, a sheave, pulley, or |or connecting-bar m may be usedchain wheel may be keyed to |for this purpose, and therebythe end of the crank shaft, and |the shoes or hoes may be shiftedto this sheave or wheel a chain |from a straight to a zigzag line, may be attached, and, passing |or vice versa, said connecting-bararound it,extend thence to|m being held in position, ifthe lever, so that, byworking|desired, by any of the usual mechanicalthe lever, the same effectwould|devices for that purpose;be attained as by the rack and |second, by means ofa pinion. | sheave, pulley or chain wheel, |whichmay keyed to the end | of the crank-shaft, and to this | sheave or wheel a chain may be | attached, and, passing around | it, so that, bymeans thereof, | the same effectcanbe attained | as by the rack and pinion. | Another plan may be as follows: | Another plan may be as follows: A crank or cross arms | A crank or cross arms may be placed on the turning | may be placed on the turning shaft, and, by means of connecting | shaft, and, by means ofaconnecting

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rods,which connect the|rod orrods, the shaftcranks or arms with the levers, | may be turnedby the operator, the shaft may be turned, and | and the shoes thus thrown into the shoes thus thrown into a | a straight or zigzag line, as may straight or zigzag line, as may | be desired; or, instead of the be desired; or, instead of the | crank-shaft, the shoes may be crank-shaftto shift the shoes, | united in sets to different bars, the shoes may be united in sets | which may be straight, both to different bars, which may | bars being united to cross-bars be straight, both bars being | or heads at their ends. Now, united to cross-bars or heads at | by shiftingthe relations oftheir ends. Now, by shifting | these two bars,and by thethese two bars,they willshift |means aforesaid, or by the connecting-rodthe shoes attached to them,and|m, the operator canchange theminto the positions | shift the shoesor hoesattached hereinabove described. When | to them into the positions hereinabove the hoes are set in a zigzag | described. When the line, as above mentioned, and | hoes are set in a zigzag line, as are in that position raised up, | above mentioned, and are in a pin, 3, in the extreme end of | that position raised up, a pin, the shaftd, will take against a | 3, in the extreme end of the pin, 4, in the lever H, and | shaftd, will take against a pin, thereby shifting the hoes into | 4, in the lever H, and thereby more nearly a straight line, as | shifting the hoes into more they rise, or into quite a straight | nearly a straight line, as they line, depending upon the extent | rise, or into quite a straight to which they are raised. | line, depending upon the extent | to which they are raised. | Havingthus fullydescribed | Havingnowdescribed my my invention, what I claim | invention, what I claim as newthereinas new and desire to | and desire to secure by letters secure by letters patent, is: | patent, is: | 1.So attaching the shoes or| 1.The shoes or hoes of a seed-planter,hoes of a seed-planter to the|attached to the mainmain frame, as that, by means|frame, substantially as described,of a lever, or its equivalent, |whereby they may besaid shoes may be shifted from|simultaneously shifted froma straight to a zigzag line, or|a straight to a zigzag line, or

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vice versa, at pleasure, substantially|vice versa, by a single movement.as described. | | 2.I also claim, in combination| 2.The shoes or hoes of a seed-planter,with a series of shoes or|attached to the mainhoes that are capable of being|frame, substantially as described,changed from a straight to a|in combination with azigzag line, or vice versa, the so|lever or its equivalent, wherebyconnecting of said shoes, by independent|they can be shifted, at the pleasurelevers, to the lifting-bar, |of the operator, from aas that they may be raised|straight to a zigzag line, or viceby the operator individually, or|versa.as a whole, substantially as described. | | 3.I also claim hinging the| 3.The shoes or hoes of a seed-planter,shoe to both its drag-bar and its|attached to the mainindividual lever, so that the|frame, substantially as described,shoe may be raised and lowered|in combination with ain either of its changed positions, |rod or its equivalent, wherebyby a lever that is permanently|they can be shifted from alocated, substantially as|straight to a zigzag line, or vicedescribed." |versa. | | 4.A series of shoes or hoes|that are capable of being|changed from a straight to a|zigzag line, or vice versa, in|combination with independent|levers, connecting said shoes or|hoes with the lifting-bar, whereby|they can be raised by the|operator individually or as a|whole, substantially as described. | | 5.The shoe hinged to both|its drag-bar and its individual|lever, so that it can be raised or|lowered, in either of its changed|positions, by a lever that is permanently

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The cause was heard in the Circuit Court, on pleadings and proofs, and a decision rendered in May, 1881,Davisv.Brown, 19 Blatchford, 263, in pursuance of which an interlocutory decree was entered, in June, 1881, declaring the reissued patent to be valid, and to have been infringed as to all its claims, and awarding a recovery of profits and damages and a perpetual injunction. On the report of a master, a final decree was entered in February, 1882, by which the plaintiffs recovered $5689.91, as damages and costs. The defendants have appealed to this court.

The specification of the original patent stated the purpose of the invention to be, to change the seeding shoes or hoes from a straight to a zigzag line, andvice versa;and, also, to so hang the shoes or hoes, as, in addition to the shifting process, to allow the shoes or hoes to be raised all together, or any one separately. The mechanical means described in that specification, for shifting the shoes, are these: In the front part of the machine is a rotating shaft, with cranks on it, so arranged that the shaft does not have a straight continuous axis, but has sets of axes in different lines, alternating, so that, yokes being attached, each to two of the cranks, and each two of the cranks having axes in a different line from the line of the axes of the next two adjoining cranks, the yokes being of substantially equal length, and being connected by drag-bars, atPage 248the rear ends of the drag-bars, to the shoes, a rotating motion given to the crank-shaft will shift the shoes, by moving all of them, each alternate shoe moving in an opposite direction from that in which the shoe next to it moves, and thus a space being opened or closed, of double the distance through which any shoe travels. To rotate the crank-shaft, there is a cross shaft in the rear of the machine, on the end of which is an upright lever, which extends upwards to form a handle, and has pivoted to it below a bar, which extends forward, and the forward end of which is formed into a rack, which works into a pinion on the end of the crank-shaft. By moving the lever, the rack and pinion are worked, and the crank-shaft is rotated, and the shoes are shifted. The extent of the rotating movement of the crank-shaft is about half a circle, back and forth. The original specification says, that, instead of employing the crank-shaft, the shoes may be united in sets to different bars, which may be straight, both bars being united to cross-bars or heads, at their ends; and that, by shifting these two bars, the shoes attached to them will be shifted. But there is no more specific description of mechanism for the purpose, nor any drawing of such mechanism.

In the defendants' machine, every alternate shoe is connected with an immovable part of the frame, and every other alternate shoe is connected with a swinging cross-bar, which hangs down so as to have a motion back and forth in the arc of a circle, by reason of its being hung in bearings in the side of the frame. A rod extends from near the middle of the width of the swinging cross-bar to the rear part of the frame, behind the line from which the shoes are suspended, which rod is supported in the centre of its length, and terminates, at its rear end, in a handle, so that an operator can work it, and, by pulling it, shift simultaneously all the shoes that are attached to the swinging cross-bar. Two coiled springs are so arranged, that, when the rod is pulled, the springs are compressed, and, when the rod is released, the action of the springs tends to throw the swinging cross-bar and the shoes attached to it towards the front of the frame again, restoring them to the position from which the pulling of the rod moved them. Thus,Page 249only alternate shoes are shifted, but the positions of the toes of the shoes, relatively to each other, can be simultaneously changed, and a wider space, in a straight line, be opened between any two toes at any time. The shoes are so set that their toes are never in a straight line across, but, when nearest to each other, are somewhat out of a straight line, and the pulling of the rod causes the distance between them to increase. The shoes which move in increasing such distance do so through the rotating motion to and fro of the swinging cross-bar to which they are attached, such motion being imparted by the pulling, at the rear of the machine, of the rod attached to the swinging cross-bar. In the plaintiffs' machine, the shoes which move, in increasing such distance, do so through the rotating motion to and fro of the crank-shaft to which they are attached, such motion being imparted by the pushing at the rear of the machine of the rod that carries the rack, the rod being worked by a lever.

An examination of the claims of the original and reissued patents shows that claim 2 of the reissue is substantially the same as claim 1 of the original; that claim 4 of the reissue is substantially the same as claim 2 of the original; and that claim 5 of the reissue is substantially the same as claim 3 of the original.

The Circuit Court held that claim 2 of the reissue was infringed, although in the defendants' machine there is no lever such as the lever H of the patent, and no equivalent or substitute for it. The view taken was, that claim 2 was infringed, because the defendants use a rod, the end of which is pushed and pulled by the hand of the operator, while in the patent the lever H pulls and pushes the end of the rod. But the lever, or its equivalent, as a mechanical instrument, is made an essential element in claim 2, and dispensing with the lever, and using instead the human hand, is not the use of an equivalent, although in the plaintiffs' machine the hand is applied to work the lever.Water Meter Co. v.Desper,101 U.S. 332,337;Gagev.Herring,107 U.S. 640,648;Fayv.Cordesman,109 U.S. 408,420,421;Sargentv.Hall Safe and Lock Co.,114 U.S. 63,86.Page 250

In order to determine what construction ought to be given to the other claims of the reissue, it is necessary to consider an invention made by one Powers, at Madison, Wisconsin, in 1862, the invention of Davis being carried back only to September, 1866. During the winter of 1861-2, and the spring of 1862, Powers was selling, at Madison, grain drills with iron drag-bars. During the season of 1862, noticing the working of drills in the field, he conceived the idea that the shoes could be put into single and double ranks by a more easy method than that then used. He worked out a plan, and made a model of it, and applied for a patent, November 10, 1862. The patent was ordered to issue December 6, 1862, but was never issued. The reason is not stated. The specification filed states that the "invention consists of a device to enable the shovels or plows of a drill to be set in single or double rows or ranks, with greater ease and facility than hitherto." The method described and shown in the drawings is to have a cross row of stationary shovels; and a cross row of other shovels, attached to a cross-bar, which is arranged, at each end of it, so as to slide to the extent of eight inches to and fro, in a groove. Thus, two rows may be made, or the sliding cross-bar may be set at a point where all the shovels will be in a line, and one row be formed. The movable cross-bar is moved by hand, and secured, when set, by bolts. The claim covers "the method of double and single ranking the drill teeth, by the adjustment of the sliding cross-bar A, to which are attached the alternate drill teeth or shovels, to different positions between the side pieces of the frame." The description states, that, "by this device, double or single ranking can be effected in a moment, instead of the more tedious process of other similar machines," and that "double and single ranking is a highly important feature in a drill, to adapt it to different soils and circumstances." Powers put this shifting arrangement "on to two or may be three drills" which he had on hand. He testifies to the use of two of them, and says they worked perfectly, so far as changing the rank of the drill was concerned. This was a completed invention. The idea of changing the relative positions of the shoes by having one row of them stationary and moving the other, which is the idea developedPage 251in the defendants' machine, was fully embodied in Powers' machine. It had no lever and rod to do the work of the hand in moving the sliding cross-bar, and that cross-bar was held in position, when set, by bolts.

In view of this invention of Powers, we are of opinion that the invention of the Davis patent must be limited, so far as the shifting apparatus is concerned, to the special arrangement of the rotating crank-shaft described, and shown in the drawings. The words "substantially as described," found in each of the first two claims of the original patent, properly confined those claims to the shifting mechanism described. If claim 1 of the reissue is given a construction which includes any arrangement for shifting not substantially using a rotating crank-shaft, it becomes a claim which could not lawfully have been granted in the original patent; and, as a claim in a reissued patent, it is invalid, within the defences set up in the answer, because the application for the reissue was made nearly eleven years after the original patent was granted, and after machines effecting the shifting by other means than a rotating crank-shaft had gone into use subsequently to the date of the original patent, and no sufficient excuse is given for the laches and delay. The same remarks apply to claim 3 of the reissue.

In view of the rulings of this court on the subject of reissued patents, made since the decision in this case was made by the court below, in May, 1881, this case must be considered in view of the fact that the new matter introduced into the specification of the reissue was put in for the purpose of reaching machines which the claims of the original patent would not reach, and of laying a foundation for claims 1 and 3 of the re-issue. The inventor and patentee, Davis, distinctly says this, in his testimony. The principal interpolation is in these words: "The rack-bar or connecting-rodmmay be used for this purpose, and thereby the shoes or hoes may be shifted from a straight to a zigzag line, orvice versa, said connecting-barmbeing held in position, if desired, by any of the usual mechanical devices for that purpose." In the original specificationmis called a "rack-bar," because it is pivoted at one end to the lower end of the lever H, and has on its other end a rack takingPage 252into a pinion on the end of the crank-shaft. But, in the reissue,mis called "a rack-bar or connecting-rod." Again, in the reissue, the reference to the letter H, as connected with and working the chain to be used with the sheave or wheel, in the second suggested alternative means of shifting, is erased, so as not to make the use of the lever H necessary. Before these changes, the defendants' machine, which has no lever and no rotating crank-shaft, would not have been within the scope of the original claims, but, if the rack-bar were to become a connecting-rod, it was thought it might cover the rod in the defendants' machine. Claim 3 of the reissue was framed on this view, of shifting by a rod alone, while claim 1 is made so broad as to seem to claim shifting by any means, by a single movement.

As to claims 4, 5 and 6 of the reissue, the shifting mechanism of the patent, with its rotating crank-shaft, must, in view of the Powers invention, be considered as an element in each claim; and that mechanism is not used by the defendants.

It follows from these views, thatThe decree of the Circuit Court must be reversed, and thecase remanded, with a direction to dismiss the bill, with costs.