Statement of the case. and was forced through the discharge pipe by the same means as those used by the patentees. The chief ground on which the defendants resisted the invention were: First. That the claim was broader than the invention. Secondly. No infringement, want of originality, setting up here as the same in principle certain other syringes confessedly of prior date, as: This it was admitted was a large step from the globe. syringe towards that of Davidson. It was composed of an India-rubber chamber, in form cylindrical, with metallic rims or casings at the ends. From these casings there proceeded a metallic tube of about one-third the diameter of the metallic casings, upon which tubes the inner end of flexible pipes, for eduction and injection, were drawn. Appropriate valves were placed within these small metallic tubes. The mode of using was meant to be the same as in the Davidson syringe. But the difficulty was that the metallic heads, which formed a material part of the inclosure, being rigid, counteracted, by their connection with the elastic part of the chamber, the patient's effort to compress it. Accordingly the patient, if a female, or otherwise feeble, could not well compress it, and even when the party using it was not feeble, the strength required to compress the chamber was so considerable that no one cared to use it. Practically it proved of no value. Very few were ever sold. The Davidson syringe on the other hand came into nearly universal use at once. 2. THE THIERS SYRINGE. This was an instrument of French manufacture. It had two flexible tubes, with suitable valves, but it did not have Statement of the case. an elastic bulb or chamber, in form at least, like that shown in the patent. A diagram of it is below. 1. It was not made of elastic material, but of a metal base plate and a rubber hood set upon it; the rubber hood forming one substantial part of the chamber to be collapsed, and the metal base plate forming the other substantial part thereof. 2. The chamber was not expanded by the elasticity of the material, but by means, wholly or partly, of a metal spring placed within the chamber. 3. The necessary prolongation of the flow of the pressure after the collapsing of the chamber had ceased was accomplished, not by the reaction of the chamber alone, as in the Davidson instrument, but by that and an air-chamber acting in connection with it. These Thiers syringe were imported to and sold in this country in small numbers until about the time of the introduction of the Davidson syringes, and soon after that disappeared from the market. In addition to these were numerous syringes, known as the Galante, the Phelps, the Johnson, the Hernstein, the Argument for the appellants. Leroy, the Feuchtwanger, and others, some of which had had a certain sale and others none; all were displaced by Davidson's. Much evidence was taken on the one part to show their priority to that of Davidson, and on the other to disprove it; but no priority was sufficiently shown. The court below decreed an injunction, and from the decree this appeal came. Messrs. H. F. French and G. S. Boutwell, for the appellants : The original patent was neither "inoperative nor invalid,' nor was the specification "defective or insufficient." The case, therefore, does not fall within the 13th section of the act of 1836, and the reissue was, therefore, without authority of law.* The claim in the reissued patent is broader than the invention, and, consequently, is void. If the fair construction of the reissue claim includes any syringe of which the Davidsons were not the original and first inventors, then the claim is broader than the invention, and so is void. Now, a fair construction includes both the Maw and the Thiers syriuge; both of them old, known, and used. Can any other construction be supported? By striking out the words "or chamber," and giving a very literal meaning to the word "bulb," we may, indeed, make a distinction. We may say the Maw syringe has everything else, but it has not a bulb. Even this, however, cannot fairly be said of the Thiers syringe, for it has an elastic bulb. But those words cannot be stricken out. The surrender for reissue was for the very purpose of inserting them. The original claim describes a bulb in the words "prolate spheroidal-shaped elastic sac." The word chamber was not there. It was not in the caveat, and it was used in the reissued claim with a purpose. It is, in no sense, a synonyme with bulb. Every bulb is a chamber, but a chamber is not necessarily a bulb. Chamber is the larger phrase, and may include bulb, but it certainly includes cylinder as well. Any inclosed space is a chamber. * Burr v. Duryee, 1 Wallace, 531; Case v. Brown, 2 Ib. 320. Argument for the appellee. In the Davidson caveat, they describe their sac as spheroidal, cylindrical, or globular. The Maw syringe has everything in the Davidson syringe but the bulb. The Davidson syringe, as described in the reissue, includes every element of the Maw, including the chamber, which the Davidsons do not now pretend to have invented. The syringe made by the appellants is a combination of old parts, substantially different from the Davidson syringe in structure and effect. 1. Our bulb is not their bulb, but different in this, that ours has but one aperture, while theirs has two apertures. 2. The arrangement, or organization, differs in this, that in ours, the fluid in the bulb is above the point of delivery, and we have gravity to aid in expelling it, while in theirs, one-half the fluid is below the centre of the bulb. 3. Ours has a three-way piece, not found in theirs, and which cannot be used with theirs. 4. Ours is so constructed as to receive other pipes for various purposes. These differences constitute ours a different instrument, different in its combination of parts, and different in its mode of operation; more different from it than theirs was from the Maw.* The patent is wholly void, as well for the invention claimed in the original patent, as for the broader claim found in the reissued patent, because syringes containing all that is claimed as the invention of the Davidsons, were long before their alleged invention, known and used in this country. Messrs. B. R. Curtis and Causten Browne, contra. 1. The limitation of the claim, as found in the patent, in the form in which it is issued, was caused from actual inadvertence and mistake of the Commissioner of Patents. The Davidsons acquiesced from necessity in the commissioner's decision; but the Patent Office had a right to admit and correct its own blunder, and to grant a reissue with the claim as originally made. * McCormick v. Talcott, 20 Howard, 405. Opinion of the court. 2. The terms bulb, or chamber, are used as synonymous terms. Besides, the argument of the other side assumes that the invention patented, embraces any and all elastic chambers, by the intermittent compression and relaxation of which the instrument is made to operate as an injection syringe; whereas, it covers only instruments having substantially such an elastic chamber as is described. 3 The Richardson syringe is our syringe, under a less useful form. It is, in fact, the form in which Dr. Davidsou first invented it, "three-way piece and all," a form abandoned as less simple than the one where the pipes were in an axial line. The gravity of an ounce or two of water is small; of other things sometimes injected less. But, in our form, the benefit of gravity can be obtained by turning the sac up perpendicularly. 4. The Maw syringe had two flexible tubes with suitable valves, and it had an elastic chamber, but it did not have an elastic bulb, or chamber, substantially like that shown in the patent. We need not examine particularly the construction of the elastic chamber. Whether the difference was theoretically great or small, practically, it was a very important one. The same thing is true of the Thiers syringe, which has marked differences in the construction of the elastic chamber, particularly the metal spring to expand it, and which proved of little practical use. Mr. Justice NELSON delivered the opinion of the court: Several objections are taken to this reissued patent; among others, and which is the most material, that the claim is broader than the invention. The 13th section of the act of 1836 authorizes a surrender, and an amended specification, when the patent issued is inoperative, or invalid, by reason of a defective or insufficient description or specification; or, "if the error has, or shall have arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention." We do not doubt that the commissioner had full authority to grant the |
