Opinion of the Court.

dence in Fisher v. Craig should "be considered in evidence in this case."

The first reissue is not found in the record. The plaintiffs do not appear to have put it in evidence, although the bill avers that it is ready in court to be produced by them, or a duly authenticated copy of it. Nor does it appear that the defendants put it in evidence, although, as the suit of Fisher v. Craig was founded upon it, it is to be inferred that it must have been part of the evidence taken and on file in that case, and which, by the stipulation, was to be considered in evidence in this case. Nevertheless, neither party has brought it before us.

The plaintiffs contend, that, in order to determine the validity of the second reissue, that must be compared with the first reissue, on the surrender of which it was granted; that, in the absence of the first reissue no such comparison can be made; that, therefore, it must be presumed that the first reissue and the second reissue were both for the same invention; and that it must also be presumed that the second and third claims of the second reissue were contained in the first reissue. But we are of opinion that, the original patent and the second reissue being properly before us, we have a right to compare them with each other, and that, upon such comparison, the question of the validity of the second reissue must be determined.

Under the proffer in the bill of complaint, it was for the plaintiffs to introduce the first reissue in evidence; and, if they desired to show an excuse for the delay of more than eight years and three months after the granting of the original patent in applying for the second reissue, by showing that the first reissue, granted a little less than two years after the date of the original patent, contained substantially claims 2 and 3 of the second reissue, they should have affirmatively made good that excuse, by themselves introducing the first reissue in evidence, or bringing it before us in the record as a part of the evidence taken and on file in the case of Fisher v. Craig.

Under the allegations contained in the answer that the original patent did not claim the devices covered by the 2d and 3d claims of the second reissue, and that said 2d and 3d claims

Opinion of the Court.

are new matter, not contained in the original patent, and that the second reissue is void by reason of such new matter, the question is fairly raised, on the face of the original patent and the second reissue, as to the effect of the delay of more than eight years and three months after the date of the original patent in applying for the second reissue, the case standing, for the purpose of such comparison, as if there never had been any first reissue.

In the case of Wollensak v. Reiher, 115 U. S. 96, the following propositions were laid down by this court: (1) The question whether delay in applying for a reissue of a patent has been reasonable or unreasonable is a question of law for the determination of the court. (2) The action of the Påtent Office in granting a reissue, and deciding that, from special circumstances shown, it appeared that the applicant had not been guilty of laches in applying for it, is not sufficient to explain a delay in the application which otherwise appears unreasonable and to constitute laches. (3) Where a reissue expands the claims of the original patent, and it appears that there was a delay of two years, or more, in applying for it, the delay invalidates the reissue, unless accounted for and shown to be reasonable. These principles are applicable to the present case, and require that the decree of the Circuit Court should be reversed. The delay is not accounted for by the plaintiffs, nor shown to be reasonable.

The descriptive parts of the specifications of the original patent and the second reissue are substantially alike, and the drawings of the two are the same; but claims 2 and 3 of the second reissue are not found in the original patent. The claim in that patent to the swivel-jointed nozzle and pipes A BD E, combined with the other parts of the machine, and to nothing else, was, under the decisions of this court, an abandonment and dedication to the public of sub-combinations less than the whole combination, after an unexplained delay such as that in the present case. The 2d and 3d claims of the second reissue are claims to such sub-combinations. It was not indicated in the specification of the original patent that Fisher considered his invention as consisting in anything less

Opinion of the Court.

than a combination of all the elements embraced in the combination claimed in that patent.

In the recent case of Parker & Whipple Co. v. Yale Clock Co., 123 U. S. 87, it was held that what was suggested or indicated in the original specification, drawings, or Patent Office model, is not to be considered as a part of the invention intended to have been covered by the original patent, unless it can be seen from a comparison of the original and the reissued patents, that the invention which the original patent was intended to cover embraced the things thus suggested or indicated in the original specification, drawings, or Patent Office model, and unless the original specification indicated that those things were embraced in the invention intended to have been secured by the original patent; and that, where it did not appear that any attempt had been made to secure by the original patent the inventions covered by the new claims in the reissue, those inventions must be regarded as having been abandoned or waived, so far as the reissue was concerned.

The plaintiffs contend that it appears from the testimony of Fisher that it was the result of the suit of Fisher v. Craig, brought on the first reissue, which convinced him that that reissue was inoperative, and that he took out the second reissue to remedy the defect in the first; and that the delay in taking out the second reissue is explained by the fact that the suit on the first reissue was pending. But we have not before us the proceedings in the suit of Fisher v. Craig, to such an extent as to be able to form any intelligent judgment upon the question as to how far the proceedings in that suit bear upon the question of the delay in taking out the second reissue. If the plaintiffs desired to avail themselves of those proceedings to show such excuse, it was their duty to have brought them before us, if they were a part of the evidence in this case under the stipulation above referred to. Although the defendants did not incorporate them in the record, and although the clerk of the court below, in making his return to this court, certifies that what is contained in the transcript is a "full, true, and correct copy of the record (excepting models), and of all proceedings in the above and therein entitled cause, and

Syllabus.

that the same together constitute the transcript on appeal to the Supreme Court of the United States in said cause," such certificate being entitled in the present cause, it was perfectly competent for the plaintiffs to have brought before this court, and it was their duty to have done so, by certiorari, any necessary parts of the record which the defendants had omitted to bring before us.

The decree of the Circuit Court is

Reversed, and the case is remanded to the Circuit Court for the Northern District of California, with a direction to dismiss the bill, with costs.

FRIEDENSTEIN v. UNITED STATES.

ERROR TO THE CIRCUIT COURT OF THE UNITED STATES FOR THE SOUTHERN DISTRICT OF NEW YORK.

No. 178. Argued February 10, 1888.- Decided March 19, 1888.

In a suit in rem against certain diamonds seized as forfeited for a violation of the customs revenue laws, it was competent for the United States to give in evidence the declarations of S., not the claimant, who was intrusted by the latter with the custody of the diamonds for sale, such declarations having been made to a customs officer who took the diamonds from a person with whom S. had deposited them, and in the course of an investigation by the officer to determine whether he should seize them, and having been part of the res gestæ.

It was also competent for the officer to testify that he did not seize the diamonds till after the declarations were made.

The jury having found, in compliance with § 16 of the act of June 22, 1874, c. 391, 18 Stat. 189, that the acts complained of in the information were done with intent to defraud the United States, and no motion to dismiss the cause for any defect in the information, and no motion in arrest of judgment, having been made, any such defect which could have been availed of by demurrer, or exception, or motion to dismiss at the trial, made on the ground of such defect, or motion in arrest of judgment, must be regarded as having been waived or as having been cured by the verdict.

An information under the revenue laws for the forfeiture of goods, which seeks no judgment of fine or imprisonment against any person, is a civil action.

Opinion of the Court.

Yet it is so far in the nature of a criminal proceeding that a general verdict on several counts in the information is upheld if one count is good. Where the sections of the Revised Statutes on which the counts of the information are founded do not prescribe any intent to defraud as an element of the forfeitures they denounce, said § 16 does not make it necessary, in an information filed since its enactment, to aver that the alleged acts were done with an actual intention to defraud the United States.

It is not necessary that the judgment should recite the finding by the jury that the acts complained of in the information were done with intent to defraud the United States.

IN REM, for the forfeiture of diamonds seized for a violation of customs revenue laws. Decree of condemnation in the District Court, which was affirmed by the Circuit Court. Claimant sued out this writ of error.

Mr. Edwin B. Smith for plaintiff in error. Wallach was with him on the brief.

Mr. Solicitor General for defendant in error.

Mr. Leopold

MR. JUSTICE BLATCHFORD delivered the opinion of the court.

This is a suit brought by the United States, in the District Court of the United States for the Southern District of New York, to condemn 43 diamonds, seized as forfeited under the customs revenue laws. The information contains five counts.

The first count is based on §§ 2872 and 2874 of the Revised Statutes, and alleges that the goods were brought in a vessel, name unknown, from -, a foreign port or place, and were, on the day of, 1882, unladen and delivered from such vessel within the port and collection district of the city of New York, without a permit from the collector and naval officer for such unlading or delivery, contrary to those two sections, and that the value of the goods, according to the highest market price of the same at the said port and district, amounts to $400.

The second count is based on § 3066, and avers that the collector, having cause to suspect a concealment of goods in

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