Opinion of the Court.

was to be assessed, was not an offer to prove that the quantity of ice replevied varied from that stated in the amended return; and the plaintiff, neither offering nor giving any evidence that such quantity varied from that stated in the amended return, relied upon the finding of the jury in the replevin suit as to the value of the ice replevied.

The defendants complain of the admission in evidence of the answer of the jury in the replevin suit as to the value of the ice replevied, where it was situated, at the time it was taken, and also of the ruling of the court that such answer was evidence in this suit, and conclusive against the defendants, of the value of the ice, in determining the amount which the plaintiff is entitled to recover in this suit. It is contended for the defendants, that it was discretionary in the jury, in the trial of the replevin suit, to answer the question referred to, and that it was no part of the legal issue in that trial. But, as has been shown, the rule adopted in that trial, for finding the damages, was to assess the interest on what was found to have been the value of the ice at the time and place of taking, and that such value was an indispensable element in arriving at a verdict. Such value was found by the jury, in finding the verdict, and, a judgment having been entered thereon, the fact so found is conclusive, not only upon the parties to the replevin suit, but upon those who became sureties by the bond, to abide its event. The sureties became bound by the result of the replevin suit by virtue of their agreement contained in the bond.

In Drummond v. Ex'rs of Prestman, 12 Wheat. 515, the record of a judgment confessed by a principal to a creditor for a debt due was held to be admissible in evidence to charge a surety who had guaranteed the debt to the creditor. In Stovall v. Banks, 10 Wall. 583, it was held that the sureties in the bond of an administrator were bound by a decree against the administrator, made in a suit to which they were not parties, finding assets in his hands which he had not paid over.

The sureties in the replevin bond were represented in the replevin suit by the plaintiff therein, and were identified with it in interest, and claimed in privity with it, so as to be con

Argument for Appellants.

cluded by the proceedings in that suit. 1 Greenl. Ev. § 523. The question of the value of the ice at the time it was taken in replevin was essential to the finding of the verdict in the replevin suit; and in such case, it is not necessary to the conclusiveness of the former judgment that there should have been a formal issue in the prior suit as to such question. 1 Greenl. Ev. § 534.

On the whole case, we are of opinion that there is no error in the record, and that the judgment must be affirmed, and it is so ordered.

Affirmed.

YALE LOCK MANUFACTURING COMPANY

v. JAMES.

APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE SOUTHERN DISTRICT OF NEW YORK.

A patent granted in 1871, for an improvement in post-office boxes was reissued in 1872, and again in 1877, and again in 1879. The original patent limited the invention to a metallic frontage made continuous by connecting the adjoining frames to each other, and not merely to the woodwork. There was no mistake, and the original patent was not defective or insufficient, in either the descriptive portion or the claims. In the progress of the first reissue through the Patent Office, the applicant, on its requirement, struck out of the proposed specification everything which suggested any other mode of fastening than one by which the frames were to be fastened to each other: Held, that the first reissue could not have been construed as claiming any other mode of fastening; that therefore the third reissue could not be construed as claiming any other mode of fastening; and that, as the defendant's structures would not have infringed any claim of the original patent, they could not be held to infringe any claim of the third reissue.

IN EQUITY, to restrain infringement of letters patent. Decree dismissing the bill. Complainant appealed. The case is stated in the opinion of the court.

Mr. Frederic H. Betts for appellant, on the question of the law as to reissues, made the following points in his brief:

Argument for Appellant.

We understand that this court has construed the provisions of law regulating reissues, as follows:

(1) That the patentee can reissue in case it shall appear that "the original patent embodied as the invention intended to be secured by it what the claims of the reissue are intended to cover." Parker & Whipple Co. v. Yale Clock Co., 123 U. S. 87, 89: or he may reissue "to meet a possible construction of the original, whereby the patentee would be precluded from a use of his process where it was evidently intended to be applied." Eames v. Andrews, 122 U. S. 40, 63: or to remove 'ambiguity or obscurity." Campbell v. James, 104 U. S. 356, 370.

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We understand that this means that the original patent must show the invention claimed in the reissue, and, in it or in the papers accompanying it, must indicate that the inventor intended and attempted to secure, as his own, and did not abandon the invention claimed in the reissue.

We do not understand that it must appear that the inven tion claimed in the reissue was actually in fact secured by the claims of the original patent, if those claims be critically construed.

On the contrary, we understand that the inoperativeness of the original patent may consist in the failure of the original claims, when construed critically, to claim that which is seen to be the real invention.

(2) That the patentee may not only (if his original "intention" or "attempt" be found to exist) introduce amendments to the specification, but also, if he applies in due season for a correction, enlarge his claim, and claim something beyond what the critical construction of his original claim would give him.

Thus, in Lockwood v. Morey, 8 Wall. 230 (cited with approval, 122 U. S. 63), where the inventor had been induced to limit his original claim by the mistake of the Commissioner of Patents, he was allowed to remove the limitations by reissue.

Thus, in Campbell v. James, 104 U. S. 356, 371, when this court said, "of course, if by inadvertence, accident or mistake, incorrectly committed, the claim does not fully assert or de

Argument for Appellant.

fine the patentee's right in the invention specified in the patent, a speedy application for its correction, before adverse rights have accrued, may be granted."

Thus, in Miller v. Brass Co., 104 U. S. 350:

"If a patentee who has no corrections to suggest in his specification except to make his claim broader and more comprehensive uses due diligence in returning to the Patent Office, and says, 'I omitted this,' or 'my solicitor did not understand that,' his application may be entertained, and on a proper showing, correction may be made. But it must be remembered that the claim of a specific device or combination and an omission to claim other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed. The legal effect of the patent cannot be revoked unless the patentee surrenders it and proves that the specification was framed by real inadvertence, accident or mistake without any fraudulent or deceptive intention on his part; and this should be done with due diligence and speed. Nothing but a clear mistake, or inadvertence, and a speedy application for its correction is admissible when it is sought merely to enlarge the claim."

Thus in Mahn v. Harwood, 112 U. S. 354, 363:

"If a patentee has not claimed as much as he is entitled to, he is bound to discover the fact in a reasonable time, or he loses all right to a reissue."

And again:

"As we have already stated, no invariable rule can be laid down as to what is reasonable time within which the patentee should seek for the correction of a claim which he considers too narrow. In Miller v. Brass Co., by analogy to the law of public use before an application for a patent, we suggested that a delay of two years in applying for such correction should be construed equally favorable to the public. But this was a mere suggestion, by the way, and was not intended to lay down any general rule. Nevertheless, the analogy is an apposite one, and we think that excuse for any longer delay than that should be made manifest by the special circumstances of the case."

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Argument for Appellant.

(3) That the finding of the Commissioner of Patents upon the question of fact whether the original defect arose by inadvertence, accident or mistake, is a conclusive one, unless the possibility of the existence of any such inadvertence, accident or mistake is found to be excluded by an examination of the original papers.

Thus in Mahn v. Harwood, p. 358.

"It was not intended then (i.e. in Miller v. Brass Co.) and is not now to question the conclusiveness in suits for infringements of patents, of the decisions of the Commissioner on questions of fact necessary to be decided before issuing such patent, except as the statute gives specific defences in that regard."

And again: p. 360.

Conceding that it is for the Commissioner of Patents to determine whether the insertion of too narrow a claim arose from inadvertence, accident or mistake, unless when the matter is manifest from the record," yet that it was for the court to decide the question of diligence.

(4) That on the question of due diligence in applying for a reissue, such diligence is prima facie proved, if the application is within two years.

Thus in Mahn v. Harwood, p. 363.

"We think that excuse for any longer delay than that should be made manifest by the special circumstances of the case."

And in Wollensak v. Reiher, 115 U. S. 96, 100, this Court said that a delay of more than two years in applying for a reissue with broader claims made the action "prima facie unlawful."

May it not be said that if the delay was less than two years that the action is prima facie lawful?

We shall endeavor to show that the present case falls within the provision of the law as above construed.

In other words, we shall show that, taking the whole history of the original specification together, it would be plain to one skilled in the art (and it is to those only that the specification is addressed), what the real invention of Yale was, and that that real invention is the one described in the second claim of reissue 8783.