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ating like an escapement verge, for the click and spring ordinarily used. It also consists in constructing the case with an opening at the bottom and adapting the key and the adjusting nut of the pendulum ball to one another, so that the adjustment of the said ball may be effected conveniently from the outside of the case. It also consists in providing said ball with a spring which will force it down into place, and with a guide which will prevent it from turning. The twelve claims of the original patent were confined to these details thus enumerated in the specification.

"In March, 1880, the Parker & Whipple Company entered into a contract with the Yale Clock Company to manufacture the Hotchkiss clock, at a stipulated price per clock; the licensees furnishing the dies and tools for such manufacture. About 50,000 clocks were made by the defendants and delivered to the licensees between June 17 and December 27, 1880. During this period the defendant Frederick A. Lane, superintendent of the Yale Clock Company, made the infringing clock. It did not contain a single patented feature of the Hotchkiss clock, but in respect to every other leading feature the parts of the two clocks are interchangeable. The Lane clock was immediately patented, was put upon the market, and is being manufactured by the Yale Clock Company.

“An examination of the Hotchkiss patent showed that the vital parts of the invention were not alluded to in the specification or in the claims. Perhaps the fact that the clock had three wheels, and their position, might have been understood by an expert, from drawing No. 6. That drawing was not made for the purpose of showing the wheels; and it is manifest, from the specification, that the patentee did not suppose they had anything to do with his invention, which he did suppose lay in entirely other parts of the clock. The model showed a completed clock, and contained whatever was and was not invented by Hotchkiss.

"In the specification of the second reissue, the patentee omitted the entire description which has been quoted, and inserted the following: 'My inven、tion relates to an improvement in clock movements, the object being to make a clock movement which shall be simple and durable in its construction, of small initial cost in manufacture, and the several parts of which shall be relatively arranged in such manner that the movement may be inclosed in a small and compact case. To this end, the invention consists essentially in dividing the train into two parts; in arranging the divisions of the train in a frame having three plates; in providing an additional wheel and pinion between the escape wheel and center wheel; in making the three wheels between the escape wheel and center wheel with the same number of teeth and of the same size; in arranging the pivots of the three arbors, carrying the three like wheels and pinions, between the escape wheel and center wheel, in the circumferences of circles which are concentric with the center arbor, and in other minor improvements, as the invention is hereinafter more fully described and explained by reference to the drawings.' In accordance with this statement, the plaintiffs' experts claimed, upon the trial, that the invention consisted generally in the division of the train into two parts, by means of a frame having three plates, the point of division being between the center wheel and the center pinion; and, secondly, in the arrangement, between the center wheel and the escape wheel, of three wheels, which are driven by the center wheel, in the circumference of a circle which is concentric to the center arbor, the three wheels being arranged on a semicircle concentric to the center pinion. This general outline of the invention is stated with accuracy and completeness in eight claims of the reissue; four of which relate to the division of the train into two parts, in a frame having three plates, while the other four relate to the arrangement of the three wheels. The tenth and eleventh claims relate to details which were specified in the original patent, but which are not used by the defendants. The defendants infringe the first eight claims.

"The position of the plaintiffs is that the invention of the reissue was the invention of Hotchkiss, and was shown in the model accompanying the original application for a patent, and that therefore the description in the reissue is not to be regarded as new matter, but as a correction of a misstatement in the description contained in the original specification. The defendants, making no point in regard to laches in applying for a correction of the original patent, deny the plaintiffs' premise and conclusion. They deny the premise, because they say that the original description limited the invention to that class of time-keepers in which a fixed annular rack or internally toothed wheel is employed to aid a spring-barrel in rotating the train of wheels, and that this construction only was shown in the model, and that the importance of the Lane invention consisted in the abandonment of the planet wheel,' and the substitution therefor of the ordinary mainspring. If the premise was true, they deny the conclusion, because it is a fact, the truth of which is apparent, that in the original specification and drawings the patentee gave no hint that he regarded the construction described in any one of the first eight claims of the reissue as forming any material or immaterial part of his invention."

On these premises, the court said that "the eight claims which are in controversy are a total abandonment of the principles which are stated in the original patent to be those of the invention, and are an introduction into the reissue of a subject-matter which has no relation to the original patent, except that each patent relates to clocks."

The original patent contained twelve claims, in these words: "(1) In combination with a fixed circular rack and a stationary clock movement, a plate rotated by the mainspring, and carrying a device which connects the rack and movement, substantially as and for the purpose set forth. (2) A perforated clock-case back, in combination with a base-plate for the movement, said baseplate being provided with flexible claws, which may pass through the perforations in said clock-case back, substantially as and for the purpose set forth. (3) In combination with mainspring, B, perforated at b, the lateral attaching-finger, c, on flange, C', of plate, C; said parts being constructed and applied substantially as and for the purpose set forth. (4) In combination with mainspring, B, the fixed plate, C, and its flanges, C', forming a barrel for said spring, but allowing inspection of the latter between the flanges, C', substantially as set forth. (5) In combination with mainspring, B, and fixed plate, C, the rotating plate, F, and its hub, G, said hub extending through plate, C, for the attachment of the spring, substantially as set forth. (6) In combination with ratchet, V, a verge-like automatic winding-dog, U, held in proper position for catching by the forward motion of said ratchet. (7) In combination with a pillar-plate, a fixed circular rack having an annular inner recess to receive said plate, whereby said rack serves also the purpose of attaching said plate, and the said parts are made to occupy the least possible space. (8) In combination with a perforated front plate, a rear pillar-plate, having twisted tongues on the ends of its pillars, whereby said plates and pillars are clamped together, substantially as set forth. (9) In combination with a pendulum rod and adjustable pendulum ball, a spring arrange to force said ball down against the adjusting nut. (10) In combination with a pendulum rod and an adjustable pendulum ball, a spring fitted into a recess of said ball, and operating to force the latter down against the said nut. (11) In combination with the adjusting nut of a pendulum, a clock-case bottom, perforated at A2, and a key having a prismatic recess fitting said nut, whereby the height of the pendulum ball may be adjusted by the key from the outside of the clock-case, substantially as set forth. (12) In combination with a hollow internally threaded winding-hub, G, a key having a screw-threaded portion for engaging with said hub, and a prismatically recessed portion for passing through said hub, and engaging with the center shaft."

The reissue contains 10 claims, as follows: "(1) In a clock movement having a frame consisting of three plates suitably connected together, a train which is divided into two parts, a front part and a back part, the front part arranged between the front and middle plates of the frame, and the back part arranged between the middle and back plates of the frame, the point of division being between the center wheel and center pinion; the said center wheel and center pinion being arranged on the center arbor carrying the minute-hand, as set forth. (2) In a clock movement having a frame consisting of three plates suitably connected together, the middle plate of the frame, the said middle plate dividing the train into two parts between the center wheel and center pinion, the said center wheel and center pinion being arranged on the center arbor carrying the minute-hand, as set forth. (3) In a clock movement, frame consisting of three plates suitably connected together, the middle plate of which divides the train into two parts between the center wheel and center pinion, the said center wheel and center pinion being arranged on the center arbor carrying the minute-hand, and the frame having the parts of the divided train arranged between its three plates, as set forth. (4) In a clock movement having a frame consisting of three plates suitably connected together, a center arbor carrying the minute-hand, and provided with a center wheel and center pinion, the wheel arranged between the front and middle plates of the frame, and the pinion arranged between the middle and back plates of the frame, as set forth. (5) The improvement in a clock-train, consisting of three wheels suitably fastened on arbors carrying pinions, and arranged between the escape wheel and its arbor carrying a pinion, and the center arbor carrying the center wheel and center pinion, as set forth. (6) The improvement in a clock-train, consisting of three wheels having the same number of teeth and the same diameters, suitably fastened on arbors, the pivots of which are arranged in the circumferences of circles concentric with the center ar bor, the several arbors carrying pinions having the same number of leaves and the same diameters, all the said parts arranged between the escape wheel and its arbor carrying a pinion, and the center arbor carrying the center wheel and center pinion, as set forth. (7) The improvement in a clock-train, consisting in the arrangement of the pivots of the escape-wheel arbor and of the pivots of the three arbors carrying the three wheels and the three pinions between the escape wheel arbor and the center arbor carrying the center wheel and center pinion, in a semicircle, as set forth. (8) In a clock movement, the combination, with a train divided into two parts, a front part and a back part, by the middle plate of a frame having three plates, the division being made between the center wheel and center pinion, the said center wheel and center pinion being arranged on the center arbor carrying the minute-hand, the escape wheel being arranged in the front part of the train, and near the top of the frame, and the pivots of the front part of the train being arranged within a semicircle, of a pendulum attached to an arbor near the top of the frame, and vibrating in a plane passing between the front and middle plates of the frame, as set forth. (9) In a clock movement provided with a circular rack, the circular disk, F, rotated by the mainspring, and carrying the planet wheel, E, only, which connects the rack with the center pinion, as set forth. (10) In combination with a pendulum rod provided with the plate, S, fastened to the rod, a spring arranged on the rod, to hold the pendulum ball against the adjusting nut, as set forth."

The appellants contend that the first eight claims of the reissue do not specify any invention which is not contained in the clock described in the original patent, and embodied in the model originally deposited in the patent-office, and that the drawings of the original and of the reissued patent are substantially the same. On these premises, it is argued for the appellants that it is lawful to include in the claims of a reissue whatever is suggested, or substantially indicated, in the specification, model, or drawings of the original

patent, if the applicant was the original and first inventor thereof, and that such a reissue will therefore be for the same invention as that of the original patent. Expressions in some opinions of this court, wrested from their con text, and interpreted in a different sense from that in which they were used, are cited to support these views; but the language of the court on the subject has steadily been to the contrary, and, as the question arises so distinctly in this case, and some misapprehension exists in regard to it, it seems proper to discuss it with some fullness.

The first statutory provision for the reissue of patents was made by the third section of the act of July 3, 1832, c. 162, (4 St. 559.) It provided for the reissue, in certain cases, "for the same invention." This provision of the act of 1832 was superseded by section 13 of the act of July 4, 1836, c. 357, (5 St. 122,) which provided "that whenever any patent which has heretofore been granted, or which shall hereafter be granted, shall be inoperative or invalid by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification, as his own invention, more than he had or shall have a right to claim as new; if the error has or shall have arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention,-it shall be lawful for the commissioner, upon the surrender to him of such patent, and the payment of the further duty of fifteen dollars, to cause a new patent to be issued to the said inventor, for the same invention." This provision of the act of 1836 was in turn superseded by section 53 of the act of July 8, 1870, c. 230, (16 St. 205,) which provided "that whenever any patent is inoperative or invalid, by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new; if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, -the commissioner shall, on the surrender of such patent, and the payment of the duty required by law, cause a new patent for the same invention, and in accordance with the corrected specification, to be issued to the patentee." This provision of the act of 1870 was 'enacted in the same language in section 4916, Rev. St., and was the provision of law in force when the reissue in the present case was granted. It is thus seen that in all the statutes on the subject of reissues, the only authority granted to the commissioner is one to issue a new patent "for the same invention."

The provision of the statute of 1836 has been before this court in numerous cases. In Burr v. Duryee, 1 Wall. 531, 577, (at December term, 1863,) this court, speaking by Mr. Justice GRIER, said: "The surrender of valid patents, and the granting of reissued patents thereon, with expanded or equivocal claims, where the original was clearly neither inoperative nor invalid,' and whose specification is neither defective or insufficient,' is a great abuse of the privilege granted by the statute, and productive of great injury to the public. This privilege was not given to the patentee or his assignee in order that the patent may be rendered more elastic or expansive, and therefore more 'available' for the suppression of all other inventions.

The case of Seymour v. Osborne, 11 Wall. 516, was before this court at December term, 1870. The answer set up, as a defense, that the reissued patents sued on were void, because not granted for the same invention as that embodied in the original patents. The court overruled the defense on the ground stated by it, (page 546,) that the original patents were not in evidence in the case. Notwithstanding this, the opinion, delivered by Mr. Justice CLIFFORD, said: "Reissued letters patent must, by the express words of the section authorizing the same, be for the same invention, and consequently, where it appears on a comparison of the two instruments, as matter of law, that the reissued patent is not for the same invention as that embraced and secured in the original patent, the reissued patent is invalid, as that state of

facts shows that the commissioner, in granting the new patent, exceeded his jurisdiction. Power is unquestionably conferred upon the commissioner to allow the specification to be amended if the patent is inoperative or invalid, and in that event to issue the patent in proper form; and he may, doubtless, under that authority, allow the patentee to redescribe his invention, and to include in the description and claims of the patent, not only what was well described before, but whatever else was suggested or substantially indicated in the specification or drawings which properly belonged to the invention as actually made and perfected. Interpolations of new features, ingredients, or devices, which were neither described, suggested, nor indicated in the original patent or patent-office model, are not allowed, as it is clear that the commissioner has no jurisdiction to grant a reissue unless it be for the same invention as that embodied in the original letters patent, which necessarily excludes the right on such an application to open the case to new parol testimony and a new hearing as to the nature and extent of the improvement, except in certain special cases, as provided by a recent enactment not applicable to the case before the court. Corrections may be made in the description, specification, or claim where the patentee has claimed as new more than he had a right to claim, or where the description, specification, or claim is defective or insufficient; but he cannot, under such an application, make material additions to the invention which were not described, suggested, nor substantially indicated in the original specifications, drawings, or patent-office model. * * * Letters patent reissued for an invention substantially different from that embodied in the original patent are void and of no effect, as no jurisdiction to grant such a patent is conferred by any act of congress upon the commissioner, and he possesses no power in that behalf except what the acts of congress confer. Whether a reissued patent is for the same invention as that embodied in the original patent, or for a different one, is a question for the court in an equity suit, to be determined as a matter of construction, on a comparison of the two instruments, aided or not by the testimony of expert witnesses, as it may or may not appear that one or both may contain technical terms or terms of art requiring such assistance in ascertaining the' true meaning of the language employed."

In these extracts from the opinion, it is seen that the court adheres strictly to the view that, under the statute, the commissioner has no jurisdiction to grant a reissued patent for an invention substantially different from that embodied in the original patent, and that a reissue granted not in accordance with that rule is void. In what is there said about redescribing the invention, and about including in the new description and new claims what was suggested or indicated in the original specification, drawings, or patent-office model, it is clearly to be understood, from the entire language, that the things so to be included are only the things which properly belonged to the invention as embodied in the original patent; that what that invention was, is to be ascertained by consulting the original patent; and that, while the new description may properly contain things which are indicated in the original specification, drawings, or patent-office model, (though not sufficiently described in the original specification,) it does not follow that what was indicated in the original specification, drawings, or patent-office model is to be considered as a part of the invention, unless the court can see, from a comparison of the two patents, that the original patent embodied, as the invention intended to be secured by it, what the claims of the reissue are intended to cover.

In what was thus said in Seymour v. Osborne, there is no warrant for the view that, ex vi termini, what was suggested or indicated in the original specification, drawings, or patent-office model is to be considered as a part of the invention intended to have been covered by the original patent, unless the court can see, from a comparison of the two patents, that the invention which the original patent was intended to cover fairly embraced the things thus sug