James Clark McReynolds

“ We cannot conclude that one so circumstanced occupies a position superior toan honest inventor or user who has acted with implied but no actual knowledge of a recorded patent. 'The purpose of the statute undoubtedly was to provide that kind of relief which courts of equity have always given in cases of clear accident and mistake in the drawing up of written instruments,' and these courts are always tender of rights claimed by innocent parties. 'A sense of justice and of policy' shelters them. ”

“ The public has the undoubted right to use, and it is to be presumed does use, what is not specifically claimed in the patent. Every day that passes after the issue of the patent adds to the strength of this right, and increases the barrier against subsequent expansion of the claim by reissue under a pretense of inadvertence and mistake. ”

“ The new patent would retroact on them, and expose them to penalties to which they were not liable when the act was committed.'
'This objection is more formidable in appearance than in reality. It is not probable that the defect in the specification can be so apparent as to be perceived by any but those who examine it for the purpose of pirating the invention. They are not entitled to much favor. But the answer to the objection is that this defense is not made in this case; and the opinion of the Circuit Court does not go so far as to say that such a defense would not be successful. ”

“ The Court said 'Whether the defect be in the specifications or in the claim, under the 13th section (Act 1836) above cited, the patentee may surrender his patent, and, by an amended specification or claim, cure the defect. The reissued patent must be for the same invention, substantially, though it be described in terms more precise and accurate than in the first patent. Under such circumstances, a new and different invention cannot be claimed. ”

“ Recapture within two years of what a patentee dedicates to the public through omission is permissible under specified conditions, but not, we think, 'at the expense of innocent parties.' Otherwise, the door is open for gross injustice to alert inventors and baffling uncertainty will hinder orderly development of useful arts. ”

“ From a small State Department bureau in 1836, the Patent Office has expanded until in 1939 over 40,000 patents were granted-in 1838, 515 were granted. Although of immense importance, the system has become exceedingly complex. Questions relative to reissued patents have long been vexatious to those immediately concerned with administration of the patent laws. ”

“ Nothing shows earlier knowledge by the manufacturer who began to make and sell like machines not later than August 1934.
By suit filed in the District Court, October 19, 1935, respondent charged petitioner with infringing the original patent, and asked appropriate relief. Infringement was denied by answer, November 22, 1935.
January 15, 1936 respondent applied for and on June 30, 1936 obtained a reissue patent-No. 20,024-with seventeen claims. The first four were identical with the original ones; thirteen of broader scope cover petitioner's machine. ”