John McLean

“ What I claim, therefore, as my invention, and desire to secure, by letters-patent, is the arrangement of the teeth of the rollers, substantially as herein described, so that in their rotation the teeth of one shall come opposite the space between the teeth of the others, with sufficient space between to hold lumps of the required size, the rollers being so combined by gearing as to make them rotate in opposite directions, and with the required velocities to retain the relative position of the teeth of the two rollers, as described. ”

“ Whether the defect be in the specifications or in the claim, under the 13th section 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. ”

“ The patent was thereupon surrendered, and a new one issued, on the 4th of September, 1849, under an amended specification, which described essentially the same machine as the former one did, but claimed, as the thing invented, the breaking apparatus only.'
And, he remarks: 'It is said that the present defendants are using the apparatus described in this reissued patent, and that they should be mulcted in damages, accordingly.' But there are two legal positions, of a general character, which appear to me to bar the plaintiff's right of recovery. They are these:--
1. ”

“ We would not willingly disregard the settled practice, in a case where we are not satisfied it is contrary to law, and where we are satisfied it is required by justice and good faith.' The same principle was sanctioned in the case of Shaw v. ”

“ The court erred, in the instruction given to the jury, as to the grounds upon which they should ascertain the actual damages.
8. The damages are excessive.
At October term, 1852, the cause came up again for trial, when the jury, under the instructions of the court, found a verdict for the defendants. ”

“ That was intended to be a new invention of arranging and combining the toothed rollers, which, the patentee says, was not made the subject of a claim in the patent of 1843. The patent of 1844 was cancelled, but not reissued, when the patent of 1849 was issued. At that time, the patent of 1843, and the improvement thereon, dated January 20, 1844, were surrendered and cancelled, and new letterspatent were issued on an amended specification.
The cause of the surrender of the patent of 1843, as stated in the charge to the jury, was the ruling of the court in the case of Battin v. ”