Patent claim

“ It is for the process or act of stamping letters with a post-mark and cancelling the postage-stamp at one and the same blow or operation of the instrument, in the manner and by the means described and set forth. Perhaps this claim amounts to no more than a claim to the exclusive use of the patented instrument or device. If it is anything more, it is for a different invention from that described in the original patent. If it is not for anything more, the question is brought back to the instrument or device itself which forms the subject of the patent, and which has been already considered. ”

“ Any assignment or transfer, short of one of these, is a mere license, giving the licensee no title in the patent, and no right to sue at law in his own name for an infringement.'
We see no reason to qualify in any way the language of these opinions. While it is sometimes said that each claim of a patent is a separate patent, it is true only to a limited extent. ”

“ Patents for a machine will not be sustained if the claim is for a result, the established rule being that the invention, if any, within the meaning of the Patent Act, consists in the means or apparatus by which the result is obtained, and not merely in the mode of operation, independent of the mechanical devices employed ”

“ 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. ”

“ The attempt is made, in argument on behalf of the appellant, by construction to convert the original patent into a patent for a process, in which the real invention described 'consisted in operating upon a peculiar kind of material with a peculiar kind of cutter,' and in which the claim was inadvertently framed so as to cover merely the machine itself, and not the process in which it was one only of the factors. ”

“ We claim that there can be no patent in the United States founded upon the material used, unless where a new combination of materials is made use of, and then it comes under that clause of the patent law which authorizes a patent for any new composition of matter. ”

“ It is the right of the patentee and his representatives to enlarge or restrict the claim, so as to give it validity and secure the invention. [4]
Patentable subjects, as defined by the patent law, [5] are 'any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter.' A machine may be new, and the product or manufacture proceeding from it may be old. In that case the former would be patentable and the latter not. The machine may be substantially old and the product new. ”

“ The machine and work holder patents describe and claim only a combination of mechanical elements enumerated and arranged as stated in claim 25, as we have construed it. This combination which had been found suitable for manufacturing blanks with a plurality of pre-formed cleats and a single piece of side material, was suitable for using the process of the reissue patent, as is the combination used by petitioner. Such possibilities of use might be spelled out of the machine and work holder patents by one skilled in the art and familiar with the process described in the reissue patent. ”

“ We are of opinion, however, that the construction given to this claim was correct, and that the defendants were not entitled to an affirmative response to their prayer. Undoubtedly a patentee may claim and obtain a patent for an entire combination, or process, and also for such parts of the combination or process as are new and useful, or he may claim and obtain a patent for both. That this patentee did not intend by his first claim to appropriate the process of building and setting piers which he had previously described in his specification is made evident by several considerations. ”

“ If the guiding cylinder of this patent had been a pioneer invention, it is possible the patentee might have been entitled to a construction of this claim broad enough to include the defendant's device, notwithstanding the absence of the semicircular connecting piece; but, as we have already said, the novelty of the invention is at least open to doubt, and we think the patentee should be held to a rigid construction of these claims. ”

“ If respondent could thus, by disclaimer, add the flywheel to the arcuate flexing claim and to the optical claim, he would in effect secure a new patent operating retroactively in a manner not permitted by the reissue statute and without subjecting the new claims to revision or restriction by the customary Patent Office procedure required in the case of an original or reissued patent. ”

“ In this case it is alleged the court construed the specification of claim erroneously, and thereby withdrew from the jury questions which it was their province to decide. This renders it necessary to examine the letters-patent, and the schedule annexed to them, to see whether their construction by the Circuit Court was correct.
In this, as in most patent cases, founded on alleged improvements in machines, in order to determine what is the thing patented, it is necessary to inquire.
1. What is the structure or device, described by the patentee, as embodying his invention. ”

“ Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. ”

“ Patents for lands, equally with patents for inventions, have been deemed prima facie evidence that they were regularly granted, whenever they have been produced under the great seal of the government; without any recitals or proofs that the prerequisites of the acts under which they have been issued have been duly observed. In cases of patents, the Courts of the United States have gone one step further, and as the patentee is required to make oath that he is the true inventor, before he can obtain a patent, the patent has been deemed prima facie evidence that he has made the invention. ”

“ Where the thing patented is an entirety, consisting of a single device or combination of old elements incapable of division or separate use, the respondent cannot escape the charge of infringement by alleging or proving that a part of the entire invention is found in one prior patent, printed publication, or machine, and another part in another prior exhibit, and still another part in a third exhibit, and from the three or any greater number of such exhibits draw the conclusion that the patentee is not the original and first inventor of the patented improvement. ”

“ In regard, however, to the kindred subject of patents for invention, they cannot by law be issued to the inventor until the novelty, the utility, and the actual discovery or invention by the claimant have been established by proof before the Commissioner of Patents; and when he has secured such a patent, and undertakes to obtain redress for a violation of his right in a court of law, the question of invention, of novelty, of originality, is always open to examination. ”

“ To escape the incessant and intense competition which exists in every department of industry, it is not strange that persons should seek the cover of the patent act, for any happy effort of contrivance or construction; nor that patents should be very frequently employed to obstruct invention, and to deter from legitimate operations of skill and ingenuity. Thid danger was foreseen, and provided for, in the patent act. The patentee is obliged, by law, to describe his invention, in such full, clear, and exact terms, that from the description, the invention may be constructed and used. ”

“ Effective support to the proposition that nothing but invention or discovery will entitle an applicant to a patent is also found in the reported decisions of the circuit courts, as appears from the following citations. Judge Story held, many years ago, that the mere application of an old process, machine, or device to a new use was not patentable,-that there must be some new process or some new machinery to produce the result, in order that the supposed inventor may properly have a patent for the alleged improvement. ”

“ Respondent argues that this principle, applicable to machine patents, is inapplicable to a patent for the composition of matter which is always a result of a process and concededly is patentable as such, but the attempt to broaden product claims by describing the product exclusively in terms of its use or function is subject to the same vice as is the attempt to describe a patentable device or machine in terms of its function. As a description of the invention, it is insufficient, and, if allowed, would extend the monopoly beyond the invention. ”

“ What is described in a patent, and not claimed, whether invented by the patentee or not, is dedicated to the public, and cannot be afterwards claimed, as a part of his patent, in a reissue, or otherwise. ”

“ They know, theoretically, that a patent, to be sustained in the courts, must be for an invention which is "new and useful"; but fail, practically, to apply the test. Evidently the existing system tends to betray an over-sanguine inventor. A solicitor of patents will cheerfully take a fee and undertake to obtain letters. The patent-office will accept further fees; will make an examination for novelty, which is good, as far as it goes, and in some measure a protection against launching an unprofitable venture; and will grant a patent. ”

“ But the patent for an invention conveys nothing which the government owns or its predecessors ever owned. The invention is the product of the inventor's brain, and if made known would be subject to the use of any one, if that use were not secured to him. Such security is afforded by the act of congress when his priority of invention is established before the officers of the patent-office, and the patent is issued. The patent is the evidence of his exclusive right to the use of the invention ”

“ It is undoubtedly true, and all the cases agree, that the mere function or effect of the operation of a machine cannot be the subject-matter of a lawful patent. But it does not follow that a method of doing a thing, so clearly indicated that those skilled in the art can avail themselves of mechanism to carry it into operation, is not the subject-matter of a valid patent. ”

“ Above all, a process or operation, especially in a trade that already existed, does not appear to be contemplated by the statute. How entirely and sadly different is the present practice in this respect. Let me first quote from Brande’s Dictionary the opening definition that shows how naturally, and as it seems, unconsciously, writers speak of “processes,” as the great or only subject-matter:—
“The word Patent is commonly used to denote a privilege accorded to an inventor for the sole use of some process by which an object in demand may be supplied to the public ”

“ Where the utility is proved to exist in any degree, a sufficiency of invention to support the patent must be presumed.' We do not say the single fact that a device has gone into general use, and has displaced other devices which had previously been employed for analogous uses, establishes in all cases that the later device involves a patentable invention. ”

“ The language of the statute is, 'first patented, or caused to be patented, in a foreign country.' This, by its terms, includes American citizens as well as foreigners who first take out a patent abroad. The term 'patented' may well be construed as applying to foreigners obtaining patents in their own country, and the phrase, 'caused to be patented,' to such persons, not citizens of the same country, including Americans, as should cause their inventions to be introduced or patented there. ”

“ Having done that, it is necessary for the right inventor, who has received due notice from the Patent Office, to come and defend his title to his patent, in spite of the fact that the patent has been issued to him after the customary and usual formalities in due legal form, and payment of all legal fees. ”

“ Evidence of that kind, though not controlling, is sometimes introduced in suits on patents as indicative of invention in the production of new and beneficial results, but it is not relevant here, nor are the affidavits presented on the question of value if the patent were granted. The matter in dispute must have actual value, and that cannot be supplied by speculation on the possibility that, in a given case, an invention might be held patentable. ”

“ The patent is a privilege. But it is a privilege which is conditioned by a public purpose. It results from invention and is limited to the invention which it defines.' [40]
A second group of authorities encourage authoritiative testing of patent validity. In 1952, the Court indicated that a manufacturer of a device need not await the filing of an infringement action in order to test the validity of a competitor's patent, but may institute his own suit under the Declaratory Judgment Act. ”