# Smith v. Goodyear Dental Vulcanite Company

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## Dissenting Opinion

    Bradley
United States Supreme Court
93 U.S. 486
Smith v. Goodyear Dental Vulcanite Company
APPEAL from the Circuit Court of the United States for the District of Massachusetts.
This was a bill in equity filed by the appellees against the appellant for an infringement of reissued letters-patent No. 1904, for 'improvement in artificial gums and palates,' granted March 21, 1865, to the appellees, as assignees of John A. Cummings. The bill prayed for an injunction, discovery, account, and assessment of damages.
The original letters-patent No. 43,009, for said improvement, were granted to said Cummings, and bear date June 7, 1864.
A decree was entered in favor of the complainants; whereupon the defendant appealed to this court, and assigns the following errors:--
First, The decree of the court below is erroneous, in adjudging that John A. Cummings was the original and first inventor of the improvement described and claimed in the reissued letters-patent No. 1904, dated March 21, 1865.
Second, In adjudging that the reissued letters-patent No. 1904, dated March 21, 1865, is a good and valid patent.
Third, In adjudging that the defendant had infringed the said reissued letters-patent No. 1904, and upon the exclusive rights of the complainants under the same.
Fourth, In awarding an account of profits and a perpetual injunction against the defendant, according to the prayer of the bill.
The history of the invention and the facts bearing upon the questions involved are fully set forth in the opinion of the court.
Mr. Henry Baldwin, Jr., for the appellant.
It is a well-settled and universally accepted rule of law, that while a patent is prima facie evidence that the patentee was the original and first inventor of what is therein described as his improvement, such presumption in no case extends further back than to the date of filing the original application. Whenever he intends to show that the invention was made prior to that date, he must prove that he made it at the period suggested, and that he reduced the same to practice in an operative machine. Johnson v. Root, 2 Fish. 297; White v. Allen, 2 Cliff. 228; Wing v. Richardson, id. 450; 2 Fish. 444, 537.
The reissued letters-patent are void for want of patentable novelty in the subject-matter. There is clearly nothing in this case to avoid the rule so definitely settled in Hotchkiss v. Greenwood, 11 How. 264, 267, which has been reaffirmed in Tucker v. Spaulding, 13 Wall. 453; Hicks v. Kelsey, 18 id. 670; Rubber-Tip Pencil Co. v. Howard, 20 id. 498; Smith v. Nichols, 21 id. 119; Roberts v. Ryer, 91 U.S. 159; Brown v. Piper, id. 39, 41.
While the original patent described and claimed a mode of making the plate and gums of rubber or other elastic material,-a mode not only never practised, but impracticable,-the reissue describes and claims a plate, or a plate and gums, made by a method not indicated or suggested in the original patent, and yet the only known method by which such a thing can be made.
The reissue entirely discards the mode or process described in the original patent. The product is not only the result of a process redically different from that described in the patent, but includes a substantially different element-gum, teeth-from that there suggested.
Even if it had been proved that Cummings's invention included the product and process described in the reissue, yet such proof, aliunde the original record, would not warrant such a change in the thing patented as is found in this reissue. Sarven v. Hall, 5 Fish. 419; Carhart v. Austin, 2 Cliff. 530, 536.
It is submitted that the reissue is void under the rule of law, so definitely settled by this court, as to the effect of less glaring differences than are presented in this instance between the original and reissued patents. Gill v. Wells, 22 Wall. 23, 24.
The appellant submits that the record proves that Cummings absolutely withdrew his application of 1855 on the 17th of January, 1859, when he applied for his papers, and that this withdrawal was consummated on the 20th of January, when the office returned him the thin drawing.
It is impossible to connect his application of March 25, 1864, with the former application, which, if not withdrawn, remained, and still remains, in the Patent Office complete and susceptible of prosecution; and if it had been prosecuted without reference to the application of 1864, and a patent obtained upon it even after the patent of 1864 was issued, the later patent would have superseded the earlier one, because, though earlier in issue, it was subsequent in date of application. Suffolk Co. v. Hayden, 3 Wall. 315.
When, after eight years of entire inaction and acquiescence in the third rejection by the office, Cummings again appeared before the Patent Office, he did so with an entirely new case, petition, specification, drawings, and model,-and, without any reference to his former application, paid the fee required by the then existing law upon the new case.
His drawings in 1864 were different from those of 1855, showing gum-teeth, and having four figures instead of three.
He could not have included these changes in a renewal of his application of 1855, as the addition of subsequent improvements was then prohibited by the statute. Act of 1861, sect. 9.
Nor does this case fall within the rule announced in Godfrey v. Eames, 1 Wall. 217.
It is insisted that the inaction of Cummings and his acquiescence in the rejections of his original application amount to an abandonment thereof; and that the alleged invention having been in public use and on sale for more than two years prior to his application for the letters of June 7, 1864, the reissue is invalid.
Mr. E. N. Dickerson and Mr. B. F. Lee, contra.
MR. JUSTICE STRONG delivered the opinion of the court.

## Notes

This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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