DUNHAM
v.
DENNISON MANUFACTURING COMPANY

U.S. | 1894-05-26
No. 294
38 L. Ed. 924 Supreme Court of the United States (1894) Positive Treatment
Also reported at: 14 S. Ct. 986 · 1894 U.S. LEXIS 2219 · SCDB 1893-269
Cited by 19 cases

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Synopsis

A patent holder sought to enforce a reissued patent for an envelope design against a competitor after the competitor's product did not infringe the original patent. The Supreme Court affirmed the lower court's decision, holding that the reissue improperly enlarged the patent's claims to cover designs expressly excluded by the original patent's clear and simple language, and that upholding such a reissue would grant an unfair new privilege at the expense of innocent parties who relied on the original patent's scope.

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Opinion of the Court
Me. Justice Gray,

Mr. Justice Gray,

after stating the case, delivered the opinion of the court.

The facts of this case, and the reasons against maintaining the suit, are so clearly and fully stated in the opinion delivered in the Circuit Court, that there is no occasion for extended discussion.

The patent of May 8, 1883, was expressly and distinctly, both in the specification and in the claims, limited to an envelope, with an opening at' one end; with a flap, attached to the envelope at that end, of sufficient size to cover the whole of that side of the envelope in which the opening was; and with an eyelet in the flap, resting on an eyelet in the opposite end of the envelope, through which eyelets the flap could be. secured to the envelope, and both flap and envelope be fastened to the object to be carried. The patentee thus gave the public to understand' that an envelope, the flap of which did not cover its whole length, would not come within his patent, and might rightfully be made by any one. After the defendant had made envelopes with a short flap of semi-circular shape and covering little more than the opening of the envelope, (which, it is admitted, did not infringe the plaintiff’s patent as originally issued,) the plaintiff obtained a re-issue, enlarging the claims, and altering the specification throughout, so as to include an envelope with a flap of any size or shape, and to make the invention consist, not, as in the lóading words of the description in the original patent, of “ an envelope with an end flap covering its side,” but in “ a tag provided with means for attaching it to the merchandise, and with an envelope or pocket to receive a bill or invoice of the merchandise.” The words of the description in the original patent were neither technical nor complicated; but they were of the simplest kind, and their meaning and scope could not have been misunderstood by any one who read them with the slightest attention, least of all by the patentee. To uphold such a reissue under such circumstances would be to grant a new and distinct privilege to the patentee at the expense of innocent parties, and would be inconsistent with the whole course of recent decisions in this court. Miller v. Brass Co., 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354; Coon v. Wilson, 113 U. S. 268; Topliff v. Topliff, 145 U. S. 156; Huber v. Nelson Co., 148 U. S. 270; Leggett v. Standard Oil Co., 149 U. S. 287; Corbin Co. v. Eagle Co., 150 U. S. 38.

The patent of November 24, 1885, has clearly not been infringed by the defendant; for the peculiar feature of this patent consists in the flap being constructed so that it can be opened, and the contents taken out, without tearing the envelope or removing or breaking the fastenings; whereas in the defendant’s. envelope that flap is fastened down so that it cannot be opened without injury to it or to the envelope, and the contents are taken out by opening a flap, no more firmly secured than with gum, at the opposite end of the envelope.

Upon these grounds, without considering the questions of lack of novelty and invention in the several patents, the entry must be

Decree affirmed.

Cases With Similar Vibessemantic neighbors from the corpus

Citator

Cited By

  • Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147 (U.S. 1950)
    …: Applying the principle of the umbrella to a skirt form. Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U. S. 425: An oval rather than cylindrical toilet paper roll, to facilitate tearing off strips. Dunham v. Dennison Mfg. Co., 154 U. S. 103: An envelope flap which could be fastened to the envelope in such a fashion that the envelope could be opened without tearing. The patent involved in the present case belongs to this list of incredible patents which the Patent Office has spawned. T…
  • Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463 (U.S. 1924)
    …leaves in doubt the question whether they were not so materially enlarged as to preclude their allowance on the original application. Railway Co. v. Sayles, 97 U. S. 554, 563; Hobbs v. Beach, 180 U. S. 383, 396; Dunham v. Dennison Manufacturing Co., 154 U. S. 103, 110; Michigan Cent. R. Co. v. Consolidated Car-Heating Co., 67 Fed. 121, 126. But this aside, the evidence establishes to our satisfaction that Kane did not originally intend to assert these amended claims, because he considered their subject matte…
  • Sontag Chain Stores Co., Ltd. v. Nat'l Nut Co. of Cal., 310 U.S. 281 (U.S. 1940)
    …pple Co. v. Yale Clock Co., (1887) 123 U. S. 87; Electric Gas Co. v. Boston Electric Co., (1891) 139 U. S. 481; Topliff v. Topliff, (1892) 145 U. S. 156; Leggett v. Standard Oil Co., (1893) 149 U. S. 287; Dunham v. Dennison Manufacturing Co., (1894) 154 U. S. 103; Abercrombie & Fitch Co. v. Baldwin, (1917) 245 U. S. 198; Keller v. Adams-Campbell Co., (1924) 264 U. S. 314, and cases there cited; Altoona Theatres v. Tri-Ergon Corp., (1935) 294 U. S. 477; Wooster v. Handy, (1884) 21 F. 51; Ashley v. Samuel C. T…

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