UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT
June 3, 1942
GENERAL RADIO CO.
ALLEN B. DU MONT LABORATORIES, INC.
Before BIGGS, MARIS, JONES, and GOODRICH, Circuit Judges.
On Petition for Rehearing.
MARIS, Circuit Judge.
The plaintiff has filed a petition for rehearing. In support of the petition it urges that we erred in holding claims 1 to 6 of the original Bedell patent invalid. Its argument is that these were combination claims and that the use of the word "means" limited by a statement of function has long been recognized as the proper method of stating an element of a combination claim.
The plaintiff finds itself upon the horns of a dilemma. If the claims in question were invalid, under our ruling the plaintiff must fail. On the other hand if they were valid there was no error in the original patent which justified its reissue and the reissue patent was invalid for that reason.
That the claims in question were invalid seems clear even in the light of the plaintiff's argument. The novel feature of the combination, the connection between the two circuits, is not described in terms of its particular function, as, for example, means for introducing a small voltage from the electrical quantity under examination into the oscillator circuit, but rather in terms of the whole problem which the invention solved, that is, as "means for indicating the curve formed by the deflected beam as stationary." There is an obvious difference between describing a well known element in a combination in terms of its particular well known function and describing a single element in a combination in terms of the result achieved by the whole combination. It was doubtless this distinction which the plaintiff had in mind when it surrendered the original patent and procured Bedell to make application for reissue upon the ground that claims 1 to 6 claimed more than he had a right to claim as new.
But even if the validity of the claims of the original Bedell patent should be conceded the plaintiff's suit must likewise fail since it is not brought upon the original patent, which has been surrendered, but upon the reissue patent which was issued in place of it. The latter could lawfully have been issued under the statute only if the patentee had erroneously claimed more than he had a right to claim as new and if the error had arisen by inadvertence, accident or mistake and without any fraudulent or deceptive intention. It is obvious, as has already been suggested, that if the claims of the original patent were valid there was no error in that patent which would provide a basis of invoking the reissue statute. Consequently if the plaintiff's present contention is sound the reissue patent was wholly void as beyond the power of the Commissioner to grant.
The petition for rehearing is denied.
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