## Facts

- Patent owners sued in equity for infringement of three wagon/carriage-spring-related patents: (1) Augur Patent No. 108,085 (1870), (2) Saladee Patent No. 123,937 (1872), and (3) Topliff & Ely Patent No. 122,079 (1871), later reissued as Reissue No. 7,017 (1876).
- The Augur patent claimed a method and mechanism to equalize load on two carriage springs by using pivoted links connected by a rigid rod so both springs move together and reduce body roll.
- The Topliff & Ely reissue addressed side half-elliptic spring vehicles and used two connecting rods (front and rear) turning in bearings, with short arms, so depressing one spring forces corresponding movement of the other to equalize action and reduce side motion.
- Defendants denied infringement and challenged validity on anticipation, lack of patentable novelty, and improper reissue, including whether reissues could broaden claim scope.
- The trial court held the Augur patent and the Topliff & Ely reissue valid and infringed, and rejected relief based on the Saladee patent.
- Both sides appealed, producing cross-appeals to the Supreme Court.

## Issues

1. Whether the Augur patent was anticipated by the earlier Stringfellow & Surles Patent No. 31,134 (1861).
2. Whether the Topliff & Ely reissue reflected patentable invention over the prior art.
3. Whether the first reissue of the Topliff & Ely patent was valid as a correction of mistake made promptly after issuance.
4. Whether a second reissue may be sustained when it arguably broadens claims, and what limits govern broader reissues.

## Decision

- The Court affirmed that the Augur patent was not anticipated by the Stringfellow & Surles patent and was valid as against that reference.
- The Court held the Topliff & Ely reissue embodied patentable invention, noting extensive use, though the novelty question was close.
- The Court sustained the first reissue as a prompt correction of a palpable drafting mistake within the Commissioner’s authority.
- The Court sustained the second reissue and rejected an absolute rule that a reissue with broader claims is always invalid.
- The Court substantially affirmed the decree upholding validity and infringement of the Augur and Topliff & Ely patents.

## Legal Principles

- A prior device does not anticipate merely because it could be modified to perform the patented function; anticipation requires that the prior device was designed, adapted, or actually used for that function.
- A reissue is permissible when the original patent is inoperative due to defective specification or claims narrower than the actual invention, if the error arose from inadvertence or mistake without fraud or deceptive intent.
- Reissue limitations include:
  - The reissue must be for the same invention disclosed in the original specification and claims.
  - Diligence is required in seeking correction; when enlargement is sought, a delay of about two years ordinarily (though not always) supports an inference of abandonment of the broadened subject matter to the public.
  - The Commissioner’s finding of inadvertence, accident, or mistake is not reviewed absent a clear record showing error, but whether the application was made within a reasonable time is generally a legal question for the court.
- Extensive practical adoption may support a finding of patentable invention where the prior art is close.

## Conclusion

The Supreme Court upheld key wagon-spring patents against anticipation and reissue challenges, and clarified that broader reissues are not categorically barred, but must remain within the same invention and be sought with due diligence, with significant delay tending to show abandonment.


Topliff v. Topliff, 145 U.S. 156 (1892)