(dissenting).
The ever-present and important question as to the limits of stare decisis and the propriety of overruling prior cases confronts us in this one.
Pursuant to 35 U.S.C.A. § 64, a patentee may surrender ■ a patent issued to him if “wholly or partly inoperative or invalid" where an “error has arisen by inadvertence, accident, or mistake” and obtain a reissued patent. The reissued patent may contain enlarged claims. Topliff v. Topliff and another, 145 U.S. 156, 170, 171, 12 S.Ct. 825, 36 L.Ed. 658. Those claims which are identical in both the original patent and the reissued patent speak from the date of the original, by the express words of the statute. On the other hand, an enlarged claim speaks from the date of the reissued patent. Altoona Theatres v. Tri-Ergon Corp., 294 U.S. 477, 491, 55 S.Ct. 455, 79 L.Ed. 1005.
’ Does an appropriator, who makes and sells articles not covered by the claims of the original patent, but embraced by the enlarged claims of a subsequent valid reissue, have such intervening rights as will not only render him immune from liability for what he has made and sold, but also grant an irrevocable and permanent license to continue to make and sell without restriction ?
In support of an affirmative answer it can be said that the appropriator, technically speaking, violated no law when he began the appropriation. As the patent then stood the patentee had no right to interfere with the appropriation. By failing to claim all he could claim, the patentee has dedicated the unclaimed portion to the public. The appropriator may have changed his position.
In this connection appellant contends that the appropriator should not be protected unless he has made a change of position with knowledge of the limitations of the original patent.
Opposed to the foregoing arguments and in support of a contrary rule, it may be said that the policy of the patent laws was and is to confer a monopoly on the patentee. Had it not been for the mistake of failing to include all he had invented, the patentee could have prevented the appropriation of his invention. The patentee had no intention of dedicating any part of his invention to the public. Courts for many years have given relief to individuals placed at a disadvantage through mistake, and there seems to be no reason to make only the patentee, of all litigants seeking relief for mistake, bear the burden of his mistake.
With respect to the holding of the majority that the basis for intervening rights is a two-year dedication of the unclaimed part of the invention to public use, suffice it to say that the statute does not so read, and the logical end of such reasoning is that if the patentee has dedicated anything in two years, then no reissue should be permitted after that date. There is no such limitation on reissued patents.
The real basis for the reissue of patents appears to me to be a “mistake”. The question as to why the equitable rules re-, garding relief for mistake should not be applicable to a mistake in patents, where a third person has taken advantage of the mistake, is not argued.
This court 26 years ago decided which of the opposing arguments was correct. Keller v. Adams-Campbell Co., 9 Cir., 287 *335F. 838, 841. In that case the reissued patent was issued less than two years after the original patent was issued, and the court held: “We therefore think it clear that the appellees had and have such intervening rights as were properly protected by the court below”. Inasmuch as it also held that the decree required affirmance on the ground of non-infringement (Keller v. Adams-Campbell Co., 264 U.S. 314, 319, 44 S.Ct. 356, 68 L.Ed. 705), the Supreme Court on certiorari held that the “intervening rights” question was not before it and dismissed the writ. It cannot be said that the case was based upon the theory that the appellees there acquired their rights because of their knowledge of the limitations of the Keller patent, because this court said: “The evidence shows that, prior to any knowledge on their part of the Keller patent, the appellees had been working on their device, and had made and sold a few of them * * *.” The appellees in that case could acquire no more rights from the sale of many, than they obtained by the sale of “a few”. Whatever rights appellees there acquired were obtained by sale of a few of the devices, and it was held that they were acquired notwithstanding the fact that two years had not expired when the Keller patent was reissued. The majority opinion now holds that no such rights can be acquired where the appropriator had no knowledge of the limitations of the original patent, and less than two years have expired when application is made for a reissue patent. It seems apparent to me that the present holding is in conflict with the Keller case.
Thus this court has spoken. Should we now depart from the rule that there may be intervening rights although less than two years have elapsed when the patent is reissued? The chief value of the rule of stare decisis is to enable a person to pre-figure with some degree of certainty a particular course of action. Opinions are written with that end in view. If we are to adopt the policy of overruling cases, then we should cease preparation of written opinions. There must be a cushion of safety, so that decisions manifestly wrong may be righted, but I believe the end sought — stability—will be more generally achieved if we restrict the overruling of cases to those manifestly erroneous. Manifest error means a view which no reasonable man could entertain.
Considering the opposing arguments, I think it clear that reasonable men could and would differ with respect to the application thereof. Each view has some support in reason, and is not manifestly wrong. For that reason I think the decree should be affirmed.