J. B. Sheriff & Son v. A. Fulton's Son & Co.

I'll research this case, starting with the parties and the patents, then the procedural and doctrinal posture.

I have strong primary-source material. Let me get the full opinion text and background on the parties and the doctrine.

I'll research this case. Note up front: this is an 1882 equity action, so modern litigation machinery (PACER, Markman, IPR) postdates it by a century-plus — but I'll verify what the historical record actually shows rather than assume.

Found the decision: 12 F. 136 (C.C.W.D. Pa. 1882). Let me pull the full opinion text and check for any appeal or related proceedings.

Let me pull the full opinion text and check for any companion/appeal proceedings.

Threshold caveat on the record

This is an 1882 equity cause, so most of the checklist in your prompt has no referent: there was no PACER docket, no Rule 12/Rule 56 practice (the Federal Rules of Civil Procedure date from 1938), no Markman hearing (Markman is 1996), and no PTAB (created 2012). What actually exists is the reported opinion and the contemporaneous patent-law digests that abstracted it. I've built the chronology on those and flagged explicitly where a fact is not established by anything I could retrieve.

The authoritative source is J. B. Sheriff & Son v. A. Fulton's Son & Co., 12 F. 136 (C.C.W.D. Pa. 1882) (CourtListener; Federal Reporter vol. 12, pp. 136–37). Also abstracted in the 1888 digest A Digest of Patent Cases at ¶ 485, which lists it (OCR-mangled as "Shevryf et al. v. Fulton et al.") as 12 Fed. Rep. 136 — Acheson, 1882.

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I. The patent side (the "administrative" predecessor to the suit)

This prosecution is the only "parallel proceeding" in the case. The reissue specification also added advantages — jet protection / reduced condensation — "neither mentioned nor hinted at in the original specification," which the court treated as evidence the reissue was drafted to capture later structures. In Sheriff, the reissue broadening was challenged in court, not at the Office.

II. Filing and initial pleadings

• Bill in equity filed by J. B. Sheriff & Son against A. Fulton's Son & Co., "charging infringement and praying for an injunction, etc." The bill was necessarily filed after 1880-05-18 (the reissue's issue date). The exact filing date is not stated in the reported opinion and I could not establish it — a limitation of the pre-PACER record, not a research gap I can close.
• Counsel of record (from the reporter): Bakewell & Kerr for complainants; M. D. Connelly for defendants.
• Answer: the defendants plainly pleaded invalidity of the reissue, but the answer's contents are not reproduced in the reporter. There were no "counterclaims" in the modern sense; in 1882 equity practice the defendant's affirmative case (invalidity, laches, non-infringement) came in through the answer and proof, with a replication by complainants.
• Notably, Coll himself testified "in behalf of the plaintiffs" — indicating the inventor was aligned with the Sheriff firm (which was presumably the assignee/owner of the reissue) rather than a formal party.

III. Pre-trial motions of substance

• None of the modern categories exist here. No motion to dismiss, transfer, stay pending IPR, or summary judgment. There is likewise no evidence of a contested preliminary-injunction motion in the reported record; the court decided the case on a final hearing on pleadings and proofs.
• The procedural question of substance was whether reissue validity was for the court or required fact-finding. Contemporaneous authority — Heald v. Rice, 104 U.S. 737 (1882) — held that where the identity/difference of original and reissued inventions appears on the face of the instruments, it is "one of pure construction… a matter of law for the court." Judge Acheson proceeded on that basis, comparing the two patents directly.

IV. Discovery milestones of strategic significance

Nineteenth-century equity "discovery" was testimony taken before an examiner, not document production. The strategically decisive item was Coll's own admission for the plaintiffs: the difference between his 1869 and 1870 patents was "a difference of construction only" — the large unobstructed opening at the rear of the inner head, and how the head was secured to the outer head. That admission undercut the broader reissue claim, because the reissue claim was not limited to that structure.

The second "discovery" event was the face-of-the-patents comparison itself: the court found the reissue claim "a great expansion of the original," and that the original patent "did not cover and could not rightfully cover the inner head itself," since Coll's 1869 patent already showed an inner head that surrounded and protected the steam jet.

V. Claim construction (the functional Markman equivalent)

There was no Markman hearing, but the court did construe both instruments:

• Original claim 1 (No. 110,205): limited to the inner head open at its rear end with an unobstructed opening around the injection pipe, connected to the outer head by radial arms, "all arranged substantially as described."
• Reissue sole claim (RE 9,199): read broadly to the inner head/shell "extending backward over the water-induction opening" and protecting the jet — i.e., decoupled from the radial-arm structure.
• Result of the construction: the reissue claim was a substantial enlargement over the original, taking in territory the original had not claimed. That construction is what drove the invalidity holding.

VI. Decision and disposition (1882)

Decided by District Judge Acheson (sitting in the circuit court for the Western District of Pennsylvania). Holding, as reported:

"…having thus limited his claim to a specific device, could he, after the lapse of more than nine years, procure a valid reissue embodying a claim so enlarged and comprehensive? I am of the opinion that he could not. The delay was altogether unreasonable, and the reissue, therefore, without the authority of the law." (12 F. at 137)

Two points of law were headnoted in the Federal Reporter:

1. A reissue claim substantially identical to an original claim, with elements added, may be valid; but
2. A delay of nine years is unreasonable on an application for a reissue wherein the original claim is enlarged.

Effect: the reissue was held void; the infringement action therefore failed — no injunction, no accounting of profits. The precise form of the decree (e.g., "bill dismissed for want of equity/validity") is not set out in the reported excerpt, though dismissal is the only disposition consistent with the holding.

VII. Post-trial motions and appeal

• JMOL / new trial / fee motions: none available and none reported. This was a court-of-equity cause tried to the bench; the 1938 Rules and 35 U.S.C. § 285's fee-shifting ancestor (R.S. § 4921) were not in play in the reported decision.
• Appeal: the route would have been a direct appeal to the U.S. Supreme Court (equity appeals from the circuit courts under R.S. § 692). I found no Supreme Court decision in this cause. I cannot rule out an unreported dismissal or settlement pending appeal, but there is no evidence of any appellate disposition in the sources accessible to me. Treat the 1882 circuit decision as the final reported disposition.

VIII. Parallel PTAB / IPR proceedings

None, and none were possible. The Patent Trial and Appeal Board did not exist until 2012 (AIA), and inter partes review did not exist until 1999 (as the AIPA-era IPR), with the modern AIA IPR from 2012. The closest 1882 analogues in this case were:

• The reissue prosecution itself (application filed 1880-03-13, RE 9,199 issued 1880-05-18) — an ex parte Office proceeding, with no effect on staying the litigation; the court simply declared its product void.
• No interference or other Office contest is reported.
• Same-court follow-on authority applying the same doctrine: Stutz v. Armstrong, 20 F. 845 (W.D. Pa. 1884) (Acheson, J.).

IX. Legal context and significance

Sheriff is one of the earliest circuit applications of the Supreme Court's brand-new reissue-laches doctrine, decided the same year as Miller v. Brass Co., 104 U.S. 350 (1882) and Banta v. Frantz, 105 U.S. 160 (1882), and building on James v. Campbell, 104 U.S. 356 (1881). The contemporaneous digest (Croswell, 1888) placed it in that line as authority that a reissue enlarging the claim after more than nine years is "without the authority of the law." It matters doctrinally as an illustration of the rule that unreasonable delay in seeking a broadening reissue, measured against the accrual of intervening rights, voids the reissue — the common-law ancestor of the two-year statutory window now codified in 35 U.S.C. § 251(d).

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Facts I could not verify (stated so you can weight them accordingly)

• The complaint's filing date and its specific infringement allegations.
• The answer's specific defenses beyond invalidity and the delay/enlargement theory argued at the hearing.
• Whether any preliminary injunction was sought or ruled on.
• The exact decretal language and any costs award.
• Whether an appeal was taken and dropped, or simply never taken.
• The corporate/assignment chain tying J. B. Sheriff & Son to Coll's patent rights (inferred, not documented in the sources I retrieved).

I'll research this case. Note at the outset: this is an 1882 equity case, so there is no PACER docket and no modern firm-website presence. The best evidence for counsel will be the reported opinion's counsel line or contemporaneous legal-press coverage. Let me search.

I have the counsel line from the reported opinion. Let me verify it and research the firm/attorneys.

Found the counsel line: "Bakewell & Kerr, for complainants." Let me confirm the individual partners and check for related proceedings.

Bottom line

Counsel of record for the complainant (plaintiff) J. B. Sheriff & Son was the Pittsburgh patent-law firm of Bakewell & Kerr.

That is the only attorney identification that survives in the case record. It appears in the counsel line of the sole reported decision, J. B. Sheriff & Son v. A. Fulton's Son & Co., 12 F. 136 (C.C.W.D. Pa. 1882) (Acheson, D.J.), which reads:

"Bakewell & Kerr, for complainants. M. D. Connelly, for defendants."

Source: Federal Reporter, Vol. 12, at 136 — https://law.resource.org/pub/us/case/reporter/F/0012/0012.f.0136.html (also reproduced at CourtListener, https://www.courtlistener.com/opinion/[8341150](/patent/8341150)/j-b-sheriff-son-v-a-fultons-son-co/).

Important threshold caveat on method

This is an 1882 equity case in the U.S. Circuit Court for the Western District of Pennsylvania. There is:

• no PACER docket (PACER's coverage does not reach the 19th century),
• no CM/ECF docket sheet, and
• no appearance slips, pro hac vice motions, or firm letterhead in any accessible digital form.

Accordingly, I cannot tell you which individual partner argued the case, who was "lead," or who was "of counsel" in the modern sense. The Reporter's convention was to print the firm name only. The individual attorneys below are identified by reconstructing who comprised "Bakewell & Kerr" in 1882 from contemporaneous firm histories and Pittsburgh directories — not from a docketed appearance. That distinction is flagged explicitly for each entry.

Counsel table

Defense side (for completeness, since the opinion states it): M. D. Connelly, for defendants A. Fulton's Son & Co.

Firm-identity corroboration

• Tondeur v. Stewart, 28 F. 561 (W.D. Pa. 1886), and Bradley v. [Westinghouse] and related W.D. Pa. cases of the 1880s carry the identical counsel line "Bakewell & Kerr, for complainants," confirming the firm was the go-to Pittsburgh patent plaintiffs' shop before Judge Acheson in exactly this period. E.g., 19 F. 913 (https://law.resource.org/pub/us/case/reporter/F/0019/0019.f.0913.pdf); Tondeur v. Stewart, 28 F. 561.
• Bayard H. Christy, The Patent Bar of Pittsburgh (read before the Patent Law Association of Pittsburgh, May 26, 1939) — the authoritative internal history of the firm lineage: http://www.piplaonline.org/wp-content/uploads/christy-bayhard-h-1939-the-patent-bar-of-pittsburgh.pdf
• Industries of Pittsburgh (Pittsburgh Chamber of Commerce, Richard Edwards ed.), directory listing: "Thos. B. Kerr. Bakewell & Kerr, ATTORNEYS & COUNSELLORS AT LAW IN PATENT CASES, No. 94 Diamond Street, PITTSBURGH, PA." (HathiTrust).
• Biographical sketch of William Bakewell, Courts and Lawyers of Pennsylvania (Frank Marshall Eastman), at 280–82, reproduced at pa-roots.org.

What I could not verify, and what would be needed

1. Which individual argued the case. The reporter printed the firm name only. The 1882 W.D. Pa. equity files (bill, answer, master's report, decree book) would be at the National Archives–Philadelphia (Record Group 21, U.S. Circuit Court, W.D. Pa.) if any clerk's file survives; that is the only place an individual signature ("Wm. Bakewell, sol'r") might appear.
2. "Lead" vs. "of counsel." An anachronism for 1882. The counsel/solicitor split did exist in this practice — e.g., a contemporaneous Pittsburgh patent case is captioned "William Bakewell, counsel. Kerr & Curtis, solicitors" (HathiTrust catalog record for Steel Patents Co. v. Pottstown Iron Co.) — but the Sheriff opinion line does not make that division, so I cannot assign Bakewell as "lead" and Kerr as "local/solicitor" as a matter of record.
3. Any parallel PTAB/IPR proceeding. Not applicable — the Patent Trial and Appeal Board did not exist until 2012, and the patent (Reissue 9,199, reissue of original No. 110,205) long ago expired.
4. Subsequent appellate counsel. If the case was carried up, the Supreme Court reporter's counsel line would be the place to check; but I did not locate a reported appellate decision in this matter within the available search results, so I make no claim that one exists. Sheriff v. Fulton is cited only for its holding — that a nine-year delay before a broadening reissue is unreasonable under the then-applicable reissue statute — e.g., at 22 O.G. 87, and in Robinson's 1890 treatise on patents.

Bottom line for citation purposes: attribute plaintiff's representation to Bakewell & Kerr (William Bakewell and Thomas B. Kerr), Pittsburgh, PA, as the firm of record for complainant J. B. Sheriff & Son in J. B. Sheriff & Son v. A. Fulton's Son & Co., 12 F. 136 (C.C.W.D. Pa. 1882). Do not name either partner individually as "attorney of record" without the underlying National Archives court file, which I have not inspected.

I'll research this case. Let me start with several targeted searches.

I found the opinion. The reported text lists counsel. Let me verify and research the attorneys.

Bottom line

Only one attorney is identified of record for the defendants in this case. The reported opinion's counsel line reads, in full:

"Bakewell & Kerr, for complainants. M. D. Connelly, for defendants."
— J. B. Sheriff & Son v. A. Fulton's Son & Co., 12 F. 136 (C.C.W.D. Pa. 1882) (Acheson, D.J.)

So for A. Fulton's Son & Co. (defendant), the sole counsel of record is M. D. Connelly. Bakewell & Kerr appear on the other side (for J. B. Sheriff & Son, the complainants), which is worth flagging because the same firm appeared for the Fulton interests in the related 1876 ejector case — see below.

What the record shows

• The judgment went for the defendants (bill dismissed; reissue No. 9,199 held invalid for unreasonable delay — nine years — in enlarging the original claim). Connelly's side prevailed.
• The predecessor/companion case, Scaife v. Fulton et al., 21 F. Cas. 616 (C.C.E.D. Pa. 1876) (McKennan, C.J.), was brought against A. Fulton's Sons & Co. and Sherriffs and Loughrey on a different ejector patent (No. 92,718 to Glass). There the counsel line is "William Bakewell and T. B. Kerr, for defendants" — i.e., the Fulton firm's prior patent counsel was Bakewell & Kerr, who in the 1882 case appear opposite them. That reversal is the most interesting counsel fact in the record, but I could not determine from available sources why the Fultons changed counsel (no substitution document or docket entry is accessible).

Sourcing and important caveats

1. No PACER/docket exists for this case. It is an 1882 equity cause; PACER and modern docket sheets do not reach it. The only evidence of appearance of counsel is the counsel line printed in the Federal Reporter, which in 1882 practice typically reflected the solicitor of record who answered/argued. I am relying on:
   • J. B. Sheriff & Son v. A. Fulton's Son & Co., 12 F. 136 (C.C.W.D. Pa. 1882), full text at law.resource.org and CourtListener opinion 8341150; also reported at 1882 U.S. App. LEXIS 2488.
   • Scaife v. Fulton, 21 F. Cas. 616 (C.C.E.D. Pa. 1876).
2. I could not verify who M. D. Connelly was. Searches surfaced a contemporaneous Pittsburgh patent-soliciting firm, "Connelly Bros. & McTighe" (active c. 1879–80 in electrical/patent work), but the name in that source is spelled Connolly, not Connelly, and I could not connect it to the attorney in this case. I also could not locate a firm website, biographical entry, or bar-admission record for M. D. Connelly. I am not asserting a firm name, office address, or experience for him — that information is simply not established by the sources I could reach, and the Federal Reporter renders his name in initials only (no full given name).
3. No sealed filings or unappeared counsel. Nothing indicates sealed filings. The parties were 19th-century pump manufacturers (the Fulton firm of Pittsburgh; the Sheriff firm likewise), so there is no in-house counsel of record in the modern sense.
4. The case metadata's court designation ("U.S. Circuit Court for the Western District of Pennsylvania") is consistent with the reporter (Acheson, D.J., sitting in the circuit court); CourtListener renders it "U.S. Circuit Court for the District of Western Pennsylvania."

If you need Connelly's full name, firm, and admission details, the productive next step would be the original equity case file and appearance docket for the 1882 May/October term of the C.C.W.D. Pa. (Pittsburgh) at the National Archives (Philadelphia or Chicago regional facility), or the Allegheny County / Pittsburgh city directories for 1880–1885 under "patent solicitors" — neither of which is available online in searchable form from the sources I used.