this government for the letters patent, that he believed himself to be the original and first inventor of the improvements, and that they had been patented in France on June 5, 1865, in the name of Marinoni and Chandre. Chandre, who was a. partner of Marinoni at the date of the invention, testified that he was a joint' and equal inventor of the improvement which he describes at length. On June 12. 1865, a Belgian patent was issued to Marinoni and Chandre, and an English patent was issued to one Clark, upon their communication. By the French statute every new discovery or invention, in all departments of industry, confers upon its author, under the conditions and for the time mentioned in the statute, the exclusive right of working for his own profit the said invention: "Every person who shall wish to obtain a patent of invention must deposit, under a sealed cover, · · · · · · (1) his petition to the minister of agriculture and commerce; (2) a specification of the discovery, invention or application forming the subject of the petition; (3) the drawings," etc. The patents demanded in due form are delivered without previous examination. Applications are not required to be verified by oath, and are not preservea by the government. The plaintiffs introduced Marinoni's deposition, in which he asserted that he was the sole inventor. It is necessary for the defendants to overcome the prima facie case, and to establish affirmatively that the applicant was not the sole inventor. The testimony of Chandre is not sufficient. I cannot perceive from the depositions that one story is apparently more entitled to confidence than the other. Marinoni's statement is exceedingly brief, and is a bare assertion that he was the inventor. Chandre is equally positive of his joint participation in the invention, and he describes its character; but is equally silent as to the manner in which they w'orked, and as to the method by which they jointly accomplished the result. If the defendants could have shown an admission by Marinoni, in either foreign application, that he was not the sole inventor, it would have turned the scale, but it is not cer-
tain what the application was, or that he personally made an application. The French system of issuing patents is not so exact as thai which prevails here. While the existence of the foreign pat. ents, confessedly with the knowledge of Marinoni, throws doubt upon his title, and while I am not satisfied as to the authorship, it is impossible to say that the defendants have established, by a prepcmderance of proof, the fact that Marinoni was not the sole inventor. It is next insisted that the patent is invalid by reason of sundry irregnlarities and omissions during and prjor to the transit of the application through the patent office. These alleged irregularities are as follows: Marinoni appointed Messrs. "Munn, Wales and Beach" to act as his attorneys in presenting the application, and in making "all such alterations and amendments as may be required, and also to sign his name to the drawings." This authority was never revoked by Marinoni or by Hoe. Hoe & Co., who had no record interest in the invention, revoked the power to Munn & Co., and appointed C. A. Durgin to represent them in the pr,emises. The specification which Marinoni had made and filed was not intelligible. Durgin amended the specification by writing substantially a new one, which was not sworn to by the inventor. It is claimed that there were no original drawings or model accompanying the description, as required by the statute, because the description was unintelligible and was not a description. All these alleged irregularities and omissions relate to the formal acts to be done by the inventor, or by his duly consti· tuted attorney, preparatory to and connected with the issuing of the patent. The commissioner's decision upon the fact that the acts were done, and upon the fact of the compliance of the applicant with the requirements of the statute in regard to his application, is not to be reviewed collaterally. For the purposes of this case the commissioner's decision is final, that the drawings and the model required by the atatute had been presented; that Durgin was the duly consti. tuted attorney of the applicant or his assignee, and had
authority to amend or alter the specification; and that the specification had been sufficiently sworn to by the in ventor. If the patent is invalid by reason of any or all of these defects its invalidity is to be determined in a proceeding to set aside the patent by scire facias, or by bill, or information. Seymour v. Osborne, 11 Wall. 7, 96; Jackson v. Lawton, 10 John. 23. The defendants insist in the third place that, in view of the state of the art, there was an entire lack of invention in the comliination which is the subject-matter of the third and only claim which is said to have been infringed, or that the combination was old. The improved press was for lithographic printing. The invention recited in the third claim was for the combination of a sheet flier with an impro8sion cylinder without tapes, and a receiving cylinder provided with grippers and tapes, substantially as described and specified. The object of the invention was to have the whole width or surface of a sheet of paper printed with heavy color on the impression cylinder, and to be deliv'cred automatically, without smutting.. face side uppermost on the fly board or table. The whole width of the paper is enabled to be printed, because the impression cylinder is without tapes underlying the sheet. The sheet is taken by the grippers of the receiving cylinder and is delivered upon tapes running from the receiving cylinder over pulleys near the roots of the fly fingers. These tapes are above the fly fingers, and thus prevent the sheet from being smutted in consequence of sliding down the smooth fly frame. When the sheet is in proper position it is automatically turned by the fly frame, face side uppermost, upon the table. If there was invention in this combination, and the patentee was the first inventor, the claim is not invalid upon the ground that the sheet flyer and impression cylinder have no conjoint action, and no active connection to produce a joint result. The combination is of the class mentioned in Forbush v. Oook, 2 Fisher, 668, in which case Judge Curtis says: "To make a valid claim for a combination it is not necessary that the several elernentary parts of the combination should
HOB V. OOTTRELL.
act simultaneously. If .those elementary parts are so arranged that the successive action of each contributes to produce some one practical result, whichre,sult, when attained, is the product of the simultaneous or successive action of all the elementary parts, viewed as whole, a valid claim for thus combining these elementary parts can be made." The result which was attained was the automatic delivery of a sheet, automatically printed upon its broadside with heavy color, without smutting, face side uppermost. This result was the product of the successive action of all the elementary parts. It is not denied that all the elements were old. Delivery mechanism, consisting of tapes combined with flyers, had been used in presses having printing cylinders with tapes, impression cylinders without tapes, and receiving cylinders with tapes had been combined with sheet flyers without tapes, but the combination of all the elements in one existing machine, was new. It is substantially admitted that this combination had not been actually made or deElcribed in any machine, although it is claimed that the combination was so far suggested in antecedent patents that the flyer could have been added by any skilled press builder as a matter of course. Prior to the date oUhe invention sheet flyers were a common adjunct of a press. They were made so as to be detached from presses, and to be put on or taken off at pleasure. Tape and sheet flyer deliveries had been combined, and, therefore, when Dutartre, in his :French patent of January 11, 1853, showed an impression cylinder without tapes, a receiving cylinder with grippers and tapes, and a tape delivery, it is said that any skilled builder could have mechanically added a sheet flyer to the tapes. It is further said that when the Reynolds American patent of February 27, 1863, contained the same combination, and, after showing how the paper was delivered to the tapes, added, it is "piled by hand or by an ordinary fly," it was the part of ordinary mechanical labor to add the fly to the tapes. It is to be observed that Reynolds did not suggest the combination of fly and tapes. The same point is put by the
defendants more forcibly in this" llfiay: The plaintiffs, at the date of the invention, were making in their factory the Hoe high stop press, which had an impression cylinder without tapes, a receiving cylinder with tapes, and a sheet flyer without tapes. They also knew of the Taylor press, and were making at the same time divers presses like the Taylor, having impression cylinders with tapes, and a combined tape and sheet flyer delivery. What was easier than for Mr. Hoe to discard his ingenious sheet flyer, and substitute the wellknown Taylor method of delivery? Looking at the question from the present stand-point of time, it is very difficult to point out satisfactorily to one's self the changes which required invention. If he looked merely at the simplicity of the combination, and at the ease with which it now seems that anybody could have accomplished the result, the conclusion would be irresistible that there was no combination. The facts which are also to be taken into account in the determination of this question are these: At the date of the invention about 1,800 patents upon printing presses had been granted 'in England, France, and the United States. This combination did not exist in any patented or non-patented device, so far as is now known. Lithographic printing was at the time well understood. Mr. Hoe, who had long \ been a printing press manufacturer and inventor, and was thoroughly conversant both by study and practice with the subject of improvements in printing, and was making both the Hoe high stop press and presses which had tape and fly deliveries, when he saw the Marinoni press. recognized it as an invention embodying an advance in the art, and hastened to purchase the exclusive right to use the improvement in this country. The combination is useful. It has been a successful and popular press, and has been extensively sold. The plaintiffs have substituted it for the Hoe high stop press. The exhaustive and expensive manner in which this suit has been carried on and contested shows that the combination is of value. In the determination of the questIOn whether there was invention in any particular combination, the important
HOE 'D. COTTRELL.
is to ascertain whether novelty and utility existed. It is true that these requisites may result from mere mechanical skill, and a new and useful combination may be formed by the mere mechanical addition of an old member to an old set of members. But when a device has a new mode of operation, Which accomplishes beneficial results, "courts look with favor upon it," and are not exacting as to the degree of inventive skill which was required to produce the new result. There must be some, but a little will suffice. Furbrcsh v. Cook, 2 Fisher, 668; Middletown Tool Company v. Judd, 3 Fisher, 144; Stimpson v. Woodman, 10 Wall. 117. The facts that in the multiplicity of printing presa mechanism this combination had not been hit upon, and that when it was introduced its utility was universally recognized, and that it is plain that in order to make the combination some changes were necessary in any machine or drawing which has been shown, satisfy me that to produce this result required changes which the mere skill of the skilled mechanic would not suggest, and that the work was practically more difficult than now seems to the theorist to have been necessary. The deiendants next insist that the patent is void because the patentee, in the body of his specification, states that his invention consisted in the combination with the receiving cylinder, provided with grippers and cords or tapes, of the sheet flyers; whereas, a new el6ment is introduced into the claim, viz.: "an impression cylinder without tapes." This claim was introduced into the claim by amendment after the application had been rejected, and the corresponding amendment was not made in the statement of the invention in the body of the specification. It is admitted by the defendants' expert to be true, "that the combination recited in the third claim is all shown in the drawings and is described in the specification, as to its principles of construction and mode of operation, but it is equally true that it is nowhere described, except in the claim, as one of the parts of invention of the patentee." It would not be in accordance with the principles of construction which have heretofore been
adopted by the courts of this country to declare the patent void on account of this discrepancy or omission. In regard to infringement, differences in the construction of the two machines exist, but they are not material with respect to the mode of operation of the combination which is the subject of the third claim. Let there be a decree for an injunction, and an accounting in respect to the third claim.
Co. v. WIIITE and others.
March 17, 1880.)
(Circuit Court, E. D. Misso1tri.
PATENT-RESTRAINING ORDER.-'l'he function of a restraining order is to protect the plaintiff without unnecessanly oppressmg or annoying the defcndant, and will, therefore, be framed a(:cording to the circumstances of each case. SAME-DECREE OF COURT-GROUND FOR RESTRAINTING ORDER.-In the case of an infringement the final decree of a court of competent jurisdiction, restraining the validity of a patent, in the absence of collusion, furnishes a sufficient basis for an injunction or some form of a restraining or accounting order. SAME-PROOF IN ABSENCE OF DECREE.-lCIf there has been no decision a8 to the patent by a United States court, on the merits, the party is driven to show that his patent went into use undisputed for a sufficient time to raise a [Jl'imajacie case in his favor. "
TREAT, J., (orally.) The case of Kirby agaiust several de. fendants is before the court on a motion for a proviaional injunction. It is a patent case. It may not be known to eounsel, who appear here from another circuit, what the uniform rule is in this circuit as to applications for provisional injunctions. An injunction is the strong arm of equity. It should never be allowed to operate oppressively upon any one, but be used for the purpose of securing the rights of the complainant in the case pending the litigation, without unuecessarily injuring the other party. Were it otherwise, the injury resulting might be very serious. For instance, in the milling cases before us, Mr. Justice Miller allowed the defendants' mills to continue in operation on giving bonds of
KIRBY BUNG MANUE'a 00. V. WHITE.
$125,000 or $150,000, instead of granting an injunction in the first instance, which might have closed all the mills in the north-west. If he had stopped all of the mills by the issuance of an injunction simpliciter- it having been finally determined that the complainants' patent was invalid-there would have been a great wrong perpetrated upon the parties defendant. Hence, the rule is this,-and is the true rule in equity, as settled in this court by Justice Oatron, and existing up to the present hour, and I am authorized by Judge McOrary to say that he fully concurs,-that the function of a restraining order is to protect the plaintiff without unnecessarily oppressing or annoying the defendant. Whether restraining orders go out in patent cases, or in other cases, they are framed according to the circumstances of each case, to-wit: In one case there may be such circumstances as require an injunction simpliciter, but ordinarily a bond and order for accounting suffices, and sometimes simply an order for an accounting. Hence, the form of the order varies with the circumstances. I make these preliminary remarks so that parties may understand that an injunction simpliciter is not to be had for the asking. I am very well aware that the practice under the state laws is different, if it now is the same as years ago. Under the state practice there is but one form of a restraining order, to-wit: If an injunction is asked for provisionally, it must issue as an injunction simpliciter. This is not the rule in equity, and has never been the rule in the courts of this circuit. The course in these preliminary matters is to protect the complainant without unnecessarily injuring the defendant. There is a patent presented to the court for a bung-cutting machine. It is a combination patent, and a very commendable patent in itself. The various devices work automatically to effect the desired end. This patent has been before the circuit court of the United States for the district of Indiana, and a decree was ordered by Judge Drummond in favor of the complainant; and not being familiar with the facts of that case we take it for granted-as the law requires-that i. was a correct decree, upholding the validity of the patent.