J. The complainants are owners of certain letters
patent, numbered 73,684, and dated January 21, 1868, issued to John Henry Wood, for "improvements on wagons for unloading coal," and have brought their suit against the defendant for infringing on the same. The defendant, in his answer, denies (1) the novelty and usefulness of the patent, and (2) the alleged infringement. The complainant's patent is for a mechanism to accomplish a certain result, to-wit: the unloading of coal, or other material, from wagons. The inventor, in his specifications, calls it an improvement upon old devices for the same object, and he is entitled to have the benefit of all original devices or combinations that accomplish new and better results than existing organizations, but only for such. Whatever he has incorporated into his patent from the common property of the public, at the date of his invention, still belongs to the public. Railway Co. v. Sayles, 7 Otto, (97 U. S.) 554. The first inquiry, then, will be, what is claimed as new in the complainant's patent? The patentee says, in the schedules, that the nature of his invention consists in the funnel-shaped 'mouth, attached to the cart or wagon, in combination with the chute and valve. He claims (1) the attachment of a funnel-shaped or inclined mouth, D, of any material, to the rear or side of a cart or wagon, as herein described, and for the purpose set forth; (2) the valve or gate, E, at the end of the mouth, D, or in the chute or tube, G, when combined as herein described and for the purpose set forth; (3) the hinges or sliding chutes or tubes, H. when attached to an open mouth, or the end or side of a. (lart or wagon, for the purpose herein set forth. He is presumed to know what he invented, and he tells us with sufficient clearness. He must stand here upon his elaims; for the thing patented is what the inventor claims, and not what he shows. If he states these too narrowly, the law authorizes him to surrender the patent, and re-issue the same with ampler statements; but, until this is done, the -courts cannot give him more than he asks for. C01tSe If Blood v. Johnson, Black fi Co. 16 Off. Gaz. 719. He says the patent
DELAWARE COAL & ICE 00. V. PACKER.
is for a combination. Looking for the combination, we find three elements: (1) a funnel-shaped or inclined mouth, attached to the rear or side of the wagon; (2) a valve, at the end of the mouth or in the chute; and (3) hinged or sliding chutes, when attached to an open mouth, or to the side of the cart or wagon. It was not claimed on the argument that either of these elements is new. The first; standing alone, is clearly anticipated by the English letters patent, No. 2,909, and dated December 21, 1859, granted to Samuel Plimpsol, for "facilitating the unloading and transferring from railway wagons into carts, etc., coal and other matters, with which they may be loaded." The second is found in the letters patent, No. 14,301, issued to William Bell, on the twentyninth of February, 1856, where it is called a slide, and is used for the same purpose, and performs the same functions, as in the complainant's patent. Indeed, it may be observed that, unless a very limited con· struction is given to the patent of the complainaut, it is difficult to see how it can be allowed to stand at all, in view of the quite similar instrumentalities patented by Bell to accomplish the same results. He states that he has invented a new and improved method of depositing anthracite and bituminous coal in cellars, from carts and other vehicles, through scuttles in sidewalks, and that it consists in providing a conductor, and attaching the same to a hole in the bottom of a cart or other vehicle, of sufficient diameter to allow coal to pass through the same, through the coal scuttle and sidewalk, without dropping it upon the sidewalk, as before practiced, to the great annoyance of pedestrians, etc., and he claims, "a bed-plate, (attached to the under side of the tail end of the wagon,) conductor and slide, with the tube attachments, in connection with the hole in the cart or the vehicle, as set forth." The third claim is for hinged or sliding chutes, when attached to an open mouth, or to the end or side of the cart or wagon. The proof is that hinged chutes, attached to an open mouth, had been used for several years anterior to the date of the application for the patent, at the trestle works of the Bel-
videre Railroad Company, at or near the eastern part of the city of Trenton, for the purpose of unloading coal from rail· way cars into the holds of vessels on the canal, and hence, standing alone, it must be pronounced void for embracing too much. Nor does the patentee claim that these elements, in themselves, are new, as his cross-examination abundantly shows. I find the following questions and answers on page 43 of his testimony, (Complainant's Rec., fol. 1110:) Question. "Do you claim, as an original invention of yours, a telescopic tubing or chutes, independent of any connection such chutes. or tubes may have with the mouth-piece?" Answer. "I only claim them in combination with a mouth.piece or spout, or attached to a cart or wagon." Q. "Do you claim, as an invention of yours, the valve or gate, except when the same is used in combination with a chute, or tube, and the mouth.piece?" A. "I do not." And at folio 1140: Q. "Do you claim, as your invention, the mechanical contrivance of tubes or chutes, attached to an open mouth or mouth-piece, irrespective of the connection or non-connection of the mouth-piece with the cart or wagon." A. "I claim the whole combination for the purpose of unloading coal or other material." Q. "Combination composed of what elements?" A. "Composed of one or more extension chutes or tubes, attached to the mouth-piece or spout on a wagon or cart." Q. "Do each of these elements necessarily enter into and form a. part of, and, when aggregated, complete your invention?" .4.. "They do, in connection with the gate or valve." Q. "Do you claim that anyone of these elements, separated from the others, is novel?" A. "I do not think they are, but only in combination." Q. "I understand you 'to claim that the combination of them all is novel; am I correct?" A. "You are." Allowing the patentee, then, to explain his invention-and turning to the patent we find three separate claims for the three constituents of the combination, which he confesses are not new, but no claim for the combination itself-I know of
DELA.WARE ClOA.L .. ICE 00. V. PA.OKER.
no principle of law which permits a patent thus issued to stand. Nothing here can be left to inference. It is the office of the claims of .a patent to reveal to the world what the characteristics of the invention are for which' the patentee desires protection. If he fails to state these fully and correctly, he may remedy the omission by a surrender and reissue, but until then the court has no power to give him relief against infringers. I do not wish to be understood as affirming that if the inventor had formulated a claim for the combination to which he refers in his' schedule that such a claim would have been valid as against the older Bell patent, before spoken of. It is not necessary to decide the question, in view of the fact that no claim of that sort has been made. Judging of this case simply from the record, and without stepping outside to ascertain the state of the art at the time of the application for the complainant's patent, I should say that the most valuable part of the invention, if not the only novel pal't, was the use of sliding chutes in the delivery of coal from wagons or other vehicles. If the third claim had been for sliding chutes alone, and if a combination claim had also been put in with only these as one of the constituents of the combination, it would have been a great improvement upon the Bell combination, and would clearly have anticipated the lake patent, No. 137,371, for "improvements in extension troughs for wagons," under which the defendant justifies the alleged infringement, in so far, at least, as that patent embraced the use of sliding chutes. And this seems to have been the view of the patentee himself, for in his examination in chief, (Complainant's Ree. p. 5, fo1. 90,) in response to the inquiry as to what he claimed as the principal feature of his invention, he replied: "The third claim of my patent, which is for hinged or sliding <lhutes or tubes, marked H in the drawing, fig. 1, when attached to an open mouth, or to the end or side of a cart Of wagon, for the purpose of unloading coal or other material from a cart or wagon directly into a cellar or vault." It appears, in the evidence, that the inventor employed a
patent attorney to put his invention into legal shape, to whom was entrusted the duty of drawing the claims. It is unfortunate that the person thus retained did not more fully get possession of the views of the inventor, and more correctly embody them in the claims of the patent. I can give no construction to them, as they have been formulated, which will make the defendant liable as an infringer, and the bill of complaint must be dismissed.
n. N6'l(J Jersey.
April 20, 1880.)
PA.TENT-WANT OF NOVELTy-EsTOPPEL.-The issuing of a patent does not estop the patentee from proving that the invention claimed therein is not novel, in the absence of bad faith in procuring such patent. B.AJm-INJ1JNCTION REFUSED-SECURITY REQUIRED.-In vie\v of the fact that the complainant does not use his patent as a monopoly, but gmnh licenses to others to use it, and in view of the further fact that there is Borne doubt on the question of prior use of the alleged improvements, an injunction is withheld in this case, if the defendant will give security for the payment of all the profits he may derive from the use of the invention and for the damages its use may cause the complainant, provided that the patent should be sustained and an accounting ordered.
Motion for preliminary injunction. Gea. Harding, for complainant. A. Q. Keasuey, for defendant. NIXON, J. This is an application for an injunction, asking the court to restrain the defendant from infringing, pendente lite, certain letters patent, numbered 218,220, issued to John Bigelow, August 5, 1879, for improvements in sweat leathers for hats and caps. The patent is only a few months old, and there has been no adjudication of the question of its validity, bat the complainant urges that there has been such a want of good faith in the conduct of the defendant that he is justified, at this stage of the proceedings, in applying to the court for a preliminary interference. It appears, from the bill of complaint and the accompany-
GREENWOOD V. BRACHER.
ing affidavits, that on or about the twenty-ninth of January, 1879, one John Bigelow made application to the commis. sioner of patents for letters patent for certain improvements in sweat-leathers for hats and caps, and that the patent was refused, because the subject-matter had already been incorporated in two several letters patent granted to Thomas W. Bracher, the defendant in this suit-one dated July 23, 1878, and numbered 206,296, and the other dated December 3, 1878, and numbered 210,489; that afterwards, to-wit, on the eighteenth of February, 1879, the commissioner declared an interference between the parties in order to determine the question of priority of invention,-the SUbject-matter involved in the interference being the claim of the first recited Bracher patent and the first claim of the Bigelow application, and the claim of the second recited Bracher patent and the second claim of the said Bigelow application,-the claims respectively being identical; that the usual proceedings were had thereon, and after testimony and argument the examiner of interferences rendered his opinion on the sixth of June following, awarding the priority ,to Bigelow; that no appeal being taken .therefrom, letters patent for the invention were issued to Bigelow on the fifth of August, 1879, and numbered 218,220, and that subsequently Bigelow assigned the same to the complainant as trustee of the Blanchard Overseam Machine Company, of Philadelphia. The bill of complaint alleges that notwithstanding such interference and adj udication of priority of invention to Bigelow, and such conclusion of the right of the parties by the proper officer of the government, the defendant still asserts that his letters patent are valid, as against the complainant, and that he is making, using and vending patented improvements, or sweatleathers, substantially the same in construction and operation as are mentioned and described in the said letters patent of . the complainant. If the only quostion in the case was the priority of the invention, as between these parties, I should not hesitate to grant the injunction forthwith to the complainant. The decree of the patent office on the interference doubtless con-