was the first in the field, there would still remain the qnestion whether Lockwood ·had not put the invention into public use .morethan two years before Holton applied for his patent. Upon this record it is clear that he did; but the question is not one of the issues in this case, and therefore H would be unfair to take this record as. the final one upon the point. Ordered accordingly.
SCOTT and others v. EVANS.
(Oircuit Oourt, W. D. Penn811Ztw,nia. May 16,1882.)
PATENTS FOR INVENTIONS-DIFFERENT FORM-NoT AN INFRINGEMENT.
Where the plaintiff's patent was for an earthenware saucepan having a bottom dome-shaped, and of uniform thickness, and defendant's manufacture was an earthenware saucepan with corrugated ridges at the bottom, and not. of the same specific form as that of the plaintiff, there is no infringement.
SAME-STATE OF THE ART-RESTRICTION OF CLAIM.
Where the prior state of the art is such that the field of invention is eircumecribed, the invention of the patentee must be confined strictly to the description, of article as set forth in his claim.
Bakewell Kf.rr and George H. Ohristy, for complainants. M. D. Legett et 00., for respondent.
ACHESON, D. J. This suit is for the infringement of letters patenl No. 225,492, granted to the plaintiffs on March 16, 1880, for an improvement in earthenware saucepans. The patent has two claims, the second of which covers the entire saucepan as described in the specification. At the argument it was conceded that the defendants. have not infringed this claim. It therefore is not in contest, and need not be further mentioned. The first claim, which it is contended the defendants have is in these words: "(1) An earthenware saucepan, the bottom of which is rounded, and has a regular surface of or about an equal thickness throughout, substantially as and for the purpose described." The answer denies that there is any patentanle novelty in the plaintiffs' invention, and also denies infringement. It is certainly true that the plaintiffs were net the first to discover the advantages which earthenware vessels possess over metallic vessels for some kinds of cooking. Earthenware stewpans ofvari()us forms, as the proofs abundantly show, had been in common use long
· SCOTT V. EVANS.
anterior to the' plaintiffs' invention. In view of such prior use of earthenware vessels for culinary purposes, and the admitted fact that long before the plaintiffs' invention it was a common thing to make cast-iron kettles, the bottoms of which were rounded, and had a regular surface of or about an equal thickness throughout, and having lugs or projections for handles, and feet cast integral with the body of the kettle, it is a serious question whether the plaintiffs have done anything more than to substitute one well·known material for another in the production of a well-known article, which, as was held in Hotchkiss v. Greenwood, 11 How. 248, is not the subject of a patent. But upon this point I refrain from expressing any opinion, as, in my view of the case, it is not necessary to pass upon the validity of the first claim of the patent. The specification states that "the vessel being rounded and having a smooth, regular bottom of uniform, or nearly uniform, thickness, expands gradually and equally throughout, and is therefore able to withstand a greater degree of heat than earthenware vessels of an irregular shape." In correspondence with this description the drawing shows a vessel having smooth inner and outer surfaces, the curves of which are parallel with each other. Mr. Reese, the plaintiffs' expert witness, says: "The gist of this invention, as I understand it, is to change and modify the form and proportions, or relative thickness, of the different parts of the pan so as to produce an earthenware saucepan which is rounded, and has a smooth, regular bottom of uniform or nearly uniform thickness, which will be especially useful for slow cooking," etc. The word "smooth," indeed, does not occur in the claim, but, read in connection with the specification and the drawing, the claim, I think, must be held to be for an earthenware saucepan, the bottom of which is rounded and has throughout an equal thickness of material. There are, therefore, two elements of invention in the claim: F'irst,givinR to the bottom 6f thesancepan a rounded or dome-like shape; second, making such bottom of uniform thickness throughout. The defendant's earthenware sancepan is made under and in accordance with letters patent No. 238,883, dated March 15, 1881, granted to Henry Friedman. The bottom of this saucepan is rounded, but it is formed with fleetings or corrugations uPQIl its exterior surface, and is not of equal thickness. . The bottom is thicker on the ridges than in the grooves. It lacks, therefore, one of the essential elements of the. plaintiffs' invention, viz., uniformity of thickness·.
The prior state of the art was such that the field of invention here was quite circumscribed, and if the first claim of the plaintiffs' patent is to be sustained at all, it must be confined strictly to an earthenware saucepan possessing all the characteristics therein specified. As, therefore, the bottom of the defendant's saucepan is not of the same specific form as that of the plaintiffs, there is no infringement. Matthews v. Boston Machine Co. 21 O. G. 1350. Let a degree be drawn dismissing the plaintiffs' bill, with costs.
AMERICAN BALLAST LOG Co. v. COTTER.O
(OirCUIt Court, E. D. Pennsylvania.
January 30, 1882.)
Where suit is brought in a circuit court upon a patent, the validity of which has been sustained by judgments of other circuit courts, the respect due to such decisions, and the importance of consistency and uniformitv of decision in courts of co-ordinate jurisdiction where the same subject-mat'er lainvolved, require the court to adopt such' judgments.
SAME-IMPROVEMENT IN BALLASTING VESSELS.
Patent No. 126,938, for improvement in method of ballasting vessels, sustained, on the grounds that its patentability had been established by the judg. ment of other circuit courts, and that the evidence did not show prior USe.
Hearing on Pleadings and Proofs. Bill in equity to restrain infringl,3ment of patent No. 125;938, for improvement in method of ballasting vessels in port. The answer denied the patentability of the invention and alleged prior use. It appeared that complainants had brought suit upon their patent in other circuits, and that the patentability of the invention covered by their patent had been there sustained. J. Warren Coulston and Henry Baldwin, Jr., for complainants. Thomas J. Diehl, for respondent. BUTLER, D. J. Very little need be said in disposing of this case. Two only of the several grounds of defence set up in the answer were pressed on the argument-First, want of patentability and, second, anticipation. The first of points was passed upon, and decided in favor of the patent, by the circuit court of the eastern district of New York,
.Reported by Frank P. Prichard, Esq., of the Philadelphia bar.