FmDERAL
V.
(Circuit Oourt. W. D. Pennsylvania. March 25,1882.) 1. PATENTS FOR OF CLAIMS.
Where the claim made in the original patent for a siphon pump was for a specinc device described in the specifications and drawings, but in the reissue disappears from the patents, and substituted therefor is a sweeping claim covering every form of water ejectorS,although the claim made in the reissue was originally allowable when the original patent was granted, after the lapse of nine years a reissue e';ll.bodying so comprehensive a.claim is invalid. 2. SAME-UNREASONABLlj: DELAY.
A delay of nine years is unreasonable on an application fora reissue wherein. the original claim is enlarged.
InEquity. Bakewell d: Kerr, for complainants. M. D. Connelly, for defendants. ACHESON, D. J. This suit is upon reissued letters patent No. 9,199, issued to Hugh ColI May 18, 1880, the bill charging infringement and praying for an injunction, etc. The original letters patent, No. 110,205, were issued to Coll 20, 1870. The invention, as the original and reissue both' recite, consists in improvements to a siphon pump patented to said Coll June 8, 1869. To the proper understanding of the case, therefore, a brief explanation of CoIl's earlier letters patent, No. 90,930, dated June 8, 1869, seems necessary. They relate to the constrnction of a steam siphon pump, or water elevator, having outer and inner pear-shaped hollow heads, so that a jet or current of steam shall elevate water and discharge it through and from either or both the heads. These heads, respectively" have one end tapered down to the formofa tube or pipe, thus forming inner and outer discharge pipes, the inner one being much smaller than the outer one. A steam-injection pipe is screwed into or cast on the outer or rear end of the outer head, and extends some distance into the inner head, which latter, at its rear end, is screwed on or otherwise fastened to or cast on the injection pipe. Back of the discharging end of the steam-injection pipe inlets or openings are made in the inner head. The steam passing out of the injection pipe into the inner discharge pipe, and thence into or through the outer discharge pipe, produces a vacuum in the heads, and the water coming up the induction pipe to fill the vacuum is caught by the flow of steam and forced out of the discharge pipes, and a regular current is established, which is kept up by the continual
SHERIFF V. FULTON.
137
pressure of the steam. By closing up the annular space between the two discharge pipes the water may be discharged entirely through the inner discharge pipe, being slightly warmed by this method. The claim in this patent is exclusively for the combination of the inner and outer pear-shaped heads with'the injection pipe. . The invention secured by the letters patent of December 20, lS70, (No. 110,205,) is therein dedared to be an improvement on ColI's said patented siphon pump, and to consist "in modifications of' fOl'm and construction," whereby it is adapted to new uses, or made to accomplish old results in a better manner. The outer head being {)f the uaaal construction and having the usual water-inlet opening; and: an opening for the insertion steam-injection pipe"the modification is stated to consist in cutting off the base or hluntenib of the inner pear-shaped head at or near the broadest part, and connecting this head, in 'casting, to the outer head bymeansc:of'li'adial arms. In the specifieation the patentee states the advantage secured to be as follows : ' "The inner head, d, having a large unobstructed opening at devised more particularly for use in pumping or the water out of tan-vats, etc. As .some tan-bark is necessarily carried· up with the water, the holes or passages for the water are apt to become clo,gged unless ample room be left for the flow of bot.h, I thus adapt the double bead to the uses described:
The first claim of this patent (which is the principal and only material one) is in these words: .. The inner head, d, open at its rear end so as to leave an unobstructed opening around the steam-injection pipe for the passage of such pieces of solid matter as may be br<mght up by the water, such i.nner head, d, being nected to the outer head, a, by means of radial arms, a, all arrangedsubstantially as described,"
I
The application for the reissue (No. 9,199) was filed March 13, 1880, and is dated May 18, 1880. The specification of this reissue, after describing the invention and its advantages substantially as the original specification (No. 110,205) did, and stating that "this ejector operates on the same principle as my ejector patented June 8; 1$69; does," proceeds to set 'fortil. other advantages lleithertrientioned· ilor hinted at in. the original specification, (No. 110,205;) :.. that the jet of stream is protected and surrounded by theirlnerhead;'which acts as a breakwater or daim to break the' force' th'e inflowing current, and hence does notcolldense so rapidly as'irii the old form of ejectors, whtl'e it came directly in contact with the whole
138
FEDERAL REPORTER.
volume and. unbroken force of inflowing water in the outer head" and the force of the steam-jet ,is thoreby preserved ; that the forward end of the'outer chamber is closed, and the entire discharge is through the inner head, .andthat the rear opening of the inner head extends over the induction opening, and a.::ts as a breakwater, to deflect and tw'n the inflowrng stream of water to the back part ,of the outer head and break its force. The reissue (No. 9,199) has but Olie claim, which is as follows: IIA water, ejector,provided with an innE.!' head or shell, extending backward over the water-induction opining, aond arranged with relation to the jetpipe 80 as to protect the steam-jet f,'om the direct impact of the inflowing current of water, the inner end of said heM being provided with a large unobstructed opening, through which aI the water passes to the (tischarge outlet of the ejector, substantially as and fnT tho p,urp08e described."
Upon 8 comparison of the original patent of December 20,1870, with the reissue it is manifest that the claim, made in the reissue is 8 great expansion of the original. Cleady the original patent did not ,cover and could not rightfully cover the inner head itself, fer CoIl's ea;rlierpatent ahowed an Inner head; :which,.moreover, sur· rounded and protected the steam-jet from the direct impaot of the inflowint:fcurrent of water, and operated to retard the condensation-of the steam. The specification efthe'patent of 1870 declares that iuvention to consist "in modification of form and const1'llction"of CoIl's siphon pump theretofore patented., These modifications are distinctly set forth and explained in the body of the specification, and are specifically, clahned. In lieu of the IDlets at the rear end of the inner head, the blunt end of this head is cut off, and at its re,ar end an unobstructed opening is left around the steam.injection pipe for the passage of such pieces of solid matter as may be brought up with the water. It is an essential feature of the device that the steam.injection pipe. shall be. inserted through. the usual opening in the outer head into the inner head. ColI hiD1 solf, testifying in this case in behalf of the plaintiffs, states that the difference between his patents of 1869 and 1870 is "a difference of constrootion only," and that the diffarence is in the large unobstructed opening in the rear of the innerhflad, and the manner in which the head is secured to the space the outer hea.d; an<li putting this nozzle in and inner and outer head.." All this plainly appears, both by the specification, and thedJ:8wing, and is Undoubtedly the claim is, for the specip.c dl:lvice described.
139
But we sea.rch the reissue in vain for such litnited claim. It has disappeared Irom the patent, and substituted therefor is a sweeping claim covering every form of water ejectors having an inner head or shell open at its rear end, and (within the limitations mentioned) so arranged with relation to the jet-pipe as to protect the steam-jet from the direct impact of the inflowing current of water. How comprehensive this claim is (or is supposed to be) can be best illustrated by reference to the siphon pump made or sold by the defendants, and which the plaintiffs contend infringes the reissued patent. The defendants' siphon pump (which it is plain does not embody the specific device claimed in the patent of 1870) has a permanently-fitted, bellmouthed, open-ended, inner head or shell, which extends backward across the water-induction opening, but the steam-injection pipe does not enter the outer head at all. The steam-nozzle, which is screwed into the end of the outer head, but does not extend into the head, has several apertures, through all of which steam-jets enter the outer head. The steam-nozzle is opposite the mouth of the inner head, but between the latter and the steam openings there is an open space. These features (with other peculiarities) are found in .letters patent dated February 2, 1875, granted to Louis B. Fulton and Julius ger. Now it may well be, that the claim made in the reissue was originally allowable when the patent' of December 20, 1870, was granted; but CoIl, having then limited his claim to a specifio device, could he, emafter the lapse of more than nine years, procure a bodying a. claim so enlarged and comprehensive? I am of opinion that he could not. The delay was altogether unreasonable, and the reissue, therefore, without authority of law. The recent decisions of the supreme court in the cases of Miller 'Y. Bridgeport Brass 00. 21 O. G. 201, and James v. Oampbell, ld. 337, leave the question no longer an open one. An acquiescence by the patentee and his assignees, for so long a. period in the terms of the patent as originally granted, created an equitable estoppel in favor :of the public. Oorn. &ined Patents Can ,Co. v. Lloyd, 21 O. G. 713; [8. C. 11 FED. REP. 149.J It was, indeed, urged in justification of the reissue that the first claim of the original patent was inoperative and invalid because it included as a constituent element with the inner head the radial arms, by which the head is held in place; th¢se it is said, being a mere incident of convenience and having no functiona.l relati6n whatever to the inner head or any other part of the organism in securing the objects to be attained, and the claim,
140
P:EDERAL REPORTER.
therefore, being bad under the doctrine of aggregation as enunciated in Hailes v. Van Wormer, 20 Wall. 353. If this were so, however, it by no means follows that upon a surrender at so late a day, to correct such mistake, the scope of the patent could be so enlarged as was here attempted. But the original claim was not obnoxious to the objection suggested. The radial arms, or their equivalent, seem essential to secure all the objects contemplated. At any rate, the effect of including them was to limit the claim, not destroy it. Unquestionably, the original claim was good for the specific device described. Having re'ached the conclusion that the reissue Bued on is invalid, the plaintiff's case ther.efore failing, it is, of course, unnecessary to consider the other defences relied on. Let a decree' be draiill dismissing the bill, with costs.
SEARLS tI.
BOUTON and others." New York. March 18,1882.) IN WHIP-SOCKETS-VALIDITY OF.
(Circuit 1. LETTERS
(JOU1't, S. D.
Reissue No..9,297, granted to Anson Searls for a centrally-perforated rubber disk fitting loosely into an inner groove near the top of a whip-socket, and retained in place by the expansive force of the rubher, and letters patent No. 150,195, granted John M. Underwood for an improvement thereon, by 'which such rubber disk could be made thick enough to well retain its place in the socket; and at the same time yielding enough toperlllit ready insertion of the whip, by cutting away portions of it at intervals between the outer edge and tl!<clperforation, are good and valid, and not void for want of novelty. 2. . SAME-DEFENCEs-PRIOR USE.
Proof prior and use of an invention C8nn?t prevail where.the answer merely alleges prior knowledge, and does not set forth where' and by, whOm the'invention had been used, as reqUired by the statute. ' TO MANUFACTURE.
3.
Where defendants attempt to justify under a, personal license tp manufacarticles ,sold ture, the burden of proof is upon them, to lllake it clear that by theni, which wtJuld' otherw!se be an infringement, weremade,uJ?der and pursuant to the license; ot;beiwisetheymust be adjudged to have'
In Equity·. On ,J. P. Fitch, for plaip.tiff.
'N. Dav.enpor,t, for defendants., WHEELER, D. J. This suit 'brought uponreisl'lued letters Patent No. 9,297, to the orator, for in Whip-sookets, and , "
lfHeported byS Nelsou,White, Esq" of the New York bar.
SEARLS V. BOUTON.
141
upon original letters patent No. 150,195, to John M. Underwood, assignor to the orator, also for an improvement in whip-sockets. The defences set up in the answer'are,to the former, that it was noli properly 'reissued for the same invention described in the original; that the invention had been previously patented in several prior patents in this country; that the invention was previously "well known" to, among others, Charles A. Flesche, John Perpenti, and E. E. Stevens, without saying that it had been used by any person; and thah defendants have not infringed; and to the latter the defence of want of novelty. Although this objection to the reissue is set up in the answer, the original patent is not put in evidence at all, and there ill nothing properly before the court by which to determine whether the original and the reissue are for the same invention or not. As the reissue was granted by the proper officer, the presumption is that it was properly granted, and there is nothing in the case to overcome that presumption. The patent is for a centrally-perforated rubber disk fitting loosely into an inner groove near the top of a whip-socket to steady the whip, and retained there by its expansive force, ing its outer edge within the walls of the groove, and permitting the insertion and withdrawal of the whip by its elasticity. The evidence shows that such disks had been for some time known and used for this purpose by being placed in the whip-socket near the top, and bei:Q.g clamped or held there by the outer edge placed firmly between the body and top of the socket, or between a shoulderin the socket and a closely-fitting ring, and by other similar arrangements for holding the outer edge tightly. These were patented in the prior patents set up in the answer. In the use of disks so fastened the insertion and withdrawal of the whip would bend the inner part up aIiddown, and cause it to break from the outer part at the edge of where it was firmly held.' The inventicn of the orator obviated this breaking largely by allo'wing the outer edge of the d,isk to roll in the groove with the movement up and down of the interior. This, kind of disk was not described in any of the prior patents. It could be used.. in a socket found in one piece in that part ; and the patent describes making its outer edge of harder rubber 'than its inner edge, to make it'more secure ihits place, and still permit the insertion and withdrawal df'the whip. There are three claims: the first is of !Ii whip.socket formed there in one piece, with a groove, and such a disk inserted b it ; the second is for the combination of such a disk so held in place with 8i whip-socket; and the third is for such a combination, with a 'disk having its outer edge of harder rubber. The second claim seems to cover the "'hole
142
nDEBAL BEPOBTlllB.
that the' patent can be oonstrued to cover. The whip-socket, with. out the loosely-fitting disk in the groove, would not be new; and such a. fitting disk in a whip-socket would include one with a harder edge. This combination is not shown in any of the patents. The patents are all for comparatively small differences; and this difference is small, but it exists, and is large enough to be patented. allegation in the answer as to knowledge, without an allegation of use, seems to have been made intentionally, in view of the evidence to support it, rather than inadvertently. The proof, at most, shows, that, but two sockets were made showing this invention, and ,that these were laid away with other specimens without the rubber disks being in the grooves. Flesche, who made them, afterwards took a patent, which is one of those set up as anticipations, without this feature, and no use of them otherwise is shown. One of them, defendant's Exhibit L, is in evidence, with a rubber disk made since in the groove. As so put together this exhibit does seem to show .all the elements of this patent as construed. The evidence was seasonably objected to for the reason of the lack in the answer, and the question is whether such an answer, supported by proof, will defeat & patent. The section of the statute relating to the granting of patents provides .that they may be granted if the in:vention was not known or used by them, as if· either knowledge or use would prevent. Rev. St. § 4886. The section relating to defences,and the mode of making them, provides for notice stating not, only the names and resi4ences of the persons alleged to have had prior knowledge of the iJ?ventions, but adds, lJand where and by whom it had been used." In Gayler v. Wilder, 10 How. 477, it was held that these statutes were to be construed together, and with others on the same subject, and that prior knowledge of an invention not accessible. to the public would not defeat a patent. The knowledge might be acquired in a foreign country, and the invention not be patented or described in a printed publication there, and such knowledge would not prevent or defeat a patent by another in tbiscountry. The answer alleges knowledge by persons of New Haven, Connecticut, but not knowledge a.t New Haven or any other place. The proof goes beyond this, and shows such, knowledge as there was. to have been at New Haven; but affirmative defences, and this defence, as provided by the statute, must be alleged as well as proved, and propf objectEldto for want of allegation will not help out the defence. U. S. 214. This defence cannot prevail as made.
143
The defence of non-infringement rests upon a. license granted by the orator to John O. Merria'mand Edwin Chamberlain "to manufacture" "at their shop in Troy, N. Y., and no other place or not transferable, and places." This appears to be a a license to make only. Merriam and Chamberlain had a shop in Troy, and constituted a firm.· Merriam seems to have sold out to a new firm composed of Edwin Chamberlain and Perry D. Randall. Edwin Chamberlain has since died, and Edward Chamberlain has. succeeded him in the firm of Chamberlain & Randall. Merriam appears to have ordered material, or to have permitted Chamberlain & Randall to order them in his name, for use in making whip-sockets at that shop, but he does not appear to have been engaged himself in the manufacture. Sockets made under and pursuant to the license would be free to the trade, but sockets merely dealt in by the licensees would not thereby be made free. The defendants have not m.ade it clear that the sockets they have sold, which would otherwise be an infringement, were made under and pursuant to the license. Therefore, they must be adj udgedto have infringed. The extent of the infringement, unlawfully done, must, of course. go to the master for determination. There was some difficulty in having these rubber disks thick enough to well retain their places in the sockets and at the same time yielding enough to permit ready insertion and withdrawal of different-sized whips. Underwood invented cutting away portions of the disk at intervalS, around between the outer edge and the perforation, making them more yielding in the interior, whereby this difficulty was, in some measure at least, overcome. His patent is for this improvement. The evidence of anticipatory devices shows nothing like this. As the case is made up and presented. the patents must both be adjudged valid, and to be infringed. Let a decree be entered for the orator for an injunction and an account, according to the prayer of the bill, with costs.
144:
FEDEBAL BEPOBTBB.
SIMPSON V. DAVIS.
(Circuit Court, E. D. New York. 1. PATENTS FOR INVENTIONS-NEW DESIGNS.
March 18,1882.)
A claim is not defeated merely because scrolls and ornamentation similar in effect to the scrolls and ornamentation described have before been employed, if a new idea is embodied in the method of their an-angement. 2. SAME-ORIGINAL SHAPE OR CONFIGURATION.
The statute permits a patent for any new, useful, and original shape or configuration of any manufacture ; and where the arrangement of ornament and shape is new, useful, and original the invention is patentable.
Edwin H. Brown, for plaintiff. N. H. Clement, for defendant. BENEDICT, D. J. This action is brought upon a patent owned by the plaintiff, which, it is alleged, has been infringed by the defendant. The patent is for design No. 12,026, and was issued November 9, 1880,$0 Henry Textor. The specification states that Henry Textor is the originator and producer of a new and improved design for newel posts, the character of which is illustrated by a drawing accompanied by a description. There are 11 claims. Only the fifth, the sixth, and the eleventh are relied on here. It is not disputed that the defendant is engaged in manufacturing newel posts, similar in ornament, shape, and configuration to the newel posts described in the plaintiff's patent. The similarity is so great that a photograph of the plaintiff's newel post is admitted to correctly represent the newel post made by defendant. No question in regard to the infringement is therefore raised, but'it is contended that the patent is void for want of novelty as well as of patentability in the subjectmatter. The fifth claim of the patent is for "a design for the upper portion of a newel post, consisting of the scrolled ornaments, l, and the bead, In, the roses or rosettes, n, upon each side, as specified." The statute (Rev. St. § 4929) authorizes a patent for any new and original ornament to be cast or otherwise placed on any article of manufacture. The SUbject-matter of the claim under consideration is for an ornament, not for a newel post or a part of a newel post having a new and original shape or configuration, but for an ornament intended to be placed upon a newel post. The claim does not seek to secure the scroll by itself, nor the bead by itself, nor the roses by themselves. Each of these is an ornament, but neither of them is new. The claim, therefore, seeks to cover these forms associated together in the
