LOCKWOOD V. CLEVELAND.
27 Pa. St. 479; Doe v. Litherberry, 4 McLean, 442; Lathrop v. Stuart, 5 McLean, 167; Grignon's Lessee v. Astor, 2 How. 339; Thompson v. Tolmie, 2 Pet. 165. 4. It is finally claimed that the prisoner is illegally held, because not confined under any proper warrant or mittimus. This is clearly unnecessary. The person having custody of the prisoner is bound to show his authority, and the order or sentence of a court of record is sufficient. Hurd, Habeas Corpus, bk. 2, § 8; People v. Nevins, 1 Hill, 154; State v. Heathman, Wright, 691. This point was also ruled by the late Judge LONGYEAR in the unreported case of In re Osterhaus. The application must be denied.
See U. S. v. Field. 16 FED. 58, and note, 60.
778, and note, 779; U. S. v.Petit, 11
(Circuit Oourt, D. New Jer,ey.
PA.'l'ENTS FOR INVENTIONS-INDIA-RUBBED ERASERS-LooKWOOD ARD HOLTON P .ATENTS, NOB.. 167,445 .AND 233,511.
As, upon examination of the evidence of priority in this case, it appears that Rhodes Lockwood was the original and first inventor or discoverer of the improvement in India-rubber erasers, as described in patent No. 167,445, granted to him September 7, 1875, and that Francis Henry Holton was also the origi. nal, but not the first, inventor or discoverer of such improvement, and that said Holton was guilty of laches in not filing his application for patent until two years after the invention had been in public nse and on sale, patent No. 167,445 is sustained, and the Holton patent, No. 233,511, issued to Orestes Cleveland, as assignee, October 19, 1880, declared void.
On Bill, etc. Browne & Witter, for complainant. Bedle, Muirheid & McGee, for defendants. NIXON, J. On the twenty-fourth day of June, 1875, Rhodes Lockwood made application for letters patent of the United States for "improvement in India-rubber erase:s," and on the seventh of September following letters patent No. were duly issued to him. On the ninth of June, 1877, Francis Henry Holton, assignor to Orestes Cleveland, also filed his application for letters patent for the same invention. The commissioner of patents declared an interference, and on November 5, 1878, gave notice to the parties interested, as required by section 4904 of the Revised Statutes, and directed the primary examiner to determine the question of the priority of the invention. TestiDony was duly taken, and on December 12, 1879, the examiner "tdjudged Holton to be the first inventor of the improvement. On an appeal, the board of examiners in chief reversed the decision of the
primary examiner, February24, 1880, and held that Lockwood was entitled to the. honor of the invention. The commissioner of patents, -the last judgment being appealed from,-on May 3, 1880, decided that Holton was the original inventor, but refused to grant the letters applied for, on the ground that the invention hadbet>n in public use more than two years prior to his application. An appeal being taken to the supreme court of the District of Columbia, this last decision was reversed. On September 28, 1880, the court held that Holton was entitled to his letters patent. They were accordingly issued to Orestes Cleveland, as his assignee, October 19, 1880, and numbered 233,511. This bill was filed by Lockwood on November 2d following, to have the last-recited letters patent declared void. Cleveland has answered, denying all the material allegations of the bill of complaint, setting up that Hulton was the original and first inventor of the improvement claimed in the two patents, and praying that the letters patent issued to Lockwood, September 7, 1875, may be adjudged and declared invalid and void. With the answer, he also filed a cross-bill, asking that the complainant's patent might be held void, and that he might be restrained from bringing an action in any court for an infringement of the same. The cross-bill was subsequently dismissed by the court, upon the ground that section 4918 of the Revised Statutes afforded all the relief in the original suit which the defendant could possibly have in the cross-suit. See Lockwood v. Cleaveland, 6 FED. REP. 72l. The case has been heard upon bill, answer, and proof, and presents two questions for consideration: (1) Whether Lockwoqd, or Holton, the assignor of the defendant Cleveland, was the prior inventol' of the improvement claimed in the letters patent; and (2) whether there was such prior use of the invention as to render the patent of the . first inventor v o i d . . An examination of the specifications and claims of the two patents shows that they are for the same invention, to-wit, a rubber eraser, as a new article of manufacture, having soft-finished erasive surfaces. The objection to the rubber ordinarily in use before the spring of 1875, for erasive purposes, was that the outer surface was covered with a glaze, produced in the process of vulcanization, and which hindered the rubber from taking hold of and removing penoil marks from paper without smirching the latter. In order to prepare the rubber for immediate use as an eraser, this glaze or crust was fregot rid of by paring off the surface of the rubber with a knife or other sharp instrument. The complainant says that some time before 1870 he learned that the surface of vulcanized rubber became soft and velvety by longcontinned drumming, and it at once occurred to him that this was the proper mode of preparing it for erasive purposes. But although he made many experiments, chiefly in the mixture of different ingredients with varying proportions to discover the best combination for
LOCKWOOD 'V. CLEVELAND.
erasive rubber, not much was aCl)omplished by him before the spring of 1875, when he began to prepare for the marketatid to take orders for the manufacture of rubber erasers, the edges and surfaces of which had a soft, velvet finish, from two or three days' tumbling in a drum. He had been dissatisfied with his ,experiments, but was now so well pleased with his compounds that he filed his application for letters patent June 24, 1875, and obtained them on September 7th following. Holton, on the other hand, claims that in March, 1872, he acci. dently stumbled upon the discovery that protracted tumbling canizeu rubber would remove the crust from the surface and prl3pare the rubber for use in erasing pencil marks. He states that in pre· paring rubber for the Eagle Pencil Company he put some samvles in the drum to be finished, and, forgetting them, they remained there and underwent the tumbling process all day. When he took the pieces from the drum in the evening he discovered that not only the corners were worn off, but that the glaze had been taken from the 'surface, which glaze of crust had always been considered an objection til new rubber. He tried them in removing pencil marks froni paper, and found that they took hold of the paper at once, and removed· the marks' without blackening the surface. " After a careful examination of the testimony, I am inclined to regard both Lockwood and Holton as original and independent inventors or discoverers of the fact on which the patents are founded. The former, however, has been more diligent. He followed up his discovery with many experiments respecting the mixture ofthe-compound from which the material was to be obtained, and when he reached satisfactory results, promptly secured his patent. Holton, indeed, experimented, and gave the products of said experiments to his friends for trial and approval; but he made no application for It patent until June, 1877,-a long time after the complainant had otttained his patent, and had established the value of the patented 3r· ticle by creating a demand for it in the public market. I must hold, in this case, that Lockwood was the original and first inventor or discoverer of the improvement in India-rubber erasers, and that Holton was also the original, but not the first, inventor or discoverer; and that, even if he was, be has lost the right to claim the benefits thereof by laches in filing his application for the patent more than two years after the invention had been in public use or on sale in the country. Let a decree be entered adjudging and declaring the letters patent No. 233,511, issued to Francis H. Holton, void, and restraining the defendant, and all claiming any interest in said letters patent under him, from instituting or prosecuting any suit at law or in equity for any alleged infringement of said patent, with costs to the complainant.
and others v.
(Oircuit Oou1't, N. D. illinois.
October 1, 1883.)
Where a combination is claimed by a patentee, it is a familiar principle that all the parts of the combination must be used by the defendant in order to constitute an infringement.
Following the above-stated principle, it was held that the reissue of letters patent No. 9,942, dated November 22,1881, for a new device for packing stickcandy in packages, was not infringed by the defendants, since they did not use part of the combination of the patentee, which figures in all of his claims as an essential element of the patent.
In Equity. John G. Elliott, for complainants. West et Bond, for defendants. DRUMMOND, J. The bill in this case alleges a violation by the defendantof the reissued patent of Warren B. Howe, dated November 22, 1881, No. 9,942., The original patent was dated August 3, 1880, No. 230,778. It is claimed by the defense that the reissued patent is invalid, because the reissue is not for the same supposed invention as the original, and because it does not distinguish the old from the new; and as it is also claimed that the subject-matter, 0.8 well of th.e original as of the reissue, is not patentable, it is well to understand the nature of the original and of the rQissue. . The patentee claims that he has invented a new device for p(l,cking stick·candy in bundles or packages in a convenient form for placing them in tubs, barrels, or boxes, for shipment from the factory to the trade. A description of the invention may be stated in this form; If we take a rectangular block of the proper length and width, as compared with the sticks of candy to be packed, and cut out of this block an angular or V-shaped recess in the form of a wedge, of the proper size to make-the package, and then place in this recess a paper of sufficient stiffness to retain its shape when the package is made up, and place the sticks of candy with the ends evened in the recess over the paper, so as to fill it, and then fold the paper around the candy to form a. neat and compact package in outline, we shall have a reasonably correct idea of the result claimed by the patentee. The package thus made becomes, like the recess, wedge-shaped, and if we suppose it to occupy its original position in the recess, it becomes, the patentee says, "an inverted pyramid," having inclined sides and vertical "ends." This last cannot be considered a statement strictly accmate. He describes the manner in which the wrapper should be folded around the candy, and the package removed from the recess in to complete the folding, although, from the language already cited flOm the original, it would seem that t,here may be a doubt whether the manner in which the wrapper is folded constitutes an