HUNDY V. KENDALL.
mento The recent decisions of the supreme court are emphatic in demanding for a patentable invention more than the novelty and utility which may be expected to result from the special knowledge and intelligent skill of the mechanic in the branch to which the invention belongs. Hollister v. Benedict Mlrnuf'g Co. 113 U. S. 59; S. O. 5 Sup. Ot. Rep. 717; Thompson v. Boisselier, 5 Sup. Ot. Hep. 1042. Let there be a decree for an injunction and an accounting with respect to the Farnham patent, and for a dismissal of so much of the bill as relates to the Perkins patent. The costs pertaining to each issue are to be taxed in favor of the successful party, but the excess only of one over the other is to be paid.
March 16, 1885.)
(fJircuit Oourt, D. New Jersey.
PATENTS FOR INVENTI'INS-INFHINGEMENT-PnELIMINARY INJUNCTION-LACHES.
Where a patentee has known of infrijlgement by a party of his patent, and acquiesced thereIn for a considerable length of time, a preliminary injunction will not be granted, without an explanation of such acquiescence.
NIXON, J. This is a motion for a preliminary injunction ag!linst the infringement of reissued letters patent No. and is resisted by the defendants on the ground that the mechanism used by them does not infringe the complainant's invention. The original patent was numbered 158,967, dated January 19, 1875, and was granted to the complainant for improvement in friction-drums. This was surrendered and canceled, and the reissue was granted July 13, 1880, on amended specifications. Three new claims were added to the reissue, and the single claim of the original patent was retained. The bill of complaint only alleges the infringement of that claim. The question, on this motion, lies in a very narrow compass. The validity of the patent has been sustained, and the claim construed by Judge WHEELER, in Mundy v. Lidgerwood j1r!anuf'g Co. 20 FED. REP. 114. In deciding tbe motion, I shall deem the patent valid, and ac(jept the construction given to it by the learned judge in that case. The invention relate8 to new and useful improvements in frictiondrums for pile-drivers and hoisting-machines, and is said in the specifications "to consist in making the friction surface of the drum of pieces of wood confined endwise in a shell formed on the inner side of the gear-wheel; such pieces of wood being dove.tailed in, and turned at an angle of 30 to 40 degrees, to fit within a conically recessed disk on the drum." The claim is for a combination as follows: "(4) The combination of a tubular and sliding drum, A. loose on a shaft, G, and a friction-cone, D, of the fast-Jl'i vell spur-Wheel. E, having spring,
P, to repel the said cone, and provided with a side flange supporting the cone, N, as and for the purpose described."
It contains six elements: (1) a drum; (2) a shaft; (3) frictioncone; (4) a spur-wheel; (5) a spring; and (6) a side flange. The harmonious connection of these parts in an organized mechanism constitutes the complainant's friction-drum; and the proofs show that its addition to a hoisting-engine has been found so useful, and its use so popular in the trade, that it has become quite difficult to sell a hoisting-engine unless it is supplied with a friction.drum containing the essential features of the complainant's invention. 'fhe machine of the defendants which is alleged to infringe has substantially the same organization. It has the tubular and sliding dUlln; the shaft in which the drum runs loose; a friction-cone; a drivingwheel fastened to the shaft; springs to regulate the pressure between the friction surfaces, and to throw the parts out of connection with promptness when required; and a side fli:1nge to support the. friction surface. The differences are that the friction surface of the complainant's patent is wood, and that of the defendant's, leather; that the complainant has one spring to regulate the pressure, and the defendant, two; that in the complainant's machine the bearing of the friction surface is between the inner face of the drum-flange and the outer face of the friction-cone, while in the defendant's it is between the outer face of the drum-flange and the inner face of the frictioncone. .But these changes are merely mechanical, or the substitution of well-known equivalents. I should have no doubt about the propriety of issuing the injunction if it was not so plainly to be inferred from the complainant's affidavits that he has been familiar with the defendant's infringement, and has. assigned no reason why he has not proceeded more promptly in stopping it. The affidavits nowhere disclose when he first had knowledge. A patentee need not expect to obtain a preliminary injunction in this district where he has known of the defendant's infringement, and has acquiesced in the same for any length of time, without first explaining the reason for his acquiescence. As this matter was not adverted to, by the counsel on either side, at the hearing, I will give the parties 10 days in which to supply affidavits on the subject of the knowledge and acquiescence of the complainant in this regard. When these affidavits are put in, I will determine whether an injunction should be ordered or refused, or whether the proper relief will not be an order that the defendants give a bond, with satisfactory security, for the payment of all damages which may arise for infringement after the date of this application if the complainant's patent shall be sustained in final hearing.
RAILWAY REGISTER MANUF;G CO.
NORTH HUDSON O. B. 00.
RAILWAY REGISTER MANUF'G CO.
v. NORTH and others.
(Circuit Court, D. New Jersey. February 3, 1885.1
PATENTS FOR INVENTIONS-INFIUNGEMENT-DEFENSE OF I1mEGUI,AR ISSUE BY l'ATENl'-OFFICE.
In a suit for infringement a patent cannot be invalidated by showing that the requirements of the statnte, to be observed by the commissioner of patents in order to its issue, have not been regarded.
Where letters patent have been issued by the patent-office for a period of Jess than 17 years, because of a reference to a supposed foreign patent, and the inventor has refused to accept them, and on further examination such letters are c'lllceled and a new patent issued, the time intervening between the issue and allowance of the patent should not be deducted froUl the term of the patent, but the patentee be alluwed to enjoy his monopol.)' for the full term of 17 years.
In Equity. J. When the above case came up for final hearing, the counsel for the defendants raised two preliminary questions, which were supposed to be decisive, and which, if ruled in favor of the defendants, would relieve the court from the duty of considering the controversy upon its merits. The two questions were (1) whether the complainant's patent was not invalid bec·ause no written specifications and claim were, in fact, signed by the inventor, nor was his signature attested by two witnesses, as required by the statute, before the letters patent could be issued; (2) whether the letters patent were not void because issued for a greater length of time than the statute allowed. The court considered these matters of sufficient gravity and importance to request the counsel of the parties, on a preliminary argument, to confine themselves to their discussion. 1. The facts in regard to the first question are these: On the twentyninth of December, 1877, John B. Benton, the 'inventor, made application in writing to the patent-office for letters patent for "improvement in fare registers." It consisted of a petition, oath, specification, and six claims, appointing C. C. Beaman, Jr., Esq., his attorney, with full power of substitution and revocation, to prosecute the application, and to make alterations and amendments therein. The specification was signed by the applicant and attested by two witnesses, and was verified by the oath of the patentee that he was the original and first inventor. On the third of January, 1878, the patent-office gave notice that the first, second, third, and sixth claims were rejected, having been anticipated by other patents. Matters thus stood till Febmary 10, 1879, when Mr. Beaman gave notice to the commissioner of patents, to associate with him Messrs. Baldwin, Hopkins, and Peyton, as attorneys in the case. On the twenty-ninth of March following, the patent-office, at the request of Baldwin, Hopkins, and Peyton, erased the entire specification before filed, except the signatures, v.2 3F ,no.12-38