proposition that it is not mandatory, under the language of the section, that the patent run in form to the person who is the owner of the invention according to the records of the office at the time when the patent issues. In Gayler v. Wilder the patent was issued to the had assigned his inventor after the act of 1837, notwithstanding whole invention to another, whose assignment was duly recorded before the patent issued; and it was held that the legal titltl to the invention was, notwithstanding, in the assignee and not in the inventor. The plaintiff in that case could have acquired no legal, that is, no statutory, title if the patent could only issue lawfully to the person who was the owuer of the invention at the time. Nothing in the language 'of the section, or in the other sections of the patent-laws, implies that a patent cannot be properly issued to any assignee whose assignment is duly recorded, when it can be done without impairing the rights of any other person having a paramount title to the invention. Inasmuch as the grant runs to the grantee named in the patent, and his assigns, and operates, therefore, in favor of the ultimate assignee to convey him a record title as completely as if he had been named in the patent, and as it is not essential that the grantee named be one who owns the invention when the patent issues, it should be held that a patent is valid when issued to any assignee of record. The detnurrer is overruled. .
JENKS and others v.
(Oircuit Oourt, N. D. NeUJ York. November 26,1885.)
PATENTS FOR !NVENTIONB-!NFRINGEMENT-LUBRICATOR.
The second claim of letters patent No. 187,964, to William A. Clark, March 6,1877, for an improvement in lUbricators, III view of the prior state of the art, must be limited to a drip-tube with one Ride at its end cut off slanting, and located with its slanting end so near the side of the glass cylinder that the drops of condensed water will be delivered against the side of the glass, or so near it as to practically displace the oil between the end of the tube and the glass; and, when so construed, it is not infringed by defendant.
Joyce J: Spear and Neri P'ine, for complainants. DlleU J: Hey, for defendant.
WALLACE, J. Infringement is alleged of the second claim of the patent granted March 6, 1877, (No. 187,964,) to William A. Clark for an improvement in lubricators. The claim in controversy is as follows: " A drip-tube, P, constructed and arranged to operate SUbstantially as de-
scribed, whereby the water from the condenser shall bE' delivered against or
it enters the oil
close to the side of the glass. in order that it may be seen or passes through the same."
In his preliminary staterpent of the nature of the invention the patentee says that "the invention consists in certain details in struction whereby it is rendered more efficient in its operation, as hereinafter more fully described." The general object of the improvement was to provide means by which to indicate to the operator of displacement lubricators the rapidity of the feed of oil. In such lubricators a reservoir of metal or glass is provided to contain the oil, which is attached to the steam-pipe of the engine in such a way that Bteam may be taken from the pipe, condensed, and delivered as water into the oil reservoir, and the oil; being lighter than the water, is thereby forced out of the reservoir through snitable channels, and de. livered to the parts to be lubricated by suitable appliances. It is important that the operator should know how fast the oil is being fed; and the object of the invention, as of several others which preceded it, was to afford the requisite means. In the present patent the rate of feed of oil is indicated by the drops of water passing out of the drip-tube through a glass retlervoir or gauge containing oil. The prior state of the art is sufficiently disclosed by a reference to the patent to John Gates, (No. 107,478,) granted September 20,1870, and the patent to John J. Renchard and J. Vincent Renchard, (No. 184,426,) granted November 14, 1876. The patent to Gates shows a displacement lubricator provided with a drip-tube through which drops of water pass down into a receptacle containing oil, the drops thereby forcing the oil into the parts to be lubricated. The oil is contained in part in a glass cylinder, into which the water drops through a tube and indicates the rate of feed. The principle of the apparatus is in all respects like that of the patent in suit, and it is stated in the specification that "this method of feeding admits of observing the quantity and regularity of the feed, as the water dropping into the oiland falling to the bottom may Le distinctly seen through the glass." If the tube were located close to the side of the glass, and were of the shape of the tube of the present patent, the Gates device would completely anticipate the claim in controversy. As, however, the tube enters the glass cylinder as near the middle as at the side of the cylinder, if the oil is dark or thick the drops of water may not be as distinctly seen as though they were delivered from the tube close against or upon the side of the cylinder. The Renchard pat.ent discloses apparatus similar in all respects to that of the patent, except that the tube through which the drops of water are conveyed into the glass cylinder is in the form of a siphon. The description states that "the water drops from the siphon close to the wall of the cup, and each tirop of water is clearly visible as it settles down in the oil." Without reference to other evidence bearing upon the prior state of the art, it is apparent that the claim in controYersy must be limited to a drip-tUbe having those details of construction and arrange-
ment which are pointed out in the specification as essential to its efficacy, and which distinguish it from pre-existing devices. The specification describes the tube as one "which has one side at its end cut off slanting;" the object being "to deliver the drops of condensed water at or against the side of the gauge-Rlass." The only difference between the drip-tube described, and the drip-tube of the Gates and Renchard patents, which contributes to the end in view, consists in its peculiar shape, and in its proximity to the side of the gauge-glass or cylinder. Both the peculiar shape of the tube and its proximity to the side of the glass contribute to the result sought. The result could not be effected by the shape of the tube alone, if it were located as the tube is shown to be located in'the patent of Gates. Neither oould it be effected by the mere location of the tube, although the location selected were such that the water would drop close to the wall of the glass, as was pointed out in the patent to the Renchards. The claim must be limited to a drip-tUbe with one side at its end cut off slant· ing, and located with its slanting end so near the side of the glass cylinder that the drops of condensed water will be delivered against the side of the glass, or so near it as to practically displace the oil between the end of the tube and the glass. Unless this very limited construction is given to the claim, the improvement is destitute of patentable novelty. Any substantial change in the shape of the drip. tube, or in its proximity to the side of the gauge-glass, would bring it within the class of devices disclosed in the patents of Gates and of the Renchards. Adopting this construction, it is plain that the defendant does not infringe. It is not altogether clear that his device contains a drip· tube at all; but, conceding that his horizontal channel is substantially a drip-tube, it is not such a one as is covered by the elaim. It is doubtful whether the end is located in such proximity to the glass as to distinguish it from the drip-tube of the Gates or of the Renchard patent. Its end is not cut off slanting, but is cut off square, like the end of the tubes in the Gates and Renchard patents. There is no room, in a case like this, to apply the doctrine of equivalents. The defendant's device differs so much in details of construction from any drip-tube shown in the earlier patents, or in the complainants' patent, that it may fairly be deemed a patentable improvement. Such seems to have been the opinion of the patent-office, as is evidenced by the patent granted to defendant, July 1, 1884. The bill is dismissed, with costs.
AMERICAN DELL TELJ<:PHONE CO.
AMERICAN BELL TELEPHONE CO. v. PEOPLE'S TELEPHONE CO. and others. 1
(OiJrcuit Oourt, B. D. New York. 1885.)
1. PATENTS FOR INVENTIONS-EVIDENCE-PRIOR USE.
Where the evidence of new witnesses (as to a prior use) introduced on rehearing was merely cumulative and less persuasive than the evidence to the same point on the former trial, held, that the decree should not be disturbed.
SAME-REDUCTION TO PRACTICAL USE.
The testimony of witnesses as to the practicability of alleged prior devices incredible where a test of reproductions of those devices showed them to be practically inoperative.
SAME-FAILURE TO MAKE PRACTICABLE MACHINE.
Where the alleged prior inventor was shown to be very near the realization of the invention, but could not, at a period long subsequent, make a practical machine embodying the invention, it was held, that his operations were not sufficient to defeat a patent, although witnesses testified that they were successful. Drawbaugh's talking-machine held insufficient as a prior use.
In Equity. E. N. Dickerson and E. J. Stower, for complainants. Henry C. Andrews and Lysander Hill, for defendant. WALLACE, J. Since the decision of this case, in December last, additional proofs have been taken on the part of the defendants, and by consent of complainants have been presented for the further can· sideration of the court after argument of counsel. All the new evi. dence is cumulative merely. Such as consists of the testimony of new witnesses to knowledge of the existence of Drawbaugh's talkingmachine prior to the date of Bell's patent is far less persuasive than much which has already been considered and rejected as incredible. Such as is intended to show that the earlier instruments made by Drawbaugh were capable of practical use in transmitting articulate speech is more important. The instruments which were introduced as reproductions of lost originals. representing Exhibits B, F, and C, and which were constructed by Drawbaugh, or under his supervision, as accurate reproductions of the originals, were shown to be practically inoperative. After they had been introduced in evidence, and the expert witness for the defendants had testified that he had found them to be good practical instruments, a test of their efficiency was made at the request of counsel for the complainants which took place in the presence of the experts and of the counsel for both parties. This test, which was made in 1882, indicated decisively that the testi. mony of a large number of witnesses respecting experiments with Drawbaugh's earlier instruments on various occasions in the years 1869 to 1876 was unreliable; While, according to the testimony of these witnesses, the instruments invariably operated satisfactorily
I Reported by Charles C. Linthicum, Esq., of the Chicago bar. Affirmed. See 8 Sup. Ct. Rep. 778.