DEDERICK 11. WHITMAN AGRICULTURAL CO.
of the claim, the patent as to that part is void for want of novelty. There must, therefore, be a decree dismissing the bill as to both pat. ents, and it is so ordered.
(CMcuit (Jowrt, E. D. Mi88OUri. March 15.1886.)
PATENTS FOR INVENTIONS-PROOF OF AsSIGNMENT OF PATENT-CERTIFIED COPY.
A certified copy of a recorded but unacknowledged instrument purporting to be the assignment of a patent is admissible in evidence to prove the execution of such assignment, and is sufficient proof thereof in the absence of countervailing testimony.
The first claim of letters patent No. 126,894 is for the combination therein named involving as essential thereto the peculiar construction of the pressbox, and is not infringed by a combination into which such press-box does not enter. First claim of letters patent No. 199,052 is valid.
A substitution of an equivalent for an ingredient of a combination covered by a patent cannot avert a charge of infringement.
In Equity. Suit for infringement of the first claim of letters pat. ent No. 126,394 for an improvement in baling-presses, and the first claim of letters patent No. 199,052 for an improvement in portable hay and cotton prel:lses. The complainant sues as assignee. The only evidence offered of the execution of an assignment to him is a certified copy of an unac· knowledged instrument on record in the patent office, which purports to be a duly executed assignment. The admission of the copy was objected to by the defendant. The first claim of patent No. 126,394 is as follows:
"(1) The combination of the lever or sweep. H, with the lever. G, follower. F, and box· .A, of a baling-press, when constructed to operate, substantially as herein described."
The first claim of letters patent No. 199,052 is as follows:
"(1) In a portable press the combination of a horizontal guide-frame with a reciprocating follower pitman. and pivoted double cam at the end of tongue or sweep-lever of press, substantially as and for the purpose set forth."
L. Hill and Fisher et Rowell, for complainant. William H. King and Dyer. Lee et Ellis, for defendant.
TREAT, J. This suit is brought upon the first claims respectively of letters patent No. 126,394 and letters patent No. 199,052, for alleged infringements thereof by the defendant. Objection has been
Reported by Benj. F. Rex, Esq., of the St. Louis bar.
interposed by the defendant as to the proofs of assignments of said patents to the complainant. The court holds that the proofs of said assignments respectively are complete in the absence of countervailing testimony. As to the first claim of patent No. 126,394, the court decides that the same is for the combination therein named, involving as essentill,] thereto the peculiar construction of the press-box. There is noth. ing in said combination justifying the contention of counsel that it covers every use of a toggle-joint which passes the center line. It must be observed that the claim is for a combination of certain elements of which the press-box of a peculiar construction was a prominent feature. An examination of the patent does not show with any distinctness that any new or old device for such a toggle-joint passing the center line entered into the combination as a distinctive element or any part thereof. So far as the first claim of patent No. 199,052 is involved the essential inquiry pertains to the use of the double cam in the combination stated, whereby the result sought could be more usefully and effectively produced. That combination was of several elements, possibly all of them were old, but by their juxtaposition and arrangement effecting a new and useful result. The double cam was an important feature in said combination, and defendant's substitute therefor of an equivalent mechanical device does not exempt it from the penalties of infringement. When a combination is patented, whereby an important result is produced, the mere introduction of an equivalent mechanical device by way of substitution for one of the elements of the combination cannot avoid the effect of said patent, or enable the person who resorts to said mechanical equivalent to escape the penalties of infringement. Hence, as to said first claim of patent No. 126,394 there is no infringement by the defendant. As to the first claim of patent No. 199,052 it is held to be valid, and that the defendant infringes the same. Under these rulings this cause is referred to the master to ascer· tain the damages sustained by the complainant, for the infringement of said first claim of patent No. 199,052.
STEAM-GAUGE & LANTERN CO. and others
(Circuit Court, N.
MoRoBERTS and others.-
PATENTS FOR INvENTIONS-PLEADINGS.
Exceptions for impertinence and immateriality were tiled to that part of a bill which described prior patents to the same inventor, and involving the the same principle as one of the patents in suit. Held, that it was entirely proper, and under the circumstances of the case almost necessary, to show the relation which the patent in suit bore to the prior patents. The history of the invention is a part of the controversy in a patent case. The state of the art, and the steps which have been taken, either by the inventor of the patent in question or byother inventors, are a necessary part of / the testimony, and proper matters of averment in the bill.
SAME-RECITAL OF PRIOR LITIGATION.
It is proper to recite in a bill for infringement of a patent prior litigation over the same patent. In the Seventh circuit, by a rule of comity, the courts, in patent cases, endeavor to observe and follow the decisions which have been made in reference to the same patents, and even upon kindred questions, in other circuits.
4. SAME-COMITY-RULE OF, IN SEVENTH CIRCUIT.
In Equity. John G. Chandler and Pattl Bakewell, for defendants. Coburn a: Thacher, for complainants. BLODGETT, J. Nine exceptions are filed to the bill by the St. Louis Railway Supplies Manufacturing Company, one of the defendants in this case. 'rhe first, second, third, fourth, and tenth are applicable to so much of the bill as sets out the successive steps of John H. Irwin, the inventor of what is known as the Lantern," or a lantern for burning kerosene by supplying an irreversible current of air to the burner. By those five exceptions the defendantB insist that all matter pertaining to the history of the Irwin invQntions is immaterial and impertinent for the purposes of this case. The suit involves one of the patents of Irwin, and the pleader,.in stating the case in the bill, describes quite a number of patents which were issued from time to time to Irwin for lamps and lanterns involving the principle of the patent in question. It seems to me that the history of the invention is not only entirely proper under the circumstances of this case, but that it is almost a necessary part of the complainants' bill, to show the relation which the patent in question bears to other patents which Irwin had obtained upon kindred devices. I do not, therefore, think that those objections are well taken. The history of an invention is always a part of the controversy in the case. The state of the art, the steps which have been taken, either by the inventor of the patent in question or by other inventors, is always a necessary part of the testimony in the case, and it seems to me a proper matter of averment in this bill.
by Charles C. Linthicum, Esq., of the Chicago bar.