be heard as a defense to the bond, and consequently. cannot be considered here. The petitioner was dealing with the government, and his contract is writt.en in the bond. This contract can neither be diminished nor enlarged by anything that may have been said respecting its object or or the subsequent disposition of the property or course of proceeding. Neither fraud nor mistake'is alleged. The contract, as we have seen, requires payment on condemnation of the property, (no matter for what cause condemned,}and failure of Bergenthal to satisfy the Judgment. The circumstnnce that the property released was immediately again seized for taxes due byBergenthal elsewhere is not important. It was released in pursuance of the retsof the parties, and in consequence of the bond; but was immediately reseized on account of the indebtedness referred to, and applied to relief in that respect. Of this seizure and application of the property neither BergenthaI nor the petitioner can -complain. The petitioner's disappointment, from failure to obtain control of it, as he expected, no matter how the expectation· arose, constitntes no answer to the government's claim on the bond. ' The rule must be discharged.
(Oircuit (Jowrt, D MD,88achuBettB. January 18, 1887.)
PA'flIlI(T8:!'OR,INVENTIOl!liS....,RETSSUE No. 2,542--CJ,AIM BROADER THAN Oll.IGINAL , -,OMIllSlqN OF LIMITINq ELEMENTS. Held that the first claim of reissued patent No. 2,542, issued April 2, 1867, to
, Norman C. Stiles, for metal punch, is invalid by reason of making a broader Claim by, omitting two of the limiting elements of the original patent, (No. 41,40a, dated January 24;, 1864,) viz., the pitman to which the adjusting pitmanJ's attached, and the clamp 'by which the eccentnc is held in place.
Action. at law to recover damages for the infringement of letters patent. J. L; S. Roberts, for complainant. J. E.Maynadier, for defendant.
CARPENTER, J. In my consideration of this case I have had occasion to examine three questions. The first relates to the validity of the reissued patent on which. the action is brought; and this question must be d:etermined in accordance with the finding on the subsidiary question whether the reissue can bear the narrow construction for which the plaintiff contends. The second question is whether, assuming the plaintiff's construction of the patent; there be patentable novelty in the invention. These questions have been argued with much learning and forclil, and .with' the· assistance' of ingenious statements of expert witnesses. The ,eonsiderationBf the case has occupied more time than would have been earlier reached a conclusion on the single point; on .:whieb, I:amnow satisfied',' the case must be decided.
The case is an action at law; bootid by the court,withbut a jury, and is broughUo recover damages for the infringement of the first claim of reissuedpMen't No. 2,542, issued, April 2, 1867, to Norman C. Stiles, for metal punch. The original patent was numbered 41,403, and,dated January 24,1864; and the first'reissuewas numbered 2,139, and ,dated December 26,1865. The claim, in,question" as it is contained successivelyinthe original and in the, two reissues, is as-follows: First. The compound eccentric, D, ,conSisting of an eccentric wrist pin, a. adjustable disk, b, and clamp, d, or, its. equivalent, in combination with the pitman, F, constructed and operating in the manner and purpose substantially as set forth. __ -, " ' _ . First. The compound eccentric, D, consisting of an eccentric wrist pin, a, adjustable disk, b, and clamp. d,or its equivalent. constructed and operated in the manner and for the purpose substantially as set forth. 1. I claim the eccentric wrist pin,a. and turning part, b; or its equivalent, constructed and combined as de!!lCl'ibe,d, to operate the punch at different levels, substantially as and for the purpose herein set forth. The first defense is that the reissue is not valid, because it is for an invention broader than that claimed in the original patent. The first reissue; as will be seen by a comparison of the claims, omits from' the combination the pitman to which the adjusting eccentric is attached; and the second reiS!lue omits also the clamp by which the eccentric is held in place. The case, therefore, on its face, presents an example of a reissue which makes a broader claim by omitting two of the limiting the present state of the law, such a elements of the original patent. reissue must, of. course, be held tp be invalid. But the plaintiff contends that the descriptive part of the specification in the reissue makes the pitman and the clamping device an operative part of the combination; an<1,he then contends that t1;le claim contains such a. reference to the descriptive part of the specification as will carry these elements into the claim. It is a little difficult to understand precisely on what part of the claim this contention is based. The words, "constructed and combined as described, to operate the punch at different levels," seem to me to refer solely to the construction and combination of the elements which are explicitly stated in the claim. I think,however, that the plaintiff means to be understood that the pitman and clamping device, exactly as described by him, are to be imported into the claim by construction, as being necessary to the functional operation of. the device which is described in the claim. Against such a construction there are two objections of which appears to me to be fatal. Ji7i,rst. I am not prepared to hold that the patentee, after he has omitted the elements from his claim by a reissue, can be permitted to insist that they be brought back by construction. Secondly. The construction for which the plaintiff asks is a construction by necessity, and cannot be carried further than is called for by the necessity. He s1l1s that his claim must be limited by taking such elements from the speoification as will make his claim cover an operative device. But even if he can prevail to this extent, he certainly cannot be permitted to limit his claim any further than is necessary to make it
8't1llAH-GAUGE &: LANTERN "CO. V.ST.
RY. SUPPLIES HANUI!"G 00.
describelinoperlltive Looking, tlien, at the pitman alone, and assuming that the plaintiff' may import that element into the claim to,tliee:x.tent'above indicated, it is evident that lie can be permitted only to hald"that the eccentric iS,attached to a pitman or equivalent device. He <lltnnot,be, permitted to Slty that the claim implies that the eccentric is placed at either end of the pitman to the exclusion of the other end. His patent ,will therefore cov,eraneccentric attached to a pitman. Having thus determined the. construction to which, in the most favorable view for him, the plaintiff is ,entitled, 'it becomes necessary to look at the prior state of the art, as shown by the evidence. It is proved, withouteontradicticin, that punching-machines had been built pyTimothy F. Taft" and had been in public use as early as the year 1862, in which there was Qmadjusting·eccentric attached to the wrist pin, or slide pin at the lower' end Of the pitman., ,These machines undoubtedly anticipate the ,claim, if the claim be construed as I think itmust be construed. In View of the whole in short, the plaintiff cannot prevail, unless M.can bepertnitted, by construction,-PirM, to import a limitation into his claim, in order to bring the device which he claims within the class of operative'devices, according to the description in the specification; and, secondly; to import a, further limitation into the claim in order to bring his device within the blass of patentable novelties, in view of the prior state of, the art. This last limitation seems to be clearly inadmissible. A limitation 'introduced by'construction must be based on the express wordeof the: instrument, and must stand in the same terms in which it js'introdueed. ,If it were permitted to base one constructive limitation on another constructive limitation, the process might be repeated indefinitely f 'and the claim of every patent would thus be limited, not by the terms of the claim,but solely by the limite of possible invention in the particular class of devices to which the patent relates. I hold, therefore, that the first 'claim of the reissued patent is invalid, and that:judgment must be for the defendant.
Co. and another
«(Jircult (Jourt, E. D. Mi880Uri.
December 18, 1886.)
PATENTS 1l'OR lNvENTIONS","""J1'qF;IUNGEMENT-LANTERNS.
Lanterns constructed accOI:ding to the specification of letters patent No. 246,'174, to Joseph Heithfor an improvement in ,lanterns, do not infringe eIther letters patent No. 104,818, granted June 14,1870, to John H. Irwlq. ,for an improvement in lanterns. ?r letters patent No. 151,708, granted June 9;1874, to the same person, for an Improvement in lamps.
lEdited b, Benj. F. Ru, Esq.,' of the St. Louis bar.
Suit for the alleged infringement of letters patent No.104 j 318, grantea June 14, 1870, to John H. Irwin, for an improvement in lanterns,and let.. ters,pateJit No. 151,703, granted to the same person, Jund9, 1874,:for an improvement in lamps. .The defendant's lantern is constructed in aCcordance with the specification of letters patent No. 246,774, granted September 6,1881, to Heith. B. F. Thur8ton, E. 8. Jenny, and Hough, OveraU &: Jud8on, for coinplainants. Paul, BakeweU and J. G. Ohandler, for defendant. ' TREAT, J.This case has been kept under consideration, not from any intrinSic difficulty, but in the expectation that mariy other cases in.. volving like controversies might be presented, so tbatall of them might bedetermilled without needless repetition. Inasmuch, however, as that result cannot be effected, it becomes the duty of the court to decide the only case now submitted to it. There is really no question as to the validity of the 'patents on which complainants rest their demand. The original conoeption by Irwin looked to the use of an ascensive current from the globe.jwith a supply of atinospheric air which would feed the air cup. This arrangement would prevent the extinguishment of the flame by puffs of air, vertically or otherwise, and still preserve a fresh supply of air to the burner. It is obvious, however, that that plan caused the partially-consumed air to enter into the feed supply, thus diminishing its requisite force. The problem was to. have ina globe lantern theascensive current operate with an injector, so as to feed the flame by an irreversible current. It having been ascertained that the <>bject to be. effected could not thus be accomplished, patent No.. 104,· 318, dated June 14, 1870, was obtained. That patent specified an annular chamber, with fresh-air inlets: as described therein. In it the ascensive:culTentis discharged into ihe,open air with deflecting plates, to prevent the extinguishment of the flame in the globe. It is supposed by the patentee that the fresh-air supply below the annular chamber, in its connection with the deflecting plates of the hot-air discharge, should occupy relative distances each to the other.'l'he annular chamber, with its relative distances as to the air discharge and the cold-air feed, seems, in the progress of. the. art, to hav6.been deemed not ... Hence a new patent ·was had; viz., No. 151,703, dated June 9, 1874, for an open-air supply, disconnected from an annular chamber, with an injector at the 6rtdof each tube. It is obvious that all these experiments by Irwin and other! looked to two results: Fir8t, the non-extinguishment of the light in the lantern by vertical or liiteral puffs; and,second,bya full snpply oUresh air to feed the flame. while its non-extinguishment was secured. The first patent, No. 89,770, gated May 4, 1869,· not being effective,thesecond patent, No. 104,318; dated June 14, 1870, was obtairied',with its annular chamber; and, that not being practically operative, patent No. 151,703, aated June 9, 1874, was had. Without dispnting the validity of the aforesaid patents, this courtis-called upon to decide whether the defend-
CONSOLIDATED BUNGING APPARATUS CO. ". WOERLE.
ant's devices infringe upon either the first claim of patent 104,318, or the first and second claims of patent No. 151,703. Certainly, the defendant's lantern does not have the annular chamber. .The'devicesby to effect the de,sired e,nd are mechanically and entirely distinct from complaii1ants'patents. Hence, as complamartts' right of action depends upon th'e·infringement by the defenda.ntof their llatenteddevices, it becbmeg necessary to ascertain whether the defend.. ant's devices are mechllnical 'equivalents of the complainants'. Thera may be many modes of effecting" a desired result, and each patent, like these, must rest on their mechanical devices therefor.. The two ends to be songbtwere the nori-extingufshment of the flame through the globe while the lantern was oscillated) and at the same time furnish a full air supply for the flame. As already indicated, Irwin received patents for devices to effect those ends. The defendant, however, uses none 'of those devices; it effects the desired result by other and different methodS from those indicated in the complainants' respectivepatent8. Hence th. cause is dismissed. .
CoNSOLIDATED BUNGING ApPARATUS
(Oircuit Court,N. D. rUin0i8. January 4, 1887.)
1·. PATB'NTS FOR INVENTIONs-J"ODlT INVENTION-,.EVIDENOB.
The were fact that two or more persons unite in .an application for a patent, as the product of their joint inventive efforts, creates a very strong presUII1ptionthat the device sOught, to be patented is the result of their united ingenuity, and to overthrow this presumption the evidence should be clear and unequivocal; citing Gptifried v. Phillip Best Br6'/JJing Co., 5 Ban. &A. 9.
The defense that two persons to whom a patent has been issued were not in fact joint'inventors, is so purely formal that it Cl\nnot be regarded with favor, unless itbe shown.that the action of the patentees in that regard was disingenuous, or calculated to JP,islead the defendants; citing Butler v. Bainbridge; 29 'Fed. Rep. 1 4 2 . ' . 8.' ARE JOINT INvlllNTO:R8. . If one conceives the entire invention, and another makes a suggestion of practical value which the first one failed to think of, but Which is needed to !!lake the conception a success, this will be sufficient to constitute thllmjoint Inventors. . 4. SAME-PRIOR USE-PATENT RELATES BAOK. Where the defendant atteJRPts to defeat a patent by showing that the pat. entee was not the dIscoverer of the thing claimed. the patent will, for the purpose of meeting of proof, be considered as relating hack to the date of the original discovery; citmg DiiMn v. M01/er, 4 Washb. C. C. 68, and other cases. 5. SUIE-WHAT CONSTITUTES. An old device will not be considered sufficient to defeat a patent, when its construction is such that radical changes and additions'WIollld be required be.fore it could be made to perform the work of the patented device satisfactorily. 6. SAME-'"'-TlIE ZWIETUSCH AND HEITMAN PATENT. The distinguishing feature of the Zwietusch and Heitman patent of December 23, 1879, for automatic pressure relief apparatus for beer vessels, stated to be its water chamber or chambers, and such patent held to be ,valid, and to .be infringed by the Woerle bungs. .