step, so'Wa:tno one can claim tpe complete whole, ual, and tbeli'eacliis entitled only to the speciftcdorm of he 'and every other inventor is entitled to his' own specific form, so: long SSlt dlf.fersfrom those of his competitors, and does not include. theirs. " " TheooIribination of thedefeIidants'isnot the combinati()n ofthe first claim of the patent, and it must, be that they do not infringe. ·Broo"ksv. FiBke. 15 How. 221; CalifOrnia Paving (h.v. Schalicke, 119 U. 'So 401, '7 sup. Ct. Rep. 391; v. Saginaw Barrel Co., 119 U. Ct. Rep. 421;:GM.'v; Wilt, 38 O. 7 Sup. Ct. ·Rep.718; Ne:wton v. PurBt Bradlq Co., 119 U. S. 373, 7 Sup. Ct. Rep.
, "If one InvenfiQr.precedes alltber,ellt,uIj.d atrlkes cJud!'!ssndunderlies all thattheyprod"c!l, ,a. monopoly, jects .$eJ;ll W .. ,But if tOwal'ds the tbingd«tBired' is grad-
869. . , It follows that the bill must 1?e dismissed.
Booir 'Co. ".
(Ot'focuit OOU'l't, D, Hains. ,June 2, 1887.)
PATENTS FOR INvENTIONS-SUCCESSIVE AsSIGNMENTS-PIuORITY-TRUST--CONVEYANCE, , . . . '
One who procures from: an inventor repords an assignment of hiflinterest in the invention, 'With knowl!3dgeof a prior unrecorded assignment, and thereupon procures the patent'to be issued. in his own name, will be deemed to hold the title in trust fori thE! first assignee, and the latter may compel a conveyance: ,In such case the prior assignee is not sufficiently protected Without a conveyance; sin.ce his rights depend upon notice, to which the record of the can show nothing. '
In Equity. On demurrer to the prayer for relief. Wells W. Leggett and William L. Putnam, for complainant. Livernwre Fiah, for respondent.,.. .'
WEBB, J., shows the following facts: Prior to January 13, 1885,Samuel G. Alexander, claiming to be the inventor of anhnprovement in felt boots, with the intention of procuringa plttent therefor, caused speCifications and an application to be prepared; filing them on the date meutioned, ,he assigned'all,hia right and interest in his invention to C. E. Wakeman & Co. In the assignment was a request that the letters patent should be granted and 'issued to the assignee., January14, 1885, Wakeman & Co:. 'assigned all thet'ights and interest thus acquired to' the complainant. Through misunderstanding ,of inadvertence, the 'assigmnent to Wakeman & was not recorded until Mllrch 4, and that. to the complainant till March 18,1886. The application, with necessary specifications,was filed on or about January 27, 1885. Before any patent was granted, an interference was declared /:letween this application and
PONTIAC KNIT/nOO'1' 00.". MERINO SHOE
one filred later by a party whom the defendant succeeds and represents. After long oontroversy in interference, a decision in favor of.Alexander was rendered. From this decision an appeal was taken totheexaminera in obief. On January 26, 1886, while this appeal waS pending, witb full knowl.. edge and notice of the successive assignments by AleXander to Wakeman & Co. ,and by Wakeman &; Co. to the complainant, and that they cov'; ered the same invention f(jr which a p.atent was applied for, and with which 'it was contesting the interference, the defendant secretly and fraudulently induced and prevailed. upon Alexander to make to it an assignment of all his right, title,and interest in tbe· said invention, and any letters patent that might be granted therefor, and to direct that the patent be issued to the defendant. The defendant, knowing that there had been .no record made of the ea.rlier assignments,caused that which it had thus obtainedtdbe at once recorded, and tben, without notice to the eomplainant, withdrew its appeal in the interference, pressed der's application to allowance, paid the final fee of the 'patent-office, and obtained: 1etterspatent dated J1<ebruary 23, 1886, granted 'and issued in its own na11leas assignees. Upon these facts the bill, with other relief asked, prays that the defendant "may be decreed and compelled to assign to the complainant, its successors and assigns, all the right, title, and interest in said letters patent, to'·the by the assignment from Alexander dated 'January 26, 18S6.To this prayer the defendant demurs, fortha'reasoti "that it appears in and by said bill· that the title to; the letters ,patent therein mentioned is already in the complainant." . TbecasesGayler v. Wildtr, 10 How. 477, and United States Stamping Cb. v. JeweUi 7 Fed. Rep. 877, it is contended fully'sustain the position of the defendant. In Gayler v. Wilder theassigDIJlent was recorded long before the patent was granted,and the letters patent were issued to the inventor who had made that; a8sigmnent. In Stamping 00. v. Jewett the assignment was made before any patent was granted, and, though not recorded till after the letters patent were issued to the inventor and assignor, they were still recorded before any rights; interest, or claim of others intervened. In both thoseca.seathe records of the patent-office plainly showed and relations· of the parties. As between the inventors and their assignees, the title of the latter was complete on the execution of the assignmentS, and:lkcatnegood against everybody when due record was made. . In the'pfelient case the· assignment under which the complainant claims was'indeed executed and delivered by the inventot· before the rights or claims of others arose, but it was not reoorded for more thana year after. In the mean time the inventor made and delivered another assignmentdo th"edefendant; wh.4.ch was promptly recorded; and, purto: its the letters patent were issued to the second, ahd, fol' aught that appeared on the records of the patent-office, the innocent, assignee·.('Thepatenthaving been issued directly to the defendant, it the legal title." Perkins v. U. S.ElecW"U; Light co' i 24 O. G;
l /. ( ,
204, 16 Fl;ld. Rep. 513. The tardy recording of the ,nrst does not'pivest that title. nor makeit inure to the benefit of the complainant,npr 90es it t:}Ild to such ',consequences. The eomplainant's superior rights, if it has superiority, depend, not on that record, but upon the defelldant'f;l. krlOwledge at the. time it took the E(ssignment to itself. As the rflcol'ds of the patent-office stood at the date,of the letters patent, if the defendant had been a bon,afide purchaser consideration, without, notice of any a.ssignment to the rule established ill Gaylerv. Wilder woUld ,have given it the legal title. even though the letterepatE:lllt had issued ,in the name of its a.ssignor, How, under the same state of the record,.j)an it be doubted that it legal title ina patent for which the letters issued directly 4l' . The assignment to Wakeman & 'under which the ()omplainAP,telaims, not 'being§eal;lonably recorded, was void against subsequent purchasers for a valuahleconsideration, without notice. Rev. St. § defendant a purchaser, and, Paving duly,rec<ml.ed its title, become, slll far as the recol'(:$ show, the rightful and legll1:ownel' of, thepatE:lnt. Or if these assignments, executed prior to the allowance of the patent, are not such instruments ,as are ra-; ferred to in seotion 4898, still they must be recorded bE:lfore the assignees could dem/lud, that the letter,1I patent should be issued. in their name. St. § 4895. All an assignee would have until such record should be madewppld be the right to have it made, and.tberepytobecome entitled to the grant of letters patent.. 'Neglecting to secure, the benefit of the assignment tpit by caulling, seasonable record thereof, the ant made it ,possible for the defelldant to take advantage ofits later asBigIlment, and acquire the l«;ltters "patent, which, in, the absence of notice of prior rights:ip. the cOqlplainant, would give an indefeasible legal titlei Even with such notice, the legal title was in the party to whom the patent was, granted, it never haying transferredor.assigned its interest a,nd rights.,BQ.t it was a title subject to the superior equitable rights of the complainant.. But those equitable rights, depending, as they do, on the fact ofku.qwJedge on the Pal't of the defendant, are not so evident and notoriou$ by the record that it can be said, as was the case in Gay.. V,. Wilder, .tl)at "to require another transfer would be Illere form." Until the patent was granted and no legal title was in any SoP, or had any existence. There was only an inChoate right to the creation of such title, which right the inventor could assign, and, upon proper record of.the assignment,. the title could be established in the asaignee. Conveyance of the incholtte right, if unrecorded, gave no such · privilege; if recorded,it took from the inventor the power to secure to himself that title. Alexander, the inventor, having this inchoate right, by his transfer to the complainant, placed it in condition, by proceeding in the manner which the law requires, to perfect and absolute. By neglecting Buch, proceeding, the complainant left it in the power of the inventor himself to .change the inchoate right into the full and,. Had he done this only, his assignment, as is in GaJilerv. Wilder, would have" operated upon the perfect
NEW AMERICAN. FILE CO. 'D. NICHOLSON FILE CO.
legal title which Alexander had a lawful right to obtain, as well as upon the imperfect and inchoate interest which he actually possessed" at the date of that assignment. Instead of pursuing this [email protected]
NEW AMERICAN FILE
'11. NlCHOLSON FILE
n. Rhod8 18land.
June 2, 1887.)
PATENTS FOR lNvENTIONS-IHPROVED MACHINBFOR CUTTING FILEs-EQUIVALENTS.
Letters patent No. 29.236, were granted July 24.1860, to Etienne Bernot, and subsequently extended, for an improved machine for cutting files. The purpose of the invention was to keep the edge of the cutting chisel parallel with the surface of the tapered file blank, along the line where the cut was to be made, so that the cut should have an equal depth across the face of the blank. This was accomplished by an adjustable presser-foot or gnide, set parallel with the chisel, and bearing on the tile blank in a line slightly in advance of the edge of the chisel. As the blank moved along under the presser
foot, '1 rockinJt bed yielded as variations in the thicl!:ness of the blade might require. In the defendant's machine a ftxed presser-foot was used, with an adjustable cutter, in operating which adjustability. however, the cutter and blank were thrown out of parallelism, Instead of being kept in the same, as accomplished by the Bernot device. Held, that the difference between the two machines was suchtbat the doctrine of equivalents did not apply, and the defendant, therefore, did not 'infringe.
W. S. T. Douglas and OhaUncy SmifJl" for complainant. Bcnj. F. Thursfnn, for respondent.
COLT, J. In this suit the defendant is charged with infringement of the third claim of letters patent No. 29,236, dated July 24, 1860, granted to Etienne Bernot for an improved' machine for cutting files. The patent waS confirmed bye:ct of congress July 16, 1862:, and was extended for seven years from July 24, 1874. The plolntiff derived title to the patent by assignment, December 1, 1876. Incutmng files it is important that the edge of the chisel be parallel with .thelmrface of the blank· along the line where· the cut is to be made, so that the cut shall have an equal deptha:cross the face of the blank. To understand the Bernot in. ventitm, it is necessary to refer to patent No. 8,199,issued to John Crum, July 1, 1851. The feature of the Crum,inventionwastheintroduction bed, which is a suppleinto it file-machine of what is called a bed, capable of rocking, placed in the main mentary bed of the machine. This rocking' bed permits the file blanks, which are tapering from heel to point,always to present a surface parallel to the cutting edge of the chisel. TheCrum machine was also provided with a presser-foot for holding the blank down in the· rolling bed. In' the Crum machine the edge of the chisel brought the file blank on the rocking bed into parallelism with the chisel, and also cut· the teeth. Bernot conceived the idea that by making the presser-foot or guide adjustable, so that it could be set 'parallel with thechisel,he could secure' the necessary parallelismbetween the cutting tool and the file blank. and thus relieve the chisel from the double duty it imperfectly performed in the Crum machine. Bernot employs an adjustable presser-foot, set allel with the chisel, and it bears on the file blank in a line slightly in advance of the edge of the chisel. As the blank moves along under the presser-foot, the rocking bed yields, as may be required, by variations in the thickness of the blank. The thirdclai'm Of the patent, which is the only one in controversy, is as follows: "In the arrapgement of a guide set parallel to the graver, as hereinbefore described, and referred to in figures 1 and 2, drawing 2." It;l the Nicholson macqine .the between,. the cutter and the blank is brought about by proper grindIng before the cutting tool is set in its holder.. Should the cutting tool prove slightly imperfect, or beso that its edge is not parallel to the line across tpe blank, come so in then an adjustment is made by turning tool slightly in a vertical plane; is to throw the edge of the tool but theresult of any such " In Bernot's machinetbe parallelism and the prel'lserout of between tbe, cutter and theblaIlk .is'brought about· by adjusting the
8TEAM-GAUGE & LANTERN CO.". ROGERS.
presser-foot. In. the Nicholson machine the presser-foot is fixed, and the adjuliitability belonging to the cutter is anadjustability which operates, not to bring the cutter and blank into paralleli:;;In, but to throw them out of parallelism. The main feature of the Bernat machine of adjusting the presser-foot in a horizontal plane, so as to make it parallel with the cutter, is wanting in defendant's device. The c.ontention of the plaintiff that the third claim .of the Bernot patent covers every machine in which the presser-foot or guide is set parallel With the chisel, it seems to me, cannot be sustained. Claim 3 is for "the arrangement of a parallel to the graver, as hereinbefore described," etc. The claim. must be construed with reference to the specification and drawings,. It is the means or mechanis"'m by which a is accomplished, that is covered by the patent, and the question is whether the defendant accomplishes the same result by substantially the same or equivalent means. In view of the radical difference between the two machines already pointed out, I am satisfied the defendant does not infringe; and this disposes of the case, without rendering it necessary to consider the other defense which is raised. Bill dismissed, with costjf.
STEAM-GAUGE &; LANTERN
Co. and othera ,.
(Oirc'Uit CO'Url. D. Ma88achuBcu6. April 15, 1887.)
PATENTS FOB hrvENTIONS....:INJ'llINGJUlEllT-No. 244,944-AWUfDJlEllT OJ' CBElI:.
E. S. Jenney, for complainants. George H.Knight, for defendants.
NELSON, J. And now, at the suggestion of tbe parties, wbo appear by their respective attorneys, E. S.Jenney for complainants, and George H. Knight for defendants, it is ordered that the opinion of the court on file in this case (29 Fed. Rep. 453) be corrected by striking out the words "bent partly round," in the last paragraph, and inserting in place thereof the words "passed through loops on," so that the first two clauses thereof shall read as follows:
"'fhe defendants' lantern differs from the plaintiffs' only in the following particulars: In the former the side wires are hooked into the lower perfoplate, instead of being wound round or under it; and. in place of gouides. they are supported laterally. by being passed. through loops on tile side tubes."