description in the plaintiff's patent constitutes ,invention, or merely mechanical skill and judgment, in the use of the process for the purpose8 if only mechanical skill, using blasts of air, would not be invention. If you find for the plaintiff on all of the anticipating defenses before named, then you will determine,from the evidence, whether the defendant infringed the patent of the plaintiff, as claimed and set out in the petition, and also which, if not all, of the claims of said patent were infringed. You can find, if the evidence so presents itself to you, infringement of some of the claims, and no infringement of others. The defendant had a right to use any or all of the claims which you may find not valid ones, under these general instructions; and, if it infringed any of the claims held by you to be valid, the plaintiff is e;liltitled to recover to l,'ecover depends his damages for such infringement. But his upon proof of infringement of such valid claims. ' The plaintiff is entitled to recover damages, (if he establish the infringement oy the defendant,) arising from the use of the valid claims of his patent, and the measure of such recovery would be the profits or advantages derived by the defendant in the use of. said claims of the plaintiff's patent for the period in which so used, and any specific damages which he may show he has sustained by such use, or by reason of such use; and in the absence of proof of such profits and gains, or specific damages so sustained, the plaintiff would only be entitled to nominal damages. Verdict for the plaintiff.
UNITED STATES BUNG MANUF'G
((Jircu£t Oourt, 8. D. New York. :Mav 23,1887..
PAT,ENTa FOR INVENTIONa-IMPRQVEMENTS IN BUNGS FOR CUKS-PATENT-
Reissued letters patent No. 5,937 were granted June 30; 1874, to Rafael Pentlarge, for an improvement in bungs for casks; the invention consiating in boring a hole from either side nearly through an ordinary wooden bung, the hole filled bya tightly-fitting,wooden plug. In tapping, the vent-plug is driven Into this hole, the solid portion of the bung is broken off, and, with the wooden plug, passes into the cask. The object of the invention was to provide an easy method of inserting the vent-plug without permitting the gases generated by fermentation to escape. The proof showed that a prior patent was granted to one Kirby for a bung with a hole bored entirely through it, with a plug fitted tightly therein, which, in venting, was forced into the cask; and a prior English patent was also granted to one ,Taylor for a similar device, the hole being conical in shape and, like the patent in suit, being bored partly through the bung. Held, that the patent in question was wanting in patentable novelty, and a bill to restrain infringement of the same must be dismissed.
Reissued letters patent No. 10,175 were granted August 1, 1882, to Frederick Pentlarge and Philipp Hirsch, also for an improvement in bungs; the
UNITED STATES BUNG MANUl"'G CO. 17. INDEPJilNDENT BUNG & BUSHING
bung being like that in theabove-me!ltioned patent, except that the hole Is bored from, both sides, a thin web of wood being left between the holes in the interior of the bung, and the re-ellforcing dispensed with. Held to be equally wanting in patentable novelty, in the lIght of'the said prior state of the art.
Letters patent No. 208,816 were granted May 7,1878, to George Borst. for another improvement in bungs; the bung being similar to those above mentioned, except that a cutting tool is used, which, instead of a hole, makes, a core ()f circular incision,. extending partially through the bung, the the wood being left intact. It appeared that this method was described in a German paper in 1877. Held to be equally wanting in patentable novelty. Where a foreign patent describes a device which is covered by a later patent of the United States, or describes it so nearly that it is made patent to the public, and an ordinary mechanic can make the change from one to the other, the latter patent cannot be sustained.
,in Equity. Hem,ry Brodhead, for cowplainants. Pr68fnn Stevenson, for defendants. CmCE, J. The complainants are the owners of three several letters patent fO,r improvements in bungs for casks. The first patent, reissue No. 5,937, was granted to Rafael Pentlarge, June- 30, . The alleged invention consists in boring a hole from either side neady an ordinary wooden bung, the hole being filled by a. wooden plug. In tapping, the vent-plug is driven into this hole, the solid portion of the bung is broken off, and, with the wooden plug, passes into the cask. The object is to provide an easy method of inserting the ventplug, without permitting the gases generated by fermentation to escape. The claims are: "(1) The bung, A, provided with the hole, a, and having a solid portion, d, opposite thereto, substantially as specified. (2) The plug, B, in combination with the bung, A, haVing aJ'hole extending partly through it, SUbstantially as and for the purpose set forth." , The second patent, reissue No. 10,175, was granted to Frederick Pentlarge and Philipp Hirsch, August 1, 1882. The bung here described is like that of the previous patent, except that the hole is bored from both sides. A thin web of wood is thus left between the two holes in the interior of the bung. The re-enforC'ing plug is dispensed with. The claims are: "(I) In a v'ent-bung, made and constructed substantially as described, a transverse web, having recesses formed, respectively, upon its inner and outer faces. (2) In a vent-bung, made and constructed substantially 3S described in Figs. 1 and 2, the recess, C, on one. side of the bung, of greater size than the recess, B, on the other side of the bung." The third patent, No. 203,316, was granted to George Borst, May 7, 1878. This bung is similar to the preceding ones, except that a cutting tool is used, which, instead of a hole, makes a groove or circular inci&ion, the center core of wood being left intact. The claims are: "(1) A vent-bung having, upon one or both of its faces, a groove or incision, extending partially through the same, and surrounding the portion to be
set forth. (2) A vent-bung -having formed, upon oneot. its faces, cavity, and upon the opposite face incision, surrounding the portion to be removed, substantially as a .and for the purpose specified." _ Infringement is admitted, but the defendants insist that the patents are invalid for lack of novelty and invention. Before proceeding to this defense, it is well to have in mind what the courts have said regarding the patents in question, which, upon several occasions, have been the subjects of judicial examination.. In 1878, Judge BENEDICT, in refusing a preliminary injunction in an action by Frederick Pentlargeagainst Rafael Pentlarge, decided that the patent to Rafael, No. 5,937, is broad enough to include the devices described in the Pentlarge-Hirsch patent, No. 10,175, and the patent to Borst,.No. 203,316, and is not limited to a bung with a web on one face, but covers every form of bung in which a solid web is left opposite the plug-hole. He further held that the distinctive feature of the first claim is "the transverse web of solid wood, left intact and opposite the plug-hole, for the purpose of preventing the exit of gas or fluid, and yet thin enough to permit of its easily giving way being struck;" that on changing the locality of the web from the face to the center of the bung, whetherbyboung or by a circular cut, is a in ere change of form, and nothing rilOre.. Subsequently, in an action by Rafael Pentlarge against l!'rederickPentiarge and another, the same patents being involved, the same judge beld that the defendants infringed, and ordered them under injunction. . In 1880, in a suit between Rafael Pentlarge and the New York Bung & Bushing Company, Judge BLATCHFORD decided that the defendants :were at liberty to make a bung with a hole in it, and. a solid portion opto the hole, for, in so doing, they .made simply what is described tind shOwn i.n the English patent to TaylG>f, infra. The fact that the hole shown in the Taylor patent is flaring' he considered unimportant. ;;In 1884, Frederick Pentlarge commenced an action, under section 4918 'of the praying that the patent of George Borst, No. 203,316, be declared void. Judge WHEELER dismissed the bill, holding that the patents ·were each valid for the difference only between the bungs described ,in them and those in existence before, and that the patents did not interfere. The patents to Taylor and Rafael Pentlarge were ,in evidence .in that cause. Pentlarge v. New York Bung- & B. 00., 20 Fed. Rep. 314. Coming, now, to the defense of lack of patentable novelty. it is necessary to understand, at the outset, what was known in the art before the alleged inventions were conceived. In 1871 a patent was grarted to Josiah Kirby for a wooden bung, with a cylindrical hole or vent bOled entirely through it. The hole was filled with a tightly-fittingplugj its grain running at right angles to its-axis. This plug,. in venting, was forced into the cask. In February, 1865, an English patent was sealed to William Rowland Taylor. In his specification he declares: "I propose to employ shives or bungs having therein a distinct peg-hole of
UNITED S'l'ATES BUNG MANUF'G CO. '/!. INDEPENDENT BUl\G & BUSHING CO.
metal or wood, to contain a cork or peg, which may be displaced by the pressure ofthe ordinary loose peg, which will then fillthe hole." Again he says, in explanation of the drawings: "Figure 9 shows a shive, hav. ing a hole made not quite through it, so as to leave a .thickness of wood, which can be pressed into the cask by the common wooden vent-peg." The only possible difference between the Taylor bung, as shown in Fig. 9, and the Rafael Pentlarge bung, as shown iuFig. 1, is that the hole of the former is conical, and is smaller than that of the latter; although Taylor, in describing Fig. 1 of his drawings, says that the peghole may be "either slightly tapered, or of equal diameter throughout." Let it be assumed that he who first bored a vent-hole in a wooden bung,and stopped. boring before he had gone entirely through, so that the hole was completed by being hammered out, instead of being bored out, is entitled to rank as an inventor. The question here is: Was it to change a conical hole to a cylindrical hole; to take Taylor's bung and cut out the peg-hole, so that its diameter was equal attop an<i bottolU? It is thought not. And especially so, in view of the fact. that' Taylor had shown the cylindrical hole, and Kirby had shown it as.ap.. plied to bungs. It can hardly be said that the mechanic who, with the and Kirby structures before him, takt)s th.e stock and bit useqby Kirby, and with it makes the hole in the Taylor bung larger at the, 1>0t;. tom, so that it will hold the Kirby plug, has made an appreciable draft upon his lUental faculties. To adopt. mutatismu,tandis, the language Qf thl'l supreme court in Heald. v. Rice, 104 U. S. 737, 755: "Could p.ot the owners of the Kirby patent unite their device with the Taylor !'truct;. anli work them together, in defiance of a claim for the tion? J'oask the question is to answer it." ..· It is Jlot invention to make a small hole.8o big hole, or a conical l:Iole a cylindrical hole, especially when no new result, and no appreciable impro,vementon the old method, is accomplished. It is a mere of form, involving, not the action of the mind, but a substitution of one t001 for another. If such slight and unimportant changes are sufficient, the next applicant has only to make the vent hole elliptical or octagonal, or bore a round hole obliquely, or make it a little larger at the bottom than at the top, and thus secure a patent. The law was never intended to protect such superlative and palpable trivialities. The recent decisions of the supreme court upon this question show no disposition to recede from the rule which elevates patents above the plane of the frivolous and the commonplace. Thatcher Heating Co. v. Burtis, 39 O. G. 587,7 Sup. Ct. Rep. 1034; GiLrdner v. Herz, 118 U. S. 180,6 Sup. Ct. Rep. 1027; Yale Lock, etc., Co. v. Greenleaf, 117.U. S. 554, 6 Sup. Ct. Rep. 846; Pomace Holder 00. v. Ferguson, 119 U. S. 335, 7 Sup. Ct. Rep. 382, ap.d (lases cited. In reaching the conclusion that there is no patentable novelty· in the RafaelPentlarge bung, the corirt has not overlooked the argument advanced by the complainants that the Taylor patent should be laid out of view in oonsidering the defense of lack of invention. It is insisted that the Taylor pa:t:ent does not. disclose an exact anticipation; that the :Pent0 · ' '
bu'gestructure is not c()vered by Taylor's claims, or "patented" to himj and that, under the provisions of section 4886 of the Revised Statutes, .the English patent cannot be considered at all. It is thought, however, that this contention is not well founded. If a prior foreign patent describes the device covered by a patent of the United States, or describes it so nearly that it is made patent to the public, and the clumsiest mechanic can readily makethEfchange from one to the other, the latter patent cannot be sustained. .Any other rule would promote inconsistency and fraud. Cohn v. United State800rset 00., 93 U. S. 366; Spill v. Celluloid, etc., Co.; 21 Fed. Rep. 631; Florsheirn v. Schilling, 26 Fed. Rep. 256; Walk. Pat § 55. The foregoing considerations dispose also of the two remaining patents. l'nthj:llight of what was known 'at the date of their patent, it was surely Frederick Pentlarge and Philipp Hirsch to bore from both i:iiHesof the bung, thus locating the web at the center, or nearer .the center than before, Neither is invention shown iuthe Borst patent, iIi' view of lihe prior art; aqd,alsd in view of the article in the German 'paper of 1877,whiahclearly presents the idea of making the circular clit"and leaving the'c6're;rather than boring out the hole. The core is plainly an fdfthe plug of Rafael Pentlarge. The learned judge Who decided Pentlarge v. New York Bung ac B. Co., 20 Fed. Rep. 314, did not have the state of the art before him, and simply determined a question of under the statute, between the two patents in controversy. If the light disclosed by this record had been thrown upon that case, there is little doubt that he would have reached a different conclusion. No language can be employed which more appropriately characterizes the results reached by the patentees than that of the supreme court in Smith v. Nichols, 21 Wall. 112, 119: .. A mere carrying forward, or new'or more extended application, of the original thought; a change only in form, proportions, or degree; thesubstitutionof equivalents, doing substantially the same thing, in the same way, by lilubstantially the Same means, with bettlJr results,-is not such invention as. sustain a patel1t." There should be a decree dismissing the bill.
LA RUE v.
(Oz'rcuz't Oourt, 8.
New 'York. May 16,1887.)
PATENTS FOR INVENTIONS-IMPROVEMENT IN TELEGRAPH KEYS-CONSTRUoTION OF CLAIM.
Letters patent No. 270,767 were granted January 16,1883. to Edgar A. Edwards. for an 'improvement in telegraph keys, being 8 substitution of a torsional spring or strip of metal as the lever fulcrum, in place of the trunnions or pivots which were before in use. The first. second, and fourth claims of the patent made 8 "circuit-brelltking lever" an 'ingredz'ent in the combination. The third claim was 8S follows: "The combination in a telegraph key, of the