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
LA RUE 'V; WESTERN ELECTRIC CO.
lever, fulcrnmed upon .the torsional spring, with the adjusting screws for regulating the amplitude of the lever movement and retractile of the torsion spring, substantially as described." The defendants used a similar device in combination 'with a "sounder," without, however, any "circuit· lever," and contended that said third claim was limited to a "key," and, by Implication, to a "circuit.breakin!flever." It appeared that said Edwards spring was equally applicable to a 'sounder," without departing from the spirit or letter of the invention. Held, that said third claim was broader than the other claimsin omitting the" circuit·breaking lever, " and was fairly to be construed to include a "sounder" in its meaning, without restriction to a key-alone.
The combination of torsional springs with keys or sounders, as described in said Edwards patent, is .an invention which would not have occurred to a skilled artisan only. There was nothing in the prioratt to suggest it except to an inventor. A paten!> will not be declared void. for want of utility, at the instance of one who is deriving benefttbY upon its claims.
Arthur "'. Briesen, for complainant.
George P. Barton, for defendants.
COXE, This is an equity action for infringement of· letters patent No. 270,767, granted to Eagar A. Edwards, January 16,1883, and by him assigned to the complainant. The invention relates to instruments used for transmitting telegraphic' signals, and is said to be an improvement upon the well-known Morse key; the inventor substituting, as the lever fulcrum, a torsional spring or strip of metal for the trunnions or pivots which were before in use. The patent contaIns four claims. In the first, second, and fourth, "the circuit-breaking lever" is distinctly made an ingredient of the combination. The third claim is in these words: "(8) The combination, in a telegraph key, of the lever, fulcrumed upon the torsional spring, with the adjusting screws, H, HI, for regUlating the amplitUde of the lever movement and retractile resistance of the torsion spring, substantially as described." It will be observed that this claim omits "the circuit-breaking lever" as an element, and in this respect is broader than the other three. The infringing instrument is called a "sounder," and contains no "circuitbreaking lever," as this term is generally understood in the art. The complainant, however, insists that the sounder has a lever which breaks, not an electric, but a magnetic, circuit, and is therefore within all the claims of the patent. What the patentee invented, and unguestionably intended to secure, was a flat torsional spring, ribbed or otherwise, upon which a lever is fulcrumed, when, in any electrical instrument, it can be substituted for the pre-existing trunnions and spiral spring, and perform the twofold function of a supporting fulcrum and retractive spring. He distinctly says that he does not limit himself to the application of the spring to the key alone, as it is obvious that it may be used to replace the trunnions of the relay and sounder. He may, however, have so restricted three of his claims that they do not cover the instrUInent. used v.31F.110.2-6 .
by the defendants. It is not essential, in the present action, to decide this question. If it is held that the third claim is infringed, the complainant will derive the same advantage as if the decree 'declared the in- . fringement of all. The defendants insist that the patent is void for want of utility and invention, and that they do not infringe. But a word need be said regarding the first defense. Several instruments embodying the invention have gone into practical operation, and have apparently been received with favor by telegraphists. In fact, it appears that an employe of the defendants, Charles D. Haskins, has, since the commencement of this suit, secured a patent, dated November 9, 1886, for an improvement in telegraph instruments; one element of the combination being a torsional spring substantially identical with the patented spring, the only difference 'being in the manner in which it is fastened to the lever. This patent was assigned to the'defendants. It can hardly be said, then, that Edw8,rds' invention is without utility. That which is used is useful. A thing to be useless can have no utility w,hatever. A patent is never declared invalid upon this ground, at the instance of one who is deriving benefit by infringing upon its claims. Gibbs v. Hoefner, 22 ]31atohf.86,:19 Fed. Rep. 323, and cases cited. , Is the patent void for lack of invention? The defendants, for the purthe art at the date of the invention, hav,e introduced pose of in evidence. a number ofexhibits showing the manner in which telegraph keys were constructed: prior thereto. It is unnecessary to ,refer to these, as they do not contain the torsional spring, and add very little to the light thrown upon the prior art by the statements of the patent .itself. The exhibits which are the nearest approach to the invention are the mllgnetic "pole changer",and the "adjustable torsional'spring." .In the" pole changer," first known in 1881, there is a lever which oscillates between fixed points, and is fulorumed upon the free end of ,a non-adjustable torsional spring. The principal office of this spring is to form a supporting fulcrum for the armature lever. The retractile force exerted by it is very slight. If one of the supporting posts in the patented appa1'atus were removed, its similarity to the "pole changer" would be more apparent. The "adjustable torsional spring" exhibit is an enlarged model <if an instrument :made by one-of the witnesses in 1878. It consists of a fine wire, connected at each end adjustable brackets, a lever being suspended in the :center of the wire. It is not the purpose of the wire to cause repeated and regular oscillations of the enos of the lever. That it performs any 'torsional function is strenuously disputed. The wire is very fine; and as its ends are not firmly fastened, but to some extent are permitted to rotate in the holes of the brackets, it is not easy to see how it can be twisted to exert any appreciable force. It is enough to tiay that the matter is involved in doubt. Neither of these exhibits can be said to anticipate or otherwise to defeat the patent. 'It follows, therefore, that the patentee has made an invention; not a great one, certainly. but one entitling him to a position far above the plane of the skilled mechanic.' Torsional springs were, of course, well known; so were tele-
WESTERN ELECTRIC CO.
graph keys and sounders, minus this spring,-but the combination of the patent was never before used, and there is nothing in the prior art to suggest it, except to an inventor. To one who was a skilled artisan only it would never have occurred. Do the defendants infringe? They argue in the negative, for the reason that the combination of the third claim is. confined to a telegraph key, and,. by implication, to a "circuit-breaking lever;" and as they use the cotnbination in a telegraph sounder, and not in a. key, they do not infringe. They insist, further, that they do not employ the adjusting screws, H, H'. In regard to the latter suggestion the defendants' expert testifies: "1 find two adjusting screws having a relation to the lever of the sounder, similar to that of the screws, H, H', to the lever of the key in the patent; but in the sounder they do not practically have any effect upon the retractile force appliedJn the lever." The complainant's expert considers the functions the same in every particuJ,ar. .T,he court is satisfied that he is correct. .As, has been seen, the third claim does not contain the element of a "chcuit-brea]dng leveri" and, in view of the clearly expressed intention of the patentee to include other telegraphic instruments, it must be held to include the lever of a sounder. Fairly construed, the claim should read, "the combination in a telev;raph key or 8ou,nder," etc. To restrict it to a "key" alone, as that word is known in telegraphy, would be most and would unduly circumscribe the invention. No better illustration of this can be found than the following statement from the Haskins patent, before alluded to: , "The invention has been described in connection with a telegraphic sounder; but it is evident that thetorsion spring may be applied to the armature lever of any telegraphic recei ving instrument, or tothe lever of any telegraphic key, with<;,ut,departing from the spirit of the invention." Equally is it true that the Edwards spring may be applied to a sounder 'Yithout departing from the spirit or the letter of the invention. As the question of infringement was carefully examined by this court upon the motion for a preliminary injunction, (28 Fed. Rep. 85,) it is unnecessary to repeat what was then said. There must be a decree in favor of the complainant, upon the third claim, for an injunction and an accounting. As the motion to punish the defendants for contempt will probably turn upon a question of fact, which ought not to be determined upon affidavits, it is thought that this issue should also 'be referred to the master, and the motion held in abeyance until the coming in of his report.
(Oirouit Gourt, S. D. New York. May 17,1887.)
PATENTS FOR INVENTIONS-PROCESS FOR SHAPING LACE MITTS-PATENTABLE NOVELTY. .
The claim relating to a process for shaping lace mitts contained in letters patent granted November 9,1880, to Warren P. Jennings, for a mitt-shaping machine, is wanting in patentable novelty by reason of the prior known state of the art, and a bill to restrain infringement of said claim will be dismissed.
In Equity. Arthu'I'v. Briesen, for plaintiff. W. A. Jenner, for defendant.
WHEELER, J.This suit is brought upon letters patent No. 234,286, dated November 9, 1880, and granted to Warren P. Jennings for a mittshaping machip.e, the process of 'shaping lace mitts. and the mitts as shaped. There is no charge that the defendants infringe as to the machine. The c:;a,se turns principally upon the claim as to the process. That consists in first stretching the mitts lengthwise,and thereby contracting them at the desired point, and in then subjecting them, first to the direct action of steam, and next to heat, for the purpose of setting the fibers to the desired form. From the evidence in the case it clearly appears that similar articles were shaped by stretching them over forms, enlarging them where they were too small, and contracting them where they were too large, and then exposing them, first to stea.m, and then to heat, according to the method of the patent, for the purpose of setting the fibers in the desired form. The patent is for contracting the mitts contraction is desired, without mentioning enlargement. This contraction is precisely according to the old process. The only difference between the processes is that by the old process the articles were first made too small for the large parts, as well as too large for the small parts, and then correspondingly enlarged and contracted; while by the process of the patent the articles are first made large enough for the large parts, and shaped only by contraction where they are too large. The treatment of the parts operated ulJon is precisely the same in each. This is all that this claim of the patent assumes to cover. The machine has new contrivances for holding the ends of the' mitts, but they are not covered by this claim. The patentee invented means of applying the process, rather than the process, and this claim, upon this consideration, must fail for want of novelty to support it. The claim for the mitts themselves rests wholly upon their being contracted laterally between their ends, without reducing the number of meshes at their contracted parts. There does not appear to be any patentable novelty about this. Let a decree be entered dismissing the bill of complaint, with costs.