EMERSON, :SMlTH&lCO. 11.
the dfe'fendimts have not, made, such grooves hi the iron plate on which the slab ofcelluloirl rests, as 8Jespecifically described in the patent of Hyatt, they, have used: ain' iron plate perforated by,holes with ,screw threads" with plugs of zylonUescl'ewed into those holes, and gepressioll& left around the heads of those ;plugs, into which ,portions of the slab Of celluloid are pressed. The pressure not only welds ,the slab of celluloid to the celluloid plugs, but it forces portions of it in1iothe'apertures around. the heads ofihe plugs. The evidence leaves no doubt but that the<ie-fendants intended and expected by this contrivance to take advantage of the tension of the celluloid while cooling and shrinking, and that, they accomplished that result. ; , The facts, tbatthe defendants apply the heat first from above and 'a£terwardsfrom below, while,the plaintiff applies the hi'lat first from beI()w and ll;fterwards, froro aboive;: and that the sides or 'qhase or. mouldaJ;e not, like those: of the plaintiff's;made'h\:Sllow:for the putpose of containing ,ateam" do !not constitute any substantial differencem theprooess useeI'. by bothpil.rties. The case in this respectfalls within .the'principle of the snpremecourtinPilghman v.l'tot;Wr, 102 U.'S.707,.,SOiand oftbia'oourt in Machine(k)., v. J.51Fed. Rep; 390. r : . : ,I Doollee for the plaintiff.
[ I .j
(Owcuie aourt,w: 'l).Pennsylvania.'Angust 16,1887.),.
PATENTS ll'OltINvENTIONB-"-EFIlECT OF FOREiGN P A T E N T . ' , : '
,Upon application !MtLy 31, 1;871;1e.tten of, t)le United:S...teelf01' a,Il- Ip,v.e,lttti,ol\, 6, 18'(2" ,On October the,JJI.v.entor.catised apphcMlonto b'e made In England for 'letters patent fot'iJ,ie ,'ilame 'iu¥Eiriticm,. and 'Ii provisional specificatioh!Wl1stben filed.PlirsUlIJl1tlto tli,'is apPlib,ation, Je,ttlJrllt,P,atent of G,reM Bd,tain, i, .!l, Ap,ril3, 1872, ,and dated 12, 1871. The eomplete. speqificatiou,' tli.e English patent was 'filed, AprI112, the sameh1l.Vlllg beetilllil}sd1'beU March 22, 1872. Beld/thut: the iuventlOnWall not "tirlit patented; :C}f to , be; pllit.$!ited,'1 in within of the act o,fJuly 8, 1870., an;d the t1l,e UnIted States the antedatJng Of the foreIgn patent,' " ,;" , '
,In Eqliity:' 'Surplea:. Wm. L. PiiJice, for coi:hplainants. Bakewell,&: Sons, for defendant.
,J. The plea goes to the right of the <lomplainant to main· tain its bill as to one of the Batents sUEld on, letters patent to ,Tames E.Emerson, No. 123,466; the allegation being that prior to the gra,nting thereof the invention, ,therein described and cIaimel:i had beell patented;or caused. to be patented, by said Emerson in Great and that this foreign patent; an<i hence also the patent in suit, .ha4exp4'ed
on:October 12; 1885, before· the suit ,was brought. The twenty-fifth section of tl}e act of congress' of JulyS, 1870, (under which the patent sued on 'wag; ijasued,) ,provides 'fthat no person 'shall; be debarred from receiving a pltteJ;lt for his invention or discovery,nor shall any patent be deby reason of its having been first patented, or caused to be p'll,tented,' in a foreign country: provided, * * * ,that the patent shall expire at thesa'me time, with the foreign patent; or, if there be m0re than! one, at the same time with the one having,the shortest term;
'J,; , ,
" .u\tthe hearing of the plea the following recited facts were admitted or sMwn, viz.: On May 31, 1871, James E. Emerson made application United States for letters pat,eI)t for an improvement in saws, and in :pUJ:lsuanoe of this applicatiQn letters patent of the United States No. 123,48-6', Ifor said invention, were granted to Emerson, on Februa.ry.6, years; '.,OnOctober'12, 1871, Joseph EI.. licott R0ltnes, as agent f(i)r Emerson, made applicationdri, England for letters parent for said invention;;and then filed in ;the' dffice of the commissioners 'of 'patetltsfor Great, Britain a: provisional specification. Pursua't1t' letters Great Britain, f6r said invention were granted to Holmes, and sealed April 3, 1872, and dated OctOber 12, 1871. The complete specification for the English patent'.was filed April 12, 1872, the same having been subscribed by the patentee on March 22, 1872. The act which then regulated the granting of letters patent for inventions in GreatBritain is that of Julyl, 1852, (15 & 16 Viet. c. 83; 91 British St:at bi.'i'ge, 591'.) Referring to this act, it will be found that by its Jpe applicant for patent for an invention may file with his 'petition either a "provisional specification," i. e., one simply" describing the nature of tQ.e said invention," or a, "complete sped'npation;" Ifa complete specification is filed, the invention is not only for the ierpl of, six from the date' of application, but ,during that period ,the applicant is:clothed with the "li,ke powers, rights. 1U:i'd privileges" as if lettets patent had already issued.' But, where a. is fi,led" it is to be referred tQ the law officer: .:,ybo, if Batisfied, will 'give a certificate of allowance to be filedlu the of the commissioners of,patentsj whereupon, for the said term of six monlhs, 'I provisional protection" is: to the applicant, i. durwithout prejing that term the invention may be "used and udice to any letters patent to be granted for the same.", Within six months after application, UpOll the warrant of the law officer, the letters patent are to be granted; and they may be sealed and bear date as of the day of the actual sealing' thereof, or of any other day between the day of applicat.ionand the day of/mch sealing; "provided always that, save where such letters patent are granted for any invention in respect whereof ''lrfcOmplete'specification has been deposited upon the application for the 1iltulE; undet thisatlt, no proceeding tt.t law or in equity shaill' be had upon letters respect of any infringement committed before the "W!i'hiewereactuallyg'ranted." ld.413, § XXIV.
TOEPFER V. GOETZ.
The question now to determined is whether before the granting to Emerson,'oh February 6,1872, of letters patent of the United States, the Emerson invention had been patented in Great Britain, within the meaning of the twenty-fifth section of the act of 1870. I have no hesitation in holding that the invention had not been 'So patented. No opinion need be expressed as to the effect on the life of a United States patent of the :previous filing in a foreign country of a complete specification, whic4, tho;\lgh in advance or the grant of the foreign patent, yet confers upon, tll!3'applicant the like rights as if letters patenthad actually issued. Thecou,rt'is not dealing with such a case. Thefiling of the provisional ,on October 12, 1871, had merely temporarily secured to of saving any Holmes "provisional protection," within the letters patent'to be granted from prejudice, by reason of the inteIjUeiliate use and publication of the invention. Clearly, before, the actull1 sealing of the English patent, on April 3, 1872, Holmes was not inv'ested witllanyof the powers, rights, or privileges of a patentee. ' Nor of any Ill<;>ment that the English patent was dated as of is, O¢to'\)er 12, 1871. That date, was an arbitrary one: It gave to the inopera,uon. Much less,. then; is the life of the United, f:)tatespatent issued before the sealing of the foreign patent to by the of the latter. Telegraph Co. v. Telegram Co., 23 Fed; Rep. 340, 343. In none of the cases on as sustainingthe plea was the question passed on; nor do I any deCision inconsistent with the conclusion the court has reached. On the other hand, that conclusion what Mr. Justi?e STRONG said in Smith v. Dintid Co., 93 U. S. 498, VIZ.: "Of the Ji;nglish patent of Charles Goodyear, it is to say that, though the provisional spellification was filed March 14, 1855, the complete specification was not until the eleventh of September follOWing. It was therefore on the last-mentioned date that the invention waspatented.." The plea is overruled.
GOETZ and another.
(OirC'Uit Oou,t, No D. IllinoiB. July 5,1887.) L
PATENTS FOB INVENTIONS-MALT-KILN-lNFBINGEMENT.
Letters patent granted April 27, 1880, to Wenzel Toepfer, for a "malt·kiln,· not to be infringed by a device for tilting the sections of tbe floor of a of ,a round tilting-rod or rock-shaft, passed through the seetions.to be tilted; th.e patentee having limited,his claim to a, square or polyg' anal rock-shaft passlDg t1).rough square holes In the journals.
, A claim in the above patent for a locking device to fasten the levers used 'for tilting the fIoorsections of a malt-kiln, by means of a hook pivoted on v.31F.no.14-58