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
one catch over either: of the adjoining o:Qes. neldnot to bejn,friugedby an old aDd'well·kIio'wn device of a latch. or pin applied to this purpose. '" ", , Stout & Underwood, for complain'ant. " Chas. G., Page, for defendant. , BLODGETTf}.This isa bill inequity to restrain the ,alleged infringemep,t ,of a" April, 27, 1880, to the complainant, Wenzel !oepfer, for a,"m t-kiln." The'P9rtion of the patent ip. controversy in this case to certain devices for constructing, suspending, and dumping t!?,e floor.s of malt-kilns; and. the device described' and shown consists oOhe:floor of a malt-kiln, constructed in sections or strips of about 12 inChes in width, and extending the length ofthe kiln, so that e&9h section,can be tipped or turned'into a vertical positioh, by which the malt be dumped or'dl'opped onto'the 'next-floor, or into a recep,tacle1;le,lo}V. , He calls the,se s¢ctipns "trayst,and they are made of wire llletal"so as to for the, circulation of the wsrm air through the floors,' and 'the malt resting trays are by making a of strips,.about section.s,.say 12 mches, through the mIddle of WhICh IS, run a or tl1tmg,rod;. ,and-qpo,n frame, wire gauze or perforated stretched the floor., Theend plecesofthe frame are constructed, ,witn jotir,na,ls which are 'intended to rest upon .l,mper sup,ports in the giln; andthr6ugh this jomnAl'is, Ii square opening of the size' to receive the or 'lS square· .and extends the entire length oithe frame, and, if the trays are so such 'supby: pon a cross ,tttnber or b,eam. 'One ,poti, IS end of this tilting-rod ,or through t!;WflqQ Wall of tb!3 kiln, and has a crank attached to it, so that the section can be tipped from a horizontal into a vertical position by means bf'thls crank;, and by -connecting the cranks 'of the adjacent sections together by a rod or link" and by means of a lever operating, thiS_IDd, or link, all the sections, or so many of them as are so connected, can be thrown from a horizontal into a vertical position by a single movement of this lever, whereby the contents of the flool'>,wilJbe durp.ped, and by a reV;l'!tse movement of this lever the sections will be brought back to their horizontal position, so as to form a contiI:\uous "", .,',. \ Infringement is charged in regard to the first two claims of the pat-ent, which are as follows: "(1) Inaimalt"lirier, a removable tilting-tray, provided witb Journals hav'ing oearings i,nthEi end walls of the kiln, ,and .on an internH!dlate bracket or btackets, the.jolli'n,als of the trays having polygonal opellhlgs for .the reception of a polygonal tilting-shaft, in combination with a corresponding tiltingshaft, substantia11y as and for the purpose specified. (2) In a malt-drier. the -combination-of three or more tilting-trays, provided with tilting-shafts having crank-arI:lm. a coupling bar or rod for connecting the crank-arms of the
''1'OEF1<'ER 'V. GOETZ.
tiltlng-shilft8,and a locking"hook, pivoted to the' central tilttng-shaft, and adapted to fit over either ,o:f,the otheri the. whole arranged SUbstantially as and for thepnrpose specified." The defenses interposed are (1) that the patent is void for want of novelty; (2),that the defendants do not infringe; The proof shows, without dispute, that perforated floors to malt-kilns, so 'arranged that the sections or trays could be tilted or tipped in such manner as to dump the contents, were old at the time this inventor entered the field; and it also appears, without dispute, that it was old in the art totnake the floofs open, either with wire netting or perforated iron' plates; to allow the free circulation of the heated air through the cOntents df,'the kiln. A 'perforated malt-kiln floor, so arranged as to dump the eontents by tilting or tipping, is shown in the patent of November13, 1866, issued to Joseph Gecman; and on September 15, 1867, another patent was taken out by Gecman, in which he shows a perforated floor in sectiotlsor trays, each tray balanced upon a rock-shaft so as to be "silsceptible of being tipped or tilted, and thus discharge the malt upon the same as desired," and each of these supporting rods was cranked (a.t one end, so that the trays could be tilted by the operations of such cranks, and these cranks Were so connected by a link' or rod that all the trays could be dumped by one movement of a lever operating this rod; and substantially the same arrangement is shown in a patent issued,to one Rhodea in January, 1869, and in another patent issued to Gedman, dnted March 25, 1873. The proof also shows that malt-kilns were constructed and operated with some degree of Success under the Gecmanpatents; and the only practical objection to the kilns constructed under the Gecman and Rhodes patents seems to have been the lack of strength in the wire netting or perforated metal of the trays to carry the requisite load of'malt; and hence the outer edges of these trays would ,sag or bend,or the trays would twist by the operation of dumping. Gecman's patents showed a malt-kiln floor in sections or trays, each, section resting upon a rockshaft or tilting rod cranked at one end, and the cranks so arranged with links and levers that the trays could be dumped simnltaneouf\ly. The complainant by his patent shows and describes 8 malt-kilu floor made in sections or trays like Gecman's, each section having a cranked rock. shaft by' which It can be dumped; but he constructed his trays by first making a frame strong enough to hold the wire netting or perforated iron plates which formed the surface of the floor, 80 as to avoid the difficulty which had been met in the use of the Gecmantrays, and suspended this frame in the kiln by means of journals resting on proper supports in the etlds of the kilns. and on intermediate brackets, when the length of the sections was stich as to require intermediate support, and through the length of this frame he ran a square rock-shaft or tilting-rod, which passed through square holes in the journals; and, this tilting-shaft being cranked at one end, the trays could be dumped by meanS of connecting rods and leve1'llj the same as was shown in Gecman's floors. This feature of, the device is covered by the first claim of the patent,
which is fortha combinationofthis'square (or polygonal, .88 he calls it in the daim) tilting-shaft with his tilting section. The complainant also shows in his drawing's and specifications a means for locking the trays, either in the horizontal or vertical position, by a hook pivoted to the central tilting-shaft, and so bent and arranged as to catch over the end of either,of the other shafts; and in his patent is covered by the second claim. The defendants construct a malt-kiln floor in sections or trays. and the sections are made in substantially the same manner as tl:\oseofthe complainant,-that is, bycGnstru<Jting a frame of light iron about as wide as the tray, and upon this frame fastening a sheet of perforated metal to form the surface of the floor, and through this frame longitudinally extends a round rod or rock-shaft, the ends of which form. the journals which rest in proper supports in, the sides of the kiln; ,this rod being fastened rigidly to the frame with pins or set screws at points where it passes through the cross-pieces of the frame, so that the tray is rocked do not or tilted by rocking or turning this shaft. But the extend their trays'or sections the entire length of the kiln, and, operate them by a crank, working on the end of the tray; but .they putin their floors in sections, each section being of the width of the floor, and composed of enough trays to reaoh ftom side to side of thtl kiln; and the trays in each section are dumped by means of a dependent lever or crank fixed to the under side of the trays, and near the middle orthe trays,thecranks of an entire section or series of trays being connected. by a rod or link which extends through one side of the kiln, where it is operated by a IElver, so as to dump all the trays in a section by one movement. For practical use, the defendants make their trays about 12 feet long, ,and place sections composed of their trays end to end, so' that a floor 36 feet long would be made of three sections of trays; and these sections are supported, except at the end walls, upon brackets extending upward from beams or joists running across the kiln i and they lock their trays in the horizontal position by a latch which holds the operating lever in a vertical position. The only substantial difference I can Hee between the trays constructed according to the complainant's patent, and those made and used'by defendants, is that defendants.llse a round rockshaft where complainant shows a squ,are or polygonal one, and the ends of defendants' rock-shaft form the journals upon which the trays turn. Complainant fastellBhis rock-shaft rigidly to the tray by passing it ,through square holes, while defendants pass theirs through round holes, and make· it rigid with the frame of the tray by pins or set-screws. If complainant had been the first. to make a tilting-floOl: in sections or trays for a I shOUld be inclined to consider the Ghanges made by the defendants as merely colorable, and the equivalent of the devices .'3hown by complaiaant,-that is, if complainant had properly covp.red his invention by his claim; but the oomplainant has seen fit, as it seems to me, to limit his patent toa square rock-shaft, whi0h must pass through square holes in the journals. He says in his specifications: "These journals I make hollow, with square bearings, for the operating-rods, F,
which are also square." And again he says: "To bring about this dumping, I provide square rods, F, with crank arms, J, and pass the rods, F, through the journals, E,l' etc; and, in explaining the utility of his device, complainant say;s: "Heretofore it has been impossible to use very long iron trays, and to operate them from the outside, as it was difficult to control them, owing to their liability to spring and twist. Long wooden trays are open to the same objection, and have had to be dumped separately by an operative who entered the kiln. But by means 0/ my square rods, P, I can apply the dumping force equally along the entire length of the trays, and, as there is no keying to be dohe, there will never be any danger of the parts becoming loose or getting out of order." .' And, the claim is for acornbination of a tray, the journals of which have polygonal openings for the reception of a polygonal tilting-shaft, with a corresponding tilting-shaft,....,..that is, a square or polygonal tilting-shaft,-:-rso that I can no escape from the conclusion that the complainant has, by his specifications and his claim, limited his patent to a tilting-trItY, operated bya square or polygonal tilti/lg-shaft. It is wholly irr.elevant to inquire whether cpmplainant was obliged to limit himself to this square shaft by the state of the art, or the ruling of the patent.office. It is enough to say that he did so limit himself by language which cannot be misunderstood, and will admit only of this construction. The defendants use a rpund tilting-rod in place of the square one used and described by complainant, and I cannot, therefore, say that defendants use the combination covered by the first claim of complainant's patent. It may als,o be said that Gecman showed round tilting-rods in his 1867 patent; which, being now common property, the defendants have the right to use so long as they perform the same function in defendants' device as they did in Gecman's. It is obvious that, in order to enable this rock-shaft or tilting-rod as used by Gecman and the complainant and defendants to operate to turn or tilt the tray, it must be so rigidly to the tray as that, when the shaft is turned, it will turn the tray, and complainant seems to have conceived that the best, if not the only, way to do this, was to make the shaft square, and pass it through square openings in the frame of the tray; while defendants took the old round shaft of Gecman's 1867 patent, and passed it through round holes in th.e frame, and made it rigid to the frame by keys or pins. Both were old and well-known modes of making a rod or shaft rigid or integral with a frame which it was to operate or carry; and it may be doubtful if, after Gecman had shown the function of a rock-shaft, in connection with a section or strip of a floor, for the purpose of tilting such section, there was any invention in either of these modes of fasteiling the shaft to the tray · . The first claim of this patent does not cover, nor purport or attempt to cover, the mode of strengthening the Gecman section, so that its edges or corners .would not sag or bend, as it is said· the Gecman floors did, but
covers the square shaft, in combination with a' tray which must be journaled in the end walls of the kiln, and on intermediate brllckets, which journals must have polygonal openings for the reception of a polygonal 8haft. No claim in the patent covers the mode of reinforcing the wire netting or perforated sheet metal which forms the floor, so t,bat it will not bend under the load of malt put upon it, nor the intermediate supporting bracket; and hence, if there was any invention involved in the construction of this supporting fraine or the bracket, it has been aban.. " . doned to the J>ublic. As to the complainant's claim, for the locking by means of the hook pivoted on one shaft, and arranged to catch over either of the adjoining ones, it is enough to say that defendants do not use a hook, but have adopted the old and well-known device of a latch or pin; and, while this hook device of complainant may be new, it cannot prevent defendants from adopting the latch any more thana new door catch would prevent a man from using the old fashioned latch or pin to fasten his door. ., I am therefore of opinion that. defendants do not infringe either of the claims of this patent, and complainant's bill must be dismissed for want ofequity. '
BURDSALL. tI. CuRRAN
(Oircllit Oourt, No D.lllinois. July 25, 1887.)
PATENTS FOR INVENTIO:Ns-ASSIGNMENT-REISSUE-EsTOPPEL OF PATENTEE TO CLAM· b'vALIDITY.
Where a patentee has assigned 'his patent, he is estop.ped. in an action . brought against hiw. for infringement by his assignee, from denying the valid'ity of reissues of his patent, though such reissues were obtained since the as"!ignee acquired an interest in the patent, and the latter might have known that they were void when he accepted them.
SAME...,...PRACTICE ON ApPLICATION. FOR REHEARINa-:-NEW EVIDENCB.
Uvon an application for rehearing in a suit for infringement df a patent, the.JDvalidity of the patent being in the light of some additional evidence &S to the state of the art. but. no reason beingaslligned for. faiJure to produce thill evidence at the hearing, held, that the evidence would not be considered.
Application for Rehearing. Fot original decision see 20 Fed. Rep. 839. Jease Oox and J. N. Jewett, for defendant. We8t &-. Bond, for'cornplainant.
BLODGETT, J. This is ari application fora rehearing. The original decree was entered July 16, 1883,'fi:nding that defendants had infringed the first, second, third, fifth, sixth, and seventh claims of reissued pat";' ent No. 8,840, and the first, second, fifth,sixth, and seventh claims of reissued patent No. 8,846. The niotion for rehearing 'is based mainly upon the ground that some of the claims in thesereis8uedpatents; which