l'FANSCHMliDT V.KELLYMERCANTILE CO.
and, , others, Copartners, ,
(CirettkCourt, D.Minn68oUJ,. November 15, 1887.}
A patent of a WMh·board known as the" George" patent, numbered187,S42, and issued Febi'UllfY 27, 1877, consisted (>f a rrame of the usual shape for wash·boards and made with a rubbing surface constructed ,of a single heavy sheet of zinc with the lower edge wrapped tube,shape, about a supporting rod. Held, to possess no patentable novelty over the "Heflth Wash-Board" patent No. 168,252. issued September 28, 1875, which was very nearly like the former, only made with two overlapping zinc plates instead of, one; and as the evidence did not clearly show an invention by Ge9rge "prior to that by Heath, tb,e former's patent is invalid.
Pll.AgJ.'I9E IN CIVIL CASES..,..RlllHEARING-CUMULATIVE EVIDENCE.
PATENTS FOR lNvENTIONS-AN'rICIPATION-WASH-BoARDS.
Amotion to reopen a hearing for the admission of testimony which ia merely cumulative will not be granted. '
Ptackelton &: Carei'll.8,. for complafnants. TV. H. Burridge and. Warner &:Lay;renc6, for defendant.
NELSON J. This suit is brought against the defendant for an infringement of letters patent granted to David 1. George, February 27, 1877, "for improvement in wash-boards." The complainants claim to be interested in the patent and all rights of action that may have accrued. for any infringement of the same. The defendant denies infringement, but relies chiefly upon the defense of want of patentable novelty in the George wash-board. A vast amount of testimony is taken. After the hearing, a motion is made by defendant to open the case and 'allow the deposition of several witnesses to be taken for the purpose of giving additional evidence that awash-board, invented by Heath, to whom letters patent had been issued, was prior in time to theinventioll of George, and furnished all the information necessary to a skillful mechanic to construct the George wash-board. The complainants have offered testimony tending to show that the a.ctual invention by George was older than Heath's; which evidence has been met by the defendant, so that, if the motion is granted, the additionaltestimony would be merely cumulative. While it might be more positive in terms upon the fact sought to be established, the case, on that aecount, should not be opened. I deny the motion and shall decide the controversy upon the testimony already taken. I shall only consider the defense of want of novelty. If the Heath patent, issued September 28, 1875, is older than the George invell:tion, in my opinion the suit must fail. The George patent contains a single claim, viz.: .. In a wash-board, the corrugated metallic plate, B, formed of a single piece of sheet-metal. and provided at its lower end with a tubular enlargement,substantially as specified." The patentee claims a corrugated metal sheet with a tubular enlarge. ment made by bending and soldering the free edge at one end to the. body he says: ' of the sheet. In his
"This invention has relation to wash·boards, and it in a single corrugilted zinc plate,'inserted,jn,the groovell sides, bars, and top piece, ofthe frame, and supported from below by being bent around an iron clamp rod extending across the frame, which is thus effectively braced; whereby a very effective and economical is produced, as will be hereinafter more fully explained." goes on in qetail to describe how the frame is made, which, in general appearance, is similar to the frames of wash-bpards having woodenrubbing-surfaces,with some additional devices for conveniently holding the soap used in cleansing' garments; and then says: . . "Board, C, (which isa flat wooden board found at the upper end of the frame of all wash-boards,) is provided at its lower edge with a longitudinal groove, e, adapted to receIve the upper edge of a corrugated sheet-metal plate, B, the vertical of are received in longitudinal ways, f, found in the inner faces of the sides, a, of frame, A. Plate B, above alluded to, will be made of It single sheet of metal, preferably zinc, and will be corrugated, and the depressions on one of its sides will form the raised surfaces on the other. It will also be of sufficient thIckness to give it the necessary rigidity for resisting strain when 'in use. This plate will be secured in position as follows: Its lower edge will be bent over a suitable mandrel so as to form a. cylindrical tube, g, when its free edge is soldered to its body; and a metallic rod, C, having an enlarged head, h, is passed through registering perforations, i, in sides, a, and through tbe said tube, g.This being accomplished, a nut,j, is applied upon its screw-threllded projecting end and set up, thus drawing the sides forcibly together and clamping the corrugated plate between them, which, by this means, is held against all displacement." In other words, if I understand the specifications, the distinctive featUres of this wash-board arc; that the rubbing-surface is tl)ade of one thick plate of corrugated zinc, fastened to the fra,me by fitting into serpentineshaped grooves in the side pieces, and a groove in the toppiecej and at the bottom a cylindrical tube is made by bending the plate and soldering the free edge to its body ,and a rod, having a head at one end and threaded at the other. is passed through the frame and the tube. A nut is then applied Ilnd set up, and by this means the plate is firmly held in place. In the Heath patent, No. 16.8,252, the clai Ill is"The screw-rod, C, and corrugated zinc plates connected therewith by a lap" joint, as specified in with the grooved flexible frame piece, A, and cross-bars, BB, as and for the purpo/le specified." This patent was issued September 28.1875, on application made May 8, 1875. 'l'he George patent, No. 187,842, was issued February 27, 1877. Heath, in his ·specification, says: "My invention relates to the construction and arrangement of parts as hereinafter described, whereby the corrugated zinc plates, which form the rubbing-surfaces of the wash-board, are secured together, and to the flexible grooved frame. ". He then in detail describes his wash-board, the rubbing-surface of which consists of two plates of corrugated zinc, substantially as follows: The frame is made of a flexible wooden or metal bar bent in the shape of a frame of an ordinary wash-board; and at the sides are two grooves to receive. the side edges of the plates,and at the tapis one groove to re
KELLY MEItCANTILE CO.
ceive the upper edge of one plate, which extends so as to form the upper part of the wash-board. The upper ends of the zincs are confined tween two cross-bars secured together by rivets. The lower edge of one of the zincs is bent)around a cross-rod which connects the ends of the frame piece, and is made to overlap the edge of the otherziI).c. This rod has a thread on one end, which adapts it to be readily removed to allowrepair or substitution of zincs, and by it the zincs may be clamped more or less tightly as required: .. . In my opinion the onl,' substantial difference between the two wash. boards is the use of two zinc plates for a rubbing-surface in the Heath patent, and only one ihthe George patent. The lap-joint in the Heath patent, made by the lower edge of one zinc being bent around the rod and overlapping the edge of the other zinc, forms a tubular enlargement at the bottom of the perhaps not as soHdand firm as in the George patent, but still a tubular enlargement performing substantially the same function. The structure of the boards is substantially the same, and I do not see that there is any difference in the two boards with the exception of the rubbing-surfaces. If Heath is the prior inventor in view of the state of the art, it cannot be said that there is patentable novelty in George's invention. It required only mechanical skill, and very little of that, to' determine that, if. thick zinc could be obtained, one plate would serve the purpose of a rubbing-surface as well as two. All that George did was to make a wash-board with one plate instead of two, and' solder the free edge of the lower end, after being bent over a rod, to the body of the plate. After Heath's patent there was no invention in thus constructing a wash-board. The file wrapper and contents show that on the application of George his broad claims were jected for the reason that Heath had already anticipated them, and it was only after repeated eftorts that he was granted a patent; and his original claims presented were all rejected for the reason that they were met by patents of Minor & Merrick, No. 22,087, and Heath, No. 168,252. I think the. single plate used by George is the equivalent of the two plates used in the Heath pate,ot. The Heath patent antedates that of the complainant, George; but counsel urge that George made a wash-board with a single plate of thin zinc, in September, 1874, which he found not serviceable, and good for nothing. The proof to estahlish the fact that he constructed a wash-board with one zinc plate for a rubbing-surface is not oatisfactory. It is not cogent and clear, but is uncertain and conflicting, and does not carry conviction to my mind of its truth. Taking all the testimony submitted, I am of the opinion that the invention by Beath was prior in time to the construction of a wash-board by George as is claimed. Decree for defendant.
MEYERS and 'others
N. iJ.--Ca,li!prnia. October
The fourth and fifth defenses' tc> suits for infringements of patents. authorized to be illllde by section 49?Q. ,Rev.. St.· are separate and independent defenses; and each requires its appz:opriate notice or in order to let in testimony to establish the defense,
(Syllaott8 01/ the (Jourt.)
Action in equity to enjoin the infringement ofletters patent No. 141,. 580, to the complainant Louis Meyers, issued on the fifth day of August, A.' D. 1873, for" a glove-fastener.'" The claim is as follows: "I claim as my invention, and desire to secure by letters patent, the glove fastener, consisting of·a cord, B;whieh;is fastened with both ends to one flap otthe glove,.and drawn thro1,1gh.;h!)les in:theother flap, to operate in nation with the button or as set forth. II The respondent is a glove manufacturer at San Francisco, and practiced the invention under a license from complainant, and paid the royalties therein provided j but at its termination he declined to renew it. He continued, however, to practice tbe invention against the will of complainants, and thereupon this suit was commenced to .enjoin him. A preliminaryinjunction was granted at the commencement of the suit. The answer of defendant presents three matters of defense. It alleges: "Fi1'st, that the complainant Louis Meyers was not the first inventor or discoverer of any material or substantial part of the device for fastening gloves, covered by the letters patent mentioned in complainants' bHl of complaint; second, that the said device for fastening gloves so covered by said letters patent had been in public use or on sale in this country for more than two years before the application of said Louis Meyers for a patent therefor; third, that the defendant has not infringed the patent of the oomplainants." The provisions of section 4920 of the Revised Statutes, under which the first and second ofthe defenses are pleaded, are as follows: "(4) That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented. (5) That it had been in pUblic use or on sale in this conntryfor more than two years before his application for a patent, or had been abandoned to the public. If anyone or .more of the matters alleged shall be found tor the defendant, jUdgment shall be rendered for him, with costs." J. H. Miller, for complainant· . Gray &: 'Havens, for defendants. Before SAWYER, Circuit Judge. SAWYER, J" (orally.) In this case there is really only one defense that is available, and on which any testimony was taken, or could be taken under the answer, and that is, as to the prior public use for two years before the application for the patent. The fourth defense under the statute, that it is not new I and the invention has been made before, is a distinct defense from the fifth, and the defendants have given no sufficient