'Jdl1Ii:,Du Bois Bnd Arthur Kirk each' filedapplieations in" the patent-of-fioo'foran improvement in bear-trap dams; as described in, the clailIlID here. Theywerendjudgedto interfere with, each <>thel', :and , 'an was accordingly declared between Kirk and, Du Bois. Afterthetakine: of testimony and the hearing of the patties, the exam,inerQf'interferences decided "the questionof priorityofinventionin favor of Kirk." From this decision DuBois, in writing,wllivedhisright of appea1.Now, although this decision WIlS not concltisiveagainst Du Bois, 'yet the decision itself, C0upledwith his acquiescence iii it, is strongly ,persuasive that it WIlS right, Betan. avermentof decisive 'significance is "Illadein the preliminary statement by Du Bois'·filed in'pursuance oithe ,requirement of the office. In that he says "that as yet (October 10, "1881,) he has made no model ahd has built no dam simila.r to that shown in his pendiilg case." , How, then, is it credible that the contested invention could have been embodied in the chamber of commerce damas eady as December 23, 1879? In view of all this, we must oonclude that the testimony in behalf of the defendant is of the m:ost 'doubtful character, and that the weight of all orit is'with the complainant; and that thm part of the defense must fail. (3) Hils the defendant infringed the complainant's patent? The 'proofs, in our judgment, demonstrate that he has." But we 'do' not pr<>pose td 'diseussthis question at any length or in 'any detail" ,: It is sought to differentiate the com plainant's and the defendant's m:Hh6da by the argument that the complainant's provides for the overflow of the surplUs water: on the' side of the dam opposite to that where it enters iti while'in the defendant's the overflow is on the same side at which the water enters. But the difference in location is immaterial, as the function perresult attained, and the mode of operatioIl, are the same, So formed; 'far as the Elssentialpurpose of the invention is concerned. . :.. Upon the lYh<>le case a decree must be entered in favor of the complaitiant for an injunction and account, with costs.
. HOLMFB ELECTRIC PR01'EC!'IVE Co. 'D. METROPOLITAN BURGLAR:, ALARM Co.
(Oircuit OOU'l't, 8. D:N6tD YO'I'k.
December 31, 1887.)
In an action for the infringement of letters patent .No. 120,874. for an fmprovement in electric linings for Bafes, it appeared that the alleged invention consisted in placing the electrical apparatus on the outside of the safe, instead of the inside, as had been dOllelo:ng before the patent was obtained. Held, . that it was not an invention merely to find a new position for the electric lining, the device remaining the same. .. ; ..' . 2. S..u ni:-ABANDONMENT-DESCRIPTIOI( IN FORMER PATENT. . ' In an action for the infrin$ement of letters patent No. 120,874, for an fm. provement in the electric limngof safes, it was conceded that every featlire of the. patent had been described in a patent issued the year before. to the same patentees, though not included in the claims therein. There were no
HOLMES ELECTRIC P.
co. V. METROPOLITAN' BURGLAR ALARM 00.
words of reservation in the former patent. Held,; tliat this was an abandonmentofthose features to the public, which could not be reclaimed, and a pat· ent Bubsequently granted, covering them, is invalid.
In,letters patent No. 120,874, for an improvement in electric linings for sllfes, the plaintiff claimed "a safe or vault provided with an electric outer surrounding or coveringit, "etc. A patent issued a year before to the same patentees contained a claim for "the combination of an electric envel·, o,P,e or lini,n,'gfor safes. vaults. and other structures with an instrument," etc. that the claim of the later patent is covered by the claims in the former patent, arid exoired with it. , ,,'
Plaintiff took out a patent in England for an improvement in electric .lin;lngs for safes. Subsequenfu' a patent was taken out for substantially the, same device in America. Whether the American patent expired with, the English patent, even though it contained some additional improvements, in, view of 00. v. Seller,. 8 Sup. Ct. Rep. 117, Action for infringement of patent.
S. A. Dwncan, for complainant. G. G. Prelinghuysen, for defendant.,
J. The defendant is charged with infringing letters patent No. 120,874, granted November 14,1871, to Edwin Holmes and Henry Roome, for an improvement in electric linings for safes. The alleged invention consists in placing the electrical apparatus on the outside instead oion the in8ide of the safe. The claims are as follows: "(I) .A. safe. or vault provided with an electric outer lining surrounding or covering it wholly or in part, and insulated therefrom, and protected, substantially as herein lihown and specified. "(2) The exterior inclosure. B, made of the parts band c, substantially as herein shown and described, to be applied to a safe or vault in the manner specin.ed." The defenses are-Jilirst, lack of novelty and inventionj second, that the invention is fully described and claimed ina prior patent to the same patentees; third, that the patent expired with the expiration of a prior EDglish patent for the same invention. Infringetnent is not disputed. Prior to the patent it was old to protect articles of value by electricity. Buildings and rooms had been protected by placinp; the conductors of electricity on the outside, and safes had been protected by placing them on the inside. This being the state of the art, these patentees erected around the safe or structure to be guarded an exterior case of wood or papier macke, to the inside of which is attached the electrical lining, ' or it may be applied to the surface of the safe proper, without the use of art outer caSing. In other words, the essence of the invention is the new position given to the old electrical apparatus, without any reference tothe 8pecial manner in which such apparatus is constructed. It is by no means important that the appliances described in the specification be usedj"any "electric lining" located on the outside of the safe is within the claims. AP,'counsel and experts all concur in the foregoing interpretation, it is safe to start with the proposition that the invention relates only to the position given to the old apparatus; its essential feature being the change in the location of the protective lining from the inside t!>
outside of the safe. Was it invention to do this? An examinati""n of thedecisiohs pronounced in analpgous case!'! will aid in .the proper :letermination of this question. . In Railroad v. Truck Co., 110 U. S. 490, 4 Sup. Ct. Rep. 220, it was held not tobe inVfmtion to place a swiveling truck, previously used on In Harwood v. Railway cars, under the forward end of a Co., 11 H. I.... Cas. 654, no patentable novelty was found in the substitution of the fish-plate joint for the dangerous chair joint previously in use, similar plates having been used on bridge tim,bers. The men who made these changes introduced into the art of railroadingimprovements the great value of which is unquestioned. A railroad operated without them now would be regarded as·a, curious relic or forgotten years, and yet the men whose ingenuity created this revolution were refused patents because they simply placed old devices in new situations, without change of result. In v. Railroad Co., 114 U. S. 149,5 Sup. Ct. Rep. 777, it was held not to involve imrention to attach a mirror to the front hood of a street car, so that the driver, without turning around, could see the interior of the cllr, although no one had ever employed a mirror in this ona street car,before. In Bush v,. Fox, 38 Law &Eq. Rep. 1, the patElDteesought protection for ,an illgeniously constructed, caisson by which workmen, under the surface of water, were supplied under the surface with fresh air; .but the same contrivance had been of land in a similar way, and patentability was denied. In Hailes v. Stove Co., 8, Sup. Ct. Rep. 262, (Sup. Ct. Dec. 1887,) Mr. Justice BRADLEY says: "But we fail to see that any inventive power was required to apply the same fire-pot to a different kind of circular stove. Thatno inventionwllis required seems to us too plain for argument." So thesupreme court has decided that it did not require an exercise of the inventive faculty to place a dredging screw in the stem of a boat which had previously been located in the stern, (Atlantic Works ,v. Brady, 107 U. S. 192, 2 Sup. Ct. Rep. 225;) or to preserve meats and fruits by a process which had been similarly used in connection with other perishable sub-; stances, (Brawnv. Piper, 91 U. S. 37;) or to transfer a fuel magazine used in stoves to a fire-place heater, (Heating Co. v. Burtis, 121U. S. 286, 7 Sup. Ct. Rep. 1034.) See, also, Miller v. Foree, 116 U. S.22, 6 Sup. Ct. Rep. 204; Pomace-Holder Co. v. Ferguson, 119 U. S. 335,7 Sup. Ct. Rep. 382, and cases cited. The rule deducible from these authorities, and many others that might be cited, is that it is not invention, the subject being the same, to find a new position for an old device, unless there is substantial difference ill the manner of its operation, and some new and useful result is produced. The new application may be an unquestioned improvement upon the prior art, and supersede it in the market. The machine may work faster and better in the new position, and yield a larger product, the result, may be in every way more satisfactory; nevertheless, if it be in fact the old machine or combination working in substantially tlie old way, and producing substantially the same result, there is nothing of which to predicate patentability.
P. CO. 'IJ. METROPOLITAN BURGLAR ALARM CO.
In order to'obtain a estimate of the patent in suit it iswiae, t6 keep these rules in view, and, also to divest ,the mind of the idea thai there was anything or unusual in changing the location of an "electric lining," as distiriguished from other proteotive linings then in use. The notion of guarding the safe itself, as well as its contents, waS uncloubtedly a clever one; but an abstract idea, apart from the plan adopted for carrying it out, is not patentable. The plan adopted in this instance was the transposition of the electrical conductors from the insid6) to the outside of the safe. The apparatus being old, it required no more ingenuity to accomplish this than to change a lihing of iron or steeLor may be operated in many, asbestos in a similar manner. ways; for instance, by the escape of water, air, or steam confined within' the outer wall of the safe. Mechanical skill might be needed to change the location of such water, air, or steam chamber, but nothing patentees took a lining out of an iron box and put it into a woo,den ,or paper box. Did they do.more? 'I i , . Let it be assumed that a new fire-proof and burglar-proof material, composed, for instance, of a combination of. chrome-iron and vitre()us wool, has been discovered and placed by the inventor on the inside of a, safe. Can it be that another party who, for the first time, places lining on the outside of a safe, can thereafter" by meanS of a patent, pre'vent all persons from using it when located in that position? Or, to push the simile one step further, would it be patentable novelty a top-coat of material which had hitherto b,een llf3 a tector or as a lining for waistcoats? It should always be, that these patentees are not seeking to secure their own peculiar aqd, genious mechanism. They wish to treat as infringers all who by the use of their electrical ltpparatus, or any other, protect the outside or a safe or vault., The complainant's expert witness' understands covering should fit the safe "closely," but the claims are comprehensive enough to cover !\1l exterior case many times larger than the safe which it incloses. It is, at least, a question whether a baijker who at night should roll his office safe into a vault, protected on the inside by an eleo, tric lining, would not infringe the claims. A merchant who sho",ld ask an electrician how he could proted the contents of his safe not only, but the safe itself, from burglars, would receive the spontaneous answer,t "Place it inside an electric lining." The merchaJ;lt would be entitled to credit, perhaps, for a practical sllggestion, but what of the mechanio ",h9' simply arranged the old apparatus in the old way around.the new article to be guarded? There is no pretense that there is the slightest chan?;e in the manner in which the conductors operate in the new position.. Why should the patentees be permitted to pre-empt this particular location as exclusively their own? That they at one time entertained these views may be inferred from the fact that in their patent of 1870 they make the location of their apparatus, whether on the insideor on the outside of the safe, w90lly optional, and do not specifically claimit in either position., 'lhave thought it proper to refer to this subject at some length, because v.33F.no.4-17
it bas 'been id[scussed by counsell and ,it surely is: one ofthe crucial questionsintbecaae; and yet I should hesitate to decfurethe patent invalid upon this ground alone, for the reason that the' able and careful judge who heard the motion for injunction found with the complainant upon this iSSUe. ., . : But the questions arising under the patent of1870 were brought to the attention ofthejudge atao late a day that he declined to pass upon them, except iri:apro forma manner, and, quite properly, continued them to the final hearing; ., On the twentieth of Decem;ber, 1870, nearly a year prior to the patent in suit, Holmes and Roome, the patentees, were granted a patent for "an;improvement in envelopes for safe.,vaults," etc., in whiclJ,the arrangement now under ,discussion is fully described. In the ,they say: ' '" "Fi'g'ilrel represents an interior face view of our imprOVed e1/:oelope or lining, as applied to the one side of a safe or vault"Qr wooden case inclosing thB spme."",,", And say that apparatus "maybe applied in the form of 11 single sheet an or: lining to a safe; vault, or otherstruct;' tire, or to the' inaideof a wooden covering 8urrounding the same." The effect of making"II envelope orliiiing"an element of three of the four clairns win M considered latet ob. , It is conceded that every feature of the patentof 1871'iS'described in the of 1870. ,This description was given to the woild in December,: 1870, withoilt'a word of reservation. If the 'US" 'of the enve1opel on the outside of the safe is not covered: by the' flrstpatent it clearlyfnigllt have been. . who 'has made-application for the Thill is ,notthecaae of a second first' is issued.' It would be manifestly unfair to' hold, him.' tesponsible for the, action of the' paterlt-office in this, regard. ' Ndris itthe case ora patentee who is compelled to disclose his second inventioniJ;lorder to describe the first intelligibly, the two being distinct alld not the proper subject of a Bingle patent; though in the latter case it wouldsoom that he should adopt some meansJto protect himself and irarntbe The proposition which the court here decides is that where a patent fully describes an ,invention which could be claimed therein', andniiikes no reservatiODI aild gives warning to the public, a second patent, grantequpoti an application filed months afterwards, 'Which' claims simply and, solely'the invention thus' made publfc, is invalid." It'1S freely conceded tnat there is a wide diversity of opinion upon this question, but it is thought that the weight of authority suStlijnsthe (o\:EigbiJ;lg propositiori',The .language of tWe court in jfahn v. lIarwti>d, 1f2"U. S'. 354, 5 Sup.Ct.'Rep. 174', is hardiy susceptible of two inte'i1>retatiol1s. It seems \teryplainand unequivocal. At 360 the courtsliya':: , ': " " , . ' ,i · "1;he takl'h,g out of a whiehJilas (as .the la,wrequires it to have) a specific'claim,is notice to all the world,of the most public and solemn kind, that all'thoseparts of the art, machine, or manufacture set out and described in thespeci'ti.tation, and not embraced in such s'peci,lic claim', are not claimed
HOLMES ELECTRIC P. -Cd.
BURGLAR ALARM 00.
patentee; atieastriotclalirJedlnan:d by:tbat pa1ient.lf'Mhas dmct, patehhfor other parts, or hasmdciJ application there/or, or has reseroea tlterig71t rt,O make,B'lJ-chapplioff-tt.rYfI.. that is anothlll' IJlittter, DQt. patent in question. * * * The public is and informed by the,Ill Q,St solemn on l)i'lt of too patentee that his Claim ,to iilventionis ,for, sUch and such an or combination, and for nothing Il,lore. 0/ cou1'se,what is not claimed # prop61·tll' The presumption is, and such is generally the fact; that what i8not clidmed 'was not invented by tbe patentee, but was known and used bEiforehe made his invention. But, whether so or not, his own 4ct it public prQperty if it was notso as soon as it is issued, is the evidence of this."
How cari language be more 'perspicuous? The opinion then proceeds to consider pow,in ,Mse of mi!\take, the patenteemf!.y' in some instances, reclaim what ,he' has tpus given up under the equitable provisions relating to reissues! Th.etheory that the patentee coqld erty of the public by,means ora new patent thereafter to be applieq, fur. does. not seem to h,ave occurre,d to the accomplished jurist who spoke,for the court upon that occasion. See, also, Campbell v" Ja:mes, 104 U.S. 356j Miller v.,Bra& 00., Id. 350; COOn Y. Wilson, 113 U. S. 268, 5 Sup. Ct. Rep. 537; .t(damsv. Stamping 00.,28 Fed. Rep. 360,365; Railway.Reg" v. Broadway 00.,26 Fed. Rep. 522; Needle Oo.v. 00., 23 Blatchf. 147, 32 Fed. Rep. 221; Hill v. C'ommisBioner Patents, 33 O. G. 757; A/arvin v.Lillie, 27 1".0. G. 299; Swift v.Jenks, Rep; 642; Ex parte Long, 25 O. G. 118\); Ex parte Rolvn, Id. 1190. The people, in, a sense, are parties to every patent. It is dealing most unfa,irly with them to inform them in this, .solemn manner they may do, with impunity, and, months afterwards, retract what was said, and retake what was given up. When a patentee describes two deone, it is taptamount to an affirmative declaration that he does not claim the other. Can it be that a person who, in 1870,pq.rchased an electric lining of Holmes and Roome and applied it in precise accordance with Figure 1 and the' description of the patent of that :year, could, 12 months afterwards, be compelled to pay tribute as an infringer? The statute should not, and, it is thought, does not, permit such an ani omalous state of things. . If the invention is not abandoned when it is voluntarily and unreservedly described and not claimed" when does it become 80? After two years, it is said. But why? A description of this character in 'a prior patent is by'no means proof that the patented device has been" in public use or. on sale for more than ,two years prior to his application. " The statute does not provide that the abandonment shall continue for two years; it does not say that when a person has by express terms given his invention to the public he shall have two years in which to take it back again. When, therefore, it is once established that the invention has been given up and belongs to the pUblic, there is an end of ithe controversy so far as a new patent is concerned.' What statute gives the inventor the ri.ght to reclaim it? Not the reissue section, surely. This is not the case'ohreissue. That section has little application tothe;present circumstances. Besides, there is no pretense that the patentees were
misled, or that any act of theirs occurred through inadvertence, accident, or mistake. They deliberately gave to the public in 1870 what they did not claim, and in 18t! they attempted, without a word of explanation or suggestion of mistake, to repossess it. . So the simple question here would seem to be: Has dedication to the public been proved? To this question the supreme court has over and over again given an affirmative answer, holding that abandonment is established by just the facts which the racordin this cause presents. The learnedcdunsel for the complainant quotes from Parker &:- Whipple Cc. v. Clock 00., 8 Sup. Ct. Rep. 38, as follows: "There is no evidence of anyatwmpt to secure by the original patent the inventions covered by the first eight claims of thereissue, and those inventions must be regarded as having been abandoned or waived, so far as the reissue)n question is concerned, SUbject, however, to tlw right to have made a De.W application for a patent to cover them j in other words. those eight claims are not fortha: same invention whicll was originally patented." should be in counection with the paragraph which This almost immediately precedes it, and which contains these words: "The description set forth in that specification as the foundation for the first eight claims in it, and those eight claims themselves, might have been the subject of another application for a patent, at the time the original patent was applied for and taken out." . It is, of course, admitted by the complainant that if the invention was patented in 1870 the patent at bar is invalid. As has been seen, the essence of the invention is the outside position, and there is great plausibility in the argument that this feature is covered by the claims of the patent of 1870. Take for instance the second . claim:' "The combhiation of an electI1c envelope or lining for safes, vaults, and other structures, with a galvanbmeter or instrument, the movements of which are pro,dnced by variation ina current of electricity from a battery or other E)lectrical .apparatus, in connection with a safe vault, or structure, substantially as herein, ,described. " A reference to· the description removes all doubt that the word "envelope" in this claim refers to the apparatus when placed on the outside of the safe. The first patent claims the apparatus both on the outside and inside; the second,on the outside only. But that the outside position is referred to, suggested, and described in the claims of the earlier patent, and, so far as the present question is concerned,covered by those claims, there can be little doubt. It is true that the claims of the patent in hand take a much ,wider range, but is not every element thereof found in the claims of the prior. patent; in other words, did not the patentees a.ttempt by the second patent to claim the same :invention more broadly? The recent case .of Insurance Go. v. Sellers, 8 Sup. .ct. Rep. 117, (Sup. Ct., Nov. 14, 1887,) may be referred to as bearing upon this question, and also as !:looting, with perhaps greater forcej upon the defense founded In that case the court say: upon the expiration of the English ,"It is' contended by the counsel of the complainants that the American pat!'!nLcontains improvements which are not exhibited in the English patent.
MOEN MANUF'G CO. V. BEAT-EM-ALL BARB-WIRE 00.
But if this were so, it would not help the complainants. The principal in'Oention is in both,' and if the American patent contains additional improvements, this fact cannot save the patent from the operation of the law which is invoked, if it is subject to that law at all. .A. patent cannot be exempt from the operation of the law by adding some new improvements to the invention, and cannot be construed as running partly from one date and partly from another. This would be productive of endless confusion."
It follows that there must be a decree dismissing the bill, with costs.
MOEN MANUF'G CO. CO.
et al. v. BEAT-EM-ALL BARB-WIRE et al.
January 5, 1888.)
(lJi'l'/J'Uit OOU'I't, No D. 101JJa, E. D.
PATENTS FOR lNvENTIONS-NoVELTy-PRIOR USE-BARBED-WIRE FENCES.
Letters patent No. 157,124, issued to F. Glidden, November 24,1874, for an improvement in wire fence, held void, on the ground that it was but a combination of known elements, of which the patentee was not the inventor.
In Equity. On bill for injunction. Proceeding instituted by complainants, the Washburn & Moen Manufacturing Company and Isaac L. Elwood, to restrain defendants, BeatEm-All Barb-Wire Company and others, from infringing Jetters patent No. 157,124, issued to J. F. Glidden, November 24,1874, which complainants now own. Offield & Towle, B. F. Thurston, and Ooburn & Thatcher, for complainants. Blair & Dunham and a. J. Hunt, for defendants.
SHIRAS, J. The complainants, as the owners by assignment ohetters patent No. 157,124, issued to Joseph F. Glidden, under date of November 24, 1874, and declared to be for an improvement in wire fences, file the present bill for the purpose of restraining the defendants from continuing the manufacture of barbed wire at Waterloo, Iowa, on the ground that the wire so manufactured by defendants includes and embraces the improvements covered by the letters patent above named. In substance, the defenses interposed are-First, want of useful novelty in the Glidden patent; second, that, if there are elements of novelty in the patent in question, Glidden was not the first inventor thereof; third, that even if it be true that Glidden was the first person to construct the barb or spur upon fence-wire by winding around the plain wire a short piece of other wire, nevertheless he had dedicated or abandoned such improvement or invention to public USe before he obtained the present patent. In order to ascertain the elements of novelty, if any, embraced within the combination described in this patent No. 157,124, it is necessary to ascertain the progress that had been made in the development of what is now known as barbed-wire fences at the time Glidden entered the field,