SMITH V.' DAVIS.
(Oircuit OOU'l"t, N. D. illinois, S. D.
In support of prior use st't up as a. defense to a bill for infringement of letters patent No. 371,524, of October 11,1887. to Elias Smith, for an induction coil, whereby a current of elt'ctricity may be used with advantage to deaden the pain caused by dental operations, defendant showed that one Grimes, a dentist, had in 1859 taken a galvlmic battery and attached to it a third wire which in turn he attached to the operating instrument, and that the apparatus was successfully worked to prevent pain in dental operations in the same manner as in the Smith patent. He used the apparatus for about a year, and thEm abandoned it until August, 1887, when he took it up again after the Smith machine had gone into Use. 'rhe only witness to this effect was Grimes himself, and he was unable to produce his apparatus. It was also shown that Grimes had copied bodily the certificates contained in Smith's circulars as to the value and usefulness of that'patent, and had used them to advertise the , machines made by himself in 1887. Held, that the evidence failed to establish prior ulle. ; Defendant also showed by one Froeckman that he, F .. had made' batteries with three ,wires, similar to those of Smith, as early as 1873, and that battel'ies of his m,ake had been used about that time in a, dime museum in, St. Louis, and on the streets of that city by one James or Jacques, asort of street fakir, to cure toothache, earache, neuralgia, etc. The battery was, however, not produced,although.it was shown to be in the possesllion of Jacques' widow, in St.Louis, and the case was tried in Peoria, Ill. . The widow also testified that the battery had but two wires,'and in this she was corroborated 'by ,two other witnesses. Held,that the evidence did not establish prior use.
PATENT8 FOR INVENTION8-PATENTABIJ,ITY-PRIOR USE.
In Equity. Bill for, infringement. Hi, W. ,Well8, for complainants. ,0. N. M'megan, for respondent.
J. In this case defendant is charged with the infringement ofpatent No. 371,524, granted October 11, 1887, to Elias Smith, assignor or one-half to Fred. ,Kimble, for an induction coil. The pose of the invention, as stated in the specifications, is to produce means whereby aCUlTent of electricity may be used with advantage to deaden the pain caused by dental operations. The apparatus, described at length in the specifications and drawings, consists of a galvanic battery,;with two jars and provision for raising and lowering the cells into the jars, with wires leading from the cells to the poles, and from the poles are insulated wires terminating in electrodes, which are to be taken in the hands ofthe patient. The current from the positive pole is divided, and a third wire is taken from this pole and attached to the forceps or other instrument with which the dental operation is to be performed, and, when in use, the cells are dropped, by a device shown, into the liquid; so as to create the galvanic current. The patient takes the two electrodes, one in each hand, while the operator applies the forceps, or other instrument, to which the third wire is attached, to the tooth or other part upon which the operation is to be performed; the effect being, as is claimed, to deaden the nerves to suchan extent as to make
the operation substantially painless. The patent contains seven claims, but infringement is only charged in this case of the fourth claim, which is in the following words: "(4) In an electrical apparatus for dental purposes, a generator, an induction coil; the electrodes, and the wire from one of the discharge posts connected with a pair of forceps or the like, substantially as described." There are several other features in the patent, upon which no infringement is charged in this case. The defendant, upon the heal'ing, substantially admitted the infringement of this fourthclahn, of the complainants.' patent; that is, the defendant uses an electrical or galvanic apparat1;1s organized for the purpose of use by dentists to d'et;tdl'ln or prevent pain, with two electrodes to be held in the hands of the patient, and a third wile to be attached to the forceps or instrument in the hands of the operator;. so that we have a machine organized for the sam.epufI>ose, and operating the same manner, as is shown in the complainants' patent. " The defense interposed is priofuse-Fir8t, by F. T. Grimes, in 1859, at Liberty, Mo.; 8econd. the manufacture of a similar battery by E. A. Froeckman, who testifies that hernade,such batteries as' early as 1873, of alleviating pain. . The with three' wires,lo be is whether such'pripl')ise is sufficiently' established to deonly " ',.. . . feat this patent. Dr. Grimes testifies in substance,that in 1859 he was a dentist at Lib· erty,:Mo., and that he borrowed. the college at tIlat place Ii. galvanic battery, to which he attached a·third wire to be attached to the forceps or other dental instrument, and that he used this battery, organized and arranged as stated, for the purpose of preventing pain'in the extraction of teeth and other dental operations for about one year thereafter,. and that it. was successful, and operated to prevent pain in such operations in the same manner as does the complainants' machine. The testimony to me wholly improbable. I can hardly believe of this it possible that a man, nearly 30 years ago, could have discovered a mode of preventing pain in dental aDd surgical opemtions, so effective as the proof shows this method to be, and had brought it into successful use f9ra year or thereabouts,and then to have abandoned it wholly, and not resumed its use until about 1886 or 1887. The story seems tome so .improbable that it should require strong corroboration to induce belief. This witness in his direct examination not only testifies to the use ofthisbattery in 1859 by him for dental purposes, but also testifies that hernade another battery in 1886, of the same cha.racter; but upon cross· examination it very clearly appears that he did not make the last batteryuntil some time in August, 1887, and after the complainants' battery had gone into use, and after be, the witness·, had seen the circulars and the description thereof, if he had not seen the complainants' battery. It also appears,from the proof that this wit.nessentered upon the manufacture of this kind of batteries; and, for the purpose of giving currency and publicity and making. a proper impression upon the public mind to secure sales, he copied bodily the certificates which were contained in complainants' circular in regard to the value and usefulness of the com-
SMITH V. DAVIS.
plainants' machine. This unconscionable act on the part of this witness goes far, in my estimation, to create doubts as to his integrity, and, of course, operates to throw doubt upon his If such a machine as he says he made in 1859 was in fact made at Liberty, Mo., and if he successfully performed dental operations with it. it would seem at least not improbable that he could produce the witnesses, if he could not produce the machine with which he claims to have made such a success. It is Idardly possible that a patient whose teeth were extracted without pain by the use of a galvanic battery by this witness would have forgotten the circumstance; and, if there was any extensive use, some, if not many, such patients could be produced to testify to the fact. Standingnlone, this witness' testimony, therefore, it seems to me, is not sufficient to establish such prior use as should defeat this patent. of the witness Froeckman is, in substance, that he made The such batteries,-that is, batteries that had three wires, one of which was instrument with which the operation adapted to be attached to was to be performed,--as early as 1873, but he produced no batteries of that character, and the defendant does not produce any such battery. He testifies, however, that he made one of these batteries as early as 1873, and made others afterwards for one Leon James or Jacques,-the man seems to hav'e'been known by both these appellations,-which James used, from the time he so made it,' for the purpOSE! of curing toothache, earache, hpadache, neuralgia, etc., at the dime mUSeum in St. Louis, and upon the streets in that city, as a sort of street fakir, and testifies that this battery had the divided current and third wire of the coniplainants' battery. The complainants' rebutting proof shows that this battery, or one of the batteries-and probably the last one-which this witness made for James, is still in existence in the possession of James' widow in St. Louis, and yet the battery is not produced, but Mrs. James states that it has only two wires. She says it had six posts, which l!'roeckman says were .all poles of the battery; yet she states emphatically and positively that only two of those posts were used in applying the battery by herhusband; and this statement is corroborated by the witnesses Kline and Stahl. The failure of the defendant to produce this Froeckman machine, although the proof shows that it is accessible, casts a doubt upon the testimony of Froeckman as to its organization. where a defendant seeks to defeat a patThe rule well settled ent by showing prior use, such' 'prior use must be established beyond a reasonable doubt. As was said in Thayer v. Spaulding, 27 Fed. Rep. 66: "Parties asserting the prior use of it device covered by a patent have the burden of proof, and are bound to establish such priQr use by strong and convincing, if not absolutely conclusive. proof." And in Coffin v. Ogden, 18 Wall. 120, Mr. Justice SWAYNE said: .'
"The invention or discovery relied upon as a defeusemust have been complete. and must have been capable of producing results sougbt; that is, the . df;jfeildant must show beyond a reasonable doubt that the devices or di:;lcoveries which ,ue. set up. to defeat the .patent were not only :;limilar to' the. ilDprov-
mentEl described in the patent. but that they produced the results wbich·were accomplished by the deyices covered by the patent. II
In Mattr8ll8 00. v. Bed eo., 8 Fed. Rep. 87, the defanseof prior use Defendant relied upon the evidence of one Pohl to defeat the patent. He'testified that he made, in Baltimore, in 1865, five iron frames,describing them. The court said:
"None of tbese bed bottoms are produced; they probably cannot be found. The testimony of! Pohl stands alone; that is, the unsupported .oral testimony of a, person in regard to the way in which a few frames were made fifteen yeal's ago. TbiEllS not/sufficient to overcome the presumption which belongs to the patent." ... ' , .
And same rule was'appliediq Manufacturing 00. v. Haish. 4 Fed. OampbeU v. New York, Rep. 900j Doubleday v. Beatty, 11, Fed. Rep. 9 Fed. 500. Tested rules, this testimony falls far short of and satisfaqtory. as. to in my mind the fact being of the prior qse of this by the defendant. ... . Qatteries were ;Used for the avowed purposeof,alprior to the comlaying [pain .or preventing pain inllentaJ. plainants' inven.,tion is undoubtedJy true from the,exbibits from the patentoffice put ,inievidence in this case, but all these spow the use of a t.wo-wire battery" and, so far, the. proof in there is no evidenc,e.,that;athird wire, battery ordividedcurren;twas used until it was lly!the complainant Sn!ith, except testiJ,nony of the deand I dl;>. not think it proba'i>le that a change which fendant's and the threethe prQof shows is so mll:rked between the old wire machines could have been made as testified to by· the witness.es Grimes and Froeckman witlu)ut,its becoming ,a matter of such notoriety that their testimony could, be easily corroborated. It will be of these witnesses·corroQorate the other. The prior noticed testified to by. Grimes, .is nqwQerecol,'roboratedjand .the use in is contrlldicted· prior use by Eroeckman, insteaQ:of being .lam of: the opinion' that the defense of prior use is not established, alld that the compla.inants are entitled to a decree for ,an, injunction, and an ,accounting.
(Qt'rcuit Cburt,N. D.lllinois, 8. D· .
The invention in reissued letters patent No: 6,606, of August 24, 1875, (orlg. granted S, 29. 1,874.) to Wil,liam S,' O'&,ien, fOf an" improvem,en,t in that class ofharrows which are made in sections connected to each' other by eye-bolts ailda'conpling tod," consists in making the rod with a loop or crook, whIch may be engaged with a hook on one of the sections to retain it in its plaot, and may be released therefrom by turning it.
O'BRIEN BROS. MANUF'G CO. V·. PEORIA PLOW CO.
Held not anticipated ,by harrows which ,bad been made in sections prior t() the date of the invention; tbe,sections in such hJurows being coupled tog-ether only with hinges and with hooks, eye-bolts, and straight coupling rods passing through eyes located in the sides of sections.
2. BAllE---REISSUE-DESCRIPl'ION OF CLAIM. In letters patent No. 155,548, of Septemner 29,1874, to William S.
for an "improvement in that class of harrows which are made in sections connected to each other by eye-bolts and a coupling rod, " the device is described in substantially the same manner in which it is described in the reissue, (No. 6,606, of August 24,1875,) but the claim is: "The combination of the coupling rod;haviog the bend, with the harrow sections and eyes by means of the hook." The claim in the reissue is: "The coupling rod having a crook or loop arranged to operate with a hook for securing said coupling rod in the eyes, and the harrow sections to each other." Held, that "combination;" as used in the original claim, was synonymous with "oonnection," and that the reissue was therefore validjit being evident from the original specification that ",hat the inventor wished to secure was his new coupling rod, which was his invention, and which consisted of the combination of two or more harrow sections, bymeaos of a conplin&, rod having a hinged or pivotal connection; centrallY.on the side of one section. Sectional harrows coupled loosely with a looped or bent coupling rod, but having the band or loop made wide enough to allow its back to engage With two hooks projecting from the side of the opposite section, and at some distance apart, instead otone hook only, as in ,reissued letters patent No. 6.606, of August 24, 18,5, (original granted September 29, 1tl74.) to William 8., 0 Brien, for an improvement in harrows, is an infringement thereof; the looped coupling rod, for the purposes to whi,ch it is applied, constituting the invention, and the fact that strength is gained by the use of an additional hook and an improvement over the original device thus secured being immateriaL
Bill for infringement. Prank F. Reed, for complainant. Hapki'1i8 Hammcmd, tor respondents.
BLODGETT, J. By the bills in these cases defendants are charged with the infringement of reissued letters patent No. 6,606, granted August 24, 1875, to William S. O'Brien, assignee to the O'l:3rien Bros. Manuiacturing Company, for an "improvement in harrows," the original patent having been granted September 29, 1874. In the specifications the inventor says: .
"The nature of this invention relates to improvements In that class of harrows which are made in sections 'connected to each other by eye-oolts and a coupling rod; and the invention consists in making the coupling rod with a loop or crook, which may be, ellgaged with a huuk on one of the sections, to IetaiTJ. it in place, and maybe l'elt:ased therefrom sim ply oy turning it."
He then describes the sections with eye-bolts ,inserted near the ends of each side-piece of the respective sections, and a hook projecting from near the middle, of one side of a section, so that the looped coupling roq, by passing through the eyes of two adjacent sections, connects them loosely together, giving them, each an independent vertical movement, and also a lengthwise movement on the coupling rod ,to the extent of the space between the eye-bolts on the sections so held together; and by engaging the loop of this coupling rod with the hOQk located in thesidEl .of one of the sections, and near the middle of such section, the coupling rod is kept in place, while it secures a loose coupling between the aectians,
which allows to each section a free movement up and down and along. side each other. The claim of the patent is: (1) The coupling rod, C, having a crook or loop, c, arranged to operate with a hook, d, for securing said coupling rod in the eyes, B, B, and the harrow sections to each other, substantialIy as described, and for the purpose specified. Defendants, by their answer, deny the novelty of the device covered by the patent, and also deny the infringement; but as no anticipations of the device are set up in the pleadings, or shown in the proof, I take it that no contest is made as to the patentability of the machine. It is conceded that harrows had before this invention been made in sections, and the sections coupled together with hinges, and with hooks and eye-bolts, and also witp straight coupling rods passing through eyes located in the sides of the adjacent sections; but there is no proof of the use of a looped coupling rod for the purposes to which this inventor applies it, or for any snch analogous purpose as would anticipate this device. Defendants, however, insist that the patent is void because, as it is claimed, the reissue is not for the same invention described in the original patent. An examination of a copy of the original patent,l which is in evidence, shows that the device was' described in substantially the same manner in which it is described in the reissue; but the claim is in these words: "The combination orthe couplingl'Od, c, having the bend with the harrow sections, A, A, and eyes, B, B, hy means of the hook, substantially as set forth." This claim is certainly obscure, and did not, I think, secure to the inventor the thing which he claimed to have invented,-that is, his looped coupling rod, so arranged to operate with the hook as to secure the rod in the eyes of the eye-bolts,-but, if the original claim is for anything, it is for the combination of the coupling rod with other members; while it is evident that the inventor wished to secure the patent on his new form of coupling rod, because he says in his original specifications that his invention consists in the combination of two or more harrow sections by means ofa coupling rod having a hinged or pivotal connection centrally on the side of one section, and he evidently uses the word" combination" in this statement as a synonym for the-word "connection." and hence he in apt time surrendflred his original patent, and obtained this reissue, specifically covering his coupling .rod, not as an element or member of a combination, but as a new invention or device for comfecting harrow sectimis together. I am therefore of opinion that thereist:lueis valid. Defendants make and sell sectional harrows coupled loosely with a looped or bent coupling rod, but the bend or loop is made wide enough so that its back engages with two hooks projecting from the side of the opposite section, and at some dis·tance apart, instead of one hook, as shown in complainant's patent. This, in my opinion, is a mere change of form,with no change of principle. After O'Brien had taught the world the ntility of one loop and hook to keep the coupling rod itl place, and thus hold the sections together, his
LYON V. DONALDSON.
invention cannot be evaded by making a broader loop and adding another hook. It may be that there is a gain of strength by using two hooks, and I will not say that defendants' rod ill not an improvement on the O'Brien rod, but, at best, they must be held to use O'Brien's device with this improvement, and herein they infringe the O'Brien patent. Decrees may be prepared finding that the complainant's patent is valid, and that defendants infringe, and referring the cases to the master to take proofs and report as to complainant's damages.
(Oircuit Oourt, No D. Illinoi8, S. D. April 23. 1888.)
PATENTS FOR INVENTIONS-AcTION FOR INFRINGEMENT-DEFENSE OF WANT' OF NOVELTy-EVIDENCE.
In case" for alleged infringement of a patent of date June 30,1885. defendant pleaded the general issue, with notice of special matter to the effect that he himself Was the original and first inventor, a patent having issued to him for substantially the same improvement, July 8, 1884. It was in proof that shortly after plaintiff filed his application, which was dlme on 5, 1884, interference had been declared by the patent-office between plaintiff and defendant, and that the examiner had decided the priority of invention in favor of plaintiff, and granted him the patent in suit. No appeal was taken from this decision. ' Held, that under the plea defendant was confined as to proof upon the question of novelty to what led up to his own alleged invention.
SAME.-ANTICIPATION-MACHINE FOR SWAGING SAWS.
The chief feature of the improvement covered by letters patent No. 321,376, of June 30,1885, to William Lyon, for a "machine for swaging saws," (circular,) is a movable anvil upon which the saw-tooth rests while it is swaged to the width necessary for clearance by means of a hammer in the hand of the operator, the anvil also resting upon an adjustable support. In "case" for an alleged infringement, defendant set up that as early as 1882 he had perceived the utility of such a machine. and he then devilled an experimental working model, and tested it so far as to prove that a saw could be swaged upon it. The portion of this machine produced in court did not'contain the movable arm which carries the anvil or die of the Lyon patent, nor the support on which the die rests the operation of swaging is performed, nor anything which would suggest those operative parts. Ireta not an anticipation. The first claim of letters patent No. 321,3i6, of June 30, 1885, to William Lyon, for a "machine for swaging saws," is: "In a saw-swaging machine, the combination of a frame. a horizontal, adjustable shaft or arbor, a horizontally adjustable rest, and a die secured to an arm pivoted to the frame." In the specifications "the horizontally adjustable rest" is IlPoken of as the "support," and is described as being moved by the "shaft working in a threaded perforation in the frame and in the support." Held, the purpose of the shaft being to move the support in its sliding groove, so as to. make the support the support was not intended to be threaded; but tllat the screw-thread on the shaft was only to operate in a thread in the perforation or head-block of the frame through which it passed, and the shaft was to work or turn in the support in such manner as to adjust thesupporti aud that t):l.e claim was valid. In "case" for infringement of a patented "machine for and jointing saws," it was in evidence that plaintiff's machine with the jomting appa-
SAME-PATENTABILITY-DESCBIPTION OF CLAIM.
..( SAME-DAMAGES FOR INFRINGEMENT-TREBLE DAMAGES;