LANE & BODLEY CO.
provement does not display invention; that, if anything more than an aggregation of old elements, it is only the product of skill, or, as counsel expressed it, the natural outgrowth of experience with local conditions, embodying mere mechanical modifications of existing and wellknown appliances. The court does not concur in this view. The parts of the combination claimed were old, but the combination was new, Ilnd it produced a new and useful result. The problem was to produce a valve which would obviate the "water-ram," and relieve against the excessive wear from muddy water. The complainant was, when the improvement covered by the patent in suit was perfected. in the employment, as general designer and draughtsman, of Lane & Bodley, a partnership engaged at the city of Cincinnati in the construction and sale of hydraulic elevators and other machinery. The water-ram could be prevented by the use of various devices, as by the use of graduated openings not differing substantially from that described by Rankin in the work already referred to, or by a disk-valve, described in the testimony. The great difficulty was to overcome the wear and tear of the packing by the gritty particles in the water whenever it became muddy by reason of a rise in the Ohio river, the source of the city's supply. After many trials and failures, the construction patented to complainant was hit npon, and satisfactory; and it was satisfactory because of a it, and it alone, new, and, therefore, unknown, combination, which was an invention. The evidence does not sustain the claim that the invention was not the sole production of the complainant, but the joint produdion of himself and P. P. Lane, senior member of the finn of Lane & Bodley. The burden of proof is upon the defendant. Lane testifies that the notches --referred to in the specification also as "scallops or indentations"-at the edge of the tubular prolongation, J, were determined upon by his direction; that the indication of the change was made upon the drawing by his instruction; and that he thinks, but is not positive, that he made the marks upon the drawing showing the change to be made. Locke denies all these statements, and testifies that he devised his improvement before the time of his engagement as draughtsman with Lane & Bodley. Without entering upon the details of the testimony, it is sufficient to say that the court finds the fact to be that the invention was made by the complainant. Having found that the improvement displays invention, and that it was made by the complainant, the next question is whether the defendant has established that it has either an indefeasible license or shop-right or an equitable part ownership of the title. This defense is made principally upon the amendoo answer filed February 2, 1886, the original anllwer having been filed June 24,1885. The original answer set up that the improvement was made by complainant while in the employ of Lane & Bodley, under full salary, and under obligation to give to that firm his time and skill in designing, perfecting, and embodying in working drawings, construction, and improvements in machinery, etc., in the line of their manufactures, and that it was carried into public use by them with the full knowledge of complainant, and without his objection, or
wits :,The 'amended, sets up th,atit ,was and agreed, af'! pllortpf his, contract of employment, that during itscoqtinuance any and alli1Uprovements made by complainant, and deern;ed by said firm patentable should be assigned to said firm and complainant jointly, and that said firm should have the right or option of the exclusive title and ownership <?fsuch patents as might be taken upon ,such invention at a price to be agreed upon or fixed hy arbitration, and that,cpmplainant acquiesced in, the use of said improvement without l;l1aiming that it was pll-tentable, or that they were not entitled to its free use; also that complainant, while in their employment, took no steps towards securing letters patent therefor, nor for some tim,eafterwards, and that his application was not filed until more than three months had elapsed after said employment had terminated. The complainant's application for a patent ,was within two years after his improvement was perfected. The evidence does not establish that he abandoned his invention. The ;agreement and understanding averred in the amended answer is not made out by the evidence. Lane himself, as a witness, admits that there was no such agreement. It is sought to reach the same result by evidence tending to prove a custom by virtue whereof draughtsmen and designern recognize the right of their employers to the products of their inventio11. But nothing of the sort is pleaded, and, if it had been, it is not proven. Moreover, admitting the agreement to have been made, or the custom to have been proven, what has either to do with this suit? The firm 01 & Bodley was dissolved in 1876 by the death of two of its members. The survivors organized the defendant corporation, and this suit is against that corporation, which is entitled to none of the rights claimed of Lane & Bodley. The fact which appears in the record, that the sur'living members of the firm of Lane &; Bodley, at the date of the incorporation of the ¢lefendant company. held all the shares of its stock excepting 30 reserved for sale to its employes, did not identify the corporation with the firm, nor did the assignment by the surviving partners of all the property and assets of the firm to the corporation operate to confer upon the corporation any right to use the complainant's improvement. But it is said that the complainant's suit must fail, and the complainant be rePlitted to whatever rights he may have at law, by reason of his laches in pursuing his equitable remedy. the estoppel by conduct constituting a waiver of his equitable right". These propositions are based upon evidence tending to prove that, although eVillplainant knew that the defendant was making, using, and selling his improvement, he made no objection, set up no claim, made no demand for royalties, but was silent and until 1884. It is not llecessaJW to consider the evidence, which is conflicting, in reference to the complainant's silence and ao. In any light in which it may be viewed, it is insufficient, ,U.,pon this whole case, inasmuch as. the patent and the complainant's title tq,itare susta}ned.. Hapgood v. Hewitt, 119 U. S. 226, 7 Sup. Ct. Rep. Ip3, disposesofall the other defenses. There is nothing in them. The wiij.be for an injunction and account, with costs.
EAGLEMANUF'Q' cO. fJ. BRADLEY.
(Oirouit Oourt, S. IJ. lowa,
Mlty 14, 1888 )
PATENTS FOR !NVENTION8-PATENTAIULITY-ANTICIPATION-lMPROVEMENT IN CuLTIVATORS.
SAME-PRIOR PATENT TO SAME PATENTEE.
SAME-INFRINGEMENT-DIFFERENT ARRANGEMENT OF PARTS.
In Equity. Bill to restrain infringement of letters patent. Geo. H. Christy and Nathl. French, for complainant. West &;0 Bond, for defendants. Before SHmAs and LOVE, JJ
SHmAB, J. On the 7th of June, 1881, there was issued toE.A.Wright letters patent No. 242,497. for an improvement in cultivators,the; object of the invention being to reduce the labor of handling the machine when in use by the application of springs thereto in such manner as to assist the operator in raising the beams and the shovels attached thereto from their operative to their inoperative positions, without having such springs exert apy material lifting strain upon the beams when' the' cultivator is in operation. The means for accomplishing this object, pointedolit in the patent issued, is by the combination of a wheeled frame,verticallyor drag-bars attached thereto, so that the same may be rotated vertically, and lifting springs so attached that a greater lifting ,ef. feet, is produced upon the beam as the same is elevated than when it is depressed, which lifting force of the spring increases as the beam is elevated, and is maintained notwithstanding the tension of the self decreases as the beam is elevated. By assignment the complainant