. SYRACUSE CHIU,1!lD PLOW CO. 'V. ROBINSON
.(Oirouit Oourt, N. D. Net/) York.
July 10, 188!l.
PATENTS FOR INVENTIONS-PATENTABILITY-INVENTION-PLOWS.
The improvement in jJlows for which a patent was allowed to James L. Judd, by letter!! patent No. 281,810, on Augnst31,1880, and the object of which was to strengthen the union of parts of the plow, and save labor in grinding tbeir edges at the joints. is not a pa.tentable novelty, having been a.nticipated by the patent granted June 29; 1875, to Lewis B. White, whose specification recites: "On the wing of the frame is formed a rib, which comes directly at the junction of the share and mould·board, and fits in recesses made in their edges for that purpose, "-the two combinations performing the same func· tions, and the only differences being in size and shape, which, if an improve. mcnt, is one which a skilled mechanic would readily make.
The Judd patent, (No. 231,810,) for improvements in plows. one specification of which is for a" combination of ribs and chamfered edges in plow castings," and plow points made under which show a clearly defined groove to fit the rib, Is not infringcd by 8 sale of plow points. in which. though bav. ing a thin edge at the joint, the. slope towards the joint is hardly more perceptible than in many other plow points, especially where it appears that they will fit other plows as well as the Judd plow, and it is shown that plow points require frequent replacement. .
Action for infringement of patent. a. Wright, for complainant. , Geor[}e B. Selden, for defendants.
J. J. Greenough and E.
COXE, J. ,This is an equity action for infringement, based upon letters patent No. 231,810, granted August 31, 1880, to James L. Judd, for an improvement in plows. The object of the patentee was to strenghen the union of the parts of the plow, and save labor in grinding their edges at the joints. The second claim, alone alleged to be infringed, is. as fol. lows: "(2) The combination of the ribs, a, and chamfered edges, b, in plow-castings, substantially as and for the purposes described." The defenses are want of novelty and non-infringement. The patent granted to Lewis B. White, June 2\:1, 1875, if not. a complete anticipation, so limits the theater of invention, that the combination in question is devoid of all pretense of patentable novelty. In his specification White says: "On the wing of the frame, B, is formed a rib, m, (Judd's rib, a,) which comes directly at the junction of the share and mould-hoard, and fits in recesses, n, (chamfered edges, b,) made in their edges for that purpose." It also appears that White presented a claim for the combination of the rib on the standard with the share and mould-board, each being provided with corresponding recesses. This is almost the identical combination of Judd's second claim. White's claim was rejected by the examiners upon reference to prior patents, and was erased by his attorneys. It is true that differences in size and shape may be easily pointed out, but the functions performed by the Judd and White combinations are
SYRACUSE PHILLED PLOW CO. -,. ROBINSON.
the same. Judd accompli8hes no new result, and his departure from White, in making the ribs and grooves larger, if an improvement, was one which a skilled mechanic would readily make. The idea, so far as the two men are concerned, was White's. After having conceived it, he might perfect safety have requested Judd, as a skilled workman, to embody it in practical form, as shown in either patent. The invention, if there be one, should be credited to White. He who asserts that Judd is entitled to be considered an inventor because, without new result, he enlarged and rounded the edges of White's angular rib and corresponding recesses, is ullmindful of the trend of modern decisions. It was a mere change of form, and nothing else. Other evidence was introduced upon the question of novelty, but it is unnecessary to consider it, as it is thought there is no answer to the White reference. As to irifringement. The specification and drawings describe and show a rib,a, notonly to fit the chamfered edge of the point, but also a rib, a, to fit the chamfered edge of the plate on the land side of the plow. The defendants inaist that the claim, being in the plural, must be construed to cover the rib and edge both on the land side and the mouldboard sideofthe plow. As the defendants, concededly, do not use the former, it is insisted that they do not infringe. Although there is apparent force in this contention, it is unnecessary to pass upon it, for the reason that, even upon the complainant's construction, there is no infringement. Defendants have sold plow points only. This, it is alleged, makes them contributory infringers, within the doctrine of Wallace v. Holmes, '9 Blatchf. 65. But the defendant's point does not have the chamfered edge of the patent. Webster defines a chamfer to be "n small gutter or furrow; * * * a groove. A slope or bevel produced by cutting oft'the edge of anything originally right-angled." That the patentee so understood it is clearly demonstrated by reference to his drawings and the plows made by the complainant under the patent. These show a clearly defined groove, made to fit the rib. The point sold by the defendants has a thin edge at the point, but the slope towards the joint is hardly more perceptible than in many other plow points, and cannot, except by a very strained construction, be regarded as the chamfered edge of the patent. Again, it appears that though the defendants' point will fit the Judd plow, it will also fit the old style (1878) plow. It was also proved that all plow points wear out and require frequent replacement. It is therefore exceedingly doubtful, to say the least, whether, in any circumstances, infrinKement can be sustained, in view of the following authorities: Wilson v. Simpson,9 How. 109; Saxe v. Hammond, 1 Holmes, 456; Chaffee v. Belting 0>., 22 How. 217,223; SnydfJl' v. Bunnell, 29 Fed.'Rep. 47; Gottfried v. Brewing Co., 8 Fed. Rep. 322. The bill should be dismissed, with costs.
CITY OF NEW YORK.
(Oirel/it Oourt, S. D. New York. July 10,1888)
PATENTS FOR INVENTIONS-PRIOR USE-AcTS OF
1836 AND 18S9. Act 00836 cuts off all right to a patent if the invention has been in public use or on sale··with the applicant'B consent or allowance prior to the application. Act of 1839 gives to purchasers and makers of new inventions, before the application for a patent, the right to use and sell them without liability, provided that such purchase, sale, or use should not invalidate the patent unless it had been for more than two years prior to the application. Held, that letters patent .No. 42,920, granted under these statutes to James Knibbs, for an improvement in fire-engines, were void, it appearing that such improvement had been used in an engine sold more than two yeaTs prior to the application, although without the consent or knowledge of the applicant; it aleo appearing that the maker of such engine had obtained his knowledge of the . improvement by using it in experiments at the request of the applicant, the . latter not enjoining secrecy, nor intimating that he intended to apply fora patent. . -
Under acts of 1836 and 1839, invalidating patents because of a public uS.e or sale of the invention prior to the application for the patent, a patent is not , invalidated by the fact that the invention was used and sold as an experiment and at the request of the applicant. prior to the application.
SAME......,ExTENT OF AOT- USE OF IMPROVEMENTS.
SAME-USE AS AN EXPERIMENT.
, Act of 1839, giving to makers and purcb'asers of neWly-invented machines, manufactures, and compositibnsof matter before the application-for apatent, the right to use, and to sell for use the specific things without liability. includes improvements upon machines, as well as those wholly new.
. . . .
SAME-DATE OF ApPLICATION.
An application for a patent dates from the time It is filed or otherwise made in the patent office, and not from the time of its execution. .
SAME-PLEADING PRIOR USE-SURPLUSAGE.
On a bill for Infringement of a patent granted under these statlltes, held t.tiat. in an answer alleging that the patent is void because the invention, "with the acquiescence, and consent of the inventor," had been in publ1c use and on sale for more than two years before. the application, the clause "with the knowledge. acquiescence, and consent of the. inventor" is mere surplusage, and may be disregarded. .
OF DECREE-'-USE OF TESTIMONY TAKEN.
Where a dec).'ee dir,ecta an accounting, which is proceeded in at great expense, but before it is finished the decree. is reversed on rehearing, the decree of reversal will be without prejudice to the use of the testimony taken in th& accounting, incase another accounting shall be finally decreed. '.
In Equity. Bill lor infringement of a patent. On rehearing. FOI former opinion, see 9 Fed. Rep. 500. Roger M. Sherman, Marcus P. Norton, Harve:y D. Hadlocle, William E. Hagan, and Horace G. Wood, for plaintiff. . Frederic H. Betts, for defendant.
WHEELER, J. This suit is brought upon letters patent No. 42,9,20, granted to James Knibbs for an improvement in steam fire-engines, consisting of a relief valve. Hp, was the engineer of a steam fire-engine called the" Arba Reade," of the city of Troy, and made the invention, and applied it to that engine in 1860, and it was used on that engine as,