NATIONAL HAT-POUNCING MACH. CO. V. BROWN.
817
escape the conclusion that the plaintiff's .patent is merely a modification of the combination shown in the Toof patent, and if the plaintiff had not the benefit of certain presumptions in his favor the scale might incline against him. The fact, however, that he bas a patent, and that it appears that the same was issued to him after a careful comparison in the patent-office of his combination with that shown in the. Toof specifications, makes out a prima facie case in his favor, and the court is not justified in reversing the action of the patent-office unless it fairly appears that there is a lack of invention in the combination covered by the patent. In aid of this legal presumption is the fact that the Toof patent was granted in December, 1865, and it is not shown that the combination appearing in the plaintiff's patent was made use of by anyone until the plaintiff devised it in 1876, nearly 12 years later. If, according to the theory of the defense, the changes from the Toof combination to that of plaintiff are merely mechanical, and such that they would readily suggest themselves to any skilled mechanic or operatbr, why is it that the same were not more promptly brought about·? The fact of the long lapse of time after the Toof combination was made public before that of the plaintiff was discovered, tends strongly to support the claim that it required invention to produce it. The further fact that manufacturers are using the combination patented by plaintiff at the risk of suits for infringement, instead of the Toof combination, the patent on which expired in 1882, strongly points to the conclusion that they recognize a superior merit in the plaintiff's combination. Under these stances it must be held that the defendant has failed to sustain the defense of want of patentable novelty in combination, and as it is admitted that the defendant has been engaged in the sale of machines in which the plaintiff's combination is used, it follows that the plaintiff is entitled to a judgment for damages. It appeating,however, that the number of machines sold by defendant is but small, the plaintiff does not ask judgment for more than a nominal sum, and the recovery therefore will be for one dollar and coats.
NATIONAL HAT-POUNCING MAQR. SAME '11. HEDDEN
Co.
tl. BROWN.
et ale
«(}ftrcult Oourt, D. Nw JerBeg. September 25, 1888.)
1.
PATENTS FOR lNVENTIONS-ANTICIPATION-HAT,POUNCING MACHINES.
Claim 2 of letters patent No. 117,178, granted to Rudolph Eickemeyer, for 11.1. improvement in hat-pouncing machines, claiming the arrangement and com· bination ail'otating pouncing cylinder, with. a vertical supporting :IOI'n of such small size t4at the hat may be freely turned thereon, and the tip, side crown, and rim pounced in a single operation, is not anticipated by practical use by the act of pouncing in one operation on the Nougaret machine, which
aUI
."I:EDERALREPORTER.
11.
'employsa long horn, on which the hat cannot be freely turned iPounce4 ina single operati0!1-' u.nless bytwisti,ng 'and it out of sllape, II manner for which the machine w8.snotin'tended. " .' BAME.' ''j :
Claim 2 of the Eickemeyer patentiantiolpated claim 5'of'patent No. 220,889, granted to E., B. Taylor. describing the, combination of the sUPllorting horn and ,the seJf-feeding p'(juncing cylinder, whereby the hat is drawn over the in the direction of the motion of the cylinder, restrained by the hand, , . assisted by a guard or pressing pin, as the former patent is, for the combination by which,the whole hat can be pounced in a o\>eration; and, though feed-rollers are used, draw.ing the liat In the opposIte direction from the mo'tion·· of the cylinder,' yet the Taylor patent simply restores the' direction in which the hat wouldbll carried by the oylinder withoutthe feed-rollers, which is immaterial to the principle of the iJ;1vention.
, In Equity., Eugene Treadwell and John R. Bennett, for complainant. ,A. Q. Keasbey and E. Q. Keasbey, for defendants. BRADLEY, Justice. These suits are each brought on two patents owned by the granted to RUdolph Eickemeyer, November 23,1869, and the other granted to Edmund B. Taylor,October 21,1879, -each for improvements in machines for pouncing hats. The claims which are at issue are the second claim in the Eickemeyer patent, and the fifth in the Taylor patent. Pouncing hats is much the Same thing as shearing cloth; consisting in the :removal of the fuzz or rough surface of wool or fur ,which rema:ins on the fabric after it is felted, or: woven, as the case may be. It was formerly done by hand. by rubbing the surface of the hat body with sand-paper or emery while holding the brim firmly on the table, andtEitretching the crown on a block. The irrepressible genius of the inventor has, of course, produced machinery that does the same thing, and does it better, almost automatically. A horizontal cylinder or cone, covered with emery or some other cutting or grinding -substance, is attached to a spindle,and made to revolve with great rapidity, and the surface of the hat is brought into contact with it. This accomplishes the object. The principal difficulty lay in bringing every part of the hat body, which has a very irregular shape, into equal and perfect contact with the emery cylinder. For a long time separate machines had to be employed for the brim and the crown. The former was drawn by separate conical rollers, so shaped as to give the hat a circular movement, the revolving cutting cylinder and a rest or support, which, being operated by a'treadle, or fixed in proper position by a setscrew, kept the brim in contact with cylinder. The movement of the hat was somewhat regulated by the hand. 1.'he crown was stretched on a revolving block, and thus exposed to the pouncer. The object of the machines which are the SUbjects of the patents sued on is to pounce the whole hat, botp brim and crown, by one <?peration, without the use of separate IAacl;lines. This is e.ffected byconstr,uctipg the rest, by which the hat is suppoited in contact with the cutting cylinderin such a form, and adat>tip/fitti> operation I that all the bat ?od?"may desIred contact. The rest, ll1stead of. bemg a long .be brought llltO. roller, or fixed bearing, like,that of a lathe, parallel with the sides of the .
NATIONAL
MACH. :cO. V. BROWN.
3H1
cutting 'cylinder, iSIIlore likeah6mwith anob,ot'shortlicaring; \vhich will support the brim, the and the tip successively cylinder, manipulated and tumltd about, in part by hand, and patt by an accessory roller or rollers. This could not be done successfullyoti the old machines, because the, crown could not be slipped over the elongatedrest,and, if this could have been done, there was no room fartha brim between the rest and the body of the machine. Eickemeyer's ent comprehends other matters besides that which forms the particp.lar subject ofthe second claim, and they do nbt require notice. Th.e iriverition in question is described in the specification as follows: "My invention further consists. in an arrangement of the pouncing cylinder an4 a rest or supporting born for the hat body, which can be introduced within the crown to support it against the cutting' action of the pouncing of, pouncing, the arrangement being such as to dispense. with the use ot a hat block in pouncing the tips and side crown of the hats." The specification describes in detail the mode of attaching 'and .adjusthom so as to adapt it to the pouncing of the differelit ing parts of the hat, and adds this important suggestiOn: · .. The esseHtial part of tbe arrangement of the supporting horn being. the space left,between. it and the lathe-head to give room for the brim while it is supporting tile tip in the operation of pouncing." The second claim of the patent is in the words folJqwing, to-wit: "I claim (2.) The arrangement and combination' of a rotatipg pouncing horn, substantially as described, cylinder with a vertical the supporting horn may be used to support the tip, side crown, or brim during the operation of pouncing the hat.... It cannot be denied that improvement was a great advance 1.4 the art of manufaeturing hats. .The patent was the subject of consideration in a suit brought by the complainant against·one Tholpet al. in ooult forthEfdistrict of and was sustained in an able'opinion delivered by Judge 25 Fed. Rep. 496. The defendants in that case contended that the Eickemeyer patent was void for want of that the machine never cameirito market, etc. It was also contended that the invention was substantially antiCipated by the N01J:garet machines,whieh had been patented in 1866, and th.at the whole hat body could be, and had been, pounced on those machines. The judge disposed of these objections as f o l l o w s : . . · "The defendants contend at that tb,e Eickemeyer patent ,is void for want of utility. The EickeIneyer machine never came into the, market. It appears that the only machines built were in this suit. In view of the fact,. however; that the eVidence shows that a machine made after the Eickemeyerpatent :is practically operativ.e for pouncing hats in the manner described, thIS defense falls to the ground., The. Taylof,muehinemay be an iqlprovement9n EickemeYer's, 1:Iy reason of avoiding the necessity of feedrollers, and by reason of its simplicity of and inconsequence, be very valuable commercially; and the best pouhcing machine'in, use; but tbiswillnot 'protect or: the defendants in the use of. the specific mechanism described in the specification; and'embOdied in the.claims oHM :F4iclten:J,eyeJi PAtent i haS been shown, that .the
320
FEDERAL REPORTER.
chine is operative for the purpose it was designed. But the main controversy is over the second claim of the Eickemeyer patent. which described the MOO" bination of a rotating pouncing cylinder with a vertical. supporting horn. wherein the horn is used to support the whole hat body during the operation of pouncing. It is said that the Nougaret machines anticipate. in substance, this claim. It Is apparent. however, that the Nougaret n;lachines employ a long horn. They do not make use of a supporting horn a small size that the hat· may be freely turned thereon. and so supported· in the machine as to leave the space described in the patent, in order that the hat may·be freely turned, so as to pounce all parts of the surface thereof; and we find no prIOr machine so organized. This is not a formal, i?ut a material, difference, and this difference is the essence of the Eickemeyer invention. It is further urged that you could pounce the whole hat body in a Nougaret machine; that it has been done repeatedly; and that consequently the second claim of the Eickemeyer patent should receive a narrower construction than if Eickemeyer had been the tirst to accomplish such a result. Admitting that, to a limited extent, the Nougaret brim-machine has been employed to pounce the whole hat body, yet sucb was not its ordinary use. Before the invention of Eicke· meyer it was generaliy understood that it required two sets of mechanism to pounce a hat. But, however this may be. the complainant has demonstrated that the erilployment of a short rest, with the vertical space for the brim of the hat while the tip is being pounced, which we find in Eickemeyer's machine, is a great impl'Ovement ovel' the long rest as used in machines of the Nougaret type. This is not the case of a trilling improvement, but, in view of w,hat bad been before accomplished. of a substantial advance in the art; and conseshould relieve a party quently no mere changes in the details of . from the charge of infringement."
,
The <:lecision in the Massachusetts case goes far to decide the. present cases. I am entirely satisfied with the reasoning of the learned judge, an4 that the essential relied on by the court are established in Hie cases now before us. In that case th'e defendants, in addItion to thegroundEl disposed of in the above extract, placed themselves upon the Taylor patent, (since acquired by the complainant, and now sued on,) under which they claimed to be acting, and contended that they did notinfringe the patent of Eickemeyer. This defense was also overruled, and it was heldthat the diversities in the modes of· operation in the two <Jhines did not relieve the defendants from the. charge of infringement. In the one machine (Eickemeyer's) the hat, by the action of the feedrollers, is pulled through the machine in the oppo>:ite direction to the rotation of the pouncing cylinder, while in the Taylor machine it nloves in the direction of the rotation of the pouncing cylinder. Other variations in the m()des of operation of the two machines were relied on, but the court did not deem tbese variations as material, so long as the defendants used the essential elements of a sbort rest, and space for the brim, as 15hown in Eickemeyer's patent. Taylor might have made improvemenist but he used Eickemeyer's-invention. In the present case the great effort on the part of the defendants has been to show that, So far as the defendants can be charged with any infringement of the. patents sued on, the defendant Brown anticipated the inventions by practical use; and that, if tbis be not proved to the satisfaction of the court, still the fifth claim of Taylor's patent is identical
NATIONAL HAr-POUNCING MACH. CO. V. BROWN.
321
with the second claim of Eickemeyer's, and is thex:efore void, and no injunction should be decreed, because Eickemeyer's patent expired two years ago. Therecan.be no doubt that the machines used by the defendants do infringe the second claim of the Eickemeyerpatent. They have a supporting horn .surmounted by a short rest, situated sufficiently far from the body of the machine to give room for the brim, and on which the hat body, in all its part'! successively, is supported against the cutting cylinder. This is as clear an infringement as could well be described. , The question is,did Brown use any such device for pouncing hats prior to the 15th day of July, 1869? the date of the jurat affix{jdto Eickemeyer's application for a patent. The application was filed in the patent-office on the 17th of July, and contained the same description of the invention and second claim as they appear in the patent itself. We do not hesitate to say that the:e is no proof of any such use. The most that can be said is that Brown, according to his testimony, sometimes stretched out a hat body over the long rest of the Nougaret machine, which he used, so as to pounce nearly the whole surface, tip and all. But suppose he did this; it was not the process of pouncing the whole hat body in one operation that was patented by Eickemeyer, but the machine for doing it. Brown never made any such machine. And if he succeeded, ashe says, in pouncing hat bodies in one operation on the Nougaret machine, he must have stretched them much out of shape; and, as Judge COLT says, such was not the ordinary use of the machine. On the Taylor patent several questions arise: First. Was the fifth claim void by reason of being anticipated by the second claim of the Eickemeyer patent? If not, was it void for not being .patentable? If not, was it anticipated by Brown? If not, has it been infringed by the defendants? (1) Was it anticipated by the second claim of the Eickemeyer patent? In order to answer this question satisfactorily it will be necessary to examine carefully the purport of the Taylor patent, and what. invention, in view of the prior Eickemeyer patent, it was intended to secure to the patentee. The object of the invention is stated as follows: "The object of my invention is to dispense with feed-rolls and hat.block8 in machines for pouncing hats. to make the cutting or pouncing cylinder selffeeding. to enable the operator to control the speed and direction in which the hats to be pounced pass over the cutting or pouncing surface by the h:md with thE' assistance of a guard and presser pin. and to cause the material to be pounced to'move in the same direction as the surface of the self-feeding cutter in contact with it, thereby avoiding the injurious strain to which it is subjected in ordinary bat-pouncing machines with feed-rolls or their equivalents. "
The specification then goes on to describe the machine in detail by the aid of the drawings attached to the patent; from which it appears that the short rest of Eickemeyer is used, and the hat body is allowed to be drawn through between the rest and the pouncing cylinder by the force of the latter, being held back and guided by the hand, the hand being protected by a guard, and the guard being furnished with a pin attached to a spring, which pin may be pressed down upon the hat to hold or rov.36F.no.5-21
322
tard it at the point of pressure, and Cause it to move in a cir9le around the pin as a center, when required for poup-cing different parts of the hat body . All these parts are secured by separate claims. The fifth claim is as follows: I claim: "(l:i) The combination of the support for the hat and the self-feeding pouncing cylinder, whereby the hat Is drawn over the support in the direcLion of the motion of the pouncing cylinder." It is manifest that this claim is for the support and the self-feeding pouncing cylinder, independent of the guard and presser pin. It is equally manifest. in view of the Eickemeyer patent, which is not to be repeated if a different construction is admissible, that the claim is not for the combination ofashort supportand a cylindergenerally ,(which would clearly be a repetition of Eickemeyer's second claim,) but is for the combinationofthe support and a self-feeding pouncing cylinder; that is, a machine without feed-rollers, or any other feeding device except the pouncingcylinder itself.. Is not this, after all, Eickemeyer's machine without the feed-rollers; and is it not precisely what is contained in Eickemeyer's second claim, except that the latter covers both kinds-seH-feeding and non-self-feeding pouncing cylinders? It is not an improvement on Eickemeyer's invention; it is the same thing. Eickemeyer's second claim is for the support and the pouncing cylinder independent of feed-rollers. This was so decided in Thom's Case, before cited. That is, it was for the combination of the support and the pouncing cylinder, whether you or not. If you did not use them, your machine would used be a machine, of necessity; for the pouncing cylinder, if not interfered with; will always carry the hat body with it. The very object of the feed-roUere was to counteract this tendency, and thus secure a more effective operation of the cutting or pouncing instrument. If some resistance were not interposed to the force of the revolving cylinder, it would carry the: hat body with itself so rapidly that the rough surface would not be cllt away, or would be only partially cut away. Hence, in the absence of feed-rollers, the hat body must necessarily be held back by hand. It was partially controlled by the hand even with the feedrollers. Without them, it must be wholly so controlled. So that Taylor's supposed invention,as embodied in his fifth claim, is but one of the necessary forms of Eickemeyer's, as embodied in his second claim; not only one of the necessary forms, but having the same mode of operation involved in the latter. The counsel, for the complainant endeavor to D).eet this view by contending that Taylor's fifth clairp is for a process. But there is no pretense of that kind in the patent itself, nor in the language of the claim. The claim is for a machine having a certain necessary mode of operation. The result is that the complainant is entitled to decrees for profits and damages for the infringement by the defendants of the Eickemeyer patent While it .continued in force, and the bills must be dismissed so far as regards the Taylor patent, and the injunctions must be dissolved. We think that each party should pay their own costs.
OTLEY V. WATKINS; , l
823
OTLEY V·.W ATKINS
etal.
(Oircuit Oourt; N. D. lllinoiB.
October 8, 1888..,
PATENTS FOR INVENTIONS-COMPOSITION PATENTS-INFRINGEMENT.
A patent for a composition of matter is not infringed by another composi· tion into which one of the ingredients, named without restriction in complain. ant's claim, does ,not enter, though in the specifications ·theus6 of such in· gredient is stated to be for a particular case only.
In Equity. On motion for 'preliminary injunction. D. T. Duncombe, for plaintiff. Weat & Bond, for defendants. BLODGETT, J., (orally.) This case is now before the court tion on the part of the, complainant for a preliminary injunction, and also on motion on the part of the defendant to set aside a restraining order entered in the case on the 19th of July last. The defendants are charged by the bill with the infringement of a patent granted to complainant Otley for a cement for stopping steam and water joints. Upon presentation of the bill, the court granted an ex parte order restraining the defendants from the use of the device covered by the patent. The patent is for a composition of matter, and the set out this composition in the following words: "The ingredients of which my cement is composed and the proportions of each are: Mineral oil, (also commonly known as ·Ohio mud, ') 1 part; yellow ocher, 1 part; Paris white, 1 part; plumbago, 1 part; brick dust, 1 part; litharge, Ii parts. My method of prep'aring this cement is to unite the hereinbefore mentioned substances in powder form, and in the proportions set forth, in any convenient vessel, and stir the same until thoroughly mixe.d, and then add a sufficient quantity of boiled linseed oil to render the mass of the consistency of stiff paste. It may then be put up in cans or other suitable receptacles for use. When it is desirable to use the cement upon rough or uneven surfaces, I work into the mass, before applying, a small quantity of fine cut hemp, the amount of which must be left to the judgment of the person using it. This serves to make the particles adhere together more strongly, and also tends to make the cement adhere more firmly to the part to which it may be applied." . And the claim of the patent is: .. The cement for steam joints herein described, consisting of mineral paint, yellow ocher, Paris white, plumbago, brick dust, litharge, combined with fine cut hemp and boiled linseed oil, as herein set forth and described." The affidavits filed on hehalf of the defendants show that the defendants make a steam-fitting cement, in which they use several other ingredients, or different ingredients, from those used by the complainant, or called for by the patent, and the contention on the part of the complainant is that those other ingredients, such as red lead, barytes, etp., which are used in the defendants' composition, are the equivalents of the elements which are used by the complainant. But the defendants, also, by ,their aJ;fidavit!:l'dshow that they do not use, and never IlltveUsed, cut
324
hemp in any form. That being the case, I do not see how the defendants can be charged or held liable for the infringement of this patent, because, while the patentee, in his specifications, states that fine cut hemp is only occasionally used upon uneven joints or surfaces, yet he makes his claim for the combination of the various ingredients named with fine cut hemp and boiled linseed oil, so that it appears to me the complainant has limited himself to a combination in which cut hemp must be used. The law upon the subject, I think, is very well stated by Mr. Walker,in his work on patents, at section 349: "Omission of one ingredient of a combination covered by any claim of a patent averts any charge of infringement based on that claim. A combination is an entirety. If one of its elements is omitted, the thing claimed disappears. Every part of the combination claimed is conclusively presumed to be mater(al to the combination, and no evidence to Lhe contrary is admissible In any case of alleged infringement. The patentee makes all the parts of a combination material when he claims them in combination, and not separately. " Now, it is not for the court to inquire for the purposes of this case why this complainant saw fit to make cut hemp an essential ingredient of his patent. Hiscement may be just as useful, and for certain purposes may be even more so, with the cut hemp omitted, but he has taken his patent for the <;lombination of these chemical ingredients with cut hemp, and hence must stand or fall by, that combination. Why he so took it, whether because the patent-office insisted upon his taking his claim in that form, or otherwise, the court is not at present advised. It is enough to say he has so limited himself.. The former restraining order is fore set aside, and the motion. for an injunction pendente lite is overruled.
COA'ts
et 01.
'IJ. MERRICK THREAD
Co. et al.
Circuit Oourt, S. D. New York. September
28. 1888.)
TRADE-MARES-PATENTED DESIGN-EXPIRATION OF PATENT.
Plaintiffs sell their six-cord sewing thread on spools of light-colored wood, holding 200 yards each, each spool-head bearing a smaller circular label of a light gold color with a dark center and margin. On the gold ground are the firm name, and the words "Best Six Cord," and on the center are the number of the thread and the figures and letters "200 yds." in light gold color. Since 1873 they have embossed the number on the wood in the space around the label, under a patent granted in 1870 for seven years, and acquired and exclusively used by them since 1873. Defendants have sold their six-cord thread on spools holding 200 yards. and bearing substantially the same label. with their names substituted; the 'figures and letters "200 yds." omitted; a star in the center, and the number at one side, and with similar embossed numbers. Others had used black and gilt labels nearly or quite as early as plaintiffs; and labels on spools of six-cord thread holding 200 yards. with the makers' names in place of plaintiffs' names, were used from 1854 to 1874; and from 1868 to 1878. labels with a like substitution of names, and without the words and figu;es "Best Six Cord" and" 200 yds. " were used on spools of other than six-cord thread. '. Held, that the defendants' label does not amount to a repre-