F'rederic H. Bctt8 and -Samuel R. Bett8, for defendants.
CoXE, J. This:isan equity.a.ctionofinfringemeilt, founded upon letters patent No. 15,121, granted to the complainant July 1, 1884, for a design for watch-caSes. The design consists ofacentral conventional star, in which anyomament may he set, placed upon a larger star of leaves, both stars being in bas-relief. ":Setween the points of the star ofleaves are diamond-shaped projections. The design was the result of considerable effort and industry. .It shows some genius, and it soon became popular with the public, and a source of profit to those who adopted it. The claiilis are as follows: '\(l)A'design for watch-cases, consisting of the conventional star, A, and the larger star, B, the points of which reprpsent leaves, the star, A, occupying the central field of the star, B, all being in relief, substantially as shown and described. (2) A design for watch-cases, l)onsisting of the conventional star, A, and the larger star, B, composed of leaves, and haVing between its points ornamental projections, C, the star, A. occupying the center of the star. B. all being in relief, SUbstantially as shown and described. (3) A design for ·watch-cases, consisting of the star, A, containing the ornament, D, the larger star, B, representing leaves, and having between its points the ornamental projections, C, and the star, A, occupyit)g the center of the star, B, allbtling in relief, substantially.as shown and described." The defenses are anticipation, lack of invention,· and non-infringement of thesecQnd. and third claims. The claims would have to be unreason· ably restricted to give the slightest plausibility to. the defense of noninfringement. . The two. designs look alike, and an ordinary purchaser CQuldnot detect the difference. The defendants in their circular of February 10, 1887 that they have made the design of the patent, and assert that they have a right to make it, and will continue to do so. Infringement is cleady established. Has novelty been negatived? The · patent is primaJMie evidence that the complainant was the first inventor. · Lehnbeuter v, Holthaua, 105 U. S. 94. He who asserts to the contrary must it beyond a reasonable doubt. The CJnua is upon hitn. The record discloses the usual conflict upon this subject. The witnesses do not agree. After the testimony has been read and weighed, the mind has not a decided impression either way. It is in doubt·. This is peculiarly II. case where light could be thrown upon the controversy were the court permitted to see the witnesses, and observe their manner while testifying. A witness may convince all who hear him testify that he is disingenuous and untruthful, and yet his testimony, when read, may convey a most favol'able impression. To state the proposition as fairly as the defendants Can, expect, the issue upon this branch of the case is involved in uncertainty. If the defendants' right to recover a sum of money in an ordinary action at law depended upon their establishing the affirmativeofthis issue, a verdict in their favor would, probably, not be distu.rbedby the court. If, however, the,c(}mplainant'R conviction of a crimedepeJldedupon the establishment by. the prosecution of the same proposition, ,11 verdict of guilty could hardly be sustained. The · jury most certait;Jly that they were 1l,Ot satisfied. beyond a
reasonable doubt that prior use had been established. The court llad occasion to comment upon this rule in somewhat similar circumstances in the case of Thayer v. Hart, 20 Fed. Rep. 693, 22 Blatchf. 229. What was there said need not be repeated. The question of invention is a perplexing one. It is balanced in welJnigh even scales, and a decision either way would have much in reason and common sense to commend it. The prior art shows badges made with a central raised of silver placed upon a larger star of similar material, the lower star being chased into a form somewhat resembling , leaves. Baclges with a star of tinsel placed upon a larger star of silk were well known, as was a design for the center of a watch"dial resem. bling the star of leavtJs and the ornamental projections of the patent, but without the conventional star and the central ornament. The defendants also introduced a large number of tracings from drawings found in volurnes belonging to the Astor library. These show designs for pavements, ceilings, spandrels, panels, railings, pedestals, embroidery, carpets, and marquetry. All these, being drawings, are of course flat, though some show indicating that the originals were in relief. None were designed for watch-cases; and none, if put on a watch-case, would be mistaken for the complainant's design. None, if made now for the first time, would infringe; none can be said to anticipate. It is probs.. bly true that an expert with the patent before him can seloot from these drawings..every separate feature of the design, often findinK two or more . of them in similar juxtaposition. The drawings would not, however, suggest the design to one who had not seen it before. A design rel!uires invention, but a different set of fauulties are brought into action from those required to produce a new process, or a new machine. In each case there must be novelty, but the design need not be useful in the ular sense. It must be beautiful. It must appeal to the eye. The distinction is a metaphysical one, and difficult to put into words. A ing wheel" a wheel revolving rapidly between two outstretched wings, presents a pleasing object to the eye; a graceful pattern for the handle \' ora spoon or fork may attract many purchasers, and yet it cannot be said that the embodiment of these designs requires an exercise of the "intuitive faculty of the mind" in the sense that this faculty is exercised in inventions like the telephone, or the safety-lamp. The policy which protects a design is akin to that which protects the works of an artist, a. SCUlptor or a photographer by copyright. It requires but little invention, in the sense above referred to, to paint a pleasing picture, and yet the picture is protected, because it exhibits the personal characteristics of the artist, and because it is his. So with a design. If it presents a different impression upon the eye from anything which precedes it,if it proves to be pleasing, attractive, and popular, if it creates a demand for the goods of its originator, even though it be simple, and does not show It wide departure from other designs, its use will be protected! In the active competition ·of trade a dealer is fairly entitled to the advantage, slight though it be, which attends such enterprise, and a rival in business should lIot be permitted thus openly and defiantly to invade the ter<
SCHMID V. SCOVILL MANUF'G CO.
ritory of another. It is so easy for every dealer, with the wideuniverae him, to select a design of his own; the appropriation by him of the design of his neighbor is usually so unnecessary and unwarrantable that the law is seldom relaxed for his advantage. It is impossible to read the literature upon this subject without being convinced that the courts, though applying the same rules, have looked with greater leniency upon design patents than patents for other inventions. From the nature of the case it must be so. A design patent necessarily must relate to subject-matter comparatively trivial. The object of the law is to encourage those who have industry and genius sufficient to originate objects which give pleasure through the sense of sight. The case of Miller v. Smith, 5 Fed. Rep. 359, is exactly in point. It is seldom that two cases are so nearly parallel upon the facts. There the design for lockets, sleeve-:butetc., consisted of a rustic letter. in relief, ornamented with leaves placed ontheline of the letter. The patent was upheld, although the prior art disclosed flat drawings of similar letters, and also rustic letters having branches and sprays of leaves springing from and around them. If there is any difference in the two designs, the preponderance of originality would seem to be in favor of the one in hand. There is no room to doubt that the decision would have been the. same had Miller's design been of a rustic letter placed upon a: larger letter of leaves, instead of leaves placed upon a rustic letter. To adopt the language of Mr. Justice CLIFFORD, when speaking of proofs very similar to those offered by these defendants: "Nothing of the exact kind is shown in these exhibits, nor is there anything which can be rpgarded as proof that the thinK patented was' known to otbers befol'e the invention patented was made by the patentees. Many attempts are made to. prove that fact, but the proofs all fallshol't of meeting the. J;eq1liremellt. " .. . . . Upon the authority of. this decision the doubt which is. upon this question must be resolved in favor of the patent. See, also, Gcrrham Co. v, lVhite, 14 Wall. 511; Simpson v. Davia. 12 Rep. 144; Fosterv. Crossin,. 23 Fed; Rep. 400; Wood v. Do11Jey, 19 Bll;l.tchf; 214, 7 Fed. Rep:. 475; Streat ",.White, 44 O. G. 1291,35Fed.Rep. 426. There should be the usual deoree for the complldnant.
SCHMID "'. SCOVILL MANUF'G
(Oircuit Oourt, B. D; New Y01'k. January 26, 1889.)
PATENTS J!'OR INVENTIONS-CONSTRUCTION OJ!' CLAIM:-CAMERAS.
Letters patent No. 270,138, granted January 2.1888, to William Schmid. for a combination with a photographic camera of a 1I.nder camera, located in the upper outer corner" of the camera case, ar.e void for want of nov!llty. There was no invention the 1I.nder1n a new position, no new result being achieved, especially when the location i8 left entirelyoptional. by the specification.
" ,rTn place a finder camera ,on a camera, each working inde· o,f the other, is not combination, but aggregation merety.' The claim, if sustained at all, must be strictly confined to the apparatus de· scribed, 'and this defendant does Qat use.
8. SAME,-NoN-INFRINGEldENT. .. SAME.
, IJ;lletters patent No. 869,818, granted September 18,1887, to William Schmid, for an improvement in photographic cameras, the claims are for a rotary shutter having an opening with the main tube of the camera, and havinl$ a pulley on its hub, connected by a cord with'll. pivot-arm, at one end of which is a sliding spring, capable of adjustment on a fixed rail. The separate elements,' and rotary shutter haVing such an opening, and having on its hub a pulley on which was wound a string. connected with a spring-arm, the tension of wlj.ich was varied by varying the length of the string, were old. Held, that the patent must be limited to the particular apparatus described, "and is not by the device covered by letters patent No. 377,554, granted February 7, 1888, to M., Flammang" which has a spring rigidly at· ,tached at one end, and connected at the other end directly, and not by means of the piv'ot-arm.. wlth a cotdwhich winds on the pulley. A complainant who sues on two patents and is titled to, costs. on one is not en-
, Bill by William Schmid against the Scovill Manufacturing Company for the infringement of a patent. , Goepel & Raegrme:r, for complainant. Stearns & Curtis and Edwin H. Brown, for defendant.
CoXE, J. The complainant charges the defendant with infringement of letters patent No. 270,133, and No. 369,818, granted to complainant, respectively, on the 2d of January, 1883, and on the 13th of September, 1887, for improvements in photographic cameras. In the first of these'patents, No. 270,133, the object of the inventor was to enable the photographer,without the use :of a tripod or covering cloth, to center the image of the object to be photographed upon the photographio plate by meansofacamera ob8cuta,so that he is able, ifhe so desires, to take a photograph while holding the camera under his arm. This finder camera is preferably located in the upper outer corner of the camera case, and is so adjusted that when the object to be photographed is centered there, the image from the ph()tographing lenses will be properly centered also 011 the photographic plate. The third claim only is involved. It is as follows: "(3) The combination, with the described camera, of the supplementary tube and lens, J, toget.her with the deflector, K, and the plate, L, arranged relatively to lenses of tile camera, as described, SQ that when the image of an object to be phbtographed is seen centered on the plate, L, an image of the,same object will be thrown by the said photographic lenses the photogr&pbic plate placed apartment, A'; aU:asspeclfled,·.;., ':' , The 9f'ndve1ty' and 'Ilon-infringement.' comthat photographic cameras, ,came:ra obscuraB, ana combined and interchangeable photographic cameras and finder cameras'were
SCHMID tI. SCOVILLMANUF'G CO.
-well known at the date of the invention.. ;It was old; also, t6 placere. :lirider camera ontop of or below a photographic eamers.; and to affix. & emaIl firider Camera to the topofalarger photographic camera. It is COll!reded, further, that to two well-known cameras in this manner is aggregation merely. The complainant' also admits that there is n0 inven,tic)ll in placing a finder on the case inclosing the photographic cam:. era, but he insists that it required an exercise of the inventive faculty to place the finder in the case. Clearly,then, the only possible argument in support of patentability is found in t.he new location for the finder camera. To plaoe the finder in this new position, without accomplishing a new result, does not constitute invention, especially in view of the fact that by the terms of the. specification the location of the finder · is 'leftentirely optional. "It is preferably located in the upper outer of the part, B," but may be placed elsewhere, if desired. Wherever placed, its operation is the same. No new result .is obtained by locating it inside the case. It operates inside, precisely as it did outside. The functions of both cameras are unchanged. Each does its work independently of the other. The complainant's arrangement may be· rrioreconvenient, .but that is all. A lllan does not become an inventdr Ibecause he takes a spy-glass from theroofandsets it in his attic window. Furthermore, the claim is for an aggregation. . There is no more combination between the two cameras than there is between the field-glass with which the artillerist reconnoiters the enemy's works, and the gun which he subsequently trains upon them; no more than there is between the finder telescope with which the astronomer explores the heavens', and the great refractor which he turns upon the desired, object. It is thought, therefore, that the claim is void for lack of patentable novelty, but, if sustained at all, it is clear, in view of the prior art, that it must be strictly confined to the apparatus described, and this the defendant does not use. ' , . , The inventio1;l secured by the other patent, No. 369,818, "consists of - a photographic camera in which a rotary shutter having an opening is passed quickly over the main tube when the retaining mechanism is released, which is accomplished at different speeds by a pivot..arm connected to the hub of the shutter, a sliding spring capable of adjustment on a fixed rail, and suitably operating mechanisth." All the claims are involved. The defense is l).on-infringement. The first claim is for a combination, of which the following are the principal elements: First, a rOlary shutter having an opening coinciding with the main tube of the camera; second, a pulley on the hub of the shutter; third, a pivot.. arm, conn'ected by a cord with the pulley; !l!urth, a spring applied at one end of the pivot-arm; fiftA, mechanism for increasing or decreasing the tension of the spring. The other claims are still further limited by the introd'tption of other and minor features.. N,ot only are the separate elements of this combination old, but it was old, in a photographic camera, to combine a rotary shutter with an opening coinciding with the .main tube, a pulley on the hub of the shutter, and a: spring-arm, connected by a string, which was wound upon the pulley. By shortening
or lengthening this string the tension of· the spring was increased or dimhiished, and '8. more or less rapid exposure was thus obtained. The complainant must be limited to the particular apparatus described and claimed. Others had revolved rotary shutters in photographic cameras by similar mechanism, and he is in no position to invoke protection from the doctrine of equivalents. His was but one in a series of improvements. Braggv. Fitch, 121 U. S. 478,7 Sup. Ct. Rep. 978; Snow v. Rail,. way 0:>., 121 U. S. 617,7 Sup. Ct. Rep. 1343. Thus construed, the claims are not infringed. by "Complainant's Exhibit t Defendant's Shutter." This exhibit shows a spring rigidly attached at one end, the free end connecting directly with a cord, which winds on the hub-pulley. The pivot-arm, which is an important element of all the claims, is entirely omitted. So is the sliding spring, and the fixed rail. For the defendant's combination a patent-No. 377,554-wasgranted February 7, 1888, to M. Flammang. As to the shutter previously made by the defendant, and found in the "Complainant's Exhibit, Defendant's Camera," infringement is conceded. There should therefore be a decree for the complainant upon letters patent No. 369,818, for an injunction and an accounting, restricted, however, to the last-mentioned exhibit. As the complainant has been defeated upon letters patent No. 270,133, he is not entitled to costs.
«(Jircuit Court, B. D. North Oarolina. January 15,1889.)
PATENTS FOR J?ENTINE. FOR DISTILLING
In reissued lett'ers patent No. 10.689, to J. D. Stanly, for an apparatus for distilling turpentine. the claims are fora fire-box; an arch over it. and under th.e retort; a retort chamber above the arch; and spaces above and below the retort, connected at one end. The products of combustion pass from' the fire-box underneath the rear and of the arch; thence horizontally along the under side of the retort. to the front end, whence they ascend vertically at the side of the retort to a space above it; thence backward along the top of the retort to the chimney. In the apparatus constructed by defendant under letters patent No. 333.750, June 5, 1886, alonger retort is heated from opposite ends by two furnaces. each heating one-half. In the space between the arc1;l and retort, in each fnrnace, vertical partitions pass more than half way around the retort, terminating at alternate sides. 'The products of combustion escape at the side and rear end of the arch and the middle of the retort, the passages deflecting them upon the walls of the fUrnlltle, instead of upon the retort. They then ascend. and at the top of the chamber meet one of the partitions. and are made to descend to the heated arch, where another partition causes them again to ascend. the process being repeated until they escape at a chimney at the forward .end. Held, that the Stanly patent protectEi at most the manner of the products of combustion for equalizing the temperature, and is not inftJDged by defendant's apparatus.
In Equity. :Bill to restrain the infringment of a patent, and for an account.