fl. THII;lD A VEo B. 00.
portance, which was not considered in that case. The House patent of 1868 was not brought forward in that case at the hearing, but may be disposed of by quoting a single remark in the o,pinion of the supreme court in regard to the Reis apparatus: l "His [Bell's] patent would be quite as good if he had used that apparatus in developing the process for which it was granted." The Bonta patent of 1887, which seems to have been introduced for the purpose of showing that articulate speech can be transmitted by a make and break current, ought not to be considered. in the absence of any expert testimony to show that the apparatus is operative or operates upon the make and break principle. So far as the case involves the charge that Bell by surreptitious changes in his application after it was filed in the patent-office pirated the invention of Mr. Gray, the charge has been considered by the supreme court 2 upon substantially the same evidence, and pronounced to be unfounded, although the issue was not presented by the pleadings. At the present hearing, after listening to the very ingenious and elaborate argument of the defendant's counsel, in which nothing was omitted that could assist his cause, the theory of fraud seemed to be so utterly unwarranted by thtl facts that argument in reply was deemed superfluous. The usual decree for an injunction, and for 8n accounting based on the infringement of claim 5 of patent No. 174,465, and of claims 3, 5, 6, and 7, of patent No. 186,787, is ordered.
(Oircuit Oourt, 8. D. New York. February 4,1889.)
PATENTS FOR INVENTIONS-PRIOR USE.
The improvement in the construction of cable railroads. for which letterS patent No. 262,162, August 1, 1882, were granted, was devised by the patentee in the expectation of being employed to build a certain road, and was utilized by the owner of such road at great cost, and was of a permanent nature. The patentee was superintendent of the road. but reserved no control·of the invention, and suggested no change in it. and made no examination of .the road for the purpose of ascertaining its efficiency. Held, that the use of the invention in such road after its completion and in its regular operation was public,. and not experimental, though the patentee testified that he had doubts of its durability, he never expressed them to the owner of the road; and such use having been for more than two years before the application for the patent. the patent is invalid.
In Equity. Bill for the infringement of a patent. George Harding and GeorglJ J. Harding, for complainant Prost & Cae, for defendant.
WALLACE, J. The complainant sues for infringem ent of letters patent granted to him August 1, 1882, (No. 262,162,) for an "improve-
IDolbear v. Telephone Co., 8 Sup.
ment iif'the construction of cable' taUroids." nis application for the patent'waefiled September 3, 1881.' The California Street Railroad, a in the city of San Francisco, was built by the patentee, completed,and went into regular operation prior to April H, 1878, and as constructed embodied the invention described in the patent in' suit. The'defendant insists that this is a public use of the patented invention more than two years prior to the patentee's application for his patent, and consequently invalidates the patent. The complainant contends that this was an experimental use of the invention, and that the application was filed within two years after the patentee became satisfied that his invention was a practical success. It is conceded' that the road as built embodied the invention of the patentj that Mr. Root had complete charge of the cOllstruetion of the road, and built it for the projectors; and that it has been operated ever since April, 1878, as built, without any changes or modifications in plan or details. The evidence is that in the early part 6f 1876 the projectors obtained a franchise to lay,and operate a '6ablel'ailway in California street, one of the public thoroughfares of the city of San Francisco. In the expectation' of. ,being employed as the consulting engineer to build the road; the , complainant investigated ,the subject of cable roads, and matured the invention,in controversy between May and September, 1876. In September, 1876, he disclosed the invention to theprojectorsj between that time and January, 1877, made a model of it; and in February, 1877, laid down an experimental section of the cable railway embodying the invention in the yard of the Central Pacific Railway Company in San Francisco. His invention was adopted by the projectors, and work was commenced uponthestr1.lCtiure in July, 1877. The road cost, with the equiJi)u;lent, $418,000. It was about ill length, and the road-bed and tunnel constrliction cost about $225,000. From April 9, 1878, the structure has been in regular, successful use as a street rail-: way, carrying'passengers for pa,:.' Up to the time when the complainant made application for the su,it, and nntill883, the complainant was superintendent of the road for the owners. In explanation of his di:llay in making the applicatiori for the patent the complainant testifies that 'he,diq.,· not·wish to patent the invention if.the'structure proved weak or undesirable, and he did not feel sufficiently certain of its duraqility and practicability' uiltil the year 1881; that there was no but by,txwin a pubIicstreet, througha long period of time, to determine to what extent the moving of cars and the street traffic over a rail connected to iron work without the intervention of any wood would affect the durability of the structtire, Qr to what extent changes of temperature and the effect of waterimdrust would tl'Jnd to separate the iron work from the concrete in which it was imbeddadj and that; while he believed thE;re was mOI:e tpan an even chance of its proving a dp,rabIe and structure, he hlidsonle'doubtS in his own mind, and was influenced alsoby·theaoubts expressed by others in whose judgI.' , ment he had confidence. He admits that he never expressed th(lse doubts to the projectors, eitb'er while discussing with ,them the features
()f his inYention, or wQJle t.he rqad
being built, or while he remained its superintendent, it was completed. answer to a question :whether he had any doubts of the durability of the structure after the road was completed, he states that in the spring of 1879, while making an extension of the railwa.y,some parts of the structure were exposed, and he then saw some indications of the loosening of the yokes in the concrete, and "had somelittle fear at that time" that trouble might arise in that respect. Manifestly the complainant received a consideration for devising and consenting to the use of an invention which waa de-! signed to be a complete, permanent structure, which was to cost a large sum of money, and which he knew would not meet the expectation, of those who had employed him, unless it should prove to be in all respects a practically operative and reasonably durable one. If he had entertained any serious doubts of its adequacy for the purpose for which it was intended, it would seem that he would not have recommended it in view of the considerable sum it was to cost. At all events, be did not treat it as an experimental thing, but allowed it to be appropriated as a complete and perfect invention, fit to be used practically, and just as it was, until it. should wear out, or until it should demonstrate its own unsuitableness. He turned it over to the owners without reserving any future control over it, and knowing that, exceptas a subordinate. he would not be permitted to make any changes in it by way of experiment; and at the time he had no present expectation of making any material changes in it. Hll never made or suggested a change in it after it went into use, and never made an examination with a view of seeing whether it was defective, or could be improved in any particular. In Manufacturing Co. v. Sprague, 123 U. S. 249, 8 Sup. Ct. Rep. 122, it was MId that wheh it is clearly established that there was a public use of the invention by the inventor for more than two years prior to his application for a patent for it, the burden is on him to show by convincing proofthat the use was not a public use,in the sense of the stat· ute, but that it was for the purpose of perfecting an incomplete invention by tests and experiments. And in defining the distinction between a public and an experimental use the court in that case used the following language: " A use by the inventor for the purpose of testing the machine, in order by experiment to devise additional means for perfecting the success of its operation. is admissible; and where, as an incident to such use. the product of itll operation is disposed of by sale. such profit from its use does not change its character:'but where the use is mainly for the purposes of trade and profit, and the experiment is merely incidental to that. the principal and not the incident must give character to the use. The thing implied as exeepted out of the prohibition oBhe is a use which may be properly characterized as 8tlbstantially for the purposes of experiment. Where the substantial use is not for that purpose. but is otherWise public. and for more than two years prior to the application, it comes within the prohibition." Tested by the rule thus stated the proofs do not show a use substantiallyJorexperiment, but sho.w such a public use of the invention as must defeat'the The facts are in marked contrast with those<in the
I'EDERAL REPORTER, vol.
case of Elizabeth v. Pavement Q>., 97 U. S. 126. There the use was solely for experiment. In language of the opinion in that case:
"Nicholson wished to experiment on his pavement. He believed it to be a good thing. but he was not sure; and the only mode in which he could test it was to place a specimen of it in a public roadway. He did this at his own expense, and with the consent of the owners of the road. '" '" * He wanted to know whether his pavement would stand. and whether it would resist decay. Its character for durability could not be ascertained witbout its being subjected to use for a considerable time. He subjected it to snch use, in good faith, for the simple purpose of ascertaining whether it was what he claimed it to be." A decree is ordered dismissing the bill with costs.
Co. et al.
(Gircuit GoUt·t, 8. D. Net/) York. February 4,1889.)
PATENTS FOR INVENTIONS-ANTICIPATION-CELLULOID-PRINTING FROM ENGRAVED PLATE. '
. Claim 2 of letters patent No. 348222, granted August 81, 1886, to the Celluloid Manufacturing Company, is for the improvement in the art of printing with engraved plates on pyroxyline compounds, consisting in (1) inking the plate with an ink containing or of a solvent of pyroxyline and a pigment, and (2) in subjecting the material to heat and pressure While in contact with the inked plate, The testimony of one of two witnesses by whom it was sought to prove anticipation was based on hearsay, and none of the products printed in his establishment, and showing the alleged anticipation, were produced. That of the other was contradicted in "Rny important particulars by the inventors and another. The exhibits in support of alleged anticipations were all made after the patent. In previous attempts to print on celluloid the ink blurred, and was easily erased. while the printing by means of the patented process resembles the finest engraving on ivory Hetd, that the process is a novel and valuable invention; though the materials previously existed, they had not been used before in the combination claimed: and that the patent is valid.
The mere failure of the specification to disclose fully the Dltture of the ink, the evidence showing that various inks containing a solvent of pyroxyline cannot be successfully used, does not avoid the patent under Rev. St. $I 4920, providing that defendant may plead that for the purpose of deceiving the public the specification was made to contain less than the whole truth. It must be shown in addition that the omission was with a fraudulent intent.
It is unnecessary, also. In the specification, to caution against an ink witb a solvent of such volatility as to make it useless.
In Equity. Bill by the Celluloid Manufacturing Company and others against Benjamin Russell and others for tbe infringement of a patent. W. D. Shipman and J. E. Hindon Hyde, for complainants. B. F. Thurston and H. M. Ruygle.s, for defendants.
COXE, J. This is an equity action for the infringement of letters patent No. 348,222, granted to the Celluloid Manufacturing Company, as