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
CELLULOID M'ANUF'G CO. tI. BUSSELL.
the assignee of M. C. Lefferts and J. W.Hyatt, the inventors, August 31, 1886, for an improvement in the art of printing upon pyroxyline compounds. The invention consists in printing upon celluloid by means of engraved plates; the celluloid being subjected to tht: action of heat and pressure while in contact with the inked plate, which, preferably, should have a highly burnished surface. Any ink which contains a solvent of pyroxyline may be used, but one in which the coloring matter is in the form of a pigment, and which contains a binding agent, is recommended. The celluloid is subjected to heat, from 180 deg. to 230 deg. Fahrenheit, to soften its surface; and to pressure, to cause the material to flow into the engraved lines. Thus a clear and permanent impression is obtained, a result unknown prior to the invention. The second claim only is involved. It is in these words: "(2) The improvement in the art of printing with engraved plates on surfaces of celluloid or other pyroxyline compounds. which consists in-First, inking the plate with an ink containing or consisting of a solvent of pyroxyline and a. pigment; and. second, in subjecting the material to heat and pressure while in con:.lct with the inked plate." The defenses are lack of novelty, non-infringement, and that the patent is invalid because it contains less than the whole truth relative to the invention. . Celluloid is a hard. non-fibrous, non-porous substance, and for a long time defied the efforts of the most experienced experts to print successfully upon it. The well-known methods of printing on paper and other similar material produced no satisfactory result when applied to celluloid. The ink would blur. It was not indelible. The impression was not permanent. It could be easily rubbed ofr. It was like attempting to print on glass, porcelain, or ivory The efforts to reach a satisfactory result were long continued. and were only crowned with success after many experiments had been tried. To deviRe such a process required invention. A mechanic would have suggested the ordinary method of printing, but it required genius and the originating faculty to bring in the element' of the synchronous use of heat, sufficient to soften the celluloid, and uniform pressure, in conjunction with an ink containing a solvent of pyroxyline. The inventors were not only mechanics, but experts, possessing an uncommon and peculiar knowledge of the properties of celluloid. One of them was, in addition, proficient in the art of printing, having had an experience of 10 years; and yet the idea which now seems obvious did rlot occur to them until after months of effort. It was stated on the argument, and not denied, that there is not in the record a single specimen of printing upon celluloid made prior to the patent. A number of exhibits have been introduced to illustrate and explain the testimony of the witnesses as to what was known prior to 1884, but the fact is undisputed that they were all made after the patent was issued. This is an unusual, and a most significant fact. On the other hand, the exhibits introduced hy the complainants as illustrating their prQcess are, many of them, of great beauty and artistic merit. It ill not pretended that anything at all approximating them in appearance
l>efo:re· .',J'hey J'ffiemble theifioest engravingup.oIi ivory. Many 'this resl1lt,but the process olthe patent was stlccesafullyemployed. It is apparent now that the step wall a,simple one. But six years ago the obstacles seemed insurmountI1ble, :ev.en to the most learned and skillful. A traveler who, surrounded by qarkness and mist, has lost his way, amid Alpine snows, may perish within a few steps fro.m the friendly shelter 'which he seeks. The rising sun shows hpw easily he. might have been saved if he had pressed on for a moment longer.. So this record ShbWS how near many prior searchers were to the pa,tented prpcess, but it also shows that they did not know it.until the truth .wa.s NveaJed by the light thrown on the art by the inventors: The conviction is forced upon the mind that they have taken a step in advance; that they have given something valuable to the public; and tqerefore that they are entitled to liberal treatment in a court of equity. .TI? all the able and ingenious arguments of the defendants may well be .opposed this single fact-no one, prior to the invention, ever produced any printing upon celluloid which is worthy to be compared to the exhibits of the complainants. The record faHs to show anticipation by that high class of evidence required in such cases. The testimony of the witnesses Hart and Lee, standing alone, might be sufficient, but'the force of their statements is greatly weakened and impaired by the evidence in rebuttal. The testimony of Lee, in -its important particulars, is based upon hearsay, and although several thousand dials, which exhibited the alleged anticipation, were printed in his establishment, not one of them is produced in court. Hart is not corroborated, except in non-essentials, and he is expressly contradicted in. many important particulars by both the patentees and by LOCkwood, to all of whom he refers as having knowledge that he printed on celluloid frOm engraved plates. It is so easy to be mistaken in Iluch matters, and there were at the time referred to by Hart so many similar operations which he might have confounded with the patented process, that, even though it cannot be positively demonstrated that he . is in error, ther!) is at least sufficient doubt to prevent his assertions from overcoming the presumption of novelty arising from the patent itself. Some of the reasons for this doubt are stated with distinctness by one of the patentees. He says: , every instance these dials [referred to by Hart] were printed from wood blocks, or their equi valent, snch as electrotypes or stereotypes, with an ink containing a strong dryer. This ink could be softened and rubbed from off the face of the celluloid, leaVing no t.race behind it. They ",ere evidently not printed by the use of heat. as the scratches and marks left in the sheet by the process of sheeting it were not removed, which would have been the case had it :been pressed against anysui-face while in a softened condition due to heat. shows me that if Hart.' had printed any such dials fr0111 engraved plates I ""ould have probably seen them aDlOng the samples sent to us from time to tirpe. This and the fact that he never spoke to me in regard to such printing, and that he sent Mr. Gleason to me the purpose of learning how to transfer impressions of watch-dials from paper to celluloid, which was necessarily an e»pensive, and only Ii partially successful processj al)d that, when I sent him samples of watch-dials printed on celluloid from engraved plates by myself
lle acknowledged that they were very beautiful, and the handsomest things that he had seen on celluloid, and that he thought theywere valuable, and that his company would purchase them, provided the celluloid were a little whiter; issued, he adand yet that, du.ring all thh,! time. and even after the vanced no claim to the invention, or intimated that he had ever printed himself from engraved plates,-is conclusi ve to my mind that he never did so print, or that, if he did, the results were unsatisfactory, and of no value."
The patent being for a process, each ingredieptand each step iSllecessary to make the operation a success. Omit one. and failure ensues. Each separate step of the process may have been taken before. The ink described may have been known. All this is unimportant. Itisenough that no one before had used the process. The materials may all have been ready at hand, but unless they were combined by others in the mannerdescribedby the inventors, there is no anticipation, and nothing which defeats the patent for lack of invention. Surely the prior art does not show beyond a reasonable doubt that the ink described by the defendants was ever used for printing upon celluloid from engraved plates by heat.and pressure, or that anyone knew that it could be.. so used. . Section 4920 provides that the defendant may plead that, for the purpose of deceiving the public, the specification filed by the patentee was made to contain less than the whole truth relative to his invention. It is seldom that a patent has been overthrown under this provision. It is not sufficient that the specification contains less than the whqle 'truth, but the omission must have been madewith intent to deceive thepuhlie. It now appears that the accusation under this defense js that the specification did not fully disclose the nature of the ink, the proof showing that various inks which contain a solvent ofpyroxyIine cannot be successfully used. The complainants were not advised of this. particular charge by the allegations of the answer, which is general; and in the language of the statute, and it is insisted· that the answer is de-; fective in this particular. There is force in this objection, but it is un.:. necessary to consider it, for the reason that the proof fails to show tha.t the omission referred to was made with a intent. The burden, is upon the defendants to prove the defense, and they have failed tadoeo. The specification is addressed to those having a knowledge of ,the. art. To caution them against compounding an ink with a solvent of such high volatility as to make it useless in practice, would seem to beurine.cessary. A formula. intended for those skilled in pyrotechny, which states that any powder may be used, need hardly add the caution not to use dynamite. The common sense of the operator would teach him not to employ such high explosives. There is hardly'a controvetsyupon the question ofinfringement. A construction of the patent wblchwbt.ld enable the defendants to escape the charge would be;illiberal, and one unwarranted by the proOf. ' The complainants areentitJed to the usull1 . .. ,
FEDERAL REPORTER, vol. 37.
et al. ". HOHENSTEIN.
(Oircuit Oourt, S. D.New York. February 9,1889.) ,
PATENTS FOR lNVENTIONS-ANTICIPATION-SHADE-RoLDER FOR CANDI.RS.
The shade or globe holder for candles for which letters patent No. 257,027, April 25,1882, to Daniel Leary, were issued, was not anticipated by the English patent of 1842, to Ward and Freeman, or of 1850, to W H. Jones, or of 1864, to H. C. Stearn and another, or by the American patent of 1868, to W. H. Rinas, all of which have the cap· shaped piece titting over the upper end of the candle, with a, hole for the blaze, to support the structure, and a ring below to keep it upright, as described in the Leary patent, but none of which 'have a shade-holder or shade, or their equivalent. As it was required that the candle be permitted to melt and burn about the wick l;lUt not to melt below, and that the holder maintain an upright position notwithstanding the consnmption of the candle, and as this had not been previously accomplished, and the device became extensively used, the device required patentable invention.
Though the patent describes the supports of the shade as attached to the ring about the cap-shaped piece, and as being attached to that piece, a capshaped piece, with the supports attached directly to it, is an equivalent, and is an infringement. ,
In Equity. Bill by DanIel Leary and others against Hugo Hohenstein, for the infringement of a patent. H. Aplington, for complainants. Louis a. Raegne:r, for defendant. WHEELER, J. This suit is brought upon letters patent No. 257,027 t dated April 25, 1882, and granted to Daniel Leary l for a shade or globe holder for candles. The defenses set up and relied upon are want of novelty and of patentability. No prior structures are produced, or shown by evidence to have existed, to bear upon the question of novelty. That defense rests wholly upon an English patent dated in 1842 to Ward and Freeman, and an American patent, dat.ed in 1868, to William H. H. Hinds, for candlesticks, and an English patent, dated in 1850, to William Henry Jones, and another, dated in 1864, to Henry Charles Steane and Frank Alexander Steane, for apparatus to prevent candles from guttering. These patents do show parts of Leary's structure, and notably a cap-shaped piece fitting over the upper end of the candle, with a holefor the blaze, to support the structure, and a ring below to keep it upright; but none of them show a shade-holder for a shade above the blaze of the candle, nor anything like his complete apparatus, or that would answer its purpose. Therefore he was not anticipated by any or all of them. Parks v. Booth, 102 U. S. 96. These prior patents are o.1so relied upon to limit the field open to Leary; and counsel for the defendant urges in support of the other defense that there was no room for patentable invention between them and his shade-holder; that a workman might, by the skill of his trade, put the ehade-holder upon this cap-