BREWSTER tJ. SHULER.
But when such material or substantial part has been claimed through inadvertence, accident, or mistake, without any willful default or intent to defraud or mislead the public, a recovery may be had for the infringement of any part which is bona fide the inventor's own, that is a material and substantial part of the thing patented, and definitely distinguishable from the part claimed without right; but without costs, unless a I disclaimer is filed before suit brought. Section 4922. The benefits of the provisions of this section are to be denied if the entry of a disclaimer has been unreasonably neglected or delayed, but waiting to take the judgment ofa court is allowable. Burdettv. Esley, 15 Blatehf.349, 19 Blatchf. 1,3 Fed. Rep. 566. No such willful default or intent to defrauo or mislead appears, or is claimed to exist, thus far in this case. The orator, therefore, appears to be entitled to file a disclaimer of the second claim now, and thereupon to have a decree as to the first claim without costs. Upon the tiling of a duly-attested copy from the patent office of a d,is.second claim, let a decree be entered, that the first claim is valid, and for,an injullction and account accordingly, but without costs.
Court, N. D. New York. February 23, 1889
PATENTS. FOR INVENTIONB-REISSUE-ENJ,ARGEHENT OF CLAm.
In the original patent of May 27,1873, to Thomas H Wood. foran improve· ment in carriage springs, the invention WIlS stated to have for its object to combine in a wagon supported on single transverse springs and side-bars the advantage of elasticity, double elliptic transverse springs, and of the deep s6\;· ting of the body previously obtained by using single springs. The claim was for a frame consisting of longitudinal side-bars, downwardly bowed springs. and upwardly bowed middle springs, constructed, arranged, and applied as and for the' purpose described. The reissued letters patent granted August 18, 1874, state that the object is to improve the manner of connecting the bodies of light carriages with the side-bars whereby they are supported. and that the invention consists in interposing a pair of semi-elliptic springs between the side-bars and wagon body, The claim is for the semi-elliptic springsJnterposed between the side-bars and the wagon body. 1111 combined substantially as specified. Held, that the original being for a combinat.ion of half springs with other half springs in reverse, and the reissue being for a combination which omits the half springs in reverse, the reissue is void.
The reissue is void also because there is no defective or insufficient specifl· cation and no inadvertent mistake in the statement of the claim of the original.
Semi-elliJltic scroll-ended spriugs having been previously interposed be· tween the s\de-bars and the body of the Robert Pierce buggy, and there being nothing to indicate that a spring other .than one a scroll end was an elero'ent of the claim, the patent is void for prior pubhc use, though the drawings show springs without scroll ends.
In Equity. Bill to restrain the infringement ot a patent. B. F. Thurston and Livingston Gifford, for complainants. v.37F.no.14-50
M ·. fandant·
'( Witter & Kf/(IJ'JjQ'n
Oamten BrO'/lJ'M, of counsel,) Cor
.WALLAC1ll, J. This suit is brought to restrain infringement of reissued letters patent granted August 18, 1874, to Thomas H. Wood; for an "improvement in carriage springs.'i;' The defendant relies upon the invalidity of the patent as a reissue of the original, and upon prior public use by others of the subject ofcthe invention, ainongother defenses to the suit. '1'heoriginal patent t6 Wood' was granted May 27, 1873. The invention is described therein as follows: "This invention relates to aIiiroproved arrangement of transverse spl'ings on light wagons, and has for its objeQt to combine, in a wagon supported on single transverse springs andside-bilrs. the advantage of elasticity, double elliptic transverse springs,and of the deep setting of the body obtained at present by using the single Light carriages on double elliptic springs raise the bOdies too nigh for convenience, and are, moreover, 'more expensive than those having single springs. On the otl;1er side, such carriages as,ate at presentslIpportedon singletransverl!e springs, whose ends connect with side-bars rigidly secured to the wagon bodies, are not sufficiently elastic and yielding to suit the rapid motion to which they are frequently subjected. The invention consistsinthe improvement of light vehicles, as hereinafter described and pointed out in the claim. In the accompanying drawing, the letter A represents the body of a light carriage of suitable style. B and C are the axles of the cartiage, and, D, .0, the wheels. Upon the axles are fastened the middle portions of transverse springs, E, E, whose ends are secured to side--bars, F, F. . These, side-bars are made of wood or other material, and 'aid. with whatever elasticrtythey may possess. In making the support of the body, A, yielding. To the under side of the carriage boLly, A, are secured G,-G, .whose ends connect,!by suitable couplings, side:-bars, 'F,' F '. :asls' clearly shown in the draWing. The springs, G, G, andE, E, can be. :made of metal, 0,rw9od, Q1'other material, a.nd are or flat springl'l,)n .contl:adistinctionto the fuU.elliptic spring heretofore used as direct supports for carriage bodies on their axles." The.c1/ilm of the follows; II A framec0t:'sisting of the 10ngitudinaJ side-bars. F. F ,down wardly bowed springs, E,E, and upwardly bowed middle'spring's; G, G, constructed, arranged" and 'applied as and for the described." The description in the reissued patent follows: This. in,ventil?,n has for its to 1mprove lllap.ner of connecting the ;bodies of lightclj.rriages with the side-bars, wherebytbey are supported, and consists in interposing a pair of semi-elliptic springs between said side-bars and the wagon body. In the accompanying drawing, the letter A represents the body of a light carriage of suitable style.. Band Care the axles of the carriage, and .0, D, the wheals. The axles are connected, by springs, E, E, or otherwise, with the side-bars,F, F ·. These side-bars are made of hickory or other material. To' t116, under side of the carriage pody, A, are securedtrallljlverse springs, G, q, whose. ends connect, by SUitable couplings, w.ith the F. as is clearly shown in the drawing. These springs, G, G, can be made of metal or other material, and ,are semi-elliptic or flat springs. in contradistinction to the full elliptic springs heretofore used, as direct supports for carriage bodies on their axles. " The claim of the reissue is:,
, . II
«The 'semi-elliptic. springS; G,:G, interposed between the side-bars, F. F. ami'the wagon.body ,all combined I!ubstantially as.specified." It is obvious that the invention of the patentee, as explained in the original patent, consisted in altering a side-bar buggy having downwardly curved transverse springs over the axle in which the ends of the side-bars rest on the ends of the springs, by putting in upwardly curved springs transversely between the side-bars and the body of the buggy. The conception and aim of the patentee was to employ additional half elliptic springs in a side-bar buggy having half elliptic springs, so arranged in reference to each other that the body would be practically mounted on full elliptic springs for purpo!les of elasticity, and on half elliptic springs for purposes of elevation above the axle. The description fully and clearly, without ambiguity or obscurity, sets forth the exact invention made by the patentee; and the claim fully and precisely specifies itjand from both it is perfectly evident what invention the patentee intended to describe and sought to secure. 80 ample and exact are the sp9cificationand claim that it cannot be doubted he knew accurately the scope and limitations of his invention, and intended to describe and claim it as nothing more or less than an improvement upon a specific type of sidebar buggies,which consisted in interposing supplementary half elliptio springs -between the body and the side-bars to re"enforce and co-operate with the' half elliptic springs theretofore employed between the side-bars and the axles. in the existing buggy. What the patentee did was to put two springs adapted to do that work into a buggy of that type. He might have put transverse semi.elliptic springs between the body and the sidebars of a. buggy of a different type; but he did not do it, or think of doing it. Apparently he subsequently discovered that it would be desirable to do this, and concluded to get a patent for doing it; and be was probably advised that such a patent would give him a larger monopoly than he had secured originally, and would enable him to hold as in"ttingers all those who should use the transverse semi-elliptic springs between the side-bars -and the body of a bup;gy, whether in a bugp;y with or without'semi-elliptic springs or any springs between the side-bar and the axle.- The reissued patent is for an invention which apparently did not exist in the mind of thepntentee when the original was obtained, and which also is of more doubtful inventivenoveltr than that in the original. 'fhe original is for acombinatioll of halt' springs with other half springs in reverse, in a side-bar buggy, in which the parts co-operate to pr,)duce a given result. T.he reissue is for a combination of which half springs in reverse are not apart, and from which the essential characteristics of the original iuvention are eliminated. The use of the· com.. bination of parts' claimed in the reissue would not be an infringement of the original patent. It must be held that the reissue is void, not only batause it is'fOfan invention not disclosed or suggestedirt the original, but also bE-cause, -as in the case of Coem v. Wilson, 113 U. 8. 268, 5 Sup. Ct. Rep. 537, thelewas no defective or insufficient specification, and no mistake inadvertently committed in thewordinp; of the claim of the original. ·Tht! defense: ofprior public use, which rests on the use of the springs
ill the Robert Pierce buggy, is fully established, and is fatal to the validity of the patent. The fact of the use of semi-elliptic·springs in that buggy, interposed between the side-bars and the body, at a date sufficiently early to defeat the patent, is not contested; but it is contended for the complainants that these springs were not the semi-elliptic springs of the patent. They were semi-elliptic springs of the class known as "scroll-ended" springs. This was a well-known class, used in carriages, and sold by dealers as semi-elliptic springs, previously to the date of the patent, as sufficiently appears by reference to the patent to George Groot, of July 13, 1869, for an improvement in carriage springs, without reference to the other testimony or exhibits in the case. That patent relates to the fasteninK of semi-elliptic springs transversely under the body of the carriage, to side springs, by means of" saddle-clips. The drawings show a scroll-ended half elliptic spring, substantially such as was used in the Robert Pierce buggy, and the specification points out that the saddle-clips are to be adjusted according as the ends of the semi-elliptic springs" are made with or without scrolls." Another class of semi-elliptic springs was without scrolls at the ends, and it is contended for the plainant that it is to this class, and this class only, that the claim of the patent relates. The drawings in the patent show springs of this class. It appears by the testimony that the object of scrolling the ends of half springs is to get a somewhat greater length of spring between bearings a given distance apart, and thereby somewhat mote elasticity and motion; and that the use of square-ended or scroll-ended springs is dictated by the degree of elasticity desired in a particular carriage spring. It is obvious, however, that the degree of elasticity depends largely upon the amount of material used in the spring, and that a scroll-ended spring may be practically as stiff as one without a scroll end, and one without a scroll end may be practically as elastic as one with a scroll-end. It is probably true that, as between springs of the two classes, when each has the same degree of elasticity as the other, the scroll-ended spring would lend a freer lateral movement to a carriage or buggy body than the other; and an ingenious argument has been advanced by counsel and by the experts for the complainant to show that in the class of carriages to which the patent relates it is desirable that there be practically no sidewise movement to the carriage body. If there were anything in the specification to suggest this, the somewhat shadowy difference. of function between the two springs might be apprehended and emphasized to denote that one should not be-treated as the equivalent of the other. But it could be urged with equal force that the semi-elliptic spring of the claim is one of either class, and that the use of scroll-ended springs, when interposed between the side-bars and the wagon body, would be an infringement of the claim. Indeed, in a former suit brought upon this patent, the alleged infringing springs' were scrollended half elliptic springs, but the ends did not extend appreciably beyond the outside line of the side-bars; and the complainant's expert gives it as his opinion that the use of such scroll-ended springs between the side-bars of the wagon body would be an infringement of the patent.
SHELDON AXLE CO. t1. STANDARD AXLE-WORKS.
In the absence of any language to indicate that a semi-elliptic spring of a special form is an element of the claim, it must be held that the claim specifies one of any well-known form adapted to be interposed between the side-bars and the wagon body. Consequently such springs a/\ were used in the Robert Pierce buggy are the springs of the patent, and the defense of prior public use is established. The bill is dismissed, with costs. '
Co. v. STANDARD
(O!rcuit Oourt, E. D. Pennsylvania. February 21,1889.)
PATENTS FOR INVENTIONS-ASSIGNMENT AND LICENSE-SUBSEQUENT POB"' CHASERS OF ARTICLE.
Where patentees transfer all their right and interest within specified territorial'limits, tog-ether with any improvements and reissues which may thereafter be made or granted, subsequent purchasers.. from the patentees, of the patented with notice :of such assignment" take subject to the rights of the and cannot use the articles within their territory.
Where such purchasers purchase the patentees" remaining interest, knowing that the assignees have an interest, and, on being informed by the latter of the e;x:tent of their interest, renounce the contract. snd purchase the articles, they will be held to have had actual notice of the assignment, though they testify that the patentees denied the assignees' statement respecting their interest. ,
In Equity. Bill by the Sheldon Axle Company against the Standard Axle-Works. to restrain defendant from using a certain patented machine within territory claimed exclusively by complainant. John R. Bennett, for complainant. Fleming & McCarrell, for defendant. BUTLER, J. The principal objections made to the plaintiff's title are met by the amendment to the record just filed. The transfer from the Philadelphia Axle Company is properly executed. The state statute relating to the execution of deeds by such companies has application to transfers of real estate. The plaintiffs owned the interest acquired by the Philadelphia Axle -Company.. The patentees transferred to this company all their right :and interest in the patent, and any improvements and reissues which might thereafter be made or granted, within the,territorial limits specified in the transfer. The company thus took the exclusive monopoly -of the manufacture, use, and sale within these limits. The patentees thereafter could not interfere with the enjoyment of this monopoly, .and consequently could, not authorize anyone else to do so. Subsequent assignees of interests, and purchasers of machines, (with notice,) took subject to the company's rights. This seems entirely clear. It is urged, however, that Adams v. Burke, 17 Wall. 453, decides other-
Wise, as respeCts the use of nlaohines subsequently purchased; that such use may be:enjoyed within tMsterritory. It would be indeed, ifthiswereso. It is as clear as language can make it that the right to use wjthin: the. territory, is as distinctly conveyed as the right .to manufacture'and sell. It is not, of course, questioned tha:tthe latter right (',aonotbemterferedwith. .On what ground, then, can such a distinction be supported? None has been suggested, and we can see none. It is urged, however, that this distinction is drawn in Adams v. Burke. We . do not so understand that case.hThei·e the patentees assigned their right to manufacture, use, and sell, within certain territorial limits, and subsequently transfel'red their remaining interest to .another. The patented article was a coffin lid. The purchaser of a lid from the first assignee used it outside the. prescribed limits. Of this use the second assignee complained.' The question thus raised was one of construction. Its deturned on the interpretation of :thefirst assignment. If the use of lids sold under this instrument was intended to be confined to the territory the complaint,,",$sweJl founded; otherwise it was not. The court (Ui)'ing stress: on the character of fact that it is incapable of continuous use) held that the use was not intended to be so confined; that the right to sell (which is distinct frOID the right to, manufa<:ture and use) contempll,lteq a use of the lids sold, .everywhere; consequenHy, that the second assignee took subject to this right, and Dojnst caUSe ofcoIDlllaint. The case stands on this jntertherefore pretation Q( the ,contract. The COUd:'t says: "It would ingraft a limitation not contemplated, * * * nor within the reason of the contract, to say that it [the lid] could opJy be used within the ten-mile circle," to which the right of sale was confined. This construction seems to rest on, the conclusion that as It sale by the patentees before assigning, ferred a right to such unrestricted use,the assignment of their authority to sell conJerred on purchasers under it the same unrestricted use. The court distinguished (as it had done before) between the right to manufacture and use and the right to sell, and held that the territorial limitation wasncit intended to restrict the use of lids sold. What is said in this case of the patentee's "receipt of compensation for the use' outside the territory," of a sale "emancipating tne patented article from the lhanopoIy," etc., was applicable there, but it is inapplicable to the case before us. The defendants here did not pay for a use within the plaintiffs' use which they knew the patentees had previously sold <and received compenElation for; Theil' purchase could not emancipate the machine from a monopoly which, their vendors did .not own and could not interfere with. The distinction (which seems to be broad and plain) between our case and Adams v. Burke consists in the facts that the assignment here (under which the plaintiffs hold) is first in the order of time,conferring, upon them the entire monopoly of the patent ,vithin their territory, and that the second assignment (under which the defendants hold) is, subject to this; while in' Adams v. BUtrke the plaiiltiff'a assignment was subsequent to that nnder which the defendant purchased,by which latter assignment, as the court held, a right was transferred to
Ii. STANDARD AXLE-WORKS.
use the article so purchased everywhere. The situation of the parties in Adams v. Burke is here reversed, which makes all the difference in the world,-rendering the decision in that case wholly inapplicable to this. Other decisions of the supreme court, cited by the defendants, lend no support to tbeir Bloomer v. McQuewan, 14 How. 549, deterlawful purchase of a patented machine ronmines no more than fers a right to use it until worn out, notwithstanding the patent may have expired and been renewed itithe mean time. General obse.rvations made by the court in disposing Of such a case can have no influence in deciding the question before us. C!haffee v. Belting G>., 22 How. 217, and )f1itchell v. Hawley, 16 Wall. 544, are equallyinapplicablej the facts in'volved bear 'no relation to those before us. Nor are the cases cited from ,[the circuit courts entitled to greater influence. We had occasion to consider them in Hatch v. Adams, 22 Fed. Rep. 434, and nothing need be added to wha,t is there sai4 on the subject. The foregdt'ng is pr'ediea.tedon the supposition that the their predecessors, Ives and Miller, had knowledge of the previouS assignment to the Philadelphia Axle Company. Had theysuch"knowleqge? Notice may be actual or constructive. Thelatter (which results from authorized 'record) 1 "esand Miller had not. The duty 'of reeor\ling ,was: neglected uritilafter they had purchased. It is entirely '. clear, that they ha:dactual notice. A review of the' tp.stimony 'l'he fact is abundantly proved. hes respecting and Miller first purchased the 'patentee's entire reD;laining interest, some months after the transfer to the company, with knowledge that, the la.tter hadari:interest; and being informedhy the company ofthe character and' extent of this interest, they refused to pay the c011sideration, returned the property, and entered into a contract for 20 machines, one of wbich was sold to the defendants, brought within the plaintiffs' :. territory, and used. It is unimportant that Mr. Miller says the patentees denied the company's statement respecting its interest. The latterwas notrequired to do more than inform Ives and Miller oHt. Ives and Miller, :however, acted as if they believed it; declining to carry out their contrlilct, and returning the property. It is unnecessary in this .case to invoke the rule that knowledge of facts sufficient to puta prudent man to inquiry is notice. Direct, explicit notice is proved. That the defendants also had notice (ctmstructive as well as actual) is equally clear. The assignment 'was on record several years before their purchase; and the evideJ?ce abundantly shows that they had actual knowledge of the plaintiffs" ri6hts; Th'eir correspondence with I ves and Miller puts this beyond dqubt. Itshows. riot only that they were fully apprilled of these that they direCted their most earnest efforts to the discovery rights, of meanswberehy the eJ;ljoymenL of them might be, circumvented and defeated., : They were slow to believe that a purchase outside this territory would confer a right to use the machine within, (in view of the . exclusive right vested in tbe plaintiffs,) and they consequently demanded a guaranty ffo,in +ves, and MiiJer. This' beingrefl1sed, however, they 1;Q take tbe risk. A,decree must entered for the plaintiffs.
et al. v.
BOSTON CAR SPRING CO.
(Oircuit Oourt, D. MaB8achu8etf8.
March 1, 1889.)
P4TENTS FOR INVENTIONS-INFRINGEMENT-COATING METAl,S WITH RUBBER.
The invention described in letters patent of May 6, 1879, to Isaac Adams, Jr., for an improvement in coating metallic articles with rubber, consists in int.erposing between the metallic article and the rubber a thin film of any metal, preferably copper. which at the temperature of vulcanization has a considerable tendency to unite with the sulphur in the rubber. In view ot the fact that the patent proceeds on the theory that the film must be very thin. and that copper is the best· metal, because a firm cohesion may be obtained from a very thin film of it, and in view of the opinion on granting all injunction, (21l<'ed. Rep. 67,)'recognizing such to be the theory of the invention, held, that defendants are not in contempt by using an alloy of copper and zinc, which need not be thin.
In Equity. On motion for an attachment for contempt. T. W. Olarke. for complainants. John L. _ Roberta, for defendants. S.
COLT, J. This is a motion for an attachment for contempt. Thecomplainants contend that are violating an injunction order of this court. The question turns upon .whether the defendants. are using the Adams process for covering metallic articles with rubber, described in his patent of May 6, 1879, which plltent has been sustained by this court, and the defendant adjudged to have infringed. 21 Fed. Rep. 67. In .order to determine the scope of the Adams patent, it is. well to refer to the opinion of Mr. Justice GRAY in this case. He begins. by referring to the specification. which states that great difficulty has been experienced in making rubber adhere securely to metals, and that by the patented improvement a firm adhesion may be obtained. Theinvention consists in interposing between the metallic article and therubber a film of any metal which, at the temperature of vulcanization, has a considerable tendency to unite with the sulphur always contained in the rubber compounds. Of the metals possessing such tendency, the films of which may be interposed, the most suitable are copperand silver, and of them copper is the easiest, as as the cheapest, to. apply. Lead and zinc may likewise be used; there is greater difficulty in obtaining a suitable deposit of these metals for the interposing film. The opinion proceeds:
"The specification throughout insists upon the necessity of making the in-terposed film very thin. It states that the film must not be of the same metal the article on which it is deposited; that it may be produced either by dipping or by electro-plating; that in covering iron, steel, or tin articles with copper, the method of dipping is preferable, and the article must be immersed in a weak solution of SUlphate of copper just long enongh to produce a bright. copper-colored depOSIt; and that, when the. method of electro-plating is. adopted,' great care should be taken that too thick a film be not deposited, and a film such as is known as ·coloring' or · striking' is sufficient. ... ... If< According to the evidence, the peculiar value of this invention consists in thevery thin film of copper or other suitable metal which, in the process of vul,