position by the supporting mechanism, until the latter is moved by the combination lock. The· defense of the Yale Lock Company, case .against the Berkshire National Bank was assumed by the Hall Safe Lock Company, of Cincinnati, Ohio, or by Mr. Hall, its president, who subsequently became president of the defendant company, which carried on lock and mechanism now d/;timed to be an inthe manufacture of fringement. . All the questions presented here were presented in that case, and it was decided ad¥ersely to the defendant. I have read the opinions of Judge SHIPMAN and of Judge LOWELL, and, aside from considerations of comity, which, however, I am not at all inclined to di!lregard, have found them so entirely satisfactory that Ithink it toeriter into further details. Upon the authority of the cases decided by them, a decree for an injunctiQn and account, with costs, will be entered against the defendant.
CoNSOLIDATED OIL-WELL PACKER Co. 'l1. GALEY.
The first claim of letters patent, Issued February 7.1865, to John R. Cross, for improvements in packing for oil-wells, was carefully limited to a packer in which the rings which compre,sll or packing material were operated from the top of the well by screw-rods. lIeld, that the second claim' of reissued letters No. 7,772, dated July 8,1877, which omits that limitation. is an undue expansion of the original. It is unimportant 1n a reissue issued 11 years after the date of the patent that different means for operating the rings were stated in the original specifications, as they were not claimed.
LETTERS-PAQKERS FOR OIL,-WELLS.
8. SAME. -
Letters patent issued February 6,1866, to Robinson & Strong. described a packer composed of a cone which ,was placed upon the elld of one of the sections of tubing, which could be made apart or attached to the tube, and a concave of elastic material. attached to the upper tubing, which, when the upper tubing reached the cone, was by its aid pressed.out against the sides of the well. In the specifications, of reissued letters No. 8,786. dated July 1, 1879, the cone became an enlargement or unyielding. band or ring, and the concave became a ring, or band ofelas-tic m.8terin.1. which, as the upper section moved downward. was compressed or expanded. Held, that the reissue was void for enlargement of claiml\.
Claim 1 of letters patent issued to Francis Martin September 12. 1865, was: "In packing the tubes of oil and other deep wells. connecting the ends of the packing or apparatus to separate or disconnected sections of the well-tube. so as to inclose the joint within said packing device." Claim 2. such separate sections of the well-tube to each other by means of a coupling, one end of which slides on one of the sections." Claim 4 of reo issued letters No. 7.244. dated July 25. 1876, was: "In combination with the eduction tube, * * * an elastic or flexible packing, l!o rim or shoulder upon the eduction tube, and a corresponding rim upon the packer support, whereby when the eduction tube is removed from t110 well, the rim or shoulthe packer support." .Held, ders shall engage with each that the is not an the secoIid'claim ofthe originaL
In Equity.' Bill to restrain infringement of letters patent.
CONSOLIDATED OIL-WELL PACKER CO. t:. GALEY.
H. H. Doubleday and Frost C'oe, for plaintiff. James C. Boyce, for defendant.
This is a bill in equity to restrain the defendant from the alleged imringement of reissued letters patent, No.7 ,772, dated July 3, 1877, to John R. Cross, assigllor to H. H. Bliss, of reissued letters patent No. 8,786, dated July 1, 1879, to John K. Robinson and David A. Strong, and of reissued letters patent No.7 ,244, dated July 25, t876, to Francis Martin, assignor to Henry H. Doubleday, all being for improvements in packing for oil or deep wells. The original patents were issued as follows: The Cross patent, upon February 7, 1865; the Robinson & Strong patent, upon February 6, 1866; and the Martin patent, upon September 12,1865. The Cross and Martin patents w'ere before me in the case of Well Packer Co. v. Eaton, C'ol6 k Bv/mham' Co., in the district of Connecticut, and the alleged infringeingdeVice in this case is believed' to be substantially the same which wastlu1 subject of that suit. The opinion in that case (12 Fed. Rep. 8(5)statesthe factsrelaHng to ,the history of the art, the chllracterof the improvements which were the subject of the Cross and Martin patents, the several claims which were said to be infringed, the claims of 'the original Cross patent, reason why all the claims of the reissued Cross'pate!).t were deemed to be invalid, unless limited to the scope qf the original whicll case there was no ihfringement;and the f!l(,lt that the .of one. only of the reisSued was in dispute. The discussion in, the present case was confined,by agreement oftheparties, to the consideration of the validity of the reissues, and all other que'stioIlfJ which may arise were reserved for a future hearing. It is earnestly contended by the plaintiff that theseconq. claim of the reissued Crqss, patent was, not an undue e:¥:pansion of the first'cll;l.im 9f the original patent. The question was succinctly stated and answered intbe decision in the Connecticut case, and little is to be added to what was there said. The first claim of the original patent was' carefully limited to a packer in which the rings which compress or relax the packing ma,terial are operated from the top of the well by screw-rods., The second claim of the reissue omits that limitation, and thus, 11 years after the.original patent was granted, its scope was greatly enlarged. It is not important that other and ditferent means by which the, rings might be, operated were state(} in the original specification, because means were not claimed, and the invention" as patented, was limited to the use of screw-rods and their equivalent, and so remained for a long .period. ,,'(he Robinson & Strong reissue, which was granted 13 ,years after the date ofthe original patent, is of the same ,The packer which was descl.'ibed in the original patent was constructed :a$ fQUo\V$: , A cone was placed upon the end of one of the s&ctiona of the tubing, ",Mch could be apa,rt of the tube, oreould attached thereto. A concave, made ofelastic material, was atta.ched to the upper tubing, "whiohl,when the upper tubing reached the cone, was by ita aid ,pressed i()ut oithe weJ.l. Thecl!tiro,s: as follow.s::
"(1) The tubes, Band E, forming a telescopic joint, in combination with the flexible packing, G, substantially as described. (2) In combination with a telescopic joint, the conical enlargement, A, slots, F, and screws or pins, D, substantially as described. (3) The cone, A, and flexible packing. G, arranged and operating substantially as described, forming a packing both for the well and the tube." . The first claim, unless the tube, B, should be construed to mean the tube with the attached cone, was larger than the invention. The specification of the reissue was rewritten and expanded. The cone became an enlargement or unyielding band or rillg, and the concave became a ring or band of elastic material, which, as the upper section moved downward, was compressed or expanded, and this, it was said, was only one form of the invention. The first three claims of the reissue are capable of including a large variety of devices. The claims are as follows: "(1) In combinatiouwith the eduction tube of an oil or other deep well, an outer tubular connection, attached to the tubing in such manner that ·the upper section can move vertically. and a rubber annulus supported against .downward thrust by the outer tubular connection, and pressed against the wall of the well by the weight of the vertically-moving eduction tube, substantially as set forth. (2) An eduction tube of an oil or other deep well, made in two sections, connected with each other by means of an outer tubular connection in such manner that tht! upper section can slide vertically, and the rubber annulus: surrounding the tube supported against downward thrust by the lower tubesectionj and pressedagainst the wall of the well by the upper .tube section, sUbstantially as set forth. (3) In combination with the eduction tube of an.oil or other deep well, which is composed of two sections, an elastic or flexible packing, and 8 telescopic coupling, which is provided with means, substantially as described, whereby, when the upper section is removed from tbe well, the lower section will be carried up with it. (4) An eduction tube o( an oil-well or other deep well, composed of two sections cOllpled together iusuch manner that the upper section can slide vertically relative to the lower section, in combination with a flexible ring or band suppOrted upon one bf the tube sections, and all unyielding wedge-shaped enlargement which presses the packing against the wall of the well when tbe upper section of the tUbing moves downward relative to the lower section, substantially as set forth."
In these claims the device which was clearly described in and was the only of the original specification is not described. The cone and the concave packing have both disappeared. In place of the cone the first claim has" an outer tubular connection attached to the tubin/l;' in such manner that the upper section can move vertically," and has in place of the concave packing" a'rubber annulus supported against downward thrust by the outer tubular connection." Each of the other claims iSa marked example of the same attempt to expand a narrow patent 'and a narrow invention so as to cover a broad territory. The thing which was the subject of the original patent and the thing which it is desired to bring within the terms of the reissue are entirely dissimilar. . The important. part of the Martin invention' was" a series of flat springs, arranged lengthwise in the form of a cylinder about a welltube, the latter being divided or made in two sections within the points inclosed pythe springs, and their ends connected by a coupling in such.
PACKER CO. t1. GALEY.
:t way as to make a sliding joint."
The springs were surroundE.:d by a cylinder of gutta-percha or other elastic material. The upper end of the coupling-tube was enlarged on the inside so as to form an inner circum ferential-rim, which slides along the outside of the upper section, but is prevented from coming off the same by a rim surrounding the lower end of 'section, and then the lower end, which contains the packing, is removed from the well. The fourth claim of the reissue is the only one whioh is .said to have been infringed. It is admitted that ,the other claims are an improper enlargement of the original patent, unless they shall be limited to the same construction of springs or leaves; in which case there was no infringement. The point at issue is whether the fourth claim of the reissue and the second claim of the original patent describe the same invention. For the purpose of thoroughly comparing the respective claims I quote the first and second claims of the original patent and the fourth claim of the reissue, which are as follows: "(1) In packing the tubes of oil and other deep wells, oonnecting the ends of the packing device or apparatus to separate or disconnected sections of the well-tube, so as to inclose the joint within said packing device, substantially as above described. (2) Connecting such separate sections .of the well-tube each other by means of a coupling, one end of which slides on one of the sections, substantially as described," "(4) In combination with the eduction tube of an artesian well, an elastic or flexible packing, a rim or shoulder upon the eduction tube, and a corresponding rim upon the packer support, whereby, when the eduction tube is removed from the well, the rim or shoulders shall engage with each other, and withdraw the packer support, substantially as setfol'th. " The second claim of the original is for that· portion of a packing device for tubes of oil-wells which consists of separa,te sections of the welltube, connected together by means of the described coupling, and does not describe any particular kind of packing. The claim has for its elements an elastic packing, separate tube sections-one being the uppertube and the other the packer support-connected together by the described rims or coupling. The fourth claim of the reissue is not an enlargement or expansion of the second claim of the original, but states in more clear and precise language what is contained in the inartificiallanguage of the original claim. The infringing device would have infringed the terms of that claim. It must be remembered that upon this hearing the validity of the reissues, as compared with the original patents, is solely in issue. The novelty or the patentability of the various devices or parts 01 devices is not now a subject ofconsideration. The defendant insists that if the complainant is entitled to a decree upon this claim it must be upon condition of a disclaimer. so as to limit the patented invention t-o that which was contained in the original patand without costs. It is not now necessary to consider the question -of costs, because, upon a hearing of the facts the court may be of opinion that the invention of the fourth claim has no patentable novelty, and that the bill should be dismissed.
WHITE'S GOLDEN LUBRICATOR
(Oircuit Oourt. S. D. Ohio. May 4,1889,)
The word "Valvoline." compoun<ied and used on packages of lubricating oUs by plaintiffs. and registered, /,S a tr\l.de-mark, may be used for that purpose, and the use thereof by defendant in the same manner will be enjoined, though defendant uses his own name in connection with, the word..
In Equity. On motion for temporary injunction. Kittredge &-Wilby, for complainants. J(YI'dan &- J(YI'dan, for respondent.
SAGE, J., «(YI'aUy.) This ,is a motion for a temporary injunction to restrain defendant from the infringement of complainants' trade-mark, and "Valvoline." The complainants set forth in their bill that they have been for many years, engagEld in the manufacture of lubricating oilsj that since about the year 1873 they have used as a trade-mark for their lubricntiI1g oils the wbrd "Valvoline," a fanciful word invented by themselves, applied to their pitckages as a trade-mark, and that in the month of May, 1881, if was' registered. under' the statntes of the According to the registry certificate, ,the sists of the word "Valvoltne,"aeshown in the fac simile attached to the " Extending through the center of it is a' half-moon, or crescent, containing dots or stars; but these, iL is said, may be omitted, and some other device substituted, or they may be omitted altogether, out material change. That the defendants have been using this word as a designation or mark for their lubricating oils is not denied. Theydo not use the crescent, or, half-moon, either with or without the dots or stars; but they use the word 'IVah'oline" in connection with their own name. That is to: say, their oil is ,sold as "White's Golden Lubricator Valvoline No.'} or 2," and ,other numbers,and iesolabeled. The tf'ense is that "Valvoline" is a descriptive wordj that it is really a pound made up of the words "valve" and "oleinej" that its literal. nification is "valve oilj" and that the law'of trade-marks does not permit :a descriptive word, or rather a word descriptive of the article,t</>, be propriated as a trade-mark,-which is undouhtedlythe law, so settled that it requires no verification.' It,would be out of all reason to say that 'a man should not be at liberty to sella gun as a gun because some other person had choMn to appropriate that name as a trade-mark for the guns he wanted to sell. And hence no person has any right to appropriate as a trade-mark a'word of the language which is descriptive of the article ito which the'trade-mark is applied. But that is quite different from the 'proposition 'presented in this case. Here there,.wBs no such word as article sold was known in the language and to the trade as lubricating oil. That was the appellation descriptive of that kind or grade.Qf oil, and it could not be appropriated as a trade-mark. But these complainants compounded the word "Valvoline," and at the