i , . \if
Or.nsv. BtiOWN 'ei al.
Pl.um IiWBNTIONS-ANTIOIPATldN"':'HoBS. LetWr8:!Paient No. 148 973, issued March, ,24,1874" to Johnl}. ;Qlds, :(01' ImproveU/.entiq hUQiIi,i (lOJ)slstlng ia combinIng with a wooden hub one or more, solid seamless metaJ.!.ic,) \!anQs, whioh pccupy annu\ar gtooves in its peripbe!'Y.l Is void for want of novetty' baving' \:leen anticIpated bY'letters patent No. 128,Mfl;Issued JUly 2, p.,.hine.,as Jones.,' bY. letters p.ate.ntN.0.· 14.9,625, issued April 14; 1.874., to Johnson V. by letters patent No. 14l1.251!1 ts.sued January 6,1874, to C. H. Guard, by letters patent No; 87,225,issued JJecember 28; 1862, to J. W.GG.1'dner, and by uses of the patented devio,,"
9.s.um::r;ll;;XTBNT Oll CLA.m..
(Ctrcuit Oourt, S. D. OMo. 'March 22,1890.r . :, ;. "
" " Up.der Rev. St. U. S. § 4888, which requIres an applicant for to "point out . 'and distihctly claim the par.t, :improvement; 'or, combinatIon whIch he claIms as his claIm of ,aIq.patent which is ,for "a wooden hub by one or more .seamless IttlltalUc bands, whIch' occupy. annular grooves in the perlphtlryof:thEl hUb" substantia1ly 88 described." beIng explicit, "ltered,o:r enlarge4 by the specification. or ptherwis8.
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InEquity. BilIto of a patent. B. F. Thurston and Arthur Stem, for complainant. , ParkirllJO'fl.cllr' Parkinson, for defendants. k , .""f.':":',. "'f
'SAGlll,"t}"The cotiJ.plail1afit'spateht,No. 148,9'i'3td8:ted March 24, 187\1,' applibationfiled March 4, 1874, is for an improvement in hubs but one 'claim', which is as follows: "A wooden more seattlless metallicbands, which occupy: annular 'grooves in,ttheperip'hery oHne bub, substltntially:as described. II' tn' the domplainant states that his invention Jconsists in combining,mth,a wooden hub one or more solid seamless metallic strengthening Tlari:ds, which occupy annular grooves in its periphery. lIe, disclaims. tileans for' setting the bands, and declares that they tmttionof which it is iriteilded shall be covered by thatthe'operation, as well as the means employed,are,1.Q ,constitute, the subject of separate· applications for letters patent:": ,Tb.'especification sets 'forth that the annular grooves may be cut qytiirning, at any desired poil'ltbetween the mortise line of tbe hub and jtsel1ds;. and that their depth and width may be varied. The diinensibns' ofihe tland sho.uld be such as to fill the groove, and make It finish flush surface of the hub. The bands ltre preferably pliedwben cold,' 'and may 'be composed of wrought-iron or steel, or of cast-iron or r()l1ed bra);s, or' of malleable iron, and ofany required thickness orwidthj but it is important that thernetal employed'possess fair' ductile propertie,s, and be ofSuch a character as not to bel1nduly or injuriously weakened inits'tehSile capacity by changes necessarily resulting from the process of setting the bands iIfthegrooves. In" the process of set-' ting, the hub is to pass snugly over the outer shoulder of the groove, and abut with more or less bearing against the inner shoulder. The hub, with the band, is then placed endwise into a solid female die, which has an interior surface cQrresponding at one point, as nearly as it may be practicable to make it, with the exterior surface of that portion of the
, ,OLpSt1. BR()WN.
finished hub adjacent to the hand. To the protruding end of the hub pressure. is then applied in lJ. line its a,xis, by of a. press, or byJevers or screw-so The band is thus bodily upset, its,diam., eter reduced, iLsw-idtband.thickness slightly ,increased, aud maide to !'Ingage with great pressure with the wooden porti()n of the hub by T,I:1e specification further states that, "when properly appJied with dies of sl;litable size and form, the wooden portion,of thebuq is materially improved adjacent to these bands, because the fibers of the wood will, thereby be condensed to a desirable degree. the expal1sioJ}of the metal bands during the setting operation, the grooves are absolutely filled. The upsetting of the. metal, which was originally soft, changes its character in hardening and condenlling it." "By sub., jecting t1).ehub to more or less compression adjaceIlt to the band during the setting process, it will be seen that the wood .will be mechanicallY' condenlled to a greater or less degree, and that the:pands will hold it il) that condensed condition; and for that reason such hubs are less liable to I check' Or 'crack.'" The.. specification concludes as follows: ..I amawate that hubs haveheretofol'e been strengthened by metallic bands applied to their peripheries in various ways, and that a variety of mpans have been employed fQr securing them,in position; also that annular grooves in hubs haTe peen filled with metallic wire, wrapped therein in lengths upon a strjp, a broken band, with the whole subsequently co'Vered with solder. Such bands obViously differ froni Mne. as they are not solid nOl' seamless, and cannot be made to so compress the, wood beneathtbem as to compensate for that inevitable SUbsequent shrinkage, which occurs in all cases. I am also aware tIl/it mortised metallic flanged bands have been driven up()n the wooden centers of hubs, .and secured in position by abutting the edge of one end of said l1anged band against an annular sholJlder, and by reducing. the diameter of the edge at the opposite end, so as to cause it to abut against a shoulder formed by cutting an annular recess in the periphery of the hub. Such mortised bands are employed in so-called ·tlanged wheels,' and in such wh6l'ls no additional strengthening bands are reqUisite; for it is by the mortised bands that all strain is bome, whether it be induced by the driving of the spokes or by SUbsequent use of the wheel, I am also aware that a mortised metallic shell has been heretofore combined with a wooden center construetpd in two sectionR, and that these sections have been held in position within said shell by upsetting both ends of the shell against the outer ends of the two wooden sections. My improved hub differs from any pre-existing one known to me, in being strictly a wooden hub. and in having the s'trengthp,ning bands of solid seamless metal set in annular grooves c"pn the periphery of the hub. and made to lill.and occupy said grooves, whereby the said hub may be made of the minimum size and of any required form, yet possess the requisite strength, with positive security of the bands in position. and without any liability of their being loosened by subsequent contraction of the hub by reason of ordinary and usual 'shrinkage of the wood." The answer d-enies infringement; denies that the complainant was the original or first inventor; avers the invalidity of the patent for want of novelty, l'\.Ild for want of patentable invention; that the alleged invention h,adbe6Ild6$eribed patents and printed publications, and had
been ktiownand in public use and on sale in this country prior to the alleged iu'Vention by the patentee; that it had been abandoned, and that, by delay<and laches, complainant has waived any right to relief in equity. It is olear from the record that seamless metallic strengthening bands . fixed byconipressiou upon wheels and other objects, were known and commonly used long prior to the date of the complainant's alleged invention.· . AcomIflon method was t<> apply them heated, and allow them to contract into their places upon the wood. Another method commonly known' and used was to drive the band, either hot or cold, upon a tapering 8urface,Jand t.herehy secure the effect of compression. Bands set by these methods, however, cannot properly be said to have antici';' pated' the bahd described in the complainant's patent. ,They did not occupy, as do grooves, although it is true that the sutface of the wood immediately under the band was somewhat compressed' by·themethod of shrinking or of driving the band to its place. But the hot band,' when contracted to position, would char the wood, Rnd destroy its fibers and elasticity; and the driven band was not "upset," but, if at all changed by being driven, was stretched over the hub. In either case the. band. would become loose and displaced by the shrinkage of the wood. Between these bands and the complainants' there is clearly a patentable difference in. favor of the latter. Quite Ii number of anticipating devices-that iato say, of bands of aate later tbllIlthe shrunken and driven bands a.bove referred to-are set up in thean$wer and in the evidence, and the question of anticipationtnrnsnpon the construction to be given to them, and to the testimony .concArning their manufacture and use. It was specially in· sisted on behalf of the defendants at the hearing that the claim of the 'complllinant'spaterit is anticipated QJ patent No. 128;546, toPhineaa Jones,dated 'July 2, 1872; by pa,tent No. 146,250, dated January 6, 1874,.andissuedto C. H.Guax;d; by piltent No. 149,625, dated April 14, 1874, and issuedtopJohnson V. Woolsey; by what is referred to as the IlMarietta use," the "Peru use", ,the "Furd-Guard use," the "Ford use", Ilnd the tbepatents referred to are for improvements in hubs for vehicle wheels.' T4e Jones patent' shows a seamless metal· lic strengthep.ingband, which is driven onto the hub in such manner that one edge rests. against and £lusb with one wall of an annular groove in the periphery of the hub. The specification sets forth that, when the band has been set in position on the hub, then,by means of suita· ble dies and other devices, its flange is forced down into the annular groove, or, as it in the specification, recess; thus bringing the flange, both rear, flush with the surface pf the wood, so as to solid again!!t the shoulder, front and rear, and positively prevent longitudinal movement; the object being to .secure the band,. to prevent any tendency to endwise and also that the edges of the band maybefi'ush with the surface of the wood center. The band of the Jones patent performs the additional function of bracing the spokes, but that fact does not affect the question whether it is an anticipation of the complainant's band. In the Gnard patent we find V·
OLDS fl. BROWN.
formed grooves encirc)ing the hub near the ends of the mortises, which are designed to receive the spokes. A tin band formed to fit the groove, and made to encircle the hub nearly, but leaving sufficient space between its ends to admit of compression without causing its ends to overlap, is first placed in the groove. This, however, is not essential, and may be omitted. Then a copper wire, one end of which is soldered or otherwise secured in the acute angle of the tin band on the hub; is wound round the hub on the tin band spirally towards its center on the inclined wall of the groove, "with any force within the capacity of the wire," and, when the groove is. filled to about the surface of the hub, the wire is. cut, and the free end soldered or otherwise secured to the tin band or hub. Solder is now employed in such manner as to unite the tin bands and wires in a mass, and to fill the groove to the surface of the hub, or to fill the design of the finish, which the specification provides shall be as represented therein, or to meet the tastes of the user. The patentee states in his specification that he does not wish to confine himself" to the particular form of grooves, or to the material represented, .as it is evident that other forms of grooves and other material may be employed without departing from the principle of my invention." The hub of the Woolsey patent is provided with two bands surrounding it, one at each end of the mortise space. The under inner edge of the band is beveled back towards the center of the under surface, as shown in the drawing, and "the outer edge is curved downward and pressed into the wood, there being a groove made in the hub to receive the edge of the band as it is bent or pressed into it to a little depth, forming a shoulder for the curved edge of the band to rest against, to thereby prevent it from coming off or loose." The patentee states that, "in driving the tenons of the spokes into their mortises, the mortises at the surface are very. liable to crowd out, in consequence of the strain of the tenons against theends. This crowding or forcing out of the wood weakens the ends of the mortises, so that there is less support for the tenon than if such forcing out of the wood had not been; to avoid which is the purpose of the bands referred to, which are pressed upon the hub at each end of the mortise, flush with the surface. The outer edge is then rolled down and pressed into the wood, thereby forming a smooth, rounded shG>ulder, while the edge pressed into the wood prevents the band from coming off or loose." For the purpose of comparison, it is necessary to keep in mind the claim of the complainant's patent, for "a wooden hub, strengthened by one -or more seamless metallic bands, which occupy annular grooves in the periphery of the hub, substantially as described." It will be seen at a glance that this is a very broad claim. Looking to the specification for the signification of the words" substantially as described," we find that the grooves may be at any desired· point between the mortise line of the hub and its ends, and that their depth and width may be varied. We find, too, that the band is to be of such dimensions that the groove will be ,wholly filled by.it with its peripherical surface flush with the surface of tlie wood,." if a finish flush. he deemed desirable, as is usuallyth
aiepreferaQly ,applied whem oold, ,and may' be composed of Iwrought.iron or iJteel,1 oC:eastorrolled brass, or ofl'lO'-CaUed"malleableircu/',w:hich: is cast and ,subsequently softened by anI1ealing;and thab theY: maybe made of, &:ny' ,thickness or width whicb:clln,possiblybeofpradticilble value in this aonneetion. The patentee further setS, forth that,I'S' by subjecting ·thel i!i'ub to more or less oonipressionadjiwent,to. the' bimd iduring the setting process, it:will be 'seenthatthe wooa will be meohanicaBy condensed to a greater or less degree, and that the band willsetJure and hold it in that condensed. condition,"andthatthereby "oheakfng""or "cracking" of the hub, js: the resultofcontrltction, "will: be rendered practically impossible. Now, construing the claiodnJthblight .of:thespEicification, it is,in the opinion of the' court, so broad: as to. be anticipated' by' each one of the patents above·referred to.' Itniayibe true that the complainant's 'hub is a marked improvement,buHhe .faful. objection to his patent is ,that he claims what1he did riot iuvenk.,' proposition may be fairly tested by the weH-establishedr.uIe'" tlilat whatever, if subsequent, would fringe, will, if prior, anticipate., If·the Ford and the Guard and the .Woolsey' bands had been subsequent. to the· complainant's patent, they would undoubtedly be infringements, and therefore, being prior; they must be recognized as anticipations;':' . We now come to what is called the "Marietta use." Without reviewing the testimony in detail,>it will be sufficient to 'say, that it satisfies me that prior, to the Marietta hub was constructed withseamlesi:l metallio'bands, occupyhigannular grooves in peripbery. Priotto 1870the:Marietta Wheel Company manufactured 'and sold wheelsstrengthenedbysellmlesS' metallic bands, which were driven on thehub,artd allowed to shririk into position. In the year 1870 the ·compl\ny adopted the'pIan. of compressing the bands iil grooves in the peripheries of the hubs; instead of driving and shrinking them 'on. They were compressed dnto the grooves by the use of sectional dies which fitted into cup"sba!ped sockets. grooves were cut in the hubs,which were then; with the bands upon them, placed within the dies, and the dies forced down into the socket. .This is substantially the process usedby,the complairiant, ,except that his dies are not sectional. There is much conflict of testimony with reference to this use,.hut, upon careful consideration, I have reached theconclusion that the defendants' version is correct. The Marietta use is there'fore also an' anticipation. Next to be considered is the Peru use, dating from 1872, uing until some time in June, 1873. This use relates to a hub of the same generalconstruction'asthe Marietta hub. The business of mannfacturing it was a failure, and the plant, which cost about 810,000, ·was sold for $18,000. The Peru. hub is less valuable than the Olds hub, ,which hasbeenesteemedmueh more highly by the trade, and commands a. higher price; but the complainant's claim is so broad as to includethe Peru hub, and his patent is therefore anticipated by it. The Ford-Guard use was at Tippecanoe, Ohio, beginning in 187.3. It the manufacture of hubs under the Guard patent, which has already
·OJ..D8 V. BROWN.
beeD described; and also of the Ford hub, which has solid bands of brass, compressed into grooves by the use of sectional dies, to serve the purpose of the Guard bands. The mode of construction was as follows: A wooden hub was turned in the lathe to the size required, with the anTIular grooves, over which the bands were placed, arid the hub was then put in a form Or die, which was placed in a screw press. and pressure' applied until the bands were compressed into the grooves in the hub. The hub was then finished in the lathe, so that its appearance was' that ;of a common wooden hub. The intention was to have the bands so compressed as to hold the exterior of the groove tightly enough' to rl;lsist ,the pressure frolll driving the spokes, and to prevent the bands from coming loose while in ·use. In the fall of Ford completed from six: to ten hubs wi.th bands compressed, as above, in the grooves, a:ndtheywere as peffect, according to his sta,tement,as could be made' with thetools a,nd appliancesbe had. He filed a 'cq'Veat on the 8th of December; 1873, but about six months afterwards, henring of complainant's patent, took no further action in the matter. There is a conflict oftestimoby all to the possibility of compressing bands as in the Mariettahub,or the Ford hub, by the use of sectional dies, without crimping; and the witnesses respectively are corroborated by exhibits showing bands thus; compressed and crimped, and others s90wing bands thus compressoowithout crimping., This is a circumstance not so rare as to be altogethel'exceptional in expert testimony.' Possibly the conflict may be reconciled by concluding that the compression by use Of sectional dteswas accomplished omIy by great care, and therefore was not practicable for rapid and cheap manufacture, may account, in. part at'lea.st,. for unsuccessful 'results at Marietta and, Peru. Still there are exhibits indicating that it could be done, and was done. But it was urged upon the hearing that the Ford hub was nothing but an abaftdoned experiment. The record does not sustain this contention. The; Ford hubs"wete complete as articles of manufacture, and, if patentable" aUthlltwas necessary to obtain.a patent was to make application. The abandonment of Ford's expressed intention to make application does not" under the ruling in Gayler v. Wilder, 10 How. 477, help the complainant. The Ford hub must be regarded, therefore, as an. anticipation. The NaUgatuck use was the manufacture at Naugatuck, Conn., in 1872, by E. S.Parmelee, of the Naugatuck Wheel Company, of hubs with seari'lless upset in grooves. The bands were made of iron, of half oval slaape, and compressed into the grooves by the use of sectional dies, in two parts. Three sets of these wheels were shipped gratis toa wheel manuflilcturerof New'Haven. since deceased. What· became of them subsequently does not clearly appear, but tbat wheels were made and used is,establisbed by a preponderance of the ev· idence,and they; too, anticipated the complainant's invention. , After· the hearing of this cause; the record was, upon defendants' appli(,,Stion and complainant's consent, opened I and letters patent No. 37,225, isSued December 23; 1862, to J.W.Gardner"foI' improvement in attaching handles to cutlery;were'introduced in evidence for defendants. having the
plementprovided with a£lattang, arid the handle two parts, placed one at each side ofthe tang secured thereto,by means of ferrales, compressed in recesses of parts of the handle al\d of the tang, by means of: dies arranged in any suitable way; the ferrules thus being made not'only to :grasp the parts'of the handle and the tang" but also made £lush with the exterior Of said parts, and preventing them from· splitting. That this construction corresppnds to ,a: literal of the claim of the complainant's patent is conceded by complainant's counsel, but they urge that the claim, when read with'due reference to the descriptive portion of the specification, 'is really as follows: "A-Wooden hub, as a new article of manufacture,consisting of a wooden body;withseamlest1 metallic bands secured thereto in the manner described in thespeeHication, by upsetting the bands into annular grooves in the peripheryof the hub, condensing ,and consolidating the fibers thereof so that the. bandllare .firmly and ,secured in the hub, and without any liability of. their being loosened by subsequent contraction of the: hub, the whole constituting a strictly wooden .
"! -. .
, The objections to thus paraphrasing the complainant's claim are inIt incorporates into the claim the mtltho.dof setting the bands in the grooves, whereas. the specification expressly reserves not only the. mode of operation; but also the means employed, to constitute the subject of separate applieati6lis for letters .patent. It is significant that whether such applications' were actually made is not disclosed. It is a fair that if made they were rejected, for at the hearing it was argued' for the complainant that the bands cannot be made to 00-: cupytheannull1r g!,ooveswithoutusing the process employed by the complainant, and described ,in fhespecification of his patent;, and if that, or the means employed, hadhoon patented, the complainant would have included the patent or patents therefor in this suit. The reservation also distinguishes this case, from Smith v. Vuwanite Co., 93 U. S. 486, which was cited for complail1lantas ,analogous, but does not apply. The claim, as paraphrased, isalao.inconsistent with the specification, describes the hub as subjected to "more or less' compression adjacent to the band," and'the wood as "mechanically condensed to a greater or less degree." Again, section 4888 of the Revised Statutes requires the inventorto"particularly point out and distinctly claim the part, improvement,or combination which he claims as his invention or discovery." Keeping in mind the rule that the claim, whether the phrase "substantiallyas described," be employed, (as it is in the claim of the complainant's patent,) or not, should alwayabe construed in the light of the description contained in the specification, it must also be remembered that when, as in this case, a claim is explicit, it cannot be altered or enlarged by reference to the specification or otherwise, and that whatever is describpd in the specification, and not claimed, is dedicated to the public. The Gardner invention is a complete anticipation of the complainant's patent, which does nothing more than to substitute for ferrules, fitted and compressed by means of dies in in parts of the handles and in the tangs of cutlery, bands similarly applied to the hubs of carriage and wagon wheels. The bill will be dismissed, at complainant's costs.
SMYTHE V. HENRY.
SMYTHE 11. HENRY
(Circuit Oourt, W. D. NQ'rth CaroUna. February 11, 1890.)
Whllre in title through a .deed and a patent valid on their lace, but in fact void, the deed being forbidden by statute, and the patent being subilequent to another patent: for the same land, a oourt of equity has jurisdiction ,of, a bill to enjoin thllproseQUtion of the action of ejectment, to cancel such. deed and and to oompel disoovery. Courtll of equity have inherent jurisdiction, independent of statute, to decree a sale of ,the land of a decedent fOf the payment of hiJI debts upon application of the devisee and the personal representative.
SllIE-SALE OF LAND OF. DECEDENTS.
LEGISLATIVE GRANT-REsTRAINT ON POWER OF ALIENATION. Under l\ legislative grant to an Indian, which confers on him
the rights of citizenshill, and gives him title to land in tee ,with the right of devising the same, but WhICh expressly withholds ·from hiIn the right of conveying it except b;V lease for a term of two years, a deed of tpf;lland by such Indian is void, the restramt on alienation not being inconsistent with either the estate granted or the citizenship con'lerred. ' Wheresnch Indian atj;empts,to Qonvey such land by deed, and then accepts a lease of the land from his grantee, his possession is 'not that of his grantee, so as to set the statute of liInitations in motion in favor of the Such deed, being' made in violation of an express statute, is not color of title.
LIMITATION.OF AOTIONS-ADV:ERSE POSSESSION.
SllIB-COLOR OF TITLE.
EsTOPPBL BY DEED-LANDLORD AND TENANT.
In such case, the deed from the Indian being void, his execution of the deed and acceptance of the lease do not estop his devisef;ls and their assigns from disputinjr the title of the grantee.
In Equity. Bill by George B. Smythe against R. M. Henry and others, to enjoin the defendants from prosecuting a. certain action of ejectment, and to have certain deeds canceled as clouds on complainant's title to the land' sued for in the action of ejectment. W. H. Malone and Theo. F. Da'Cidsan, for complainant. Cobb &; Merriman, Jones &; Shuford, and Henry Hardwick, for defendants.
DICK,J. When the pleadings and proofs in this case were read at the hearing, I was so well satisfied that the complainant was entitled to the relief that he prayed for that I declined to hear any arguments from his counsel. The argument of the cou,nsel for the defendants was ,so learned, able, and logically arranged, and was urged with such earnest confidence, that I concluded. to postpone my decision until I had time to examine the authorities cited, and give the case my most mature consideration. The counsel on both sides have furnished me elaborate arguments and briefs, but, from the views which I take of the questions of law and fact involved, I think that I can properly determine the rights of parties upon the pleadings, the documentary proofs, and the uncontroverted evidence, without attempting to ascertain the preponderance in the conflict of testimony, or considering fully the manyquestions of law discusE'ed in the arguments of counsel. The first defense insisted upon by the counsel of the defendants is v.41F.no.13-45