(Circuit COWf't, N. D. nZinO'1.B. December 50, 1889.)
Complainant's president being the owner of letters patent, under which It manu.. factured split pulleys, assigned an interest therein,with the right in the assignee to mant!facture, and any impro:vements were to 1;Ie joint property. An employe of complainant instructed the'BSsltrnee in the manufacture, and, it appeared, used BUbstantiBllythe forms claimed lU a patent for which he applied, but assigned to· the president, who assi@ed immedillotelyafte,rita issue to complainant. Held, that complabiant could not aispute the right of the assignee to manufa,cture under the last patent. '
In Equity., Bill for infringement of letters patent·. West & Bond, for complainant. J. H. Raymond, for defendants.
BLODGETT,J. The bill in this case charges the infringement by defendants olthe first claim of patent No. 275,947, granted April 17,1883, to Gustavus B. Sanborn;,for a "split pulley," and of claims Nos. 2,3,4, and 5 of patent No. 851,064, granted October 19, .1886, to Wallace H. Dodge, assignee of Charles McNeal, for a "woooen pulley," and asks an injunction and accounting.' The devices covered by both these patents, and their utility, is aptly described in the second paragraph of the Sanborn patent, as "split pulleys made of wood, or mainly so, such as are used onsbafting for driving machinery, and which are split, or made in separate sections or halves, to provide for putting them on or taking them off their shaft laterally relatively to the shaft, whereby they may be' hung Or removed without disturbing the shaft, and without interfering with other pulleys or devices on the shaft, or the hanp:ers carrying the shaft. 1I The principal feature covered by these two patents' is the division ,of the pulley by a zigzag line, so that the irregular surfaces, when brought together, will interlock, and thus aid in preventing displacement of the parts on the line of separation,-split pUlleys being an old dtlVice, and the patents 'now in question being only for improve· mentson them. The'defenses interposed are: (1) That thedefi:mdant is:agentin the city of Chicago for the sale of pulleys manufactured by the Milburn Gin & Machine Company Of Memphis, Tenn., and that by certain dealings andtransacti.ons between the complainant company and Wallace H.Dodge, the president of the eomplainant· company, and J. D.& T. H. Milburn, and the Milburn Gin & Machine Company, said· Milburn Gin & Machine Company were licensed and authorized to man·' ufacture the pulleysin"<Iuestion, which were sold' by the defendant, as the agent of said gin and machine Company. (2) That the claims of which infringement is chllrgedin the respective patents involved herein aIle void for want of patentable novelty in the devices therein described. (8) That defendants do· not infringe· .'1n regard to the alleged license or permission to the; Milburn Gin & Machi-ne Company to manufacture the pulleys in question, the proof
shows that, for some time prior to the 20th of February, 1885, the complainant company had been engaged in the business of manufacturing split pulleys as licensees of Wallace H. Dodge, its president,under patent No. 260,462, granted July 4,1882, to Wallace H. Dodge and George Philion, and patent No. 276,330, granted April 24, 1883, to said Dodge being also the principal stocksaid Wallace H. holder of the complainant company, and the manager of its business ·affair!!'; that some time shortly prior to February 20, 1885, the factory and plant of the complainant company were substantially destroyed by ·fire, whereby said company met with a severe loss; and became financially embarrassed, and the said Wallace H. Dodge, by .reason.of said loss, also became seriously embarrassed and in need of funds or other ·means to sustain his own credit and that of the complainant; that on the /20th of February, 1885, said Dodge entered into a contract with J. D. & T. H. Milburn, of Memphis, Tenn., whereby he conveyed to the said ·Milbrirnsone-half of the two last above mentioned patents Nos. 260,462 and 276,330, with pl:'ovisions for the. joint management of the interests growing out of the ownership of said patents by a company, to be organized by the parties to said contract, and with the further provision in the contract that "any improvements in pulleys that may be discovered from time to time by either parties, or any improvements that may be purchased from others, shall belong jointly to the parties" ·to said contract; .that,as part of theconsidetation for the transfer of said · patents,thfl Milbul1ns, by their credit and means, aided the complainant company and Dodge, its president, to the amount of nearly·$20,OOO, and ·it was understpod and agreed that the Milburn Gin & MachineCompany, whichwasmainly'ownedby the Milburns, should at once enter upon the manufacture of split 'pulleys of the same kind manufactored by the complainantcompaIiy;.that, in accordance with said agreement audun-derstanding, the Milburn Gin & Machine Company sent one of its men to the complainant company's factory at Mishawaka, Ind., to have him there instructed in the art and business of manufacturing split pulleys, and the complainant furnished tosaid agent and employe of the Milburn Qin & Machine Company all, necessary instrUction'in the manufacture Of and with all patterns and drawings necessary to enable tb,e · MilbutnGin & Machine,Company upon said branch of manufacturing, land that the patterns and drawings, 80 furnished to the said ·agent and employe oti the Milburn Gin & Machine Oompany, were substantial representations of split pulleys, constructed in accordancewith the McNeal patent and the claims thereof now before the courtjthat CharleS McNeal, the alleged inventor of the device covered by the Mc·Neal patent, was at that time the foremanofthe complainant's factory, and instructed the said agent, and furnished him with the drawings and ·plans for such manufacture; that the Milburn Gin & Machine Company :'at once IIDtered upon the manufacture of split,pulleys,' substantially the ·samein form andconstruoiion as those manufactur¢ by the complaiqantcompanY,and Hke.thoseitiquestion in this suit, and, has continued lip to the: commeneemept of this suit,\fith the kno.wl:'sueh
edge of the complainant company; that said Charles McNeal, the alleged inventor of the device covered by the McNeal patent, at or about the time he applied for said patent, assigned all his interest therein to the said Wallace H. Dodge, president of the complainant company, and the said McNeal patent was in accordance with said assignment issued to the said Dodge, as the assignee of McNeal, and that a few days after the issue of said patent said Dodge assigned said patent to the complainant company; that differences arose between the Milburn Gin & Machine Company and the complainant company soon after the issue of the McNeal patent, in regard to accountings between them under the said contradtofFebruary25, 1885, but, althOugh the Milburn Gin & Machine Company has continued to manufacture pulleys substantially like those covered by the claims here in question in the McNeal patent, the complainanthasnever attempted to enjoin or restrain the Milburn Gin & Machine Company from such manufacture. Here, then, we have the.fact established that in February, 1885, complainant was making split pulleys substantially like those now in controversy, under a shop right to use the patents Nos. 260,462 and 276,330, wmchwere owned by the said Wallace H. Dodge, who then was, and still is, the principal owner in complainant company ,and rqanager of its affairs; that Dodge, for the purpose of obtaining means wl1ereby to continue the business of the complainant company, assigned half these two patents to the Milburns, and the Milburl1S,inturn, licensed the Milburn Gin & Machine Company to enter upon the manufacture of split pulleys in said two patents, and the complainant company proceeded to furnish the Milburn Gin & Machine Company with instructionsin the art of manufacturing split pulleys, and with drawings and plans for the construction such pulleys, substantially identical with the form of construction for such pulleys provided for in the McNeal patent, and that the complainant acquiesced in and aided and encouraged the Milburn Gin & Machine Company in entering upon said manufacture. I think,from the facts disclosed, the inference is fairly justifiable that McNeal, as the foreman of the complainant company, had substantially perfected whatever improvement the McNeal patent shows in the construction of· split wood pulleys, at the time the Milburn Gin & Machine Company sent their employe to complainant's factory for instructions, and that in instructing and starting the Milburn Gin & Machine Companyinsuch manufacture the complainant, knowing that the said gin and machine company only intended to manufacture under the Dodge and Philion and Wallace H. Dodge patents,still gave the Gin and Machine company to understand that the appro\'ed form of manufacture under said patents WIlS that for which plans, drawings, and instructions were given to the said Gin and Machine company's agent. I think it very clear tha.t McNeal made whatever invention there is covered by his patent as an employe of the complainant, and intended the complainant to have the benefit of it. This is shown by the· fact tha-t he transferred hiB application for a" patent to Wallace H. Dodge, the president
of the complainant, and that, within a few days after the issue of the patent, said Dodge transferred the patent to the complainant, reciting that the complainant was the real owner thereof. All the dealings and relations between Dodge and the Milburns, and the Milburns and the Milburn Gin & Machine Company, and between the complainant and the Milburn Gin & Machine Company, shown in the proof in this case, satisfy me that Dodge represented and spoke for the complainant company, and that the complainant company understood that the Milburn Gin & Machine Company was expected, under its license from the :M:ilburns, to make just such pulleys as the complainant was then' making, or might thereafter make, under any acquired patent. It therefore seems clear to me that the complainant, under the facts disclosed in this case, is estopped from complaining of the manufacture of split pulleys, such as are in controversy in this case, and such as are covered by the specifications and claims of the McNeal patent. It may also, I think, be fairly insisted that, inasmuch as the compJainant company allowed the McNeal 'patent to issue to Wallace H. Dodge as owner, that whatever rights of manufacture are given under said patent inure to the Milburn Gin & Machine Company under the contract between Dodge and the Milburns, and the license from the Milburns to the Milburn Gin & Machine Company. The Sanborn patent was not purchased by the complainant until some time in December, 1886, and I do not think it necessary to discuss or consider whether that patent came within the provision for the purchase of subsequent improvements in the contract between Dodge and the Milburns or not, as I am abundantly satisfied that the machines Bold by the defendants do not infringe the first claim of that patent. The view I have'taken in regard to the legal effect of the dealings between the complainant and the manufacturers, for whom defendants were acting as agents in the sale of the pulleys in question, relieves me from the necessity of passing upon the question of novelty raised by the defendants in this case. The bill is therefore dismissed for want of equity.
et al. 11.
(OwcuU Oourt, E. D. Pennsylvania.
February 25, 1890.)
PATENTS FOR INVENTIONS-INFRINGEMENTS-AuTOMATIO FANS.
Letters patent to William M. Smith, NO,338,311, March 81, 188B, for automatio fanS; with an adjustable oollar having a spring plug for locking the same to the shaft whioh it incloses, the leaves connecting the collar and vanes, and the peCUliar vane bearings, in combination with the shaft and vanes, as described in specification and shown by model, and limited to exact combination, including peCUliar locking arrangements and,vane bearings and plain and direct equivalents, is not infringed by a regUlator which does not embrace the peculiar locking device or vane bearings described, or their direct equivalents
.. ,B»..iJ.....WJ1O)MILLS-ANALOGOUS USE.. , '. ' . '. .. ' . .' Where the uses are precisely similar, and tbe one device suggests the other, the' fact that· the anticipatory device was 'applied to regulate the vanes of windmills.
while the present was applied to fans for ventilation, which belonged to a ent department of art, does not prevent the two devices from being analogous.
In Eqtlity to Enjoin .Infringement of Patent, by William M. Smith and James Caldwell against· Edward Partridge. . George Northwood, for complainants. Oha8. F. Van Horn, forrespondep.t.
BUTLER, J. The snit is for infrillgement of patent No. 338,311 of March 31, automatic fans;" the claims of which are as follows: "(I) In 8 fan comprislo'gapower-driven shaft or spindle with blades, the with said shaft and adjustable blades thereon, of an adjustable eollar, which locks fast on eaid shaft at different points. and links or connections between said bladi:ls and wl).ereby, by moving said collar, the angle. of inclination ()f: varied, and the latter locked in . tbeiradjusted .delilcribed. (2) The. coml>ination, a spindle having sockets or recesses, a, a, of cross-head or hub. B, havIng female screw sockets, blades, C, C, haVing threaded shanks, 0', C', knob or sleeve, Do having spring plug, F, and links, G, G, SUbstantially as shown and described." : ' The respondent's device (alleged to infringe) is also covered by a patent which contains a great number of claims, the substance of which is as. follows: . "In a rotary fan, the combination of a drlvi:Qg shaft. a wing or biade bolder' haVing lateral tubular wrist-pins, blades or wings having shafts adapted to the. bOre of the wrist-pins, and tubUlar sleeves with gear teeth, fitting upon the outside of Baid pins. stop mechanism fQrlimiting the axial rot.ation of the blade shaft.s,aloose sleeve surrounding the driving shaft,.and.racks connected to.the sleeve, and in gear with the teeth upon tl,le l>lade-shaft slee",es." It is, thus. seen that. 'the. patented devices consist of combinations mainly, if not entirely; of well-known mechanical elements, designed to accompliSh the same is, the regulation of fan vanes. Davices for this purpose, on the fans of windmills, are very old; and these devices are similar to the complainants'. The position assumed, that such fans, and those of more recent origin, intended for ventilation, belong to different departments of art, and that therefore the earlier and later use of the regulators are not analogous, cannot be sustained. The uses are precisely similar; the one suggests the other. The complainants were not first, even, to apply the use to ventilating fans; The validity of their patent, however, is not in issue. The re!lpondent denies infringement only. He does not attack the patent,-doubtless because he might thereby endanger his own. Invoking the state of the art for this purpose might be fatal to his claim of novelty, as well as the complainants'. Be therefore contents himself with an effort to confine the complainants' patent within so narrow a· compass as to avoid confiict with his device.
TSHEPPE f1. BERNHEIM.
Supposing the patent valid, what does it cover? Substantially it is for the collar with locking device to adjust it on the shaft or spindle, and the links or levers connecting the collar and vanes, whereby the latter .may be shifted and held inposition,-in combination with the shaft and vanes as shown by the model. Thus broadly stated, the combination is old. As before suggested, the same elements similarly combined, are found in the various prior patents relating to windmill fans. The patent must therefore be regarded as for an adjustable collar, having a spring plug for Jocking the same to the shaft which it incloses, the levers connecting the collar and vanes, and the peculiar vane bearings, in combination with the shaft and vanes, as described in the specification and shown by the model. III other words, the patent must be so limited as to .confine it to the exact combination shown, including as necessary parts the peculiar locking arrangement and vane bearings. and their plain and direct equivalents. The claim to substitute any and every other mechanical contrivance for these latter parts is clearly inadmissible. Such substitution would deprive the combination of aU possible claim to novelty. Thus limited, the patent is not infringed. I need not enlarge on this subject. It is sufficient to say that the respondent's device does not embrace the locking arrangement or vane bearings, or their direct equivalents. Whether the other elements of the two. devices are the same .need not be considered. It is certainly easier to distinguish the respondeI1t'sfrom the complainants'thun it is to distinguish the latter from those which preceded it. A decree must therefore be entered dismissjng the bill, with costs.
TsHEPPE t7. BERNHEIM:
(Of.rCUiU Court, B. D. New Yor7c. April 14, 1890.)
PA.TBNTS :rOB INvENTIONB-OOBINGBMENT.
In a suit to restrain the infringement of letters patent No. 897,259, issued Febru· ary 5, 1889, to Adolph Tsheppe, for napbthaline paper, where the only question at islue was as to infringement, and tbe uncontradioted testimony of an expert showed that defendant's paper was manufaotured in the manner described in said patent, hekl, that an injunction and an accounting would be decreed.
Prank V. Briesen, for plaintiff. H. A. WeBt, for defendants.
SHIPMAN, J. This is 110 bill in equity to restrain the infringement of letters patent No. 397,259, dated February 5, 1889, to Adolph Tsheppe, for a new naphthaline paper. The invention related to the manufacture ·of a paper or fabric with a coating of naphthaline on both sides, which was to serve as an insecticide in preserving furs and woolen goods fropi ·being injured by moths or other. insects. The patentee says in his