INTERNATIONAL TOOTH-CROWN CO.
(Of.rcu1.t court, E. D. W1.8con8'f.n. December..!,189O.)
PATENTS FOR INVENTIONS-INFRINGEMENT-CROSS-BILL-PLEADING.
,Letters patentNo. 238,490, March lq, 1881, to James E', Low, for an improve, , ment'iil the dental art "whereby artificial dental surfaces may bA permanently fixed . in mouth in place of lost,teeth, without til-e use of plates, or other means of desupport from the gum beneath the were sustained in InternationaL Tooth-Crown Co. v. Richmond, 30 Fed. Rep. 775; but in a suit to restrain infringement defendant answered that full proofs were not presented in that case, and now asks leave to file a cross-bill charging anticipation, that the patent, if valid, does not cover all practical forms of artificial dentures known as "crown" and "bridge" work, and that complainant, with a view to harass him in his dental business, has caused to be published, in newspapers and circular letters, warnings that ,its .patent is construed to cover all praGltical forms of crown or bridge work, and threats that all. persons procuring such a.rtificial dentures from defendal1t will be prosecuted, and offering rewards for information of the performance of bridge and crown work by any dentist not licensed by it. Held, that all matters attacking the validity of the patent could be presented under the answer to the original bill, and that the alleged unlawful attack upon defendant's business was not the proper subject of a croBB-bill.
In ,Equity. Mr. Banning, for complainant. Mr. Offield, for defendant.
JENKINS, J. The original bill in this cause was filed to re-strain the alleged infringement of l,etters patent No. 238,490, issued March 15, 1S81, to James E. Low for an improvement in the dental art "whereby artificial dental surfaces may be permanently fixed in the mouth in place of lost teeth, without the use of plates, or other means of deriving support from the gum beneath the artificial dentition." This patent was passed upon and sustained in the case of International 'l'ooth-Orown Co. v. RiChmond, 30 Fed. Rep. 775; but the answer here asserts that full proofs were not presented upon the hearing of that case. The defendant now movesfOf leave to file a cross-bill charging anticipation of the alleged invention; that the patent, if valid, cannot be construed to cover all practical forms of artificial dentures, ,commonly known as "crown" and "bridge" work, and that, with a view to hinder and harass the complainant in the cross-bill in his dental busineEls, and to divert patronage from his business to dentists licensed under the Low patent, the International Tooth-Crown. Company has heretofore, and presumably since the filing of the original bill, caused to be published in newspapers and circular letters, and caused to be circulated throughout the United States, and within this district, certain threats and warnings embodied in a notice, specifying certain dentists as the only licensees. of the company in the city of Milwaukee; that the patents of the company are construed to cover practical forms of artificial dentures now commonly known "crown"or "bridge" work; warning all persons against obtainingsuch ltrtiticill1 dentures fr6in the complainant in the crOSS-bill; and that the full legal penalty will be exacted of all infringers,-patients, as well as dentists,-and offering a reward for information of the performance of any
CO. 11. <¥--RMICHAEL.
bridge work of one, two, or more crowns or bridges prepared by any dentist not licensed by the company. This notice and threat is charged to divert patronage, and to seriously interfere with the business of the crosscomplainant. An injunction is prayed restraiping the publication and circulation of such notices and threats, and a decree is sought for the damages sustained for such alleged wrongful publicatiolls. All matters contained in the cross-bill attacking the validity of the patent, or limiting its scope, can be presented by answer to the original bill. No crossbill is necessary for that purpose. The interference with the business of the cross-complainant, by reason of the publication of the notice and' threats charged, is the ouly matter not pertinent as a defense to the original bill. If the publication be construed as a mere notification of the rights claimed by the company under the Low patent, it would not be unwarranted, unless .the patent was invalid, and possibly not in that event. If, as is claimed, it is a malicious and unwarranted threat, even if the Low pateQt be held valid, the act done would not avail as a defense for infringement of the letters patent. It would, in such case, be an attack on the business of the cross-complainant, independently· of the validity or non-validity of the Low patent, for which he has appropriate remedy. Such matter, as I conceive, is not proper subject-matter of a cross-bill. The purpose of such a bill is to obtain discovery of facts in aid of the defimse to the original bill, or to obtain full reliefto.all parties touching the matter of the original bill. The matter sought to be charged does not respond by way of defense to the original bill. Every matter in dispute touching the validity or infringe-. ment of the patent can be contested under the original bill, full proofs made, and complete decree rendered, touching its validity and scope upon the pleadings thereto, without the aid of the cross-bill. The facts charged 'by the proposed pleading would neither throw light upon the subject, nor avail to defeat the patent, or justify an infringement of it, if valid. The cross-bill merely charges an independent unlawful act by the owner of the' patent. It is more than doubtful if an original bill in equity would lie upon the matter charged in the proposed cross-bill; and this, upon the 'ground that· complete remedy at law is at the command of the injured party, for the injury done. The cases of Ide v. En9ine Co., 31 Fed. Rep. 901, and Emaclc v. Kane, 34 Fed. Rep. 46,. uphold the righ$ to maintain such an action.. The latter case certainly presents a strong'assertion by. Judge BLODGETT of the right of aeouft ofequity,to interfere in such a ease as here presented, and is sought to be distinguished from the eases of Kidd v. Horry, 28 Fed. Rep. 773, and. Wheel Co. v. Bemis, 29 Fed. Rep. 95, opposed. The contention: seems, how" ever, to be authoritatively settled by the case of Franci8 v. Flinn" 118 U. S. 385, 6 Sup. at. Rep,. 1148. lam unable to distinguish the latter case from that here presented. The moHon' to file the Closs-bill is nied.
WRIGHT V. POSTEL. 1
(OWcuit OOUrt, E. D. Pennsylvania. October 1B, 1800.)
PATENTS FOR INVENTIONS-PERFECTING INVENTION-DILIGENCE.
A patentee who had in 1883-84 described his invention in general terms, and in 1886 described it more fully, but with the addition only of mechanical details, such as would suggest themselves to any mechanic who could have made the device from the first description, and made application for a patent in }i'ebruary, 1887, has not exercised sUfficient diligence in reducing his invention to practice, and a reduction to practice by another before the filing of his application renders his patent invalid. When a patentee, in order to obtain a patent for an improvement on a device formerly patented by himself, swears. that his former patent does not cover his last device, this oath is persuasive evidence against him in an attempt to construe his former patent broadly enough to cover a device substantially the same as that embraced in his second application. Complainant's patented device consisted of a wheel loosely supported in a stationary bearing, and having its periphery provided with a series of clamps in which the cards are clamped. The defendant used a device in which the clamps were attached to an endless chain. He/.d, although the complainant may have been the first to apply card clamps to an endless conveyer, yet as endles!! chains had been used, time out of mind, to carry various objects to hand, his patent could not be construed sufficiently broadly to cover defendant's device.
SAME--ExTENT OF CLAIM.
SAME-SCOPE OF INVENTION.
Bill in Equity by Charles A. Wright, to Restrain A. H.Postel from Infringing Complainant's Patents. In the earlier patent (No. 290,303) the invention was stated to consist in a wheel, loosely supported on a stationary bearing, and having its periphery provided with a series of clamps, by which the cards are clamped, and in many details of construction. The patent described a wheel loosely supported so as to be capable of being turned by hand, and on the. periphery ofthis wheel are placed a number of clamps, containing cards to be gilded, and in which clamps they were held firmly during the process of gilding. The operator stood in front of the wheel, and turned it, bringing one. clamp after l;tl1other in front of him. The operator himself put the gold leaf on the article to be gilded. The claims sued on were: "(2) A gilding wheel, formed of a wheel provided on its periphery or circumference with a series of clamps formed of pivoted jaws, and one or more of their clamping edges being exposed to allow of manipulation of the object clamped, haVing independent clamping devices. by which each clamp may be opened separately, substantiall)' as and for the purpose specified. " " (18) The combination of wheel, B, with rigid jaw. H, hinged jaw. K, of shorter length than jaw, H, and screw, N, having wheel, 0, substantially as and for the purpose specified. (19) The combination of wheel, B, with rigid jaw, H, haVing prongs, h, hinged jaw, K, of shorter length than jaw, H, and having clamping edge, k, and screw, N, haVing wheel, 0, substantially as and for the purcombination of wheel, B, with rigid jaw, H, hinged pose specIfied. " "(22) jaw, K, screw, N, having wheel, 0, and wooden blocks, RR, substantially as and for the purpose specified." The plaintiff's second patent was for a device which had in place of the wheel an endless chain...
by Mark Wilkes COllett, Esq., of the Philadelphia bar.