351

J'EDERAL B:EPORTER,

vol. 44.

WRIGHT V. POSTEL. 1

(OWcuit OOUrt, E. D. Pennsylvania. October 1B, 1800.)
1.

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.

2.

SAME--ExTENT OF CLAIM.

3.

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...
1 Reported

by Mark Wilkes COllett, Esq., of the Philadelphia bar.

WRIGHT 'V. POSTEL.

353

"The Postel machine consisted essentially of two endless parallel chains engaging with the sprockets of four sprocket wheels, arranged in pairs on parallel shafts at a distance apart, so that each chain engages with the sprockets of two of the wheels. One of thE'se shafts was connected with the motor which runs the machines. Bya lever the wheels on the motor shaft could be thrown in or out of gear, and the chains caused to stop or move at the pleasure of the operator. Capable of being attached to the chains by projecting side wings. and attached to them while the machine was in operation, were clamps for holding the cards to begHded and burnished, each consisting of a rectanl!ular frame, with a projecting piece. to which was pivoted a clamping piece, one end of which passed within the frame, and was held under its top by a spring attached to it and to the top of the frame. Through this top passed a screw with a hand wheel, by which the bearing point of the screw could be pressed down on the clamping piece arid the cards clamped. When the screw was revprsed, the spring raised and held the clamping piece, and the cards might be removed or inserted. Near the operator there was a supporting piece under each chain, so that during the operation of burnishing the cards the operator might press, with the considerable force required in this operation, against the supporting pieces, and the clamp which contains the cards being bUl'llished could rest against the supporting pieces. The clamps were not locked during the operations of gilding or burnishing, and the sprockets of the wheels near which these operations took place prevent any lateral movement of the chain or clamps." Earnest Howard Hunter and S. S. Hollingworth, for complainant. Ge01'ge J. Harding and George Harding, for defendant. BUTLER, J. No more need be said in this case than is necessary to indicate our reasons for dismissing the bill. The younger of the two patents sued upon (No. 363,936) is invalid. The application was filed January, 1887. Some months previous the defendant had devised and constructed the machine complained of as an infringement. The plaintiff, however, asserts that his invention relates back to a still earlier period. The proofs show that in the winter of 1883-84 he described it in general terms to his 80licitor, and that in 1886 he repeated the description more fully. It seems, however, that he did not intend at either date to reduce the invention to practice. His only concern, apparently, was to protect himself in the construction and sale of the machine made under the earlier patent. His monopoly in this served his interests as well as the other would, if competition could be avoided. His solicitude was for the avoidance of such competition. Being advised that the former patent covered the endless-chain device, and would consequently keep others off, he rested content until a short time before the date of his application. Then becoming alarmed at something heard or observed of the defendant's movements, he resolved to apply for a patent, and thus shut him ont, if the former patent did not do so. He had not then embodied his invention in a machine for practical use. This conduct, and the purpose which inspired it, are not commendable. One who desires a patent must be vigilant in reducing his invention to practical form, and applying for letters. The patent laws are intended for the benefit of the public, as well as of patentees. They are designed to stimulate invention, for the common advantage. It is, therefore, the

v.44F.no.5-23

354

FEDEaAL REPOaTEa,

yolo 44.

dutyo! inventors to use reasonable diligence in reducing their conceptioos to practice and applying for patents, when desired. They cannot neglect it danger to their rights. Here the plaintiff' not only failedil,l diligence, but it appears that he did not intend apply for a patent at all, unless it should seem necessary as a means to prevent others making these machines. At the time of his first conversation with the solicitor he was as well prepared to reduce his invention to practice and apply for a patentl\s he was at'the date of the second. Any cOP,lpetent mechanic, accustomed to such work, could have constructed th,e machine froJIl the first description alm(\st, if not quite, as readily as fr9m the. second. The details added in the latter embrace no invention, and were such substantially' as would present themselves to the mind of sueh.a workman. They are simple mechanical details, in common use for similar purposes. validity of the (No. 290,303) was not questioned on the argtirqent... If, however, its claims are' strictly construed, and thus confined to the particular character of machine described, and manufact- . ured under it, the defendant does not infringe. The plaintiff contends that the claims should be liberally construed, so as to embrace the substitution of an endless chain for the wheel, substantially as shown in the defendant's machine. Whether the plaintiff's sworn declaration when applying for the later pll-tent-in effect that the use of such a chain in his combination is not covered by the earlier patent-upon whichothArs may have acted, and II; favorable decision of the office was obtained, should stop him from asserting otherwise now, need not be Considered. It is certainly persuasive evidence against him. Aside, however, from this it seems clear that the claims cannot be so construed. The history of the art shows that,the use of such chains for analogous uses is old., 'rime out of mind they have been employed to carry various objectstohand, for use at particular places. Applying them to the carriage of clamps; in the operation. of gilding cards, shows nothing new.. Hthe clamps were novel and patentable, the combination might doubtless be made the subject of II; olaim. They are not, however, as the plaintiff virtually acknowledges by the omission to base any claim upon them except in combination with his wheel. Nor is there anything patentable in the method of their attachment, or the means employed for keeping them in position. A decree must, therefore, be entered dismissing the bill with costs.

IlA.TFIELD V. SMITH.

855

HATFIELD 'V. SMITH

et al.

(Circuit Cowrt, S. D. Ohio,W. D. November 7, 1800.)

1.

PATENTS FOR

An instrument which is in terms atransfer by complainant to defendant of' the exclusive right "to manfacture and sell and vend" certain patented articles; the purch\l:llers to have the right to use the articles, which expresses that it is intended for the purpOse of vesting in defendants all the rights of complainant in the mlj,nu- , facture· and sale of such articles, but which expressly provides that complainant shall retain the ownership of the patent, and in which defendants stipulate for payment of royalties and to do aU reasonable things for the successful manufacture and salelilf the patented articles, is a mere license. " . Where defendants admit that they have manufacturedandllold under such license, and that they have assigned whatever rights they had thereunder, they will not permilited to plead that they were led to make. the. cOlltrfwt. ant's false and fraudulent representatlOns, nor that the patent was invalid, as complainant knew.
"

.

2.

SAME-ESTOPPEL.

In Equity. Parkinson Parkinson, for complainant. Peck Rector and E. W. Kittredge, for respondents.
SAGE, J. 1. The contention of the defendants that the contract forming the basis of the bill is not a mere license, but is a grant of the entire equitable title in and to the patent, with the right to the grantees to assign at pleasure, subjectto the conditions of the contract, is not, in my opinion, well founded. The contract is nothing more than a license. It is in terms a transfer of the sole and exclusive right "to manufacture and sell and vend" the patented improvements throughout the United States, the purchasers to have the right to use. It expresses that this grant is intended for the purpose of vesting in the defendants all the rights of the complainant in the manufacture and sale of said improvements throughout the United States under said inventions, but it is expressly provided that the complainant shall retain the ownership of the patent. Now, while it is true that the transfer of an exclusi\'e right to make and use and sell maybe an assignment, and not a mere licensa, it is also true that the "right to the right to sell, and the right to use, are substantive rights, and may be granted or conferred separately by the patentee," (Adam8 v. Burke, 17 Wall. 456,) and that the conveyance of all these rights is necessary to make the transfer an assignment, and not a license. The right to use is not, under the contract, conveyed to the defendants, only the right to manufacture and sell. Moreover, the express provision of the contract retaining the ownership of the patent in the complainant, is not to be overlooked, nor is its significance to be disregarded, nor are the stipulations of the defendants to do all reasonable things for the successful manufacture or sale of the pat. . ented articles and for the payment of royalty. 2. The defendants admitting, as they do, that they manufactured and sold under the license, and that they have assigned whateverrights they had thereunder to the parties named in the bill and in the answer,