AMERICAN LINOLEUM MANUF'G CO.
NAIRN LINOLEUM CO.
from to the supreme court. Such an appeal, under sections 763 and 764 of the United States Revised Statutes, as amended by the act of March 3, 1885, is accorded to him as an absolute statutory right. The appeal and citation, when issued more than 30 days before the first day of the next term of the supreme court, must be returnable on the first day of said term. Sup. Ct. Rule 8, subd. 5. The judge of the circuit court, who, by section 999, Rev. St. U. S., is required to sign such citation, has no discretion to fix any earlier return-day. This is the second application to this court for a writ of habeas co'rpus by this petitioner under the same conviction, and two of the grounds upon which he base,s, bis present application-viz., the alleged fact that persons of his race and color were excluded, because of their race and color, from the list andpunelj and the alleged fact that proper counsel were not to him by the state court-existed when he made his former application. Whether this is the second or the twenty-second application, however, is immaterial. Under the statutes as they stand, it seems to be left for the petitioner alone to determine, not only how many times he will apply for the writ, and whether he will appeal from its denial, but also how often he will, by such appeal, invoke the operation of section 766, Rev. St. U. S., which provides that, until final judgment thereon, any proceeding against bis person under state authority shall be null and void. What the precise effect of the peculiar phraseology of the last-cited section may be, whether, pending such appeal, it operates as a stay, or merely as a warning that whoever, under state authority, may take any proceeding against the person of the petitioner does so at his peril, is not now before this court for decision. The only matters now presented on the appeal are its formal allowance, and the fixing of the return-day, as to both of which this court has no discretion.
NAIRN LINOLEUM Co.
(O£rcuit Court, D. New JersCy. December 22, 1890.)
On a suit for infringement of letters patent, where complainant calls an expert witness to point out resemblances between the patent and the allegrcd infringing device,und asks him to interpret the claims of the patent in so doing, he cannot be required too refrain from cobsidering the prior state of the art ill giving his tel>timOlly.
POR INFRINGEMENT-ExPERT TESTIMONY.
In .Equity. Objections to testimony before examiner. strike out. Walter D. Edmonds,for <4Qrnplainant. Edward N. DickertJ()1l, fur
LACQMBE, Circuit The question presented on these motions is briefly tl,1iJ:!; Whether, when a complainant calls an expert to explain
the meaning of his patent, he may insist that such expert shall, both on direct and cross examination, be strictly confined to an interpretation of that patent, without any consideration of or reference to the state of the art prior to the letters patent. The complainant contends th&ot, inasmuch as it is well-settlfJd law that the letters patent sufficiently prove novelty and patentability, a prima facie case is made out, when proof is also given of infringement by the defendant. That is undoubtedly so, if the complainant chooses to confine himself to the letters patent, and a statement of the acts done by the defendant. In that case the colirt will interpret the words of the patent in the sense in which they are ordinarily employed, and, with the knowledge of the invention thus acquired, will determine whether the acts done by the defendant amount to an infringement. Here, however, the complainant did not choose to rely upon his letters patent alone, but called an expert to poltit out resemblances between the patent and the alleged infringing process; a stipulation having set out specifically what that process in fact was. Such testimony is admissible on the theory that the language of the patent is obscure, that judges are not always supposed to possess the requisite knowledge of the meaning of the terms of art or science used therein, and that it would be unintelligible to the court unless its words and phrases were translated or explained by one skilled in the art,-by one who, from his experiellce, is able to say that such words and phrases conveyed to those skilled in the art, when the patent was granted, some meaning broader or narrower or otherwise different from what they would convey to others not thus skilled. Unless the expert's testimony goes to that extent, it is superfluous, because the court will be able, without it, both to interpret the letters patent and to recognize infringement. If, however, such testimony is found necessary, and expert is called, he should not be requhed to discharge his mind of the very knowledge as to the prior state of the art, which alone qualifies him to testify as such expert. In the case at bar, timely objection was made to the fifth question, which reads as follows: "Please compare the process of producing oxidized oil made use of by the defendants, as described in said adinission and testimQny, and also the mechanism made use of by them in the application of said process, as similarly described and shown in the drawings referred to. with the subject-matters described in the said letters patent, and specifically claimed in the claims thereof, and point out "ucb resemblances as you may find to exist between the process and apparatus as used and as patented j and, in giVing your answer and interpreting claims of said letters patent. you will please refrain from any consideration of or reference to the state of the art prior to the letters. patent in suit relating. to such process and apparatus, except such as may appear upon the face of the patent itself."
This question, of course, assumes that the witness is to ascertain the meaning of the letters patent; otherwise, he would have no basis of comparison with the defendant's process. It expressly notifies him that he is expected to interpret its claims. Such testimony being admissible only from one skilled in the art, this question, which reqaires him
SIMMONDS V. MORRISON.
to ignore the very experience which alone makes him a competent witness, is itself incompetent. Inasmuch, however, as the question was answered, and as it is not usual to rule upon objections in these cases fragmeliltarily, the testimony may remain in the case, if complainant so wishes, but subject to cross-examination on the lines indicated by the cross-questions submitted on this argument.
et al. v.
(Oircuit Oourt, 8. D. Ohio. January 24,189L)
PATENTS FOR INVENTIONS-NoVELTY-DASH-RAILS.
Letters patent No. 339,307 were issued to Robert W. Logan, April 6, 1886, for a detachable dash-rail, to he fastened to leather-covered dash-boards by means of clamps. Patents for rails for wooden dash-boards substantially similar, except as to the mode of fastening, had been previously issued; and various kinds of attachments had been fasteneci to leather-covered dashes in substantially the same manner as complainant fastened his dash-rail. Held that, as both the form of complainant's dash-rail and method of fastening it were Old, the fact that he had applied the fastening device to a new use did not constitute a patentable novelty, and that his patent was void. . The fact that defendants have appropriated complainant's device hodily, and have: used it and sold it in preference to prior structures, does not estop them from questioning ita patentability. In an action for the infringement of the patented dash-rail, testimony of one of the defendants, who is corroborated by several disinterested witnesses, that he had made a dash-rail identical in form, application, and conception with that described in the patent sued on, some 12 years before its issuance, is sufficient to establish an anticipation of complainant's patent, though defendant made but the one dash-rail. and then ceased their manufacture until after the issuance of the patent. .
In Equity. This suit is for the infringement of a patent for a rail for dash-boards, issued April 6, 1886, to Robert W. Logan, complainants' assignor, being No. 339,307. The object of the patented device is declared in the specificati.on to be "to provide a rail which can be quickly and easily attached to any dashboard after it is otherwise complete, and also easily detached when it is desired to do so, (as when it needs replating,) thus making a more desirable rail, and one which can be used on the cheaper grades of vehicles, giying them the well-known advantage of the rail, with but slight addition in cost." The specification further provides that the dash-board may be of any ordinary and desired construction. The rail is mounted, and extends along the top edge,and down a short distance on each end, to form handles, as is usual. It is secured in position by supports on the top and at the ends. These should be sufficient in number to properly support it from the top of the dash, two being shown in the drawings. They are preferably formed integrally with the rail, extending down therefrom far enough to support it the desired height from