OF CLAIM. , '
(Oircuit Court, D. N6'fJJ Jersey. March 24,,1891,)
,Theprotection of letters patent i8 Umi,ted by the language of !the claim, and letters patent No. Jun(l29, 1880, fpr f\a fluljlhing device for water-clOset bowls, .. to provide a: more secure joint for the metallic supply pipe, consisting ofan earthenware flushing pipe through the sideof,'the bowl, and being jqined thereto, having at the outer end, in which shall be'per'mll,ne'ntly secured a flanged met:aWc tube, provided upon itsprojectingportioh with a screw-thread for receiving hut, itl which the claim is made for "the , euthenware nozzle; b, of theflushing,device, provided at its'outer enu with the interi()r lInnular coniceJ. recess, b' j in OOIHbination wi,th ,the flanged metallic coupling pipe, C, a,nd the annular mass, of c, substantially as arid for the purposes set forth," Is not infringed by tbe'ul\e of' a device similar il). every respect, except that'instead of the interior recells :eit, tilie outer end of the earthenware pipe being conical in its shape, with ita apex nellirest the outer edge of the recess, the defendants have cut away the overhanginR' wall of the cavity of the conical on both sides, . changing It to a rectangle so Batoalimit the flanges of the metallic pipe, but leaving , (lnough of. it to perforjll Blocking f,qnction after tbeparts have been placed together" , andthllspaces between filled with cement. .
In Equity. On billfor injunction. ,F. Lowthorp and Edwin H. Broum, for complainant·. W. P; Preble, Jr., for ,'. .
GREEN, J. The bill in this causeis filed to enjoin the defendants from infringing letters patent No. 229,326, granted to the complainant, Thomas Maddock,for "a flushing device for bowels," and bearing date June 29, 1880. In the specifications, of the patent it is declared that the.object of the invention was twofold,to-wit: First, to simplify the constrl.letion:llindmode of application'to water-closet bowls of the devices by which the flushing wateris introduced; and. secondly, to provide a more secure joint for the, metallic supply pipe with the outer end of the earthenware flushing pipe. The first part ofthe invention waS said to consist" of an earthenware flushing pipe, which is inserted bodily through the side of the bowl, and joined thereto by the union of the wall of the bowl with the periphery of the flushing pipe., The flushing pipe is introduced ,at the proper angle to enabltlit to direct a jet of water against the inner wall of the bowl neal' the top, and the inner end of the flushheretofore employed." The ing pipe takes the place of fans or second part· the invention was as consisting" in forming 'a conicalannularrecessitttbeouter}md of the flushing pipe, and in; therein,1!-r m.etallic tube,provided upon its projecting portion with screw-thread for receiving an ordinary coupling ridt."· ." . ' The' patenteeniakes tWo' ..'''(1) water-closllt, powI, consisting an liodilt through, a hole, inrhe side of the bOWl, and joined' thereto' by Weumon of' composIng tbeedges of the bole in tbeside ,ottbe boWl,witb tbe: matel'ialcomposiilg the peripbery of the llushing .pipe, ;sUbstantially as described. . (2) In a water-closet bowl, the earthenware nozzle, b, of the flusbing device, provided aUts outetend .with
MADDOCK V. COXON.
theinteriorannular conicalrecriss; '6'; in combination with the metallie'coupling pipe, cO,and the an nullir rna:slI of cement, c, 'lIU bstantially as and ftir,the purposes'set forth.'" ' The bill charges that the·defendants have made, used,and sold flushiog devIces for water-closet bowls which contain and employ substantially the invention of the complainant, and prays an injunction and accofint.' The defenses are non-infringement and anticipation,asshown by pdor patents and prior .use, "" ' The complaiuantin ·the present suit abandonsh,isfirat claim, his right to relief wholly upon the second. That claim, stripped of is for an internal coupling, .madeupof three elements, each posse8sieg certain necessary and distinguishing oharacteristics. The first elementiis a.n. earthenware nozzle, with a recess; the second is a coupling-JPipe 1, to be inserted in the reCeSS of the earthenware nozzle; and the third is amass of cement, to hold the pipe and earthenware device' together, to "seal the joint," as it is termed. The recess oftheellJrtheuware nozzleois described' as, having three ,necessary characteristics: (1) It is interior; (2) it is annular; (3) it is conical. Theneeessary characteristics of the coupling pipe are two: (1) It is metallic; (2) it flanged.' cement, used to seal the joint the pipe and the And the n02;zle, is described as annular. The specification 9f the letters patent, already quoted, specify and emphasize these necessary of the combination: "The sl'cond part of my invention consists in forlninga conical annulluf recess, at the outer end of the flushing pipe, and in permaneutly securing thl:lrein a .flanged . metallic tube, prOVided upon its projecting portion witb a an ordinary coupling nut." screw-thread for
The answer to the question whether certain letters patent are infringed is to be sought for and found in their'proper and legalconstruction. To construe letters patent is to determine with precision the nature, scope, and character of the invention alleged to be comprehended and secured thereby. A primary canon of construction is that nothing described in letters patent is secured to the patentee unless there be in the letters .Il, valid claim covering it. Hence the proper and legal construction of letters.patent depends, necessarily, upon the construction of the claims made in them, And it follows that the claim thusbecoillP,B the solecriterion, so far as the rights of the patentee are cQocerned, and by if must be tested the extent and scope of the grant which the lettersevi· dence. Ke'!/8tMe Bridge Co. v. Phomix IrM Co., 95 U. S. 274, is an instructive case upon this point. In that case the letters patent were for "improvement in iron truss bridges," and the invention was. said, to consist."First, in a novel construetion of the lower chords; imdmode of applying the same, in COmbination with the posts and other parts of the truss. The bOttom chords·areieach composed of a series'·ofwide, thin eye-barsofwrollght ironJ of a length corresponding with d.istances the postS onone side of the truss, edge to enable them to. gj.ye SUppol't tl) the f o a d - w a y . " · · ,
,'J.'he claim in the letters patent was as follows: brid.ges; but what I claim as my invention. and desire to secure by letters patent, is the construction of the lower chords of truss bridges of series of wide and thin drilled eye-bars. applied on edge between ri bs, on the bottom of the posts, connected by pins, supported on the diagonal teusive braces. all substantially as herein described." The alleged infringement was the use of round or cylindrical eye-bars, flattened and drilled at the eye, in the lower chords of iron truss bridges. Mr. Justice BRADLEY, in construing this claim of the patent, uses the following language: . "Words cannot show more plainly that the claim of the inventor does not extend to any other eye-bars or chords than such as are made wide and thin, and applied on edge. As those cOnstructed by the defendant are cylindrical in torlD.· only flattened at the eye for.insertion between the ribs or projectors it is plain that no infringement has been committed." of the. And again: "Here, again, the patentees clearly confine themselves to wide and thin bars. It is plain, therefore, that the defendant company, which does not make said does not. this claim. of the patent. When a claim is so bars explicit, the courts cannot alter or enlarge it. If the patentees have not claimea the whole of their invention, and the omission has been the result of inadvertence; they should have sought· to correct the error by the surrender of their patent, and an application for a reissue. They cannot expect the court to wade through the history of the art, and spen out what they might have claimed, but haye not, claimed." Again: "When the tertns of a cl.aim in a patent are dtllar and distinct, (as they always should be,) the patehtee, in a suit brought upon the patent, is bound by it.· He can claim nothing beyond it." In other· words, the claims of letters patents are not to be broadel1ed or made more comprehensive by· construction thali the plain meaning of the language used justifies. The making of the claim is an act of the inventor, with which the public can have nothing to do. Healone makes it. Ile alone has knowledge of the character and the nature and the scope of his invention. In applying· for letters patent to protect his invention, he is at liberty to describe what he claims, in such words and with such precision as he chooses, consistent with the fact. He may broaden his claim, or he may limit it, as to him seems best. Having once perfected it, however, and having obtained its approval by proper authority, it is forever fixed and unchangeable. He has himself marked out the boundary, and by that boundary must hebe limited. Within that boundary his right is supreme, and he may be sure that all who surreptitiously intrude will be severely dealt with as trespassers. Beyond that boundary the inventor has no right peculiar to himself for the courts to protect. Applying, then, .these principles to the claim of the complainant's patent, now under consideration, it; seems apparent that One of the characteristics of the earthenware nozzle, relied upon as absolutely essential
,ndo not claim the use of eye-bars or links as chains of
MADDOCK 'V. COXON.
by the inventor, is that the recess upon it should be "conical" in form. This is cle8irboth from the claim and the specification. By so minutely describing· this recess, the patentee practically abandoned to the public all forms of recesses in combination with earthenware nozzles, in use in connection with water-closet bowls, which were essentially different in shape. By his repeated use, in specification and claim, of the word "conical," he clearly expresses his own idea as to the invention he has made, and plainly fixes a limit to what he desires to secure to himself. The recess must be a cone in which the apex is nearest the outer edge of the recess, and the base must form the lower bottom. The language 'Vhich the patentee uses in stating his claim and in describing his device so plain and unambiguous there can be no mistaking the meaning Or !'lcope. There is no room for other construction. Now, iUs very certain from the proofs that the defendants do not use . in their device such a recess. The expert witness for the complainant, in striving to demonstrate an infringement, thus describes the defendant's device: "What the defendants have done has been to change the form of the ·overhanging wall' of the recess in the earthenware nozzle. They have cut away the opposite portions [sides] of the overhanging wall' of the cavity in "Complainant's nozzle, so that the space for the reception of the flange of the metallic pipe is substantially rectangular. They have retained a sufficient portion of the overhanging wall of complainant's nozzle to enable sllch overhanging wall to perform its share of the locking function after the parts have been placed together, and the spaces between the flanged pipe and wall of the caVity are filled with sulphur."
It is noticeable that this witness nowhere speaks of a "conical recess," but of "an overhanging wall," by which he means that, the recess being conical,tbe line of the surrounding material will at the top of recess overhang the line of the surrounding material at the bottom. This is necessarily true. But he very greatly widens the scope of the patent by the skillful use of those words. Nowhere in the patent is an "overhanging wall" spoken of. The witness admits that the terms "overhanging waIF' and "conical recess" are not at all synonymous; that those words which he uses are not to be found in the patent, and that they are much more comprehensive as applied to the device of the complainant than the terms ofdescription selected and used by the patentee. In other words, to make out an infringement, this zealous witness deliberately uses descriptive words and terms, admittedly more comprehensive than the words and terms of the complainant's patent, thereby seeking to enlarge its scope by construction. Had the witness used the words "overhanging wall of a conical recess," his answer would not have been in harmony with the facts. By striking off' the words "of a conical recess," he seeks to secure to the complainant a monoply in the use of all overhanging walls, and their combination with and their effect upon flanged pipes inserted beneath them. The very fact that he has to resort to such construction to show infringement clearly evidences non-infringement. The tllUth is that the recess of the defendants' nozzle is in shape more like an
in;\IertedJ, than a eone, through .the stem of whioh the flanged pipe is thl'iUsti'and the flange itself,:byiturning, caused to enter and rest upon the table of the T. In the one case it will be perceived that the flange of the pipe comes into contact with the walls of the table as soon as turned into position, and so meets resistance to its withdrawal equal to the cohesive power of the: material, of which the nozzle is made; butin the conical recess of the complainant's device the resistance of the overhanging wall is obtained through the medium ofa connecting interlying substance. It seems 'clear that the proper construction of this claim of the complainant's patent limits it to an interior annular recess, which must be conical in fG>rm. The reces8used by the defendants is admittedly rectangular. Under the authority of the Tr'U88 Bridge Case, cited, the defense of noninfringement is made out. This conclusion renders it unnecessary to consider the other defenses set up. The bill is dismissed, with costs.
Co. v. RUBBER & CELLULOID et al.
«(JwcuU (Jourt D. New Jersey.
In an action for infringement of letters patent, individual defendants cannot shield themselves by the plea that the acts complained of were solely the acts of defendant corporation, and that whatever was done by them in manufacturing and selling the patented article was done only in their capacity as officers and agents thereof, and not othel'wise.
ACT-LIABILITY OF OFFICERS.
2. SAME-DESIGN P,,-TE;!iT-;NQVELTY. . Novelty is esseQtial toa desiO'n patent, under'Rev. St. § 4929, and the mere adaptation of old deVices, fo'rms, or designs tanew purposes of ornamentation, however exquisite the result, )ViltnotsustaiJ;l a patent.
Design patent No. 16;114, of date May 26, 1885, to Samuel E. Tompkins and John F. Goodsell, for a design for the ornamentation of harness, consisting of overlaping and .fiattened spirlU convolutionll.of wire, was anticipated by a patent granted n 1866 to One Picot fOr a 'similar ornamentation of the semicircular combs used by children ,to ,pinbaok the hair from the forehead, and is void. '
In Equity, Bill for injunction. Coult &: RoweU, for complainant. J. O. Clayton, for defendants.
GREEN, J.; The bill of complaint in this case was filed to enjoin an alleged infringement of. design patent No. 16,114, granted to Samuel E. Tompkins and JohnF. Goodsell, assignors to the complainant, for a design for the oTll!\mentation of harness. The letters patent bear date May 26, 1885, and the claim ,of the patentees is stated to be" for a design for the ,ornamentation"of harness, consisting of a piece of harness having thereupontbe.6attenedspiral convolutions overlapping and resting upon each other, and placed at. a slight distance from the edge of the piece, so that both the plain edge of the piece and the scalloped edge of the