8, icOmhinationwhere it simply performs its old function, although it oJ)emteson>a different different result. The machine of, t'he defendant in this case, whil1lit .i13 a check protector like the ,complainarWs, does its work ,in a different way, and I see no reason whythe patentee of defendanta' machine had not the same right to KO to ,the: ,old artand.select a,movable;bearing for one of his feed rollers as the patentee in this case: had. ,What I mean is that as it was old, as shi:ll'm' by the proof, to make check protectors with a movable upper feed., roHer" is no invention in making such lll:Rchine with a movable lower-feecLroller; and ll,claim for sueb lower fee.droller,in combination withIl:>therpartsofthemechanism, is not for anew8;Udpatentable com· binatiOlD" although it ,maly make ll. more convenient machine. For these reasdus[am of opinion that so much .of the complainant's de"ice as, ,is, cnveretl by claims 4 and D is not novel, and the .bill will be dismissed fOli,want,of equity. '
it seems to me he merely appropriated it to a new use by putting it into
to'2lnggest its adaptability, without essential change, to his purpose; and,
BR,ADLE'V MANUF'a Co.
June 18, 1892;)
1.PiiofintTB 'POB !1NVENTlffl..;.NOVll:LTY-CuVrIVA'l'OR
"/I',tl!!l:.fil'$liQlaim No. lllQ,816, issued May 15, 1877, for an "ment!Jl couplings forcultivatorlil, of a pipe box provided with a projec. '. 'tioD to co-operate with' a spring, weight, 01' the draught, to rock the pipe , QQ:ll: against, of the, refl,r, cpltivators or plowliI, is "oid for want , beell, by letters patent issued June 11, 1872, to Wi!. 'Ham Haslup. Ma:n/ifI1Jdtu.rlng 00. v. Deere, 21 Fed. B.ep. 709, reversed. \!. SDE....Ex':tENT 01' ,CLA:IIll-i-eoYBINATION. " : liIaidclalm,cannot a combination claim for the combination of the ,pipe box With a spnnA' 0.1' weight and a plow beam and axle; since a claim cannot :1:Ie :treated all a combination claim, in the absence, of the word "combination." and of a liltat,expent of tht!,aPllQillc elements of which it is compQsed.
It:lEquity., "Bill, by Mlluufacturing COlnpany against the David BJ,'adley Manufl!:ctuJ,'ing Company for an injunction and account· " ""', ,," , . " ," " ' ing. GeorgeH.Ohiistyand.W, T. Underwood, 'complainant. l1tmd, for defehdant. ' .
for aninjtinctionand accountmg of patent No. 190,816, gra,nted, to W,P.Browti.;, May '15, 1877, for an "impro\7ement in coupfor bult(\1atots. »"'" The in his, spElClficatlons : ,", to 'an irnprov,ed of pUng for fastening the forwtjoi'd of the beam\! ofpJows dl' gangs tof,neax;le of a wheeled culti· vator. The improvernetlt' 'consist6in theparticulal.' construction and arl'angelDent ofa tube or piipe box,. tutnillg lOOSE'ly upon thehmizontal ends of and :C9Jloectecl. tbrpl,Igh an adjustable llti:rrup or sleeve and
BROWN MANUF'G CO. v.DA VID BRADLEY MANUF'G CO.
bracket. with a head having a long bearing at right angles to the pipe box, to which Head the forward ends of the plow beam are bolted,. while the pipe box. is provided with means for turning' it agai nst tlJe gravity of the attached' cultivator in the rear. whereby the said cultivators are manipulated with greater ease. as hereinafter more fully described. * '" :'JI' To render the, manipulation of the plows Or culti vators easy, I provide an arrangement whereby either, springs, weights, or the draught power may be u:ilized for sustaining a part of the weight of the said culfivators when they are lifted from the ground to be hungul' Ol" shifted laterally. In accomplishing this. I construct the pipe box with it. hooked arm. M. and arrange a stiff spring, N, of metal or rubber. upon, the main frame al,ove, so as to engage, by means;of loop,. with the end of the arm. M, to rock the pipe box; and. as tbll,cpltiyator beam ill the rl'ar is rigidlY attached to the pipe box by the stinlup or the sleeve of the screw bolt. the spring has the tendency to rock the pipe box, and assist the driver in lifting the cultivators. I do not claim. broadly, the application ofsprihgs to sustain a part of the weight of the cultivator. a8 this is shown in my I,atent No. 128,701, of 1872; but I do claim a pipe box provIded with an arm or projection aLlapted to ruck the same." The patent contains three claims, but infringement is only charged as to the first of these claims, which is: "(1) The pipe box provided ·with a projpction adapted to co-operate with a spring. weight. or the draught, to rock the said pipe box against or with the wf>ight uf the rear cultiVators or plows. substantially as and for the purpose described... The defenses relied upon are: (1) That this claim is void for want of novelty; (2) that the defendant does not infringe. It is insisted on the part of the complainarit that this is a combination claim, and must· be considered as such, and that there must be read into the claim a spring or weight, a plow beam and axle, such as are described in the specifications. I cannot cuncur with the counsel for complainant in this view of the claim. In terms, it is a specific claim fora pipe box, with a projection adapted to co-operate with a spring. It'does not suggest, 01' state, that it is a combination claim, but proceeds, as it seems to me, upon the assumption that the patentee was the original and first inventor of a pipe box, with a projection adapted to co-operate with a spring. A claim cannot be treated as a combination claim, in the absence of thp, word "combination," anti ofa statement of the specific elements of which it is composed. Burden v. Corning, 2 Fish. Pat. Cas. 495. "When a claim is explicit, the courts cannot alter or enlarge it. * * * The courts cannot be expected to wade through the history of the art, and spell out what might have been but has not been claimed. When the terms of a claim in a patent are clear and distinct, (as they always should be,) the patentee, in a suit brought upon a patent, is bound by it. He can claim nothing beyond it. * * * He cannot show that his invention is broader than the terms of the claim, or, if broader, he must be held to have surrendered the surplus to the public." Keystone Bridge Co. v. Phmnw: Iron Co., 95 U. S. 278. "Claims for devices cannot be changed to claims for combination by construction." Oouse v. John8On, 16 O. G. 719; Ice Co. v. Packer, 24 O. G. 1274.
The patentee says in his specification:
" The improvement consists in ,the particular construotionand arrangement ofa tube or pipe box. ... ...... I do not claim broadly the application of springs; ... ... ... but I do claim a pipe box pt'ovided with an arm or pr.biectionadapted to rock the same."
'i1'hilllanguage clearly imports that the patentee intended to make a claim for the device, standing !ilone, of a pipe box with a projection; thati" such a projection as is adapted to co-operate witlia spring to rock the pipe on the axle. And this view of the first claim is much strengthened and confirmed by the fact that the second claim is a cOrnbiriation claim of all the elements which complainant insists should beread into the first claiD:l, when, if what is now insisted upon as tlIetrue construction of the first claim is correct, this second claim is wholly superfluous. Upon the issue of want of novelty, a large number of prior patents have been put into the, case, such as the Luppen of 1870, the Coonrod of 1867, the Stover of 1870, and the Lit9hfield & Corbin of 1873; all of which show a pipe box or sleeves fiJting loosely upon the axle, so as to allow the pipe to be rocked verupon the axle. But the patent which seems to me to most fully anticipate the device, covered by the first claim of complail.ant's patent, is the patent ·of William Haslup, of June 11,1872. This patent shows a sleeve or pipe box working upon a crank axle for the pu.l:'POSEl of attaching the plow thereto, and enabling it to be rocked upon the axle, and a projection rigidly attached to .the pipe box, and extending upward to, the driver's seat in the forD) of .a lever, whereby the plow can be .rockell upon the axle by the ofthe driver. This device seems to me, in every respect, to be an anticipation of this first The arm, O,extendingupward to the driver's seat, is manifestly a projection which isadJ!.pted to co-operate with a spring or weight to J,'ockthe pipe box against or with the weight of the cultivator. Here is pipe box a projection ready made to hand, adapted to co-operate with a ispringexactly like the device described in this claim. It will be is no part of the claim.' The pipe box must noticed that the have a proj!=lctipn adapted to co-operate with a spring, that is, a projection to which a spring can be attached which will aid in rocking the plow upon the axle, or, as the claim says, to rock the pipe box, when, of course, it would rock a plow if it was properly attached to the pipe. With this. view of the construction to be put upon this claim, and the relation of the device therein described to the older art, I am of opinion that this claim is void for want of novelty.
AMERICAN PAPER PAIL & B.
NATIONAL FOLDING BOX .. P.
BROWN MANUF'G CO· .,. DEERE
(Circuit Court, N. D. llZinO'IB. JUDe 18,1892.)
In Equity. A. W. Tt'ain and (}eorge W. Ohristy, for complainant. Bond, Adams & Pickard, for defendant.
BLODGETT, District JUdge. This is a bill in equity for the alleged ment of patent No. 190,816, granted May 15, to William P. Brown, for an "improvement in couplings for cultivators." Infringement is charged of the first claim only of the patent, which is: "(1) The pipe box provided or the draught. with a projection adapted to co-operate with a spring, to rock the said pipe box against, orwith the weight of the rear cultivators or plows, substllntially as and for the purpose described." On a former hearing of this case, upon the pleadings and proofs before me, the patent was held to be valid, and the defendants held to have infringed the same, and an jnterlocutory decree entered, referring the case to a master to take an accounting of profits and damages. Subsequently, in examining other cases, such strong doubts arose in my mind as to the correctness of the finding that I ordered a reargument, and, after such reargument and a re-examination of the proofs in the case, I have come to the conclusion that my former decision, reported in 21 Fed. Rep. 709, was wholly enoneous, and feel compelled to enter a decree finding this claim void for want of novelty, and dismissing the bill for want of eqUity. My reasons for doing this will be found at length in the decision this day rendered in the case of Same Complainant v. David Bradley Manuf'u Co·· 51 Fed. Rep. 226.
AMERICAN PAPER PAIL
& Box Co. et al. v.
(Circuit Court of Appeals, Second Circuit. July 20, 1892.)
PATENTS POR INVENTIONS-PRELJMIlURY IKJUKCTION-PRIOR ADJUDIOATION-ApPEAL.
On appeal from a preliminary injunction, the prior adjudication on whioh such injunction was based will, in the absence of some controlling reason, have the same weight with the cirouit court of appeals which it should have had with the oirouit oourt whioh granted the injunction.
Tbe review of the interlooutory order for an injunotion cannot be converted into a review of the final adjudication upon which it is based; but while the circuit court, upon a motion for an injunotion, might deem itself oonstrained, contrary to its own judgment, to adopt the rulings of another oircuit court upon questions of law made at final hearing, the circuit oourt of appeals is at liberty to re-examine suob rulings,.dispose of the questions of law conformably to its own conviotions, and aooord to the former adjudication such weight as in its own judgment such adjudication was entitled to upon the motion. The circuit court for the southern district of New York having adjudicated the validity of tpe second claim of letters patent No. 171,!l66, for an improvement in paper boxes, (41 Fed. Rep. 139,) thereafter granted a preliminary injunotion, based upon suoh prior adjudication, against a third party, (48 Fed. Rep.913,> no new de-
SAME-IMPROVEMENT IN PAPER BOXES-INFRINGEMENT.