CANTON S'J]EELRP,OFING CO·. V;,KANNEBERG.
tion 4982, Rev. St. Ohio. The action was begun ,July 9. 1889. The rental value of lot No. 96 will be fixed at $1,000 a year, and the amount of recovery for which judgmetlt must be entered will be the rental value from July 9, 1885, to the date of entering judgment.
CANTON STEEL ROOFtNG
(Circuit CQurt, N. D. Ohio, E. D. MaY,1892.) 1.
PATENTS FOR INVENTioNS-PARTIAL ASSIGNMENT.
In a suit for infringement it was stipulated that the patent in snit "is owned by the complainant, except tbecounty of Knox, Ohio." Held, that even if this be taken to mean that there had been, not a license merely, but.a complete assignment of the monopoly in Knox county, plaintiff still retained full title with that exception. and could sue for infringement elsewhere, without joining the assignee for Knox county all a party plaintiff. ,
'.A. failure to prove actual infringement beforetbe fUtn,:t of tbe bill, altbough such is averred in tile bill, doeB not requiretbe dism issalof the pill as prematurely brougbt, or prevent a decree for all,. injunction and an accounting of profits and damages for infringementssubse<J,uent to the filing of the bill and before decree, if th,e bill also avers anticipated prays for injunctioll and general relief; for the right to injunction rests entirely upon antic!J'lated infringements, and the rlgbt to recover damages for infringement between the tiling of the bill and the final injunction is incidental to,the injunction, and necessary to make the remedy complete.
Letters patent No. 188.079, .issued March 6, 1877, to Henry W. Bmith,for an im. provement in sheet metal roofing, comprises a means for making a water·tight Joint, and for securing the eheets firmly to the roof boards. This is done by means of an anchor piece of sheet metal; rectangular in form and bent at right !lngles, so that when one part is nailed· t()the roof the other stands upright. The.adjoining sheets of roofing, when laid in position; have' 'Wright flanges of unequal height, the anabar piece being them. Tbe vertical portiq, of the anell!), piece is split centrally, and one thereof is folded down over the shorter fiange. On the higher flange a hem is turned down so as to embrace therop of the other leg, and then these parts are folded down over the. Shorter flange and anchor piece, thus completing a jointof six or seven thicknesses of metal ,All these elements are old, and the claim is for a l'ombination, Hdd, that the patent ill valid, and not anticipated by the Boesch or the. Diehl patents, (No. 2,850, issued March 12, 1842, and No. 99,656, issued February 8, 1870,) both of which, while resembling it in the split anchor and flanges of unequal height, require the folding of several thicknesses of metal at once; or by the .TrisllllJr & Sliewart patent, (No. 15,988, issued. Octobel' 28. 1856,) which has a solid, anchor with a scroll, which fits into a similar scroll in the upper flang'e, while the sctoll of the lower flange is inserted thereunder, thus forming a tubular joint. Complainant's patent is infringed by the device made under letters patent No 403,844, issued May 21, 1889,in Which a tongue is punched out of the central portion of the and bent over in such manner as to embrace the lower flange, while the entire top Of the anchor is embraced by the hem of the 'higher flange, and is then folded over the lower flange. The two devices operate on the same principle, and the fact .that the entire width of the anchor is applied to holding down the sheet with the higher 'flange is immaterial, it not appearing that the one leg of complainant's device was not entirely sufllcient for that'purpose.
'C. and William Kanneberg, doing'business as the Kaimeberg Roofing
Bill by the Canton Steel Roofing Company against Alvin
'Company t to restrain infringement, and for an accounting, as to letters patent No, 188,079. issued March 6, 1877, to Henry W. Smith, for an improvement in sheet roofing. Decree for complainant.
'Mr. Bond arid M, D.
for complainant. (]hasIB. Miller and Sh&rnan, Hoyt &: for defendantr. Before TAFT, Circuit Judge, and RICKS, District Judge.
TAFT, Circuit Judge. This is a bill in equity to enjoin the alleged infringement of a patent for an improvement in sheet metal roofing. The defenses raised by the answer and on the proofs are-First, that complainant has ,not title to reli,ed on; second, that ,no manufacture of the alleged infringement by the respondents occurred previous to the filing of the bill; third, that the patented device relied on by complainant has no novelty; fourth, that the improvement in sheet metal rQOfing manufactured by respondents sinc,a the filing of the bill is not an . infringement oithe patent sued on, but is anew and different device, it' self protected by a patent. ' Of these defenses in their order: 1. The bill avers that the patented device relied on was invented by one Henry W.Smith, andrtbat from Smith, by mesne assignments, duly title toit,b'ecame vested in the complainant. The answer denies the tille. On page'tof complainao,t's record is this stipulation: "Ins stipulated by ,bUuosel for the that the above-mentioned letters patent is owned by toe complainant, except the county of Knox, ,counsel that this does not state of Ohio:" It is al'gned by llhow a sufficient title in complainant to ,maintain its, ,bill. We cannot agree with 'the contention., Even if the stipulation be taken to mean that complainant, or oue of its in the title to the patent, !merely a license, but the entire exclusive right to the IU()nopoly, the county of Kno:x:, so that it was pro tanto a complete assignrnent,thereremains,jn the complainant full title to the patent, with Gayler, v. Wilder, 10 How.. 494. The exception is simply a failure of title so far as infringements in Knox county, Ohio, ilre concerned, and cannot dastroy complainant's rightto enjoin infringements everywhere else. Nor is the assignee for Knox county a necessary party. He and the complainant are not joint owners or owners in common. Their interests, in the patent are distinct !:l.lldseparable. The second defense h,as' nQmore mElrit than the first. The bill al. leges that respondents made sundry specimens of sheet metal roofing concomplainant's device, that they have, made large amounts thereof; and, further, that it fears, and has reason to fear, that, unless are restrained by a writ of injunction, they will continue to 'make and vend large amounts of said metal roofing, and thereby will irreparable injury to complainant's rights. The, infringement is denied by the answer; The agreement of counsel as to respondents' manufacture was as follows: "It is also stipulated and llgreed that ,J1jxl')ibit A represent.1 the different the seaID is formed; parts of the roof now IDi\nufactured by respondents that Exhibit B represents the different parts of the roof, and their relation toeach other. when the first fold; or hem. is'formed; and 'that Exhibit C represents the seam of the roof, together with its different parts,' properly foi-med..
'i ';" ,.
CANTON STEEL ROOFING CO. t1. KANNEBERG.
It is also stipulated and agreed that the respondents had distributed samples
like this Exhibit D now produced, and had solicited orders, but had not in fact completed any roof priOl" to the filing of the bill in this cause, but have since made roofs like Exhibits A. B. and C."
It is said that even conceding that sample Exhibit D was a sample of a roof which, when made, would be an infringement of complainant's patent roof, and that A, B, and 0, made after the filing of the bill, were such infringements, nevertheless the manufacture of a mere sample was not an infringement, and, no such roofs having been made before the filing of the bill, the averment of the bill is not sustained as to infringements, and it must be dismissed and a new bill filed. The bill praysFirst, for an injunction; 8econd, an accounting for profits and damages; and, third, general relief. The right to an injunction rests, not on past infringements, but on anticipated and threatened infringements. The bill avers reasonable ground for fearing such future infringements, and the stipulation fully sustains the averment. A failure to show infringements prior to the filing of the bill is unimportant in its effect upon complainant's rights, except upon the question of damages. The right to recover damages for infringements between the filing of the bill and the final injunction is incidental to the right to an injunction, and is required to make the remedy complete. The view we take of the bill and the sufficiency of the proof upon the point mooted is fully sustained by Judge JACKSON'S opinion in Page Woven Wire Fence G>. v. Land, 49 Fed. Rep. 936. The bill is a bill quia timet, and does not depend upon actual damage, but on anticipated injury to the right sought to be protected. 3. It is said the device of the complainant's patent has no novelty. The device is for making a water-tight joint between the successive metal sheets to constitute the roof, and for securing them firmly to the roof boards. This is done with the aid of a small rectangular piece of the sheet metal called the "anchor," which is bent so that its two parts make a right angle. One part, or the base, is nailed to the roof board, giving the other a vertical position. Flanges are turned on the sheets to be jointed, so that when the sheets are laid upon the roof, flange to flange, with the vertical part of the anchor inserted between the flanges, the top line of one flange shall be higher than the anchor, and that of the other flange shall be lower. Thus laid, one of the sheets will cover the base of the anchor and its securing nails. The vertical part of the anchor is split centrally from its top line down to a point opposite the top line of the lower flange. One of the divisions of the anchor thus made is folded completely over the lower flange, while the higher flange. running up above the other half of the anchor, is folded over that half. '}'he fold or hem of the anchor over the lower flange holds the flange and the sheet, of which it is a part, to the roof. The fold or hem of the higher flange, however, is folded over the anchor, and is, of course, not held down thereby, for any upward pressure on the sheet would lift the hem off the anchor. To secure the sheet with the higher flange to the roof, one more fold is necessary. The higher flange, with the part of
IWbihh' itembrabelv in ,its'fdldiorhem, :is hentor folded over bf ' 'the 'flange. < ;,This: tcuureverses of flrstheq1' Qf the higher fiangeand 'theanchol' end it embraces, so that now the hehtopens upward, 'andtl1eitnchor end :isctlltfned downwardiilHoithe hem, '. thereby holding thehel11, flange, andsliul6tlitothEl tooL:rl?besecondturn·oi the higher flange does not benE!. 9iidhangetbeposi,tioDS' of the lowel''iflnnge, and the half of the anchor&ided . ,Thus both sheets: are secured to the roof,; t4e nails ofthe<8inchor are eoncealen, and the six>or seVen thicknesses of the, me,tal foldUclil1c,get heriprev:entalL longitudinal <motion, except enough to allow and c6ntraclioll. without brea:king the joint. in the patent ,sued on (No. 188,079, dated:March 6,187.7) 1aasfollows: . : 'toofs,'thelsbeets,:A" ha,v,ing flanges. a, b, ofuneqllal width. awl rJ, haVing divisions, and tpe bentwitb flangjl. a, ovel; lb, ;t?f the specified." ,'l'he>tilnim iefor ane:w;oomhination of parts, which Were all old at the time of the patentL i SPlit, anchors like those here described had been used before." Flanges!ofunaqtial width;:turned on the sheets like these, had beenusea, in: COOlJect1on with a split:anchor before. The question is whether thepresenf oombination·had ever-been used before. There are three patents only. "need to be examibed in this COhnection. The first'is the Boesoh patent, No. 2,850, dated Novemher;l;2, 1842.. J,:nJhis !latenc the' flanges were ofunequal width, one wider and one narrower than the anchor. The anchor was folded over the narrower or lower ;flange; imdthe w,ideror .higher flange was ciolded o:verthesetwo;cand thenithe whole,jqint,'i, e., botb.flanges and the:;mthor,'are folded:olVe1!agaia. This medeeight thicknesses of metal in the jdilJlt.The higher .flange was. folded twice:, theaachor was ·folded twice, ftnd. the Jower,.flange was i folded In ,compla.inant's patent .the ,thicknesses OfirDll\tM:intne joint are "six, 'or, at the most, seven, The 'higher.flange is,folded twice, the folded -once, and the lower diange not,.allaJL ; It is ndt:necessary topoibtout that the formation of the joint ih complaina:rit'spaten:t·ismucb1ess. olumsy than that in Boesch's patent. ' In Boes<ilh's patent' the finaL fold was or all the material in the Joint, while inth8 'cOlnplah1ant's patent it is of one leg of the anchor 'M:ocrthe higherfiange-:- The; difference in the force required for the one '!md,the other,:must berv;ery mark¢. The stral.:noD the metal in the :BQesch; paten,t' iIi the· mori Ifrequent folds O1ustbe,greater than in com.plainlmt's,patentJ,aridilits.effilct, can ,only bea"oided., it wOnld seem, .by making the flanges;and the :aochQr: higher, and thl.l$using more .metal. 11smquiteolearitb8.lt,lwhilerthere is someisimilarity between the.tw,o 'pBitimts, the:pattn:tof::the,oomplainant is simpler,:moreusl')ful, than,the ;Boeseh ,patent,arld of thE) elemen1$I' :,':.'l1he oex<tipatentcis that oUl'rissler.&Stewart, No. 15,988,dated October 28, 1(856.: [([nthi8, patent :t6e 'edge of one sheet is formed in1l0a scroll. A solid anchor with Rsimilar scroll is insertediilto the scroll of.tha
CANTON STEEL ROOFING 00. '!T. :XANNEBERG.
-sheet, and nailed down. The next sheet has its edge slightly. turned twice 'in oblique angles to itself, so as to permit its insertion under the scrolls of the other sheet and the anchof;and its resting against the .inside top of the scroll of the anchor. The joint thus made is an open, or rather a tubular,;one. This joint has given Us more, trouble than any other On the claim bf anticipation. In· a certain sense,. the anchor exerts itsholding"downpower on the two sbeetsin the same way as in the complainant's patent. It operates by one fold directly on the lower sheet, and by whatis perhaps equivalent.to two folds on the other. It is not, however, a closely locked joint, like complainant's; it has'not the bifurcated anchor. Norcould it be made a Closely locked joint Hke complainant's by simply compressing the'scrolls into a flat fold. The bifurcation of the anchor seems necessary to accomplish the same operation of the, anchor on both sheets in a flat joint. We are of opinion, therefore, that the combination in the Trissler & Stewart patent is not an anticipation of' complainant's combination. The construction and form are both quite different, and the resulting joint is not the same. The only other patent which it seems necessary to comment on is the Diehl patent. (No. 99.656, dated February 8, 1870.) In this device the flanges of the adjoining sheets are of unequal width, and the anchor is aspHt anchor. When in position, however, the anchor in one legis higher than the wider flange, and in the other leg is higher than the lower flange. The higher leg is folded over the higher flange, and the lower leg over the lower flange. The higher leg and flange are then folded oyer the lower leg and flange. This does not secure the higher flimge and sheet to the roof, for it can be lifted out of the embrace of the higher leg. It is necessary, therefore, to turn the whole joint over on itself once. This makes a joint of eight thicknesses of metal, to produce which the anchor is folded three times, the higher flange twice- and the lower flange once, or six folds in all. The only difference between this joint and the complainant's is that the higher leg of the anchor is long enough to be folded over the higher flange, while in the complainant's joint it is shorter, and the higher flange is folded over it. This seems a small difference, but the result is that the complainant does not turn the whole joint over at all, makes only or, at most, seven, thicknesses of metal in the joint, while the folds of metal are only three instead of six. This is a wide difference, so far as concerns danger of breaking or straining the metal, ease of manipulation in making the folds, and simplicity in the resulting joint. The resulting combination in complainant's device is certainly very different from that of the Diehl patent, although the dHl'erence; begins in so slight a change. Nor can it be said that the turning of the higher flange over the anchor, instead of the reverse, is a change of the combination of parts in the Diehl patent which does not involve patentable invention. The discovery or pereeption that a slight change in a known combination will produce a wide and valuable difference in results necessarily involves the inventive faculty, which it was the object of the patent laws to encourage.
On the whole; then, we think that complainant's combination patent is nOi1void'for want of novelty or patentable invention. It has been in genera.I 4ndsuccessful use for more than 10 years, which tends to show its valueas:an invention. 4. We come now to the question of infringement. The defendants were employes of the complainant, and were entirely familiar with the complainant's device and its operation. The defendant's patent was No. 403,844, dated May 21, 1889. The claim for the patent is as follows: '''In devices for securing sheet metal roofing in position, the combination, with two adjacent upturned flanges, of the sheets of metal of different heights, of an anChoring piece secured at one end to the roof and projecting up between flanges of the shee.ts of metal, the anchoring piece having a partially severed therefrom, the base of the tongue being located at theupper edge of the lowermost of the two upturned flanges, the top being embraced by a folded-over edge of the higher of of the ancli6ring the two uptllrned flanges, and the opening formed in the anchoring piece by the partiaLsevering of the tongue therefrom, being free to receive the tongue of the finished Seam, slibstantially as set forth." The sole difference between this device and the complainant's is in the anchor. ; The unequal flanges, and the anchor higher than one flange, and lower than the other, are folded in the same way,and the same joint is made. The anchor. is bifurcated in both cases. In defendants', one leg is punohed out of the middle of the vertical piece, while in complainant's His cut out of the side. The two parts of the anchor in holding down the two sheets by their flanges perform exactly the same functions, in exactlythe same way. It is said that defendants' form Ofllllilchor makes the joint. but six thicknesses of metal, while in complain3nt's devioe there are seven. Tbis is an error. If the legs of the anchor of the oomplainant's patent were of equal length from the point of splitting, undoubtedly the leg folding over the lower flange would not in the completed jQintresume its place in the same plane with the other leg, enfolded by the higher flange, for the lip of the higher llange )would prevent. This would make sevell thicknesses of metlll.But; in the drawings which accompany the complainant's specifioatillns;dtisperfectlye\1ident that .the legs of the anchor, when inserted in the joint, are of unequal length, so as to permit the leg enfolding thelower flange to be pressed under the lip of the higher flange, andio take its position in the same plane as that of the otber leg, making the thicknesSes of the metal only six. The separate figure of the anchor in complainant's drawings does not show the difference in length of the legs of the anohor, but the other figures showing the combinatioI1 do; and the evidenoe is that the model did. Moreover, it is indisputable thatfor twelve years complainant has been making its anchor with legs of different lengths to attain the very result which defimdams claim as the ground for a patentable difference between their device and that of the complainant's. It is true that complainant has made its anchors both ways, and does still, which would that the difference is not material. But, if there is any value in this feature, it was known
and used long before defendants patented it1 and cannot now make the difference betweeu the two combinations which shall prevent infringement. It is further urged that the tongue form of bifurcation permits the whole width of the adchor to be applied to holding down the hem of the wider flange, while in the split form only one half of the anchor is so applied. In practical operation, it will probably be found tllat, in the split form of anchor, the parts of the joint will be so pressed together that the shorter leg of the anchor would press down on the lip of the higher flange, thus that the whole width of the anchor would be 'applied to holding down the fold of the higher flange. However this may be, the difference in operation, if any, is simply one of degree, which might, have been\'compassedin the split form of anchor by ening the anchor used. Moreover, this chauge, if it be ooe, does not remedy any known defect in'the complainant's device. In the use of the latter there never has been any complaint that the holding-down strength of the split anchor was not ample for all purposes. In our opinion, therefore, the defendants' devise is, in effect, the same combipatented to the complainant's assignor. The variatione nation are produced by merely slight changes in form, without any real differ·· &OCein. function or operlltion or result. The decree will be for a perpet· ual injunction, and, as it is in evidence that actual infringements have taken place since the filing of the bill, there will be a reference to a master, evidence, and, report on the damages to complainant.
CaTER et.l al.v. THE MASCO'I'rllI. (No.1.)
(Cireu.it OouTt 0/ AppeaZ" Second Otrcuit. July 00, 189l1.)
1111, aftlrmed In part.
Where a ship gives a bill of ladin'g reolting that the goods were received on board "in good order and oondition," and afterwards delivers them in a damajfed condition, the bUl'!ien Is on, her ,tollhow that the damage a,ros,e from an excepted peril ; and, if she is unable to explain the clause of the damage, she is liable. 48 Fed. Rep.
Paoo_BILL OP LADING.
Appeal from the District Court of the United States for the Southern District of New York. In Admiralty. Libel by Carter and others against the steamship Mascotte for damage to cargo. The cause was tried, together with another suit between the same parties, to recover the extra cost caused by discharging certain tea in Brooklyn instead of within the" tea district," on the New York side of the East river. Decree for libelants. 48 Fed. Rep. 119. Claimants of the vessel appeal. Affirmed.