PEATHERSTONE ". GEORGE 'R. BIDWELL CYCLE 00.
113
Before Judges.
Circuit Judge, and NELSON and WEBB, District
PER CURIAM. We agree with ,the learned circuit judge who decided thiS <l8rse in the court below, for the reasons stated in his opinion, that the tru:stee proceedings afford no ground for withholding from the defendants in error the benefit of the superSedeas bond, and that they are entitled to interest on the full amount of the decree entered June 28, 1890, without deduction on account of the trustee proceedings. Judgmentaflirmed, with interest and costs. FEATHERSTONE .... GEORGE R. BIDWELL CYCLE CO. (Circuit Coun, B. D: New York. October 1, 1892.) i,
, N o . 5,136. PATlllNTS ,POR lNvlllNTIONS-ANTICIPATION...,-PNEUMATIC CYCLE TmEll.
1.
CI&iin 4 'of reissued patent No. 11,153, granted March 24. 1891, to John , B. Dunlop, upon original patent issued to him September 9, 18110, covers, in .ubstan:ce, the union of an inflated, expansible tubular tire to the rim of a <lyql$ whl;iel by meaDs of a nonexpansiblecontining envelope surrounding the tire, and h!,ving flaps, which are turned over and cemented to the inner sur· face of the rim. Held, that this claim was not anticipated by patent No, 5,104, issuedMsy 28.1847, to Robert W. Thompson, for an improvement in carriage wheels. etc.· claiming a rubber tube, a covering of canvas, ,and au outer cas· ing, consi"ting of two strips of leather. ,one bolted to the outer side of the felly, and ,fastened to the other Iltrip by rivets or by leather thongs. .. 8..um-IxVENflON-Pnron ART. , Therewlls nothing in the prior state of the art, as shown either by the nine patents issned in 18t19 to A. W. Thomas, or by other patents. to render such claim ,invalid for want of invention, especially in view of the fact that this tire was the first one commercially adopted, and that it went into immediate and very extensive use. I. SAME. .But, in view of the prior state of the art as shown by the foregoing patents. and especially by the Wilkins patent, there was no invention in the additioual element added by the fifth claim of the Dunlop patent, namely, an "outward protective covering of India rubber. the edges of which are secured to the fnner surface of the rim, as set forth." 6. ,BAMB-REISSUE-EsTOPPEL-ApPLICATION-FALSE STATEMENT. In his affidavit. accompan,.ying the application for the original American patent Dunlop swore that the invention wasthe same as that covered by the British patent issued to him in 1889. Defendants claimed. however, that the tirst claim of the reissue is identical with a prior English patent issued to the patentee in 1888. Held that, even if this were true, and the affidavit conse· quently false. there being no other evidence of fraud. the whole of the reissue was 'not invalidated thereby. it appearing that the question of identity may have been a doubtful one, which the applicant would probably leave to hi. attorney; I. BAME-ESTOPPEL. After the issue of the original American patent, and before his application for the reissue. the patentee applied for a second American patent, swearing that the invention therein claimed had never been patented, with his knowledge or consent, in any country. This statement was untrue as to part of the claims. for they had been described in the English patent of 1889. Held, that this false statement, in the abSence of the otber elements of an estoppel, did not'preclude the patentee from asserting the claims of the reissue .. 8rA-n-REI8BVE--VALIDI"y-SAloIll: INVENTION.
On an eXamination of the patents it sufficiently appears that thf' invention covered by the fourth and flfth claims of the reissue was the same lAventioD intended to be secured by the original patent of September 9, 18110.
v.53F.no.1-8
omitted) of elastic material, which. by the original patent, were to be inserted between the edg1ll of the whe,el rim and the strengthening folds enveloping the ti,re.so as to pro, tect thelie; ,tolds frominjur,yby the edges of the I'M, did' llClt in,.validate the by >,the claims, for these strips, were not essential to ,t'he combination. and Ill(\. not jnvolV'6 inventive skill. and it appea,retl'that no ad'verserighu:accrued' u'the'mea.n time',and that thereis8ue was applied for within 4flnonths from the date of the original. " , ,'" :',' .
E;quity.,)3UJ bY,AlfNd Featherstone agamst George R. Bid· wen Oycle Company for infJ;'ingement patent No. tl,l53, granted March 24:, 1891, to John B. Dunlop, upon the original patent issued to him September 9, 1890. Decree for complainant. &P3ge, for complainant. Francis T. for defendant. District Jlldge. This is a suit brought for the al· 11,153, for imL Jeged""iDfrlngmnent in cycles, a:p.d in of IlOOWing themto,wheel rims, With ,prayer for an injunction, and an accounting. ,'trhe patentee, ,Dttt1l<>p, 'origiIlally obtained'two plttentB in'Greall Britam1+the,fl.rstin',l$$S, for a ',the seCond in 1889, for an, improvement. maaid tire, and ,in' the ,m.ean!! ,of, securfug, it to whee1'lims. The· English' patent of 1889 'claimed an inftatedtube of Jndia.tubbet, bya str,engtheni,hg.cfold of, canvas cemented to the metalhc l'llll of the wheel aI;lA ,to 'an outer told of India, ;l':nbberthickened .at its pointQf contae$ with the ground. The meWlie rim of the wheel was flattened SO as to furnish a large material were to be fastened between the edges of the rim &trengthetling folds 'Which enveloped the rubber: tube, so as to proinjured by the of said rim. O,J;l 9, Dunlop obtained a patent in the lJl1lted States for this invention, describing it as the. one patented in. Great Britain in 1889. On November 24, 1890, he applied for another pathim June 2, ... original for this CQntlJ,:Qled claims substantiallY' the same as. tliose m· volved in the present suit. On January 14, 1891, Dunloplilurren. dered his pa.tent of September 9, and prayed for a reissue thereof, which was lP-'anted to him March 1891. For. infringemel:lt :of this patent the present suit is prought. Claims 4; and I 5 of the reissue are the only ones to which it is at present necessary to refer. They are as follows: (4) "The combination, with the rim of a cycle whelll,and an ex\>ansible tubular tire. ofa tUbular.nonexpansible. con,flningenvelQpe surroun41ng said tire. and formed or provided with flaps or free edgllsturned over and cem!lnted &0 the inner surface of fJl,erlm, as set forth." ... , . .. (Ii) combination. with the rim of a cyele wheeland an inflated. expansible tubular tire. of a tubular. nonexpansible, confining enveloPllsurroundlng said tire. and provided with fiaps or free lldges secured ,to the rim, and an outer protective coveriu,goflndia rubber. the. e4ges .of ,which are secured to the inner aurface of the rim.... set forth. "
"fe'L Y:',:,
FEATHERSTdNE i/. GEORGEdB. BIDWELL CYCLE CO.
115
The defensesare:- (1) Anticipation; (2) no invention; (3) in· -validity of _reissue. The first two defenses may be considered to· gether. Defendant introduced as evidence of the state of the art several patents. Patent No. 5,104, granted to RobertW. Thompson, May 28, 1847, for ani improvement in carriage wheels, etc., claimed the rubber tube,a cover of canvas, and an outer casing consisting of two strips of leather, one bolted to the oute1,' side of the felly, and fastened to the other strip by rivets or by strong leather thongs. But neither in the said patent nor in the printed publications filed therewith, describing carriage wheels said to contain modifications of the patented tire, but which show only one inner tube, do I find any anticipation of the Dunlop method of fastening the tire to the wheel. The only method of fastening therein described is by means of bolts· with or without a hoop. The Thompson patent was fof.' elastic bearings applied around wheels, and was especially adapted to carriltge wheels. The mode of fastening by bolting the leather casing ,to the tire, with or without the hoop, was merely incidental. The Dunlop patent is for an improvement in the means of securing pneumatic tires to wheels, and is especially adapted to cycle wheels. By the ThQIllpsoninvention, including herein the modifications shown in the printed publications, the pneumatic tire, aE! one of the witnesses expresses it, "is bolted or secured to one side of the rim, and the other One (the Dunlop) embodies the rim/' The Thompson bolted fastening, by reason of· its weight, the projecting bolt heads, its narrower attachments, and lack of adaptation to lateral pressure, could. not be successfully applied to a bicycle. Besides, the mode of fastening the leather strips by rivets or thongs would permit the entrance of water and grit, and would render it impracticable. The essenlJe of Dunlop's invention is the means of uniting a flexible rubber tube by an inflexible jacket to the rim of a bicycle wheel, so that, while rigidity is obtained, elasticity is retained. 'rhe tire and the felly wel1e, by this invention, so united, not only to the outer edges. of the rirrJc,but, by the canvas flaps, to the inner or hub face of the wheel rim, that the lateral and tangential strain were effectua.ny resisted; and herein is to be found one of the new results of the new application. The carriage wheels of Thompson were not a single pair of wheels, ·one following the other, guided by the swaying illotion of the front wheel from side to side, and therefore they were not ,protected against such lateral motion. Tlilil element is also wanting from the Thomas patents to be hereafter noticed. But defendants claim that, even if the Dunlop patent was not anticipated, the state of the art was such that it did not require any invention to Jl,dapt the known device to the new purpose. 'fhey in· others, nine patents for wheel tires, granted in 1889, to A. W. Thomas, of whom they are licensees. But none of the patents claimed or suggested for fastening tires to wheels sug· gestedthe method or means patented by Dunlop. The patent No. 399,358 described a tire fastened by bands of elastic or pliable material, but the fastening is effected by having the bands circumscribe the of the felly of the wheels, and the inventor prefers that they may be made of such material "that they may expand uniformly
f16
WDERALREPORTER',
vol. 53.
with::the:tube or tire in'its inflation." This rnodeof, fastening is open tothe'very objections, among others, obviated by the Dunlop nonexpansiblecanvas,jacket. It seems to me that the eVidence from the patentS, as well as from other sources, establishes the fact that the Dunlop patent was the result of inventive skill, and ;was of great utility. " That Thomas could not, with his, nine patents, make a prn.ctical tire; that the 'defendants could not and did not make a practical tire until after they had dissect.ed and substantially copied the Dunlop tire; that it is faster than the ordinary tires; that the Dunlop tire was the first one to be commercially adopted; and that the first year after it was put on the market-the season of 1890··91over 100,000 were sold in Great Britain,-are all facts shown by the evidence. latter facts, even if the question ,of patentable novelty were a doubtful one, would go far towards resolving that doubt in faV'or of the patentee. Loom Co. v. Higgins, 105 U. S. 580; Consolidated Safety Valve Co. v. Crosby, etc., Valve Co., 113 U. S. 157, 5'Sup.Ct. Rep. 513; Magowan v. Packing Co., 141 S. 332,12 Sup. Ct.Rep. 71;Wasburn & M. :Manuf'g Co. v. Beat 'Em All Barbed 'Wire Co., 58 0. G. 1555, 12 Sup. Ct Rep. 4..1:3; TopliffV'. Topliff, 59 O. G. 1257, 12 Sup. Ct. Rep. 825; GandyV'. Belting Co;"ooO. G. 1106. 12 Sup. Ct;Rep. 598. ' " The fifth claim differs from the fourth'claim in adding to the combination "an outward protective covering of India rubber, the edges of which are secured to the innerface'of the asset forth." In view of the state of the art as shown by the Thompson. wheel, described in his patent, and in the printed publications,-the Thomas patents, and especially the Wilkins paient,-'-I agree with defendant's counsel that there' was no invention in adding this covering to the tire in the manner stated. It is undoubtedly' useful and necessary to the making of a complete practical tire; bUt, in view of what had been done before, I think the adding of 'such a protective covering wli.S'a matter of course, and that the particUlar distance which it extended was not patentable. As the fourth claim is held valid, however,thhfquestion is of little importance. Defendant claims that the Dunlop reissue is invalid for other reasons in addition to those already considered. But since, upon the argument of the case, complainant only insisted upon the infringement of claims' 4 and 5 of the reissue, the question of the validity of the other 'claims need not now' be consider'ed: Topliff v. Topliff, 59 O. G. 1266, 12 Sup. Ct. Rep. 825; Fern1entation Co. v. Maus, 122 U. S. 413,'7 Sup. Ct. Rep.1304. Defendaht . contends that" claims 4, and 5 cover inventions which were not intended to· be by ,the origin3J. patent, and which, even if made'byDunlop,were only intended to be used in the particular combination claimed in the original patent; that the insertionor retention of the first f'laimin the reissue is fraudulent, and vitiates "tlie whole patent; that the' affidavit of Dunlop of November 24, 1890,'<in the application for 'the second American patent was false, and him from making under the reissue patent the claims alleged to be heW ; and that he was guilty oflaehesin delaying the application ,for said'reissue.
)'EATBERSTONE
11. GEORGE B. BIDWELL cYCLE CO.
117
Upon the questions of fraud and estoppel the facts appear to be substantially as follows: In the English patent of 1888, Dunlop claimed a hollow tube or tubes of India rubber for wheel tires. He stated that it was to be surrounded with cloth, canvas, or other suitable material, the latter being covered with rubber or other suitable material to protect it from wear on the "road," and was to be secured to the fellies by a suitable cement or by other efficient means. In the affidavit accompanying application for the original American patent, he swears that this invention is the same as the one patented in England in 1889, and that it has not been patented in any other patent; and in his reissue petition he prays for a reissue of the same invention covered by the original American patent. Defendant contends that claim 1 of the reissue is identical with' the claims of the English patent of 1888, and that said affidavit was false, and that said insertion of claim 1 in the reissue was fraudulent. An examination of claim 1 of the reissue will show to what extent, if any, it embodies the same invention as the English patent of 1888. For the reasons already stated., I shall not pass upon the validity of said first claim of the reissue. But, even if the inventions 'Were identical, I do not find that the reissue was invalidated., or that the statement, if. untrue, invalidated the whole reissue. The question of the identity of the inventions claimed in the patents might well have been a doubtful one in the mind of theinventor,and one which he would leave to the judgment of his counsel. There is nothing else in the evidence which supports the claim of fraud. In November, 1890, when Dunlop made his second application for a pv,tent in the United States, which, it will be remembered, was for substantially the same claims, as those of the reissued patent, he swore that his invention had never been patented, with his knowledge or consent, in any country. This statement was manifestly untrue as to part of said claims, for they had been described in the English patent of 1889. Defendant claims that this application and oath constitute an estoppel against Dunlop from making his subsequent reissue application, but I do not find any evidence of the existence of any element of estoppel except the false representation. But defendant alleges that claims 4 and 5 of the reissue are invalid, because there is nothing in the original patent showing that said patent was intended to include the inventions covered by said claims. I have examined with great care the ingenious and able arguments of counsel for defendant. Without here entering into a discussion of them, I can only say that they have failed to satisfy· me either that the invention described in claim 4 was not described in the original letters patent, or that it does not appear therein to have been intended to be secured thereby. The patentee has, it is true, been careless in the preparation and execution of his papers. He has made inconsiRtent statements, and has apparently or misapplied the requirements of the law, He was a foreigner, and he trnsted to counsel, presumably learned in patent law, to take the ,steps necessary to protect his rights. But an analysis of the original patent sho\"s that Dunlop claimed therein to be the inventor of the :means for securing an expansible tube by an inexpansible envelope
11m
'l'EDERAL:
58.
i':'
to ith.e rim'(Jfraioyc1e; ,emboc!lied'm(claams :4 and ;5, of' the reissued pate:Qt;; and"whlle i he' does p.ot swe&' as ,to his intenItion, I think it, suffioiently appeltl.'$'hm' the· original !{l8ltent.that he :therein intended to seoure tohims.e1f, said invention; ! and that it, fuvther appears from the evidence that ,the errors inthfHlpecifications arose from inadvertence, accident, or mistake, and: without any fraudulent or deceptive intention. , I have notol'erlooked the factitha.t in said claims in the reissue the pro'OOction,strips of caoutchouc dQ:notappear, but I do not regard them as el&sentiaJ., parts of the combination. They do not involve inventive skill, nel' do they affect the operation of the thing invented, except ito perhaps prolong its life; and, while the arrangement in defenda.nt's tire for 'this purpose, whereby the f1.apsof the nonexpansible jacket are doubled atthe:poin'l; of contact with the rim, seems to me tOiba an impl'Ovement upon complainant's arrangement, yet this improvement is on!yreffected by an appropriation 'ofcomplainant's invention, the meaID$ of securely and:firmly maintaining the tire in poSitiononthe,nmotthewheel.Allthe authorities are to the effect tkatwhere, under the application for a reissue merely seeks,to'make the·claim broader. and mote comprehensive, it may be.granted,'inorder to secur.e to the patentee his actual invention,provided·,he, Mil not been guilty of any inexcusable laches, and no adverse,rightB,have,accrued.Miller 1'. BraSs Co., 104: U. S. 352; James1'. Campbell, Id861;Topliff '1'. 'Topliff, 59 O. G. 1261, 12 Sup. Ct. Rep. 825; Rob. Pat. 693. In no inexcusable lache" on the part of the complainant. Ii asSOOD' jag the defects were disCovered by him, he used such' diligence to' correct them that,although he resided in a counilrt'y; and his 'counseVl'esided here,. his application was illedin On Januarr24,.1891,-41-2months after the date of the' origiralpatent. That; no cll'cumstance has occurred during this 'time' tha.twould make ,the.' reissue harshly or unjustly' to this' !defendant is abundantly established by the evidence. The defendant had not invested a dollar in the business at the date of the grant of the reissue; , did not obtain a license from the owners oftheThoIIUlB patents, the Thomas Company, until six weeks after the reissue', was granted. 'ilie Thomas Company had never settled on any form of til'e as that which they wotIld offer fol' sale, and they had never sold a single tire. Infringement has not been seriously, and, cannot be Imccessfully, denied. Plaintiff's and defendant's tires, when completed, are substantially, the same. , Let'there bea decree for an iiljunction and an accounting. PETTIBONE et a1. STANFORD. (Cil'cuWCdurt of Appeals, Seventh Circuit. October 26, 1892.) EXTENT OF CLAIM , , PRIOR STATE OF AnT-IN-
v.
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I.
PATENTS 1l'OnlNvENTIONS FRINGEMENT;
Claim 8 ofletterspatent No. 245.684, Issued August 16,1881, to Thomas J. JeDu,e, O,l1j\rles S,.BI,umon, for an ,i,m,'prO,v,emeut in lifting jacks, describes, the combillatiOr;1. among other "the standard, A, provided w.ith tbe arms; V,' '.'*', .. collar, C, having the trunnions, 0, working in journals at