OVERMAN WHEEL CO. 11. CURTIS.
DICKERSON v. GRl<JENE et aL (Circult Court, D. Rhode Island. November 17, 1892.) No. 2,362.
PATENTS FOR INVENTIONS-PLEADING-PROFERT OF PATENT.
A bill for infringement alleged thM "on the 30th day of October, 1888, letters pateut of the United States numbered No. 391,875 · · · were is!'lued. · * · as by a certified copy of said letters patent in court to be produce1 will more fully appear." Held, that this 'was sufficient profert of the patent to make the same a part of the bill. Bogart v. Hinds, 25 Fed. Rep. 484, and American Bell Tel. Co. v. Southern Tel. Co., 34 Fed. Rep. 803, followed.
In Equity. Suit by Edward N. Dickerson against William R. (keene and another for infringement of a patent. On demurrer to the bilL Overruled. Statement by OARPENTER, District Judge: Tills is a bill in equity to enjoin an alleged infringement of letters patent for an invention. The bill alleges that "on the 30th day of October, 1888, letters patent of the United states numbered No. · * * were issued, * · · as by a certified copy of ;;aid letters patent in court to beprodnced will more fully appear." 'rhe respondents demur because the complainant "has nowhere set forth what the 'medical compound' is, the alleged sale of which by said respondents he claims to be an infringement." Oowen, Dickerson, Nicoll & Brown, for complainant. David S. Baker, Jr., and William O. Baker, for respondents.
CARPENTER, District. Judge. The respondents, in support of their demurrer, argue that the bill should set out the nature of the patented invention, or at least should make the specification of the letters patent a part of the bill in express words. But it seems to be settled, at least in the practice of the federal courts, that pr.>fert of an instrument, such as this bill makes, is sufficient to make "uch instrument a part of the bill. Bogart v. Hinds, 25 Fed. Rep. 184:; American Bell Tel. Co. v. Southern Tel. Co., 34 Fed. Rep. 803. 'rhis demurrer must therefore be overruled, and the respondents vI'dered. to answer over.
OVERMAN WHEEL. CO. et aL v. CURTIS. (Circuit Court, D. Connecticut. October 17, 1892.)
1. PATENTS FOR INVENTIONS OTHER CIROUITs. SUIT FOR INFRINGEMENT ADJUDICATIONS m
The fact that the jUdiciary act of March 3,1891, took away the appellate jurisdiction of the supreme court in patent cases, did not extinguish the doctrine of comity between circuit courts, so as to diminish the weight which should be given to a prior decision in another circuit in relation to the same patent. Am&rican Paper Pail, etc., Co. v. National Folding Box, etc., Co., 51 Fed. Rep. 232, followed.
to Albert H. Overman, for an improvement in pedals tor velocipedelJ,
2. BAKE-INVENTION-VELOCIPEDE PEDALS-
Claims 1 and 2 of letters patent No. 329,851,1ssued November 3, 1885,
I'EDERAL REPORTER I
cover a patentable invention. Pope Manuf'g Co. v. Clark, 46 Fed. Rep. 789, tollowed. Pope ,Yanuf'g Co. v. Gormully, etc;, Manuf'g Co., 34 Fed. Rep. 892, and 12 Sup. Ct., Rep. 637, 144 U. S. 248, distinguished.
In Equity. Bill by the Overman Wheel Company and the Pope Manufacturing Company against Henry J. Curt.is for infringement of a On motion for. a preliminary injunction. Granted. Cba.Jn,perlain,White & Mills, for complainant. Offield & Towle, for defendant.
rOWN8END, This is a motion for a preliminary injunction against the infringement of claims 1 and 2 of letters pat· ent,:No.3)29,851, granted to Albertll. Overman, November 3, 1885, for,·iJP;provement in pedals for velocipedes. These claims were sustained, on final hearing, in Manufacturing Co. 46 Fed. Rep. 789. It appears from 1Jhepleadings and proofs and ,the decision of the former. suit· tile questions, of pfltentable novelty were by counsel, .and carefully conby (the court. judge, after reviewing the patents illtroducedby way of
,uNotW,ng.bas been adduced-by thedetendant in thlJ.'! <JlWeto show that .the other thlW fr;ankly set forth.il+,the specifications of the Overman pi!:tent, and I think that that Overman made a distinct step in the' adaptation of pedals to the requirements ot bnproved bicycles. 'l'he l1tillty is not denied, and the' although slight, appears to be important, and one of principle, not attainable by mere mechanical improvement. That it required the exercise ot invention, and is patentablel I think hIlS been successf:olly maintained." ,
At the hearing upon this. defendant claimed, by way ,of defense, lack of ';novelty, prior use, noninfringement, .defective title, ,no injury to complainants, and that the patent in suit been virtually declared)ny,alid by the United States supreme court. these seem to me to be disposed of by the decision in¥anufacturi:ng 'Co. v. Clark, supra. But defendant's counsel claims that this should. not stand as an equity against the the act of Marclj. 3, 1891, by taking away the Uilited States supreme court, has vir· tually extingUished the doctrine of comity between co-ordinate courts. I am unable to adopt this view. In fact, ina very recent case,-American Paper Pail, etc., Co. v. National Folding Box, etc., Co., 51 Fed. Rell. 232,-the circwt court of appeals has decided other· wise. In that case, Judge Shipman, speaking of theW-eight which is to be given to Q; previous a'djnditlation which is the foundation of an apPlication for a preliminaryiIljlJ,D.ction, says:
"In the absence of some reason for disregarding it, the former adjudication sliould have the same weight in this court which it has as the foundation for a prel1minary injunction before the circuit court. The effect :Which is to be given such adjudicati6n iri the circuit court is well stated in the syllabus of Mr. Justice :Miller's'opill1on fu'Purifier Co. v. Christian, 3 Ban. & A. '42, as follows: 'Where a plttenthasbeen established by a decision of a circuit court after careful consideration, that decision is entitled to very great weight ina subsequent avplication, either before the same court or any other for a preliminary Injunction or any preliminary relief.' We concur in this statement ot the law."
OVERMAN WHEEL CO. fl. CUR:l1JS.
I have carefully considered the additional evidence 3..'3 to lack of patentable noV'elty presented by certain British patents and model exhibits, which it is claimed. show a prior use of pedal bars like those of the patent in suit. I do not find in this evidence anything which would lead me to a· conclusion different from that reached by the learned judge who tried the case in Maryland. The claim of defective title is not sustained by the evidence. Un· der the assignment by the complainant the OveI'IIl8.n Wheel Company, of June 10, 1886, the legal title to the patent vested in the complain· ant the Pope Manufacturing Company, subject only to the reservation by the Overman Wheel Company of the sole right to make pedals like the infringing pedal. The two complainants, therefore, own all rights under said patent, and are the proper parties in this suit. Manufacturing Co. v. Clark, supra. The decisions of the United States circuit court and the· United States supreme court in Pope Manuf'g Co. v. Gormully, etc., Manuf'g Co., 34 Fed. Rep. 892, and 144 U. S. 248, 12 Sup. at. Rep. 637, are cited in support of the claim that the patent for the invention in suit has been judicially declared invalid, It is true that the Latta patent, therein referred to, does, in the drawings which accompany it, suggest a construction similar in general appearance to that of the patent in suit. It is also true that certain claims of said Latta patent were declared invalid by the cir· cuit court in the above case, and that, in the opinion of the United States supreme court, affirming the decree of the circuit court, it said: "If there be any novelty at all in the Latta patent, it must receive such an exceedingly narrow construction that the defendant cannot be held to have infringed it." But it appears upon examination of the Latta patent that none of its claims embrace the invention of the defendant. It further appears that the second and third claims of. said patent, being the claims which defendant in above cases was alleged to have infringed, are for pedal bars coated with rubber, longitudi. nally grooved. This form of>pedal bar was expressly disclaimed· as old by the patentee of the patent in suit. I have been unable to adopt the construction of the above decisions claimed by defendant's counsel. But, if there is any force in the claim that, by such con· struction, the decision of the Maryland court has been virtually overruled, this claim is one which may more properly be presented to and passed upon by the appellate court. I shall therefore follow the rule as stated in Brush Electric Co. v. Accumulator Co., 50 Fed. Rep. 833.
"The rule is well established that where, as the result of a contested controversy. letters patent have been sustained, preliminary Injunctions will be against Infringers, as a matter of course, by the court which has adjudged the letters patent valid, and, as a matter of comity, by the federal 'COurts in other circuits."
The motion for the preliminary injunction is. granted.
imOllSON ·. orrIZENS' NAT. BANK OF FA.RGO.
NAT. BANK OF FARGO v. 1'it;OMSON. (QreultOourt of 4PD.eals, Eighth Clreuit. Novemper 14, 1892.)
, Nos. 156, 161.
lettem patent to Walter Tbomso.nfor an improvement inthG"manutaeture bQoks, whereby the short leaves are :p,el1orated 11k, toldqlg in such a manneras to transfer the col'PUll page to thesuceeedlng left-hand page. are vll1i.d, 'as even sktn'edbobkkeepers 1l,ad discovered it, although ilie ll'eVlee Is soEllJjtpleand ob\'l.6\lS, as well¥ useful. that It would .eem'iliat fttsbuuldha'",o always known and .use9. Hollisterv. Manufac:w.rlpsjP9.· 1$ sup. Qt. R.ep. 717, 113 :l:J. S. 59, 72, 2. "'" ',' 4.: I(ew, ,iilid useful Imp,f.Vvement fu the ,manufa(ltnre of, bank aecount terms of the patent laws. b()oRl' 8. SAMil.L;LIo:b:N'81ll,:",NoNTILU811'ERABLB. ' , ; !A. ooputnersblp conductlng a bank Was permitted to use an Improvement in · l;\cCPmtlt books for seven months before application for a patent wastlled' whiCh was, ,done December 31, 1886. The firm was dissolved JanuarY 1,1887, and IlUcceededbya corporation which used the old account bOOk, perhaps other SimUar books, with the patentee's consent, durin, 1887; In 1888, 1889, BJid 1890 it paid a royalty for ,all suchpooks used, .tl\o'Ugb: J,)u.rC,hiuled in' Pll,t;: fromunllcenaed makers. Thereafter It used but paid no royalty. Held, that the implled llcense to the copartllerShlpunder Rev; St. § 4899, wall incapable of assignment or transfer. 8ll;d that the corporation infnnged.
AppeaJsfrom the Circuit Court ,of the United States for the District ' In Equity. BUl by Walter Thomson against the Citizens' National Bank of Fa.rgo, N. D., for infrinb"emen,t of letters patent. The circuit court held the patent valid, but dj,smissed the bill. Complainant appeabJ,his caU$e :being numbered 15G. Defendant also appeals, his cause beingnumbel'ed 167. Reversed, and decree directed for complainant. Statement/by SANBORN, Circuit Judge:
These are cross appeals from a decree dismissing a bm in equlty brought in patent No. 385,048, dated July 3, 1888, and l'elssued dateclpecember 25,1888, for an Improvement in the mlUlufacture of bRnk accOlmt books, against the Citizens' National Bank of Fargo for inftmgement. The patentl:'.d Improvement consisted in constructing ,each of tb.eshort leaves of ballk account books, by so ruling and perforating,ol',creaslng them. that the margins thereof could be conveniently folded back.. upon themselTell, and made thus to disclose a column for the entry of balances ,of account ont11e pages preceding those to w4ich columns belonged, so that when the leaves were unfolded the columIll:l thus disclosed would appear on the pages s\lcceeding those upon which, they appeared when the leaves wale folded." iii' " The state of the art prior to this invention was such that bank account books had long been manUfactured with long and short leaves. On the margin of each left-band page of the open account book, were usually writ· long leaf, on ten the names of those ha\'l.ng accounts with the bank. The remainder of thl8 page and the right-hand page were generally divided by perpendicular lines into sIx spaces, to accommodate the business of the six days of a week, and each of these apacea was again divided by Uke linea into three columns, for