threaten to maKe them since the decision of this court sustaining the Edison patent. Their business seems to have been confined strictly· to their so-called "repairing." Injunction granted.
BALLARD v. McCLUSKEY. (Circuit Court, S. D. New Yor]L L
December 14, 1893.'
Patentable invention Is shown when the combination Is new, and produces a machine which does more and better work than those which preceded it. Invention Is shown In substituting, for the old rubber ejectors in the blank or pattern cutting roll of a box machine, sectional ejector plates which are actuated by springs, have a central support and rocking motion, and are more easily adjilstable, more durable, and superior in operation to the old. A clll.1m; in a box-machine patent, tor "the scoring .roll, S, and the pattern cutting roll, C, the former having a continuous series ot scoring knives, and the latter & corresponding series ot pattern knives arranged upon their peripheries," Is infringed by a machine ·in which the roll is size of tbat of the patent, and has but one which is made to revolve three series. of knives Instead ,of times as fast, thus equalizing the difference In dimensions. A court of equity should scrutinize with great care the statements (l)f a patentee who, having taken the oath that he believed himself to be the tirst Inventor, as required by Rev. St. § 4892, gives testimony inevitably tending to prove that such oath was false. In the Titus patent, No. 272,354, for improvements in machines for cutting box patterns, the first claim held to be too broad, and a disclaimer required.; the other three claims held valid, and infringed by defendant.
In Equity." Bill by Charles W. Ballard against James J. MoCluskeyfor infringement of a patent. Decree for complainant. , For prior report, see 52 Fed. 677. Walter D. Edmonds, for, complainant. James P. Foster, for defendant.
OOXE, District Judge. This is an equity suit for Infringement, founded upon letters patent No. 272,354, granted to James M. Titus, February 13, 1883, for improvements in machines for cutting box patterns. The patent is now owned by the complainant. The invention relates to machines for cutting box patterns from continuous s!:J,eets of veneer which are first scored according to the deand are then passed under a cutting roll which cutli a series of patterns from the scored sheets and !lutomatically removes them by means of ejectors. Although' the scoring of the sheets and the cutting of the patterns may be effected in separate machines the inventor's method is to feed the scored sheets to the cutting roll directly they leave the scoring roll. In this way he saves time and labor and .avoids the difficulty of causing the scored
sheets to register properly with the pattern cutters. T'n.e machine , of the patent consists of three rolls, a bearing roll, a scoring roll and a cutting roll, the latter two being mounted in adjustable bearand geared with the bearing roll which carries the driving-belt pulley. The scoring and cutting rolls may be changed according to the desired pattern. To prevent the pattern from sticking in the recesses formed by the projecting cutting edges, ejectors are provided consisting of plates actuated by coiled springs, or by any other means, and held within the recesses by headed guide pins. The operation of the machine is thus described:
"The bearing roll B being rotated through the medium of Its belt pulley B' from any suitable prime motor or by means of a crank and hand power, the other rolls are rotated, a sheet of veneer Is fed between the bearing roll B and the scoring roll S, that forms the scores of the patterns, and the scored sheet passes from the latter roll directly under the cutting roll C, that cuts out the patterns from the scored sheet, which, as fast as cut, are automaticaJly ejected from the cutting devices by the followers or ejectors E, and from which patterns the boxes are then made, as hereinbefore described. The machine as constructed may be employed for cutting patterns or blanks from pasteboard, cardboard, or analogous material with equally good results."
The resu1t is the production of a blank which can be readily bent into a completed "butter dish." The claims are as follows:
"(I) In a machine for scoring and cutting out patterns for boxes or dishes from veneer or analogous material, the combination, with a scoring roll and a cutting .roll of a single bearing roll, operating to feed the material first to the scoring roll and then to the cutting roll, as described, for the purpose specified. "(2) In a machine of the class described, the combination, with a patterncutting roll having a continuous series of knives arranged upon its periphery to cut two or more patterns successively, of a corresponding series of springactuated ejector plates, arranged in sections, two or more for each pattern, said sections having the form, or nearly so, of the pattern cut, substantially as and for the purpose specified. "(3) In a machine of the class described, the combination, with a scoring roll having a continuous series of knives arranged upon its periphery to score a given pattern, of a cutting roll having a corresponding series of cutters and spring-actuated ejectors, both having the form of the pattern, and a feed and pressure roll, operating to feed the veneer or analogous material directly from the scoring to the cutting roll, whereby the patterns are scored, cut, and ejected from the cutters in continuity, substantially as and for the purpose specified. "(4) The combination, with the scoring roll S and the pattern-cutting roll C, the former having a continuous series of scoring knives and the latter a corresponding series of pattern knives arranged upon their peripheries, as described, of the bearing roll B, operating to feed a continuous sheet of veneer or analogous material first to the scoring roll and then to the patterncutting roll, SUbstantially as and for the purposes specified."
The defenses are invalidity of title, anticipation, lack of invention and noninfringement. That the complainant's machine is an improvement over ;all similar machines which preceded it cannot very well be disputed.. It is more easy of manipu1ation, more accurate in adjustment and operation and more economical in reau1t. Upon the evidence here presented it is able to do more work than any other machine and has practically taken possession of the market. It is, of course, true that many elements of the claims considered v
separately were old and several of them had pr,evhmsly been combined in 'similar machines. This istrlle in almost every instance' where combinations are under consideration. It cannot be questioned that Titus was the :first to construct the machine of the patent. His combination was new, and, though it may not produce a new resultz it certainly produces an old result in a better way. It is not thought necessary to enter upon a discusslon of the question how far invention lies in the various elements which make up the An inventor' should not be so treated. It is unfair. The combination should be considered in its entirety.. If the machine is 'new and does better work than the machines ,which preceded ita strong presumption of patentability is presented. This machine consists of a scoring roll, a cutting roll and. a bearing roll geared together, the cu,tting roll being provided. with spring ejector plates arr3nged in sectio.ns so that the veneer is raised, without injury, from the knives. The three rolls synchronize perfectly.in operation and preserve' exact coinCidence between the score and the cut, the. result being themachineproduqetl more blanks and better blanks than any other. This is enough. Topliff v. Topliff, 145 U. S. 156, 12Sllp. Ot. 825; Gandy 'V. Belting 00., 143 U. 8. 587, 12 Sup. Ot. 598; Krementz v. S. Cottle 00., 148 U. S. 556, 13 Sup. Ot. 719; American Oable Ry. Co. v. Oity of New York, 56 Fed. 149; Loewer v. O. P. FO'l'd & QQ., 55 Fed.· 62. So much for the combination. , Regarding the ejector plates, considered apart from the main combination and as covered by the second claim, there is, it is thought, little difficulty in establishing patentability. It is said truly that rubber ejectors were old and that rubber in many instances is an equivalent for a spring. It is argued, therefore, that there was no invention in substituting the spring ejector for the rubber ejector. It is not always fair to test a patent by a hard and fast rule like this. The improvement of Titus was not merely the substitution of one equivalent for another. The new ejectors are in every way superior to the old. They last longer, they are more easily. adjusted and they do much better work. A skilled mechanic would hardly have hit upon the ingenious idea of making the plates sectional, giving them a central support and imparting to them the rocking or tilting movement so bene:ficial in operation. Surely there was here as much of the inventive faculty as was displayed in putting an elastic rubber back into the rubber packing of stuffing boxes, (Magowan v. Packing 00., 141 U. S. 332, 12 Sup. Ot. 71,) or as was shown in the substitution of vulcanite for gold as abase for artificial teeth, (Smith v. Vulcamte 00., 93 U. S. 486.) The patent is not anticipated by the Indianapolis machines. Imprimis, the principal testimony comes from a somewhat discredited source-James M. Titus. the inventor. To say the least a court of equity should scrutinize with great care the. statements of one who, having taken the oath required by section 4892, Rev. St., gives testimony the unavoidable effect of which is to prove that such oath was false. Even in the case cited in support of this testimony (Greenwood v. Bracher, 1 Fed. 856) the court, in answer to the ques·
tion whether a patentee is estopped from proving tha.t the invention is not novel. said: "I think the answer depends entirely upon the fact whether the party has acted in good faith in the matter." If, however, this testimony came from a perfectly reliable source, it would hardly be sufficiep.t to anticipate any of the claims. It is vague and uncertain. A person skilled in the art would have difficulty in constructing a machine from the description given. None of the machines were produced. Some of them were burned up and sold for old iron.' Others did not work satisfactorily and were abandoned. Thev were all machines for making the staplebound dish and no other. The rolls were not geared together, the scoring roll was made to turn by the veneer passing through and none of the machines were provided with spring ejector plates. It is unnecessary to enter upon a discussion of the Lang, Baldwin, .Jaeger, Percival, Fry and Waste patents further than to say that they have all been examined and no anticipation found. It is plain that the Percival ejectors operate upon a very different principle from the Titus ejectors. As to infringement. There seems to be no dispute that the defendant, at Frankford,Del., operated several machines precisely similar to the patented machine, except that the scoring roll was one third the size of the patented'roll and scored but one blank at each revolution; but as it was made to turn three times as fast the difference in dimension was equalized. Instead of using three series of knives the defendant uses one series three times. The function is the same. The result is the same. It is probable that when the patentee prepared his specification and used the words "a continuous series of knives" he did not have in mind the small scoring roll of the infringing machine, but it is plain what he meant. He intended that the scoring roll should be provided with knives which should feed a series of scores to the corresponding series of cutting knives on the cutting roll. There was nothing in the art requiring him to limit the patent to a scoring roll of the exact size of the cutting roll and a construction so limiting it would be harsh and illiberal. The court should not seek to destroy a patent by consi-ruction, but, rather, to uphold it. Machinery Co. v. Sharp, 54 Fed. 712. The patent describes a valuable combination to which the owner of the patent is entitled, even though the patentee may have attempted to claim too much and may have used loose and inartistic language in description and claims. The complainant insists that all of the claims are infringed. and as the defendant attacks each claim separately it is necessary to examine them with some care. The complainant's expert witness says:
"The fourth claim of the patent Is substantially similar to the first, with the simple exception that the scoring-roll element, the pattern cutting roll element. and the bearing roll are lettered to correspond with the lettering of the drawings of the patent for similar parts."
If this be so, and I think it is, it is plain that here are two claims for the same combination. The first claim must be limited to the elements c;lescribed as the distinguishing features of the patented
machine. If broadly construed to co"\ter three rolls geared together it is void in new of the Baldwin and other patents. If limited to cover only th'e improvements of Titus it is the same' as the fourth claim. The first claim is too broad, and, under the arbitrary and, to my mind, unjust rule which obtains in this circuit, must be disclaimed. 'rhe fourth claim is clearly infringed, but it also may be too broad. In new, however, of the rule referred to, the doubt, if there be one. should be, resolved in favor of the patent. No possible injury can result to the defendant from a decision which permits the appellate court to pass upon this question. The other claims are clearly restricted to the precise advancement made by Titus and are infringed. It is thought that a sufficient prima facie title has been established and that the action is maintainable in the southern district of New York. It follows that, on filing a disclaimer of the first claim, the complainant is entitled to the usual decree upon the other claims, but without costs.
MEYER v. DR. B. L. BULL VEGETABLE MEDICINE CO. (Oircult Court of Appeals, Sev61)th Circuit. No. 6.
November 6, 1893.)
Where complainant has established a trade in a cough mixture known as "Bull's Cough Syrup" and "Dr. Bull's Cough Syrup," and defendant has placed on the market, with the fraudulent purpose of causing it to be mistake;n for complainant's article, a cough mixture inclosed in wrappers similar to those used by complainant, and designated as "Dr. B. L. Bull's Celebrated Cough Syrup," complainant is entitled to an injunction restraining defendant not only ,from using such name on such wrappers, but also from using such name on any kind of wrappers in a manner calculated to deceive the public.
Appeal from the Circuit Court of the United States for the Eastern District of Wisconsin. In Equity. Bill by Adolph Carl Meyer against the Dr. B. L. Bull Vegetable Medicine Company to enjoin the use of certain trademarks and trade-names. and for an accounting. There was a decree for the complainant, but the decree was not as broad as the prayer of the bill. Complainant appeals. Modified. Statement by WOODS, Circuit Judge:
The appellant asks us to extend the scope of the decree granted him by the circuit court. The nature of the action is sufficiently shown by the decree entered, whereby it was found and adjudged as follows: "(1) That since about the year 1855 the complainant and his prel\ecessors in business have been engaged in the manufacture and sale of a certain remedy of the nature of a cough syrup, which remedy has been put up, and is now put up, in packages of a characteristic form and appearance, the said characteristic form and appearance consisting essentially in the fact that the paokage has been inclosed in a white wrapper, printed in black, like that to the interlocutory decree herein attached, marked 'Complainant's Wrapper.' "(2) That the complainant's said remedy, in the next preceding paragraph mentioned, was put upon the market by complainant's predecessors and introduced and popularized at great expense under the names of and as 'Bull's