sented hereafter. The attention of the counsel is' called to the recent Dunlap v. S,chofteld,14' aup. Ot. 576. It folloW'$ .that the complainant is entitled toa decree for an accounting upon claims 2 and 3 of No. 265,311, and for an injnnction and anlilte9unting upon claim 2 257,277, and claims 4: and 6 of No. 293,552, but without costs.
TATUM et aL v. EBY. , '
(Ol1'cuIt Oourt, N.· D.' California. January 29, 1894."
PATENTS FOR INvENTIONS-GANG EDGERS-INFRINGEMENT.
Patents Nos. 227,926 and 290,358, ,itor'gang edgers, granted to J. :A:. Robi>,hElld valid. and Infringed by defendant. Tatum v Gregory. 41 Fed. 142, 446, followed:. ' .'. ' .'
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In plea'dlng prior knowledge and 11Se under section 4fj20, Rev. St., Il8 anticipa,tor:y a patent, 'tb,e, ()t the person!J by whom, as well, 118 , the place 'Where, the prior USe was had, must be given; and the allega,. 110n that the prior machine was built by a person named'is not an allegation ot, Ujle by "
The defense ,of prior k'noWle!;lge anti use, as an11clpatoryot a patent, , III not 'lliil.deGut,unless 'the' 'fa<!totsueh prior knowledge and use, and f : also the identity of the prior devJce,witll the patented sttuct\l:re are proved 1)eyon4 a reasonable
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'In Equity. Suit by Henry L. Tat1tm and others against John D. Ebr for infringement ofletterspatent No. 290;358,: J. A. Robb, Decetnber 18, 1883, for a gang edger. Decree for complainants.': '.
'Suit on two letters patent torfmprovements In gang 4'dgers, granted to J. A. Robb, and" assigned tocompiainilIltB, numbered 221,926 and 290,358, and dated, respectivelY,May 25; 1880, and December'IS: 1883. The defendant Is the Pacific coast 'agent 'of the Stearns Manufacturing Company, ot Erie, Pa., and' sellS, on the, PaCific cOast, edgers made by the Stearns Company at Erie,Pa.The defense Interp6sed to the first pa1:entis alleged an· ticipation by '8. prior edger made and 8,oldby the said 'Steams Company, and referred to In the opinion as thE! "Stearns Edger." That edger was on sal& several years prior to the issuance of Robb's patents, but it proved unsatLsfactory, and waswlthdrawIl' from the market, the present 'infringing edA'el' being subetituted In its stead. The defense interposed to the second patent -is alleged anticipation by a pl'ior edgGr made by James Brett· and Bethun& Perry, and claimed to have been used at the Whitesboro Mlll, In county, Cal., and referred to in'" the opinion as the "Whitesboro Edger." , . . " ,". ':i
Estee & Miller, for John L. Boone, fpr respondent. . CirCUit Judge. This is,an action for; an infringement of patents for a machine called a "gall.gedger." Thes.e patents were passed on 'and, sustained pymy learned, predecessor, Judge Sawyer, in the case of TlltuUl v.Gregory,.lFed. 143, and sub!3equently by myself in thesamecase,,5:L Fed. 446. In the "'ame defenses· were made as in, this, except as to the effect,olt4e edger called the "Whitesboro As to the
TATUM tI. EBY.
Stern edger,which is urged earnestlr as preceding the Robb patent, under which plaintiffs claim, and as negativing its novelty, Judge Sawyer said, "I do not think that Stearns' patent * * * affords any ground for limiting the construction of the patent in such manner as to avoid infringement." After careful examination and consideration(lf the evidence, I have come to the same conclusion, and also think the defendant's edger is an infringement of plaintiffs'. . As to the Whitesboro edger, the testimony shows that it was built some time in the fall of 1880, more than two years before the Robb edger was invented. The witnesses do not agree as to the month, but, allowing for all differences, its building is established mOl'e than two years before the Robb invention; but it was not put into use until some months afterwards, and plaintiffs contend it is use, not making, which constitutes anticipation, and that the evidence leaves a reasonable doubt as to whether its use was before Robb's invention. The invention may have been as early as February, 1881,-certainly in June, 1881. Assuming the latter date, I think the testimony fails to establish, beyond a reasonable doubt, that that machine was used two years prior to the invention. There is some conflict in the authorities as to whether there must be use of a machine two years before the invention of the patented device, or whether knowledge alone is sufficient,-knowledge, of course, of the character, as well as of the existence, of the machine. That both knowledge and use are necessary is not strenuously contended against by counsel for respondent, and I have adopted that view, . notwithstanding I have already said there are authorities to the contrary, and goOd reasoning to the contrary. Assuming a prior use to be necessary, it is questionable if it is sufficiently pleaded. The allegation of the answer is-,
"That, in the year 1880, the said parties, James Brett and Bethune Perry, built a second gang edger, in. all essential particulars like the gang edger described and claimed in complainants' alleged letters patent, Exhibit B, and that said gang edger was used in the year 1880, and for many years thereafter, in the Whitesboro mill, near Whitesboro, in Mendocino county, California; that said gang edger, which was used in said Whitesboro mill, is now in the possession or the defendant herein, at his place of business, Nos. 29-31 Spear street, in San Francisco, California, and is ready to be produced in eourt."
The place where used is alleged; by whom used is not alleged. The allegation that it was built by James Brett and Bethune Perry is not an allegation of use by them. Passing by the technical defenses, and comparing the patented device with the Whitesboro edger, there appears substantial difference between them. At any rate, their identity is not established beyond a reasonable doubt. Decree for plaintiffs.
CO. FeRruary 5, 1894.)
CITY :' i": (elrcult Court of
Inventi,op.,tn ll\Im,ply piaoing the of ,aUway upon a "djImmt'car, .and attaching tlie Itttertd one of the'Cari7lngc8is."55 Fed. 760; reversed.
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ThlVlIhlli4ie ipatent, : No.:'!1.82,668, "for 'an Improvement in street" cable raU,wllfts., is void otiIJrention. , po Fed.7M, reversed.
AppeaIfi'Q1n tl:l;e o(theUnitedStates 'for the District of Montana. , r . , . 'I" .' .In Equity.; Bill1;>y the' Pacific Cable Railway 'Company against the Bqtte City Company for infringement ()f, letters pa,tent gtanttW. Septe#!Yer26i'1876, to Andrew J. Hallidie, .for. cable railWays. The patent was sustained'byflIecourt declaved. 55 Fed. 760. " DefeJ;1dantappeals." · :.., WarreriQJney, (Geo. n;;:kriight, on:the brief,) for aiJpellant. Befol'eMcKJDNNA and: GILBERT, Circuit Judges, and ROSS, DistrictJudge. McKENNA, Circuit Judge. This: is an action for an infringelll.,ent ;of an imIlJ,'ovement.IJl:street cable issued ,to Andrew.'.)'. :Itaijidie, 1876, and. assigned to appellee. The patent the "invention relateS, to_ that class in propelled along the track by means of an, endlessropeoi' chain;'" but such railroads are now very familiar, and'need M long descriptiOn. The inventor says:
The in the court below) urges, among other defenses,that the patent is ,,:oid want of invention, and that it t1'il:\siMenaitticlpated. of the patent consists solely of placing the gripping device on a "dummy" car, and attaching the latter to one of the carrying cars. Tn 'View of the state of the art, as disclosed by the evidence and in common kuowledge, we do not think this involved invention. Judgment and decree reversed, and cause remanded, with directions to dismiss the bill.