co, v, ..MARTIN.
(Circuit· 'Court, D. :Massllcbusetts. ' May 28, 1894.) No. 2,644.
,.The assignor of a patent is, not estopped by his assignment from llmlting If.sscoR,e by reference td the prior state of the art; nor Is he so estopped by having marked on articles made by him for the market the dates of the patent, and of all patents controlled by him for such devices, even if such mliJ'king amounts, to a representation that the articles are covered by all the patents. TbeMartin patent, No. 255,525, claiming, in an, automatic cash-box system, the track, endless cord, cash box, and applianCes described for attaching and automatically detachh:l,g said box, and. a suitable motor, when construed with reference to prior, ,structures, particula,rly that dellcribed in the English pllterit No, 377 Q:I;1878, to WiI:th, does not cover all machines having a, box .carried on a' track, an endless cord operated by a, motor, and devices for I;l ttaching' and automatically detaching the box, but covers only the combination of track, car, cord, and motor, and the 4.e..V'i.C.e '. for attaching an.d au.tomatically .d,e.taching .the car, and is theref6re not infringed by theapparatlls in the Martin patent No. 3119,150, which has a device, tor making the attachment and automatic detachment ' , '
STA1'E OF ,ART-INFRUWEMEN1" ·
was a suit by the Martin .& Hill Cash-Carrier Company against ,Joseph C. Martin for infringement of a patent. M:;B, Philipp, E. C. GUtnan, and J.,S. Rusk, for complainant. FisJit,;'Richardson & Storrow andI[erbert L. Harding, for defendant.
OARPENTER, District'Judge.This is a bill in equity to restrain: '8iD. ·alleged infringement of the first claim of letters patent No. issued 28" 1882,,;to the respondent, Joseph C. Martm, for automatIc cash-box SYS,\, lll. The respondent has asSigned".the, patent t.Q t.lle complainant, and. is thus estopped to. deny v,aHqity of the patent. The complainant here contends that he estopped .from limiting the scope of the patent by reference .to' the prior. state of .. art. I shall not discuss this than to say agree with the argument of tJle. complainant, because' it 'seems to me that the repre· s("lltati0n,; in),plied b,y the in. a' is only. a representation that the thing 1i\old is an and'\Talid right as the letters purport to grant, and that the nature and of the thing granted may beascertajl).ed by reference to existing structures which presUUled tqb,e equally. well known' 00 both parties, and so to have entered 'eq1,1ally Into We. of both,·' as they looked at the subject-matter of their contract, and estimated its value for purposes of sale and,pp.rcbase respectively. thl;\t the. reEfpondent is estopped The complainant' from citing the 'prior state of the art ; because, on apparatus made by him or under his direction for the market, he has caused to be marked the date of the patent here in suit, such apparatus differing from that shown in the patent in particulars of the same sort and rank of importance as those in which the alleged infrin-
MARTIN &; HILL CASH-CARRIER CO. ti. MARTIN.
ging device differs from the device shown· in the drawings and specification of the patent. To this argument the sufficient answer seems to me to be that he marked on the apparatus the dates also of several subsequent patents issued to him for improvements. and in fact of all the patents which he controlled on devices of this sort. I do not think that this proceeding amounts to a representation that the apparatus on which the marks are put would be, if made by an unauthorized person, an infringement on all the patents so indicated, still less on all the claims of all those patents, but only to a representation that such an apparatus might be an infringement on some part of any or all such patents. The dates are put on to protect against any possible claim that the patented article had been sold unmarked, and not to set up a claim as to the extent of the protection afforded by the patents; and, even if it were otherwise, the assertion that all the claims of all the patents cover the device so marked could be taken to be nothing more than a statement of the opinion that, on the facts known to the world, the claims must as a matter of law be so construed. I take it to be still the rule, in general, that a representation incorrect in point of law may not be the basis of an estoppel. The defense is put on the ground that the respondent does not infringe--First, if the patent be read without reference to the state of the art; and, secondly and more especially, if it be properly construed by reference to pre-existing structures and descriptions. On the first point, I am not clear, and therefore do not announce any conclusion. It is difficult to say what would be the construction put on the patent by one who is ignorant of the facts dis· closed by the history-of the art of constructing cash carriers. The claim under which the bill is drawn is as follows:
(1) In an automatic cash-box system. the track. b. the endless cord, 0, the cash box. v, and appliances. substantially as described. for attaching said box to said endless cord, and for automatically detaching said box therefrom, and a suitable motor to give a motion to said cord, aU combined and operating substantially as set forth.
The complainant argues that this claim covers all machines which have a box carried on a track, an endless cord operated by a motor, a device for attaching the box to the cord, and a device for automatically detaching the same. In this view it is undoubt· edly infringed by the device used by the respondent, which is that represented in letters patent No. 399,150, issued March 5, 1889, to the respondent. The box, the track, the cord, and the motor are the same. The attachment in the patent in suit is made by lifting the spring cover by hand, and in the respondent's device by turning the rock shaft by hand, or by pushing the box forward by hand, so that the rock shaft will be engaged with a cam, and so be turned as before; and the automatic detachment is effected in the patent by two curved guides, between wliich the cord-clamp lever and the thumb piece run, and are thus made to approach each other, and in the respondent's device by a. cam which engages the end of the rock shaft. v.62F.noA-18
the prior sttocturesare examIned, it seems, tp me tbat,tbe:c1aim cannot be ,construed so broadly as is 'above indicated. :::Not tQ:refel' particularly to .I>ther earlier devices which seem to ,metodhrow much light on the question, I speak only of one ref· which the parties were fully heard at the argument. The English patent to Frank Wirth, 1878, 29th January, No. 37Q;rseems tome clearly to anticipate this claim if it be construedS9 bvoadly as the. complainant desires. There is the track, the car .or,'box, the endless cord and motor, the means for attaching, .byhand, the car to the moving cord, and the device-as in the otherea:ses, a cam or. ,wedge-for automatically detaching the . car from the cord. The differences are as follows: In the first place, the car is. suspended below the track, and not carried above the tn,-ek: 4S- in the patent. But in both cases it is carried and supported .' iby the track. The load is not readily removed from the car ofr;Wicth, except'by:.:tipping thecal', or by'a gate in the bottom orsjdes; .and theea!' is not easily carried up an inclined track, because the car might by,its weight raise one carrying wheel from the track,!ftndsodisorgaJiize the mechanism. To adapt the Wirth mechllnlS\lill to the:mddlified function thus suggested would not, as it seems to me, require the formation of a new system or class 01' supq}a$s of apparatus.' · calls only for an apparatus containing It' tlJ,e .WiJJtb; ,pl'incipleaIid performing the Wirth function with eel'· tain aqdfld functione,' which perhaps themsel+es may be.the basie ofa. v,Udclaim ·for: anlinvention.To illustrate this, if it were i,toobtaintho$2dresults which can be reached only with the car above the trackwthere must be added another track, or, what; leP the same thing;' the track must be widened, and a ·\!llot made in .the middle fori the gripappllratus, and the grip apparatus must be reversed in position so as to ,reach the cord below. These are, ,I. thin;, ,only changes, made necessary by and involved.in the reriJ,ovarof the car from a position below toa posi. tion above the track. rr'o look at the ql1estionin the other it SeeIl1B'to:Die that, ir the complainant's con!!ltruction be allowed, he who should construct an apparatus after the drawings of Wirth couldnQt diat'ge of' infringement by'showing that his car is suspended below rather than placed on the track. The $OOQnd.: difference· between the patent in suit and the pat· ent to .Wirth is in the. attaching and detaching mechanism. In neither. is 'the attaching mechanism strictly automatic. In the patent stops the carat the point where the grip is:d#3tached, and,. being removed by hand; the car is again attached, and proceeas'on a new journey. In the Wirth device the car pl'ol:.eeds by inertia after it is detached,. and the detaching device perfOl'lIlS no further function. In this particular, the apparatus ,of: the .respondent follows the Wirth device, rather than the device of the patent. ' I think., patent must be construed to cover the combination of track,.ear,· cord, and motor, and a device for attaching and automaticaUy,detachingthe car. I make, therefore, four elements,the first two being simple elements, the third having one subsidiary
SAMPSON V. DONALDSON.
element, and the fourth 'being a 'compound element. The device of the respondent, as I read the patent, does not contain the fourth element, and so does not infringe. The bill must therefore be dismissed, with costs.
SAMPSON v. DONALDSON et al. '(Circuit Court, D. J\Iinnesota, Fourth Division. June 13, 1894.)
PATENTS-LuUTATION BY PRIOR STATE OF ART-VALVE-RESEATING TOOLS.
In the Wright patent,' No. 400,989, for an improvement in valve-seat dressing tools, claim 1, for the combination, with a revoluble shaft, of a ,tile connected to its lower end, of a size to cover at one time only part of the surface to be dressed, Whereby the lile is rendered self-clearing, must be liII11ted, in view of the prior state of the art, to the oblong form of cutter or file shown and dese,rilled, although the description covers a cutter of any form having a broken periphery, and states that the material point is that the file surfaces be not continuous; and hence the claim is not infringed by machines made under the Morse patents, Nos. 429,939 and 456,704, having cuttels or files of different design.
This was, a suit by Sampson against Donaldson and others for infringement of a patent. P. H. Gunckel, for complainant. Paul & Hawley (A. C. Paul, of counsel), for defendants. NELSON, District Judge. Suit is brought against the defendants for an alleged infringement of letters patent No. 400,989, granted upon the application of Pliny J. Wright, dated April 9, 1889. lt is admitted that the title of complainant is as alleged in the bill, and also that the defendants' machine is the Morse valvethe Leavitt Machine, Company, reseating machine, of Orange, Mass., under patents issued to Charles L. Morse, No. 429,939, dated June 10,189'0, and No. 45U,704, dated July 28, 1891. The defenses relied upon are invalidity of patent, want ,of novelty, and noninfl'ingement. The invention relates to devices adapted to be used in a suitable machine for leveling and retruing the seats of steam and other valves without removing the valve bodies from their posi' tions, and in the specification it is stated:
"My invention relates to valve-seat dressing tools, and is in the nature of an improvement on the construction shown in the patent granted to myself and Samuel Rust of date May 29, 1883, under No. 278,478. In my former patent I used a disk-shaped cutter on the end of a revolUble tool shaft, and a guide below the tool, adapted to fit the opening in the valve seat for the purpose of centering the cutter. In practice, however, I found that this construction was imperfect. I found that the guide in the valve-seat· opening could not be relied on to hold the tool shaft at right angles to the valve seat, and therefore a true surface could not be pl'Oduced. I found that the disk cutter would not clear itself of the filings. I also found it impracticable to get sufficient pressure on the tool without throwing it off its center. My present invention was designed to overcome these defects, and it consists of the ccmstruction hereinafter described, and particularly pointed out in the claims. "E is a cutter head or bearing disk on the lower end of said shaft, formed integral therewith. The lower end of the tool stem is proVided with a screwthreR4ed the line of its axis. F is the cutter, provided with a 5lmall