UNITED STATES STAMPING
for infringement, againstJewett & Sons, in the northern district of New York, it has been, decided by Judge Wallace that the decision in the N!3w Jersey case cannot avail Jewett & Sons as a plea of res adjud'icata or estoppel. That decision must control on that question, at this stage of this case. The questions on which this motion turns are questions of law as to the construction of the Heath specification and ail to the patentability of the invention. There is no disputed question of fact to be elucidated by the taking of plenary proof for final hearing. , The technical point is made that the only infringement shown is the sale by the defendants of two cuspidors prior to the assignment of the patent to the plaintiff. This is so. But the case has been argued, on the part of the defendants, on the assumption that such sale took place after the assignment to the plaintiff, which was March 4, 1879, and the date of the jurat to the bill, which was March 5 1879, and on the assumption that the defendants have continued to sell the infringing cuspidors. I have examined this case with care, and the more because of the views expressed by my brother Nixon, and have arrived at the undoubting conviction that the plaintiff is entitled to an injunction. It is, therefore, granted.
UNITED STATES STAMPING Co.
JEWETT, President, eto.
(Oircuit Oowrt, N. D. New York. November 29,1880.)
1. PATENT No. 119,705-L'usPIDORS-VALIDITY-INFRINGEMENT. Letters patent No. 119,705, granted October 10, 1871, to Eugene A. Heath, for a metallic cuspidor in form essentially a spheroidal body, with conical mouth flaring outwards, formed of three metallic parts, the lower being heavier, and the middle and upper being lighter, than in then-existing devices, the lower part extending up to the longest diameter of the spheriod, the middle part of a dome shape, and joined to the upper and lower parts, the upper part being an inverted cone, forming a mouth, the whole not being liable to fracture, and having the capacity of returning to an upright position of itself, from a position not upright, when left free, held fJalid and inj"ringea.
The assignment of the interest in an invention prior to the issue of a patent therefor, vests in the assignee the legal title to the property created thereby, upon recording the assignment thereof in the patent office, even though the patent may be issued to the patentee or assignor.
Frederic H. Betts, for plaintiff. Charles F. Blake, for· defendant. BLATCHFORD, C. J. This suit is brought for the alleged infringement by John C. Jewett & Sons, a joint stock association, of letters patent No. 119,705, granted to Eugene .Heath, October 10, 1871, for an improvement in cuspidors. The patent was held to be valid by the decision of this court in the case of the same plaintiff against King, in August, 1879. In a prior suit in the circuit court for New Jersey it had been held by JUdge Nixon to be invalid. That suit was brought by Linn Ingersoll, the then owner of the patent, against Mary Turner and William Turner, for infringement. In that suit it was held that the Heath invention was anticipated by an invention made by William H. Topham, and for which he obtained a patent August 2, 1870. The date of the Heath invention was not carried back, in that suit, prior to the date of the Heath patent; but in the King suit, in this court, it was shown that Heath applied for his patent before Topham made his invention. Various other defences were set up in the King case, and were overruled. In the present case some defences are brought forward which were not made in the King case, or in the Turner case. The principal new defence is the alleged prior invention of the same thing by Charles T. Weber, in Chicago. Before considering the date of theWeber invention it is necessary to fix the date of the Heath invention. In the King case the Heath invention was defined to be a metallic cuspidor, in form essentially a spheroidal body, with a conical mouth flaring outwards, formed of three metallic parts, the lower part being heavier than in ordinary, then-existing cuspidors, and extending up to the longest diameter of thespheroid,-the middle part and the upper part being lighter than in then-
UNITED STATES STAMPING 00. V. JEWETT.
existing cuspidors; the middle part being of a dome shape,. and being joined below to the lower and the upper part, and the upper part being an inverted cone in shape, flaring outwards and forming a mouth; the whole structure not being liable to fracture, and having the capacity of returning to an upright position, of itself, from a position not upright, when left free. ' Heath testifies that he made his invention in the fall of 1869. What he meant by this is shown by the testimony of his brother, who says that in the early fall of 1869 Heath spoke to him about a metallic loaded cuspidor, to be made in three pieces, joined at the neck and at the swell, as to how it would sell, and showed him a drawing of the shape of it on paper. He experimented thereafter as to the shape and the mode of putting the pieces together with a'view to of construction. In the fall of 1869, or in the spring or summer of 1870, he made a cuspidor' of different pieces of tin wrought up by hand, with a piece of lead soldered on the inside of the bottom, to make the structure self-righting. This one seems to have been made of three parts, joined at the greatest and the least diameter, although each part consisted of more than one piece of tin. During the year 1870 he made a large number of these tin cuspidors experimentally, with a view of arriving at the cheapest manner of get. ting the desired shape from the smallest number of pieces of sheet metal. Sometime in the summer or fall of 1870 he made a loaded cuspidor of three pieces of metal, joined at the greatest and the least diameter, on a Grimshaw press, which he procured in July, 1870. This was without any vertical seams, ood was substantially the patented structure. It took about a year after that to get the necessary machinery to make the articles for the market. The patent was applied for June 3, 1871, and the first cuspidors sold were delivered June 8, 1871. On this evidence, the date of the Heath invention is properly to be taken as the fall of t869, or early in 1870. After conceiving the idea of the shape of the struc ;ure, and the making it of metal with seams at the greate t and the least diameter, he exercised reasonable dili-
genee in embodying bis ideas in a structure, and in perfecting itso8S to make it of the fewest possible number of pieces and get rid of vertical seams, and enable it to be made cheaply by machinery. The evidence on the part of the defendant, as to the Weber structure, is very voluminous. I have examined it with great care, and the result is that r am not satisfied from it that the defendant has fulfilled the necessary obligation of showing, beyond any reasonable doubt, that Weber was prior to Heath. In all the testimony for the defendant there is not the fixing of a date, for the' Weber invention, by evidence of such a character as makes it impossible that such date should not have been earlier than the date of Heath's invention. The defendant's witnesses testify from abstract memory of dates, or from some associations in their minds, which, on being tested, prove unsubstantial, and not to be relied on. It would occupy too much space to discuss the evidence in Some of the salient features will be adverted to. Weber, the alleged prior inventor, was an employe in the establishment of Creror, Adams & Co., of Chicago, at the time. Mr. J. McGregor Adams, of that firm, was the person who first brought before the court, by an affidavit made by himself, this structure of Weber. The evidence taken as to this structure was taken in conseq'lence of statements made in this affidavit of Mr. Adams. It now turns out that the statements hazarded from memory in this affidavit of Mr. Adams were very largely erroneous. They placed events earlier than they turned out to be on investigation. They did so as to the time when the firm of Creror, Adams & Co. was formed, as to the time when the Chicago Railway Lantern Company succeeded it, and as to the time when Weber left his employ. They were erroneous as to the fact of the making of self-righting spittoons by his firm prior to the making of the cuspidor in question j as to the fact of the purchasing of self-righting cuspidors from his firm by the Pullman Palace Car Company, the Chicago & Northwestern Railroad Company, and Mason & Co. j and as to the witnesses who would corroborate his statement as to the prior invention by
UNITED STATES STAlalPING CO.
Weber. These circumstances are alluded to as evincing a tendency on the part of Mr. Adams, honest and sincere though it may be, to remember things which did not occur, and to place events which did occur at an earlier date than they actually occurred. Such a habit of mind, in the presence of the affidavit made by him; and of the fact that he took an active and. zealous part in the procuring of the witnesses who testifieq for the defendant; and of the fact that many of such witnesses were or had been his employes; and of the fact that they, ati,d others of the witnesses, were in a position na,turallyto respond to influence upon their memories in a direction consonant with Ilis own memory, in a matter which for them had no inter. est, but for him had an interest to be meas)lred by the positiveness of his assertions in his affidavit,-suoh a, habit of mind is to be taken into oonsideration when weighing his pwn evidence, and that of suoh other witnesses, as to the date of the Weber struoture. The testimony of Mr. Adams to the, sale of the Weber ouspidors to anybody is entirely vague and unreliable. It is not supported by or evidenoe, or by· any testimony from the alleged purohasers. His dates of events, in his testimony, are shown to be as unreliable as his dates in his affidavit. As to one of the Weber ouspidors whioh :Mr. Adams ·had in his house, given to hjm by Weber, Mr. Adams states,in his testimony, that he had it in his family as early as 1868,-probably, he says, the first of January, 1868,-and that it was a New Year's present to aid in furnishing a new library, oompleted in 1867. Mrs. Adams, his wife, testifies that this Weber cuspidor was brought to her house in 1867 or 1868, after the library was oompleted, and two years oertainly before she w:ent to Europe, which was July 12, 1870; that she oonneoted it with another gift whioh was reoeived about the same timea fire-screen-given by Mr. John Dow, the screen being a outglass one, in which the cuspidor was refleoted; that the cuspidor was also refleoted in a mirror and in the windows of a book-case; and that, the room appearing to be full of cuspidors, the artiole was sent into the attic. Miss King, Mrs. Adams' daughter, who lived in Mr. Adams' family from 186l>
to 1870, S9.ys that she saw the Weber cuspidor there between 1868 and 1870, in the library, where the glass screen presented by Mr. Dow was at the time. Mr. Dow testifies that he gave the glass screen to Mrs. Adams at Christmas of 1868. On cross-examination he was asked what made him sure of that date, and he said, "collateral evidence,"-the collIiteral evidence that the family went abroad in May, 1869, and remained away over a year, and it could not have been Christmas of 1869. Now, it clearly appears that the Adams family went abroad in July, 1870; so the screen must have been given at Christmas of 1869, and the cuspidor appeared in the house after the screen did. Mr. Dow attempts to fix another date by association. He says that in November, 1869, he took rooms at the Tremont House, in Chicago, and put one of the Weber cuspidors into them. On cross-examination, he says that he first went to the Tremont House to live while Mr. Adams was abroad. Then, when he finds that Mr. Adams was not abroad in November, says that Mr. Adams was not abroad when he was living at the Tremont House. Such testimony proves nothing. The two young Webers give no reliable data for firing a date earlier than He'ath's invention. The older Weber is very confused as to dates, and gives nothing reliable; and his recollection that he made the cuspidors six months before the flower-stand was :made would carry the date of the cuspidors back to 1866-an impossible date all the evidence. Muller giV'es no adequate reason for any As to the cuspidors said to date he fixes, nor does have been put into the Chicago & Alton pay car, and the two put into Nolton's house, there is nothing in the testimony of Rice or'Nolton; or Mrs. Nolton, or Corning which gives a reliable date earlier than that of Heath. The plaintiff gives reliable evidence from the railroad books that the pay car euspidors were not earlier than June, 1871. Heinze g!ves no adequate reas'on for the date of 1868, nor does Broderick. Shay does not aid the defendant's case. Frost's reason for assigning-a date before May, 1869, failed on his' cross-exam;ination. Gray, Westlake, and Covert furnished nothing
UNITED STATE STAMPING 00. V. JEWETT.
factory. Not a Weber cuspidor shown to have been made before the Chicago fire of 1871 is produced. The Nolton CUBpidor is not one. The alleged prior invention of Musgr,ove was held, in 'the King case, to have been an abandoned experiment, and it· was not a loaded cuspidor. Musgrove himself took a license under the Heath patent. He did not, when sued, set up what suggestion by the dehe did as any prior invention. that all Heath did was to put Topham's weight into Musgrove's structure, is based on the fact that it is now shown that Topham made his papie'1' mache loaded spittoon in the summer of 1869. But Musgrove's structure never became, in his hands, a perfected structure. The reasons why Heath's invention is to be regarded as patentable, notwithstanding all that was done before by Topham and all others in the way of perfected inventions, were fully set forth in the decision of this court in the King suit. Another defence urged in this case is that as Ingersoll sued the Turners, and the Turners set up the Topham patent as prior, and had a license under it, and succeeded in the suit, and Jewett & Sons now have a license under the Topham patent, the plaintiff cannot prevail in this suit, on the ground ,that it is bound in the decree in the Turner suit, because Topham was privy to the Turners. This view is based on the &llegation that Topham was really the defendant in the Turner suit, and that Topham, and, through him, Jewett & Sons, in' this suit, would have been bound by the decree in the Turner suit,' if the decree therein had been for not, in a the plaintiff. But it is veTy clear that legal sense, a party or a privy in the Turner suit. Topham's license to the Turners contained no obligation on his part to indemnify them, or,to defend suits against them. He afterwards volunteered to pay the expense of defending them in the Ingersoll suit, and did pay it. He was not, and did not, become in any way responsible for any recovery against them in that suit. Clearly, under such circumstances, a decree against the Turners in that suit would not have availed to prevent Jewett & Sons from setting up this suit a defence
patent. That being so, a; contrary decree in the Turner suit cannot avail Jewett & Sons as against the plaintiff in respect to the Topham matters. These remarks are made on the assumption that something more could be looked into in the Turner suit than what· appears in the decree, namely, the simple dismissal of the bill. But no decision is made as to whether such assumption is well founded or not, or as to whether, if anything except such dismissal could be looked at, the suit could be regarded as involving any question as to the validity of the Topham patent, or any other question than the prior existence, in what Topham did, of what Heath did, or as to whether a pate;ntee who has failed to recov,er against one alleged infri,nger,. could. be thereby barred from recovering against l:\.nqthElr; under any circumstances.. of Heat4, wal'l. filed June 3, 18,71. The patent was issued to him October JO, 1871. On the twenof, July, 1871, he executed and Spilth Manufacturing Company, which assignwas '»otrecorde<i in the patent-office until the eighteenth of 1871. The plaintiff the title conveyed by that and it is that title which is !'let up in the assignment the; making of the invention, bill. a,p.dof, the application for the ,and its allowance. It said compaIlyhada,greed "to purchase from me apthe right, title, and interest which I have or may have in and to the said invention in consequence of the grant of letters patent therefor." The "said invention" had before been named in the assignment as an "invention" in "metallic cuspidors." In the p'etition for the patent the invention is spoken of as an improvement in "metallic cuspidors." The assignment then transfers to the compan)' "the full and exclusive right to all the improvements made by me, as fully set forth and described in the specification which I have prepared and executed preparatory to the obtaining of letters patent therefor." It also says: "I do hereby authorize and request the commissioner of patents to issue said letters pa.tent to the said the Heath & Smith Manufacturing Com-
1:Jased onJhe Topham invention and
pany, as the assignee offuy whole right and'title the sole use and behoof 'ofthe said the Heath & Smith Manufacturing Company, and their legal representatives." On the twenty-seventh of May, 1872, Heath executed and deliv,ered to one James P. Decker an assignment, which was recorded, in the patent-office JUDe 1, 1872. It recites the lssuin'g of the patent, the execution by Heath of the said }laper of July 20, 1871, and its receiving; alleges that it was obtained from him "by false representations, and without anyconsideratiori," and declares it void; and then conveys to Decker "all the right,title, and. interest which I hMe in the said invention as secured to me by said letters patent; the :same to be held and enjoyed the said James'P.Deckerfor his own use and hehoof;' an<P £Qt' the use and behoof of his legal -representatives, to the 'fun end of the term for which letters fully and entirely as the -samew'ould have beeriheId'atid'enjoyed by me if this assignmentand sale had not beeriiniltffe;'" , ':'The defendant conie:ddsthatthelanguageof the paper'of July 20,18'7'1, does riotcorivey'the'qegal title to the patent, but 'only, seeks 'to taklHidvaritag13 of th:e provisioi(o'fls'ection 33 of the act of JulY 8; li$7d; (18 :'0. s. St. at'Large,' 202',) which provides for the issuing of patents to the assignee of the inventor, the assignment being first of record in ihe patent office; that it does not convey the right to the invention itself, but on1y right to have the patent issued to the company on first recording the assignment; _ that, as the company allowed the patent to issue to Heath, its title to the patent was only an equitable title, and that, as Decker has the legal title, he is a necessary party to the bill. The :answer does not set up that Decker should be added as a party, but it avers only that the plaintiff does not own the patent, and has no right to bring this suit, and that the patent is owned and held by Decker. The only difference between this case and that of Sayler v. Wilder, 10 How. 477, is that, in that case, the assignment by Fitzgerald, the inventor, was recorded in the patent-office beiore the patent was issued. But the patent was issued to
Fitzgerald; It wa,a held thatrthe aSi!$ignment conveyed the legal title to the p81tent ,afterwards issued. The court held that, as the assignor possessed the inchoate right to the exclusive use of the invention at the time he made the assignment, and had the discovery, and p;repared the specification of the patent, aud as the was intended to operate upon the perfect legal title which the inventor then had a right to obtain, because it requested that the patent might issue to the there was no sound reason for restraining the assignment to the inchoate interest and requiring of the patent. In the present case, the patent had been allowed and order,ed to issue before the assignment was made, and the assignment refers to that fact, and to the fact tQat the pUrchase is of all the right, title and interest of Heath in the "in consequence of the grant of letters pat(;lnt therefor." The defendant does not set up any right dElrived from Under the above it must be held tnat patent issued to Heath the legal right to the, became vested in the company, on the, recording of the !Lssigpment to it. The, plaintiff is entitled' to usual interlocutory decree for an account and a perpetllal injunction.
THE BROTHERS. ,BEACHAM
Maryland. MaY"20, '1881.)
were put upon a vessel by a firm of ship-builders, of which one of the' part owners was 'a member, ' Libeli'lll personam was instituted by the firm against all the part owners to obtain a decree againstthetnin solido.for the repairs. , ,'lIeld" that suep, ,a libel in personam, in which the same person is 'cirie'of libellants and also one of the' respondents, could not be mMntained. '
Libel in p,-r8onam for repairs.