i express no opinion. The trans8iction appears from the proofs to
have been a fair sale for a fair price, without fraud, without injury to the bankrupt's estate or to his creditors, and without prejudice to any proceedings in bankruptcy thatmightbave been bad. The objedtions are therefore overrtiledand the discharge granted.
FIRST NATIONAL BANK OF MARIlI;TTA
(Uircuit Court" 8.
Decision of the district court (In re Hovey, lams If 00. 5 FED. BAXTER, C. J., without delivering an opinion.
Co. and another v.
(Circuit Court, D. CO'(l.necticut.
August 16, 1881.)
MOTION FOR PREJ,UrINARY INJUNCTION-INFRINGEMENT MUST BE ESTABJ,JSHED - VALIDITy-PREVIOUS JUDICIAL CoNSTRUCTION-PUBLIC A.CQUIESCENCE.
STEAM GAUGE & LANTERN CO. V. MILLER·
Upon a motion for preliminary injuncUon the complainant must establis1;l.th" point of infringement beyond a reasonable doubt, and as this question oftf,ln depends upon the proper construction of the patent, its claims should· ordinarily have been construed by 8 .court of competent jurisdiction,orltl'tQuld have been practically construed by the consent and acquiescence of that part of the monopoly. . public which is cognizant of the extent of
Edwin S. Jenney, Coburn rt Thacher, and Benj. F. Thurston, for plaintiffs. . Betts, Atterbury tt- Betts and Charles E. Mitchell, for defendant. SWPMAN, D. J. This isa motion for an injunction to restrain the defendant, pendente lite, from the infringement of the followingdescribed letters patent to John H. Irwin, viz. :
Re-issue No. 8,611, dated March 4, 1879, the original being No. 73,012, dated January 7,1868; re-issue No. 8,593, dated February 25, 1879, the original being No. 89,770, dated May 4, 1869; letters patent No. 104,318, dated June 14, 1870; and No 151,703, dated June 9,1874.
,,, These patents, except the first and last, were for improvements in lanterns. The first was for an improvement in lanterns and street lamps, and the last for an improvelllent in lamps and lanterns.· All these lamps lanterns were designed for burning kerosene. It was not claimed that No. 104,318 or No. 151,703, or the lamps. made thereunder, had ever been the subject of adjudication at final hearing. I shall not, therefore, examine either of those patents, and shall only refer to No. 104,318, in its historical relation to the art.. Tpe patents prior to No. 104,318, together with No. 65,230, dated May 28, 1867, show the course of Mr. Irwin's improvements in lanterns for burning mineral oils, and the progressive steps by which he r.eached success. The "tubular" lantern, which he manufactured under No. 89,770 and re-issue 8,598, has been a staple article throughout this country for many years, has superseded its predecessors, and has gone into universal use. Patents 65,230, and 89,770 were the subject of litigation at final hearing in the case of Irwin v. Dane, 9 O. G. 642, before Judges Drummond and Blodgett. The opinion of the court sustaining all the patents was rendered in 1876, and contains a statement of the art and of the invention to that date. It is impossible for me, without an expenditure of much more time than I now have at command, to state the character of Irwin's inventions so that they can be understood by a person who has had no previous acqua:,ntance
with the subject, and I must,therefore, refer to Irwin v. nane for an explanation of the various parts of the lamp, and of what was done by the patentee. The court decided as 'follows:
"We then come to the conclusion that Irwin was the first inventor of a device for securing a blast of fresh air to the burner of a lamp, by means of an inverted funnel or bell and one or more tubes, by which the air heated by the flame of the lamp is caused to rise into the tube and be thence conducted into a close reservoir below the flame, and from thence supplied freely to the flame, so as to· sustain combustion. In other words, the combination of the bell, tube, air-chamber, and burner, as shown by his first patent, was original with him, and all who use bell and tube or tubes, SUbstantially as and for the purposes Irwn used them, infringe his first patent. So all who use a globe in combination with the bell and tube infringe the second patent; and all who use the bell, tube, globe, and perforated plate, E, at the bottom of the globe, infringe the third patent." .
The leading principle of No. 89,770 was to remedy the defect of 73,012 as a hand kerosene lantern, viz., a deficiency of air within the globe, by the injection of outside ail' into the tubes in a continuous and irreversible current, and in quantities sufficient to supply the flame, and consisted, generally, in placing the tube, H, entirely above the globe, and in tlubstitutillg for the old "bell-mouth" of the tube a shallow concave plate, I, of larger diameter than the top of the globe. The open space between the plate and the globe admitted fresh air into the tubes, which were connected together, and which, having their mouths within the globe, received heated ail' from the globe and fresh external air. The necessity for the injection of fresh air in\o the. tubes, and for an increased supply of oxygen to the flame, arose from the fact that, when the lantern was suddenly raised or oscillated, the impure air within the globe was precipitated, and smothered· the flame. In the specification the patentee said:
"·When the lantern is at rest and not blown upon by the wind, the air, heated by the flame at the burner, rises in the glote and passes into the tubes Hand :1" F. These tUbes present a large radiating surface, and the heated air is thereby rapidly deprived of its caloric, so that the slight upward pressure of hot air in the tube, H, will be sufficient to insure a downward current of cooled air through the vertical portions of the tUbes, F F, into the air-chamber, B, and tile interior of the burner cone, C, to supply the Harne with oxygen. Fresh air in tile Illeall time passing up through the perforated plate, E, into the globe, tends to keep the glass cool, and mingles with the ClllTent from the tubes, F F. "When the lantern is exposed to the wind the hl:1st is distributed by passIng throngh the perfuratetl plate belo\x, anti, from the peculiar arrangement
STEAM GAUGE & LANTERN CO. V. MILLER.
of the plate, I, over the globe, the wind passing into the space between the rim or flange, g, and said plate, I, is deflected upward into the tube, H, where it mingles with the air heated Mthin the' globe, and so passes down the tubes, F F, to supply flame, while the t, upon the wick-tube prevents the force of the blast from extinguishing it. By making the rim, g, with its upper portion inclined inward, as shown, any current of air entering beteen the plate, I, and the rim, g, would thereby be deflected upward ·towards the mouth of the tube, H, and this deflection of a moving current of air would . produce a current through the tubes. F F, in absence of other, cause. Also, when the lantern is swung from side to aWe, or oscillated, thecentrifugal tendency of the air in the tubes causes the air to rUf;lh into the mouth of the tube, H, from without, thus producing the required current at the burner. "From the above description it appears that there are three separate causes to produce a proper current of air through the tubes, F F, to the base of the flame, viz.: the ascensive force of the air heated by the burner flame and the cooling of said heated air within the tubes j the pressure of a current deflected towards the mouth of the tube, H j and the centrifugal effect of swinging or oscillating the lantern. And it will be observed that the seGond or third causes will always be cumulative with the first, to produce increased current at exactly the time when an increased supply is demanded in consequence of the atmospheric disturbances in the immediate vicinity of the lantern."
The first claim of the patent was as follows:
"The combination of the plate, I, rim, g, or its equivalent, tuhes. Hand F F, and the base, A B, of the lantern, Bubstantially in the manner sl'ecilied and shown."
The other three claims are in the same general form, all speaking of the coml)ination of the various parts by letters, with the tubes H and F, or the tubes H, F, etc. In re-issue 8,598, the patentee, for the first time, styled piate I both an injector and ejector of air; but it is plain, from the following quotation from Irwin v. Dane, that the court, when considering the original patent, understood the ejecting feature of the space between the globe and the bell:
.. The third device, as shown in patent No. 89,770, i,s for various improvements, which more nearly perfected the invention, and adapted it for use as a portable out-of-door lantern. The theory of Mr. Irwin seems to have been and is that the products of combustion, such as carbonic acid gas, steam, antI other matters, rise with the current of air to the·top of the protector, and are there thrown off from the outside of the 'rising column, and pass out over the top of the protector, and between it and the bell, while the air which passes into the bell is mostly pure atmospheric air, uncontaminated by and unmixed to any considerable extent with the products of combustion. In order to secure the exit of these products of combustion from the top of the lantern, a
sufficient space is left between the protector and the bell, which is occupied by the perforated rim, g, and the top of the rim is so curved and deflected in and upward, as to prevent 'currents of external air passing down the globe and extinguishing the flame The globe, also, tested upon a perforated plate or disk, E, which formed the bottom of the globe, and which, also, by its perforation, admitted the air freely, so that the same could become heated, and crowd, so to speak, into the bell, so as to create thEl blast required for furnishing the . to the burner." "On the trial of this case, several experiments were performed in the presence of,the court, for the purpose of illustrating the operation of the various elements of the trwin combination, which seemed todemonstrate-Ji'irst. That it is essential to the operation of this lamp that a space should be left between the globe and bell sufficient to allow the escape of the products of combustion. If this space was wholly closed, so that the products of combustion wel'e driven around and into the air-chamber and into the flame, the light waS nearly extinguished and the operation of the lamp defeated. Second. That provision must be made for admitting an ample supply of air into the globe at its base, so that it might rise in the globe, become heated, and be driven into the bell and tube. .. When this supply of air was cut off, the flame died down, and the operation of the lamp was suspended." .
In re-issue 8,598 the patentee retained, in the same language, three of the original claims, of which I have given an example, and introduced two broader claims, by which he claimed the various parts in the following manner:
"(1) In a lamp or lantern the combination of the following elements, viz.: a feed conduit or conduits, which supply fresh air to the burner to support combustion; a wick burner, protected by a deflecting cone or jacket; a globe or protector surmounting the burner and open at its open end; and a device surmounting the globe, constructed and arranged to operate as an atmospheric injector and ejector to inject fresh air to the feed conduits from the exterior atmosphere, and eject the contents of the globe from the top thereof, whereby a protected and continuous air-circuit is constantly maintained through the feed conduit or conduits, burner, and globe, substantially as described. (2) In a lamp or lantern the combination of the following elements, viz.: a globe or protector surmounting the burner and provided with openings at the bottom for the passage of air independently of the burner; a wick burner protected by a deflecting· cone or jacket; a device for injecting and ejecting air at the top of the globe; and a conduit or conduits for supplying fresh air to the burner; substantially as described."
The patent No. l04,3is, no heated air is admitted into the tubes, and the entire supply of oxygen is from fresh air. It is insisted by the defendant that this patent is limited by its terms to the peculiar construction of its devices for tpe admission and ejection of air. In 1879 the Buffalo Steam Gauge & Lantern Company had com-
STEAM GAU.GE & LANTERN CO. V. MILLER.
menced the manufacture of "No. 99," a lalltern in which tubes connected with each other admitted only external air, the products ofi o6mbusti6n being ejected through an annular space at the top of the lantern. The construction of the tubes and devices for the admission and emission of air was similar to thatqf 104,318. ,An application for preliminary injunction of this companY's agent against infringement of re-issues 8,611 and 8,598 and patent 104,818, was heard b.efore Judge Blodgett, who refused t1;1e motion conditionally, in case the defendants should file a bond of indemnity. Irwin v. Mei 16 O. G. 853. The litigation then proceeded earnestly. Proofs were taken on both sides, and the case was. about ready for trial, when Ithe defendant's counsel settled litigation by the parchase, from the owners, of one·halLof the patent of their one-half interest and their tools and machinery, for $105,000, and by the purchase. from said Irwin. of his one-half interest in the causes of action, and of a 801e license. to ,manufacture and sen under his onehalf interest in the patent fOJ: $105,000, subject to the rights of Robert E. Dietz, a licen,See illthq city of New York. This corporation subsequently became the Steam Gauge & Lantern Company, one of the.plaintiffs herein. The defendant is manufacturing and selling lanterns called "No. 13".and "No. 14," made under letters patent to Leonard Henkle,. dated November 11, 1879, and to Russell B. Perkins, dated September 14, I880.·These lanterns have elevated tubes outside the globe, disconnected with each other, and for the admission of fresh air only. There are peculiarly-shaped injectors at the mouths of the tubes. The tubes not being within the globe, the part analogous to Plate I cannot serve as an injector. It is an ejector only. Lanterns Nos. 13 and 14, and No. '99, are external air-feeders. The. lantern under patent 73,012 is an internal air-feeder. The lantern under patent 89,770 is both an internal and an external airfeeder. The supply of external air was its important feature. It is insisted by Mr. Irwin that, when used as a lantern and exposed to the wind, the external currents of air only fill the tube, and to that extent the statement in the original and re-issued patents of the philosophy of the mechanism may be incorrect. The limits to which I think that I am confined upon this motion prevent a consideration of this part of the subject; but although the patentee thought, at the dates of the invention and of the re-issue, that heated air would always be a cumulative supply, it is plain that he stated in the original specification that, when the lantern was oscillated in the open
air, external air would be furnished in sufficient quantities to produce the required current at the burner. The affidavits of Messrs. Henry B. Renwick and John E. Earle, the experts for the defendant, do not deny the novelty of the Irwin tubular lamp, made either patents 73,012 or 89,770. I mean that the novelty of the structure as a whole is not denied. The affidavits point out that previous patents had tubes for conveying heated air or fresh air to the flame, and each expert treats the respective Irwin inventions as new examples, respectively, of former classes of lamps. In Irwin v. Dane the court came to the conclusion that the patentee had, by his successive combinations of devices, beginning with 65,330, introduced a new principle or set of principles into the construction of kerosene lamps and lanterns, and had entered upon a new field of invention. Neither .can it apparently be denied that Irwin first made a hand kerosene lantern which could be relied upon when oscillated in the open air and exposed to currents or blasts of wind. The reason of its success must be that a hand-lantern, with a globe of ordinary size, needed a supply of external air, which must be furnished in a continuous and non-reversible current, and that Irwin's lantern furnished fresh air to the flame in such manner and by such means that the current was ample, continuous, and irreversible, and that the flame was not interfered with by cross currents. ,Two facts seem to be established: (1) That Irwin's hand lantern, made in accordance with patent 89,770, was a novelty and a success; and (2) that it owes its success to the introduction of external air by the devices used, in combination with the other parts of the lantern. The question of infringement remains to be considered. Upon a motion for preliminary injunction the plaintiffs must establish the point of infringement beyond a reasonable doubt, alid as this question often depends upon the proper construction of the patent, its claims should ordinarily have been construed by a court of competent jurisdiction, or should have been practically construed by the consent and acquiescence of that part of the public which is cognizant of the extent of the monopoly. In this case it is contended by the defendant that its lanterns, having tubes disconnected with each other and incapable of receiving heated ail- from the globe, are not within either of the claims of No. 89,770, and therefore are not within those claims when repeated in the same language in re-issue 8,598. There is good reason for advocating this opinion, and therefore the motion cannot be granted as to those claims of the re-issue. It is next claimed by the defendant that the conduits of the first
STEAM GAUGE & LANTERN CO.V. MILLER.
two claims of re-issue 8,598 must be the tubes, F and F, placed within the globe, where they can and do receive a supply of heated air, so that the ascensive current of heated air forms a part of the supply for the tubes, and also that the device or plate, I, which sur· mounts the globe, must both inject and eject air. In the defendant's lantern the injecting devices are directly over the tubes, and no a.ir is injected from the opening over the globe. There has been no adjudication by a court upon this question of construction. If it should be held that the fresh-air conduits must necessarily be within the globe so as also to receive heated air, or if the injecting devices must necessarily surmount the globe, then there is no infringement. It seems to me that the litigation in this case, taken in connection with the opinion in Irwin v. McRoberts, goes very far to answer the. requirement of a deliberate examination and a decision by a court. Irwin and his co-owners engaged in an earnest and thoroughly-contested litigation with the Buffalo company upon the subject of these patents. The latter had the advantage of the skill and knowledge of the senior expert of the present defendant. It came to the conclusion to purchase peace and the right to manufacture under the Irwin patents. With a great sum it obtained its freedom. The settlement of the litigation and the acknowledgment of infringement by the defendant, was deliberately made under the advice of counsel, and after earnest attem pts at compromise. payment of $210,000 was a confession of inability to make a successful contest. This litigation, coupled with the opinion of JUdge Blodgett in the case of Irwin v. McRoberts, where he was "very much impressed with the conviction that the defendant's lantern infringes the claim of the complainant's patents as they are re-issued," and in the opinion in Irwin v. Dane upon the broad character of the invention, brings the question of infringement as near to an adjudication as it is practicable without having an opinion by a court upon the precise question in dispute. I am satisfied that, by virtue of all the recited decisions and the circumstances of this case, the question has been so far settled that I ought not to refuse an injunction upon the ground of non-adjudication. The defendant's experts, starting apparently upon the premise that the Irwin patents are only improvements upon the old English and French patents, properly come to the conclusion that they should be narrowly construed, and should be confined to the specific forms of devices which are respectfully shown. Without going back to the v.8,no.5-21
earlier Irwin. inventions, 1. think that in his patent 89,770 he was 'predecessor.and not. a follower of others, and while, for the purposes of this motion, it is held to be true that his claims in the original patent were limited t'o the particular form of the devices described in the specification; yet that, by re-issue 8,595, he properly covered broader territory.
" If one inventor precedes a.ll the rest, a.nd strikes out something which includes and underlies all that they produce, he aCquires flo monopoly, and subjects them to tribute." Sayles v. Ry. Co. 97 U.R 554.
I have not deemed it expedient to examine the claims of re-issue No. 8,611 upon .the question of infringement. The plaintiffs make out a clea,r case of very serious injury in case a provisional injunction should not be granted. . The motion for an injuuction, pendente lite, against the infringementof the first and second claims of re-issued patent No. 8,598 by the manufacture or sale of lanterns Nos. 13 or 14, or lanterns containing a combiLJation of devices equivalent thereto, is granted.
GOTTFRIED V. CONRAD SEIPP BREWING
(Uircuit Court, N. D. lninoi8.
BARRELS-HoT Am-KRAusCR MACHINE-SUPERHEATED STEAM-INFRINGEMENT. Letters patent No. 42,580, g anted May 3, 1864, to J. F. Holbeck and Matthew Gottfried, for mode of pitching barrels, operating by driving a blast of air, by means of a blower, thr ugh a bed of ignited coals into a pipe, whence it is conducted into the barrel to be pitched, held, Mt infringed by the Krausch machine, which opera s by the introJuction of 8uperheated steam into the casks to be pitched. 2. PATENT COVERING A CoMBINATION DEVICE AS AN ENTIRETY - REPLACING WOllN-OUT PARTS-INFRINGMENT. Where a patent covers as an entiret,lf a machine composed of several separate and distinct parts, the purchaser of such machine from the patentee will not infringe by replacing such parts as wear out as often as is necessary, so long as the identity of the m ,chine is retained. If the patent is for a separate and distinct element of the combination, a purchaser will infringe by replacing such element.
Banning d: Banning, for complainants. West d: Bond, for defendant. BLODGETT, D. J. This is a bill to recover damages for the alleged infringement of a patent issued on the third of Maj', 1864, to the complainants for an improvement in pitcIling the inside of barre1s.