87 FEDEltAL REPORTER.
ents) bUt they seem to me to be plainly applicable to the presenfone, especially in view of the fact that the name in question is claimed only as incidental to the monopoly granted by a patent, under which, as well as of the alleged name itself, a party not before the court il!l exclusive licensee. It follows that the complainants' motion for a preliminary injunction must' be denied, and it is so ordered.
TRUMAN v. CARVILL MFG. CO. (CircUit Court. N. D. California. No. 12.093March 28, 1898.)
RillS JUDICATA-JUDGMENTS IN PATENT CASIlIS.
A jUdgment sustaining the validity of a patent does not operate as retl jUdicata in a suit on ,thesa1De patent against a different defendant.
PATENT INFRINGEMENT SUITS-EFFECT OF PRIOR t\.DJUDICATIONS.
A jUdgment sustaining the validity of a patent Is not conclusive In a subsequent suit against a different defendant In respect to a defense as to which substantially new evidence is produced, and the court will exercisean Independent judgment In regard thereto. Trade magazines, published and copyrighted, In general circulation. and found In public free libraries as well as· scientific libraries. are publications, In the sense of the patent law.
The Putnam patent, No. 232,207, for hnprovements In breaking-carts, consisting In so attaching the footboard to the vehicle that It shall move In unison with the seat, Is voId because of anticipation. and for want of novelty.
This. was.a bill in equity for infringement of letters patent No. 232,207, issued to De Witt O. Putnam on September 14, 1880, for improvements in breaking-carts. John L;Boone, for complainant. E. J. Mize, for defendant. MORROW, Circuit Judge. This is a suit in equity for the infringement of .letters patent No. 232,207, granted to De Witt C. Putnam on September 14, 1880, for improvements in breaking-carts. The complainant is the assignee, by a regular chain, of ,assignments, of all the right, title, and interest in said invention and letters patent for the territory known. and describe.d as "San Francisco county, state of California, and no other place or places." The patent has been in· litigation heretofore in this court, and, on appeal, in the circuit court of appeals. TruJ7lan v. Holmes, 14 C. C. A. 517, 67 Fed.' 5.42i' Id;, 80 Fed. 109 is, c. (on appea;l) 87 FeC(. 142. In Truman v.'Holmes, 14 C.C. A. 517, 67 Fed. 542, which was an action at law,: the validity of the patent was sustained ona writ of error to this court from the circuit court of appeals i and the judgment of the lower court, in favor (If the complainant, in the sum of $150, as damages for infringement, was affirmed.,. In Truman v. Holmes and 'l'rumanv. Implement Co.,-both being "ca:mpan1on ,and suita
TRU:U:..U I'\,. CARVILL MP'a."CO.
inequity brought in'this'court for infringement of the same patent, -the bills were dismissed, and the defendants held not to have infringed. 80 Fed. 109, affirmed on appeal 87 Fed. 742. Different constructions of the carts were involved in the action at law and the suits. in equity, as will be seen from the opinions above referred to. The original claim of De Witt C. Putnam, as first presented to the patent office, read as follows:
"The improvement in breaking-carts, consisting board, E, by means of straps or hangers, F, from portion of the vehicle connected with the springs and footboard have a common vertical movement, the purpose herein described." in suspending the footthe shafts, seat, or that alone, whereby the seat substantially as and for
This claim was rejected on the ground that "the patent of Jesse Winecoff, October 17, 1871, No. 119,956 (sulkies), substantially answers the claim." The applicant tbereupon amended "by erasing the entire specification, and substituting" a new one. The figures of the patent, as they are shown in the amended specifications and claim, will be found represented in 80 Fed. 112. The amended specifications and claim read as follows:
"My invention relates to certain improvements in that class of vehicles known as 'breaking-carts,' in which young colts are broken to harness. Carts of this description are usually provided with very long shafts, and the seat is placed on springs immediately over the axle, or at such a distance back that the driver is not in danger of being kicked by a fractious animal. In this class of vehicles the footboard Is usually secured to the axle, while the seat is on springs; and it is therefore uncomfortable to ride upon, since, while the body of the occupant may move up and down, his feet must remain stationary. My improvements consist in so attaching the footboard to the vehicIe that it shall move in unison with the seat; the same spring which supports the seat serving as a spring for the footboard, as is more fully described in the accompanying draWings, in which Fig. 1 is a longitudinal section of my device; Fig. 2 is a bottom view. Breaking-carts usually have two wheels, A, only, and the springs, B, are secured both to the axle, 0, and the shafts, .D; said shafts being secured on the springs in the manner shown. In Or.cler to attach the footboard, E, to vehicle, I place metallic straps or bands, F, In a proper position to hold the footboard; connecting these straps with the Shafts and seat, and not with the axle. I have shown the straps connected with the shafts at the rear ends of, and forward of, the whiffletree bar. It wlll be seen by this construction that the rear ends of the shafts and the seat are supported upon the spring, B, while the straps, F, pass beneath the axle, and are bent up so that their rear and their front ends are secured to the shafts at points behind and In front of the axle, while the central portion does not touch it .at all. The footboard, El, with its turned-Up front portion, is then secured upon the botton and front portions of the straps, F. Being thus entirely independent of any direct connection with the axle, it wlll have the same movement imparted to It by the action of the spring that the· shafts have, and it w1l1 have none of the unpleasant jar that a stationary footboard,. 01' one supported from the axle, will have; while the arrangement of the straps parallel with the shafts facilitates th" attachment of the transverse footboard, and makes a strong construction. described my invention, what I claim as new, and desire to secure by letters patent, is tke brac.es or straps, F, having their ends se· cured to the shafts before and behind the axle, while' the central portion extends beneath the axle. and. ,parallel with the shafts, and is adapted to support the transverse footboard, E, substantially as and for the purpose . herein described."
'With reference to the interpretation that should be placed on this amended specification and claim, the circuit court of appeals, per
HawleYtDistrict Judge, deliV'eriIlg the opinion of tbe court In Tru· many. Holmes, 87 Fed. 742, held that:
"The effect of the withdrawal of his onginal specifications and claim was to limit his patent to the specific Invention' as described In. the claim of his amended specifications, to wit, to the construction of carts where the central portion of the straps 'extended .beneath the a;le';" citing Roem(;!r v. Peddie, 132U. S. 818, 817, 10 Sup. Ct. 98,'and Morgan Envelope Co. v. Albany Per· forated Wrapplng·Paper Co., 152 U. S. 425,429, 14 Sup. Ct. 627, and the cases therein. collated. .
At the outset, the defendantftled a. plea, which was subsequently amen<l,ed, i1;).which it.is ayerred, substantially, that .the complainant was at all times from the 18th dayof January, 188S'"to the 31st day of,. J ,1894, one of tb,e co-pax:tllers. comprising firm. of Truman, & Co.; that the complainant on or about. ,he 28th day of' as of, induced thedefelldant to accept order from the said firm. 'of Truman, Hooker' &. Co,. for the manufacture for SlUc:J.. firm of large quantities of carts, including 125 or. . cont3.iping. and. eDlbodying said invention de· scribed'in the' patent numbered 232,207; that the defelldant did there..said..qul!-ntities Of. said carts .so ord.ered by said upon manufactur.e 'manner and at the times agreed upon by firm, of the kind, and in said parties to said order; that defendllnt offered to according to' the terms of said order, all of said carts so ordered, to said TruIlJ.ll;n, Hooker & Co., but that saic:J. firm neglected and refused to receive the same, or any about two-fifths of the number so ordered; that the defendant hall since said sold most of the remaining number of said carts so ordered by said Truman, Hooker & Co., including about' 75 carts containing said invention, within the territory alleged 'owned by the complainant; that the defendant hllS neV'er at any,tilne manufactured for sale nor for use, nor sold nor used, within said territory, nor threatened to sell lior offered for sale within said· territory, any other or greater number of carts embodying said invention than so ordered as aforesaid; that the material put into said qarts by the defendant was and is of greater value than the complainant's patent therein, etc. As it was claimed in the amended that the carts 4ad been made under a contract torya:nufacture them by Truman, Hooker & Co., of which firm the a member at that time, it was contended that there was no infringement by the defendant in seIling that number of the carts whicbhad been refused by Truman, Hooker & Cb.. The plea as' amended was, however, over· ,ruled; and the defendant dUlyfihidjts, answer, denying infringement, and setting up' want of novelty, .prior USe, publication. Testimony has been takenl and the case now comes up far final consideration. i , The that the carts made and sold by the defendant are like the carts for which the letters patent involved in this case were issued, ,is placed beyond controversy, not alone by the admission in the plea, but more particularly bY:'the testimony of O. S. CarviII, the superintendent of the defendant company. He testified as follows:
"Q. '(By cOllnsel for complainant): Can you state whether or not the Caryl11 Company has since ;the year 1880 made or sold an1
TRUMAN V. CARVILL MFG. CO.
carts. in which the springs were mounted directly upon the axle, the shafts secured upon the springs, the seat secured directly upon the shafts over the springs, and in which the footboard was supported by a strap attached or connected to the shafts in front of the axle, and passed down underneath the axle.? A. Yes, sir.';
To establish the validity of the patent, the complainant relieS, for the most part, upon the decision of the circuit court of appeals for this circuit, affirming the judgment of this court in the case of Truman v. Holmes, 14 C. C. A. 517, 67 Fed. 542, and contends that it is res judicata, and concludes the defendant from denying the validity of the patent. Besides setting forth, by appropriate averments in the bill, the· fact. that the patent has been sustained in the case relied on, the judgment roll was also introduced in evidence. The case was an action at law to recover $20,000 for infringement of the identical patent sued on in this case. It was tried before a jury, who returned a verdict for the plaintiff (complainant in this suit) in the sum of $150. A writ of error was thereupon sued out from the circuit of appeals, which affirmed the judgment of the court below. However conclusive the decision of the circuit court of appeals as to the validity I)f the patent in this case may be, still it is difficult to see how it can be deemed res judicata in the case at bar. True, it involves the same patent, and the complainant in the two cases is the same. But the parties defendant are entirely different. This difference, obviouSly, is fatal to the application of the doctrine of res judicata. The general rule, to make a matter res judicata, is that there must be a concurrence of four conditions: (1) Identity of the subject-matter involved; (2) identity of the cause of action; (3) iden· tity of persons and parties; and (4) identity of the quality of the persons for or against whom the claim is made. 21 Am. & Eng. Enc. Law, 227, and cases there cited; Packet Co. v. Sickles, 5 Wall. 580; Cromwell v. County of Sac, 94 U. S. 351. One of the conditions is lacking in this case,and the judgment of this court and of the court of appeals in the case referred to cannot be deemed binding on the defendant in this case. It is true that, in suits where a preliminary injunction is asked for, the fact that the same patent has been sustained in other cases will often justify the court in granting the preliminary injunction. Wells v. Gill, 2 O. G. 590, 6 Fish. Pat. Cas. 89, Fed. Cas. No. 17,394; Purifier Co. v. Christian, 4 Dill. 448, Fed. Cas. No. 307; Lockwood v. Faber, 27 Fed. 63; New York Filter Mfg. Co. v. Niagara Falls Waterworks Co., 26 C. C. A. 252, 80 Fed. 924; Bowers Dredging Co. v. New York Dredging Co.,. 80 Fed. 119; Bowers v. Reclamation Co., 81 Fed. 569. But no question of the propriety of granting a preliminary injunction arises now. The case is to be disposed of on its merits. So far as appears, this is the first time that this particular defendant has had his day in court. It furthermore appears affirmatively that some additional testimony has been introduced to that presented in the action at law relied on as res judicata. To what extent the evidence in the two cases differs on all the issues presented, does not clearly appear; but it was :it least established in the case at bar that the witness A. 'D.Carvill, the president of the defendant company, who was also a witness in the action at law, was not examined with reference to the two publications introduced in the case at bar,
,:': 87'li'EDERAr; ,REPORTER.
and that this ",as th¢'first these in'+support of the defense of , the case conClusive authority to of Truman v. Holmes may be considered establish the validity of the patent, so far as the defense of prior use, or other defense presented in that case, may be concerned, still it is obvious that it is not conclusiveJn this, case; where a different defendant is involved, llPOn: defen,se of prior publication; it appearing that additional evi!lence,has been introduced inthe case at bl17-' to support that defense;, which was not before the court in Trumanv. Holmes. The following authoritieswithout entering into a dilscussioI\ (If them-will. be found to support the views I ,havetaken of theef.Iect.of the judgment in the case of Truman v. Holmes, supra, as applied to the case at bar: Russen v. Place, 94 U. S. potter v. Whitney, 1 Low. 87, Fed. Oas. No. 11,341; Page v. Telegraph Co., 2 Fed. 330; Day v.Rubber Co., Id. 570; Wilson v. Coon, 6 Fed., 611; Consolidated Safety-Valve 00. v. Ashton Valve Co., 26 Fed. 319; Lockwood v. Faber, 27 Fed. 63; Machine 00. v. Hedden, 29, ,Fed.. 147; Oary v. Manufacturing Co., 31 Fed. 344; Miller v. Tobaccoq()., :T, Fed. 91; N0Fton v. Wheaton, 57 Fed. 929; Pac; Qo., v.Earl, 27 C. C. A. 185, 82 Fed. 690; 3 Rob. Pat,§ 1175 et seq.; 21 Am. & Eng. Ene. Law" 128,227.. The court therefore feels compelled to, consider the case upon its merits, and topasa its own judgment upon the defense now presente.d, as to w,hich additional evidence has been introduced; that is" whether the P1,ltnam patent, :No. 232,207, has beeJ? anticipated by prior publication. The complainant, .called on his owpbehalf, testified, substantially, that his name was I. J. Truman; his residence, San Francisco;h,is age, 55, years; and his occupation at that time that, of a that he hasrelilided in Oalifornia sifJ.ce January, 1861; that his busiagricultural implement business,-wagons, carts, ness ha;s been, buggies,etc. H;e testified further that he had had considerable experience as a manufacturer of implements; that his ,experience in the business made ,familiar with the state of the art, or, in other words, the kind and character of carts that were, in use prior to 1880; that the carts that were made previous to that time were what are called "butcher carts"; that two-wheeled carts, ,called "sulkies;') 4ad also been long in use pri()r to 1880; that the priQr'tQ 1880, were placed back, and seat and footboard of the feetrestedo;tlr.;the slJ.afts, ·so that they were about level with the seat; that. tqese :were unhandy to ride in, and were not salable, exceptfor racing; that to 1880 the cart trade was through, the, invention of Putnam, as contained in elltirely :the patent invo:Ived in this case; that the fE;Rture or features of that cart which made it desirable, and tended to cl'eate a change in the manufacture. and use of carts, were that the feet were placed in a comfol'tableposltion dp. relatioD; to the,seat, and that the body and the feet in unison up.anqdown. On cross-£xamination he admitted that he w,as not a .rnechanic in the line of making agricultural implements or carts; that he had never made any himself. Being shown pioture or cut of .a cart called a "Newport cart" (as
the same appears on plate 31 of volume 5 of the New York CoachMakers' Magazine, and particularly the January, 1864, number thereof, which refers to page 120 of the same volume), he admitted that the picture of the cart looked as though it had a footboard extending below the axle; that perhaps the hole that is marked on the cut or picture is meant for the axle to work up and down inside the body of the cart; that a mechanic of ordinary ability in the line of cart making would, by copying from the draft of the picture on plate 31 of the publication referred to, put the seat above the shafts, and the footboard below the axle. With the testimony of this witness, and the introduction of copies of the assignments, to trace the chain of assignments to the complainant, also of the judgment roll in Truman v. Holmes, and the admission of the witne!3s O. S. Carvill, the superintendent, that the defendant corporation had manufactured carts covered by complainant's patent, the complainant rested his case. The defendant introduced evidence of the following character in support of the defense of prior publication. Two volumes (2 and 5) of a publication designated as the "New York Coach-Makers' Magazine," and a number (January, 1874) of another publication called "The Hub," were introduced in evidence. These were offered for the purpose of showcuts of carts, and descriptions thereof ing, by a reference to accompanying these cuts, that carts containing substantially the essential characteristics of the carts covered by the Putnam patent of 1880 were known and used long before that time. Volume 2 of the New York Coach-Makers' Magazine covers a period from June, 1859, to May, 1860. The January, 1860, number, at page 155 of the volume, contains a reference to the "Osier c'ab." 'This cab, which is really a cart, is illustrated on plate 28, at the end of the same volume. Volume 5 of the same publication covers a period from Jan· uary, 1863, to May, 1864. The January, 1864, number, at page 120 of the volume, contains areference to the "Newport cart." This cart is illustrated on plate 31 of the same volume. On page 137 of the same volume is a reference to a "caned gocart," illustrated on plate 34 of the same publicatiqn.Tbe January, 1874, number of the Hub, at pages 326, 327, contains descriptions of various dog carts, and on page 327 is a picture of what is termed a "cottage gig." It is contended that these magazines are not publications, in the sense intended by the patent law. But it is difficult to point out any par· ticular wherein they are lacking in that respect. It appears that they were published, and that they were copyrighted. ,That they were in general circulation is fully established by the testimony. librarians of the Free Public Library, Two witnesses, both and the Library of the Mechanics' Institute of San Erancisco, respectively, testified to the fact that these rmblications(the New York Coach-Makers' Magazine, in the Free Public Library, and the Hub, in the Mechanics' Institute) had been in their respective libraries for many years, and that they were accessible to the public. It further appearsaflirmatively from the testimony of David l(err, a practical carriage maker, that both publications had not only been published, blltthat they had a general circulation among carriage makers. The that he first heard of the New York Coach·Makers' witness
87 FEDERAL REPORTER.
Magazine about 30 years ago; that he was himself a subscriber to both publications, having taken the Hub for 12:years past. It therefore appears beyond contradiction'that the two publications introduced in this case have been in general circulation many years before the Putnam patent was issued, in 1880. It further appears, from the testimony of at least three competent and experienced carriage makers, that a competent mechaniC, experienced in the trade of constructing carts, and possessed of' the ordinary mechanical skill peculiar to such trade, could, without any other .guidance than the pictures, with the descriptions thereof contained in the two publications introduced in evidence, and without requiring any inventive faculty, have constructed a one-horse, two-wheeled/cart, with elliptic springs resting directly upon the axle, and the shafts resting directly upon the springs, with the seat resting upon the shafts, and the footboard supported beneath the shafts, nearly in line with the axle, by means of a strap running under the footboard from the shafts, in front and back, and attached to the shafts. This evidence went entirely uncontradicted. Robinson, in his work on Patents (section 325), gives the following conditions upon which a prior publication, to be effective in defeating the validity of a patent, depends. He says:
''The publication must be (1) a work of public: Character, Intended for gen· eral use; (2) within reachol' the public; (3) pUblished before the date of the later invention; (4) a description of the same complete and operative art or instrument; and (5) so preclse and so particular that any person skilled .In' the art to which the Invention belongs can construct and operate It without experiments, and without further exercise of Inventive skill. Unless a publication possesses all of these characteristics, It does not place the invention. in the possession of the public, nor defeat the claim of its reinventor to &. patent....
See, also, the following cases;; Seymour v. Osborne, 11 Wall. 516; Oohn v. Oorset Co., 93 U. S. 366, 870 i Downtonv. Milling 00., 108 U.S. 466,471, 3 Sup. Ot. 10; Eames v. Andrews, 122 D. S. 40, 7 Slip. Ct. The two magazines introddced in evidence, and thlt evidence in support thereof, would seem to satisfy the most ex· acting test of what are prior publications, within the meaning of the patem law,to defeat the right of· a$ubsequentin'ventor. It does not .appear that any such showing was made in the action at law of Truman v. Holmes; supra, claimed' to be res judicata. At least, it affirmatively appears that the two 'publications upon which the prior publication is based llithis case were not introduced in the case of Truman v. Holmes. I am compelled, therefore, from the evidence introduced in this case, to hold that the cart covered by the patent issued to Putnam in 1880 had been; to all intents and purposes, anticipated, l\ndis void for want of novelty; that 'carts of the same, or sUbstanti.ally 'simila.r, 'cdnstruction, embodying the same idea, had 'been 'described in publications in general circulation among carriage "makers long prior to the issuance of the p'atent to Putnam; and that a'ffiechanic possessed of ordinary mechanical skill could have con· 'structed carts from the descriptions contained In the publications introduced in evidence, which, in their essential charactei-istics, would have beerilike the carts covered by the Putnam patent. With reference to the question of prior tlse,A.D. Oarvill, the president of the
WELSBACH LIGHT CO. V. REX INCANDESCENT LIGHT CO.
Carvill Manufacturing Company, testified that he himself had made carts possessing all the essential characteristics of the Putnam cart prior to 1877; that he made such carts at Lewiston, Me., where they were at that time in general use. This testimony was, in effect, eontradicted by that given by the complainant, who testified that there were only two kinds of carts in use prior to 1880,-a "butcher cart," and sulkies,-and that the invention of Putnam in 1880 had effected a great change in the manufacture, use, and sale of carts. As the witness A. D. Carvill testified also in the case of Truman v. Holmes, on behalf of the defendant in that case, as to the prior use, manu· facture, and sale of carts similar to the carts covered by the Putnam patent, and the verdict of the jury was in favor of the complainant, that case may be considered as conclusive on this court in the present case upon the question of prior use; no other or additional evidence appearing to have been introduced in this case; But, as previously stated, giving the case of Truman v. Holmes, 14 C. C. A. 517, 67 Fed. 542, all the persuasive authority which that decision may be entitled to upon the question of prior use, or any other defense to the validity of the patent presented in that case, it does not, in my opinion, in view of the additional and uncontradicted evidence given in the case at bar, conclude this court in this case upon the question of prior publication; and J therefore hold that the Putnam patent, No. 232,207, issued in 1880, is void for want of novelty, it having been anticipated, as shown by the prior publications proven in this case. The bill will therefore be dismissed, with costs to the defendant. and it is so ordered.
WELSBACH LIGHT CO. v. REX INCANDESCENT LIGHT CO. (Circuit Court. S. D. New York.
March 19, 1898.)
In an infringement suit, a mere allegation In the bill that the patent sued on covers new and useful improvements In the "manufacture of gas incandescents," with a statement of the number and date of the patent, Is an Insufficient description of the Invention, when unaccompanied with profert of the patent itself, and makes the bill demurr-able.
This was a suit in equity by the Welsbach Light Company against .the Rex Incandescent Light Company for infringement of a patent. 'i'he cause was heard on demurrer to the bilL John R. Bennett, for plaintiff. Louis Hicks, for defendant. WHEELER, District Judge. The bills allege that one Carl Auer von WeIsbach was the first inventor of certain new and useful improvementsin the "manufacture of gas incandescents," for which let· ters patent of the United States, numbered 409,531, were on the 20th day of August, 1889, issued to him, assignor to the plaintiff, with profert of the assignment. No profert of the patent is mad!::, nor other description of the invention set out. The bill is demurred to for this cause, among others not so well founded; and the demurrer