ONDERDONK v. FANNING and ,another.
(Circuit Court, E.
York. JUly 1, ISSI.)
LETTEUB PATENT-LEMON SQUEEZERB-INFnINGE)fENT.
Letters patent No. 217,519, granted to Josephine P. Fanning and Isaac Williams, for an improvement in lemon squeezers, being a patent for a combination, one of whose essential elements is a bed on which the lemon is to rest while subjected to pressure, with holes in it to allow the juice of the lemon to pass through into a concentrator below, are not infringed by a machine of which the bed on which the lemon rests while subjected to pressure is SOlid, with a grooved or corrugated surface so constructed that the juice is 'conducted to the edge of the bed, where it passes into the concentrator around the bed by running between the eqge of the bed and the rim of the concentrator.
Foster, Wentworth Ii: Foster, for compLtinant. E. H. Brou'n, for defendant. BENEDICT, D. J. This action is founded upon a patent owned by the plaintiff, No. 217,519, originally issued to Josephine P. Fanning and Isaac Williams, as assignee of the defendant John Fanning, for an improvement in lemon squeezers. The allegation of the bill is that the defendant makes and sells a lemon squeezer similar to that described in the plaintiff's patent. '1'he defendaint, among other things, denies that the machine he makes is similar to that secured by the patent. . The patent sued on has been before this court in a fonner action between these same parties. In that case the infringing machine was different from the machine now complained of, and then a preliminary injunction was granted the plaintiff upon the ground that the circumstances attending the salo of the patent by the defendant to the plaintiff rendered it proper to compel the defendant to refrain from making machines like those there complained of during the pendency of the suit. This was the extent of the adjudication made in the former action. The final decree subsequently entered in that action was upon the consent of thepadies, and not upon any determination of the court, either in respect to the validity of the patent sued on, or the character of the alleged infringement. In the present case, the questions respecting the validity of the plaintiff's patent are the sarno as in the former action, but the question of infringement is different. The latter question is the only one necessary to be determined on this occasion, in the view I take of the caso, and this opinion will therefore proceed upon the assumption that the patent sued on secures to the plaintiff an excillsive
ONDERDONK V. FANNING.
right to the invention which his patent describes. This patent is for a combination, the elements of which are conceded to be old. It contains four clauses, as follows:
"First, in a lemon squeezer, the convex perforated bed to receive the lemon, in combination with aConcave presser, substantially as specified; second, in a lemon squeezer, the convex bed, with a rim around the same, and perforated, in combination with the concentmtor below the perforated bed, to receive the juice and pass the same to the tumbler or other vessel, substantially as set forth; third, the combination, in a lemon squeezer, of the convex perforated bed, a, concentrator, 0, supporting ring, e, standard, d, guide-rods, n, cup and actuating mechanism, substantially as set forth; fourth, the combination, in a lemon squeezer, of the removable convex perforated bed, the supporting ring, e, standard, d, lever, g, link, l, and presser-cup, substantially as described.
In each of these claims the bed upon which the lemon rests while subjected to pressure is described as being a perforated bed, and the language seem to plainly indicate that a bed containing perforations, on which the lemon is intended to rest, is claimed as one of the I:>lements of the combination. This conclusion, that a perforated bed is an essential element in the combination claimed, is fortified by the language of the specification. Thus, it is there said:
"I make use of a convex bed or surface for the lemon to rest on. The same is perforated for the passage of the lemon juice." Again: "The perforated bed, a, is convex on its upper surface, and it is perforated with numerous holes. There is a rim, b, around the same to retain any jUice and cause it to pass through the outer perforations." Again: "The perforated bed and concentrator will usually be cast in one piece."
This language, coupled with the language employed in each of the claims of the patent, renders it impossible to construe the patent otherwise than as a patent for a combination; one of whose essential elements is a bed on which the lemon is to rest while subjectecl to pressure, such bed having holes pierced therein for the purpose of permitting the juice of the lemon to pass through the bed and so into the concentrator below. If understanding of the patent be correct, I am unable to discover any infringement of the patent by the defendants' machine, for in the defendants' machine the bed on which the lemon rests while subjected to pressure has no perforations. In the defendants' machine the bed is solid, with a grooved or corrugated surface 80 constructed that it is impossible for the juice of the lemon to pass through the bed; but the same is, by means of the grooves in the sUrface of the bed, oonducted to the edge of the bed, when it passes into he concentrator around the bed, running between the edge of the bed
and the rim of the concentrator. One machine is constructed to compel the juice to pass through the bed; the other to render it impossible for the juice to take that course. It has been contended in behalf of the plaintiff that the spaces which appear in the defendants' machine between the edge of the bed and the rim of the concentrator are perforations in the bed, within the meaning of the plaintiff's patent. But the word "perforation" conveys the idea of a hole through an article, and cannot, with propriety, be held to describe a space between two articles such as in the defendant's machine is left between the bed and the concentrator. To so read the plaintiff's patent would be to enlarge its scope by giving a strained interpretation to the language employed. But it is again contended, in behalf of the plaintiff, that the use ill defendant's machine of a bed for the lemon to rest on, located insid,.· of the conceutrator, with a space between the edge of the bed and th'D rim of the concentrator, is but t,he employment by the defendant cf equivalent mechanism to accomplish the same result, and for that reason he must be held to infringe. In one sense the result is tl; e same; that is to say, in both the machines the juice is squeezed out ()f the lemon and caught in a concentrator. But in one the juice is forced by the action of the presser directly through the bed to the concentrator below by means of perforations in the bed. In the other a different direction is given to the juice. It is forced to the edges of the bed, where, by force of gravity, it passes around the edge of the bed and then to the concentrator below. This change in combination is substantial, and not merely colorable, as appears by testimony introduced by the plaintiff, and also by testimony introduced by the defendant. The plaintiff's witness Frank Stone who used the defendants' machine for some two weeks, squeezing about 300 lemons a day, sold that machine and bought one of the plaintiff's, because, as I understand the witness, the plaintiff's machine does not choke up so fast, nor require such frequent cleansing, as the defendants'. The defendants' witness Hall finds from actual experiment that the perforations in the bed of the plaintiff's machine render it more liable to clog than the defendants' machine, and more difficult to clean. 1'hus both sides, while they differ as to which machine is the better, agree that the machines perform the work differently. If the fact be, as both sides prove, that a difference exists between the operation of the two machines in respect to the liability to clog, and in the ease with which the machine can be kept clean, and if, as the plaintiff shows, this
difference of itself is sufficient to make the plf!,intiff's machine more useful when in actual and frequent operation, inasmuch as the only difference between the machines lies in the bed, the conclusion must follow that the substitution of the defendants' bed in place of the plaintiff's bed was more thana mere colorable change of form. My opinion, therefore, is that none of the combinations' claimed in the pla,intiff's patent are to be found in the defendants' machine, and that the defendant cannot be held to have infringed the plaintiff's patent by the manufacture and sale of the lemon squeezer described in the bill. The bill is accordingly dismissed, and with costs.
THE PANGtlSSETT. THE YANKEE DOODLE.
(Disfnoict Oourt, 8. D. N6W Yorlc. Ml\Y 31, 1881.)
ADMIRALTY Cuoss-LmELS CoLLISION Two SAIL-VESSELS ON CRO,BSING COURSES, ONE WITH WIND ON PORT SIDE-'"SEVENTEEN'l'lI ,RULE-LoOKOUTDUTY OF OFFICER OF RlTLEc-J:Umu>ING COURBB m'lDER SEVjl:NTEENTlI RULE-ClIANGING COURSE BEFORECOLLIBION.'
Where the schooners P. and Y. Do collided below Barnegat light, 011 the Jersey coast, about half past 6 Ao M" April 6, 1878, the former striking the latter on the starboard side, staving it in, and causing the loss, ofhet: while the P. had her bowsprit broken, and was otherwise injured, and the Y. Do claimed that when she sighted the Po, while she was S. W'"the wind being W. by No, she first saw her green light half a point 'on her port bow, and thereupon luffed to 8. W. by Wo, which course she steadily kept to let the P. pass on her port Side, but the other's green light drew across her bow, and kept on till it appeared on her starboard bow, whereupon, the vessels being by this time quite near, she kept off to let the P. pass on that side, but both the Po's lights then appeared, when, by keeping off, she had brought the P. about abeam, showing that the P. had also kept off, and was heading directly bll' her, and the P. after thus keeping off luffed just before the collision in order to go under the stern of the Y. D.; and the P. claimed that she first saw the other's red light about a mile distant, half a point on her port bow; that this light broadened on her port although the P. had ported a point and a changing her course to No E., but that both lights of the Y. D. then appeared two to three points off her port bow, showing that she was heading towards the P., when the P. put her tiller hard a-port and so held it until the collision: HeZd, on the evidence, that the Y. D. first saw the other's green light on her port bow when she luffed to N. W. by N., and kept steadily on that course until the Po's green appeared on her starboard bow, and therefore that the P. could not have made and held the red light of the other on her port bow, as she claims, but that she must have had the Y.Do on her starboard bow. That the appearance of the Y. Do's two lights on the Po's port bow indicated, or should have indicated, to the latter that she was crossing the course of the