CHALMERS SPENCE PATENT NON-CONDUCTOR CO. V. PIERCE
others.(Circuit Court, E. D. PennsyZvania. August 15, 1881.)
PATENT-INFRINGEMENT-COVERING FOR BOILER.
Patent No. 55,598, for an improved mode of covering steam-boilers, consistbig of a covering of felt, supported on an open metallic frame-work separated from the boiler by studs or struts, held, to be, infringed by a covering 'of felt, supported on a metal jacket, so punched that it is full of V-shaped points; which separate it from the boiler.
Hearing on Bill, Answer, and Proofs.
E. B. Barnum, for complainant.
J. R. Sypher, for respondents.
D. J. In a former suit (against Camp and others) the court passed upon the plaintiff's patent, and held it to be valid. The only question now involved is that of infringement; and this was decided against defendant on the motion for preliminary injunction. Comparing the two devices, we found no material difference between them, and McKennan, C. J., then delivered the following opinion:
"There is but a single question, and a very narrow one, involved in this hearing. It is admitted that this patent is valid, and that in so far as it was rendered valid by an invention of John Ashcroft, it is not in question upon this motion. It is alleged, and has been argued here, that John Ashcroft's invention consisted in the devising of this jacket and its support upon the outer surface of the boiler to be covered. Now the patentee says this 'framework, C, can be easily constructed or built up of wire, small iron bars, or gaspipes, unwelded, forming an open frame-work with meshes of the size of the metallic bars used, for the size of the meshes must depend upon the size of the boiler, or pipe, being a matter of mere judgment.' The claim of the patent refers to the construction and operation of this jacket, as it is to bll con8trncted and operated, substantially as described in the patent; that is to say, an open frame-work supported on the boiler by appropriate studs. 'This frame-work must be supported by suitable studs, or struts, which can be. constrncteLl in
*Reported by h'rank P, Prichard, Esq., of the Philadelphia bar.
CHALMERS SPENCE PAT. NON-CONDUCTOR CO. PIERCE.
sections so as to be easily removed.' What is contemplated is just this, an open jacket, supporten. 11.Y suitable studs, or struts. That is one form in which the invention is to be carried into effect, and which it is necessary to describe in order to make his patent valid, but he is not confined so as not to be able to use any other form which is not substantially different from that, nor is be confined to any method of attaching the struts other than the one that is shown in the patent; that is not made an essential part of the invention at all. The object is to keep it off of the boiler, and that is to be accomplished by the use of struts adapted to that purpose. But the patentee is not confined to any particular mode of attachment on the jacket; so that the question to be considered comes down to this, which has been repeatedly said during the progress of the argument: Whether the alleged infringing device is substantially different from the one embraced in the patent, and that must be deter· mined with reference to the function to be performed, or the mode in which that function is effectuated. What is the difference? Here you have a jacket with quite a large number of perforations in it. I do not profess to be a skilled mechanic, but it does seem to me to be obvious that all these struts are not necessary to furnish a support to the jacket. "This [indicating1is supported without anything like the number of struts that are in this model [indicating.l Why are so many put in this model [indicating] It seems to me that it is to make available an advantage which would be derivable from the of this material; or, in other words, to make available whatever would be the result obtained from the meshes or the perforations by the punching of more holes than are actually required to furnish a support to this jacket. Then you have the per. forated, or meshed jacket; which is supported by struts. As I have already remarked, the form or mode of attaching these struts to the jacket is not made an essential part of the patent. There must be struts, but they are to be appropriately attached. Now. instead of being riveted or screwed on, they are punched out of the material itself-instead of taking a separate piece of material and riveting it on, the strut is made by a punch in the material of the jacket, so that you have the same function and precisely the same mode of operation. You have the jacket resting upon the boiler and supported by it in precisely the sallle way and by the use of precisely the same means. What difference is there in the mode of operation? 'rhere is no earthly dif. ference except as to the manller in which the struts are made. There is no other difference about it. The patentee has not limited himself to any particular mode of making these stmts. They are to be applied with reference to the fUllction to be performed; that is, that they shall support the jacket upon the boiler. That is what is done here, and that is all that is done, in so far as the mode of operation is concerned. As we have already said, you have the perforations or the meshes, and these holes, which operate precisely in the same way, so that guided by our own eyes we have no doubt that there is no fundamental difference between these devices, and we therefore grant the injunction." .
Nothing material has been developed since the ioregping views w!:lre .expressed. An elaborate and able argument has been presented
to show that· the plaintiffs' 'claim and patent should be, confined to the "metallic frame-work." But ?>dopting this view would not help the The fact, that they have copied the "metallic framework," would remain. We say copied, because this, in effec( is what they have done. There is no material difference between the two devices. The mechanical difference in is unimportant. for'the use contemWhen constructed,-considered as plated,-::-theyare substantially identical. The meshes, or open in the "metallic frame-work," are covered by the claim, though the pateJilt may not be confined to them. The methodiof construction specified produces meshes, and the model filed exhibits them. That their uses are not specified is unimportant. The pllLintiffs have the penefit of all uses to which they 'Can be applied. The mgenious argument base4 on a, different view of the patent thus loses its effect.
(Oircuit Oourt, D. New Jf1l'8ey. July 23, 1881.)
LETTERS PA.TENT-PRELIMINARY INJUNCTION.
A injunction will not be gtahted where the defendant's affidavits make 011t a case of Teasonable doubt as to the novelty of the complainant'spatent. 2.
Semble that the same rule applies as to its
In Equity. NIXON, D. J. This is an application for a preliminary injuMtion. None should ever be granted where the answering affidavits of the defendants show a reasonable doubt about the novelty or validity of the complainant's patent. This was done at the hearing by exhibiting a certified copy of English letters patent No. 3,801, for improvements in the manufacture of plated and gilded ingots of iron and steel, and in the moulds used for that purpose, ceded to William Morse on the nineteenth of May, 1874. After an inspection and examination of the provisional and complete specifications and drawings of the said Morse patent on the argument, I intimated that they suggested a sufficient uncertainty in regard to the novelty of the complainant's patent to warrant the court in refusing the application. The counsel for the complainant afterwards submitted to me several affidavits,taken without notice, and purporting to be verified