J. M. W. JONES STATIONERY & PRINTING CO.
(Circuit Court, N.
October 31, 1881.)
Letters patent No. 217,909, issued July 29,1879, to' Frederick W. Smith and James S. Shannon, for an improvement in paper· holders, valid and infringed, as to' claims, 1, 2, 3, 4, and 7, by the defendant's device.
Jesse Cox and Homer N. Hibbard, for complainant. N. C. Gridley, for defendant. ' BLODGETT, D. J. This is a suit for injunction and damages for an alleged infringement, by defendant, of patent No. 217,909, issued July 29, 1879, to Frederick W. Smith and James .s.Shannon, and which is now, held bycomplaillant, for an "improvement in holders." The defence, set upis, want of novelty and nqn-infringemeJ;l,t The character and scope, of the i;nvention are set out by the patentees in their specifications !itS follows: ,i
.. " Our to that class of pape)) files or temporary binders adapted, by having separable uniting wires, to, allow o(the withdrawal of ;IDl one of many papers. thereon held, or the insertion of papers between those liiready 'on file, without disturbing the order in which the others are placed. The' object of our invention is to provide a file more prompt and positive iii its action, less ealculated to tear the papers filed thereon; more oonvenient of manipu]atioll,&nd adapted,-in double form especially, to serve asa Writing tljoblet for theJap or desk. It consists in a paper-holdj3r with parallel the fixed wires and In0Yhinged transfer wires, made from one piece, able wires secured to the same conriecting plate, whereby those parts may be separately packed and attached. to any desired base-board in tlie structUle of the puncturing wire; in a felt or plush covering for the bottom of the baseboard; in the stop to limit the movement of the hinged wires. Figure 1 is a perspective view of a double or duplex file applied to a tablet, showing the fixed wires as being tubular and the movable wires solid. It also shows the movable or transfer wires formed of a single piece of wire, bent, in its con· necting or horizontal position, in the shape of a crank, and hinged near. its angles.'" .
Another feature of the device, as described and claimed, is that the fixed and movable wires are attached to a single plate, removable from the tablet, which allows the parts to be separately packed for transportation. The leading idea of this device is the two puncturing spindles, and the transfer wires, so arranged to operate with each other as to forin two continuous parallel rings, upon which papers may be held in place, and yet permit the easy opening of the rings for the removal or insertion of a paper, without the displacement of the others. Standards or spindles for holding papers in place are old,
and so, too, was a bent puncturing wire with another wire so arranged as to form with the puncturing wire a ring on which papers could be transferred from the puncturing wire, and a paper removed or a new nne placed on the file within the package. This is sbown in the Hauxhurst file, one of defendant's exhibits in the case. This file lacks many of the elements of convenience and utility which are obviously furnished by the complainant's file--First, it is a hanging file; second, it has only one wire. Papers cannot be so easily looked over, examined,or removed, or new ones inserted, as in the other file. It also lacks the feature of ready removability of parts, so as to admit of close packing for transportation. Yet this,as well as the Billow file, and the Buell and Lilley file-holder, shown in the proof, must be held to limit the scope of the complainant's device. But none of the devices antedating the complainant's patent show a practical duplex paper-holder with a tablet, and arranged with more than one parallel ring composed of puncturing and transfer wires, operating together, &s shown by complainant's device·. It seems very evident from the proof that these inventors made an iinprovement in the art to which their device belongs, which, while it may, in, some degree, have been suggested, had not been accomplisbed by any or all their predecessors; and that this was a substantial' and useful improvement is shown by the number of paperholders which have been brought before the public siIlCe Smith and Shannon's inve:ption, vvhich in all essentialparticuhi.ra seem to embody their device. The proof shows something over, 80 devices, embodying substantially the Shannon device, which have entered the field since his patent went 'before the publict, showing that the public accepted this form or-file-hinder, or papl'lr-holder, as nl'lw and useful beyond anything of the kind beforeproduce4; and the proof shows toat a large demand at sprung up for complainant's device, whiyh bas contiuued, so far as it has been impaired by interfElring devices. I therefore conclude that this patent cannot be held void for want of novelty. ' ,, Upon the question of infringement there can be no doubt but that defendant's contains the same essential elements which have made the complainant's holder a success.' The puncturing and transfer wires are so arranged as to form parallel rings. The transfer wires are so joined as to be, for all substantial purposes, the same as those of the complainant. Theil' mode of opiJration and effect, their function in the organism, are the same in both devices. ']'he defendant insists that by the terms of the complainant's pat-
SHANNON V. J. M. W. JONES STATIONERY & PRINTING CO.
ent his transfer wires must be formed of a "single piece of wire," but the connectingb'ar between defendant's wire lllakes them; for all practical purposes, one wire, and I disc0ver nothing in the proof that leads me to conclude that the C9)Ilplainant was, by the state of the art when he entered the field, to be Qonfined to so literal and narrow a construction of his patent as would relieve the defendant from infringement beeause its transfer wires are made of two pieces of metal instead of one. If the proqf showed that other double transfer wires had been made prior to complainant's patent, whieh performed substantially the function of the complainant's or defendant's transfer wires, .then the point might bewell taken.. But. it seems to be So necessity for the operation of these double transfer wires that they shall be so connected together as that the lifting of one will lift the other to the same extent in the' same direction so as to retain the parallelism of the rings. And this appears to be mosfreadily accomplished by making the two wires in one piece. But that does not allow an infringer to cut out a section of ·this wire and 'insert ltnother piece of metal in the place of that- cut out; and then in$ist that it. does not infringe, .when the metal. inserted performs the fmme function as that removed. I find, therefore,that paper-holder infringes the first, second, third, fourth,',and seventh claims of the complainant's patent·. The seventh claim is for a stop. A, stop is necessluyfor· the proper of the device in order to prevent the transfer wires from slipping past the points of the puncturing.wiresj as the trans. fer wires operate by a spring.> If there was not a device for stopping them as they strike on the 'bevel, they would BOtto make a perfect joint or connection at their point of contact;. and therefore the complainant, in his device, has a stop upon his spring, so that the crank, as he calls it, strikes upon· the stop and prevents it from passing any further. The defendant has two stops operating substantially the same way in his device, and for the same purpose, although he haa arranged them differently; yet they perform the same function, and'are, undoubtedly, substantially the same stop, though somewhat differently; constructed. My conclusiou, then, is that there is an infringement :of this 'Patent shown clearly, and although it is a patent: for III device of minor consequence, yet, at the same time, it is :juso as much entitled to protection as though it was for the most important piece of machinery ever devised. 'I'here will be a decree for an injunction, and a reference to ascertain and report profits and damages.
FEDERAL REPORTER. LAWRENCE and others v. MORRISANIA STEAM-BoAT Co.
(District Court, E. D. New York.
October 24, 1881.)
REPAIRS TO VESSEL-CONTRACT-PERFORMANCE.
L. & Co., shipwrights, made an offer, by letter, to the M. Steam-boat Co. to repair one of their steam-boats, which was accepted, and L. & Co. proceeded to do the work. Payments on account were made while the work was ill progress, and a note for the balance of the bill given. Payinentof the note at maturity was refused on the ground that the contract had· not been fully performed. L. & Co. filed a libel to recover the balance claimed to be due, and the.,company in their answer set up a special agreement to make the boat stiff .and strong as new, and remedy the defect which made lier "cranky," and nonperformance thereof. Held, that the special agreement was not found by the testimony j that the written contrad in the letter was the. only one by which to determine the rig-ht of the parties; and, the terms of that having been per. formed, the libellants were entitled to be paid the balance due.
Scudderrl Oa1·ter, for libellant. T. O. Oro:nin, for libellee. BENEDI<JT, D. J. Upon the testimony there is little room to doubt that the libellant is entitled to recover the portion of his bill for work done upon the defendant's steam-boat, Shady Side, that remains unpaid. The letter of the libellant, dated April 10, 1880, contains a statement of the work he offered to do. The defendants, by their letter of April 14, 1880, accepted the libellant's offer as made. These two letters constitute a written contract by which alone the rights of the parties must be determined. These letters contain nothing in the shape of a warranty on the part of the libellant that the alteration he proposed to make in the boat's hull would make her stiff, and remedy the existing defect in her build, and for that reason it must be held that the special agreement set up in the answer has not been proved. This view of the matter in controversy renders it unnecessary to pass upon the conflicting testimony given in respect to conversations and negotiations had prior to the reduction of the contract to writing. It should, however, be said that the acts of the parties subsequent to the acceptance of the libellant's offer are in harmony with the view I have adopted, and confirm me in the opinion that the libellant has performed his contract and is entitled to be paid the sum claimed in the libel. Let a decree be entered to that effect.