UNITED STATES REPAIR &: GUARANTY CO. V. STANDARD PAVINQ CO.
not, in lhe present situation of the case, deem it desirable to enter upon a discussion of it. It is sufficient for the present purpose t6 say, as has often been said before, that a preliminary injunction should never be awarded where the right ,is doubtful, or the wrong uncertain, and that the infringement here charged has not been dearly established. American Nicholson Pavement Co. v. City of Elizabeth, 4 Fish. Pat. Cas. 189, Fed. Cas. No. 312. Consolidated Electric Storage Co. v. Accumulator Co., 5 CCA. 202, 55 Fed. 485; Van Camp Packing Co. v. Cruikshanks Bros. Co., 33 C.CA. 280, 90 Fed. 814; Williams v. McNeely, 56 Fed. 265. The question of infringement, as it was presented in the prior adjudications which have been brought to the attentiono£ the court, is not identical with that which arises upon this record. It is, of course, possible that upon final hearing the complainants may appear to be entitled to the relief which they seek; but that, upon the proofs as now submitted, the cou'rt below erred in refusing a prelimin,ary injunction, the only legitimate purpose of which is to preserve the existing state of things until the rights of the parties can be thoroughly investigated, we cannot adjudge. The decree is affirmed.
UNITED STATES REPAm & GUARANTY CO. et aI. v. STANDARD PAVING CO. (Circuit Court of Appeals, Second Circuit. May 25, 1899.) No. 143.
PATElfTI-ANTICIPATION-METHOD 01' REPAIRING ASPHALT PAVEMENTS.
The Perkins patent, No. 501,537, for an Improved method ot repairing asphalt pavements, was not anticipated by the French patent No. 137,208, granted to Crochet in 1880. The rock asphalt used In French pavements, and to which the Crochet process Is applied, differs materially trom the Trinidad asphalt, of which American pavements are made, and is affected differently by the heat applied in repair:lng. In repairing the t!>rmer by the Crochet method, the damaged part ot the pavement is removed, while by the Perkins method, as applied to the Trinidad asphalt, the damaged part Ia melted, and, uniting with new material added, is reused. Hence, it the methods are regarded as the same, the Perkins patent is valid, u an application ot such method to different and dissimilar materiala. The Perkins patent, No. 501,537, tor an improved method ot repairing asphait pavements, an essential feature ot which is the perfect commingling ot old and new material in the process ot repairing, Is not infringed by a process by which no such commingling is attempted, but the damaged material is removed, the depression scraped out, and new mao terlal added, with cement to cause It to adhere. .
Appeal from the Circuit Court of the United States for the Northern District of New York. Letters patent No. 501,537, dated July 18, 1893, were issued to Am9s H. assignor to the Western Paving & Supply Company, for an improved method of repairing asphalt pavements. The patent was subsequently assigned to the United States Repair & Guaranty Company, which gave an exclusive license to the co-com· plainant, the Barber Asphalt Paving Company. A bill in equity brought i:l the circuit court for the Northern district of New York (87 Fed. 339), which charged the defendant with an infringement of
,95 fEDIUUL REPORTI\1R.
was dismissed upon i:he. of the, the process by a French patent, No. 137,208, granted to Paul Crochet8Jld others on June ,11, 1880. Edwin H. Brown, for appellants. William Macomber and 'l'racyO.Becker, for appellee. Before WALLACE,LACOMB:E, and, SHIPMAN, Circuit Judges. SHIPMAN, Circuit Judge. The old mode of repairing asphalt pavements was to dig out with a pick "the surface material around the spot to be repaired, sometimes applying heat to the spot to soften the material so that it could be more easily removed." After the material was removed, the hole was cleailedand coated with tar. The new material, which was placed in the hole in a heated state, was ironed and smoothed in the usual manner. This system is said to have been defective, because a thorough union or commingling was not made ,between the old and new, m"aterial, and was expensive, because' the old material, which was torn away by the pick, must be discarded. The patented method subjected. "the, spot to be repaired and the surrounding edges to such a degree of heat that the surface asphalt, not only the exact spot to be repaired, but the surrounding portion to a greater or less degree, is reduced to the soft, pliable state in which it was originally laid. With a rake or other suitable! instrument, it is then agitated and mixed with enough new material to fill up the spot to be repaired. It is then subjected to the usual finiahing operation of ironing anq burnishing." '.01ere is no soldering and no dividing line between,. the new and the old, "because th.e new material has been mixed with, and becomes a part of, the old mateNaJ." 'The apparatus for tM' application of' heat· which is de: tank,. with burners scribed in' the: patent' is aporta:ble, 'I hellt ,upon the spot underneath, whkh throw a sudden to be repaired. ,The flame, it iSl1laid,CPeates a ,thi'll bm:ned. skin or crust upon of thellsphalt;'a:nd melts or Iiqnifies theparticles underneath ,so that they do nqt lMe their cohesive <Sharacter, but can be qsed again,<after befug suitably stii'Ted alld, mixed, with new material; The claims of the patent are as follows:
"(1) 'l'hem,ethod of rep111ring In subjecting the spot to be repaired to heat, addIng new material, 'Md, smoothing and burnishing It, substantially as described. (2) The, method of' i!.'epalringasphalt pavements which Consistaln subjecting the spot to be' 'repa:iredto heat until the material' Is softened, 'agitating itiand mixing with It new'material, and finally smoothing and burnishing it, substantially as described." ,
The Crochet patent, which was for a method repairing the French pavements of rock asphalt,' and which, used the intense heat of patent in suit, seemed to the" circuit court, an anticipation. Crochet heated the part to be repaired, by a movable furnace, until the s:urfa.ce became friable. "The upper alld damaged part of the layer was removed by a toothed iron hoe, which function of a rake, and roughened the part not removed. 'A" suitable thickness of asphalt in powder was then spread over the depression, and,tamped in the ordinary way. ,From the, similarity of the two patents, it seemed wel1:nigh that tp.eFrench patent had been read
V. STANDARD PAVInG
by the who Wfl,S urged by the first assignee of the patent in suit to invent an economical method of asphalt pavements. It is, however, important, upon the question of anticipati?n, tq, apPreciate the fact that the rock asphalt of France, from WhICh its asphalt pavements are made, is a limestone or a sandstone rock containing from 15 to 25 pel' cent. of bitumen, and that the pavement made of this kind of limestone, when reduced to fragments and compres!3ed, is a different thing from the surface asphalt pavement of thiscount;ry, which is formed from Trinidad asphalt, consisting to a great extent of bitumen, united with petroleum and heated sand, and is melted by heat. .The application of heat to rock asphalt causes it to crumble, and reduces it to sand or powder, which does not firmly unite or "bond" with the old material, while a similar sudden application of violent heat to the surface of a 'rrinidad asphalt pavement,melts the particles, which, when commingled with a new mix; ture, can become united with the fl,'esh material. It is, however, noteworthy that Crochet thought that the beneficial effect of his process was to soften the subjacent layer of the French pavement so that it should "unite perfectly with the new layer, and form with it a thickness, without solution of continuity." Nevertheless,. there is, in fact, a difference in the material of the two pavements, and we are inclined to differ from the circuit court, and to regard the Perkins patent as patentable,because it was all' application of an old process ofintense beating, by means of a movable furnace, to different and dissimilar materials. The two processes were not exactly alike. Crochet treated the surface by vivid heat, removed the damaged part, roughened the remaining SUrface, and added new material. Perkins heated in the same way, reduced the old material to a soft, pliable state, agitated it with a rake, and mixed it with enough new material to fill up the spot to be repaired. No otber anticipation of importance was presented in the record. The defendant used in Buffalo, for its heating purposes, a coke furnace upon wheels,and its process is described by Mr. Kent, who carefully watched it for two months, for the purpose of giving testimonY,as follows:
Asbestos sheets were placed on the outside of the edges of the spot to .be repaired so as to protect the surroun(ling pavement from the heat. l'he complainants also nse tlwse sheets. coke heater was then left over the spot to be repaired a snfikient length of time t<> soften the asphalt to a depth of ltalf an inch, more or less. The coke heater was then wheeled away, the asbestos removed, ami the heated portion of the pavement scraped off' to a depth of half an inch, more or less, with notched hoes, and the edge of the pOl'tinn sCl'll.ped off' was made even and smooth, and then the surface of the patch was sprinkled with asphalt cement, and the edges daubed with the same material. New asphalt was then thrown on, and made level with the surrounding pavement with the back of an iron rake. It was then compressed or tamped with iron tampers or smoothers, and rolled with a hot roller." The cement was in very slight quantity, and was sprinkled in narrow threads from a broom. The soft("l1ed asphalt was generally.removed with an iron rake, the action of which on the lower surface left it in a rough or in a sort of grooved state. It was not deemed necessary, that the new asphalt should be added at oIfce, while the spot to be repaired was hot, though that was the rule,' There was no agitation or raking of the bottom when the new material was added, which was thrown in with a shovel and smoothed off' or made level.
The qoestion is whether this process is that of the patent. If claim 1 is to be literally construed, it is void, for it is simply for the
application 01. heat for a purpose, and of a character and amount, not expressed, the addition of new material, and the usual smoothing and burnishing; but no eontention 'is made that it is not to be construed for the process substantially as deacribed,-that is, that the oW. shaJl be heated until it is softened or partially melted, shal be agitated, and that the new material is to be mixed with, and become a part of, the old material. The claim could hardly be construed to permit the omiMion of any of the described steps of the process, nnlesa such omission had been recognized in the specification. 0Jaims 1 and 2 do not, therefore, materially differ from each other. The patented process omits the use of tar as a solder, and does not look to the Me of any material for that purpose. The defendant, after the burned or Cl'U6ted portion of the surface had been scraped off, sprinkled the hole with asphalt cement. The sprinkling, though the amount of the cement which was applied was very small, was fo\" the purpose of eansing the new material to adhere to the old. It for a solder, and not for the purpose of fusion. The sprinkling shows the existence of another variance between the two processes which is substantial. In the Perkins process, the old and melted material is used.. It is agitated so as to become thoroughly plastic, is mixed with the new material, and the two become homogeneous. In the , defendant's process, the hole is scraped, the softened asphalt is removed with a rake, which leaves the lower surface in a rough state, "the surfaeeof the patch is sprinkled with asphalt cement," which shows that the old material bad practically disappeared, and new asphalt is into the hole and· tamped down. The Perkins process placs stress up<>n the perfect commingling of old and new asphalt as a result of the agitation of the particles of old and new material. The dclendant's process places no reliance upon this kind of commingling, but scrapes or cleans out the depression, sprinkles a little cement upon the bottom and edges, to be of some benefit in causing the old and new to adhere, and shovels in and tamps down the new material Wherein the defendant's process differs from that of Perkins it corresponds with that of Crochet. The decree of the circuit court is affirmed, with costs.
UNION WRITING MACH. CO. v. DOMESTIO SEWING-MACH. Co. (Circuit Court, D. New Jersey. June 20, 1800.)
PATENTS-CONSTRUCTION AND INFRINGEMENT-TYPEWRITING MACHINES.
The Broolts patent, No. 454,845, for Improvements In typewriting machines, It valid at all, In view of the prior state of the art, must be limIted, as to claims 5, 6, 7, 8, and 9, to the specific constrnctlon shown and described, and sald claims are not Infringed by the Williams typewriter.
In Equity. H. D. Donnelly and Oharles E. Mitchell, tor complainant Harry E. Knight and Edmund Wetmore, for defendant.