v. ,CIT"i
OF"PITTSBURGH.
help the complajnant's but to the contrary furpishes an additional reason why he should be denied the assistance.of a court of equity. Not only has he employed a name to which he Qould pot acquire an exclusive right, but he has used it in a manner calculated to mislead the public, although, perhaps, not intentionally on his part. A purchaser cognizant of the differences in the ,preparation smoking tobacco would legitimately infer that the complainant's cigarettes were in fact made of straight-cut, tobacco. No principles are better settled in the law of trade-marks than that a generic term, or a name merely desc,riptive of the ingredients, quality, or characteristics of an article of trade, cannot be the subject of a trade-mark, anfl that the use ofa name or term which is likely to in reference to the components or nature of the article to which it is applied will not be tolerated. The motion for llr. preliminary injl1nction is denied. See Burton v. Stratton, ante, 696, Mack, ante. 707, and note 717. note,704;, Shaw Btocktr"iJ 00;''''. '
0'
BALLARD
and others
tI. CITY Oll' PITTSBUll.GH:
'Circuit OO'UTt, W. D. PennsylMnia.
JUly 1, 1882.}
Where an application for·a patent was made and refused; and not till five yeari! thereafter was an amendment of his' application filed and, an effort to obtain its allowance renewed, the delay i3:11'QfIlcient to rai3e the infel'epcf3 of,an abandonment; but if this inaction is explicable consistently: with legal requirement it will not operate to the prejudice of the rights of the inventor. 2. SAME-WEDGE-SHAPED BLOCKS FOR PAvEMENT.
The laying down of a pavement in the $treets, withwcdgeshaped transverse channels, made of wedge-shaped blocks, described in pateI).t No. 94,062, and according to the method descrilJed in patent No.. 94,063, is an infringement of the patent owned by complainants, assignees of the inrentor. 3. SAME-INJUNC'fION WITHHELD.
Where the interference with the use of woodlln pavemeJltscon.tructed ina city, in infringement of complainants' rights, would only operate injuriously on the pulJlic, without benefiting complainants, an injunctio'n will not be granted. '
In Equity. O. G. Gole and f,Jhas. F. Blake, for complainants. r Nelson Gross and George Shiras, Jr., for respondent.
784
RBPORTER.
McKENNAN, C. J. The bill in this case is founded upon three patents, all of which are alleged to have been infringed by the respondent: (1) Letters patent to Turner Cowing, assignor to TallmadgeE. Brown, No. 101,590, dated April 5, 1870, "improvement in wood pavement." (2) Letters .patent to William W. Ballard and Buren B. Waddell, (who assigned his right to Ballard,) No. 94,062, dated August 24, i869, for "improved wood pavemeht." (3) Letters patent to the same persons last named, (Waddell having assigned his interest in the invention to Ballard,) No. 94,063, dated August 24, 1869, for "improved mode of cutting blocks for wood pavement." 'l'htdirst two patents are, then, for wooden pavement as a structure, and the last for the method of preparing blocks to· be used in such structure. . The cardinal featnre of the pavement described and' claimed in the first patent consists in wooden blocks;' with inclined sides, so laid on ends as to form wedge"shaped crevices or grooves for the reception of concrete or other suitable filling. Although this patent is dated April 5, 1870, the original application for it was made November 13, 1865, and it is therefore prior to all other patents, to which my attention has been called, for the form of wood pavement described in it. Whatever mutations this application may have undergone after it was filed iIi the patent-office, the wedge-shaped crevices, and the necessarily sloping sides of the blocks, were a distinguishing feature of it, and I think, therefore, the patent finally was properly engrafted upon it as its parent stock. It is urg('\d, however, that Cowing's application was abandoned, patent cannot relate back to the date of the filing of the application. On the twenty-seventh day of December, 1865, a patent was refused him, and the case remained in this condition until May 5, 1869, when an amendment of his application was filed, and the effort to obtain its allowance renewed. This interval of inaction is certainly sufficient to justify an inference of abandonment, because of the apparent default of the applicant in the prosecution of his application with due· diligence,as the law requires. But, as has been repeatedly held, if this inaction is explicable consistently with this legal requirement, it will not operate to the prejudice of his right as a meritorious inventor. It was thus explained by the proofs laid before the commissioner of patents, in which it appeared that the s.pplicant had "generally Incapacitated for business by mental Thereupon the case was reconsidered by the commis-
BALLARD V. OITY 011' PITTSBURGH.
'185
sioner,-himself one of the most eminent patent lawyers of his time, -and the patent granted, as I think, rightfully. During this interval, however, to-wit, on the thirty-first of March, 1868, letters patent No. 76,227 were granted to Miller & Mason for an improved wood pavement. These patentees disclaimed the "invention of the wedge-shaped blocks," but claimed as their invention combination consisting of wedge-shaped blocks, when so laid as to break joints with those of the opposite rows, concrete filling, and a continuous wood foundation. But the wedge-shape channels between the rows of blocks, caused by the use of blocks with inclining sides, was the invention of Cowing, whose application for" a patent was then pending in the patent-office. The pendency and allowance of this application subordinated Miller & Mason's patent to Cowing's, and precluded the nse by them of the'wedge-shaped channel' in their combination without his consent. This was the' state of the art ·when the two remaining patents set up in the bill were applied for and granted. The fitst of these, No. 94,063, is for a method of 'cui). tmg blocks for wooden'rpa'tement so as to form by' two ,cuts, or One ctitand one, splitting; two finished blocks, with the top and bottom level, or in parallel planes, and the sides bevelled, one side being inclined with the fiber, and without waste of material. The other, No. 94,062, is for the blocks produced by this method, as an article of manufacture, and also for a wooden pavement constructed with them. It is very earnestly urged that this method of producing fabrics of wood is not novel, and that it is indicated in the patent of Miller & Mason. I do not propose to follow this discussion in detail. It is sufficient for me to say that the proofs fail to show that a block of wood adapted to pavement construction, or any analogous fabric, suggestive of such use, with the top and in parallel planes, and the sides bevelled" one side being inclined with the fiber, had been made, or that two such blocks could be formed out of a piece of timber of suitable dimensions by two cuts, or one cut and one splitting, without waste of material, before the date of the patents in question. Nor does the patent of Miller & Mason even indefinitely describe the Ballard block, or indicate any method of making it. All that is said is that the blocks are to be bevelled on both sides from top to bottom, and "to be cut from plank, and are of the usual size, having the fiber vertical," or that they "can be cut with less waste of material by cutting them from timber, and splitting the timber blocks with the v.12,no.3-50
a
786
;, :... ;. Ji'EDEBAL BEPOB'tEB.
proper beveL" But this does not describe a wedge-shaped block having the grain running parallel to one and oblique to the other of its bevelled sides, nor how two of such blocks may be produced at the same operation without waste of material by iwo cuts of a saw. All of these three patents the respondent is shown to have infringed, in causing to be laid upon two of its streets, viz., Linco,ln and Fifth avenues, wooden pavements with wedge-shaped,' tr.ansverse channels made of wedge-shaped blocks, described in patent No. 94,069, and according to the method described in patent No. 94,063. In describing the mode in which the blocks used in these pavements were made, Mr. Diester, in his deposition, sufficiently identifies them with the patented block and process, but the ex.hibits produced by him are demonstrative. . lam, therefore, of opinion (1) that the of Turner Cowing, the weQge-shapeQ. assignor to Brown, is valid, and covers the cpannel or crevice, therein described, in wooden-pavement qonstruction; (2) that the patents to Ballard and Waddell, Nos. 94,069 .Q.nd 94,0.63, are also valid, and that they secure .to said patentees exclusive right to make and use, in wooden pavements, the blocks therein described; (3) that the channel is in the pavements aforesaid, .constructed for thEl city ofPittsburg% and that wedge-shaped blocks, formed and made substa,ntill.lly, .as described and directed in Nos. 94,062-:'63, were used in the construction of said pavements; (4) that there ought to be a decree for the complainants. Inasmuch as any interference with the usa. ()fthe ",ooden pave.· ments constructed in the city of Pittsburgh, in. infringement .of. th.e complainant's rights, would only operate injuriously upon the public, without benefiting the complainants, an injunction will not be granted. But there, must be a reference to a master to ascertain profits and damages, and a decree will accordingly be entered.
HA.YWABD
11. ANDBE*S
and others.
(Circuit Court, N. D. flZinois. PATENTS FOR INVENTIONS-REMEDY AT LAW.
July 7, 1882.)
Where the assignee qf damages for infringement of a patent for an invention has an adequate remedy at law for an infringement of the patent, which expired before the assignment was made, a demurrer to the bill will be sustained without prejudice to a suit at law for damages.
