PHILLIPS V. CARROLL.
249
and sardines, and having omitted the proviso as to cans containing fish, the latter is repealed by implication. But this can hardly be true, because the proviso is general in its terms, and applies to all kinds of fish. By changing the duties on anchovies and sardines, there is no reason to suppose that congress intended to repeal a general law imposing a duty on tin cans containing fish of any kind. While the law is in the form of a proviso, it appears to be in no way dependent on what precedes. But it is claimed that the present importation was made under the act of March 3, 1883, which admits shrimps, or other shell.fish, free of duty, and that, therefore, it was not made under any existing law or treaty within the meaning of the act of February 9, 1875. 'l'hese cans of lobsters were imported from Prince Edward's island, and from Nova Scotia. These countries are named in the treaty of 1871 between the United States and Great Britain as those from which fish of all kinds are to be admitted free of duty, with certain exceptions. The act of February 9, 1875, was plainly designed by congress to aBsess a duty on the cans containing fish imported from countries under the treaty. In the act of March 3, 1883, 11, we find it expressly provided that nothing in the act shall in any way change or impair the force or effect of any existing treaty between the United States and any other government. With this treaty still in force, we do not see how the plaintiffs can escape payment of the duty exacted. Nor can it be said that cans, being the usual and necessary box or covering for lobsters, are exempt from duty under section 7 of the act of March 3, 1883. Section 7 refers, in express terms, to sections 2907, 2908, Rev. St., and 18 St. 189, § 14:, and reo peals them. In our opinion, section 7 has no reference to the specific duty imposed on tin cans coataining any kind of fish, and it in no way, expressly or by implication, repeals the act of February 9, 1875. Judgment for defendant.
and others v. 1. PATENTS FOR INVENTIONS-PATENT
CARROLL
and others.
(Circuit Court, lV. D. Pennsylvania. March 2,1885.)
No. 227,061-INFRINGEMENT. The first claim of complainants' patent, viz., in a flanging-maehine the extension of the lower roll beyond the end of the upper roll for the support of the plate at the point of bend and to prevent forwlltion of a ridge or bead, held to he infringed hy a machine which, before set to work, has the outcr faceR of the two rolls flush, but is so organized that, as the tahle upon which lies tl16 plate to be flanged is raised to a perpendicular, the upper roll is pushed back the thickness of the plate. The defense of anticipation considered, and held that the evicJenre show" a failure to rednce the conception to practical use and its abandonIUent, t],.·, leaving the field of invention open to others.
2. SAME-ANTICIPATION.
250 8. 8AJm-lNvmNTION.
FEDERAL REPORTER.
Held,fu'l1h8r, that the patented improvement here involved more than the employment of mere mechanical sliill, and may fairly lie ascribed to the exel'eise of the inventive faculty.
4.
SAME-DEFENSE OF WANT OF UTILITY.
Parties who employ a patented device ought not to expect a defense resting upon an alleged want of utility to find much favor with the court.
In. Equity. George H. Ohristy and Bakewell J: Kerr, for complainants. D. F. Patterson, John Barton J: Son, Jas. 'I Kay, and Burleigh d'; Harbison, for respondents. AOBEl:lON, J. This suit is upon letters patent No. 227,061, granted April 27,1880, to the complainants (as assigneos of Russell and McDonald, the inventors) for an improvement in flanging-machines. 'Fhe invention, the specification declares, relates to the class of mao chines referred to in letters patent No. 166,715, issued August 17, 1875, to R. C. Nugent and others, and is designed to obviate an obstacle to the successful use of sMh machines arising from the tendency of the plate, while being flanged, especially if very heavy and very hot, to sag down a little, so as to form just outside the end of the lower roll an annular bead, bulge, or projection on the exterior base of the flange. To overcome this practical difficulty, and prevent the sagging action and bulging effect, the inventors lengthen the lower roll so that its outer end will extend beyond the outer end of the upper roll a distance equal, or nearly equal, to the thickness of the plate to be .flanged, thus affording a proper support to the plate. The first claim of the patent reads thus: "(I) In a flanging-machine of the kind herein described, the extension of the lower roll beyond the end of the upper roll, in order to the better 8upport of the plate at the point of bend, and prevent the formation of a ridge or bend, SUbstantially as set forth."
The infringing machine, (which undoubtedly is of the same general kind described in the patent,) when at rest and before set to work, has the outer faces of the two rolls flush, or even, but the shaft of the upper roll is provided with a spiral spring, and as the table upon which lies the plate to be flanged is raised to a perpendicular, the upper roll is pushed back the thickness of the plate. Obviously, by means of this yielding spring the two rolls of the defendant's machine, during the operation of flanging, assume in respect t:l each other the. relationship specified in the complainant's patent, and the. practical result thereby contemplated is thus, secured. It is therefore plain that the defendant's machine, as an operative apparatus, embodies the Russell and McDonald invention as embraced in their first claim. It indeed may be (although under the proofs this is an open question) that an automatic upper roll has an advantage over a rigid roll; but it is hardly necessary to say that the defendants are none the less infringers because of added improvements to the patented device. De Florez v. Raynolds, 3 Ban. & A. 292.
l'BILLIPB t1.
951
The defendants, however, maintain that Russell ana McDonald were not the original and first inventord of the improvement here in qnestion. . To sustain this defense, reliance is placed upon the testimonyof R. C. Nugent, as to his prior use of a lower roll having a supporting extension. The only instance of the use of a machine thus organized, of which he speaks with any degree of certainty, was the case of a small machine which he exhibited at the Cincinnati exposition. He says he hfl,d an idea the lower roll should project far the plate to rest on, and in that machine he allowed it to stick out he thinks about three-quarters of an inch beyond the top roll; but finding the extension of no use, and indeed an impediment, he had it cut off. This machine, it must be remembered, was not flanging for the market, but was merely on exhibition. Moreover, such light work as it did was cold flanging. It had nothing to do with the treatment of heavy hot plates. If, then, we should accept all that Mr. Nugent says on this subject as strictly true, it still follows, from his own account of the matter, that he not only failed to reduce his idea to practical use, but after an unsuccessful experiment abandoned his conception. Hence this field of invention was left open to others to enter. Whl,tely v. Swayne, 7 Wall. 685. Again, it is contended that the supporting extension of the lower roll is within the scope of the prior Nagent patent, (No. 166,715,) and that, at the most, this improvement involved merely the exercise of ordinary mechanical skill. We search, however, the Nugent patent in vain to discover any suggestion or hint that the lower roll is to be extended beyond the end of the upper one, or that any useful purpose would thereby be subserved. On the contrary, the drawing shows the two rolls to be so arranged that their outer ends are in the same vertical plane, and the specification describes them as projecting an equal distance beyond the outside of the frame-work. The complainants, who had acquired the Nugent patent, in operating a flangingmachine built under it, experienced the practical difficulty already mentioned from the formation of a bead or ridge around the outside of the flanged plate. The solution of the problem, how to obviate this defect, involved-First, the discovery of the cause thereof; and then the application of an appropriate remedy. Now, the evidence indicates that neither the one nor the other was obvious. Indeed, the expert witnesses in this case yet differ as to the cause; and it is shown that it was not until after an experimental use of the complainants' original machine, extending over a period of perhaps several months, that the difHculty was met by the arrangement of the rolls devised by Russell and McDonald. I think, then, the improvement may fairly be ascribed to the exercise of the inventive faculty, and that it is the subject of letters patent within the general rule laid down in Loom Co. v. Higgins, 105 U. S. 580. ft is, however, strenuously urged that the organization of the rolls, as specified in Russell and McDonald's first claim, does not in fact
259
REPORTER.
prevent the formation of the objectionable bead or ridge. But surely such allegation comes with ill grace from parties who have seen fit to copy this arrangement. If it is inefficacious, why do they use it? To this searching query no satisfactory answer has been given. The defendants' witnesses say the admitted difficulty arising from the formation of the bead or ridge can be and is obviated by placing the pivotal point of the table which holds the plate in a certain position with reference to the flanging rolls. I am by no means persuaded that in this they are correct. But if they are right, the defendants are at liberty to resort to that mechanical arrangement. So long, however, as they employ the patented improvement they ought not to expect a defense resting upon an alleged want of utility to find much favor with the court. But I may add that upon the question of utility the weight of the evidence, in my judgment, is clearly with the complainants. Having reached the foregoing conclusions as respects the first claim of the patent in suit, I deem it unnecessary to determine whether or not there has been infringement of the second·claim. Let a decree be drawn in favor of the complainants.
PARKER,
Trustee, and others v.
STOW.
(Oircuit Oourt, D. Oonnecticut.
March 23, 1885.) BABY CARRIAGES-
PATENTS FOR INVENTIONS-PATEN'l'ABII,ITY-AN'l'ICIPA'l'ION MOVABLE Tops-INFRINGEMEl'i'r.
Reissued patent No. 10,363, granted to Horatio G. Parker, trustee, August 7, 1883, for an improvement in children's carriages, compared with the patent issued February 11, 1868, to Buin & Ulrich, and the patent issued June 9, 1868, to Eliphalet S. Scripture, and the first claim of said reissue !teld valid, and infringed by sales by defendant of carriages having a canopy top, rigidly secured to two rigid arms, one depending on each side of the carriage, and pivoted at their lower ends to standards rigidly fastened on each side of the carriage body by means of friction-plates lind a thumb-screw, which causes the plate to which it is attached to relax or renew its grasp, so that the top can be moved in any position, and may drop in front of the seat or behind it, or may be held in an upright or intermediate position.
In Equity. Strawbridge d; Taylor and Benj. F. Thurston, for plaintiffs. John W. Konvalinka, for defendant. SHIPMAN, J. This is a bill in equity to prevent the infringement of reissued letters patent No. 10,363, granted to Horatio G. Parker, trustee, August 7, 1883, for an improvement in children's carriages. The nature and distinctive features of the invention are desctibed in the specification of the reissue as follows: "This invention relates to that class of carriages haVing a square or canopy top, and its object is to enable the child to be seen and taken from t he carriage by the attendant withont leaving the position she must occupy for propelling it by the handle at the back; and also to enable the child's face to be protected from the sun or wind when they are in the direction in which the carriage is pushed; and it consists in such an arrangement and construction that
