CELLULOID MANUF'G CO. ". COMSTOCK &: CHENEY CO.
359
the determination of the question of its patentability. McOormick v. Seymour, 2 Blatchf. 240; Furbush v. Oook, 2 Fisher, 288; Middltton Tool Vo.v. Judd, 8 Fisher, 141.
8.
SAME-INVENTION-EvIDENCE INDEPENDENT OF UTILITY ARD NOVELTY NOW REQUIRED.
The decision in Hollisterv. Benedict & Burnham Manufg 00.,113 U. S. 59, S. C. 5 Sup. Ct. Rep. 717, makes independent evidence of the existence of inventive skill, apart from inferences of such existence which may be drawn from novelty and utility, to be of greater importance than has been understood heretofore.
4.
SAME-HYATT PATENT-CELLULOID COVERING FOR PIANO KEYS.
The question of patentability in Hyatt's invention again considered, and the patent sustained.
5.
SAME-HYATT'S INVENTIO:N.
There was the creative faculty of invention in the abandonment of the ineffectual and mechanical attempt to make single celluloid keys in imitation of ivory single keys, and in the conception of the idea of covering a whole key board with a single celluloid sheet. ·
6.
SAME-PRACTICE-SUSPENDING ACCOUNTING.
The patent in suit havinl?' been declared void for want of novelty by another court, (Celluloid 1l1anuf g Co. v. Tower, 26 Fed. Rep. 451,) from which decision a notice of appeal to the supreme court had been given, a stay of the ar.counting was asked in this case; but as the facts in this case had features not brought out in the other case, held, that there was no adequate reason for a stay of the accounting.
Motion for Rehearing. The former opinion was rendered July 31, 1884, and is reported in 21 Fed. Rep. 313. The important ground of the motion was that since the date of the former opinion the supreme court of the United States had, by judicial authority, in Hollister v. Benedict et Burnham Manufg Co., 113 U. B. 59, S. C. 5 Sup. Ct. Rep. 717, and Thompson v. Boisselier, 114 U. S. 1, S. C. 5 Sup.{)t. Rep. 1042, so far changed the law of the land governing reissues as that the claimed invention purported to have been secured by the letters patent in suit is excluded from claims to patentability. John K. Beach and John S. B.each, for the motion. Frederick H. Betts, against the motion. SHIPMAN, J. This is an application by the defendant in the aboveentitled case for a rehearing. The hearing upon the application was considered to be practically a rehearing or reargument of the question of patentability. The facts were substantially stated in the opinion of the court in 21 Fed. Rep. 313. rrhe important ground for a rehearing is stated in the application as follows: "That since said interlocutory order and decree was passed the law of the land governing the question of patentability of inventions has been so far changed, under the judicial authority of the supreme court of the United States, as that the claimed invention purported to have been secured by the letters patent in suit is excluded from claims to patentability. The opinion of this court was rendered July 31,1884. The decisions of the supreme court to which reference is made are lIollisterv. Benedict et Burnham Manuj'g Co., 113 U. S. 59, S. C. 5 Sup. Ct.
860
FEDERAL REPORTER.
Rep. 717, and Thompson v. Boisselier, 114 U. S. 1, S. C. 5 Sup. Ct. Rep. 1042. The first of these cases was decided January 5, 1885. The following sentences from the former opinion of this court state the point in controversy with sufficient clearness: invention did not consist in the snbst;tution of celluloid for ivory, Whereby a redudion in the price of keys was caused, but it consisted in the fact that, by the use of celluloid, there was practically furnished a new and useful moue of constructing key-boards, viz.· by cementing to the board a :single sheet of the veneer, instead of by gluing a large number of separate pieces of ivory, which must each be matched and separately fastened to the w00d. This new method of construction was impracticable with ivory, or with any material which was known before celluloid was manufactured, and it required invention to find out and demonstrate that key-boards could be manufactured so as to be a commercial article by covering their upper surfaces with a single sheet of a material which would make an attractive and permanent coati ng for the wooden keys, becanse from the fact that celluloid existed it by no means followed that a key-board could be sufficiently and successfully covered with it."
The single point now in the case is this: In view of the recent judicial statements of the requisites necessary to cause a new and useful improvement to be a patentable invention, as contrasted with the method of reasoning by which judges were formerly accustomed to pass upon the question of ·the presence of inventive skill, was the decision of the court in favor of patentability correct? It has always been the law that a patentable invention, although new and useful, must be the result of something more than and different from mechanical skill; but the existence of novelty and utility in a patented thing was potent in the determination of the question of its patentability. Tbis is clearly shown in the charges to the jury of Mr. Justice NELSON in McConnick v. Seymour, 2 Blatchf. 240, and of Mr. oTustice CURTIS in Furbush v. Cook, 2 Fisher, 288. Judge 'VILLIAM D. SHIPMAN in Tool Co. v. Judd, 3 Fisher, 141, expressed the views which judges were wont to entertain in regard to the rigor with which courts should search for the presence of inventive genius as follows: "Whenever a change or device is new and accomplishes beneficial results, courts look with favor upon it. The law in such cases has no nice standard by which to gauge the degree of mental power or inventive genius brought into play in originating the new devices." In Hollister v. Benedict & Burnham Manuf'g Co. the court was called upon to consider an improvement which was admitted to be novel, and to be of superior ntility, and which was not a slight advance in the art, but which was yet held to involve "only the exercise of the ordinary faculties of reasoning upon the materials supplied by a special knowledge," and not. to be the "creative work" of the "inventive faculty." The facts which were apparent in the record of the case, and which are disclosed in the opinion, as well as the vivid language of Mr. Justice MATTHEWS, who spoke for the court, make the decision a very significant one; for the stamp which the iuternal revenue department caused to be used was a marked im-
CELLULOID MANUF'G CO. tI. COMSTOCK: & CHENEY CO.
861
provement upon its predecessor, remedied a serious evil, and was regarded by the department with great satisfaction. It must be seen that this decision makes independent evidence of the existence of inventive skill, apart from inferences of such existence which may be drawn from novelty and utility, to be of greater importance than has been understood heretofore. The facts in the case fully justify the finding of novelty aud utility. 'l'he facts upon the question of invention are these: While the idea of a continuous ivory key-board has been attempted, it was practically and commercially a failure. Celluloid for single keys had been suggested and attempted, and was a failure. A continuous covering for a key-board would probably diminish the expense of production. Hyatt had unsuccessfully tried celluloid strips for single keys. He abandoned that idea, and got the idea of using a single sheet of celluloid, and waited until he had succeeded in satisfactorily making thin sheets. This manufacture of thin sheets was a very important step in the art, and caused celluloid to be capable of a new variety of uses. He then applied these sheets, having the capacities of ness, smoothness, susceptibility of polish, and uniformity of color, to a piano key-board. On the one hand, the argument is that the inventive, the creative, idea-the genius-of the inventor consisted in the conception that the use of a whole sheet of celluloid would overcome the difficulties which attended the use of single strips, and would make a key-board equal to and cheaper than one made of ivory strips, and that subsequent experiment successfully embodied and carried into effect the idea. Polished sheets and various kinds of cement were tried and abandoned, and finally the sheet which is now in use was found to be adapted to the necessities of the work. On the other hand, it is said that a ccmtinuous veneer of a blank key-board was not a new idea; that it had been accomplished; and that when the new thin sheets of celluloid had been produced the idea of applying the sheet, and the application of it to a key-board, was merely the "display of the expected skill of the calling." To produce the sheet required invention, but the application of the sheets as a substitute for ivory was the work of the mechanic· . While the mind may hesitate whether one or the other line of argument preponderates, I think that there was the creative faculty of invention in the abandonment of the ineffectual and mechanical attempt to make single culluloid keys, in imitation of ivory single keyR, and in the conception of the idea of covering a whole key-board with a single celluloid sheet,-an idea which, when embodied, turned into commercial success what had previously been only an unsuccessful theory in regard to a similar use of ivory. It is urged by the defendant that inasmuch as the circuit court for the district of Massachusetts in the case of the PlaintiJ! v. Tower, 26 Fed. Rep. 451, had decided the plaintiff's patent to be void for want of patentability, and the plaintiff has given notice of an appeal to the supreme court, it
362
would be proper to suspend the accounting in this case until the Tower Oase shall have been tried. Upon the facts as detailed in the opinion of the court the decision of the 7'ower Onse was right. The facts in. this case have features which were not apparently brought out in that case. Therefore I think that there is no adequate reason for a stay of the accounting. The motion for rehearing is denied. .
NEW YORK BELTING
&
PACKING
Co. v.
MAGOWAN
and others.'
(Oircuit Oourt, D. New Jersey. February 18,1886.) 1. PATENTS FOR INVENTIONS.
LettAr8 patent No. 86,296, of January 26, 1869, to the New York Belting & Packing Company, as assignee of Dennis C. Gately, for improved vulcanized rubber packing, sustained, and held infringed.
S.
SAME-DISTINCTION BETWEEN INVENTION AND MECHANICAL SKILL.
The line between invention and mechanical skill is not always clearly drawn. Invention indicates genius and the production of a new idea. Mechanical skill is applied to an idea, and suggests how it may be modified and made more practical. The fact that the patented device went at once into such extensive public use as almost to supersede older devices is pregnant evidence of novelty, value, and usefulness. and accounts for the defendants' infringement.
SAME-EXTENSIVE ADOPTION OF DEVICE. EVIDENCE OF INVENTION.
On Bill, etc. Turner, Lee & ]JfcOlure, for complainant. F. E. Lowthorp, Jr., for defendants. NIXON, J. Letters patent No. 86,296, for "improved vulcanized rubber packing," were granted to the complainant corporation, as assignee of Dennis C. Gately, on January 26, Itl69, and this suit is brought to recover profits and damages for their infringement. The answer of the defendants (1) denies infringement; (2) alleges that Gately was not the original and first inventor of the thing patented; and (3) claims that the letters patent are void, (a) because the single claim is too broad, covering more than Gately invented; (b) because the specifications fail to sufficiently distinguish between what was novel and what was old in the art; (c) because, in view of the state of the art at the date of the issue of the patent, no invention is exhibited and shown. The defense of non-infringement was not well taken, not being sustained by the evidence. The packing by the Gefendants in 1882 and 1884 were exhibited. The first was an exact counterpart of tbe complainant's product under its patent, and the second was a feeble attempt at evasion, by having only the central
by ChaTlel! C. Linthicum, Esq., of the Chicago bar.
NEW YORK BELTING &: PACKING CO. tI. MAGOWAN.
363
pad of the inner surface of the canvass, next to the piston-rod, cut bias. . The other defenses, which may be fairly gronped under the single allegation of want of patentability of the invention, in view of the state of the art, have caused more difficulty, and required more careful examination. In the specifications of the patent the inventor states that his invention relates to packing of the kind for which letters patent were issued to Charles McBurney on June 28, 1859; that the defect of the McBurney invention was that the packing was not sufficiently elastic to maintain a tight joint between it and the piston, and that he has secured this greater elasticity by "forming the packing with a backing of pure vulcanized rubber, · · · which may be covered and protected by a strip of canvas or other suitable fabric." He claims that when a packing thus formed is placed in the stuffing-box and around the piston, and the follower is screwed down, so as to compress the packing, the rubber strip will also be compressed aud forced against the sides of the stuffing-box, and, as it cannot expand in the direction of the follower, it acts as a spring to hold the packing against the piston-rod, and to prevent leakage, compensating for any slight wear in the packing, and making a. tight. joint between the rod and the packing. The claim of the patent is: "The combination with the packing, such as herein specified, of an elastic backing or cushion of vulcanized India rubber, substantially as and for the· purposes set forth."
It is quite clear from these specifications that the patentee eonceived that he had remedied the defects, and made an improvement upon the then existing McBurney patent. Turning to that patent, we find that it was granted on J nne 29, 1859, for an "improvement in packing for stuffing-boxes of pistons." It was claimed by the inventor to be a durable substitute for the hempen packing before employed in stuffing-boxes,-more easily adjusted to produce a uniform pressure upon all sides of the piston-rod,-but in practical use it fell short of accomplishing what the patentee claimed for it. Frequent complaints came from the purchasers to the manufacturers that it was too stiff and rigid, and was not compressible enough to make a tight joint in the stuffing-box. Gately, the patentee, who was the superintendent of the complainant corporation, set himself to the task of overcoming the defects. He made several experiments, and the result was the patent on which the suit is brought. He added to the McBurney packing the elastic backing or cushion of vulcanized India rubber, which not only rendered the whole more compact· and more elastic, but, being compressed between the follower and the sides of the stuffing-box, acted as a spring to hold the packing continuously against the piston.rod, thus making a tight joint, which had not been attained under the McBurney invention, and was not shown to have been so well accomplished under any other patmt.
I'EDElU.L BEPORTEJL
a thing devised is due to the genius of an inventor, or to the mechanical skill of a workman, is often a difficult question to determine. The line between them is not always clearly drawn. Invention indicates genius and the production of a new idea. Mechanical skill is applied to an old idea, and suggests how it may be modified and made more practical; and, according to Smith v. Nichols, 21 Wall 112, such mere modification is not patentable unless some new and useful result is secured. The complainant's patent is nearly on the line dividing invention from mechanical skill; but, after carefully comparing it with the exhibits which are put in to show anticipation and its lack of patentability, I am of the opinion that the combination reveals invention, not so much because the packing is more elastic by reason of the addition of pure hard rubber, but because the patent discloses a new and better method of obtaining a tight joint between the packing and, the piston-rod than has been obtained by any other combination of elements, new or old. It is a fact not to be overlooked, and has much weight, that the product manufactured under it went at once into luch extensive public use as almost to supersede all packing made under other methods. Such a fact is pregnant evidence of its novelty, value, and usefulness, and accounts for the defendants' infringement. Let a decretl be tlntered ill favor of the complainant, and for an ac"aunt.
WETHERELL v. KEITH and others.' (Oircuit Oourt, N. D. Illirwt'B. 1886.)
1.
PATENTS FOR INVENTIONS-EYIDENCE OF PRIOR USE.
In order to defeat a patent on the ground of prior use. such use must be elltablished beyond reasonable doubt. Go.1fin v. Ogden, 18 Wall. 120; Wa8hburn &; "l{oen Manufg 00. v. Hai8h, 4 Fed. Rep. 900.
21. SAME.
Where a witness testified to his use of a patented invention 16 years before the time when he testified, and that he employed some 10 persons in its manufacture, and yet could not tell the names of any of such persons, held, that his testimony failed to make out Ii defense.
SAME.
Two witnesses testified in 1884 to seeing the patented device in use in 1864, but their testimony was indefinite, and contradicted in many important particulars, and none of the alleged prior devices were produced. Held, insuf· ficient to defeat the patent. This patent sustained over the alleged prior use by Max Schwab, at Ottawa, lllinois, and that seen by Robel't Lester and August SeligmlW, in 11:l64.
SAME-CARPENTER PATENT
No.
116,411-HooP-SKIRTS.
Merriam 1 Edited
« Whipple, for complainant.
by Cha! lea C. Linthicum, Esq., of the Chicago bal'.