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.
8.
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.
4.
SAME-CARPENTER PATENT
No.
116,411-HooP-SKIRTS.
Merriam 1 Edited
« Whipple, for complainant.
by Cha! lea C. Linthicum, Esq., of the Chicago bal'.
WETHERELL 'lI. KEITH.
365
Moses, Newman It Reed, for defendants. BLODGETT, J. This is a bill for an injunction 'and accounting by reason of the alleged infringement of letters Patent No. 116,411, granted June 27, 1871, to Charles C. Carpenter, for "an improvement in hoop-skirts," and duly assigned to complainant. The device covered by the patent is probably best described by the patentee himself in his specificatiolls. He says:
"My invention is an improvement upon the skirt patented by Samuel Peberdy, November 30. 1858, in which the hoop or skirt is continuous, and is wounrl spirally from the top to the bottom of the skirt; and also upon the hoop-skirt patented by William H. Towers, November 17,1868, having an upper and a lower nest of hoops and an intervening space; and my said improvement consists in forming the lower nest of the skirt of the same wire which crosses spirally the space between tIl() upper and lower nests, and unitE'S the two nests together; also in forming the lower portion of the bustle, and front guarns or fenders for the knee>l, by a series of wires attached to and starting from the front of the waistband, and pas:;ing spirally around both sides of the skirt, interlacing with each at the bustle, and terminating at the front of the waistband; by which improvements the following, among Qther desirable advantages, are obtained, viz.: economy in the manufacture of the skirt; increased stiffness and supporting power by the interlacing at the baek, near the top or waist; and front guards or fenders to prevent the projection of the knees through and into the intervening space; and rendering the skirt more agreeable and convenient for the wearer. * * * The lower skirt or nest of hoops is formed by a single wire, one end of which is attached to one end of the front tapes of the bustle, and continuing around spirally, parallel with the continuous fender and bustle wires, leaves the same at the front thereof, and forms, by continuous revolutions, the lower nest. separate and distinct from the upper, and yet connected to it by the same wire from which the lower nest is formed, thus obtaining a hoop-skirt having two nests, with the intervening wires forming a part of both nests, and holding the lower nest from swaying."
The patent also contains a disclaimer in the following words "I am aware that one or more bracing hoops, which extend from a point at or near the top of the skirt at the back to a point at or about the height of the knees of the wearer in front, have been patented by Charles E. Pratt, July, 1870. and I therefore do not claim such bracing hoops as lIly invention."
The claims of this patent are as follQws: "(1) In a hoop-skirt having an upper and a lower nest of hoops, with an intervening space, the lower or skirt nest thereof formed by the same hoop, 9, which passes spirally through the space between the upper and the lower nests. and unites the two together without use of separate wires or fastenings, as described. (2) The lower portion of the bustle nest and the knee-guards or fenders of the lower mst, formed by one and the same series of wires, 5. 6, 7, and 8, in the manner described. (3) The bustle and knee-guard wires crossed and interlaced at the back, for the purpose of increasing the strength and supportiilg power of the skirt at the back, as described. (4) In.a hoopskirt in which the lower nest is formed of a continuous wire, which also unites it with the bustle nest, the combination therewith of the separate wires, 5, 6, 7, and 8, crossed and interlaced at the bustle or back, and the kneeguards or fenders, g, formed thereby, crossing the front space above the lower hoops, as described."
366
FEDERAL REPORTER.
The fact of infringement is conceded, and the only defenses set np are want of novelty, and the public use for more than two years before this patent was applied for. The witnesses by whom a prior use is attempted to be shown are Max Schwab, Robert G. Lester, and August Seligman. Schwab states that he made skirts constructed like the patent in Ottawa, Illinois, about 16 years before the date of his deposition, his testimony having been taken in December, 1884; that he copied the skirts he so made from one he bought of a traveling man. He seems to have had a small store at Ottawa for about two years, but is unable to fix the date when he began and closed the business there, and says he employed about 10 persons such hoop-skirt, and yet can give the names of none of them. Lester and Seligman testified to seeing skirts in the market as early as 1864, but their testimony is indefinite. No skirts, or patterns of skirts, or forms on which they were made, are produced; and both witnesses are contradicted in many important particulars by persons to whom they referred as being connected with them at the time they claimed to have seen the skirts in question. The proof also shows that both Schwab and Seligman are infringing the complainant's patent, and that Lester is in the employ of Seligman. The proof also shows that C. C. Carpenter & Co. began the manufacture of hoop-skirts of the structure shown in this patent in 1870, and put them quite extensively upon the market; and I think it is more than probable that these two witnesses are all mistaken as to the time when they first saw these skirts on sale. and that they did not see them until Carpenter had commenced their manufacture, for which he subsequently obtained a patent in apt time. Upon the whole, then, I come to the conclusion that the defendan ts' proof of prior use is not sufficiently clear and certain to establish such prior use before the date of Carpenter's invention. The rule as laid down in Coffin v. Ogden, 18 Wall. 120, and Washbu1'n <t Moen Alanuf'g Co. v. Haish, 4 Ped. Rep. 900, requires that the fact of prior use shall be established beyond reasonable doubt, and I cannot say that this is done by the proof in this case. I therefore find that the patent is valid, and that the defendants infringe, for which the complainant is entitled to damages, and a decree may be prepared accordingly.
BACINE SEEDER CO. V. JOLIET WIRE-CHECK ROWER CO.
367 (Bill and
RACINE SEEDER CO. 'U. JOLIET
WIRE-CHECK
ROWER
CO.
Cross-Bill. )l (Oircuit Oourt, No
n. lllirwi8.
April 5,1886.)
PATENTS FOR INVENTIONs-INFRINGEMENT MUST BE PROVED.
In a suit for infringement of the fourth claim of letters patent No. 76,903, of February 21, 1868, for a broad-cast seeder, the only proof as to the kind of machine made by the defendant was the testimony of a witness that the defendant was makmg a seeding-machine with two holes and a disk. Held, "this proof does not make even a prima facie case of mfringementwithout proof showing that the feeding holes and disk in defendant's machine perform the same function as those covered by the fourth claim of the Floyd patent. "
9.
SAME-EQUITY JURISDICTION.
As this patent was within about two months of its expiration at the time the bill was filed, held, that it was doubtful whether, under the rule in Root v. Railway Co., 105 U. S. 189, the court had jurisdiction in equity, and the bill was therefore dismissed without prejudice to a suit at law.
SAME-BARGAm-WHAT IS EVIDENCE OF.
Where parties had met and discussed the subject of the purchase by one of a patent from the other, but the terms of purchase were not fixed in the personal interview, but were subsequently settled by interchange of letters between the parties, helil, that these letters were the evidence of what the bargain was. A party who clothes another with the lelSal title to a patent, and relegates to the assignee the question as to who shall have the benefit of the purchase, is estopped to complain of fraud because another was not allowed to share in the benefit of such purchase.
SAME-EsTOPPEL.
SAME-AsSIGNMENT OF PATENT-CONVEYANCE BY RECORD OWNER VALID.
Where a party owning the title of record to a patent for over six months conveyed it for a valuable consideration to a corporation competent to purchase and hold it, and whose title was made a matter of record in the patentoffice, held, that this title could not be attacked for fraud in the assignor to the corporation.
6.
SAME-KNOWLEDGE OF ACT OF AGENT BINDS PRINCIPAL.
S. claimed that a bank had, against instructions, delivered a deed to a patent without payment of purchase money, instead of holding the deed as collateral to secure a note given in payment. It appeared that S. knew of the action of the bank, but took the note and discounted it. Held, that S. could not be allowed, even against his immediate assignee, to treat the deed as having been obtained by such fraud as would vitiate it.
'7. SAME-PERSONAL LTCENSE UNDER A PATENT, NOT ASSIGNABLE.
S. empowered R., by contract in writing, as his lawful attorney, to sell rights under a patent at prices to be approved by S. for the then unexpired term of the patent, and authorized H. to manufacture under the patent at a certain royalty, but reserved the power to revoke the contract in case H. should not faithfully perform his agreements under it. lIeld, that the contract, both as a power to sell and as a license, was a merely personal one, and not transferable by H. except with the consent of S., and that when S. parted with his tit.le to the patent he parted with his right to sanction or vivify any assignment from H.
This was a bill to restrain infringement of two patents, one of which had about two months to run at the time the bill was filed. Defendant's answer denied infringement of one of the patents, and alleged that it was void for want of novelty, and admitted that the 1 Edited
by Charles C. Linthicum, Esq., of the Chicago bar.