29 F. 508 -

508

FEDERAL'REPORTEB.

threatened criminal prosecution therefor. ' It is for you to say whether this account is reasonable and: satisfactory. He explains the possession of the sum of money found with him at the time of his arrest by the statement that it wa.s th:aproceeds of his winnings at cards. You will determine what weight to attach to that statement. You must not find your verdict·in view of any isolated portion of the e.idence before you. You must carefully take into consideration all the evidence that has been admitted, considering, as well, the evidence for the prosecutIon. for Evidence has been introduced to show the general character of the accused antecedent to this transaction. Good charaoter is generally a fact fit, like all other facts proved in the cause, to be weighed and estimated by the jury. Good character is an ingredient which may render that doubtful which would otherwise be clear. If the guilt of the accused is plainly proven to:the satisfaction of the jury, notwithstanding the goodoharactsl' of the accused has been given its due weight by them, it would be theil1duty to convict the defendant, irrespective of such proof of character: but, where the evidence is doubtful and conflicting, the importance of the charauter of the accuiled is increased. In ascertaining what is that character, the jury is not limited to the testimony of those who swear generally, but they may look to all the evidenoe,and then determine whether or not the accused possessed good character. There are' sevel'al counts in this indictment. You may, gentlemen, if you think proper, under your view of the evidence and the 'rules I have gi1en you, find theacousedguilty on one or more counts, and not guilty on the others. If so, you will say: "We, the jury, find the defendant, 'Will R. ;fackson, guilty on the first count, and not guilty On the others :"or guilty on the second and third counts, and not guilty on the others, as, you may find: If you find him guilty on all the counts, you will say: "We, the jury, find the defendant guilty." If yolJ. find him. not guilty, you will say: "We, the jury, find the defendant, WillR: Jackson, not guilty;" and your foreman will sign the verdict. Gentlemen, retire, and make up your verdict.

KITTLE 'l1. HALL

((Jircuit Oourt, S,

and others.

January B, 1887.)

n: NfJ}b York.

,1. PATENTS FOR 1,2, AND 3-PATENT TO JAMES I. SPENCER. Letters patent No. 98,505, granted to Samuel P. Kittle, January 4,1870, for an improved spiral spring for mattresses and furniture,as limited to the first two claims under such patent, are valid; and the patent granted to James I. Spencer, July 24, 1877, for an improvement in bed bottoms, is an infringemimt upon them. The third claim.; for a flexible border of rattan at-

KITTLE V. HALL.

509

a.

; tached to the outer the springs asa support to lteep the ticking in line, in combination webbing, etc., is not valid for the reason that it was inserted more than four years after the application was :flIed, and more than two years after the structure covered thereby had gone into public use.
SAME-SEVEN YEARS' DELAy-NOTICE TO DEFENDANTS-No DEFENSE.

In an action for infringement of letters patent. where it is shown that defendants.took a license from plaintiff to make and vend the patent, and subsequently.denied plaintiff's rights. and claimed to make under another patent; after such denial l?laintiff becatpe bankrupt, and the assignee in bankruptcy sold the patent after two years; that plaintiff entered into negotiationllito get the patent back from the vendee; that, though the vendee took nostepil to prevent the patent being plundered. plaintiff gave defendants notice 1;Ie intended to hold them accountable for their infringements: that. after hiB discharge from bankruptcy, and when he had reacquired the patent, plaintilI commenced action against defendants for infringement,-the court, sitting in equity. will, considering all the circumstances, take jurisdiction of the cause. notwithstanding a delay of about seven years in the prosecution by plaintiff of his rights.

In Equity. Jft1nesI:. Foster, for complainant. James A.Whitney, for defendants.
COXE, J. This action is for the infringement of letters patent No. 98,505, granted to the complainant January 4, 1870, for an improved spiral spring for mattresses and furniture. The double cone or hourglass spring is constructed by having one or more of its central coils wound at right angles to its axis, instead of spirally, as before. When several of these springs are used, as in a mattress, for instance, the central coils are all on t?e same horizontal plane, so that when strips of cross-webbing, fastened t6 a suitable frame, are passed between the coils, the springs are held firmly in a vertical position. It is asserted by the patentee that prior to his invention the spring in use CQuld not be successfully supported in the middle, or held in a vertical position. It had a tendency to "bag out." The specification provides for a slight wooden frame to support the webbing and the springs. The webbing, having its ends secured to this frame, is passed through and fastened to the central horizontal coils, each strip of webbing-passing alternately over and under the strip crossing at right angles. The middles of all the springs are th1;ls held iu the same relative position, their full elasticity is preserved, and durability is assured. The claims are as follows: "(1) A spiral spring, for use in mattresses, furniture, etc., so constructed .that its central coHor coils are wQund at right angles to its axis, substantially as and for the purpo.ses set forth.. "(2) 'rhe combination of a spiral spring, when constructed as described, :with the CJ;oss-webbing, C, O,and frame,D, or their equivalent, when arranged to support such spring, substantially as and for the purposes set forth. "(3) In a spring mattress, having .the springs supported from or at their centers, the arrangement of a rattan or a like :flexible border, attached to the outer edges at bottom and top of the outside rows of springs, to furnish a suit-able support to keep the ticking in line, but which will also yield as any spring orpltrt mattress is compressed."

FEDERALBEPORTEB.

The that',th&'compHtinanthasno to the patent; secon4, that be ,is guilty of,la;chesj ,tMrd,aband6nment; Jourfll" lack of novelty; fifth, non-infringement. To the third claim several. distinct and separate defenses' are urged, be " There is no ,flaw in. the complainant's title. On the thirty-first of December, 1877, he wasfor6edinto pankrtiptcy. The adjudication vested the title Onthe'Ell.eventh of April, 1878, the register in charge assigned all the property,as provided by law, to DeWitt C. Weeks, the dUly-appointedassighee. On the twenty-eighth of January, 1879, Weeks sold and assignedtlle patent to Francis C. Devlin. Six: days thereafter Devlin assigned it to Theodore Wilkins, who held it until the eighth day of October, 1884" when it was transferred by him to the complainant. On the fourth of October, 1878, the complainant was discharged in bankruptcy by the district court. The chain of title is perfect. No valid accusation can be made against it. . The proposition ,that the bill cannot be maintaineq because of the laches of ,the complainant is a mo&tperplex:ing orie. 1'hesolution of it has been rendered more difficult from the fact that. the complainant's brief, so full and exhaustive upon other branches of the case, makes only casual and passing allusion to the question, which is elaborately presented upon the brief of the defendants. The facts bearing upon this question are as follows: In the autumn of 1865 the patentee conceived the invention. On the fourth of January, 1870, the patent was granted. In February, 1885, 15 years thereafter, this action was commenced. In 1875 a suit for infringement was commenced against one James V. Schenck, but the proof's were not completed, and it w,as never brought to a final hearing. No step appears to have beeritaken in it after July, 1877. No other action was at any time commenced. In the autumn of 1877 the defendants commenced making the infringing mattresses. They were made under a patent granted to James I. 'Spencer, July 24, 1877, for an improvement in spring bed bottoms., In November, 1877, the defendants issued a circular to the trade, in which they insisted, in most vigorous and uncompromising language, upon their right to manufacture under the Spencer patent, and closed with these words: "We have only to say in conciusion that Mr. Kittle must do one of two things,__hemust stop interfering with our business, or he must bring suit upon his patent, and thus us a. chance to see how little it amounts to. Ifhe does not do one thing or the other of these, he will soon find himself defendant, instead of plaintiff, in a lawsuit." . The complainant appears to have chosen the first of these alternatives; for from thattime until this suit was commenced there was no more interference with the defendants or their customers, except, he testifies, that lw told the defendant iriApril, 1882, that It day of reckoning was approaching, and he wished him to keep a strict account of his sales. From December, 1877, neither the complainant, rior any of the intermediate owners of the patent, has manufactured or asserted any right

XITTlJl: ..1!·. HALL.

511

Mr. Devlin, who held the patent but a short time, all knew of the in-

under it, ex6ept as before. stated.' The assignees, with the exception.of

fringement, by. the· defendants not only, but by the trade generally" and yetthey made no move to preV'ent:it, though frequ.ently urged to doso. In short, the patent, from the fall ofl877 , has been pirated upon by,the whole trade. Since then no one has respected it, On the fourth of February, 1876, the defendants, then doing business a.t Philadelphia, took from the complainant a license to make and vend the patented mattress in that city for one year. The license provided that, in case of the·failure ofthe defendants to perform the conditions of the license, the same was to become null and void, and all rights and privileges under it, to cease.and determine. These are the facts. Bearing in mind the theory upon which equity takes cognizance in patent-causes, as established by the decision of the supreme court in Root v. Rauway (h., 105 U. S. 189, it becomes important to ascertain what the law is as applicable to these facts. The accumulated wisdom of a multitude of precedents has established the principle that he, :who invokes the protection ofa court of equity must be "prompt, eager, and ready" in the enforcement of his rights. Equity will not encourage a sleepy suitor. As time passes, memory fails, witnesses die,lproof is destroyed, and the rights of individuals and of the public intervene. Long ,acquiescence and laches Can only be excused by proof showing excusable ignorance, or positive inability to proceed on the part of the complainant, or that he is the victim of fraud or concealment on the part of others., A mere "imaginary impediment or tech.nical disability" is not enough. The court will not entertain a case when ,it appears that the complainant, or those to whose rights he has succeeded,. have acquiesced for' a long term of years in the infringement of the exciusiveright conferred by the patent, or have delayed, without legal excuse, the prosecution of those who have it. These propositions are, it is thought, abundantly sustained by the following authorities: Piatt v. Vattier,9 Pet. 405; Wyeth v.Stone, 1 Story, 273;,McLaughlin v. People's Ry. (h., 21 Fed. Rep. 574; Spej,dell v. HeruM, 15 Fed. Rep. 753;'1!heFleming, 9 Fed. Rep. 474; Estes v. Worthington, 22 Fed. Rep. 822jBarden v. Duluth, 28 Fed. Rep. 14; Wagner v.. Baird, 7 How. 234; Oily of Concord v. Norton, 16 Fed. Rep. 477; B(Ldger'v.Badger,2 Wall. 87; WoUensak v. Reiher, 115 U. S. 101; S. C. 5 Sup.Ot. Rep. 1137; Braum v. County of Buena Vista, 95 U. S.157; Lansdale v.Smith, 106 U. S. 391; S. C. 1 Sup. Ct. Rep. 350; Godden v. Kimrriell, 99 U.S. 201; Maxwell v. Kennedy, 8 How. 210; Sperry v. Ribbans,3 Ban. & A. 260; Curt. Pat. §§ 440, 441; Walk. Pat. §§ 596, 597; Porn. Eq. Jur. §§ 418,419. In the present case it is argued with considerable plausibility that the complainant, from the date of his patent until the cOIUmencement of this action,with. the exception ,of the abortive and aban\-loned suit against Schenck,has made no active effort to stop infringements, although they before thepatentwRsissued, and continued. with the knowledge of the complainant, until they were well-nigh universal; that the

·

512

FWERAL .REPORTER.

public had ll. right to assume, from this profound' silence and supineness, that the'patentee lind his successors 'had relinquished any. claim which p()Ssess. Tha.complai;nant seems to proceed upon that, if it be shown that he . is free.· from 'negligence, it sufficient" and that he shows this wheIl: it appears that the. title passed out of him when he was adjudicated a bankrupt, and that when he obtained it again in October, 1884, he used due diligence in prosecuting infringers. . The proposition, stated thus broadly, cannot be maintained. Aparty who purchases a patent which has for years been freely plundered by a multitude oftrespassers does not answer the charge of laches by showing that he commenced, immediately after he acquired title, to bring the wrong-doehi to account. Such a fact,is of no more interest to a defendant sued for infringement than the fact that the last holder of an lawednote brought an action upon it without delay, isi to the maker of the note. But, so far as these defendants are concerned, it cannot be maintained that there was any laches until they stood out from under their license, and boldly proclaimed their purpose to continue the manufacture under the Spencer This was iJiNovember, 1877. A month later the complainant was in bankruptcy. It was not until the eleventh of :April, 1878, that the patent was transferred to the assignee in bankruptcy: He held thetitlemntil the twenty-eighth of January, 1879. During this period, wbendhe patent was ill the court of bankruptcy, negligence can be imputed to no one. For,several months the title was suspended, and no action could have been maintained; and, as to the remainillg time, it cannot be maintained that it is·,the duty of an assignee in bankruptcy to institute suits, for the infringement of a patent owned by the bankrupt, and that his'failure so to do is negligence. Wilkins held the patentfrom Febrl1ary3, 1879, uritilOctober 8, 1884, and no valid reason is discovered in the' record why he could not have made SOhle effort to prevent the patent from being plundered. It appears, however; that the complainant early commenced negotiations with Wilkins looking to a reassignment:of. the patent, and that in April, 1882, the defendant Hall had notice that the complainant still asserted its validity, and intended to hold him to a strict account. ' Furthermore, it is entirely clear that,whatever may be said as to other manufacturers, the defendants were not misled. The defiant challenge of their circular leaves no doubt that they had made up their minds as to the course to be pursued, and that they did not intend to desist unless prevented by the command of the court. So the simple question is, will equity refuse to entertain a cause where, in the circumstances disclosed by this record, there has been a delay of about seven years in its prosecution? The question is an interesting one, and is by no means free from doubt; but it is thought, taking into consideration the fact that the. delay has been partially accounted for and excused, that the case is in 'Some respects 8Wi generis, and that no precedent has been discovered for the dismissal of a bill for laches extending through so short a period; tMt it should be answered in the negative.
I

KITTLE 1'. JlAL,L.

513

·It is entirely clear that the inventiQn must be confined .to what is covered by the. first and second claims.. :The accusations urged against the third claim ,are so llumerouathttt it: will be impossible to consider them aJ1..: ,Itissaid that the drawingltwhiph relate to it are defective, that the the claim wasiabandoned to the public; that no ap.pli,filed for the .invention which it covers; that it is fora mere aggregation, and not for a patentable combination; and that it·iS void'for uncertainty. Ris· by .DOmeanS an easy task to place an intelligent construction upon this claim. The expert witnesses do not agree6.8 to ft,inclpdes, .and in one instance, at least,the:same. wheui,he is· again called to. testify, greatly modifies .his first opinionre.-: garding it. It may be said that, if the broad construction suggested is adopted, the claim is anticipated; if the narrow one is taken, the defend" anfifdb not infringe.., . ' .. ·. . '.. But the manner in which the claim found its way into the patent was irregular, and, it would seeD1, illegal; and the public acquired vested. rights in the invention covered by the claim years prior,to its first ap,pearance,iathe patent-office. The application was filed November 28, 1865. It recites that the petitioner has invented, not a new mattress, but 'a'Der-improved spiral spring, and prays that a patent may issue when issued. therefor.' . No other application was ever filed. TI;le was for a spring alone. . The claims of the original speCification-three in number-related only to the spring, and former" on which it was constrtlcted. The applicatiun was .rejected. A year later, the patentee,after corres,pondence with the commissioner, forwarded amendments omitting the claim for the "former," and substitutingthe present second claim for the proposed third claim j so that the patent then had but two claUns,...,.....the first and second as they now appear. On· the tenth of December, 1866, the application was re-examined, and again rejected. Nothing more was done until November 22, 1869, when a request was made by the complainant, through his solicitor, for a re-examination of t,he case. This was granted,and the patent allowed about the twentyseventh of the same month. Three weeks thereafter, on the seventeenth of December, 1869, the solicitor wrote the commissioner proposing. if it was not· too late, that the present third claim should be inserted. It was inserted. So far as appears from the file-wrapper, the attention of the patentoffice was never called to the third claim until December, 1879, and then only by this letter of the solicitor. For more than two years prior to the first suggestion of this claim, mattresses, embodying all its elements, were, with the knowledge and consent of the complainant,bought and sold in the open market. In this connection it is worthy of comment that one of the defendants testifies that the complainant repeatedly infonned him, insubstance, that his invention was confined to the spring, and the mode of fastening it, and that the third claim could not stand the test of a judicial examination. This testimony is not denied. Assume that the patent had been granted in 1865 fora spring as prayed fOl:, and on the seventeenth of December, 1869, four years later, the v.29F.no.11-33

514.

FEDERAL REPORTER.

complainant had petitioned for a new or reissued patent covering the combination of the third .claim, it needs no citation of authorities, to prove that such a proceeding would not have been received with favor by the cQurtjand yet how is the' position strengthened by an attempt to graft the invention upon an'application which will not sustain it, especially when it is shown that during the interval the invention went into public use? In Rauway Co. v.Sayle8,97 U. S. 554, Mr. Justiee BRADLEY, at page 663, says: ..It will be observed that we given particular attention to the original application, drawings, and models filed in the patent-office by Thompson and Bachelder. We have deemed it proper to do this, because, if the amended application and model, Il.led by 'l'anner five years later, embodied any material addition to or variance from the original,-anything new that was not comprised in that,-such addition or variance cannot be sustained on the original application. The law does not permit such enlargements of an original specification, which would interfere with other inventors who have entered the field in the-mean time, anymore than it does in the case of reissues of patents previously granted. Courts should regard with jealousy and disfavor any attempts to enlarge the scope of ,an application once filed, or of a patent once granted, the effect of which would be to enable the patentee to appropriate other inventiollsmade prior to such alterations, or to appropriate that which has, in the mean time. gone into public use." See, also, Eagleton Manuf'g Oo.v. West, etc. , Mamif'g Co., 111 U. S. 490j S. C. 4 Sup. Ct. 593; at circuit, 2 Fed. Rep. 774; Planing-machine 00. v. Keith, 101 U. S. 479; Fruft.jar Co. v. Bellaire, etc., Co., 27 Fed. Rep. 381; Lindsay v. SWini, 10 Fed. Rep. 913j United States Rifle, etc., Co. v. Whitney Arma Co., 14 Blatchf. 94;' Consolidated Fruit-jar 00. v. Wright, 12 Blatchf. 149; affirmed, 94 U.S. 92; Bevin v. EaSt Hampton BeU 00.,9 Blatchf. 50. . It is asserted that the, in\'ention, confining it to the spring and the means of fastening it, is void for lack of novelty. The proof shows that prior to the patent it frequently happened that double cone springs, made ofiron wire, which was then in use, "broke down" in the center. ThiS occurred from accident: or want of skill in the maker. When, in this condition, they were regarded as second-claes or damaged springs, and were sold as such for use in cheap and inferior furniture, the central coils, whieh in some instances, to be at right angles to the axis of the spring, were not ofthe same size, so that when in use the smaller coil would frequently pass through the larger, thus causing the spring to rattle. These springs did not break down in the same place, and were incapable of performing the functions ofthe patented spring, even if anyone had thought of'putting them to this use; but no one ever. did. Neither the' damaged' springs, nor the French patent, nor any of the other references, is suffieienttodefeat the patent. The evidence all falls far short of that. blear and cOnvincing proof which is required in such cases. Ooffin v. Ogden, 18Wall.120j v. Schroeder, 19 BIatchf. 377; S. C. 8 Fed. Rep. 519; Webster Loom Co. v. Higgins,4 Ban. & A. 88j Herring v. Nelson,- 14 Blatchf. 293j Wood v. Cleveland RoUing-mill Co., 4

BOSTON ·. EJ,EeTRIC , 00·. t1;.

FULLER.

515

·Fish,. 550; Putnam ,v. :Hollender,:l9.,Blatchf. 48; S. C;6Fed; Rep. 882; Howey. UndtrwoQd, 1 160; OlOughY. Barker, 106 U. S.166; S. C. 1 SUR. JWp.188. . ".1 , · The.d.efendants. infringe. The Spencer spring used by them is con· structed with a vertical bend or bearing loop at the central axis of the f!pring. .This bend or pin passes through a metallic eyelet in the, we1;>-: bing. The spring is so wound that on either side ofthe webbing there is a horizotlta1, or nearly horizontal, coil, at right angles to the axis of the spring, which helps to support the spring in a vertic:al position. A' portion of the central coil is wound at right angles to the axis, and there is a level bearing of the spring upon the webbing. It is quite likely an improvement,' but, nevertheless, it performs aU the' functions of the patented spring.. The q.uestions argued relating to the amount of and profits can best be considered upon the coming in of the report of the master. The complainant is entitled to decree for an accounting upon the first and second claims of the patent.

ct.

ELECTRIC Co.

tI.

FULLER and others.

(Oirc.uu(Jourt, D.ltlaaaachuaett8. December 24, 1886.)
1.

PATENTS FOR INVENTIONS - LETTERS PATENT LIGHTlNG APfABATUS-EABLIEll INVENTIONS.

No. 280,l'590 -

ELECTRIO

GAS-

The invention contained in letters patent No. 230,1190, granted July 27, 1880, to Geo. F. Pinkham, assignee of Jacob P Tirrell, for electric gas-lighting apparatus, held, not anticipated by the Tirrell inventions of 1871 and 1872, contained in patents No. 121,802 and No. 130,770, nor by the Cutler patent No. 220,704; none of these prior devices being so constructed that by the action of the electric current the gas-cock is turned by a single impulse and a succession of sparks is produced at the burner tip without further motion of the gas-cock.

2.

8.

SAME-INVENTION.

Held, also, that this improvement over prior devices constitutes invention.

SAME-!NFRINGE)iENT-DrFFERENCE IN DETAILS.

The patent held infringed by defendants' apparatus, although the latter differs somewhat in construction from that described in the patent. The fact that the main features in the patented apparatus, such as the circuit breaker, sing'le circuit, operating the gas-cock directly by the armature, are old, should not limit the patentee to the exact form of mechanism found in the patent.

In Equity.

Suit for infringement of patent.

J. E. Abbott, for complainant.

E. P. Pay80n,for defendants.

CoLT,J. This suit is brought for infringement of the first claim of letters patent ,No. 230,590, granted July 27, 1880, to George F. Pinkham, assignee of Jacob P. Tirrell, for electric gas-lighting apparatus. The invention relates to apparatus forlighting gas by electricity, in which