IfAYNARn V. [lAWLING.
'111
and his citizenship is not stated until October 13, 1879, and the affidavit in which that statement is maM.was not filed until June 25, 1880. Under the circumstances this can bardly be considered sufficient to deprive the court of jurisdiction of the case, after the lapse of so much time, and after the court has, for 80 long a time, taken and exercised control of the case, and after the railroad· has been operated under the authority of the court. If Swanson is a creditor of the Mi&Iand road, or any one of the railroad companies, as a holder of bonds or coupons which are represented by the trustees, respectively, then there is no controversy between Secor and the Union Trust Company and him, and indeed the whole subject connected with his interest in the property is so vague and indefinite in detail, and coming in at so late a day, that any objection founded on his citizenship cannot be favored by the court. The objection which is taken, that the application was not made in time, vii., at the first term of the state court at ,which the cause might have been tried, can hardly be considered founded on facts which appear in the record. Under the circumstances in this case, it should affirmatively appear that the cause might have been tried at a term before that at which the application was made. N OTE.-Sce Van Allen v. Atchison, Oolorado I!J Pacific Railroad 00., ante. 645.
HAYNAP.D 'V. PAWLING
and others.July 2, 1880.)
(Oircuit Oourt, N. D. New Y01'lc. 1.
OF OF 00llIDtNATION BY RESPONDENT AFTER THE FILING OF THE BILL.-Complainant filed t\ bill for infringement of a patent for a combination. Before the filing of the bill, respondents had contracted to erect, and did erect, a machine containing all the parts of the combination but one. After the filing of the bill this latter part was added. Held, it appearing' tha t this part was not a necessary incident to the machine, and that its use was not contemplated at the time of the construction of the Il1achine, that the bill must be dism"issed. _Reported by Frank P. Pritchard,'Es'l" of the Philadelphia bar.
712
FEDERAL REPORTER.
Bill for infringement of 'a patent Jor an apparatus for hydrating gas. The claim was for a. combination of several elements, one of which was a water-sealing or trapping device. It was shown that respondents had contracted to construct an apparatus which contained all the elements of the combination except the water-sealing device; and that they did construct such apparatus, and delivered it to the purchasers before the filing of the bill. A short time after the filing of the bill, respondents added to the apparatus a water-sealing device. It appeared, however, that this device was not absolutely necessary to the working of the machine, and that it was not put up under any previous understanding with the purchasers. Joseph C. Fraley, for complainant. E.dward S. Jenney, for respondents. BLATCHFORD, C. J. I cannot hold that the plaintiff has estab· lished that any infringement of his patent by the defendants, or any of them, took place be:orethis suit was commenced. The Hydrating case, or condenser, made and delivered by Jones and H. H. Pawling to the Waterford mill, after the plaintiff's patent was granted, and before this suit was commenced, had at that time no arrangement for water sRaling, nor does it appear, nor can it be inferred, that they there intended that it should afterwards have applied to it any arrangement for water sealing. The plaintiff's patent was issued January 30, 1877. This bill was filed February 21, 1877. Only one of the two patents granted to the defendant Jones was applied for before the plaintiff's patent was issued, or before this suit was brought. That patent, No. 185,640, was applied for December 14, 1876. That patent showed a water-sealing device. Jones' second patent, No. 188,801, was applied for March 12, 1877. As issued, it shows a water-sealing device, but such device was not invented by Jones until after this suit was brought. There is no evidence that it was intended, when the apparatus was sent to the Waterford mill, that it should have the water-sealing device shown in patent No. 185,640, or any
MAYNARD· V. PAWLING.
113
water-sealing device. Of course, it could not then have been intl3nded that it should have the yet uninvented water-sealing device of .patent No. 188,801. The water-sealing device afterwards put upon the apparatus was not the water-sealing device of either No. 185,640 or No. 188,801; A water-sealing device is an essential part of the plaintiff's first claim, which is the only claim alleged to have been infringed. It is shown that nothing was done towards putting any water-sealing device into the apparatus before thisBuit was brought; that there was no prior agreement or understanding that the machine should· be put up with a water-sealed communication, or with the ,particular construction of discharge pipes which were aft,erw'ards applied to the machine; and that it was not absolutely necessary that the discharge pipe should be so co.nstructed as to be water sealed. I do not think the case is brought within the class of cases where the seller of parts of a patented combination is liable for fringement if there be a concert of action, proved or legally inferable, between him and others who supply other parts necessary to the complete combination. It is not shown that the defendants intended to water seal the apparatus, or that it should be water sealed. This might have been shown, as a fact, but it was not shown. It appears that the apparatus, after being water sealed after this suit was brought, was subsequently altered so as to be used without a water seal. Hence the use of a water seal was not a necessary incident to the apparatus, so as to lead to the conclusion that the can. struction and sale of the machine necessarily involved the use of a water seal. This case, therefore, does not fall within the principle of Wallace v. Holmes, {) Blatch£. 65, and Turrell v. Spaeth, 8 O. G. 986. The result is that the bill must be dismissed.
714
FEDERAL RErOBTEB.
NEW 'IJ. LAWRENCE.
(Circuit Court, E. D. New York. 1. RE-ISSUED PATENT,
September 16, 1880.)
No. 7,920, for an improvement in constructing' water-proof cellars, cisterns, etc., held void for want of novelty.
Erastus New, for complainant. E. H. Brown, for defendant. BENEDICT, D. J. This action is brought for an injunction, and to recover damages for the infringement by the defend. ant of a patent for an improvement in constructing waterproof cellars, cisterns, etc., re-issued to the plaintiff October 23, 1871, and numbered 7,920. Among other defences is that of want of novelty, and one of the questions presented under this defence is whether the plaintiff's patent is anticipated by a certain cistern made by W. H. Rankin, at Wilkesbarre, Pensylvania, in 1865, some five or six years before the date of the plaintiff's patent. On the part of the plaintlff the contention is that the cis. tern built by Rankin does not anticipate the patent sued on, because, as it is said, "it was not a cellar; it was a cistern. It was a contrivance not to keep water out, but to hold water in." As my conclusion upon this question is decisive of the case, I confine my observations to these features of the case, and proceed to call attention to the language of the patent sued on, for the purpose of showing its scope. The specifi. cations of the patent first state that "the invention relates to a new and useful improvement in the construction of sanitary and water-proof cellars, cisterns, vaults, reservoirs, and all under-ground apartments, for whatever purpose," whereby the bottom and walls of such cellars and other places, above mentioned, are kept in a sanitary condition, and are made perfectly impervious to water. This statement of the subjectmatter of the patent, it will be at once observed, referring as it does to cisterns and reservoirs by name, covers not only structures intended to keep water out of under-ground apartments, but also structures intended to contain water.