840
FEDERAL REPORTER.
business grievances, at the instapce of the plaintiff, which made a dissolution of. the injunction important to the defendant. I do not propose to enter into the conflicting equities of this part of the case, but to look simply at the rights of the parties by virtue of patents. I think that the Pyke patent is an anticipation of the Richardson patent,RS the latter ought now to be construed, and that therefore the injunction, should be dissolved.
WOLLENSAK
'I).
SARGENT
et al., (three cases.)
(Ol'rcuit Oourt, D.Oo1J,necticut. February 20,
1'.
PATENTS FOR INVENTIONS TRANSOM.
Th,e invention described in letters patent No. 186,801, reissue No. 9,807, issued'to John F. Wollensak, July 20,1880, which merely provides for a proper support for the upright rod ofa transom lifter, to prevent its being bent by the weight of the transom, consisting of a guide or loop beyond the rod's junction with the and the extension of the rod to the loop, is of such doubtful patentabIlity as to prevent the issuance of an injunction pendente Ute against its infringement. ' '
PATENTABILr£y :
PRELIMINARY INJUNCTION-
2. SAME-REISSUE-DELAY.'
The reissue of a patent, which was merely an expansion of the original claim, ,was II;Iade eight years after the original grant. No excuse was offered for delay during the first four years. Held, that the delay invalidated the reissue; following Wollen8ak v. Reilter, 115 U. S. 96, 5 Sup. Ct. Rep. 1137.
8. "
SAME-INJrRmGEMENT-TRANSOM.
, Defendant's device fdr lifting transoms having the essential elements described in letters patent No. 191,088, issued May 22,1877, to John F. Wollensak, to-wit, a long stationary /lUide, with holes and notches, a spring locking bolt fitting into the holes, a sliding block or head-piece carrying a spring bolt up and 'down the guide, and means, for the locking device with one hand, and without changing the hold, is an mfringement of such patent, following Wollen8ak v. Reiher, 28 Fed. Rep. 424. The improvement in a transom lifter. embraced in letters patent No; 196,851, issued November 6,1877, to John,F. Wollensak, consisting in the substitution of a metal plate in place of guide-eyes, and the patentee having voluntarily limitedliis claim to a plate slotted at both ends, a lifter havinlt a plate not slotte<l,at both ends is not an infringement. ' ,The patentability of the invention described in letters patent reissue No. ,
4. SAME-ExTENT OF CLAIM-IMPROVEMENT.
5.
SAME-PATENTABILITy-JUDICIAL DECISION.
acquiescence in the validit), of the patent before the decision does not bar one from afterwards contesting It. 6. SAME-PATENTABILITY-ADJUDrCATIoN IN FAVOR OF.
9,807, issued to John F. Wollensak, July 20,1880, having been cast in doubt by the deQision of the supreme court in the caSe of WoUensak v. Reiher, 115 U. 8. 87, 5 Sup; Ct. Rep. 1132, in which the coutt refuses to decide that point,
In a suit for the infringement of a jatent, the bill was demurred to upon the grQund of the non-patentability 0 the invention. Held, in a subsequent suit ,for the same cause, that the overruHng of the demurrer upon defendant's failure to appear and argue it, was not an adjudication in favor of patentability·
.
On motion for preliminary injunction.
WOLLENSAK V. SARGENT.
841
Jj}phtaim Banning and Oharles R. Inge1'soll, for plaintiff. John K. Beach and Benjamin F. Thurston, for defendants. SHIPMAN, J. These are motions for preliminary injunctions, in three bills in equity, which are founded upon the alleged infringement of four patents, all issued to the complainant. three being for improvements in transom lifters, and the fourth being for an improved sky-light lifter. The first is reissue No. 9,307, dated July 20, 1880. The original patent was No. 136,801, dated March 11, 1873. The second patent is reissue No. 10,2.64, appl1ed for May 31, 1882, and issued December 26, 1882. The original patent was, No. dated March 10, 1874. The defendant is charged with infringing the third, fourth, fifth, sixth; and ninth claims of the reissue. The third patent is No. 191,088, dated May22, 1877, and the fourth is No. 196,851, dated November 6, 1877. Reissue 9,307·. This, although a narrow patent, is by far the most important one of the number. In both the original and the reissued patents the state of the art, and the object ofthe invention, are described as follows: ' "Tranlilom lifters have heretofore peen constructed with a long upright or handle, jointed at its upper end to a lifting arm, which extends to, .and'ill connected with, the side or edge of the' transom sash, the sash being opened or closed by a vertical movement'of the long rod. When thus constructtld, the upright'rod Is liable to be bent by the weight of the transom, owing 'to the want of support at or near the point of junction between the long rod and the lifting arm. The object of my invention is to remedy this difficulty, and, to such end, it consists in providing the proper support, or support and guide, for the upperend of thelifting-ro(l, during its vertical movements,'arid while at rest. This may be accorn.plished in a of ways, one of which I will now proceed to descnbe in detail."· , The third claim, which is the only one alleged to be infringed, and which is the same as the original second claim, is as follows:' ,' "3. The guide, G, arranged above the junction of the lifting-arm and upright rod, in wmbi,nation witIJ the prolonged rod, h, the guide, G, and arm, A, substantially as and for thp purpose specified." The first claim of the reissue isa broader ontl, and was not contained in the original patent. In Wollensakv. Reiher, 115 U. S. 87,5 Sup. Ct. Rep. 1137, this reissue was eXaIninedby the supreme 'court, which definAd the extent of the pat.ented invention as follows: "The specification of the qomplaInant's patent undertakes br6adly to describe the bivention intended 'to be embraced in it as ·any construction, Combination, or arrangement of' parts which shall support· the long or operating -rod, and prevent it from being bellt or displaced by the weight ofthetransoml' nut, haVing reference to the state of the art at the date of the alleged i,nvention, and ..thelliaims of the patent, the patentee must be limited hination, with a transom, its lifting-arm and operating rod, of a guideforthe upper end of tlIe operating rod, prolonged beyond the junction with the liftlrigarm, so as to prevent the operating rod from being bent or displaced by the weight ofthe transom. Putting by the question whether this is a patentable
842
as a narrow one, and limited to the particular combination described."
in vention, in view of the 8:lCisting state of the art, the claim must be regarded
Thereupon the first claim of the reissue was disclaimed, and the patent was limited to the second and third claims. In this case, infringement of the t,hird ch{im' n6t being denied, the only question is the one which was mentioned, but was not decided by the supreme court, viz., whether theinvention is a patentable one, in view of the existing state of the' art.. It will be noticed that the specification states that whereas, before the ilivention, the long upright rod of the transom lifter was jointed at its upper end to lifting-arm, which was connected with the edge oft4etransom, the' patented improvement C()nsisted in providing a or support and guide, for the upper end of the lifting-rod, ioorder to prevent its being bent by the werght of the transom; and it further apJ?ears, from the decision of the supreqle court, that the mec1)anic.lil means were a guide pr loop for the upper end of the operating rod, provided the junction with The guide ,above the junction, the prolongation the of the rod, constitute the improvement. In the absence of other knowledge, in regard to ,of the art, than that by the patthe character <>fthe invention seem to me to be b:utsl,endeJ:j alld support of the r9d by means .9f its extension, and.its.confin,emel1t within an!1dditional metallic loop or eye, seem. to be the obvious suggestions, whioh would naturlllly 00curto a mechanic. This doubt receives some additional strength from the Bayley ·McCluskjpatent,of i July7, 1869, which described an in,vention for {)pening l\udclosi*g ,a. series of passenger car veIltilators or transoms. It, cOnsisted of a 10ng rod, sliding horizontally in a series of guides the series of windows, an<i connected with each window bya.separate arm, so that, by sliding the ,rod forward or backward, the windows will be opehed or shut. The device, held vertically instead ofh6rizontally,dosely resembles the plaintiff's lifter. This is anticipation of the patent in: suit, because there is no lifting of a ,window which bears its weight upon the rod; and, in order to open a series of light ventilators' by a horizontally moving rod, the same pre;98t\ltions, the. bendil1go{tl1e:fol1:are not which, are essary to overcome the direct weight and pressure ,of a heavy transoIJ;l ,upon. a rod, whiph moves only fact cql)nected with the patentwhiQh I now regard of is that the invent()r naturally beyond the jundion of extended his rod beyond the end window, the ,rod with the lifting-arm with that window, and supported j'n gui4e-eye, and, thus givel) a transom, or Se;pes {)f to ,be opeo(ld by, a long" rod" xnqving horizontally or 'v.tically,,;whieh opens each transom bya there'with, there must naturally be an extension of ,the.rod for a greater or distance beyond the jUliet,ion;: and a support for the end of the prolonged rod. " " , " . ,." ,It is said that the validity of this patent has been settled by acquiescence oOheptlblietherein, and by an adjudiGation
a
843
for the Notthern district of Illinois.
The defendant in Wollensak v.
hR:r successfully defended against a broad construction of the first claim of the r'eissue before the circuit and supreme courts. After the disclaimer a new bill against the same defendant was filed in the circuit court for the Northern district of Illinois, which was demurred to, it is said, upon the ground of the non-patentability of the third claim, which was manifest upon the face of the patent. The defendant did not appear to argue his demurrer, and, after it was overruled, abandoned further litigation. I do not think that the overruling of a demurrer which the fused to argue, can be fairly considered to be an adjudication in favor of patentability. Neither, in view of the litigation and its results, has there been such an acquiescence in the validity of the reissue as to raise a presumption in its favor. Neither did the acts of those who represented the defendant in the city of New York, in soliciting and inserting advertisements of the Wollensak lifter in their trade catalogues, create such equities l\8 to call upon the court to stop the defendants' present infringement. The decision of the supreme court had the effect of casting a doubt upon the patentability of the invention, so that the manufacturers were justified in a new examination of the character of the patent, notwithstanding their former policy of non-interference, or of affirmative recognition of its validity. There is, in my opinion, such a fair and .teasonable question in regard to the validity of the third claim, as to prevent the issuing of an injunction pendente lite against its infringement. Reissue No. 10,264. The invention of t\1is reissue was an ment upon the lifter described in reissue 9,307. It provided II means for supporting upright rod against the bending pressure of the sash when the latter is hinged at the bottom," and "improved means for necting the lifting-arm to the transom." The only question which need now be considered is in regard to the validity of the claims which are said to have been infringed. This reissue has also been before the supreme court in Wollensak v. Reiher, 115 U. S. 96,5 Sup. Ct. Rep. 1137, in which case a demurrer to the bill was sustained, \lpon theground that on the face of the bill. which contained copies of both original and reissued patents, the claims which wert' alleged to be infringed, and which were the same as those which are the subject of this bill, were expansions of the original claims, and not covered by them; and that the munifest delay of two years or more in applying for the reissue made it invalid, unless accounted for and shown to be reasonable; andrthat the bill did not adequately explain the cause of the delay. The question, therefore, for considerlrltion is whether the .cause ofthe delay is now adequately explained uI;ld shown to be reasonable. The original patent was granted in March, 1874. The reissue was applied for in May, 1882. The patentee shows reasons for the delay from 1878 to 1882, whether adequate or inadequate it is not consider, because he doesIlot attempt toshow allY reason for the delay from 1874 to 1878. There was, so far as appears from, bill. or from the affidavit, a contented acquiescence in the character and extent of his patent for four rears; and therefore
844
there was a delay, the cause of which has not been explained, for a period of time which compels the court to declare that the expanded,claims are invalid. "The settled rule of decision is that if it appears, in cases where the claim is merely expanded, that the delay has been for two years or more, it is adjudged to invalidate the reissue, unless the delay is accounted for, and excused by special circumstances which show it to have been not unreasonable." Wollensak v. Reiher, 115 U. S. 96; 5 Sup. Ct. Rep.
'
THE JOHN H. PEARSON.
845
over a vertical groove, in which the guide-rod is placed. The lower end of the rod is connected, through the slot, with an operating knob in front of the plate, and its upper end is also connected, through its slot, with the jointed arm by which the transom is moved. It The claim of the patent was as follows: "The plate, C, slotted at both ends, and attached to the door-jamb, in combination with the guide or operating rod, E, connected to the lifting-anIl of the transom, and carrying the lug, h, at one end, and the adjustable knob, G, at the other end, sUbstantially as described, for the purpose specified." The file wrapper and contents of the patent were not before Judge BLODGETT, who considered that, while the plate was a slotted ami, it was not imperative that it should be actually slotted at both ends. 1.'he "file wrapper and contents" of the patent are in this case, and it appears that the claims in the application, which simply described the plate as slotted, were voluntarily erased, and the present claim oia plate slotted at both ends was inserted by amendment. The slotted plate is the important thing in theplltent, which is a very slight improvement upon reissue No. 9,307, and, I think, should be strictly confined to the particulars to which the patentee limited his invention, as appears from the amendments to his application. The qefendant's lifter is not slotted at both ends, and is, therefore, not an infringement. Let there be an injunction against au infringement of No. 191,088. The other motions are denied.
THE JOHN FILIBERTO
H.
PEARSON. TAYLOR.
et al. v.
(Oircuit Oourt, D. Massachusetts. January 18,1888.)
1.
SHIPPING-CHARTER-PARTY-NORTHERN PASSAGE.
The term" northern passage, " as used in the Mediterranean fruit trade, and in a charter'party to ship fruit from Sicily to Boston, hela to have a distlDct meaning, and that its course is from Gibraltar north of the Azores, if ,p.0ssible; if not, just south of the islands; thence to the southerD. point. or tall of the Great Banks; and then direct to port. In an action for damages, for loss of a cargo, where the charter-party provided that the vesselshoqld t!\ke the "northern held that, in the absence of any known passage to which that descriptIOn had been given, the ship was bound to keep tpe coolest passage those in the trade were accustomed to keep.
2.
SAME.
In Admiralty. The bark John H .. Pearson was charttlred to carry a cargo consisting mostly of oranges for the libelants, Filiberto and others, from Palermo, Sicily, to Boston, Massachusetts. The charter-party contained the words, "eaptain engages himself to take the northern passage," inse$d at the