IEDEBALREPORTEB.
LIGOWSKI CLAy-PIGEON CO.
v.
AMERICAN CLAy-BIRD CO.
( Oircuit Oourt, S. D. Ohio. March 6, 1888.) The buty object of the'invention, as stated in the specification, covered by letters patent No. 252,230, of January 10, 1882. to the Ligowski Clay-Pigeon Company, as assignee of George Ligowski, for" target traps, " is to furnish a ,trap especiallvadapted for throwing the saucer or cup shaped flying target formed' as a thin shell of clay or similar material, suitably hardened, and slotted at or near its periphery, and provided with a detachable tongue, em· braced by letters patent No. 231,919, of September 7, 1880, to said Ligowski. In the trap used by the Amercan Clay-Bird Company, the clamp of tbe traplever is in form and construction so unlike that of the Ligowski patent that, while it can be used for throwing a saucer or cup shaped target, it cannot be made to throw tile targets described in the Ligowski specification in the manner set,out in his patents; nor, on the other hand, can the Ligowski clamp be made to throw the targets thrown by the American Clay-Bird Company's trap, unless they are prOVided with tongues, or their equivalents. Held, that the clamp of the American Clay-Bird Oompany's trap-lever was the eqniv· alent of that of Ligowski, and being so, the fact that it might be an.improve· ment did not render its use any the less an infringement. 2. SAME-LETTERS No. 252,2307 INVENTION. The first claim of letters patent No. 252,230, of .ranuary 10, 1882, to the Li· gowski Clay-Pigeon Company. as assignee of George Ligowski. for target traps, is as followSl. "The combination, in a target trap, of a spring-lever, a rack, and an adjustable tension-arm carrying the trigger, with which latter is engaged said' lever, as herein described." The holding clamp for grasping the target is omitted from the claim. ,The target referred to is that covered by letters patent No. 231,919, of September 7.1880. to said Ligowski. Held, that the omission of the holding clamp did not invalidate the claim. that being susceptible of ready application in any desired form by a skilled mechanic, and that the limited combination in the claim was not anticipated by the pat· ents to Bogardus, Call, and others in evidence; the saucer shape (If the Ligowski target giving it, when projected horizontally or at an angle by the trap, a rapid rotation upon a vertical or inclined axis. and the concavity, whichimprisoned the all', causing the target to rise in a curve witll a downward convexity, like that followed by a bird rising from its cover; a result the exact reverse of that secured by preViously known projectiles, and insuring, in addition, a gradual descent. S. SAME-INFRINGEMENT. The second claim of tlie same patent is for "the combination of spring, lever, head, segmental rack, adjustable tension-arm and trigger. herein described." The third claim is for "the combination In the target trap of the head, having the spring portion of the lever coiled about it, the jointed standards, the notched knuckles, and the bolts and nuts connecting the same." The various styles of traps pictured In the circulars and advertisemen ts of the American Clay-Bird Company, offered in evidence, showed a segmental rack in the same combination, and serving the same purpose, as that described in Ligowski's second claim. lIeld, that the second and third claims were valid. and infringed by said traps; every element of the third claim appearing in said traps, save for the substitution of the old and equivalent ball and socket joint for the knuckle joints. .;, SAME·
1.
PATENTIl FOR INVENTIONS-CLAY-BIRD TRAPS-INFRINGEMENT.
4.
The fourth claim is for "ihe combination, in a target trap, of a clamp consisting of the bar, pivoted lever, spring, seven-threaded rod, and adjustable nut, as described." Held valid.
5.
SAME-WANT OF NOVELTY.
The fifth claim of letters patent No. 252,230, of January 10,1882, to the Ligowskl Clay-Pigeon Company, as assignee of George Ligowski, for target traps. covers nothing more than a spring-latch. Held invalid, as not display· ing invention, and the device being so old and well known that the court would take judicial cogn:zance of it without notice or proof.
LIGOWSKI CLAy-pl<;EON
co. v.
AMERICAN CLAY-BIRD CO.
'329
6.
SAME-OMISSION OF ELEMENT FROM SPECIFicATIONS.
In letters patent No. 252,230, of January 10. 1882, to the Ligowski ClayPigeon Company. as assignee of George Ligowski, for target traps, there is no mention of the pin, which is introduced in the clamp as a guide and fulcrum for the setting and discharge of the target. In a suij for infrin,!\"ement by that company, the preponderance of the evidence was that tbe pin was added simply to serve Inexperienced trappers as a guide in inserting the clay pigeon, that it originated long after the application for the patent; and that the trap could be successfully operated without it. Held, that the omission did not invalidate the patent.
'7.
SAME-LETTERS No. 313.804-COMBINATION-NoVELTY.
The invention in letters patent No. 313,804, of March 10, 1S85, to the Ligowski Clay-Pigeon Comr.any. as assignee of Jacob Bloom, for an improvement upon the Li,!\"owski 'target trap." covered by letters patent No. 252,280, has for its object to provide that trap with a second and weaker spring, coiled, reversely to the throwing spring, about the head of the trap, within the drum. and concllntric with the actuating spring, and so adjusted as to intercept the throwing lever in the radial movement when at about its maximnm speed, and then. gradually checking the throwing-arm, to retnrn it to its positioilof rest. The violent recoil of the Ligowski arm is thus obviated, is discharged with greater certainty, andwith less liability to breakage. ,Held, that the patent wasvalid, Bloom being the first to demonstrate. by rllductjon to practical use, the utility and value of the of the two concentric springs, not only in the head of the trap, but also to apply such a combination of the concentric springs, acting on different radii in opposite directions, for any purpose whatever. " "
8.
SAME-.AJ3ANDONMENT-WHAT CONSTITUTES.
The inventor in letters patent No. 813,804, to the -Ligowski Clay-Pigeon Company, as of Jacob Bloom, for au improvement upon the lIigowski "target trap,' tiled his application March 22,1882.' Notice of aHowance was forwarded to him, and he. being compelled to go to Europe on business. left instructions 'with his clerk 'to pay the final fee within thestatutory·six months. He was. absent more than a year, and some 10 months longer than he expected he would be gone. Upon his return he found that the fee pad not been paid, and on August 6. 1883, he renewed his application, which was allowed September 20, 1883. InJanuary, 1tl84, a new specification was tiled, and the two original claims expanded to eight. The patent was allowed February 19, 1885. Held. that the date of the original application was the one to which reference should be made in determiuing whether or not there had been two years' public UP'! and sale of the invention before applioation, there being nothing in the evidence to warrant the conclusion that Bloom had at any time abandoned either his invention or his application. .
Parkinson ct- Parkinson, for complainant. L . .II. Hosea and W. Merrill, for respondent. SAGE, J. 'this is a suit for an inj unction and account for infriIlgement of letters patent No. 252,230, for target traps, granted complainant, January 10,1882, as the assignee of George Ligowski, and No. 313,"804, granted as assignee of Jacob Bloom, March 10, 1885, upon an application filed March 22, 1882, and renewed August 6, 1883, for an improvement upon the Ligowski invention described and claimed in No. 252,230. The object of the Ligowski invention, as stated in his patent, is to furnish a trap especially adapted for throwing flying targetS, so constructed as to cause them to imitate the flight ofa bird, and in the peculiar form shown in letters patent No. 231,919, 19ranted to Ligowski
In Equity.
1See 81 Fed. Rep, 400.
330
REPORTElk? '
The Ligowski 'patentshowB a trap consisting of a may be adjusted to varying inclinations; a spring coile,Q; about thestil.lldard, and having a tangential prolongation to throwing-arm; a trigger or triplatch to hold the 'spring-arm orthi'6wing-arm in its set position, and to be disengaged when a target is to be thrown; a clamp at the free end of the throwing-arm adapted 'to grasp the target at or near its periphery, and to hold it in a substantially horizontal position during the radial sweep of the, throwing-arm until thelatter attains its maximum velocity, targetis and "skIms off WIth a spmmng actIon that closely ImItates the flight of With means for adjusting the opera qu;i.il." ,The trap is also ative force of the spring-arm, and for rotating the s,tandard, about which it in any desired 'position relthe ,throwing-arm is coiled, and ativelyto Its, base or tripod, which, in use, is generally staked to the upon the Ligowski ground. ,The . 'The' throwing-iJ,rm, instead' of beirig a tangential extension ,oIthe coiled ,spring, as shown in the Ligowski patent. is a lever pivoted to the vertical standard. The' t>pring is coiled ,about a drum upon the and is adapted to head of the standard, and its free, propel. the throwing-arm. The drum is flanged or grooved at its upper edge, tp hold the upper coil of the spring against displacement when the trap ,'1,'his arrangement, it, is claimed, secures a more regular sweep of the throwing-arm. In the Ligowski trap, the sweep of the throwing.l!1rm is arrested by the" reversed, strain of the, coiled actuating the propelling strain is exhausted. Bloom provided the trap with a second and weaker spring, coiled reversely to the throwing the throwing lever in the radial when at about its ma,ximu:m speed, then gradually checking the throwing-arm, and returning it to its position of rest; whereas in the 'liigowskf trap 'the arm wassu'd,dEmly checked, and flew back with a violent recoil. The result of Bloom's improvement is to discharge the target with greater certainty, and with less liability to breakage. T:hesecond spring is coiled about head of the trap, within the drum, and concentric with the actuating spI1ng. ,A wooden thimble is, placed between the standard and the inner spring. to prevent the wear and fricdirect" contact the spring and the metallic standard. This thimble is also provided wi,th a circumferential groove at its upper inner spring. Both these traps were edge. to, restrain the top coil o'f desjgned 'aqd, are for throwing a saucer or CllP shaped fiyiIig flirget formed as a of clay, or similar material suitably hardened,' and slotted at or l1earits periphery, and provided with a detachable tongue. For tl:;1is target ,a patent was gr/tnted Ligowski, Septeniber 7, t88CJ. ,',The defenses lire the invalidity of the patent sued upon, and non-in:" ,',' ' fringement. " The first proposition is that Ligowski in his specification describes his invention as an improvement in target traps, whereby they are rendered September 7, 1880.
LIGOWSKI CLAY-PIGEON: CO. 1.1. ,AMJilRIdAN CLAY-BIRD CO.
331
capable of throwing the" peculiar form· of target seen in patent 231,919, granted September 7, 1880," and that tbis is set fofthas the sole and exclusive purpose of the improvement. This statement'is perhaps a trifle too strong, but it is true that the only objector tlie invention stated in the specification is to furnish a 'trap especially adapted for throwing the peculiar form of flying targets above referred to, and that was doubtless the only object the inventor had inview. It is urged that the tongue upon the target was its essential feature, and that the peculiar clamp at the end of the trap-lever was likewise the essential feature of the trap; that the patentability of either or both of the devices resides in the "unitary result" produced by the tongue attached to the target, and the clamp attached to the trap-arm; and that infringenlent cari be predicated only upon the proposition that Ligowski's invention was broader than this, and included a concave target generally, and a trap of any description capable of throwing a concave target; for the clamp of the defendant's trap-lever is in form and construction so unlike that of the complainant that, while it can be used for throwing a saucer or cup shaped target, it cannot be made to throw the targets described; irithe Ligowski specification in the manner described in his patent, nor,onthe other hand, can his clamp be made to throw the targets thrown by the defendant's trap, unless they be provided with tongues or their equivalents. In a word, the contention for the defendant is that the construction claimed for the patent on behalf of the complainant re.wires an enlargement of the patentee's clairns beyond the exptessedlimitations of the patent. The answer to this objection is twofold:' (1) The clamp of the defendant's trap-lever is the equivalent of the It may also be-for the use for which it was intended, and ,to which it is applied-an improvement. It is so varied in form and 'construction as to be aoapted to grasp the target itself, and not togtasp: the tongue of a similar target having a tongue attached; but the changedia, not make it any less an infringement. 'Dhat bona fide inventors of' aeombination are as much entitled to equivalents as the inventors of other patent:. able improvements has been so often affirmed that no citation of authorities is necessary. (2) It is quite as well settled thnt the invent<'lr is Emtitled to all the uses to which his invention can be applied; whether he or another conceived them, or whether he has specified them in hisipatent or not. To disregard these propositions would be almost to nullify ' the patent laws. The defendant's attack is next upon the claims seriatim. The first claim is as follows: "The combination in a target trap of a spring-lever, a rack, and an adjustable tension arm canying the trigger, with which latter is engaged said lever, as herein described." The for grasping the tongue of the target is omitted from' this claim; but it is insisted that, in order to sustain the claim, it must be understood; as embodied in it, for the reason that without it the elements na'IllCd'uo\not constitute a target trap, and could not co-operate to produce: ariydefihHe result; and also because such limited combination is antici'pated'by'the pllotentsto BogardufI, Call,' and others in evi..:1.:mce.Priot to the
332
FEDERAL . REPORTER.
duction by Ligowski of tQe targets, artificial targetsgenerally of fragile balls -were used. These were projected by traps which were mere catapult,s, (as were the traps of Bogardus, Call, and others, referred to,) flying them into the air in a line always following a parabolic curve, having an upward convexity; while a bird rises in a curve having its convexity downward, until, attaining its altitude, it flies in a path substantially parallel to the ground. The new target was saucer-shaped, and to be projected horizontally or at an angle, by a force which would give it a rapid rotation upon a vertical or inclined axis, the concavity serving to imprison the air, whereby the target could be m,ade to rise in a curve with a downward convexity, like that followed by Ii bird in rising from its cover, but the exact reverse of that followed byprevionsly known projectiles; and further, insuring a gradual descent. Th.e cClmplainant's combination accomplished this result. He was the pioneer in this line of invention, and although each part of the combina.tion was old, there was something more than an aggregation of old elements.. A new and beneficial result-that of imparting to a projectile, by m,echanical means, a rotation UPO?' an axis at right angles to its movem,ent in a new line of flight-was produced, and this is evidence of inv611tion, as was held in Loom Co. v. Higgin8, 105 U. S. 580. Forbush v, .cook, 2 Fish. Pat. Cas. 668, is a.uthority for the validity of the claim, notwithstand,ing it does not include, in terms, the holding clamp, which C<?uld be readily applied in any desired form by a skilled mechanic. ,The second claim is for "the combination of spring lever, P, p, head, M,segmental rack, 0, adjustable tension arm, U, and trigger, V, W, as herein described." It simply introduces the additional element, the "head, M." The third claim is for the combination in the target trap of the head having the spring portion of the lever coiled about it; the jointed standnotched knuckles, and the bolts and nuts connecting the same. Exhibit "Qlay-Bird Co. Circular," offered in evidence by complainant, shows a segmental rack in the same combination in traps manufactured alld sold by defendant, and serving the same purpose as that described in, thettecond claim. Every element of the third claim appears in each styleQf defendant's traps, excepting for the substitution of the old and equivalent ball and socket joint for the knuckle joints. What has been as to the validity of the first claim applies with equal force to the second and third claims. ;' The fourth claim is for"the combination in a target trap ofa clamp of tile har R, r, pivoted lever S, 8, spring, T', seven-threaded l;od, r:, adjustable nut} r:, as described." This claim is also held to .valid. . , The .fi£th claim is, in the opinion of the court, invalid, for the reason it does not display invention. It covers nothing more than a springa device so old and well known that the court may take jUdicial cognizance of it without notice or proof. Brown v. Piper, 91 U. S. 44; Terhune v. Phillip8, 99 U,S. 592; Dunbar v. MyfJT'8, 94 U. S. 187; Slau'BOn.,y:. Railroad Co., 107 U. S. 652, 2 Sup. Ct. Rep, 663; WolleMak v.
LIGOWSKI CLAY-PIGEON CO. 'V. AMERICAN CLAY-BIRD
00.333
Reilter, 115 U. S. 96,5 Sup. Ct. Rep. 1137; Drumm.ond v. Venable, 26 Fed. Rep. 243; West V. Rae, 33 Fed. Rep. 45. A further objection to the validity of the patent is that the pin which is introduced in the damp as a guide and fulcrum for the setting and discharge of the target is not mentioned in the patent, although defendant claims that it is proven to have been discovered before the patent was issued. Defendant urges that this pin is a most important element in assisting the target to release itself at the proper moment, and in economizing its acquired momentum. It is in evidence for the defendant that all the traps ever marketed were provided with this pm. One witness for the defendant testifies that from actual tests he found that without the pin the action of the trap was wholly unreliable, and three witnesses testify that the pin is important, and contributes vitality to the successful operation of the trap. On the other hand, six witnesses for the complainant testify to the successful operation of the trap without the pin, upon tests Inade by them.or in their presence, and two,-Li. gowski and Bloom,-that it originated long after the application for the patent.. The applicationfor the patent was filed May 16, 1881. Bloom testifies that the pin was placed upon the traps late in the summer of 1881. Ligowski testifies that the first traps manufactured and sold had no pins. in the clamps, and were successful in operation, and the pin was added. to the clamp to serve inexperienced trappers as a guide ininserting the pigeon. The preponderance of the evidence is decidedly in favor of the complainant, and the opinion of the court is that the objeotjon is not well taken. , To the Bloom patent it is objected that in substance it covers only the addition of a "recoil," or buffer spring, to the Ligowski trap; that this did not involve invention, as buffer springs to receive the impact of the arm in traps were old; and springs coiled in sir!lilar relations were old in door springE', rocking-chair springs, etc. The court does not sustain this objection. Bloom was not only the first to demonstrate, by reducing to practical use, the utility and value of the comLinati0l1 of the two concentric springs in the head of the trap, with the throwing-arm, but he was also the first to apply such a combination of the concentric springs acting on different radii in opposite dire.ctions for any purpose whatever, and the court considers that he was entitled to a patent, unless the fur. ther objection now to be considered is fatal to its validity. Bloom filed his application for a patent, March 22; 1882. Notice of allowance was forwarded to him at Cincinnati. Leaving instruction with his chief and book-keeper to pay the final fee within the six months required by law, he took his departure for Eurl)pe in the interest of the Ligowski Company, about the 1st day of May, 1882, expecting to be absent three or four months, but did not return until early in the summer of 1883. Shortly after his return he ascertained that his clerk had failed to for... ward the final fee, and the patent had not been issued. On the 6th of August, he renewed his application. It was allowed September 20,1883; and,inJanuary, 1884,anewspecificatioIl'wt\s filed, and ,the two origipal to eight. '1'hepatentl:wasallowed FebrU'-
FEDERAL REPORTER·
.a'ty 19, 1885.
Witnesses: for: the defendant 'testify to' sales' by the Llgowski Company, of which Bloom was manager, of traps embodying the BlQbmiuwrovement, on June 28,1881, when three sales were made,and in J llly, 1881, when two:sales were made. With Bloom's amended specification, filed in January, 1884, was filed an a.ffidavitthat the invention had not been in public use or on sale for more than two years prior to August 6,1883, and witnesses for the complainant testify that all sales prior :to that date were of the single-spring or Ligowski trap. The testimony-in reference to this feature of th6 case is irreconcilable, and so confiicting,' and so supported by circumstances on each side, that if the deof the fact were necessary to the proper decision of the cause, it wouldinvolve a very· close and critical examination, and a somewhat. detailed statement oithe depositions of the witnesses. But upon the authority of Godfrey v. Eames,l Wall. 317; Smith v. Vulcanite {Jo., 93 U. S. 486; and Graham v. McCormick, 10 Biss. 39, 11 Fed. Rep. 859,-it isclear.that the date of Bloom's original application is that to which the court must refer in deciding whether there had been two years' public use and sale of hisjnvention before his application for a patent. Thereis nothingin the evidence to warrant the conclusion that Bloom at any time:abandoned either his invention or his application for a patent· . ';l'he question of infringement remains to be considered. The trap first. mimnfactured and sold by the·defendant has a spring lever, a rack, and anadjnsiable tension arm carrying a trigger with which the lever engages,aH combined and operating as does·the same combination in theLigowski patent. This form of trap is shown in complainant's exhibits, ".American Field," and "American Olay-Bird Co. Circular." They also show. a segmental rack having the same number of notches and projectionsshow:n in the drawings of the Ligowski patent. Complainant.'s exhibits...-.,.."Portion of Defendant's New Trap." and" American Clay-Bird Co. Trap, No. 4"-show, in place of the open notched rack, a rack having a series of perforations, with any of \vhich the trigger-carrying arm may engage, but the perforated rack serves the exact purpose' of the notched rack,and must be regarded as its equivalent. All these traps are therefore infringeml;;lnts of claims 1 and 2 of the Ligowski patent. The trap wQich:is in evidence and marked" Exhibit DefendarWs Trap" shows a trigger-holding mechanism consisting of a single notch. It may be possible, but it is not practiCable,.to increase the tension by removing the trigger ami,from the notch, and causing it to engage against the projectionwhicli forms the further side- of the notch. That evidently was not intended,and anattempt at such adjustment would hardly occur !(} one using the trap.' There is in this trap no infringement of the· first or second, claim of the LigO'lyski patent. Each of the folir styles of defenda.nt's'traps infringes the third claim of the Ligowski patent. . They sub'" stitute for the knuckle joints of the Ligowski trap the oid andequiva.. lent ballandsodtet joints, and they embody every other element 'ofith& combh1edand operating as in the patent. . :;:,. . From wha.t has already been said in referenca to the target-holding or clamping ,mechanism: oftbe com traps and that· of the d fend..
CONSOLIDATED ELECTRIC LIGHT CO. V. M'KEESPORT LIGHT
co.
:::saD
,anPs traps, it fonows that:defendant's infiingethefourth claim of the Ligowski patent. The fifth Claim, having been found invalid, requires' no further consideration. The defendant's also infringe the Bloomp'a;tent. The traps constructed as shown by exhibits, "American Field;" and "Portion of Defendant's New Trap," have every element of every claim of the Bloom trap, combined and operated substantially as specified in the Bloom patent. The trap designated "Exhibit Defendant's Trap," has not "a trip-latch to which the lever may be connected at varying distances from its position of rest," and it is not, therefore, an infringement of the fourth claim, but it does infringe all the remaining claims. The trap constructed as shown by "Exhibit Americall Clay-Bird Co. Trap, No.4," omits the recoil spring described and claimed by Bloom, ,bl,l,t ,embodies every other element of his patent, and is aD infringementof'tlre 'fourth and seventh clahns.· ,. , . A decree against the defendant for an injunction and account will be entered, but without costs as to the Ligowski patent, by reasoliof the invalidity ofthe fifthoUrlm thereof.
:Co:r\'SOLtDATED
ELECTRIO. LIGHT. Co.
t1. MC!<EESPORT LIGHT
'Co.
(Oilrcuit Oourt,
w: D. Pennsylvania.
March 17,1888.)
'PATENTS' FOR lNVENTIONs-SmVERAL ASSIGNMENTS BEFORE ISSUE.
Letters patent issuedto.the assignee oithe inventor are not voldbecB.lllll:prior to the issuance thereof such assignee had made an assignment of the invention to IL third person, who had assigned the same to still another person,all the assignments being recorded in thepatent·office; but by operation oflawthe legal title to the patent, upon the issuance thereof, eo instantivested in the ultimate assignee. b'ollowing Mght 00. v. Light 00.,25 Fed. Rep'..719. I .
InEquity. " . , ' Sur demurrer to bill of complaint. W. Bake:weU':forcomplainant.
John (J.TilmlinsDn,' for 'respondent. AcilltsON, ';T. The preCise question' here presented was the ease of Light Co. v. Light Co., 25 Fed. Rep. 719, and was decided favorably to the plaintiff. I have carefully read the opinion of Judge WALLACE, and perceive no reason for doubting the correctness of his C011Clusion. How can it be said that the patent was issued withoutauthority of law, and therefore is void, when in fact it was.issued to the very perSOIl by sectiQn 4895, Rev. St., viz., ,assignee of the in'ventor"? There was, a literal compliimce with the provisions '.of thll lltatute. But as by operation qf: law the legal titJ,e to the patent, ,uponth'e tlfereOf, eo,instanti ;vested plaintiff ultimate assign'ee, 'the substantial resu1t was the same as if it had formally issued to the plaintiff. Gayler v. Wilder, 10 How. 477. Whilethis