LYON V. DONALDSON.
789
invention cannot be evaded by making a broader loop and adding another hook. It may be that there is a gain of strength by using two hooks, and I will not say that defendants' rod ill not an improvement on the O'Brien rod, but, at best, they must be held to use O'Brien's device with this improvement, and herein they infringe the O'Brien patent. Decrees may be prepared finding that the complainant's patent is valid, and that defendants infringe, and referring the cases to the master to take proofs and report as to complainant's damages.
LYON
v.
DONALDSON.
(Oircuit Oourt, No D. Illinoi8, S. D. April 23. 1888.)
1.
PATENTS FOR INVENTIONS-AcTION FOR INFRINGEMENT-DEFENSE OF WANT' OF NOVELTy-EVIDENCE.
In case" for alleged infringement of a patent of date June 30,1885. defendant pleaded the general issue, with notice of special matter to the effect that he himself Was the original and first inventor, a patent having issued to him for substantially the same improvement, July 8, 1884. It was in proof that shortly after plaintiff filed his application, which was dlme on 5, 1884, interference had been declared by the patent-office between plaintiff and defendant, and that the examiner had decided the priority of invention in favor of plaintiff, and granted him the patent in suit. No appeal was taken from this decision. ' Held, that under the plea defendant was confined as to proof upon the question of novelty to what led up to his own alleged invention. If
SAME.-ANTICIPATION-MACHINE FOR SWAGING SAWS.
The chief feature of the improvement covered by letters patent No. 321,376, of June 30,1885, to William Lyon, for a "machine for swaging saws," (circular,) is a movable anvil upon which the saw-tooth rests while it is swaged to the width necessary for clearance by means of a hammer in the hand of the operator, the anvil also resting upon an adjustable support. In "case" for an alleged infringement, defendant set up that as early as 1882 he had perceived the utility of such a machine. and he then devilled an experimental working model, and tested it so far as to prove that a saw could be swaged upon it. The portion of this machine produced in court did not'contain the movable arm which carries the anvil or die of the Lyon patent, nor the support on which the die rests the operation of swaging is performed, nor anything which would suggest those operative parts. Ireta not an anticipation. The first claim of letters patent No. 321,3i6, of June 30, 1885, to William Lyon, for a "machine for swaging saws," is: "In a saw-swaging machine, the combination of a frame. a horizontal, adjustable shaft or arbor, a horizontally adjustable rest, and a die secured to an arm pivoted to the frame." In the specifications "the horizontally adjustable rest" is IlPoken of as the "support," and is described as being moved by the "shaft working in a threaded perforation in the frame and in the support." Held, the purpose of the shaft being to move the support in its sliding groove, so as to. make the support the support was not intended to be threaded; but tllat the screw-thread on the shaft was only to operate in a thread in the perforation or head-block of the frame through which it passed, and the shaft was to work or turn in the support in such manner as to adjust thesupporti aud that t):l.e claim was valid. In "case" for infringement of a patented "machine for and jointing saws," it was in evidence that plaintiff's machine with the jomting appa-
11.
SAME-PATENTABILITY-DESCBIPTION OF CLAIM.
..( SAME-DAMAGES FOR INFRINGEMENT-TREBLE DAMAGES;
,
790
FEDERA.L REPORTER.
5.
ratus'cost $100, and sold for $150. The infringing mallhincs included only the swagillg a.pparatus. and sold at a l'rotlt of about $10 each. Held, that tbe damages should be $10 for each sale, of ,an infringing machine. and. the violation of plaintiff's rights being flagrant; that the recovery should be trebled, ' 'under Rev. St. U. ,8. {l4919. SAME-INFRINGEMENT BEFORE ApPLICATION.
The fact that defendant knew. at the time he made and sold the infringing machines, that plaintiff was the inventor, does not render him liable in damages for Sales made before plaintiff had made appli,cation for patent.
At Law. Action on the case und'er Rev. St. U. S. § 4919, for an alleged infringement of a patent. Jack &- Tichenor, for complainant. Kellogg &- Cameron, for respondent. BLODGETT, J. This suit was tried by the court, under a stipulation of the parties, without a jury. It is an action on the case for alleged infringement of patent No. 321,376, granted to plaintiff, June 30, 1885, and joipting saws." The device, as shown for a "machine for and described,is only applicable to circular saws, and the chief features of the improvement covered by the' patent are a movable anvil upon which the saw-tooth 'reat$ while itis swaged to the width necessary for clearance by means of hammer in the hand oithe operator, the anVil, also resting upon an adjusmblesupport. The patent also covers a device for jQinting the saws after the' process of swaging, but, as that feature of the invention is not in controversy, it not be described. The patentcontainafive claims" but infringement is only charged as to the first and second, which 'ftre: ' , (I) In a saw-swaging machine,the comhination of 1\ frame, a horizontal: adjustableshat't or arbor, a horizontally adjustable rest, and a die secured to an arm pivoted to the frame aS'lset foith. (2)' The combination of the pivotal arm, the die thereon. and, the rest therefor, substantially as described. It will be seen that thelDCivableanvil which iBspoken of in the introductory description of the is called a "die" in these claims. The defendant has pleaded the general issue, with notice of special matter, the material portions of Which are, first, that "plaintiff' was not the original and first inventor of the devices covered' by the patent, or any substantial part thereof,and that in fact defenda.nt was the original and first inventor of the materjal and substantial parts of the machine described in the patent, and 'that ll,patent was granted defendant therefor on the 8th of July, 1884. The proof shows that plaintiff, as early as 1883, had conceived the invention covered by patent, and made a drawing of it; as early as the 1st of March, 1883, he had a full-sized working ma'<ihine. cl}nstructed and in, operation at the the Burlington LUAlper,Cqmpany, in Burlington, Iowa. That defendant, who was then aiiid"still is in business ali! a manufacturer, of sawsa.t Rock Island, Ill., ordered one of plaintiWsmachines in May, and the same was constructed and shipped to defendant Olithe27thday of June, 1883, containingstibsmntially the mechanisms covered by the plaintiff's patent. And on the 18th of September, 1883. defendant filed
a
L'YON fl. DONALDSON.
791
an application in the patent-office for:& patent on & machine which, in all its working parts, is & substantial reproduction of plaintiff's. machine, so far as the swaging ·devices are concerned. It is true, defendant's machine shows Some minor changes,-such as a divided movable arm fQr carrying the die or anvil, instead of the single bar shown in plaintiff's patent; and the support, H, upon which the anvil rests while the tooth is being swaged, is so arranged as to slide along the side of the frame timber, instead of sliding on the top of the same. timber, as it does in plaintiff's machine. But these are mere colorable changes, so far as the question of infringement is concerned. It is truE;l, the double arm may have some advantages over the single arm of the plaintiff, and the change of location of the sliding block may be an improvement of the plaintiff's machine; but the principle of the plaintiff's machine, as made by plaintiff, and sold to defendant in JUDe, 1883, in construction, mode of operation, and result, is faithfully followed in defendant's machine. The proQf 111so shows that plaintiff applied for his patent on the 5th of April, 1884; that soon after his application an interference was declared by the patent-office between defendant's. patent and. plaintiff's application, and upon the proof taken the examiner decided priority invention in favor of plaintiff, and plaintiff's patent was issued, from which no appeat was taken. This decision is conclusive upon defendant On the questionofpriorityofinvention,(Oreenwoodv. Bl'(J,('Mr, IFed. Rep. 856;) and while the defendant is not estopped by this decision from contesting the novelty of pIainti ff's invention by prl)of Ilhowing Utat he, the defendant, waS in good faith mistaken as to· the·. fact that the. device covered by the patent was old, yet,·as defendant laid no foundation in his pleadings for the introduction of proof upon the question of novelty save by referencetohis own machine, the only proof to be considered ppon this branch ofthe case is that of the defendant himse1fas to an experimental machine, which he says he made in 1882,. forswagipg saws.. states, in substance" that in 1882 his attention was attracted to the demand fOl'Such a machine, and that he devised a sort of e:xperimentill working model of the machine, which he had theil conceived; that about the time he got his working model made, and tested its() far as to see that a saw could be swaged upon it, the Kinney sawl'lwaging machine came out, and that he then abandoned further experiment with his machine. Itis very evident from the portion of this old machine produced in court that it does not contain the movabie arm whlchcarries the anvil or die of the plaintiff's patent, nor the support, H, ol'lwhich the die rests while the operation of swaging is performed, nor anything which would Buggest these operative parts. And it is too palpable to admit of discussion that defendant has taken those two features of his machine bodily from plaintiff's machine, so that I am compelled to'the conclusion that the defense ofwant. of novelty has wholly failed·. Defendant also insists thatthe first claim of plaintiff's patent is void, .because it inclUdes the "horizontally adjustable rest," which is lhe "support, ll',"described in thespecifica:tions, and that by the tcrull,; of the flpeCificatii:ms this rest is not movable or adjustable, becam:e the sped-
792
FEDERAL REPORTER.
fications say on the first page in the seconn paragraph of the right-hand column that the support is moved' by the "shaft, L, working a threaded perforation in the frame, A, and in the supportj" and it is urged that this language implies that the shaft, L, works in a thread in the support as well as in the perforation in the frame, and hence that it would not operate to move the support. But I do not think the language implies 'that the support is to be threaded. I think that when we consider that the purpose of this8'haft is to move the support in its sliding groove, 80 as to the support adjustable, we must conclude that the screw-thread on the shaft was only to operate in a thread in the perforation or headof the frame through which it passes, and that the shaft was to work or turn in the support in such manner as to adjust the support. This construction does no violence t9 the language used; and it is und81lbtedly the duty of the court to so read and construe the specifications ,and dtawings of a patent as to make the device operative if it can be done. I must therefore find the defendant guilty of the infringement The question of damages is more difficult. The proof;Shows that plaintiff's· machine with the jointing attachment cost $100, and sold for $150; thus showing a profit to plaintiff on his machine of $50 per machine. Defendant, however; does not use plaintiff's jointing mechanism, but uses a ,different arrangement for joillting or evening the after they ate swaged with the'hammer. The proof also shows that before plaiqiiff obtained his patent defendant manufactured 13 machineS, and sold 6 of them, and thatsiiJ.ce the issue oUhe patent he has sold the remainIng7 ,and that defendant's machine sold for from $80 to $65, and that his profits did not exceed $10 per, machine. I do not think defendant should be mulcted in damages for machines sold prior to the issue of plaintiff'S" patent. At the time these sales were made plaintiff had no patent, ahd, although we may assume from the proof that defendant knew when, he made his machines that plaintift was the inventor, yet, until plaintiff made his application for a patent, it was not certain that he would ever apply for or obtain one. Hence defendant cannot be said to havebeen a trespasser upon plaintiff's property before his (plaintiff's) patelj.t was'obtained. After plaintiff had beenadjndged in the interference proto be the prior inventor as against defendant, and plaintiff's patent had 'been issued,all sales made: by defendant were in violation of 'pIa.intiff's rights, and plaintiff is entitled. to damages. The defendant's. machine not containing all that is oovered by the plaintiff's patent, but only the device f'orthe swaging operation, it is obvious that the profitsmade by plaintiffitlthe manuliwtureand sale of his combined swaging and jointing machines furnish no standard for fixing the plaintiff's claim for'damages against defendant; so that the onlyprpof we have iathe defendant's profits of$10 on each machine sold after the issue of plaintiff's patent; and, as the proof shows that defendant only sold seven machiufls after that date, thefifiding will therefore be that the court finds defendant gUilty, and assesses the damages at 870. And upon this finding, which stands in the place of the verdict of a jury; the court, under the provisions of section 4919, Rev. St., fixes plaintiff's actual damages
KAMPFE V. AI.OE.
793
three times the amount found by the verdict,which makes the actual damages $210, for which judgment will be rendered; for the reason that defendant's infringement appears to me from the proof to have been a flagrant violation of plaintiff's rights. If, after the controversy in the patent-office had been decided in plaintiff's favor, and the patent awarded to him, defendant had offered to sell to plaintiff the machines he had on hand at cost, or for a fair manufacturer's profit, he wOllid have placed himself in a far different position before the court from that in which he appears in the light of the proof in this case.
KAMPFE
et al.
'D. ALOE
(Oircuit COU'I't, S. D. New York.
April 28, 1888.)
t.
PATENTS FOIt INvENTIONS-INFJUNGEMENT-RAZORS.
The:fltst claim of letters patent No. 229,127, of June 22; tRaO, to John Heit· ner, fotanimprovement upon the Mon'ks razor, descrilied: in letters patent No. 206,473, of July 30,1878, to John Monks, is: "The combination, with the cutting blade, of a guard-plate constructed in sections, which are hinged to fold on each other,-one adapted to support the cutting blade and the remainder forming a bandle,-interstices at the junction of the blade section with the handle sections, and means for holding the blade llections substantially ats right angle to the handle sections, and holding the latter substan· tially flush with each other, the whole constructed and adapted for use." Held not infringed by the Aloe razor, the sections of whose guard-plate are ,not so hinged as to fold on each other. . The second claim of said Heitner patent is: "The combination, with the cutting blade, of a guard-plate constructed in sections, which are hinged to· gether, and constructed with the stops for regulating the positions of the sections, one section adapted to support theeutting blade,and the remainder forming a handle, interstices at the junction of the blade section with the handle sections, and the spring for the cutting blade and holding the sections in a spread, or unfolded conditIOn, the whole constructed and adapted for use." Held not infringed by the Aloe razor; the latter not having a spring which permits the sections, when not in use, to be folded together
2.
SAME.
In Equity. Louis
Jarne8 A. Hudson, for respondents.
Bill for infringement.
SHIPMAN,,--.J. This is a bill in equity to restrain the defendants from the alleged infringement of letters patent No. 229,127, dated June 22, 1880, to John Heitner, for an improved razor. The patented invention is an improvement upon the Monks razor, which is described in letters patent No. 206,473, dated July 30, 1878, to John Monks. 1.'heFontaine razor, first patented in France in 1879, and afterwards in this country in 1881, is of the type of the Monks razor. The Monks razor -consisted of a"blade-holder, which was bent at right angles, one Ellction of which held the blade, and the other served as a handle. The blade was held in place by ears bent around its ends. The cutting edge of the