HOWARD V. ST. PAUl, :PLOW-WORKS.
743
that what was done by him must and should be treated as, at best, only an abandoned experiment. l do not think the testimony, when fairly considered, shows that Dr. Cushman produced at Racine or elsewhere, prior to the invention of Bell, Ii practical operative telephone of any kind. He gave the world nothing. What he did, if he did anything but make an acoustic telephone, was suffered to die in the embryo or germ before any valuable or useful fruition. I do not, from the proof, believe that the machines made by him during these experimental years were so far perfected as to be of any practical value, or to even suggest that they might be so improved as to become valuable and useful. If a word could be occasionally transmitted through them, the result seems only to have excited curious wonder among the youth, and did not challenge the attention of practical men, as did the first exhibitions of the Bell device. When the Bell telephone was brought to the attention of the public, its value and possible utilities were grasped at once. It was accepted as a great· invention, by the general public, as soon 8·S its operation was feen; and I can See no reason why the public would not as readily have comprehended its and value in 1851, as in 1876, had the machine been so far developed as to give substantial promise of what Bell accomplished. It may also, I think, be pertinently asked why some of these witnesses, besides Dr. Cushman, who have testified to t4e performance of these talking boxes, did not at once, on the publication of Bell's invention, come forward and deny his claim as the original inventor of the telephone, and call public attention to the fact that Dr. Cushman had made the invention more than a quarter of a century earlier; but none of these witnesses seem to have recalled the wonders they had seen and heard in 1851 until their memories had been refreshed and prompted .by Dr. Cushman. A decree may therefore be prepared for an injunction and accounting, according to the prayer of the bill.
HOWARD
et al.
'D.
ST.
PAUL PLOW-WORKS
et ale
.Oirouit Court, D.Minneaota. August 10, 1888.} 1. PATENTS FOR INVENTIONS-NOVELTY-HARROWS.
9.
BAME-IN1I'IDNGEMENT.
744 3..
FEDERAL REPORTER.
SAH1!lc-REI,IEF AGAINST INFIUNq:EM:ENT-CORPoRATroNS-OFFICERS.
Where theofticers of a corporation are made co-defendants in an action for infrinK6ment of letters patent, a decree for an injunction and accounting will not issue against them individually where the corporation is solvent, and they have not as individuals violated, and are not threatentng to violate, any rights of complainant.
In Equity.· This is an action brought by Harlan S. Howard and Ellen F. Perkinson, as administratrix of the estat'i of John E. Perkinson, deceased, against the St. Paul Plow-Works, Osmon Lunn, Henry H. Miller, William Dawson, Frederick C. Miller, Amherst H. Wilder, Charles H. Bigelow, and John Kerwin, to restrain infringement of letters patent No. 178,461, and for an accounting. F'rackeltcm &; Careins, for complainants. John B. &; W. H. Snnborn, for defendants. SHIRAS, J. On the 6th day of June, A. D. 1876, letters patent No. 178,461 were issued to John E. Perkinson for an improvement in harrows, and on the 17th day of March, 1883, the right to manufacture and sen such improved harrows throughout the United States was transferred and assigned.by the patentees to Harlan S. Howard. The bill filed in the present case charges that the defendants are infi'inging upon complainants' rights by manufacturing and selling harrows which include the ihvention patented to said John E. Perkinson, and an injunction and accounting are prayed for. Substantially the defense is rested upon the two grounds of invalidity of the Perkinson patent, and a denial of the ihfringement complained of; it being claimed that the form of harrows manufactured by the defendant corporation does not embrace the combination covered by the patent issued to Perkinson. The patent to· the' latter covers a combination of three harrows, the two outer ones being reversed and being composed of parallel beams, the center harrow being A-shaped, and all of the harrows being connected by links with an equalizing bar or evener, the beams of the reversed outer harrows having the same in<;:lin3tion as the corresponding side beam of the center harrow. The evidence'abundantly shows that harrows thus made are capable of efficient work upon side hills and uneven ground as well as upon level fields. The several sections, being unconnected with each other, are free to conform readily to the surface over which they are severally passing, and each section is easily raised, when np-eeseary, to free it from cumulated'rubbish. Harrows of this construction are also substantially free from the defect of tracking; that is to say, the teeth in the several bars will not get into line and thus make only one line or furrow in the ground for each bar. .The evidence shows that many efforts had been made to construct harrows that would cover wide spaces, and yet thoroughly accomplish the work intended, and many devices to that end have been' patented, yet none seem to have met with much favor until the form ·of harrow covered by the Perkinson patent was brought into use. It is 110t seriously questioned bydefendarits' counsel that this form
HOWARD V. ST. PAUL PLOW-WORKS.
/
745
of harrow has, since its introduction, taken the lead in extent of use in the west, and is constantly growing in favor; but it is claimed that there is a want of novelty in it, because its essentials had previously been known, and, while it is an improvement upon those previously madc: that such improvement is mechanical, and not inventive. The burden of overcoming the prima facie case made out by the production of the patent is, of course, upon the defendant, and the defense of a want oJ novelty must be clearly established before a court will be justified in setting aside the patent on this ground. Coffin v. Ogden, 18 Wall. 120; Shirley v. Sanderson, 8 Fed. Rep. 908; Walk. Pat. § 76. In the answer of the defendant corporation' it is averred that the principle and combination patented to Perkinson had been previously invented and described in the several patents, No. 55,351, issued to William S. O'Brien; 62,769, to B. C. Myers; No. 106,677, to George H. Ellis; No. 57,851, to Everal Bradley; No. 74,626, to E. Stellar; No. 135,464, to Hiram Cartwright; and No. 154,792, to Fri(ildman. In addition to these patents named in the answer, defendants also introduced in evidence patent No. 26,731', to Cheasebro; No. 180,617, to Moore; and No. 153,225, to Spies,-f<ir the purpose of showing the condition of the art at the time the Perkirison combination was patented. The various devices found in the several forms covered by these different patents sufficiently show that many persons were endeavoring to solve the problem of producing a harrow of such a combination of parts as would enable it to cover a large extent yet conform to an uneven surface; yet it no less clearly of appears that none of the forms produced accomplished the objects aimed at, unless it was that patented to Spies in July, 1874. This form '(ifl harrow consisted of two diagonal harrows attached to an evener, the bars in the harrows being parallel. It is admitted that by adding additional sections a greater width of ground can be covered. The Spies form Qf harrow lacks the center A-shaped section found in the Perkinson harrow, and, as already said. the bars of the sections are parallel, and· not reversed, as in the outer sections of the· Perkinson niodel. While there can be no question that the Spies form is an improvement over those preceding it, and that harrows constructed of this form are capable of efficit;nt work, yet it is no Jess clear that the Perkinson harrow presents a different combination, in that it embraces the conception of reversing the outer sections of the harrow, thus changing the direction of the several bars composing these outer sections from a parallel to a converging direction, and introducing the middle A-shaped section; the several sections being so fastened to the evener that the draft is pe{pendicular thereto, the rear end of the. entire harrow being broader than the front end. The practical results produced by this combination are that the harrow readily conforms to uneven surfaces. and, when used upon a hill, the teeth do not track, and it is in the latter particular that: the Perkinson specially differs from the Spies harrow in actual use. There is therefore to be found in the Perkinson harrow a combination of parts other and different from that appearing in the Spies and all preceding forms, and productive of sufficiently novel results to sustain the Perkin-
746
REPORTER.
son patent against the charge dfwant of patentableno\l'elty, and we are thus brought to the question whether the harrow manufactured by the defendant corporation is in fact an infringement of that patent. In the form of harrow manufactured by the defendant corporation are found three sections, the outer ones reversed, and the center one A-shaped in its general contour. It is not questioned that the general results obtained by this form of harrow are not materially different from those produced by the Perkinson harrow. The differences in construction mainly relied on as an answer to ,the charge of infringement are in the shape and mode of constructing the center section, and in the coupling of the same to the evener. The center section in the form of harrow manufactured by defendant is, as already stated, A-shaped, in that the outer side-bars converge towards the front end; but it differs from the form used in the Perkinson patent in the arrangement of the inner bars, having several that are parallel.. This difference in the arrangement of these inner, bars does not change the ,genera;l form, office, or mode of operation. of the center section sufficiently to make it a new element in the combination. This section in both fomis of harrow is placed between the reversed outer diagonal sections for the purpose of covering the space that would otherwise not be covered, and, while the form of the center section in defendant's 'harrow may'bean improvement in Bome minor particulars over· thatuseQ in the Perkinson harrow, still the ,general purpose subserved thereby. is identical. . In other words, the harrow manufactured by the defendant company includes thecombina·tion invented and patented by Perkinson, and the mere changes in the inner bars Jof the center section as used by the defendant, and in the arofthe teeth therein, will not avail to defeat the charge of infringement; and the same is true of the claimed differen<,es in the mode of attaching the sections to the evener. Even if it be admitted that the defendant's form of harrow manufactured according to the patent issued to on October 21, 1884, does in some respects vary from ,that patented by Perkinson, still it cannot be denied that it presents the combination of the two outer reversed diagonal harrows, with a third or or .center harrow intended to cover the space that would otherwise be left uncovered between the outer harrows, all the sections being independently attached to one evener;' and that' thereby the defendants in fact include in the harrow by them made the practical results derived from the Perkinson combination, by using substantially the same means. This being so, it follows that such use is an infringement of complain.' ants' rights under the Perkinson patent. . The and directors of the St. Paul Plow-Works have been J;Ilade co-defendants with the corporation in this proceeding, and a decree against them. individually ia sought py complainants. It.is not shown in the evidence .that the persons named have, in their individual capacity,manufactured or sold any harrows, or that they have individually derived any profit or advantage therefrom. They have severally answered· the bill of complaint, and the question is whether a decree, either for an injunction or for an accounting, should be granted against them.
HOWARDtI. ST. PAUL
In cases wherein it appears that the name of a corporation is used as a mere shield or cover for the liability of the real parties in interest, or where by reason of the insolvency of the corporation a decree against it would be futile, a court of equity may doubtless entertain a bill and give relief against thos'e by whom the affairs of the corporation are managed, and who, in that capacity, have been active in violating the rights of a patentee; yet these are cases presenting special features, and it does not follow that in other cases such relief will be granted against the officers ofthe corporation. In the case now under consideration it is not proven that the defendant corporation is insolvent, nOr that the defendants, Lunn, Miller, Dawson, et al., as individuals, have violated any rights of complainants, or that they by manufac ...Iring and selling harrows which are infrillgementsof the Perkinson patent have deprived complainants of any gains, or that they have themselves reaped any profits therefrom. All the acts charged against them are nets done in carrying on the business of the corporation, tor the benefitofthe corporation and its stockholders; and under stlCh circumstances no reason is perceived why a decree, either for an accounting or for an injunction, should be rendered against them as individuals. The decree for an injunction against the corporation is binding upon its officers and agents, without making them personally parties to the bill, and so also the decree for an account can be made fully operative without their presence as parties. It is not claimed by complainants that tbe individuals named have been manufacturing or selling harrows, or that they purpose so to do in violation of complainants' rights. Why, then" should the court enjoin them from so doing, and thus put the costs of such injunction upon them? It is not shown that for any reason a decree for an accounting and an injunction against the corporation, alone will not fully protect the rights of complainants. herein. Why, should writs of injunction be issued and served upon the individual fandants, thereby increasing, for ,no purpose, the costs to be paid by. the, corporatioll? In the absence of any reasQn justifying the making the individuals parties defendant hereto, it must be held that as to them the complainants have failed to make out a case, either for an injunction or accounting, and therefore as to them the bill must be dismissed at the cost 'of complainants. As against the defendant corporation the decree will be for an inj'llnction and for an accounting.
748 BRADLEY
&
HUBBARD MANUF'a
CO. "'.
CHARLES PARKER
Co.
(Circuit Court, D. Vonnecticut. July 20, 1888.) 1 PATENTS FOR INVENTIONS-PATENTABILITY-CHANDELIERS.
ll.
SAME-INFIUNGEMENT.
The Evarts patent is infringed by a device constructed under letters patent No. 301,861, dated July 15, 1884. issued to F. A. Cnapman and R. A. Wooding, each having a vertical rod working in an inner tube together with an outer tube. the Evarts device having a bolt, which locks the two tubes in adjusting the chandelier. while the Chapman has a cam or lever pivoted at the upper end of the inner tube, which automatically acts to clamp the tubes, and hold .them in the desired position.
In Equity. On bill for an injunction for the infringement of a patent· . <JItarks E. Mitchell, for plaintiff. . 'Oharles R. IngersoU, for defendant. SHIPMA.N, J, This is a bin in equity based upon the alleged infringenlent of letters patent No. 205,068, dated June 18, 1878, to John A. Evarts, assignor to the plaintiff, for an improvement in extension chandeliers. The application for the patent was filed November 6, 1876. The invention related to an improvement in extension chandeliers, with special. reference to the fixture for which letters patent No. 142,107, da.ted August 26, 1873, were granted to Liverus Hull. In this fixture the inner and stationary rod was fixed to the ceiling, and the outer tube, to which the lamp was suspended, slid thereori. Fixed to the upper part of the'tube was a tubular' head, between whose prongs a lever-brake wils pivoted. The rod extended through this brake. A helical spring fixed to the brfl-ke drew it down so as to cause it to gripe upon the rod. to the lower Applied to the 'brake was a stiff rod which extended part of the chandelier. By pressing the rod upward the force of the lever-brake spring' was overcome, and the brake was moved, so as to relieve the stationary rod from its gripe in order to permit the tube to be slid upward or downward upon it. This outside rod was not ornamental, was a somewhat awkward and inconvenient method of adjusting the elevation of the chandelier, and the object of the Evarts invention, as expressed in his patent, was to introduce the rod and the mechanism for adjusting the elevation within the central tube. The invention consisted, the specification said: "In constructing the outer tube with perforations or notches, combined with a transverse bolt or pawl in the inner or sliding tube, with a bell-crank lever and central rod to actuate the said bolt; also, in a vertical rod movahle within the central shaft, and in connecLion with the device which engl1ges or