sold with the thimbles, anddo not gh,:eanyinforlt\ation which enabled the master to ascertain what part is for thim'bles, or. the numbe,r of thimbles sold. The master could not have made any different findings with respect to damages, and the exceptions to these findings must be overruled. '. The only evidence 'before the mastElr to show that the defendants D;ladeany profits by the sale. of the patented thimbles is their own admission, in the form of a stipulation. The evidence was that they '\Vere the selling agents at the city of New York of a Connecticut corporatiqn by which the thimbles were manufactured, and sold the thimbles, as well as other articfes manufactured by the Connecticut corporation, without commission. The stipulation is that one of the defendanta received $750,and the other the sum 0[$250, from the Connecticut corporation, which sum represented their respective interests as members of that corporation in the profits made by the corporation from the manufacture and sale of the thimbles. There is no merit in the exceptions filed by -either party to the findings of the master in respect to profits. The decree, however,will charge each defendant with the profits which he severally derived, instead of charging both jointly for $1,000.
WORSWICK MANUF'G Co.
et al,
'V.
CITY OF KANSAS
et al.
(Cwcuit Oourt.
w: D. Mi8aouri, w: D.
March 4, 1889.)
The third claim of letters patent No. 171,190, to Edward O. SulliVan, Dec(lmber 14, 1875, is for the combination with the harness fora tire·engine, etc.l'of a device for. suspending liarness above the position of the hOJ,'se when atta9bed theapparatu8.. The collar, which is an open one, and haIDes at· tached to it, both of which were old. and the inne:f and part of tbe;outer trace.ouly, are suspended. The.specification states that the device can be applied to an apparatus using but one horse. Various persons had previollsly parts of the harness over the position of the horse. and there was · evidence that the collar and harness had been so suspended with other parts. Held th'llt; considE.'rin/l; the .prior state of the art, the' de.vice described in let· , ters Patent No. 830,320, November 10. to GeorgE! C. Hale, which has for its'object the suspension of the entire harness, is not an infringement. ' The fule that the issuance of a patent is presumptive evidence of the nov· elty and usefulness of the device applies in favor ,of the defendant in a suit . for infringement who has a patent for his device. . :8. SAl.Ill::':-PRESUMPTIONS FROM ISSUANCE OF PATENT. .
.
FOR. INVENTIONs-INFRINGEMENT-SWINGING HARNESS.
., 'A prior adjudication of a federal c:ourt upon the validity of a patent, though as a precedent in a case in another court between ot1l,er partieJil presenting substantially the same facts, is not conclusive. and where the defE!nse in the subsequent case is placed on additional grounds, and new and'important facts are developed, it should stand on its merits.
SAME-PRIOR ADJuDICATIONS.
,
In' Equity. . Bill by the Worswick Manufacturing Company and Isnac Kidd against , ·the City of Kansas and, George C. Hale, to ,restrain the infringement of . .a patent.' ,
240
FEDERA.L REPORTER,
vol. 38.
M. D. L. L. Leggett, for complainants. W. A. Alderson, for defendants. Before BREWER and PHILIPS, JJ. PHILIPS, J. This is a bill in equity, complaining of an alleged infringement by respondents of patent No. 171,190, granted to Edward O. Sullivan, December 14, 1875. and assigned to complainants. The issue in this case is limited to the third claim of said patent, which is as follows: "The combination, with the harness for a fire-engine or like apparatus, of a device for s(lspending said harness above the place occupied by the horse when attached to the apparatus, substantially as and for the purpose set forth. " This double harness, in combination, consists of the collar, with hames permanently attached, the collar opening at bottom, fastening with a spring-lock secured to the lower points of the hames. The other part of the harness consists of an outer and inner trace, back strap, bellyband, and breeching. . The suspension of this harness over the place occupied by the horse at the vehicle is effected by means of straps suspended from spring barrels secured to the ceiling above the front part of the engine. The ends of these straps are provided with catches, which are attached to the hames and the inner part of the harness for suspending them. In this de,vice only. the collar and and the inner trace are suspended. The breeching is constructed with a hinge, and the other trace is in two parts, the first secured to the hames and the other to the whiffletree, so that the trace is divided, and the one part and the breeching are carried back by hand and laid on the fore part of the engine or vehicle; and in harnessing this breeching and outer trace are likewise brought forward by hand, and the two parts of the trace atrespondents also claim under patent No. 330,320, granted tached. to the respondent George C. Hale, November 10, 1885, which relates to improvements in such swinging harness, and has also for its object suspension of the entire harness over the pole of a fire-engine or like apparatus, so that the horses can readily place themselves in position for without obstruction by the harness, and by one effort to detach the harness simultaneously with the lowering thereof from itssuspending frame. By this method the entire harness, collar, and hames, and breeching, with both traces attached to the whiffletree, are suspended. frame over the The harness is suspended by means of a square point of elevation, with slotted straps extending therefrom to the harness, with improved snaps for seizing the different partsofthe harness. The two front suspending cords engage the middle and outside terrets or rings of the collar, thus elevating the outside of the collar, and holding the sections apart. Like cords are sUf'pended from the frame for suspending the traces, back strap, and breeching, whereby the whole harness is suspended, and the horses take their places under it, and the entire harness comes down on them. The frame is suspended in proper position by means of cords or ropes passing over pulleys, connecting
WORSWICK MANUF'q CO. V. CITY OF. KANSAS.
241
with a rod extending transversely across the bars on the ceiling, and thence by cords down the sides of the wall of the room, connecting with a weight, which operates automatically, by which the whole process of suspension and letting down the harness on the horses is accomplished. The Hale device also employs the opening collar, with hames attached; at the top, and being secured at the the collar working on a rigid bottom by a spring-lock, different in its constrnction from that of the Sullivan patent. In the Sullivan device the fastenings of the suspending straps are detached from the harness by the dri\JEJr, after taking his seat on the engine or vehicle, by reaching a ring at the end of a rope running on pulleys above, and jerking it. In the Hale device the suspending cords are detached by the mere movement forward of the horses. The principal propositions insisted on by the defendants are substantially . as follows: (1) That the invention in the third claim of the Sullivan patent was substantially known to and use(l by others before Sullivan's discovery; and because of the history of the art the third claim of the Sullivan patent is to be restricted to the particular devices and apparatus described in his letters patent. (2) In view of the state of the art no invention was required in making the pretended invention and combination described in the said third claim. (3) The third claim of. the Sullivan patent is not for the same invention covered by anyone of the five claims in Sullivan's original application. and that the said third claim was granted in violation of rule 11 of the patent-office, and is therefore void. (4) The Sullivan patent, particularly the thir4 claim, is void on the ground of am biguity We are met at the threshold of this discussion with the snggestion that the validity and priority of the Sullivan invention has been adjudicated in complainants' favor in the case of Manufacturing 00. v. City of Bujfaw, reported in 20 Fed. Rep. 126. It requires no citation of authorities to .the proposition that that adjudication constitutes no. estoppel. The respondents were not parties to that litigation, nor do they sustain the relation of privies to the city of Buffalo. The only consideration to which that decision is entitled, aside from the recognized ability of the judge, rests upon the comity between courts. The broadest .application that can possibly be claimed for this principle is that the decision of courts of co-ordinate jurisdiction upon the same SUbject-matter of controversy is entitled to high 'respect as a precedent, when the subSequent case presents substantially the same state of facts. The former case is not conclusive. After giving due weight to all prior adjudications, the question of infringement of a patent is still to be determined in each particular case as it arises on the evidence adduced. Manufacturing Co. v. Judd, 28 Fed. Rep. 621; Blake v. Robertson, 6 O. G. 297. 'Vhere the facts in evidence are materially different, a decision of the supreme court itself sustaining a patent may not be followed in a suit between other parties. Kirby v. Manufactttring Co., 10 Blatchf. 307. A comparison of the pleadings and evidence in the Buffalo Case with these in the pending case, satisfies us that the questions of fact as well as law to be considered and determined here are materially difi'erv.38F,no.3-16
242
FEDERAL REPORTER ,
ent. The defense is not only placed on new and additional grounde, 'but new and important facts have'been developed and presented. The case, therefore, must stand On its 'Own merits. I That the third claim applies to a single as well Rsdouble harness suspension the complainants are in no position to deny. In paragraph commencing on line 13 ofthe second page of the ;printed specification of the Sullivan patent it is stated that" the same arrangement of harness can be readily applied to a hose-cart or other apparatus using one horse." It also states that lhe parts will be connected with the shafts. And this is the construction placed by the complainants on the patent. In their circular letter, in evidence, commending this device to the pubHc, they say: "This Sullivan patent broadly covers and includes all and any method of suspending a harness over the place where it is designed to be put upon a horse." This circular letter has for its ftontispiece the cut of a single set of harness in suspension. It must therefore follow that, if a single set of harness ,was suspended and used on substantially the same principle prior to the application of the Sullivan patent, the novelty of'the third claim in is'sue would be broken, and the Sullivan patent must berestricted to the particular device expressed in it., The fir!lt inquiry in this connection i$, what was the state of the art anterior to the Sullivan patent of 1875, 'respecting the sllspelllsion of a single set of harness? Respondents have 'taken a large amount of evidence, with photographs,cuts, and exhibits, presenting in detail the extent of efforts in this direction, at various times and places prior to 1875. We will notice the principal instances. Oleveland, Ohio. It appears from stipulation of counsel that in the 'atables, of the Hughes' Brewing Company, at this city, in 1873, there 'was one set of double harnessstispended over the horses. After the ,horses were unhitched from the vehicle, and thereby separated from each other, each horse,having his own harness on, went to his stall, where the bridle and collar were removed in the usual manner, and hung .upon brackets. The balance of the harness was raised from each horse separately, and held suspended iil that position ready for replacing on ·the horse ashe stood in his stall. Over each horse there was secured to the ceiling or rafters above,twopulleys, one over the front of the horse single, and the one over the rear double, through which there passed a rope, to the end of which, coming ill contact with the harness, were attached two snaps. In suspending theharnesB said 'snaps were fastened thereto as follows': One snap in the top breeching ring, the other in the ,top hame-strap of the back-band. When said snaps were so secured to ,the the rope was drawn, 'and the harness was raised up over the horse, and the rope secured to a pin in the post. A photographic view ofthis harness in suspense is in evidence. By releasing the rope frotu ,the pin the harness was lowered onto the horse. The harness has thus been used in suspension in this stable ever since.' Said harness was of such unusual weight that the men complained of handling it in the usual way, and this led to the invention of the said device for suspend-
WORSWlCi: lIlANUF'G CO.
v.
ClTY· OF KANSAS.
248
ing and loweringit byttleal'ls ofsaid pulleys. Theoriginalhooks, leys, ,and snaps used in this device are presented in court. This uge at this stable was public, and well known. The Allegheny City dtvice. .It is stipulated between the parties hereto that as early as 1871 there was and has been used up to 1879 a device by which the harness, with the shafts or thiDs attached,was suspended over the horse without the suspension of the collar. Said device consisted of two pulleys,-one secured to the ceiling immediately over the shafts of the carriage, and the other to the ceiling at its junction with the side of the room, and to the front of the carriage. Through these pulleys was placed a rope, one end of which, with a hook or snap thereto attached, descended from the pulleys over the shafts of the carriage, while the other end of the rope hung from the other pulley down the side of the room, entering the cellar or basement of the building through a hole in the floor, and 'then being secured to a balance weight.. That when the horse was attached to the hose-earriage, and it was desired to unhitch him therefrom, the lines were ullsnapped and the traces unsnapped from the hames. Then the end of the rope with the snap hanging from the pulley over the shafts of the carriage was secured to the check-rein hook on the saddle or back-band of the. harness, and all ofthe harness, with the shafts, was p)]lled up and suspetidedover the position to be taken by the horse when he was to be harnessed to the carriage, except the part of the harness named, aforesaid, to-wit, the bridle, hames, and collar. When the horse entered his stall, the collar and hames were raised from his neck, and he was .relieved of the weight thereof by means of a pulley secured to the ceiling over the stall, through which there ,was a rope, having at one end a SURP, which was secured to the collar and hames; at the other end a balance weight. When there was an alarm of fire, the horse starting from his stall, detached. said last-named snap from the collar and hames, and, taking his position at the hose-carriage, the shafts and harness as aforesaid suspended were pulled down, .and the harness fell in place on him. Then the girth was secured, the traces snapped to the hames, and the lines to the bit-rings, and everything was ready to run. Extensive notices of this suspended harness were published in the various Pittsburgh papers at various dates in 1871. From this description, and the photographic exhIbit, it is apparent that the entire set of harness, excepting collar and hames, was suspended on substantially the same principle as that involved in the Sullivan patent, and even the collar and hames by moans of a.pulley were so suspended as to relieve.the horse's neck from their weight; and, had the collar been open at the bottom, it would have presented a ·case of the wholecombinal,ion. But for the latter device no patent could 'havebeen obtained, lor the reason that the open collar and hames device had long prior therlJto been discoyered, and patents of invention issued therefor to other parties. Dr. B. F.Whitney. The evidence shows that Dr. Whitney, apracticing physician at Loudonville, Ohio,. prior to 1860, and at· Mansfield, Ohio, between 1863 and 186l3,used a device by which he su.spended the
FEDERAL R'EPORTER,
harness and shafts of the vehicle employed in his praCtice. The photographic view of this device, in evidence, shows the complete suspension of the harness, with the shafts, by means of pulleys hung from thec1jiling with weights attached at the endsof the rope. The tugs were left attached to the vehicle, and by the device the harness was completely drawn off the horse, and held in suspense over him, as also the thiUs. He employed one or two hooks. The witness states: "I threw the collar and haoies back on the hooks, and hooked the hooks into the terret behind. I backed the horse sometimes; sometimes I drove the horse into the stable, and raised the harness up, and dropped it on the horse. The rigging I had to support the horse's collar separated the harness so that it would fall on the horse's back, and the harness was kept apart. I just took hold of the weights and pulled them up, and let the harness come down on the horse's back." He used a heavy wire, bent, by which he attached the rope to the back-band or saddle. "The wire was suspended by a rope through the pulley, one end of the wire hooked into theterrets or saddle rings, and the hameswere laid over the other end of the wire. The wire represented in the drawing held the collar hames apart from the saddle or back-band." This witness testified that the collar was attached to the hames in a single harness, and the hames were secured to the collar by a loop' or buckle on each hame. The collar was open at the bottom. "After unbuckling there were two straps that buckled on top of the collar, and a wide strap at the bottom, holding the collar and hames together. Unhitch that strap at the bottom of the hames, then raise the collar and hames together." This was at Loudonville. Later, at Mansfield, the witness testified to the use of a double harness suspended in the same manner, and with the employment of additional pulleys, one on either side. For the single harness he there used a breast-strap in lieu of collar and hames, which was fastened with a buckle which was unbuckled before suspending. By his device, he testified it was much more convenient and rapid in harnessing and unharnessing, especially at night, and it kept the harness in better condition. While it is to be conceded that the evidence as to the employment of double harness by Dr. Whitney is not satisfactory, yet we can discover no reasonable ground for discrediting his testimony as to the suspension of an entire set of single harnt'ss, as stated by him. He is sustained by other evidence as to the principal fact of suspending a single harness by pulleys, and letting it down on the horse by the same means. St. Joseph, Mo. The evidence strongly tends to show that as early as 1871 a device was in Use by the fire company of· this city for suspendingan entire set of single harness, and also the collar and' hames.· The manner of this suspension is described by the principal witness, as follows: A string was tied to each sidtl of the collar. There was also a string tied to each side of the back-band or saddle, and a string tied to the center of the breeching. These strings extended to the ceiling; mak':' ing, in ull, five strings. The traces were left fastened to the single-tree, and when the harness was suspended the shafts were also elevated with it; and, when ready for the run, the horse was placed under the harness,
WORSWICK MANUF'G CO.
CITY OF KANSAS.
245
the open r:ollar and hames held in· suspense were pulled down on .the horse's neck, and fastened by means of an iron catch; one man grabbed the sbafts and bose-reel, pulled tbat down, breaking the strings, and fastening the belly-band underneath the horse. The shafts were not pulled from the shaft rings or holders attached to the back-band. The strings used for suspending the harness were heavy twine, with a piece of cotton string tied to the end of it, and when the harness was pulled down this cotton string was broken; that is, that part attached to the harness. When returned to the engine-house, to unfasten the horse he was driven under the point of suspension of the harness, the lines were untastened from the bit, the hames uIlclasped at the bottom, the cotton string reattached to the harness and the twine strings, and the horse led out. The weil;ht of the hose-carriage dropping to the rear elevated the shafts. Exhibit is made here in court of the open collar, with hame attached, and the clasp fastening the hames used by this company. These devices were used for some time by this company; alter that they laid the harness on top of the shafts. The advantages of the device above detailed were quickness in getting the horse harnessed, the preventing of the chafing of the horse by wear of the harness, and giving him better rest in the stall. It is true that some countervailing evidence was introduced by the complainants. At best it is of but a negative character,-that certain witnesses, with favorable opportunities, did not see the collar and hames thus suspended; but the overwhelming weight of the evidence supports the fact that the harness and collar and hames were suspended. ·This evidence is detailed by a number of unimpeached witnesses with a .circumstantiality of statement that can leave no reasonable doubt of their truth in any impartial mind. Louisville, Ky. Evidence respecting a similarity of the device used at this place as early as 1872 was presented on the trial of the Buffalo Chse. Of this Judge COXE in his opinion in that case observes: "There was also evidence tending to show that in 1872, at Louisville, the harness of a hose-cart was suspended by a rope and pulley from the ceiling, oand that the collar was hinged and was fastened. by a suap or spring-lock at the bottom. No witness was called who recollected seeing a harness for fire-engines suspended prior to the date of the patent. But. if not discredited. the evidence relating to the Louisville apparatns would certainly have the effect of restricting the claim within exceedinglynllrrow limits. The oCOmplainantshave, however. succeeded in shOWing that there may well be a mistake both as to the time when and the manner in which the hamess was suspended at Louisville." Had the evidence now presen'ed touching this issue been before that .court it is inconceivable to us that such a conclusion could have been reached. Much additional evidence is llOW presented, with an array of facts and circumstances tending to establish a similar suspension of harness which we can find no reasonable grounds for diecrediting. To dis.credit it would be to violently attribute bold perjury to a large number {)fwitnesses whose veracity we discover no sufficient reason for assailing. There are at least a dozen witnesses to this issue on behalf of respondents,. While some of the witnesses introduced by the complainants hav£:l
246
FEDERAL 'REPORTER,
testified to the suspension of the harness. The only evidence of any corrupt tampering with witnesses was not on the part of the respondents. At the taking of depositions at this place, a model of the alleged device, since constructed, was produced, as also before' this court, which, if proximately representing the fact, clearly demonstrates that in respect of a single-harness suspension the device of Sullivan was anticipated. The inventor of this device was one Thomas Pendigrast, connected with the fire department at that time. The character of this witness is assailed by complainants' counsel with severe invective; but we fail to find any of the ordinary methods resorted to in evidence to discredit his testimony, aside from the fact that the witness was under the influence of an impression, in ignorance of the statutory limitation which would preclude the realization of any such expectation, that, if complainants should fail, he might be ina position yet to advance his claim to a patent as the original inventor. We may eliminate from this evidence the statements of this witness wherein they are not essentially corroborated, and the evidence will establish, so faras human testimony can be relied upon in any business affair, that there was in use in the city of Louisville, about the year 1872, a complete suspension of a harness in combination with a fire hose-cart, so similar in principle to the third claim of the Sullivan patent as to constitute it an anticipation of the invention of such suspension. The expert testimony, by a decided weight, is that such a. device as claimed to have been used at I.ouisville is clearly covered by the third claim of the Sullivan patent, and the reasons assigned therefor are incontrovertible. The resistance made to this proof by the complainants is an implied admission oUts damaging effect upon their claim. "The exceedingly narrow limits," alluded to in the opinion of Judge OOXE, to which the Louisville devioe would reduce the third claim of the Sullivan patent, would be to restrict it to the mere improvements made in the mechanical contrivances by which greater convenience in suspending and celerity in hamessingare attained. The very utmost that can be claimed under the countervailing evidence offered by complainantsreis that it is calculated to create a reasonaspecting the Louisville ble doubt in the mind of the court as to its completeness. The general rule is that the issuance of a patent is presumpt.ive evidence of the novelty and utility of the device; lind it devolves upon him who defends upon the ground of an anterior discovery and use to show it by such convineing proof" that the court cll.nsay without hesitancy that the allegations of the answer are irue." As applied to the Buffalo Case, this rule was properly invoked, because the city of Buffalo did not claim to be acting under the authority of a patent conceded to it by the government; whereas, in this case, the respondents claim to he acting under a patent granted to the respondent George O.Hale,-":patent No. 330,320. In So COl)troversy between two such patentees the above rule does not apply further than that the complainant in making out a prinuL facie case may· stQP after putting in evidence his patent. The rule in question rests upon the fundamental postulate; that by the act of granting the patent the department officials adjudge that there exists,prima facie, a patenta-
WORSWt'CK MANUF'G
co.
V.CITY
OF
KANSAS.
247
ble device possessing novelty and utility. Its origin is discussed in (l,orning v. Burden, 15 How. 271. The rule being founded on the ,[act that the patent was issued after due inquisition made by skillful and sworn publie officers, GRIER, J., says: "And, if'so, it is not easy'to perceive why the defendant, who used a patented machine, should not have the benefit of a like presnmption in his favor, arising from a like investigation of the originality of his invention, and the jUdgment of public officers that his machine is new, and not an infringement of the patent, previously granted to the plaintiff. '" '" '" It is true, the mere question of originality or infringement generally turns on the testimony of the witnesses produced on the trial; but if the plaintiff's patent in a doubtful case may have some weight in turning the scale in his favor, it is but just that the defendant should have the same benefit from his; valeat quantum ,'I,laleat. The parties should contend on an equal field, and I be allowed to use ,tbe same weapons."
The claim of the Louisville device was, substantially, by suspending the harness over the reel or hose-cart byrope and pulley and balance weight fastened in the ring of the saddle, released by rope fastened to ,the wall, with a pin through, this rope in the ring of the saddle, and an open collar ,at the bottom, with a hame attached. The shafts wereelevatedwith the harness. 'That the harness proper was tlms suspended and used for a considerable length of time is established by an over'whelming weight of evidence, supported by'several of the witnesses introduced by the complainants. , In fact, the only debatable ground of "controversy on'this evidence is as, to whether the collar,' opening at the "bottom, withhames attached, was suspended 'in combinati6riwith the The evidence, we think, establishessuchcombiuation. But if it ile <;<lnceded that the collar llnd hames were p.ot thus suspended in ,conjunction with the harness ,at Louisville, would this fact alone defeat "the defenses? As already stated, the evidence incontestiblyshows that , at the grant of his letters patent Sullivan was not entitled to assert' the ,claim of novelty for the invention of such open collar with hames attached; for this claim, Bet up in his original application, wasrejected by the commissioner, for the reason that it had been anticipated. The utmost,therefore, that can be predicated of his third claim,on the score of novelty.in this particular, isa .device for suspending the harness in combination with the collar and hames. This'Dr. Whitney testifies to having done; and both collar and hames were suspended at St. Joseph. And if this evidence were rejected, the question arises, was the actofthe .simultaneous suspension in co:rpbination patentable as an original invention? "The law means, by invention, not maturity. It must be the idea struck out, the brilliant thought obtained, the great improvement in embryo. He must have that; but if he has that, he may be years improving it -mattiringit. It may require half a life. * * * But the period when he strikes out the plan, * * * that is the time of the inverition,-that tilne when the discovery occurs." Ada'm8 v. Edwards, 1 Fish. Pat. Cas. 1; Merely improving the conception of another by change in form, . propbrtion, or degree is not such an invention as will sustain a patent. Thebe:rath v.Harness Trimmirtg GJ., 15 Fed. Rep. 246. A device wbich
FEDERAL REPORTER, vol. 38.
is merely the result of mechanical skill is not patentable. So, where an article exists in a given form, and applied to a given use, and is taken in substantially the same form and applied to an analogous use, so as to make a case of mere double use, there is no invention. Crandal v. Watters, 9 Fed. Rep. 659. So it is said that "in order to ascertain and determine whether the change in the arrangement and construction of an existing machine is to be considered as a substantial change or not, you must ascertain and determine whether the change is the result of mechanical skill worked out by mechanical devices,-of a knowledge that belongs to that department of labor,-or whether the change is the result of mind, or genius of invention, in which you discover something more than mere mechanical skill and ingenuity. A change in the arrangement and construction is not substantial, unless you find embodied in it, \ over and beyond the skill of the mechanic, that inventive element of the mind which is to be found in every machine or improvement that is the proper subject of a patent." Tatham v. Le Roy, 2 Blatchf. 474. So . Mr. Justice STORY, in Bean v. Smallwood, 2 Story, 408, said: "Now. I take it to be clear that a machine, or apparatus, or other mechanical contrivance, in order to give the party a claim to a patent therefor, must in i'tself be substantially new. Hit is old, and well known, and applied only to a new purpose, that does not make it patentable;" So, in Hailes v. Van Wormer, 20 Wall. Justice STRONG. said: "All the devices of which the alleged combination is made are confessedly old. No claim is made for anyone of them singly, as an independent invention. It must be conceded that a new combination, if it produces new and useful results. is patentable. though all the constituents of the combination were· well known. and in common use, before the combination was made. But theresult must.be a product of the combination, and not a mere aggregate of severalresults. each the complete product of one of the combined elements. Como. bined results are not necessarily a novel result, nor are they an old result ob. tained in a new and improved manner. Merely bringing old devices into juxtapOSition, and t,here allowing each to work out its own effect, without the· production of something is not invention." See reCallt decision of THAYER, J., in Brinkerhojfv. Aloe, 46 O. G. 338341, 37 Fed. Rep. 92. The expert witness CQwles testified that it would not require an invention to raise the collar and hames with the harness. "When provision is made for raising the harness. as shown in Photographic Exhibit A, to attach an additional matter would not be inventable. It would require some mechanical change to do this in this case. But as I understand the Sullivan patent in the third claim. he does not claim the dividing of the col· larat the breast or thrQat, and attaching the hames thereto. The point of the third claim is the conlbination of a device with the harness for a fire-engine, or of a like apparatus. for suspending the harness above the place occupied by the horse; that is. in this claim he has provided a way and means for raisingthe harness, and suspending it. Now, when Photographic Exhibit A pointed out the·way for suspending the harness, as it does, it accomplishes what is claimed in the third claim. It employs substantially the same means to do thll' act of suspending, and employs them substantially the same way. To add mOl'e or less to what it raises would not require inventfon,-that is, so far
WORSWIC'K MANUF'G CO. II. CITY OF KANSAS.
249
accomplishing the act of raising or suspending. It might require modification or change to prepare the harness to be raised. but this is not the object of the third claim. That is provided for by other claims." The witness Robertson, whose reputation as an expert in such matters gives him great respect, testifies that there was nothing whatever in the third claim which limited it to a device of a suspension "supporting the collar as well as the saddle and breeching." The criticism made by this witness upon the evidence of the witness Knight, who testified as an expert on the part of complainants, is so pertinent and sensible as to justify its presentation in this connection. He says: "Mr. Knight takes the ground that the third claim is for a combination of two elements; but. knowing that the combination of those elements is an old one, he takes the ground that the elements must have structural peculiarities to adapt them to work together; but he fails entirely to show what these structural peculiarities are. Instead of this. he states that the harness mnst be such as is adapted to be used with a suspension device, and that a suspension device must be adapted to the use of the harness. In tl'ying to explain the third claim on his theory. the witness Knight brought into it. by mere implication, structural peculiarities which he could not define, and whichare not referred to in the claim itself. He admits that a claim for an old combination, which depends upon structural peculiarities to make it valid, should have such peculiarities flpecifically named in it; but no such peculiarities are pointed out in the third claim, and it is impossible to ascertain from his testimony what the structural peculiarities referred to are." In the opinion of this witness, allY one who desired to build a device for suspending a harness on the principle previously used by Dr. Whitney, or at Allegheny City, Louisville, or St. Joseph, could UQt possibly tell from this construction of Sullivan's third claim whether or not he was infringing it. Nor could any court tell whether he was using the structural peculiarities referred to by Knight, or only using what had been known before the Sullivan invention. "As a matter of fact the only structural peculiarities shown in Sullivan's patent are those covered by the first and second claims [thereof,] and which are not used by the defEmdants, if they use the Hale patent." In short, the position taken by the complainants in this controversy can only be maintained upon the theory that any suspension of any part of the entire harness by ropes or straps and pulleys over the horse, so as to be let down upon him in position at the pole, would be an infringement of the Sullivan patent. For, as already shown, the Sullivan device does not accomplish the complete suspension of the entire double harness, as does the Hale device. The very attitude of the complainants is that the suspension ofadditional parts, though by different appliances and mechanical structure in the suspending machinery, is but the application of the already discovered idea of such suspension.' In view of what had preceded, we do not attach so much importance as do the learned counsel for complainants to the fact that as a result of the Sullivan device the facilities for harnessing horses have been greatly increased, and the time occupied in reaching conflagrations materially lessened. For any such improvements on the prior .known methods Sullivan was entitled to a patent; but it does not follow
260
. FEDERALREPQRTER,
that such improvementsgi ve him a claim as the inventor of the idea for such suspending harness, so as to exclude others from employing any method of suspension without using bis improvements. "The prior machine may have been inferior to the subsequent one, and may not have performed its work so well, but so long as it is substantially the same, and was a perfected invention, it anticipates the Curt. Pat. § 87a. While the fact may be conceded that the improvement made by Sullivan is 80 superior to any of its character which had preceded it that no one using it would return to the older methods, this does not necessarily establish the material tact of the novelty in principle of the Sullivan device. There are almost innumerable improvements inthe application of old devices and discoveries in mechanical art which no one would willingly surrender for their predecessors, yet no claim could be set up for the latter beyond their improvement upon the conception and application which had preceded it. Manifestly no one would exchange for practical use the Hale devices for suspending harness and harnessing the and appliances, horses for Sullivan's. The superiority of the Hale in most important particulars, was virtually conceded at the hearing. . The history of Sullivan's application for his patent shows that his assertion of a prior right in the field ofinvention for a suspended harness. per Be, is an after-thought. ,. In his npplication he merely stated: "That your petitioner has invented an improved harness for fire-engines nnd other apparatus." The statute (Re'v. St. § 4892) requires that such applications shall be accompanied by the oath of the applicant that he verily believes himself to be the original inventor or discoverer of the art for which l1e solicits a patent, and that he does not know, and does not believe, that the same was ever before known or used. This oath is an essential prerequisite to the exercise of jurisdiction on the application by the commissioner; and the courts assign the making of this oath as a part of the groundwork for the rule that the letters patent are prima facie evidence of the requisite novelty arid utility. Alderl v. Dewey, 1 Story. 336; Inre Fultz. 1 MacArthur. 178; In-re Wagner, Id. 510. In the only oath ever made by him. either in the original application or in the amended application, he simply stated "that he verily believes himself to be the original and first inventor of the within described and claimed improvements in harness for fire-engines and other apparatus; and that he ·does not know or believe that the same. was ever known before his discovery and use." In his fifth specification of claims, which referred to the .suspension of harness, he limited it to the means of suspension by the spring barrel and a coil-spring capable of sustaining the weight of the harness. A patent granted conformably to this claim would have been restricted to a harness suspended by the means and appliances described, and there ;would have been no infringement of it in suspending by other means. "A patent, like a contract, must be so construed as to effectuate the intention of the parties. So where, in the specifications for a· patent 'bed bottom,' the patentee described the framework as 'wooden.' it was held th5,t the intention of the patentee was to claim a 'wooden frame'to theex.clusic)l1 of other material. and that the
CO. tI. CITY OF ¥:ANSAS.
use of an iron frame for the same purpose is not an infringement." Harris v. Allen:,15 Fed. Rep. 106. This fifth claim was rejected on the
ground that "it should be for the mechanism." Thereupon the third claim, at the instance of applicant, was substituted therefor. In 1873, the commissioner of patents, with the approval of the secretary of thE!, interior,as authorized by Rev. St. § 483, adopted among its rules of practice the following rule: "(2).In case the applicant by amendment seelts to introduce any claim not substantially embraced in the original affidavit, he will be required to file a. supplemental oath relative to the invention as covered by such or en., largt;d claim or claims; and such supplemental oath must be upon the same ' paper which contains the proposed amendment."
The evidence shows that no such supplemental oath accompanied the amendment. Without undertaking here to say that such omission vitiated the third chtim, it is sufficient to say that this fact gives strong color to the inference that in rejecting the fifth claim on the ground that it should be for the mechanism only, and allowing the substitution of the third claim without the additional oath, the commissioner did not regard the third as an enlargement of the original claim, but as "substantially embraced in the original affidavit/' which, as we have seen, was only for "improvements in harness." And from the phraseology of the third claim it would seem that the applicant himself had more in mind the matter of suspending his particular harness than the suspension generally of 'any harness, for it. is "n device for suspending said harness." Be this as it may, giving to the claim a broader construction, so as to make it apply to the suspension of any harness, and it follows that to deny that it would not conflict with the priOlity6f such devices as are disclosed by the evidence, had they been patented, is to affirm that the Hale device is no infringement of Sullivan's. Decree'for respondeuts, dismissing the bill. BREWER, J., (concurring.) In this case I have carefully examined the testimony as to the Pendigrast harness and its use in LouisviUe prior to Sullivan's application for a patent, and am very well satisfied that a complete harness was suspended, as claimed by defendants. For that reason I concur fully in the conclusion reached by my Brother Pmups, that the defendants are entitled to a decree dismissing the bill. I may also add that given, as is conced!ld by complainants, the known idea of suspending a portion ofthe harness, it seems to me very doubtful whether the extension of this suspension to the entire harness can be considered as the product of inventive skill, or entitled toa patent for anything more than the mere mechanism by which the suspension is accomplished. I deem it unnecessary to express any further opinion in this case, nor have I had time to carefully examine the testimony as to the other cases . ' of alleged prior u s e . ·
252'
FEDERAL
REPORTER, vol. 38.
PHILI,IPS .". THE SARAH and THE TUCKER.l (Di8trict Oourt, E. D. PennBgl'IJania. March 19, 1889.)
1. 2.
CARRmRs OF GOODS-:B'.UJ,URlll TO DELIVER.
A common carrier, failing to deliver goods intrusted to it, must show sufficient cause for such failure. A tug contracting to convey a tow to its destination must do so in the most direct customary route, exercising care and skill in so doing.
TOWAGE-DIRECT ROUTE.
S.
SAME-'AcCIDENT TO Tow-NEGLIGENCE OF TUG.
A tug contracting to tow a barge from Gray's Ferry to its destination at Cooper's Creek. violated her obligation by stopping at Point Breeze to deliver a cargo. thereby having to lay to for the night at Christian-Street wharf. The barge sprung a leak at the latter place. and capsized. Held that, the disaster having occurred while the tug was violating her duty. she must prove it was unavoidable, and did not result from her disregard of duty.
In Admiralty. Libel for goods lost. The facts were as follows: Libelant shipped brimstone, by the bargeTucker, from Harrison Bros. & Co.'s wharf, Gray's Ferry, Philadelphia, to Cooper's Creek, N. J. The barge engaged the services of the tug Sarah to tow her from Gray's Ferry to Cooper's Creek. The tug, having on board a cargo of barrels, stopped at Point Breeze to unload them, and was detained there so that she had to proceed with the barge to Christian-Street wharf, Philadelphia, and lay up for the night. Whilethere the barge sprung a leak, and capsized. The libel was thereupon filed to recover the value of the goods. The tug defended on the ground thl!lt the accident was unavoidable. .Ji1rancis S. Brawn and Theodare EUing, for libelant. John F. Lewis,. for tug Sarah and barge Tucker. BUTI,ER, J., (after stating the facts as above.) The obligations of thebarge were those ofa common carrier. Having shown no sufficient excuse for her failure to carry the merchandise safely, she is liable for the loss sustained. Those of the tug were different. They were to convey the barge expeditiously, by the most direct customary rOlIte, to her destination, exercising proper care and skill in doing it. She entered upon the service with intent to disregard her obligations. Having on board a cargo of barrels, she intended stopping at Point Breeze to unload them, then proceed to Christian-Street wharf, and lay up for the night, and this she did. How much time was lost at Point Breeze is uncertain. Evidently it was considerable. 'One witness (who was on board) says she waited for help to unload, and lost several hours. Other witnesses make the time less. I have little doubt it was more than two hours. Leaving Gray's Ferry near 1 o'clock, (as I believe,) she did not reach Christian street until about 7. How long she lay at the wharf before capsizing, is not clear. It was probably near an hour. Whether she could have reached her destination by this time is uncertain. While I inclil1ll 1 Reported
by C. Berkeley Taylor, Esq., of the Philadelphia bar.
PHILLI:fS II. THE SARAH.
253
to believe she could npt, I am not convinced of it. It is unimportant that the tug could not enter Cooper's Creek. Having undertaken the service, she was obliged to get the barge there. If unable to do so, she should not have undertaken it. It is equally unimportant that her owner ordered her to stop at Point Breeze, and lay up at Christian street. He had undertaken to carry the libelant's merchandise, and it was his duty to do so, expeditiously and directly. The tug's obligations corresponded precisely with his. As before stated, she started with the barge, apparently seaworthy, and in good condition. While lying at Point Breeze, the latter was found to be leaking. This leak appears to have been stopped. After reaching Christian street, she was leaking again, very badly, in another place. This leak could not be stopped, and very soon capsized her. Under these circumstances, the tug must prove that the misfortune did not result from her disregard of duty. This she has not done. It is urged that the barge could not have reached her destination by the time she capsized, and that the misfortune was inevitable. As before remarked, it is not proved that she could not have reached her destination before the time stated. It certainly is not proved that the extraordinary leakage, and the unusual consequences, would have occurred, if she had been kept directly and expeditiously on her course. Witnesses are produced who say they do not know that she was bumped or jammed; and that she was handled skillfully-so far as they observed. Th1's, however, is not sufficient. It does not tend to account for the extraordinary occurrence-of a vessel in apparently good condition, in smooth water, springing two leaks in the course of a few miles, one of them so bad as to be uncontrollable and capsize her. The disaster having occurred while the tug was violating her duty, she must, as before stated, prove that it was unavoidable. This she has not done. To say that the leakage might, and probably would, have occurred in the absence of such violation of duty is simply guessing. Possibly it is true. To admit that it is probably true, would not help the respondent. It is not shown to be true, and cannot be shown. In this respect , the case is much like Da'Vis v. Gmrett,6 Bing. 722, in which a vessel was charged with a loss of her cargo while off her course, by storm. It was urged in answer, that the storm would have caused the loss, if the deviation had not occurred. The court very properly said: "But the objection taken is tliat there is no natural or necessary connection between the wrong of the master in taking the barge out of its proper cours!", and the loss itself: for1;hat the same loss might have been occasioned by the very same tempest, if the -barge had proceeded in her direct course. But if this argument were to prevail. the deviation of the master, which is undoubtedlya ground of action against the owner, WQuld never, or only under very peculiar entitle the plaintiff to recover. For if a ship is captured in the course of deviation, no one can be certain that she might not have been captured if in her proper course. And yet, in Pa1'l,er v. James, 4 Camp. 112. where the ship was captured whilst in the act of deviation, no such ground of defense was even suggested. Or. again, if the ship strikes against a rock. or perishes by storm. in the one course, no one can predicate that she might not equally have struck upon another rock, or met with the same or another storm. if pursuing her dghtand ordinary voyage. The same answer might be at-
254 had; ,by parcel bythEHvfong conveyance, and, a ]OS8 had thereby ensued; and yet the defendant in tllat case would' undQubtedly be liable:" " teinpted to an
a
TlrEMARY RILEY 11. THREE THOUSAND RAILROAn
TIEs.
Court, B. D. Penn8yl1Jania. February 5,1889.) f
1.,DEMURR,\GE-RIGHTS OF VESSEL.
In the a,bsence of an express contract, a vessel is only entitled to demurrage wllen detaiIled'through the fatiit of the shipper or consignee. OF Cj.'RRIAGE.
2.
Where a custom is established requiring vessels to wait their turn in un· loading at a particular port, the master is held to contract with reference to it; and, if no stipulation for demurrage is made in the contract, he assumes the risk of d e l a y . ' " ' SHIPPING-'--CARRIAGE OF GOODS.....F:aEIGHT-SUIT.
8.
A claim for freight cannot be sustained where the freight had not become due when suit was brought. ' , (Syllabu8 by the Court.) ,
In Admiralty. Libel by John Taylor, maste:t: of the schooner Mary Riley, againsf3,OOO railroad ties lately laden in said schooner, for freight and demurrage. Clutrles Barclay, for libelant. . John A.Toomey and Henry R. Edmunds, for respondents. BUTLER, J. 'October 7th last, J. W. T. Lee shipped on the Mary Riley a cargo of railroad ties, conEligIled to his own order at Philadelphia. The vessel arrived in due course, and was ordered by Lee's agent to the Pennsylvania Railroad Company's wharf. On going there she found a number of vessels ahead, unloading in order of arrival, and was thus detained in getting rid of her cargo. The master complained repeatedly of' this, and after some days Lee's agent, on being informed by the master that the ties were all white oak, sent the vessel to the Reading Railroad Company's wharf, where such ties were wanted. When the vessel arnved there, and the ties were inspected, and found to be of a different description, they were rejected. She was then ordered back to the Pennsylvania Company's wharf. , In the mean time several other vessels had arrived there, and the delay in up was thus increased. Seventeen days elapsed between the vessel's arrival in port and the time when unloading commenced. To recover demurrage for this, and also a balall<;e of $103.43 due on account o( freight, the suit is brought. little conflict in the testimony respecting the circumThere is stances under which the vessel was ordered to the Reading Company's wharf. I find them to be, however, as just stated. Lee's agent knew that, the latter company would only receive white oak ties, and the fact that he ordered the vessel there seems to be conclusive that he under-
I