FAWCETT
v.
'" CELLULOII;l HARlflllSS, TBIHMING CO.
739.
FAWCETTV.IRUBBER
&
CELLULOID HARNESS TRIMMING CO.
(OirlJ'Uit Court, D. N(JlO Jer86Y. April 1,1889.) PATENTS FOR !NVENTIONS-NOVELTy-HARNESS-MOUll:TINGSo
Claim 1 oOetters patent granted December 26,1871, to Willlam Fawcett, which is for covered with leather or hard rubber up6il· the outer side,leaviuK the inside uncovered," is void for want of novelty.
In Hearing on bill and proofs. .Bill by William Fawcett against the Rubber & Celluloid Harness T.l:imming Company, for infringement of letters patent No. 122,163. bill waS filed in August, 1878, and the cause was at issue early in 1879. Some testimony had been taken, when, on October 8, 1879, it was stipulated that proceedings be suspended for three months from that date for the <;lonvenience of counsel. Nothing further was done until January, 1888, when complainant obtained an order appointing a special examiner to At the hearing it was objected that this delay of nearly nine years was a bar in equity to the consideration of the case; but the. point was not pressed, and, as neither party appears to have been eager to speed the cause, the court refused to sustain the objection. A. V. Briesen" for complainant. . J. O. OUiytfmand A. Z. Keasbey, for defendant.
WALEs, J ·. This isa suit in equity, brought to restrain the infringement by the 'defendant of letters patent No. 122,163, granted toWilliam Fawcett,thecQmplainant, December 26,1871, for improvement in aring harness-mountings. The specification set forth that the"Invention has for its object to furnish an improvement in covering harnessmountings,· simple in construction, convenient in application, inexpensive, and at the same time will give a neat and elegant appearance to the mountings; andit·consists in the covering applied to the mountings, as hereinafter more fully described. A represents a terret, the inner sJlrface of which is rounded off to receive the plating. The outer surface is also rounded off, and has a shoulder or recess formed in it near each edge, as shown iIi Figs. :& and 8. B is the covering, which may be made of leather or hard rubher. The covering, B,is moulded or otl1erwise formed, so as to fit upon the outer side of the mountings; the shoulders or recesses preventing it from slipping off. The ends of the covering are secured to the shank or neck of the mounting. For additional security, and to add to the appearance of the mounting, wires, C, may be passed over the covering, B, along the shoulders or recesses of the mountings, as. shown in Fig. 2, its ends being secured to the shank or neck of the mountings; or, if desired, the. wires, C, may be covered with or embedded in the covering, B, as shown in Figs. 4 and 5, so as to secure the said covering in place, and at the time be entirely out of sight. .This construction enables the covering to be applied to the mountings only upon the outer side, lea\'ing the inner side uncovered to receive the plating and the wear, thus avoiding facing the mountings with metal, and the attending trouble and expense." Only the first claim of the patent is in controversy, and is in these words:
740
J'EDERAL REPORTER,
vol. 38.
"(1) Harness-mountings, covered with leather or hard rubber upon the outer side, leaving the inner side uncovered, substantially as herein shown and described, and whether the wires! C, be used or not, as set forth."
!tis not denied that the defendant has made and sold terrets which are clearly within the specifications and claim. The defense is anticipation and want of novelty., Both parties had been engaged in the busi· ness of manufacturing harness-mountings, and were familiar with its progress, with the various styles adopted, and with the different materials used in covering and ornamenting them. Rings .and terrets had been entirely covered with leather or hard rubber long before the date of the plaintiff's patent, but it was found that the friction of the rein on the inner side of the terret would wear through the leather; and to remedy this defect the Tompkins patent, of 1862, for an improvement in hooks and terrets for harness saddles, provided for the ornamentation of the outside only of the hooks and terrets by means of a leather covering, but in a different way from that described in complainant's patent. The Dunham patent, of 1866, is for an invention which consists of a buckle or ring composed of a metal core, covered with or protected by India rubber. The Albright patent, of 1867, is for the application of a coating of vulcanized c!loutchouc, or rubber, to metallic trimmings for carriages and harness, so as to protect from rust, and impart an ornamental appearance. The Weiner patent, of July, 1871, shows a terret with a ridge in the center and shoulders at each side. In this terret the leather envelops the ring, and is stitched on the inside with a metallic lining spun up on theinside of the terret. These several patents are among the record exhibits of the defendant, and are referred to for the purpose of showing of invention by complainant, as well as to indicate the progressive stages of improvement in ornamented harness-mountings. The cores of these mountings have,· without any exception worth noting, always been made of metallic castings, which give them strength and durability; the leather or rubber coverings being used simply for beauty and finish. From the evidence and the exhibits produced at the hear. ing it appears that patents have been so liberally granted for improved harness-mol.lntings that the boundary between invention and mechanical skill or contrivance has become, in many cases, almost, if not entirely, effaced. If credit is to be given to the defendant's witnesses, terrets covered on the outer surface only with japan or vulcanized rubber have been long known in the trade. Mr. Theberath, a retired ·manufacturer, testifies that he found japanned terrets when he first went into the harness business, and that the only difference between the Fawcett terret and the Weiner terret, leaving the wires and the lining out ofthe question, is that one has japan and the other has leather. Mr. Albright, the president of the defendant company, says that' he has been engaged in the manufacture Of rubber-coated harness trimmings since 1867, and identifies a number of carriage and harness mountings, including terrets, center rings, hub-bands, and neck-yoke tips, as being the same, or similar to articles of that description made by him in the years 1868, 1870, and 1871; all of which show a covering of hard rubber on the outer surface
FA.WCETT II. RUBBER
&;
CELLULOID HA.RNESS TRIMlUNG CO.
741
only. His testimony is confirmed by that of several other witnesses, who' were in his employ, or in that of the defendant, during some portion of those years. The complainant admits that, if defendant's exhibit No.8, "anticipating terret," was made in this country prior to complainant's patent, it would invalidate the first claim. 8 is a te,rret of German silver, with raised edges, and a rubber covering, on the outer surface only, between the rims. There is nothing remarkable or novel in its construction, when compared with other of defendant's exhibits, which were made at about the same time, and some of which have, just been mentioned. The credibility of this witness has been seriously attacked on account of certain apparent discrepancies between his present testimony and that given by him on a previous occasion in another casej but, without entering into a minute investigation of these alleged discrepancies, it is sufficient to observe that the exhibits now before the court were not produced at the hearing in the former suit, and that the testimony now excepted to is corroborated by that of other witnesses. There is also another defense quite as conclusive as that of the "anticipating terret," which may be derived from the Albright patent, of 1867, which gave the patentee the right to cover metallic trimmings for harness with vulcanized rubber, so as to protect from rust, and impart an ornamental appearance. There was nothing in that patent which prevented the inventor from coveling a part as well as the whole of the article. The use of the rubber was for protection and ornament, and it was discretionary with the patentee to cover the whole or part of the mounting, as hemight see fitjand the drawings accompanying the patent show that a partial covering was contemplated of some articles,: such as buckles and harness saddlesjand, if this partial use was applicable to one class of mountings, it would be equally so to all. In other words, there was no limitation in the Albright patent which made it necessary to cover the whole of the mounting or none at alL The complainant contends that his. leather-covered terret has taken precedence of;: and driven all others out of the market; but the defendant has not made any leather-covered mountings, and, so far as they are concerned, has,not infringed. It is also in evidence that the defendant has never used any other covering for terrets than rubber, which he had the right to do under his older patent. Again, it was candidly admitted that the complainant's invention was not of a very high grade ofingenuity; and it is more than questionable whether, in the absence of the "anticipating terret," the mere application of a leather covering to the outer surface of a solid metallic terret, in 1871, was evidence of that degree of invention which entitled it to the protection of a patent. Leather had been used for the same purpose, although attached in a different 'way j by Tompkins, who had also dispensed with the inner linipgj but the idea or principle was there, and it only required the exercise of judgment by a skilled mechanic to carry it one step further. For these reasons the bill mus-t be dismissed.
FEDEJtAn £
vol. 38. ,;
,
"
.
j
MICHAELIS
flat,v. ROESSLER et ql.
(Oirouit Oourt, D. N6'IJ) J'1)1'861/. March 26, 1889.) , As the second claim of letters patent No. 822,llJ4"issued July 14, 1885" to Gustavus Michaelis for" the manufacture of chloroform and purified acetates, " found by the court to embraoe only the manufacture of chloroform from the "liqnidproducts"named, and not the manufacture of chloroform from a'cetone. the subsequent manufacture of chloroform from acetone oJ;Jly is nota violatio.X1,of the injunction issued in accordance ,with such finding. OF. CLAIM. .'
In Equity. On motion for,contempt. For hearing on the bill, see 34 Fed. Wm. H.A-mottx, for the motion. Wayne Mac Veagh and Sirrwn Sterne, contra.
acodt it,and. have presented lengthy arguments on the subject. Of CQurse we knoWlwhat itmeans,-what the language was intended to express. If 8usceptibleof anotber:interpretation we could not adopt it, even though this might better express our present judgment. We believed it to ,be distinct and clear"and, when read in collnection with the opinionfiledf!could not be misunderstood. But foi'thedisagreementof counsel we would think so stili., We will restate (mora at large) the conclusions on which itl'ests. The second' claim of the patent, which alone was involved, reads as follows: . "'The production of chloroform ·frOm the liquid products resulting from the decomposition of crUde acetates at high temperatures by subjecting said liquidpJ;Oductato,the,action of a hypochlorite, and removing the chloroform tbereform as described."
What does the decree mean?
The parties disagree
" We claim to embrace just what its language imports,the manufacture of chloroform from all, subl'tantially, the "liquid products" .,naJlied, (containing this substance,) the higher-boiling ketones !'S ,well as the Jftcetone,-by the treatment described; and, consequently, that it does inot embrace the manufacture of acetone from acetates, nor chlorofoJ:mJromacetone That this is its proper construction we had no doubt" The language, considered alone, as we believed, plainly when read in connection with the specifications, and the patentee's statements on applying for patents in this country and Germany, will,hear no other. Clearly, we believed, it was not intended to embrace the manufacture ofacetone, (from anything containing it, by lUly"practicp,blexnethod,) nor the production of chloroform therefrom. 'rbe ptttentee,ftS, we found" attaches little importance to acetonej so little he as the specifications say, to avoid its production by bi,a,trElatment C)£ the acetates.iHe.oould not, however, as we believed, have embraced this if he had desired, because it was old. His method of decomposing acetates, and distilling the products, of themselves constitute nothing new. It follows, in our judgment, that the only novelty
.:. arlICHAELIB fl. ROESSLER.'
143'
embraced in the claim is (as before stated) the process of obtaining chlo·roform from the" liquid products" in the mannar described. The manufacture of chloroform from acetone, as formerly practiced, was expensive, and comparatively unprofitable. We found that the patentee was the first to discover that the liquid products of decomposed crude acetates contain many chloroform-bearing properties besides tone; that by treating them in the manner described chloroform may be obtained at reduced expense; and that this discovery, as before stated, is what the claim embraces. While we regarded the discovery as important, we did not consider it so important as the patentee asserts, because we believed him to be mistaken respecting thtl comparative value of acetone and the other properties of the described liquid, in obtaining chloroform. This mistake, however, which affects the importanCe of the discovery, does not affect the validity of the patent. We also found that the respondents had infringed,-that they had manufactured chl(m;>form, ll()t from acetone only, but from all the described liquid products. This was one of the most earnestly contested points in the case; the oomplainants asserting that the higher-boiling ketones were employed, and the respondents denying it. On this assertion the charge of infrh:lgement rested. With the proofs before us, the conclusion reached was unavoidable. It was to ,arrest this infringement that the decree was en" Are the respondents guilty. of contempt? The master reports that they neither sold nor manufactured chloroform, (since notice, of the decree,) except such as was obtained from acetone only. This finding, although excepted to, is now acquiesced in. It is conclusive of:.the question.The respondents changed their method of maI)ufacturing,after suit, for the purpose, as they assert, of excluding all else than acetone in procuring chloroform. These changes the master considersimxnaterial, -as effecting the result merely "in degree;" His finding, however, that the result is the production of chloroform from acetone only, proves him to be in error. The error arises from his mistaken belief that thia is substantially what the court found to be the result oftheir former opera.,. tions. But for this misunderstanding the report (which shows much care would have been against the applications. ThemO-: tion must be dismissed.
',,;l
144
FEDERAL REFORTER J
vol. 88.
EDISON
et ale v.
KLABER.
Uircuit (lourt, S. D. New York. April 5,1889.) PATENTs-INFllJNGEMENT.
Claim 20f letters patent No. 180.8157, August 8, 1876, to Thomas A. Edison, descrIbing a method of printing in permanent semi-fluid ink, by puncturing II. sheet of paper or similar material with numerous small holes, filling them with a semi-liquid ink, and pressing the same on the surface to be printed, the puncturing .needle being reciprocated by a shaft revolved by electro-magnetic mCltors, is hot infringed by letters of November 28,1882, and December 22, 1885, to David Gestetner, describing a process in which bamboo fiber paper, prepared with a layer of wax or paraffine, is laid on a zinc plate, and on it autographic writinlr is produced by a little instrument like a pen-holder, to the end of Which is attached a diminutive wheel, provided with microscopic corrugations which cut slits in the paper as it rolls, forced along by the hand of the writer, sinqe ,the Edison patent is not restricted to autographic writing, and also must be restricted to the use of a stencil made by an electric pen, both from 'the terms of the specification and from the fact that the process . was not otherwise new.
Action by Thomas A. Edison, Robert Gilliland, and A. B. Dick Companyagainst D. Klaber, trading under the name of the Cyclostyle Company, for infringement of patent. John Tomlinson and Richm'd N. Dyer, for com.plainants. Price ({c Steuart, for defendant
In Equity.
a.
ent No. 180,857, dated August 8, 1876, granted to Thomas A. Edison, for an improv.ement in autographic printing. The inventor states: ,· ... My improvelIrehtrelates-First, to the instrument employed forpuncturlng the paper, whereby such instrument can be used by hand in thesame manIleras a drawit;lgor writlngpen; second, to the method ofprinting by direct inJ¥lrmanElnt semi-liquid Ink {rom the perforated: 'sheet; and, third, press for, holding such transfer sheet, and the to be. impressed· · , '" ... 'fhEi which I make use of consists "f a tube, tapering to a small pohit, and a'nee41e wIthin that tube, which nee':: Ie is reciprocated with great rapidity j and 'the needle point is projecteu it IS8Uffidiently long to i."each through the paper upon which the tube of the pen rests,:and when retracted the needle is drawn within the tube, so that the small end thereof is free to be moved from place to place. The great rapIdity in the movement of the needle point produces the punctures in the paper sufficiently close together to forIillines when the pen is manipulated in or drawing; and, as nothing is removed from the paper, its strength is not materially injured by the punctures or perforations; and it will be apparent that any suitable device may be employed for reciprocating the perforating needle. ... * * The mode of printing from the perforated sheet is to lill the holes with ink by means of a roller applied to the right side of the perforated sheet; and then, when said ink is Well worked into the holes, to place beneath such perforated sheet the paper upon which the impression is to be made, and then pass over the perforated sheet a roller that presses the ink through the perforations to the surface of the sheet below. ... ... * Various forms of electro-magnetic motors may be employed to revolve the shaft that reciprocates the puncturing
CoXE, J.
Thil'ds an action of infringement, founded upon letters pat-