EAGLE MANUF'G CO.
v.
MII,LEa.
<!ombination, that this enlargement shall receive the discharge {roin the eduction leg of the. trap, as is its purpose in the Sargent combination, nO:r,infMt, to receive the discharge of the matter passing through the trap. - Its purpose, so far as siphonage is concerned, is to secure free communication of the air to the column of water at the crown of the trap; .apdth!'lless the. enlargement is filled with water, the more certainly will' it prevent siphonic action. The enlargement is not, therefore; inthe discharge from the educticln leg of the trap,nor from the induction leg, but to secure the pressure of the atmosphere upon the column of water at its' highest 'point, where such pressure upon both the induction and eduction legs of the trap. The rounded 'of it to prevent the point of junccurved form of the enlargement is tion acting as an obstX'u¢tionto the, p.assage of the water and other ,matter through the trap.. -SiphOnic action is prevented without receiving into the enlargement any of the content:s of the trap, whereas in the Sl:l.r.., gent combiQatiorithe swell or champer is to receive into it the entire passing through. the trap, and by so doing to shorten the .· · The differences in the location, purpose, and mode, of action of the swell in tlieBiu'rycom'bination, as compared with that of the Sargent such that the former cannot be held to be all infringement patent,. of the latter;snd consequently complainant's bill must,be dismissed at _costs. '
EAG:L11l :MANUF'G
Co. v·. MILLER tI,·al. E. D·. February 21, 18&10.)
,(Oircuit Court, SiD. L PATENTS FOR
INVBNTIONS-INPRINGBHBNT-EVIDBNCB-lHPBoVEHBN'/.' IN PLows. On a bill to restrain the infringement of patents for the raising of plow-beama issued December 16, 1879; and June", 1881',to Edgar A. Wright, it appeared that, prior to the issue of those patents, methods had been devl-sed: fOf t.he same purpose. In one device the spring used to raise the plow-beam exerted 'its greatest e:lfeot when the plows were in the soil, and had a tendenoy to raise the plows when inop. eration. In anoth",r deville the was combined with an ae:tjust"bie draft at·tli.cbmenti so arranged that when in one. position the draft tended toraise the plow was in motion, in anot):ler position tended to force the ploW' downwar<\s, 8ndthe adjusttneI.lt cOuld not be the ploW \Vas in oper-" ation·. In ;the.Wright patent, there 18 a oomb\natlOn of a spring in suoh way.that ill one position Of the'springit aided in keeping t!).e ground, and in the other it aided in raising the ploW-beam. 'Held, that under'th", Wright patent the inventor. was not limited to any special.form of spring, and auY' other devioe whioh oombin,es a sJ{ring with,tbe J.>low-beam in manner as, to perform the funotions of the I!lpnngs shown'in the Wtightpatent is an infringe-, ment of such patent. . I.BAMB-PATENTAJlILITY-AwnoIPA.TION. '.' ,.'., '.' , The fact'that otber inventors were 'working on the aamed,eviCe oovered 1:>Y the patent at the same time, whose applications were not filed until after the' , tbe\yright ll,a,tep,t, d.oe.sn,;>t show suoh an antieipationof .the Wright patent 8llW1IJ \lB'ect its : ' 8.- SAMB.....U 'l'iLI:Ty.l.'hrPROV'EllilENTIN CULTIVA.TORS. ,: , , In lIlJI,;pi<m:tOl'fl;ltrain,the:j;nfrillgement of a patent for-8: device to give a lateral the plows on oUltjvators, thatin a patent had been iuned..fora'l1evice :toH1lIonging two or more piO\ft to a supporting axle or beamb1"
I
.J'EDERAL llEPORTER, voL ;41;: , ends of drag-ba,rs, so that 'plows ei· affectmg the axle, and reillam paraliel; tlilS effeot belllg produced by handles attached to the rear end of the parallelogram oarrying the plqw$. HeW. that the mere fact that, be,cause of certain deflilQ1i&in this machine, it 00111d not be used after the plants had reached a certain size, did not render it ;,worthless. so that it 'could be disregarded in determining the scope of subsequent :paj;ents. , " ' , , OF CLAIM-LIMITATION. :,' " "
4.
The'flrst olaim of letters patent issuea.February 18, ISiS, ,to ,John W. Swiokard, ,,' which was for :a,device to improve the meims of giVing a lateral motion to the plows . byt'lle U8e of handles J;llvoted at their forwardj'lnds to the upper side8 of plates par, tiallyen,ciroling the journals, and pivoted near their oenters to a yoke extending up'wardfroill the plow.beam·.must be limited to the combination therein set out, as Swil1j{ard was not the ,1I.rstto make suoh \lse of handles. The olaim of letters patent issued DeoaIilper 11, 1888, to Charles D., Reed, for an improvement in the manner of attaching' plow-beams,' whioh oovers a combination with a pivoted beam, a coupling, and the standards of '8, box-ooupling, receiving Within it the rear end of the beam on a Diedian pivot, must. in view of the prior .state,of the art, be limited to the partioular oombination thereindesoribed. STATB OF THB ART. '.,.
" I
6. SAlilEl,' ,, ' " , ," ",' , Letters patent i88ued November 10, 1885, to E. P. Lynch, for an improvement in cultivators. must, in view of the prior state of the art, be strictly construed 'hand claims 5 an(ll!, whioh desOl'ibe the oombination of a plate havhlg,\,n'opening t, erein, a block extended through the openinA', and connected by a vertical pivot to the plate', and a swinging rod jointed to the plate, the plate being adapted to receive "theb\l!l,tP. and ,handle, must pe ,held also,. to, tnclude 'the couical':l:Ie1!.t'ings shown in the dra'Vl;ing,and limited to the parts expressly olaimed in the, l1rawing.
1.
On a bili to 'restrain the infringement of a patent, 'it appeared tliat the defendant4 the of a oorporation the ml\?hine which it was alleged was an mfringement of oomplamant's patent. Complamanli filed an amendment to the original bill making suoh corporation a party defendant; but no subprena was issued or served on the corporation, nor did it enter appearance or answer the bill. that the decree .should nevertheless run against such oorporation, and be binding on it in all respectS:
.,:'.
In Equity. Billt<' restrain infringement of patents. This is an action in equity, brought by the Eagle Manufacturing Company against lyV",. L. Miller, L. W. Millur,.:8,nd others,. to restrain defendants from infringing certain patents owned by plaintiff. N· .French aM Geor.ge II. Christy, forcomplainant. ',< .. Wood & Boyd andH. A. TouJ,min, for defendants. Before SEIIR4:S andLovE, J J . the bill of complaint it is ohargeci·ihat the defendroltS are five several patentsowned bY, cQD:iplainant,i. the patent of Fe\)ruary 18, 1873, issued ,to John W. Swickard and John Eough; that 'ofDecember 11,1883, lasued to Charles D. Reed; that of :November 10,1885, issued to E. P. Lynch; 16, 1879, i:ssued to Wright; andthaf of June 7, 1881, to Edga.t' A. Wright. Following the order in which these patents have been discussed by (}()llnsel, we will consider, first, the questions arising under ' the Wright lIla-tents. In thec'asee of Manufacturing Co. v. Bradley, 35 Fed. Rep. 295, and Same v. Moline, Milburn Stoddard. Co., rd. 299, (decidl;ld by,tpis court,) it was patent No. 242,497 was novissuance of elty, nor,,'was
EAGt.E MANUF'O 00. t1. MILLER.
767 j and the validity of both patents was also sustained by this court in the case of Manufacturing Co. v. Davenport Plow Co.IUnder these circumstances, we shall not, in the present opinion, again discuss these qUestiolls, but shall cOllsider only the extent and limitations of these patents, and the question of infringement. On part of the defendants; the contention is that, in view of the state of the art when Wright entered the field, his patents must be limited practically to the particular combination described in his specifications and drawings; and in support of this position reliance is had upon the inventions of Dalton, Allison, and W. P. Brown. It is not to be questioned that prior to the date of Wright's patents the desirability of some method by which the operator of a plow or cultivator could be aided in raising the plow-beams had been well recognized, ll.nd various devices for that purpose had been 'suggested and tried. Among such devices, springs had been used, so attached to the plow-beams as to aid in raising the beams from an operative to an inoperative position; but in the Dal. ton and Allison patents the, springs <'xerted the greatest lifting p.ffect upon the plow-beams when the plows were in the soil, and thus had a tendency to raise the plows when the same were in operation. In the W. P. Brown combination, as described in his patent of 1877, is found a spring :';0 a.rranged as to exert a lifting effect upon the plow-beams, and there is also attached to the pipe-box surrounding the horizontal ends of the crank-axle an adjustable perforated projection, to which the draft attachment may be fastened. If this attachment is made above the center of the pipe-box, the draft, when the machine is in motion, will tend to raise the plows; bu,t, if it is made below the center of the pipe-box, the, draft will tend to aid in forcing the plows downward. In this' combination, if the attachment of the draft to the projection named is made above the center of the pipe-box, then the effect of the spring, and that of the draft attachment, is always exercised in lifting the plows, and when in use this tendency must be counteracted. If, however, the draft attachment is fastened to the projection at a point below the center of the pipe-box, then, when in use, the tendency of the draft attachment is to pull downward, and that of the spring ,is to pull upwards; thus operating 011e against the other in their efiect upon the plow-beams. This counteracting effect cannot be changed into the combined lifting ef.' fect, except by shifting the point of attachment between the draft and the pipe-box projection, which cannot be done while the machine is in motion. The problem which Wright sought to solve was the production of a practicable means whereby the operator could be atded in raising the plow-beams when the machine was operating, and also could beaid· ed in keeping the plows in the ground. Brown had sought to solve this problem in the way already stated. Wright's solution was in the application of a double-acting spring, so connected with the frame of the cultivator and the plow-beams that in one position of the spring the effect thereof upon the plow-beams aided in keeping the plows in the 1 No
opinion med. V .41 F .no.5-23
in the aided in:ra,ising the plow-beams; such lifting as the tension of the spring increased.. Brown combine<l a spring acting in qne way, an,d with decreasing effect as the tension with of the draft attachment; hut this did not embrace the idea of utilizing a double-acting spring. !tis in the application of thedouble-,acting spring that the main noyelty pf the Wright invention consists, and w.e do not thi l1k he is limited to a;I;ly special form of such spring.. In the specificati9118 in both patents he expressly claims any spring so,combined with the other parts of the cultivator as to prodti,<:e fhe desired eilEd, whichin;one case is limited to exerting an increasi:l}g lifting effect when" the plows are raised out of the ground, but havinglittle or no when the plows are in the soil, and in the other to a liNng ·effect in position,. and a downward pressure when in the othElr;.and, if these patents are valid for any purpose, it seems that they be held to c\>ver the idea of using a spring so: afranged as to bEl capable pf exerting and depressing effect upon the plowbeams as tQe is shifted. If this is the true construction .oUhe, Wright the defense of want of utility has no force; nor (Jan it,be doubted. that the machines sold by the dElfendants are an infJ;Il1gement thereof, for they include a spring so coml:>ined with the plow-beams as to perfOl,'m the functions. of the springs shown in the Wright patents. . ,We have .considered the evidence adduced in support o,f the defense that Wright was not theftrst inventor of this combination,but was precedE)d by, Gharles A. Hague and M. L. Kissell. The evidence shows that these parties were working upon the problem about the same time that , Wright was. Both applied for patents subsequent to the date of Wright's We do not think it is sufficiently shown by the evidence that, in.:fact, either one. had anticipa:ted Wright, to justify us in holding that WrigQt's patents must, for that reason, be held void; We conclude, therefore,that Wright's patents must be held to be v14id, and that the llf:iufringement is sustained. Theotl;l,erp,atents declared upon havepeference to what is termed the in cqltivatorsj that is, a mode ofconstruction which to be moved sidewise in follo:wing. the sinuosities ofth El rowa of plants being cultivated, Or to avoid obstructions in the line of.travel,aneJ.:yet keeps the face of the shovels or plows at the same angle to the soU. In 1856 a patent to George Esterly, the.claim of .is all follows: "The banging oftwo or more ploW8 taB 8upporting beam oraxla by 8wiveliltg joiI).tIiat, each of ·the ends of their drag-bars, so that said, plows may be without affecting the axle, and still maintain their paralIelisl}i-; and this I claim, whether the stock to whic.h the plows are connected drag-bars. or .the plows be adjustable in the stock, or otherWise, substantially as described." .
.
,
l;t urged, that a this construction would be useless, because the cross-beam at the rear of the machine and the axle are not arched, and hence the machine could not be used after the plants
MANUF'G CO.
v. MILLER.
855
had considerable:size. This f\ndothet clefed;S' in the Joints . are relied upon assufficierit to show that theEliterly machine or invention was worthless, and therefore to be disregarded in determining the scope of the succeeding patents. We do not think, however, that the' Esterly patent is to be thus wholly disregarded: . The mechanism he describes will produce the result aimed' at. He shows a mode by which it is entirely posfible to so construct a cultivator as to permit a lateral mdvement of the plow-beam, while preserving an ·llnchanged direction of the race of the shovel or plow. Some of the objections urged against the form of the machine have nothing to do. with the mechanism fDr Ilecurinfthe desired lateral movement, and others-are of the kind that experience in the use of. the machine would point 'out the means for ob-. viating them. While, therefore, succeeding invento.rs have doubtless greatly improved upon his form of a machine, so that it would not' ndw be deemeda valuable model, nevertheless it must be held that Esterly pointed out .the general method which would meet the desired endior, in other words, he demonstrated that it was possible to provide for lateral movement of the cultivator beams, and yet keep the direction of the face of the shovels unchariged. . In the specifications of the Swickard patent it is stated: "The nl\ture of my invention relates to improvementl;l in that class of cultivatorsknown as · straddle-row cultivators;' and the invention consists in a new and improved combination of devices whereby the gangs of plowil are more readily operated through the leverage of a pivoted handle, and always kept at the same angle with relation to the line of progression, as hereinafter more fully set. forth. "
Treating Esterly as the pioneer in the field of providing for lateral movement, while preserving the angle of direction of the faces of the shovels or plows unchanged, it follows that Swickard's invention is. only for an improved means of accomplishing this endi or, in other words, it is for the,par:ticular combination described in his patent. He proposed to improve the means of ,giving the lateral movement by the use of handles pivoted at their forwllrd ends to the upper side of the plates partly encircling the journals, and pivoted near their centers to a yoke extending upward from the plow-beam. The first claim in the patent, and the one claimed to be infringed by the defendants, is as "The combination of plates, K, bars, h, h, and beams, E, E, with thll pivoted handles, N, substantially as and for the purpose specified."
In the Esterly machine, handles were attached to the rear end of the parallelogram carrying tbe plows, and, as thus attached, would exert, to some extent, a leverage upon the machine. This leverage action is present in the ordinary or old-fashioned plow; and it cannot be claimerl, therefore, that Swickard was the first to so attach handles to a cultivator as·to apply thereto the prinCiple of a lever in changing the direction ·of We conclude, therefore, that ihe first claim of thill the Swickard patent must be limited to a combination having the handles pivoted substantially in the mode pointed out in the specifications anti
856
J'EDEBAL REPORTER,
vol. 41.
drawings, and that itcl\nnot be extended so as to cover the use of handles attached to the rear, en4, of the plow-beam in the manner used by defendants., It follows that the combination covered by the, first claim of the Swickard patent is not foun,d in the machines sold by defendants, and the charge of the infringement of this patent has not been sustained. The Read patent covers "the combination with a pivoted beam, E, a coupling, 0, and standards, 1,1, o;f th", box-coupling, H, within it the. rear end of th:e beam.on It Jl!'edian pivot," etc. In view of the state of the al.'1; when this patent was granted, we think this claim must be to the form of therein described;, that is, a form so arranged, for receiving within it the end of the beam. In the machines sold. by .defendants ,this is not found, but in place of it, the end ,of the Ream is separated into jaws, which receive between them the crossthe block to which the plow standards are attached. It jstrue,. the difference in these forms of connection of the ends of the plow-;beams is, in one view, but sligllt, and, if Reed's patent was a foundation patent, it might not suffice to defeat the charge of infringement; yet, as the Reed patent is for a combination intended to be an improvement upon pre-existing forms, it must be limited to the form of combination t.herein described. The claim expressly declares that part of the combination consists of "the box-coupling, H, receiving within it the rear end of the beam on a median pivot." It this declaration is not to be construed to be 11 limitl;l.tion, and the doctrine of equivalents can be invoked as .Wethe form olthe box;coupling, then it coqld be likewise invoked to protect all other parts of the combination, and thus the Reed patent would be expanded into an original or foundation patent, which claim in its behalf cannot be sustained. Notwithstanding the general merits of the con1bination forming the basis of the Reed invention, we are constrained to hold that one of the essential elements of his combination is the, box-coupling, H, eo constructed as to receive within it the rear form of box-coupend of the beam. on a median piv()t; and that, as ling is not.[ound in the machines sold by defendants,it cannot be held that such machines are infringements of the Reed patent. It is also cIlIlmed that the machines sold by defendants are infringementEl upon the fifth and sixth claims of the Lynch patent of November 10, 1885. It is not questioned that, in view of the prior state of the art, this patent is for improvements merely and must perforce receive a narrow construction. It is based upon the Swickard and Reed patents, and combines the approved featureS; therein' found with certain improvements, the object of which is t() be "to simplify and strengt4en the operative parts, provide a compensation for wear in the joints, to giva .a stability and ease of action not attainable under the ordinary tion, to provide for the vertical ac]justment of the beams at their forward ends in order to change the verti(la! inclination olthe shovel faces or depth of cultivat.ion, and to provide for the convenient adjustment of the shovels with reference to their standards, and for the adjustment of the standardswithl'eference to the beams." The fifth and sixth claims descd.bl:! the.combination of the plate,I, having an opening therein, the i
EAGLE· MANUll"G 00. 11. MILLER.
357
block, K, extended through said opening, and connected by a vertical pivot to the plate, and the swinging rod jointed to the block; the plate, I, being adapted to receive the beam and handle. The device of using at the ends of the beam a plate or box for the purpose of strengthening the point of attachment, and giving stability thereto, was already known and in use upon cultivators at the date of the Lynch patent, as well as the combination therewith of a block, or its equivalent, connected to the plate by a bolt, to which was attached the plow standards, and in some cases the handles also. Under these circumstances, if we do not include in the combinations described in the fifth and sixth claims of the Lynch patent the conical bearings shown in the drawings, and limit the same simply to the parts express!y named in the claims, which is the construction claimed by complainant, and we think correctly, it is difficult to see wherein invention was required in the production of the combination, unless it be found in the precise form given to the different parts ofthe combination; and, granting the existence thereof, the defendants cannot be held liable for infringement, unless it appears that there is identity of form in the two structures, in the sense that the one is an exact copy of the other. While there is substantial likeness between the machines, there is sufficient doubt of the identity to justify the conclusion, in view ofthe narrow construction that must of necessity be given to these claims of the Lynch patent, if the same are to be sustained, that the machines sold by defendants do not infringe the named claims of the Lynch patent. Complainant is therefore entitled to an injunction and accounting for the infringement of the Wright patents, but as to the other patents the bill must be dismissed. In the brief filed by complainant, it is asked, in case a decree is ordered in favor of complainant, that the same, in terms, shall run against P. P. Mast & Co., a corporation created under the laws of Ohio. From the evidence in the case, it appears that the deJEmdants W. L. Miller and L. W. Miller are the agents for Mast & Co. in Iowa, and that the machines sold by them were manufactured by the Mast & Co. Company, and that the company, through its attorney and agents, is in fact conducting the defense of the case. The complainant filed an amendment to the original bill, making the Mast & Co. Company a party defend.a.nt, but no subprena was issued or served upon the corporation, and that company never answered the bill, nor in its own name has it entered its appearance in the case. Under the rule recognized in Lovejoy \'. Murray, 3 Wall. 1, and Robbins v. Chicago, 4 WalL 657, it is clear that the Mast & Co. Company will be as fully bound' by the results of the presentlitigation as tliough the corporation was a party tothe record; for it is made clear that it is the principal party in interest, being the manufacturer of the machines sold by defendants 1Iiller, and bound by contract with them to protect them against the consequences of infringement. It has had notice of the pendency of the suit, and in fact bas assumed the control and management of the defense; and therefore, under the doctrine ofthe cases just cited, the.decreeherein will in fact be binding upon ,the corporation. No good is perceived why, by apt statement in the
858
.' PEDEltALfiitPOWrER',' vol. 41;
'decree; it· may notM' riIade to appear' upon the face 'of'the decree that in met the Mast· & Co'. Company is bOund'· by the results' reached in the prbgress of the litigation in which it h1l.s been actively for that, in effect, is only stating, in set phrase, the force which' thf.ldecree would in fact have as against the corporation.
LoVE, J., concurs.
(Circuit Court, S. D. New
,February 12, .800.)
S.
.,; P'..uUTUS.,', ' ,. 'On a bill to restrain the infringement of letters patent No. 256,089, issued April 4, .. 1882, to Napoleon W. Willilimes for an improvement ill buildings, , ! ltappeared that the first practical apparatus embodying his system had been put in in October, 1880; He, howeVlll1. claimedt!lat he had made his inventionl 'and e,hibited it to a society of engineers, J anuarj28, 1872. In this he was corroborateQ cbT two members of the society, and portions of the app9.t'atuB used for the exhibiof ,t1l,e meeting, however made no mentloll were put in evidence. The tiOll of the exhibition, but did mentioll other experiments, for Which the apparatus was suitable. Held that, in the absence of a definite showing that the invention was perfected prior to October, 1880, that date must be fixed as the date of the inventIon. 9. S.ulE-,-ANTICIPATION. The first claim under letters patent No. 256,089, for an improvement in steamheating for provides for an aPIlllratus with an exhaust-pipe and heating coils opening from It, in combination with a bleeder-pipe connecting with the coils, and opening. at the ,bottom into a hot.well, in w!lich a partial vacuum is maintained. The third claim also provided for an exhaust-fan and a feed water pipe to assist combination. It appeared that prior to the issue of the letters an English patent'hlld peen issued for a device for heating railway carriages ,by steam, which consisted of a pipe running from the eJ!;haust-steam passage of the engine, conveying steam'to the heating pipes and coils in the carriages, and a return-pipe, conveyingthe steam back to the engine, whi¢ll opens into the smoke-box, and is fitted . with a small ejector. It also provides in place of the ejectQr a small exhaust-pump , placed on the.engine or guard's van for drawing the return steam throug'l the pipes. Held, tJ!.at the English patent was not such an anticipation of the combination set forth in the first and third claims of plaintiffs' Jilatent as torenMr lt invalid. SAKE. . ,
LP,lotll:1Ir.m
'FOB INVENTIONS-DATE OF INVENTlON-EVlDENOE-STE.ul-HBATING AP-
But the English patent does anticipate the claims of plainti:ffs' p9.tent for an exhaust-pipe Bupplyingsteam to heatin¥ coils in combination with a bleeder-pipe conneoting with the coils,'and means to oreate a suction in the bleeder-pipe, to draw the steam, through the apparatus. ., BAKE-;INFRINGEMENT..
4..
Infringement of a patented combioation cannot be avoided by merely using another part in addition to the·combinati1ln. ' · .
. . . , " '.,
, '
In Equity. Bill to restrain infringement of This acti6nwas brought by Napoleon W. Williames and Robert Cod. Company dington against George A. Barnard and the Ingersoll to restrain the infringement ofletters pa.tent No. 256,089; issued to Will· ia.nlee Apri14, 1882, for an improvement in steam-heating apparatus. F'redericH. Betta and Samuel R. Betta, (or complainants. BenjaminJ!'. Thurston and. ThonuUJ L·.,Live'I'1rWre, for defendants. ,