52 F. 737 -

BRICKILL

v.

THE CITY OF BALTIMORE.

737

frame, to be propelled by hand or otherwise, I mount a windlass or druID, the axis of which I make hollow. Upon this drum I wind any required length of flexible tube or pipe, one end of which I connect with the hollow axis of the drum upon which it is wound, and the free end of which tube or pipe I fit with suitable connections for attaching it to hydrants or standards supplying water under pressure. To the end or ends of the hollow axis or drum I attach suitable distributing media. The axis is fitted with a handle for winding the pipe, which runs off' as the frame is moved, and on again when required." The mode of using the apparatus is as follows: "The end of the flexible pipe being connected to the hydrant or standard, the frame, windlass, and coil of pipe are moved, as required, to a greater or less distance, and distribute the wa· ter as the apparatus travels; no locomotive tank or other water container being necessary." Russ' improved apparatus for distributing liquid manure is much like Headley's, except in particulars necessary to apply it to the special use for which it is designed. Both these machines seem to me to anticipate all that is embodied in both Steiner's and Mason's, and clearly to deprive both of any vestige of originality. These patents do not appear to have been called to the attention of Judge MORRIS, as appears from the transcript of the record in the case of &tingwi,8her Co. v. HoUoway, 43 Fed. Rep. 306. The bill must be dismissed, with costs.

BRICltILL

et at

11.

THE CITY

OF BALTIMORE.

(Ci1'ClIlf.t Cowrt. D. Maruland.

" ...UNT8 TION.

November 11, 1892.)

I1n'BNTION8-AOTION8 roB ImmmGEMENT-BTATB

BT...roTB8

LDIrr...·

The weight of judicial opinion being that state statutes of limitation are not applicable to actions in federal courts for infringements of patents, a oircuit court of the United States, although of the contrary opinion, in the absence of any authoritative decisiOn of the question by any appellate court, will sustain a demurrer to a plea of suoh statute in an action on the case for infringement of a patent, where part of plaintiff's claim is within the saving clause of Act Congo June 18, 1874, reo peau.ng the previous limitation of such actions, and where there must be a trial in any event, and the question may be considered on appeal.

At Law. Action by William A. Brickill and others against the city of Baltimore for infringement of letters patent No. 81,132, issued to plaintiff Brickill, August 8,1868, for an improvement in "feed-water heaters for steam fire engines." A demurrer to the declaration, on the ground that the patent was void on its face for uncertainty, was overruled. 50 Fed. Rep. 274. The cause is now heard on a demurrer to defendant's plea of the state statute of limitations. Demurrer sustained. Raphael J. Moses, Jr., A. C. 7Wppe, and Arthwl' Stewart, for plaintiffs. Albert Ritchie, for defendant.
MORRIS, District Judge. This is an action on the case for infringement ofa patent for improvement in feed-water heaters for steam fire enV .52F .no.8-47

738

gines.1: ,The .patant ,was ,issued August 18-ea, an4 August 18, 1885.' 11hie;suit;w3a entered 1891,3 daysless than 6 years after, the of thep/ltent, and tAG declaration alleges infringementby ,the defendant during the entireperjpd pfl7 years, from 1868 to ,1885, ll<)vered by the the patent., The defendant has pleaded, the MarylMdstatute pf of three years, .a pplica. hle to aC.tiona ,ootbe ca.se" to i*his plea the plaintiffs have demu1're4. Since .the;ena:atl;llentofotbe United States patent laws, the only statute , bYcongress,limittogactionsfor infripgement of patents· was the act ofJ uly 8 j 1870" was repealed by the a(l(t,of congress, Jl;lne 18, 1874, adopting tbe!Revised StatutesJ SiO tPtlot, exceptio respect to those matters whicbeomeiw.ithin the savipg cl.ause of $afrepeal, the la,w. was then left and t'f>.maiQ$$)! it had been,priofrtQ the enactment by act of limitati,9Ui The .,I; pfthe plaintiffs is that thm;e.isnow no statpi, patents" and ute of limitations applicable' tQ ;8.-Qtiona for theconwIition of the the statute of th,e state in w the is ofsecijQp of the Rewhich, provides,:that .laws qf exQep,t mhe1';;l ,pr of the United States othas, decision in trials 8;t: ,law,; the CP1:ll1Ut, qf:tpe w.here they apply." The'plaintiffs contend that an action for infringemellt of a patent is a case to which the above-quoted section 721 does not apply, because such actions arise out of rights created by an act of congress. as to which congress has given the federal' courts exclusive jurisdiction, and that the sectiWihla' where the and federal courts have concurrent jurisdiction over the subject-matter. This questidniOif .the·· applieability',of."the statute oflh:nitations of the of patents h,as frequently raised in'the circuit court althe United States, and bas been variously" '. as >,et any appellate ooUrt'i·.;lui. of the adj,uuications on this text writers ha,vEl that the w.eight opinion state statutes are.iio"t applicable, court ofLtheUnited States for·the district of Connecticut, in.' acase"nowpexiding there;' for infringement of /fflglepatent,l:letween ,and the qity. ,of.ij:artf9r,d. 49 Eeq·. ·. 1i .argued p;le. and I andparticularly:l:lythe unby who then represented t4ecity of io'iyiew of .theJaot.that the pas. been upOll. by 90WtS; it would tp authoritiell·. settlement of theQll6#lt1on by an appellatetribuna!' I am free to say. however. that I find J;OYElel{ l,lnable. to' concur in the reasoning by which the decisions adverse to the applicability of
"",::

:,','

lSeei al80, Brickillv. City of, Bu1flllo;49 Fed. Rep·. Sil, for.a, like rUling·
. I)'

BRIC:K:iLL 17;·· THE· citY OF BA.LTIMORE.

739

the state statutes are sustained. There are, it is quite true, many reasons why congrllssshould enact'a sta.tute·of lirnitati6ns expresslj applicable to this peculiar character of property; but this, of itself, is no reason why, in the absence of such legislation, suits arising out of patents should not be governed by the same rules as govern similar aptions. I am not aware of any corn.mon-Iaw action,growing out of private rights, even though granted by the United States, to which, in the Itbsence of any federal statute, the state statute of limitations are not held applicable. McCltmy v. SiUiman, 3 Pet. 270; Bank V" Dalton, 9 How. 522; Bank v. Eldred, 130 U. S. 693, 9 Sup. Ct. Rep. 690; Leffingwell v. Warren, 2 599; .Amy v. Dubuque,98 U. S. 470. I do not appreciate the supposed force of the argument that because congress, in order to secure uniformity of decisions as to the construction of the patent laws and the validity of patents, has given to the federal courts the exclusive jurisdiction of questions of infl'ingements, that, therefore, this class of cases 'should be the sole exception to the prevailing rule, which makes the state acts of limitations just as binding upon the federal courts as they are upon the state courts; more especially as the supreme court has held that section 721, so far as it makes the state laws rules of decision as to the competency of witnesses, is applicable to this very class of actions for infringement of patents. Vance v. Campbell, 1 Black, 427; Haussknecht v. Claypool, ld. 431. If there be merely a doubt as to whether or not section 721 is applicable, the fact that not to hold it applicable would leave actions for infringement of patents the only private actions not affected by any statute of limitations should, in my judgment, favor the construction which would make the statute applicable. McCluny v. Silliman, 3 Pet. 270; Hayden' v. Oriental Mills, 15 Fed. Rep. 605; Oopp v. RauwayOo., 50 Fed. Rep. 164. Such is my opinion, notwithstanding the weight of authority which is claimed to be against it, and if there were no appeal, or if the whole of complainants' case were cutoff by the statute pleaded, I should feel called upon to overrule the demurrer; but in view of the doubt in which the question rests, and of the fact that part of complainants' claim is within the savings of the repeal of the statute of 1870, and that there must be a trial in any event, and that the question will probably, in any event, be carried up to an appellate court, I think it best that I should yit'ld my own judgment, and let the whole case go to the jury. The repeal of the statute of 1876 saved to suitors the right to bring suit for any infringement occurring before its repeal, within six years from the expiration of the patent; therefore any infringement by the defendant prior to June 18, 1874, is within the provisions of the federal statute. It at the trial of this case the verdict should be in favor of the plaintiff, it will be proper that the jury shall find separately the amount of damages prior to June 18, 1874, and the amount of damages subsequent to that date, so that,· however the question of limitations may be ultimately settled, there may be no difficulty in entering a proper judgment without a second trial. Forthe purposes of this case I shall sustain the demurrer.

740

F.lDERAL REPORTER,

vol 52.

CELI.ULOID MANUF'G

Co.

'/1. ARLINGTON MANUF'G CO.

et ale

(C(rcuit Court of AppeaZ" Third C(rcuit. November 15, 1892.)
PATENTS FOR INVlINTIoNS-LnnTATION OF CLAIM.

Letters patent No. 199,008, issued February 5, 1878, to the Celluloid Mllnufaotul' ing Compllony, for an "improvement in the manufacture of sheets of c",Uuloid and other plastic compositions, .. while covering an invention of a primary charllocter, and therefore entililed to a liberal construction, llore restricted by the terms of the cilloims and speciJlCllotions to the use of llo slab of celluloid fastened for the purpose of planing into thin sheets to llo /rrooved or ohanneled plate through the agency of hellot, pressure, and the contraotile energy of the material in cooling, and are therefore not infringed by a devioe made under pllotent No. 387,947, issued August 14, 1888, to Franois Curtis, wherein the celluloid slab is held on a perfeotly smooth plate by atmospheric pressure and adhesion only. 44 Fed. Rep. 81, affirmed.

Appeal from the Circuit Court of the United States for the District of New Jersey. In Equity. Bill by the Celluloid Manufacturing Company against the Arlington Manufacturing Company and others for infringement of a patent. The circuit court dismissed the bill, (44 Fed. Rep. 81,) and complainant appeals. Affirmed. Rowland an and Frederic H. Betts, for appellant. John R·. Bennett, for appellees. Before .ACHESON and .DALLAS, Circuit Judges, and WALES, District Judge.
ACHRSON, Circuit Judge. This is an appeal from the decree of the circujtcourt of the United States for the district of New Jersey in a suit in equity brought by the Celluloid ¥anufacturing Company, the appellant here, against the Arlington ManUfactuting Company and others, for the alleged infringement of letters patent No. 199,908, dated February 5, 1878, fQr Itn "improvement in the'manUfacture of sheets of celluloid and other plastic compositions," granted to the first-named company, as assignee of John W.Hyatt, the.inventor. The case, as presented to us, involves the single .question of infringement, and the determination of that question depends upon the construction:to be given to certain of the, claims of the patent·. The invention (the specification of the patent declares) "relates to an ,improved apparatus and process for t.he manufacture of sheets of plastic composition, and, in the present ;ustance, is applied to the article known ail 'celluloid.'" At the openiqg of the specification the following explanatory statements occur: ".Heretofore the great obstacle to successfully planing or reducing plastic Or pliable material to sheets ,by securing it upon a surface and then feeding it ,to, a fixed cutting edge been that the material was apt to rise from the sUrface supporting it, ar,td fide up the knife; thus cutting the material irregularly, or arresting the op'erll.tiou. Rel'lce, to hold the slab of material firmly upon the surface sustaining it pending the operation of shaving or planing it into strips has been esttlemed a great desideratum" and is one of the objects effected by the mechanism and process hereinafter set forth." "The objects of the inyention are accomplished by causing the union in a single slab of a number Qf !ilheets or pieces of celluloid, this being effected 1Iy