52 F. 749 -

GALT

v.

PARLIN & ORENDORFF CO.

749

the contract, unless defendant had continued to construct plows embodying the principle of the patent, which the proof shows it did not do. Undoubtedly the chief inducement of the defendant to enter into this contract was the understanding that George W. Hunt had obtained or would obtain a patent which should protect the defendant in the manufacture of plows embodying substantially all the features which were shown in the plow brought to defendant's shop, and which they adopted as the model for the manufacture of the lot made before the issue of the patent. Unless the patent protected the defendant in this manufacture, certainly the defendant could not afrord to pay Hunt or his assigns a royalty upon it; that is, the defendant's officers expected the patent would come and give the exclusive right to make a plow with the heel of theland side pivoted to the rigid standard, T, and combinations of levers and standards by which the point of the plow could be raised and lowered on this pivoted heel. The pivoted heel was not covered by the patent as issued, and could not be in the then state of the art, and the lever device on trial proved to be worthless. There is some conflict of testimony between the complainant and the defendant as to just what was done in the matter of the actual canceling of this contract, but I have no doubt, from the testimony, that the defendant clearly and uneetuivocally gave the complainant to understand that it would avail itself, and had availed itself, of its right to cancel and surrender the contract. The proof also shows that the defendant has fully paid to George W. Hunt all the royalty he is entitled to for the first lot or plows manUfactured, besides also showing that this royalty. as well as the cost of those plows, was a total loss to the defendant. :1 am therefore of opinion that no case for an accounting is established by the proof in this case, and the bill must be dismissed for want o,f equity.

GALT

et ale

'lI. PARLIN

&

ORENDORFF

Co.

(Olircutt Court, N. D.

S. D. October 81, 1892.)

PATBNTII FOR INVENTIONS-NOVELTy-WHEEL HARROWS.

The 5th,6th, and 7th claims of reissued letters patent No.8,765, dated June 24, 1879, to Jay S. Corbin, for an improvement in wheel harrows, consisting of the combination with a gang of rotating harrow disks of a lever for setting the same, are void for want of novelty, the improvement being merely a change in the location of the lever previously used.

In Equity. Suit by Thomas A. Galt and others against the Parlin & Orendorff Company for infringement of a patent. Decree dismissing the bill. John G. Manahan, for complainants. Bond, Adti'll18 if' Pickard, for defendant.
BWDGETT, District Judge. This is a bill in equity for an injunction and accounting by reason of the alleged infringement of patent No. 197,.

1877, to Jay S. Corbin, for an improvement reis§ueQ. JUI;le24, 1879, No.8, 765. saYI3 . . , that class ofmacbines known as · wheel,'" or ·disk' ,in which the cUllks ar6 arranged in two or more shafts; and has for its object the construction gangs I1ponhorizontal of the; ,machine inSul,lhmann/lraS to adapt the gangs to follow the uneven surfaceo! 'the ground; to provide for' the easy and rapid setting of the gangs litany desired angle to the line of draught while in motion or at rest, and holding the same whensetl '" ... ... also to provide a ready means of setHng the gangs at different !lopgles relative to the line of draught." reissued patent has Ucla-ims, but infringement is charged only as to the 5th, 6th,and 7th. The original claims' relating" to the part of the harrow in controversy are: "(6) Th,e eombinati{)n With a gang of rotating harrow disks of a lever connected to the gangs for setting the same at an angle with, the line of the draught substantially as described. (6) The. combination with,a, gang of 1'0takJngbarrow llisks of a lever f9rsetting the same at an angle with the line of draught, and a rack and dog for holding the disks in position when set, described." ' 5th, 6tb, and 7th'claims ofthe reissue are: "(6) Tlwcombination in' a Jfbeel barrow of the following !'llements, viz.: A. draught fr;ame or a dranght plank projl'cting laterally frojll the tongue, disk' gangs pi voted to the frame or, draught: plank, a set lever inourlted 'on tongue, and. connected with the disk gangs between the points at.which Baid gangs are connected with the draught frame or draught plank. SUbstantially ·as set ·fi)rtb. (6) The combination, substantially as set harrow, foIl<ming elements. viz.: A tongqe, a draught frame Of dr;l;lug'h.t plank projecting laterally from the tongue, disk, gapgs piv. otedto the dratight frame or draught plank, a lever mounted on the' tongue, and rods connected with the levers and the metal bearings which support the inner ends of the disk gangs.(7) The combination, substantially as set forth, in a wheel harrow, of the following elements, viz.: A tongue, a draught plank or draught frame projecting laterally from the tongue, disk gangs pivoted to the draughtplankior .frame, 'a lever mounted on the tongue, connected with the inner end of the disk gangs, and a rack and dog for holding the disks in proper position'when set." It will be seen from c1ajfns tbatthe only contrQversyin the case is over what is'caHed in;tbe the "setleyer," by which the I!-pglEl at which tije cut ground is regulated; This. lever 'consists oia vertical arm pivoted to·the tongue forward of the driver's seat, the lower end of which extends below the tongue,and from which .tw:<;>, ;rods t:x.ten4:,. one t.o th.e :inner end of eaCll of th ll g!l:ng shafts or axles, by the lower end: of this level' forward or back'wards the angle of the gangs is regulated. There is also upon the top of the tongue a rack or sector, with a dog. workiog hold the gangs. at the required angle. The defenses rcl,iel;{ of ,novelty in this lever device, and noninfringement. . ()nlyan iUlprp"el';and a late imThfl :proq{sh()wJl :that this attMt4 ,Pl. class that ip Septem545, granted in
,. " .' .l. ' . .',. ,

GALT V. PARLIN & ORENDORFF CO.

751

ber, 1859, a patent was issued to S. G. Randall fora disk harrow embodyingt;all the elements of the complainant's machine, except that no set lever for changing· the angle of the gangs is shown in the patent. The proof,however, abundantly shoWE! that in constructing his harrows in accordance with his patent Randall had a lever for adjusting the angleof the disk gangs which, although operating substantially in the same way, and performing the same work,ns that done by the complainant's lever, was not mounted upon the tongue or frame of the machine, but was so placed that it must be operated by a person standing or walking hehind the machine. There is also in proof a patent granted to E. C. Winters, in May, 1875, on a revolving cultivator, which is a machine analogous in its use to that of complainant, in which a set lever, mounted on the tongue, is shown, which operates to change the running depth of the spades or cutters which are shown in that device. In several other machines referred to in the testimony the regulation of the angles of the disk gangs by means of rods and levers is shown. So far as the terms of the claims on which infringement is charged in this patent are concerned, they are, as it seems to me, completely met by the old RandallleverQ0863, applied to the harrow Shown in the patent of 1859; that is, Randall had a combination with a gang of rotating harrow disks the gangs setting the same at an angle with of a lever. c;:onnected the line of draught, and its operation was substantially as described, but it was not located in. the same place; and undoubtedly it was more con· venientto locate this lever, whioh Randall had introduced into the organization, upon the tongue, than it was to locate it where Randall had it, at the rear of his frame; but, as it seems to me, no inventive talent was.calle\l into action to apply the lever shown in Winters' patent to the complainant's gang. It seems to me that this patent is but for an aggregation of parts. The idea of changing the angles of the disk frames is Randall's. The idea of doing that by means oLa lever is Randall's. The lever used by Randall is substantially, in its mode of operation and effect, the same as that used by complainant; and simply to relocate that lever, or place upon the tongue of complainant's machine the Winterslever,does not seem to have required any inventive talent. It was merely a mechanical act to transfer Winters' lever to the tongue of complainant's machine. That it was an improvement upon the machine may be admitted, but that it was such an improvement as will sustain the patent I do not. think, because this class of machines, so far as the proof shows, has always been operated, so far as the angles of the disk gangs are concerned, to a greater or less extent by means of a lever. Such a lever for shifting or changing the seeding shoes and hoes of the seeding machine from a straight to a zigzag line is shown in the Davis patent of 1868; and the same device is also shown in the Schmitt patent of :B'ebruary, 1869, on a seeding drill; and.in the Manny mower patent of 1871, for tilting and lifting the cutter apparatus. In fact, it may, perhaps, be said to be a part of common knowledge that levers of this character{for the purpose of regulating the movements of plows, cultivators, seeders, and harrows, are in constant use; and all this patentee·has done

752

FEDERAL REPORTER.

vol. 52.

is to take one of those old levers, and mount it on his tongue, for the purpose of adjusting the angle of his disk gang, instead of placing the lever where Randall placed it. It performs the same function, and no other, when placed on the frame of the m.achine as it did in Randall's old machine. If Randall's lever had been patented, it is quite clear the Corbin lever would· have been an in fringement. If Randall had attached a rod to his lever,' and extended the same forward to the driver's seat, so that the angle of the disk gang could be.controlled from the driver's seat, ;he would have had a device operating upon the same principle and producing the same as is done by the complainant'sleverj and no onl'l., I think, would coritend that it would have been patentable to so atrod to the Randall. lever, and hold it by any common locking deam therefore clearly of opinion that this patent must be. held void for want of novelty.

AMERICAN PAPJDBo-BAG

Co.

V. VAN

NORTwrCK el til.

(oCrcuu Court cir.AppeaZs, Sewnth C1trcuit. October 1,1892.)
1; PATEN'1'S 'FOR· :lNVEN'1'IONS-LroENSE-ROYAL'1'IES-'NOVATION.

Plaintiff to delive.rto defeJ:ldaJ:ltscertain. machines made under a patent. owned by plaintitr, and tolriv:e a license for its use upon payment.by lel!sees for the use of saidIDflchines bytbemeelves, "or by any other person for them or fpr otbers." .Defendants orga!lbed a corporation of wbich they were the sole members. and'the.ml,tchines were delivered to and used by the saId corppration. Held, that the faot: that the delivery was made to the corporation instead of to the defendants perB9n$lly did not constitute a novation,since such delivery, made with the defCJldants' consent, neither extingUished the old obligation nor released the original debtors.

2;, SAME-CORPORATION-EsTOPPEL.

Nordid sur,hdeliverycoJ)stitqte of the contract, sinoe the defendants, by consenting thereto as oftlcers of the corporation, estopped themselves from alleging thaHt was made against tbeir individUal wishes.

8·. SAllIE-DELIVERY OF LIOENSE"":WAIVER. A patentee WQO has delivered certain of his patented mac.hines under a contract in which he agrees to give a license for their use upon royalty is not prevented froID collecting' the royalty by the fact that he has not delivered the license, especially when tile failure lieliver the 1lcens.e was caused by the licensee'sreiusal to meet the patentee and slll"U the license.

Error to the Circuit Court .:If the United States for the Northern District of lllinois. Action by the American Paper-Bag Cpmpany for the use of Frank T. Benner, trustee, against William M. Van Nortwick and T. R. Troendle, tq recover royalties. Judgment for defendants. Plaintiff brings error. Reversed. . Oliver &I for plaintiff in. error·. Goudy, Green!; Goudy and Offield cfcTowle, for defendants in error. Before HAJtl..AN, Circuit Justice, WOODS, Circuit Judge, and District Judge.