992'
, FEDERALBEPORTER,
vol. 63.
than had been done in other devices in which they had been previously employed, or than would, suggest such use in a drop hook such: as used in complainaJit'spatent. ' I do not, therefore, think that the Hinman patent was an For the reasons stated before, I do not think the earlier' Zeller patent is an anticipation. It, i!!lIIltimated inprief of defendant's, ,counsel that the claim in the earlier patent, abandoned by viz.: "A harness finding consisting of the plate, A, upon which is formed the elevation, a, having an eye or passage, A' to receiV'e, a terret or ring, a hook, or other subiltantiallyas and for the purpose set forth," -is substantially, the same as the claims of the later patent, and should estop him from setting up.thesame in his present suit. The essence of the later invention is that the parts are cast separately, and so made as to be easily and cheaply made and put together, and,when so combined, to furnish',&' stronger and more satisfactory product. All this is accomplished. And there is J10 ground for estoppel on the ,plea that the,former claim abandoned is the same device. The defendant has seen fit to use any of the devices setout in thenine patents It has, however, patterned the article it manufactures exactly from that of complainant. It has,done thi's after, correspondence,and with full information as to complainant's cln:ims. The hook is a clear infringement of the first claim.s of the patent, and the terret is of the second claim. The to a decree sustaining its patent, finding infringement, and for an accounting.
LEVY v. DATTLEBAUM et al. (Oircuit Court, S. D. New York. 1. 2.
October 4, 1894.)
,
PATENTS-ISSUANCE TO JOINT INVENTORS.
Issuance of a patent to "T. and L., of the firm of T. & L.," puts the legal title in the parties jointly, and not in the firm.
SAME......REQUISITES OF ASSIGNMENT.
Where the leglll title to a patent used in the business of a firm is in the partners jointly, an assignment by one partner to the other of all goods and machinery, 'etc., "and all other property whatever belonging to said firm, and all his rights, title, and interest therein," does not convey the legal title to the patent. An instrument assigning a patent should distinctly describe, the patent, though' description by name, number, and date is not indispensable.
S.
SAME-PRACTICAL CONSTRUCTION OF ALLEGED ASSIGNMENT.
One of two joint patentees, who were partners in business, gave to t'le other, on the dissolution of the firm, a writing which the latter claimed operated as an assignment of the patent It appeared, however, that after the execution of that instrument each gave the other a license under the patent. Hela, that this was a practical construction of the prior instrument, and implied that each still owned an interest in the patent.
This was a bill by Charles M. man for infringement of a patent. H. A. West, for complainant. :Arthur Murphy, for defendants.
against Dattlebaum & Fried-
· LEVY tI. DATTLEBAUM.
993
TOWNSEND, District Judge. This is a bill in equity for the infringement of letters patent No. 389,776, granted September 18, 1888, to Otto Thie and the complainant, as joint inventors of an interchangeable ring. The defenses are invalidity of patent, and license from Otto Thie. .At the time of the application for the patent, said Otto Thie and the complainant were partnersin the jewelry business, under the name of Thie & Levy. The application for the patent them as "Otto Thie and Charles M. Levy, of the firm of Thie & Levy." The fees for procuring the patent were paid by the firm. The firm used the invention in its business. On January 21, 1890, the firm was by a written agreement, which included an assignment from Thie to Levy of the goods, machinery, etc., "and all other property whatever belonging to said firm of Thie & Levy, and all his rights, title, and interest therein." Levy assumed the payment of certain obligations of the firm. Mterwards, on June 5, 1890, Levy and Thie made a settlement, in which Thie gaye Levy an instrument called a counterbond. This was a bond by Henry Jaeger and Thie, containing, among other things, the following: "Whereas, certain controversies have since arisen between them (Thie and Levy), &c.; and whereas, certain claims have been made as to the rights of said Levy to manufacture under certain United States letters patent, heretofore taken out in the name of Thie and Levy: Now, therefore, if the said Otto Thie and the said Henry Jaeger shall indemnify and hold the said Charles M. Levy, his heirs, executors, and administrators, free and harmless from the payment in whole or in part of any claim against the aforesaid firm, &c., or from any claim of said Otto Thie or his assigns against said Levy, by reason of his manUfacturing under said letters patent, then this obligation to be void; otherwise, to remain in full force and virtue."
The patent referred to in said counter bond is the one in question. Levy testified, and it was not denied, that he at the same time gave Thie a license to manufacture under the patent. Thie, when testifying for the defendants, declined, upon cross-examination, nnder advice of defendants' counsel, to produce the license. Defendants produced in evidence a license from Thie, dated January 10, 1890, 11 days before the dissolution of the partnership, to manufacture under patent No. 389,779, no royalty to be paid for two years. The number of the patent is manifestly a clerical error, and the patent referred to is the one in question. Dattlebaum, one of the defendants, testified that they obtained this license before the dissolution of the partnership, but after he had heard that it was to be dissolved. Complainant claimed the said license was not in fact made until after the dissolution of the partnership, and that, if made at the time of the date, Thie had no right to make it, and that under the circumstances it was not taken bona fide. Complainant testified that the patent was partnership property. Thie testified that he alone made the invention, and that the patent was his own personal property. Complainant claimed that the legal title to the patent was originally in the partnership, that Thie's interest passed to Levy by the assignment "of all other property whatever belonging to said firm," and that the license to Thie was conclusive proof that Thie's only interest in the patent after the dissolution of the part· v.63F.no.7-63
:froiiiIie\j. DefendantB' claimed that,the having: M a'joint It :sdIe,iillV:entiOhofThie;;thatit was void by reasoIlj)f'Vrior lise; that Thie ·wasaJoint QwneJl,'andhad 'a right to ,I ' , , ' , ", '. ' , " , '. . ' . ' hece,ssary( t6:paS8' ':1'1;1'011; tbe'various charges of oftheyalidityof :the pateilt., I hold that the legal title:to.the'patent, 'Was 'in Le'ty"and Thiejointly, not in the'J1artnersl1lp,,'an!! 'n.at; '. aB, the legal titlewa;s never con', veyed tj),tlie;partnershiJ;>; 'of,"a1t other property" of the didnqt<:Onte'Y title to the patent. Assignment's ofpliteJits ou,ghtiiiitgy!!!tijidistiiictly assigned. "Itlj,s the patents to see that their assignments,,4o ";distipbtly" it· the langnage to ilie pa.tent, but leaves of tb,e in doubt the, <luesti()D.of ""hetherthe,'patent was intel,1dedto be included,I the the assignee, in suits be&\reen him'and thilld'pmties, until he has obtained a clear conveyance. Ido lIr0t a!4sent, of the defendants that an Which· does, J;1qt,:, the. patentl,il: number,. and date c::um.pt convey a:{;Jtl¢ tothe,patent.tt tij,e legal titleJo ' the patent had been assigned to the partnership, as 'such, the conveyan.ceby,"lJ'bie.would ha/te' been 'sufficient. Railroad Co. v. Trimble, 10 Wl:i.t1:867. " , ' ! Furthermpi!e;)n the think the acts:qfthe parties' decide the;question against 'ihe,claims of the complainant. The ",coun",tel',' ',bOll,' so called, o!l; '.,1, 89,0,' ClearlY" .contains a license from 1:hie t?teYJ to usetij,ifl patent: ,.Thie lUld UVy on that day, in their difficulties, fJave each to the other a license to use this The fact that tp.elicense was given by each to the other me to havepi'eeisely the contrary effect to that claimed bY counsd.: for .the license to Thie. It, was by the parties of their,prior agreements, a and t:J1e whole title to the patent WWl not in the complainant. ltbbik this practical construction shoWd,prevail, even if weresed()lls doubt as to. where rested. Such is now recognized by the 8,S controlling practical whereTer the is doubtful, a:pd is sometimes allowed to prevail e';e'n against ,the Atei-a! terms of We .instrument. District of Columbia v. Gallwet'l24 U. So 506,8 Slip· Ot. 585 (Cetitral Trnst Co. Co., 31,Jre{t'254. If cQmplainant has an equitable title"j;tMrik he should,.t,rtake Thie a party to his suit. If ju(iIgment for 'the, 'c(».Jlplainant in"this action, Thie IHigl:ltliltiIl spei¥yjrlor his other evidence might be i$W,t.', Also, is.':no evidence the assignLeX{' $jl,.ve to Thie was not tr-ansferable; ment which and, if Thie other title, it tray be that defendant would be entitled to t,he, peI).efl,t of it, especially" compla,inant has never rehis alleged ,assignment. Let a qecree be entered dismissing the bill. .' , " . ., W I. d I., ' '. ·
tls 8B
FRONT RANK STEEL FUltNAO:l!1 00···' WROUGm 'IRON RANGE CO.
995
FRONT RANK STEEL FURNACE CO.·. WROUGHT IRON RANGE CO.
(Circuit Court, E. D. Missouri, E. D.
October 19, 1894.)
An appar:atus cOl,1structed upon the same operative principles as a prior one, differing therefrom only in slight particulars, and which, if an improvement at all, is merely one of degree, and not of kind, possesses no patentable invention.
2.
SAME-ANTICIPATION-PRIOR CONCEPTION-REDUCTION TO PRACTICE-PRIOB
a.
Priority of conception, without reduction to practice, and without dling an application until more than two years after the device bas been ma4e and put in use by another, will not sustain a. patent, when no suftlcient excuse for the delay i8 shown. BAME-HoT-AIR FURNACES.
The Campbell patent, No. 414,018. for improvement In bot-air furnaces, is void because of anticipation by the Powell furnace.
This was a suit in equity by the Front Rank Steel Furnace Company against the Wrought Iron Range Company for infringement ofa patent for hot·air furnaces. B. F. Rex, for complainant. George H. Knight and H. G. Ellis, for defendant. PRIEST, District Judge. This case comes before me on an ordet sustaining a petition .for review, and is placed in very narrow lines by the order. The cause was heard by .tuage Hallett, who ordered an decree, adjudging the complainant's patent vaJid, and awarding an injunctiO'll and accounting against the defendantfor infringement of letters patent No. 414,018, to M. Campbell, inventor, and William Thuener, assignee, for an improvement ,in hot.air furnaces. No written opinion was filed by Judge Hallett. While submitting his oral views, which were very imperfectly reported, he observes: . "I shall not discuss thlll matter at great length, but I must say, again, I think the eomplainant's device, comprehending, as it does, the location of the several fiues, the upward and the side, and the manner of connecting with the fire chamber, and the introduction of the coid air, may be of the nature ot invention."
Judge Hallett had before him several furnaces of similar construction, and involving much the same principle of action, as that of complainant's. A petition was filed upon the ground of newlydiscovered evidence, and the attention of the court was called particularly to the Powell and Krause furnaces, the former of which was put in use as early'as 1884, and the latter in 1888. Upon this showing, Judge Hallett ordered"That a. rehearing be allowed at the next term of the court upon the Question of the novelty of compiainant's invention with reference to. the Powell furnace and the Krause furnace, mentioned In respondent's a.m. davits ftloo June 24, 1893."
The necessary steps marked out in the order have been to present the question thus reserved. Whatever might be my disposi·
996 " tion otherwise, I felt constrained to the consideration of this single question and sUch, othel'Sonly'8S' are strictly incidental to and neces· it, thQugh ,counsel have given attention in their sarily grow respective arg'11ments to the issl\es involved in the contest as it originally stood. re!lpondent mainly relies, !l0 far as this hearing is concerned, upon the Powell furnace as an,anticipation furnace" .The number of anticipations is not of the, .materiaJ. If one' perfected and nsed has pl'eceded, it .is ,sufficient to of the patent relied. upon. then,. at once defeat the introduces the question whether the Powell furnace was an anticipation of thEf'CG:mplamant's, "Il'he 'Campbell patent, under which is in hot-air furnaces, "which relates' especially' to the" system of by the products of combustion in their escape the comb.tl-stionchamber." The arrangement of complainant's furnace is thus described: "Leading from the' upPer' porti611':of the combustion chamber, which is practically chamber,. I)) .the customary form, are two escape fiueS, n, '13', which lead;' respectively, into two vertical fiues,C, C', at and towardsitbe ,uppqr portion'iliereof. The upright fiues at the .Iower end thereof connect with a c,hamber, D, toward.s the ends of it. The exit from the chamber is by means of an upright flue, E, which rises from the center of the chamber midway between the vertical fiues, C, C', and al Its. upper en".c!m)lects with any suitable escape flue. Cold .air is admitted Into the hot·alr chamber at the rear of the furnace, and directly to the J;ear and under the chamber to which the two upright fiues Unite." ' , '
The operation, of the furnace is described in the specifications as follows: . . . "The heate<1, products of escape from the chamber A into descending fiuel!, O, .. C', which lire. quite large In diameter .and larger than the fiue E. Owing to their size and the use of the pall' of them. the fiues C, C', are sutliclent'for the chamber A, and no direct escape is needed. The course from the fiues C, C', is downward into the chamber D, which an additional heating service, .but also M a serves not only dust chamber, and as a guard to favor the delivery of the incoming cold air towards the central portion of the hot-air chamber. From the chamber D the escape is as stated upward through the fiue E....
Three claims are predicated on these specifications, the first and third of whitlhare necessary to notice: "(1) In ll. furnace the combination with the hot-air chamber, having an alI" inlet in one-, sijienear its bQttQm, of the combustion chamber, situated eccentrically witl,Upthe hot-alI', chamber. and adjacent to the side thereof, the air in1!l't, :the fiues B, B', extending from the inuer opposite that side of the' combustion chamber near the top therrof, the descending fiues C, C', communiciLtlngatthe top with the fiues B, B', respectively, the cham'bel' D ,commumilating with the: lower of. the fiues:C, C', and the ascending fiue .E· rising cen1:fally froIJ;l the chamber between the fiues B, B', substantially as specified." "(3) In the furnace the combination with the hot-air chamber and the . combustion "chamberi situated eccentrically therein, of the fiues B, 'B', extending from. tile top of· the cbmbustion chamber, the descending tiues ,C, C', of large"dII1InEltel', communicating respectiyely with the fiues B; B', the heating cbamber D communicating with the lower ends of the flues C, C', and the ascending flueE rising from the chamber D between the fiues C, C', of much smaller diameter than the latter fiues, liS and for the purpose set forth..,
FRONT RANK STEEL FURNACE CO. V. WROUGHT JRON RANGE CO.
997
The virtues of this special mode of construction or system of escape fiues are particularly dwelt upon in the specifications. Of the verticalfiues C, C', it is said, owing to their size and the use of a pair of them, they are sufficient for the combustion chamber, and no direct escape is needed. Of the horizontal chamber it is claimed that it not only provides additional heating service, but also a dust chamber and a guard to favor the delivery of the incoming cold air through the central portion of the hot-air chamber. In addition to this the dust chamber is not connected with the combustion cham· ber, and the space between the two ·affords an opportunity for the air to rise. The ascending fiue E is smaller than the descending fiues C, C', which is for the purpose of retarding the descent through the fiues C, C', and increasing the heating service thereof, and, by means of the retardation of the product of combustion, the greatest possible amount of heat will be thrown out from the descending fiues into the hot-air chamber; and, because of this difference ill size between the fiue E and the fiues C, 0', the air will pass much more rapidly upward through the fiue than it can descend through the fiues C, C'. I assume that this arrangement of fiues has in it the quality of an invention. The Powell furnace is constructed upon the same operative. principle as that of the complainant's, the mechanical structure differing only in a few slight, and, to my approhension, unimportant, particulars. In other words, if the complainant's furnace be an improvement on the Powell furnace, it is one 0« degree, and not of kind; and as was said in the case of Burt v. Ev'ory, 133 U. S. 349, 358, 10 Sup. Ct. 394: "The test Is that the improvement must be the product of an original conception (pearce v. Mulford, 102 U. S. 112, 118; Slawson v. Railroa,d Co., 107 U. S. 649, 2 Sup. Ct. 663; Munson v. Mayor, etc., 124 U. S. 601, 8 Sup. Ct. 622; and many other cases); and a mere carrying forward or more extended application of an original Idea-a mere improvement in degree -is not invention."
The same idea was more fully expressed by Mr. Justice Strong in Smith v. Nichols, 21 Wall. 112, as follows: "But a mere carrying forward or new or more extended application of the original thought, a change only in form, proportions, or degree. the substitution of eqUivalents doing substantially the same thing, in the same way, by substantially the same means, with better results, is not such invention as will sustain a patent. These rules apply alike whether what preceded was covered by a patent, or rested only in public knowledge and use. In neither case can there be an invasion of such domain and an appropriation of anything found therein. In one case, everything belongs to the prior patentee; in the other, to the public at large."
Counsel for complainant insists that complainant's furnace, as described in the specifications and claims of the Campbell patent, differs from the Powell furnace in the following particulars:' First. That, unlike complainant's furnace, its parts were not intended to operate with a single cold-air inlet at the rear, but with two coMair inlets at the sides. Second. The lower horizontal chamber was located on an ash-pit extension, whereas in the Campbell patent an air passage exists between the ash pit and the horizontal chamber D. Third. In the Powell furnace the down fiues are
998 . 10
'TlilDERALREPORlDER,vol. 63.
lis to be.smaUel' than the up'fiuet!. [; The method ofintrodl;lcing tie Jcbldairat' !the 'rear! is 'Dot aaessentialclaim ot the Campbell pa1;en't If sOilin ,appears that the ,paten't' would have been refused, beOIll1. that*ethoo: at iintroducing cold' air had long prior been in usei r"Ooinplaihant'slclaiin must'rest'upCjnthe an'angement of asystem !ofllue$ for, ;the ;proi:luct of <lombfistion. To such a design the spediflcatiQnslimit Judi. cOJ;llmit it.' ,The' place of introducing the ,told air il!l):a:tionessential. 1.'he attachment of the horizontal chamber todilie:ashpit'imthePbrwell furnace, whereas in the Campbell furns.'Ceit is indepep.!lent of such connection, does not destroy the idenil1 operation or design;'" Itmay be conceded., because thetnonattachnient of this chamber to the combustion chamber or ash pit, the hot air would rise more freely than in the Powell furnaoe;, yet this ,does ,not impeach the identity of principle in the operatWnof the two, but mly the degree, and is not the product of inventive Skill: 'It is manifest;, not only from the physical structure of the <Bowen furnace; but the fact is dearly emphasized by the testiinonYithat there isa free circulation upwardly of air between the combustloDchambel' and the down flues in tM Powell furnace. iMoreoJVer,just such an independent :arrangement of the horizontal chamoer",D is found' ,in ,the Ringen furnace of 1885. In the Powell .the twoV'ertlOOlchambers or flues are contracted at the lower end, but:the b0dy of these fiues are larger in diameter than the escape fiue. located between them. They operate precisely alike and upon the same prin.ciple. An equivalent of this is found in the smaller horizontal flues B, B', of thE! Oampbell furnace. Oounlilel for to Nalize that the Powell pattern 'of stand$ conspicuously in the way of the Campbell patent, ,and,'Jo,oyercomethisimpediment, strives, for the first time on this rehelLl'i;b.g', to show that'i9ampbell perfected his invention'as early as January, 1884, but was prevented, by lack of pecuni!U7 from pressing an application for grant of letters patent.' If I am right in concluding that the Campbell furnace is an duplicate of the Powell furnace, this argument cannot 'avail the'eomplainant. . 'The Powell furnace was put in public use in '1884, to a .· has beep in service ever since. The was for in February, 1889. SectiQD!lt886, Rev..St., provides that: who haa i9vented or dis<!bvered any new. and useful art, or of matter, or llny new and useful lmproveiiient thereof notl8lQwn or used by others in this country or any foreign country * * *n'otln publlc use or on sale for more than two hIs appllcatloD, · * * may · · · obtaIn a patent . '. "
The interpretation of this statute .by the supreme court in the case of Andrews v. Hovey, 128<U. S. 267,8 Sup. Ct. 101, clearly defeats this contention of complainant. In a case to which reference is made in the opinion just referred to, and speaking with reference to th'e policy of the statute, it is said·"I'hlilt· the .inventor must· apply for' his pa.tent within two years after hIs Invention is in such & condition thatlle <:an apply for a patent for it,
FR01\T RAXK STEEL FURNACE CO. V. WROUGHT IRON RANGE CO.
999]
and that if he does not apply within such time. but applies after the expiration' of such time, and obtains a patent, and it appears that his invention was in public use at a time more than two years earlier than the date of his application, his patent will be void, even though suell public nse was without his knowledge,. consent, or allowance. and even though he was in fact the original and first inventor of the thing patented and so in public use."
If Campbell's plans of furnace were complete in conception in Jan· uary, 1884, it was duty to give it to the public for use at the earliest practicable time. Inventive talent is encouraged that public CQm· fOl't, utility, and convenience may be augmented. It has been well said: . "Justice requires that the public should reward those only who keel) faith with it, who apply their creative energies to the promotion of the public good, and Who, having generated ideas. reduce them as speedily possible to practical and beneficial public use." 1 Rob. Pat. p. n-1H.
"Ve are entitled to presume that the conception is contemporaneous with the application ; but, waiving this and the further presumption that a failure to apply for a patent evidences an incomplete and imperfect conception, the circumstances that would justify the inventor in withholding his invention from public use for a period of four or five years must be of a more immoderate characte!; than I find to existin this case. But conception alone, although com.. plete, is not sufficient; for, when the patentee proposes to assert that his invention was anterior to the date of his application, he must not only prove that he made the invention at the period suggested; but that he reduced it to practice in the form of an operative machine. Johnson v. Root, 2 Cliff. 116, Fed. Cas. No. 7,409. No eftort hal! been made to prove the construction of a furnace prior to 1888, Complainant's counsel cites us to those cases which seem to en· courage experimental tests in order to perfect the instrument applying for patent, as if, by such reference, to lead us to suppose that Campbell was demonstrating the value or perfecting the detail of his invention through such actual experiments. Of this I fimJ no evidence in the record. If, however, he were thus engaged. he assumed the chances of the field being occupied by other and more diligent designers, more prompt to supplement their creative efforts by a reduction to practice. 'l'he fact is, the Powell was constructed and satisfactorily employed in 1884, incorporating all of the mechanical elements of construction and and combining all of the operative principles, obtaining in the Campbell furnace. The bill will be dismissed, at complainant's costs.
1000
FEDERAL REPORTER,
CONsoLIDATED VAPOR-STOVE CO. v. NATIONAL VAPOR-STOVE & MANUF'G CO.
N.D. Ohio,E. D. May 12, No. 4.800. PATBN'fl'o'-o V AFOR S'l10VE BURNERS. . :
'.J;'4e Whittin,g,bam patent, No. for a vapor-stove burner, helll vB.1id, as coveriIig a novel and patentable device, and also held infringed by defendant's burner. .
This was a suit in equity by the Consolidated Vapor·Stove Company the National Vapor-Stove& ManufacturingGompany for infringement of letters patent:No. 235,600, issued December 14, 1880, to Oharles and Joseph Whittingham. A full description of this patent will be found in Consolidated Vapor-St'Ove 00. v. Ellwood Gas-Stove & Stamping Co., 63 Fed. 698. Shel'l1l.an, Hoyt & Dustin, foreomplainant. W. M.Lottridge, for respondent. RICKS, District Judge. This isa bill :filed by the complainant, alleging that the defendant infringes patent No! 235,600, dated December14, 1880, for·a vapor-stove burner. The complainant makes the usual allegations that it has a patent issued to it for an improved vapor burner used On stoves commonly known as gasoline stoves. The denies· infringement, and claims prior use. The only proof tatten is as. to the novelty and patentability of the complainant's deVice, offered On its behalf, and proof denying infringement, offered 'On behalf of the defendant. I have inspected complainant's exhibit of defendant's device, and also the testimony of the experts, and the testimony of the manager of the defendant. From this testimony it seems to me clear that, the complainant, under its first claim, has a combination of devices which results in a novel and patentable process for generating gas and consuming the same. The defendant's burner is certainly an infringement of the com· plainant's device. The only difference I can discover is that the cap, S, in the defendant's burner, has different shaped but in both devices it acts as a burner. In the defendant's combination it may bea better burner, but the function it performs is the same as cap Sin the complainant's combination, as described in claim 1. 'I'he conducting pipe, F, as given in the exhibit (which is the defendstove), which corresponds to complainant's tube, F, is given a horizontal position, because such position answers defendant's .purpose better, inasmuch as its conducting tube performs other functions in connection with outer or auxiliary burners. But it performs the same, though additional, functions as tube F in complainant's device. In the latter it is heated from the heater plate; in the defendant's combination, through the central burner. But in both it acts as a conductor, commingler, and heater. For these reasons I think it a clear infringement of the first claim in complainant's patent, and a decree may be accordingly entered.