P. H. MURPHY· MANUF'G CO. V.EXCELSIOR·· CAR-ROOF CO.
491
feITed to as "embodying" the invention, and which do illustrate its principle quite clearly, cannot, in my opinion, be justly regarded as circumscribing its scope. Nothing was previously known which, upon the construction now given to this claim, the patentee can be said to have appropriated. The earlier patents set up are without pertinency; The sligptest examination of them makes this so apparent as to render any discussion of them unnecessary. Neither is it requisite to descant upon the "Mexican hammock," or the fringed towels, which have been adduced. Palmer's invention is essentially different from anything which is shown by the former; and the fringe of a towel furnishes no rational analogy, either in character or function, to the suspension loops of this patent. Infringement of the first claim has been established. The defendant makes his loops in a manner different from that which is indicated in the patent in suit; but the claim in question is not for a method of forming. suspension loops, but for the loops themselves, by whatever method constructed, provided they be formed of unwoven portions of the threads of the warp of a woven fabric intended and used for a hammock. Therefore, as the defendant, admittedly, constructs his hammocks of woven fabric, and employs unwoven portions of its warp for their suspension, the real and only question if! as to whether he foms suspension loops, and it appears to me to be obvious .that he does. He does not make them. of precisely the same form as that in which, in practice, they are made by the plaintiff. He reduces the length of the several loops,. but by doing this their function is not affected, or their object varied. The plaintiff's loops are united at both ends of each loop to the body of the texture, while the· defendant's are formed by returning the threads for a short distance upon their outgoing portion, and there fastening the two limbs together. In my opinion, this difference, whether so intended or not, is merely evasive, and not substantial. The second claim is as follows: "(2) A hammock or bed bottom having its end composed of doubled portions of a woven fabric, and having said doubled portions united by ll- series of suspension loops formed of unwoven portions of the same warps,which enter into the weaving of the doubled fabric, substantially as herein described."
This claim is not infringed. The defendant's construction does not have doubled portions of a woven fabric, or anything else, "united" by its suspension loops. Let a decree be prepared in accordance with this opinion. P.H. MURPHY MANUF'G CO. v. EXCELSIOR CAR-ROOF CO. (Circuit Court, E. D. Missouri, E. D. October 19, 1895.) No. 3,801. L PATENTS-INVENTION.
The test of invention in all cases. is whether the device or improvement is the product of an original conception of the patentee. It .must involve something beyond what is obvious to persons skilled in the art to which it relates, and it must amount to something more than a mere carrying
FEDERAL l;tEPORTER,
vol. 70.
forward or more extended, application of an original idea of another. It must be new, as well as useful. 1'.. SAME..:...EvIDENCE-ExTENSIVE USE.
Oriewho invokes the presumption claimed to arise where a patented article goes into extensive use, and supplants other devices, has the burden of showing the fact as to the article in question; and where the evidence as to the, supplanting is not satisfactory, and it appears that COlliplainant 1s engaged largely in manufacturing articles of a different design from that of the patent sued on, the presumption should not have mUCh weight. The Murphy patent, No. 414,069, for an improvement in car roofs conin the method of forming the joint between the plates, held void because of anticipation and for want of invention, in view of the prior state of the art.
8.
SAME-'-OAR ROOFS.
This was a bill in equity by the P. H. Murphy Manufacturing Oompany against the Excelsior Car-Roof Oompany for alleged infringement of a patent for an improvement in car roofs. Paul Bakewell, for complainant. B. F. Rex, for defendant. ADAMS, District Judge. This is an action for alleged infringement of letters patent of the United States, No. 414,069, granted to Peter H. ¥urphy, under date October 29, 1889, for improvement in cal' roofs.Tb,.e s,ubstantial defenses are that the patent is void for want of novelty and patentable invention, and that the defendant has not infringed any of the claims of the patent. The Murphy patent is what is known as a "combination patent," and consists of devices for the manufacture of sheet-iron car roofs. Five specific claims appear in the patent, each one representing a certain alleged new and useful combination, and it is charged that the defendant has infringed each and all of these claims. In order to understand the application of the devices embodied in these claims to practical use, it is necessary to presuppose the existence of the framework of ariord,inary freight car with elevated ridge, and roofs declilling slightly therefrom on each side to the eaves. If these declining roofs are cO"fered with ordinary wood sheeting, the top of the car is ready for the metallic covering contemplated by complainant's patent. The first claim of the patent is for a combination, consisting (1) of angle strips in ,shape substantially m{e ordinary inverted Trails, nailed down through the flat flanges, to the sheeting, and thus exposing several upright flanges extending equidistantly apart from the ridge or peak to the eaves of the car, and (2) metal plates so cut, in width, as to filH,n these equidistant spaces, and, in length, extending have one of from the ridgeto the eaves on each side. These their sides turned'up to form an upright flange, which,in laying the roof, is placed up against, and, of . equal height with, the upright flange of the angle strip. The next adjacent plate is also turned up at the edge; and formed into an overlapping or 'inverted U-shaped flange, ",hich,}n, layillg the roof, is, inade to thefirst-mentiQned upright 'jlange of. the next adjacent plate,: and the upright
P. H. MURPHY :MANU1"G CO. V. EXCELSIOR CAR-ROOF CO.
49a,
flange of the angle strip against which it lies. In this way, by a succession of plates similarly formed, the one with the overlapping or iDverted U-shaped flange is made to engage the upright flange of the one laid immediately before and adjacent to it, together with the upright flange of the angle strip against which it is laid; and thus the entire side of the roof of the car is covered, and each plate is in· terlocked with its predecessor so as to form a continuous water-tight roof. The angle strips being nailed to the sheeting by and through the two fiat flanges, these nails are covered by the successive plates as they are laid, so that no nail heads are exposed; and the roof, when done, forms a covering which thoroughly protects the car from leakage. It is this combination of the upright flange of the angle strip with the upright flange of one of the adjacent plates lying against it, and both engaged or overlapped with the inverted U-shaped flange forming the edge of the next adjacent plate, whereby a standing water-tight joint is formed between the several plates running from the ridge or peak to the eaves, which is the subject of the first claim of complainant's patent. The evidence shows, in my opinion, that there was nothing new in this combination at the date of the application for the Murphy patent. Evidence of the prior state of the art discloses that each and every element of this claim was not only in public use as a combination for years before, but that the substantial equivalent of this combination is found in several patents which antedate the application for the patent in controversy. The Naylor patent, No. 1,321, dated September 11, 1839, which was for an improvement in the manner of covering roofs of houses and other buildings with sheets of metal, etc.; the Morsell patent, No. 165,113, dated June 29, 1875, for an improvement in metallic roofing; the Hawthorne patent, No. 386,316, dated July 17, 1888, for new and useful improvements in roofing; the Wands patent, No. 302,453, dated July 22, 1884, for new and useful improvements in metal car roofs,----each and all fairly represent the essential features of the combination found in this first claim. For instance, in the Hawthorne patent the angle strips are substantially the same as in the Murphy patent, and are applied to the sheets in substantially the same way as the angle strips of the Murphy patent. The flanges of the intervening plates, it is true, are all upright; that is, one does not overlap the other forming the inYerted U-shaped protecting cap, as in the :Murphy patent, but there is a separate cap thrown over the angle strip, with the two upright flanges of the plates :oesting against its upright flange, very much after the principle employed by defendant in manufacturing its car 1'oof under the Jennings patent, No. 446,780, dated February 17, 1891; and I quite agree with complainant's counsel in the reasons assigned by him, showing that the combination of the Jennings patent, 'in 'this partiCUlar, is the substantial equivalent of the combination under the first chlim of the Murphy patent. Manifestly, this separate or disconnected cap serves no other purpose than would be seryedif it was made integral with one of the plates. By bolting this: fieparate cap to one of the,upright flanges' of the Hawthorne plates,' the overlappin'g' flange of'the Murphy patent is;substantially
FEDERAL REPORTER,
produGed., U,'therefQre,the the Jennings forming the ioint e:Jtending' .from the .roof to the eaves, is an in· fringement of the Murphy patent, in suit,the combination under the prior Hawthorne patent, ooing the substantial equivalent of the combination under the Jenni'ngs patent, would clearly anticipate the Murphy, patent in respect to, the .first claim thereof. "That which infringes if later would anticipate if earlier." Knapp v. :Morss, 15(} U. S. 228,14 Sup. 01. 81. The other patents antedating the Murphy patent above referred to, when analyzed, also involve tbe substantial elements. and combinations! of the first claim of the M:urphy patent, presented no new and, in my opinion, demonstrate that ' idea to the world in his first claim. :, ! The second daimis fOl'acombinatioD'of the elements of the first claim, as already analyzed, ,with a like claim for forming a similar upright waterproof: ,joint where the upright ends of .the plates on one side of the roof join, at the ridge pole, the upper 'ends of the plates on the oth':r side' of the roof. There is therefore, nothing new in this second claim, requiring further or· additional consideration. It, is simply a repetition of the first claim, applied to producing a joint at the ridgefof the car, and is therefore void for want of novelty.· The third, claim is fora: combination ,of the elements of the first and second ,claJms with the addition of a four·waycapto be fitted over the openings necesl(ilar;ily :produced where the upright joint mentioned first claim, extending from the ridge to the eaves, meets or intersects the upright joint menUanedin the second claim, extellding along the ridge. The necessity and function of this cap will be rell,dily ,bYaDi inspection of the following diagram, theopenblgs to be covered:
The figures 3-5 ,show the angle str,ip rUIlning from the ridge to the, ,eayes; 6, shows the sheet, with its l1pright flange, 7, lying against one. side ofJhe angle strip.j6-10 the next adjacent sheet, with its inverted U·shaped flange, 10, overlapping flange 7 and the angle strip,--:-:maJdng altogether ,tq,e llPfight joint extending from the ridge to tIle eftves, constituting t.4e combination under the first claim .of thePl:\,tent. The figures 3;-5" in, with 11 and
P. H. MURPHY MANUJ!"G
EXCELSIORJ CAR-ROOF CO.
496
S,show the transver,se upright joInt extending along the ridge of the car, which, with the first·mentioned combination, make the combination under the second cHiiril. At the intersection of these two joints appears an opening, which, of necessity, must be covered in order to produce a water·tight roof. Mr. Murphy placed over this opening a four-way cap, represented by the figure 16 in the diagram following:
And it is this combination of the elements of claims 1 and 2 with the cap which cOlistitutes the third claim of the patent. In making this third combination, Mr. Murphy had before him, and, in: contemplation of law, is presumed to have been familiar with, all prior patents and all information on' the subject known to 61' used by the public. The test of invention, within the meaning of the patent law, in all cal!l is Whether t'&.e device or improvem.ent is the product of s, an original conception Of the patentee. It must involve something beyond what is obviotis t() persons skilled in the art to which it relates, and it must amount to something more than a mere carrying forward or more extended application of an original idea of another. It must be, under the statute, new as well as useful. Pearce v. Mulford, 102U. S. 112; Burt v. Evory, 133 U. S. 349, 10 Sup. Ct. 394,and cases <;ited. It is recognized that the patent sued on is what is known asa "combination patent"; and, even though all the separate elem.ents are old 'or well known, there might be patentable invention in the combhiation, provided a new and use· ful result is obtained. Thomson v. Bank,53 l!"ed. 250. 1 But the question still remains whether the combination is new, and therefore patentable, or whether, on the other hand, it is an aggregation of old elements producing no new result, and thereforeiIotpat· 'entable. Even if the aggregate result produces a better structure than was ever befori;! produced, yet, if no new result is produced, it Is not patentable. Reckendorfer v. Faber, 92 U. So 347; Brinkerhoff v. Aloe, 37 Fed. 92, and cases cited. 13 C.C.A.. '518.
vol. 70. .the casebefoN!: the. O;lUrt, which, practically includes all of rp..ust ,filII. .;Illnd in it no c.)Dception or no ,new result. ['he addition of the cap to cover openings at the intersection of ,the joint is nothing new. It isfoun,d.in sevel,'al patents antedating Murphy's, for improvements in metallic ceilings,-notably, the Adler patent, granted June 19, 1875; the Northrup patent, granted November 24,1885; the ThllDer patent, granted January 24, 1888; a.nd the Mesker patent, granted April 19, 1887. With the knowledge of these patents, and the use of a four-way 'metallic cap to cover similar openings in the intersections of metallic ceiling joints, it seems to me that an ordinary head workman and skilled mechanie would naturally and almost to cover similar openings spontaneously turn to a siQl.ilar anyWhere and for any purpose. If such is the case, no patentable !nvention is involved. Atlantic Works v. Brady, 1Q7 U. S. 192, 2 Sup. Ot. 225; Aron v. Manhattan Ry. Co., 132 U. S. 84, 10 Sup. Ot. 24. The Wands patent, dated July 22,1884, for new and useful improvements in car roofs, in my opinion,presents every element, or the substantial equivalent of every element, of this third claim of the Murphy patent. The angle strips, although made of wood instead of metal, serve the very purpose, and practically in the same way, as, Murphy's angle strips of iron. ' The plates and their- attachments to the angle fltrips, both across the sides of the roof and along the ,ridge, form. substantially the same upright water-tight along the joints, intersecting each other, and exposing ridge, as appear in. :!;he Murphy, patent, The continuous sheet extending along the roof, and covering exposed open· Jngs, while not a perfect four-way cap, is a device verY suggestive thereof. The skill of an .ordinary foreman or head workman, familiar with the Wands continuous cap, could hardly fail to see the possible advantage of cutting this continuous cap, and folding it closely down over the four intersecting joints. This Wandspl\tent, ',taken in connection with ,the testimony showing prior use of the four-way cap to cover suqh exposed openings,. deIUonstrates that there was nothing new in, this combination.". To say nothing of the testimony showing use of, this cap in similar combi;nations at reo mote periods as to which the testimony of witnessesrnight be unreliable, it stands undisputed that a sin;lilar four-way cap had been on the courtin use to cover intersecti;ng upright house in the city of St. Louis, for many years prior to the application for the Murphy patent. In the light of all the evidence before the court bearing upon the prior state of the art and prior use, the conclusion, in my opinion, is irresistible, that Murphy lliscovered nothing new either in th,e elements employed or in the combination described in the third claim. Thedetllils rivets used instead of perpendicular screws to attach tl1e uprightllanges of the plates to the angle strips, or the horizontal rivets used instead of solder to attach the caps to the upright joints, seem to ,me nothing , " Applyi.qg .it
P. H. MURPHY
CO" V. EXCELSIOR CAR-ROOF 00.
497
but an obvious mechanical contrivance, which any ordinarily skillful mechanic would apply to accomplish the required purpose; and, even if these. details were the subject-matter of distinct claim, I could not, under the authorities referred to, hold that they or either of them, separately considered, or considered in connection with the alleged combinations of either claim, involve patentable invention. For the foregoing reasons,the third claim must be held void for want of novelty and patentable invention. The fourth claim is practically the same as the second, and reo quires no additional consideration. The fifth claim is the same as the third, with the addition of a screw stud imbedded in the framework of the roof of the car, passing through the corner caps hereinbefore referred to, for the purpose of fastening down the walking board running along the top of the car. The disposition of the third claim practically disposes of this fifth claim. The addition of a bolt to be used to attach the running board to the roof is so manifest an expedient already practically embodied in the Wands patent as to negative the possibility of novelty or patentable invention in the use of it. Plaintiff's counsel invokes a presumption of novelty in the Murphy roof, from the alleged fact that it went into general use, and supplanted other roofs. If such were the fact, the presumption suggested would arise, and, in case of doubt on the issue of patentable novelty, it might turn the scale; but, in view of the fact that many other considerations besides novelty of the article are involved in its popularity or salability, these incidents become a very unsafe criterion. .Duer v. Lock Co., 149. U. S. 216, 13 Sup. Ct. 850. The evidence, however, does not satisfy me that the Murphy roof constructed under the patent in suit ever went into general use, or supplanted others in use before it was invented. The bur· den of showing this rests upon the complainant, who is invoking the presumption. The evidence shows that about 10,000 of these Murphy roofs have been made since the date of the patent. There is no evidence of their supplanting other roofs in the market. On the contrary, there is very substantial evidence showing that complainant is and has been for some time manufacturing a different roof. Mr. Bluedorn, a director in complainant corporation, testifying for his company, makes it perfectly certain, not only from what he says, but from what he declines or omits to say, that the complainant corporation is engaged largely in manufacturing car roofs of a design different from the design of the Murphy patent. Under such circnmstances, the presumption invoked by complainant ought not to have much weight, if any.. Disposing of this case on the ground of want of novelty and patentable invention in the several claims of the Murphy patent, it is unnecessary to say anything concerning the defense of noninfrirlge· ment. I may, however, briefly add that the evidence of the prior state of the art, which has brought me to the conclusion above indicated, would, in my opinion, force the court to a narrow and limited construction. ,of the claims of the Murphy patent; and, if such v.70F.no.5-32
498
I'EtiiIu.L
UPOBTEB,
vol. '70.
eonstructioD:$hould be 'giv¢n them, the defendant's roof maluifactured under:tbe Jennings patent would not be an infriJ1.g'ement of the Murphy patent in suit; or any of its claims. The bill tnu.st be dismissed.'· ' HEAD v. PORTER. (Circuit Court, D.. Massachusetts. No. 16-
October I, 1895.)
1.
PATENT INFRINGEMENT SUITS-EQUITY JURISDICTION-AccOUNTING OF PROFITS-:'SURVIVAL OF ACTIONS. . .' :
The decision in Root v. Railway Co., i05 U. S. 189, that equitable jurisdiction ina bill for a naked account against the infringer of a patent cannot. be. sustained upon the theory that the wrongdoer is a trustee of his and profits for the use of the owner of the patent, does not involve the 'conchision that such suits are to be regarded as 'mere actions of tort :fol' the recovery· of damages, in Which the right of action cannot survlve the infringer's death. I The single question decided in that case was that a bill for a naked account o'profits and damages againlSt an infringer cannot be sustained; that such rellel ordinarily is incidental to some other eqUity, the right to enforce which secures to the patentee his standing In court; aud that the most general grOUnd for equitable interposition is to insure to the patentee his rights by means -of an injunction agll,inst a continuance of the infringement. Oll' AND PROll;ITS. ' ,
2. SAME.
3.
NotwithstandingtheproVisi()n of the act of July 8, 1870 (16 stat. 201), giving to the complainant In: an equity suit'forlnfriIigement of a patent the'right tOl'ecover damages:ln addition to prOOits, gains and profltsare E!tlll thEHU'opermeasure:of. damages, except wJ;lere the ipjury sustained by the infringement is plainly greater tpe of wllat was ,made by the infringer,. B!rdSall ,v. 93 U. S. 64,andRoot v. Railway Co., 105 U. S. 189, 'followed. , SAME;
4.
, The profits actually made :by an infringer, for '''hich recovery is sought by a bill in equity, are' not the same as damages iii an action of libel, slander, diversion of aw.ater course, and similar actions ·of, tort. The forxp,er are the actual, direct, pecuniary benefits, capable 0;( definite measnr¢nient, acquired by the.. wrongdoer; the .latter primarily the loss suffered by the injured p'arty Where the wrongdoerrea:1fzes no pecuniary benefits, Qr· only such as' are indirect,: tndetinlte, or' rest, In 'speculation, cOIllpromise,or arbitrary. adjustment. ;1U'vIVAL-DEA'lIU ,QJl'. ·DEFENDA.liT. , '
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"
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5.
Up()n the pripciples, held, that a Qill inequity for infringement or a. patept WhICh prays injunction and an, ,account of profits is not 'founded upon a tort iiI such sense that the death of the defendant ';I'lll abate the same, so that it cannot be revived. '
: a n t . ,
This was a suit by Charles Head against Satnuel. W.Porter for alleged infringement of a .patent. to dismiss the bill on thegrollnd that the suit has been abated by the death.of the defendWilliamA. Hayes, for co;rpplainant.:· . Sherman Hoar and Alex. P. Browne; for ,