808
FEDERAL REPORTER.
ter shown in the prior patents ,and publications, but it does not ayer that the matter thus referred to is one and the same matter. So, really, the plea aims to set up the defence specified in subdivision 3, of section 4920, of the Revised namely: that the invention was patented or described in a printed publication prior to its supposed invention by the patentees. The clear purport of section 4920 is that such a defence must, in a suit in equity, be set up in an answert and not by a technical plea. The plea is overruled, with costs to be taxed, but the defendant may answer the bill in 30 days on payment of such costs.
CRANDALL and others v. RICHARDSON and others. (Ctrcuit Court, S. D. New York. 1. February 23,
1881.)
REISSUE No. 4,223-CHILDREN'S CARRIAGES-NOVELTY-V A.LIDITY. Reissued letters patent No. 4,223,_ granted January 3, 1871, to William
E. Crandall, for children's carriages, held fJoid for want of novelty as to ji;rst, and anticipated as to second, third, and flfth claims.
2.
SA.ME-SAME-,ANTICIPATION.
Complainant's riding device, consisting of two profile frames representing horses, mounted on rockers, connected together with a seat, so as to allow the feet of the rider to extend downwardly between the frames, with r. hinged toy-box in front of the seat, serving to hold the child in place and as a receptacle for its playthings, held, anticipated by the Brown devices-one consisting of side frames representing a horse, terminating in rockers below and connected together with a seat and foot-board, allowing the feet of the rider to extend downwardly between the frames, joined in front and rear by two vertical boards, one having extoding from the front a profile horse-head, and from the rear a profile of a flying horse-tail; the other consisting of two solid frames representing an eagle or swan, continuous to and terminating in rockers below, with a seat connecting the framcs together and a toy-box in front to keep the child from fallir.g out. 3. SAME-SAME-MoDIFmD FORM.
Whether the frames are the profiles or outlines of horses or are solid, or whether they are in the form of horses, eagles, swans, or of any other bird or animal, is a matter purely of taste or design, and, so far as any mechanical effect or result is concerned, is of no importance. 4. DEFENCE OF PRIOR USE-DOUBTFUL EVIDENCE-SUCCESS OF LATER DEVICE NOT CONCLUSIVE.
In a defence of prior use it is often a controlling circumstance, where there is doubt in the proof, that, considering the success of the later device, if it had been made previously it would have attracted the attention of the trade .and immediately have gone into use; but it often happens that from various fortuitous circumstances a complete invention, in a branch of business where much depends on energy and facilities and capital, fails to attract that attention which, under different and better auspices, it receives when independently produced at a later day.
ORA NDALL V. RICHARDSON.
809
"P. Van Antwerp, for plaintiffs. B. Wadleigh and Frederick P. Fish, for defendants. C. J. This suit is brought on reissued letters patent No. 4,223, granted to William E. Crandall, January 3, 1871, for an "improvement in children's carriages i" original patent, No. 121, having been granted to him, as inventor; 18-70, and reissued to him, No. 3,972, May 17, 1870. The specification, df No. 4,223, including what is outsIde of brackets and what is inside of brackets, and omitting what is'in italics, reads as follows.: ; : BLATCHFORD,
"Figure 1 is a side view of thedeyice, illustrating my invention. Figure 2 is a central verticallongit\ldinal secti()ll tllereof. Figure 3 is!t top or view. letters of reference indicate corresponding parts in sev,eraJ figures. My invention consists in constructing the body of a child's of two frames [representing horses in profile, each mounted oli arockerVlfuli1 whwh are connected together [by] 80 as to form a seat [and a -foot-board] 'between them. It also [of] consists £n a [arranged between the profile] which is connected to the frames,' andS6'r068 to keep the rider in the Beat, but it may be readily moved oVer in order to release him when desi1'ed." [And' furthermore, it consists of a combination of parts, as will hereinafter more fully be set forth.] The body may be mounted on wheels orrockers, 'and thus form a carriage or rocking-horse at the pleasure of the child. In the draw· ings, A A [are] may represent two frames [representing] which, in the ent case, are made in the form of horses, which are arranged parallel to each other, with their feet resting on a base, B, which, if desired, may be in tile form of rockers of an ordinary rocking-horse. 'fhe [profile] frames are 'C0Unected together by cross-pieces, [forming a seat,] C, Which, with the fonner, consUtute a guarded seat, so that a child can easily ride without danger of being thrown or falling out. In order to rende?' his position still more secure, there is connected to the frames in front of the seat a [A] box, D, [is hinged in front of the seat, serving to hold the child in place, and forming] whieh, in one position, hold the child in the seat, and l'ikewise forms a receptacle for his playthings, and [which can be turned <Wer to let the child out] in the other position allows the child to remove himself, or be removed,from the seat. The base, B, and [the] fr.ames respectively may be connected together 'Qyauxiliary cross-rods, bars, or braces, or 'otherWise, for strengthening purposes, and the child may rest his feet on a foot-board, E, which is secured to tije base, B. To the base, B, there is connected, in any suitable manner, a. series of wheels, F, whose bearings should be so constructed that the wheels may be swung or raised up or down, whereby the whole weight may rest either on the wheels or on the [rockers or] bed. When it is desired to employ the device as a carriage, the wheels are swung or moved downwards, alld by means of suitable pins, G, or other retaining devices, the [rockers are] bed is cleared from the floor, and the carriage can then be [used] drawn forwardas an ordinary child's carriage. When the wheels are raised or removed, thEm the bed should consist of rockers, so that the child can rock [itself]'himseif after the manner of a rocking-horse. Should the arms or shafts of
810 be immovable fixtures, the bed, E, may consist of a flat bO,ard or strip, and not be in the form of rockers. It will {Je perceived that ,the construction of the body, A. G, not only pl'oduces a cOnvenient and safe l The A A, repredenting horses in profile and then connecting1 seat [form an attractive and :mlusing riding mechanism, and present] for the child, but that the appearance is presented of two [animalslhorses which the child can [imaginarily] drive simultaneously, 'without stralldling either, and thus [without danger of] be protected from falling [out] oj!. Suitable harness may be placed on the horses, and the bridle extend within .convenient reach of the child. It is noticeable that the child can neither fall forward, backward, or sideward, and I thus p1'oduce an attractive, amusing, and safe riding medlttrn."
. Reading, in the foregoing, wha.t is:outside of bra.ckets and what is in italics, and omitting what is inside of brackets, we have the text of the original specification. The claims of No. 4,223, seven in number, are as follows: .. (1) A. riding device, consisting. of the profile frames, A 4, together by a seat, so as to allow of the rider, to extend downw!U'dly between the said frames, substantially'as described. (2) Two profile frames terminating in rockers below, and connected together by a seat aud a footboard;' (3) The combination of a box.D,prolil.e:frarues, A A, and a suitable seat, C C, substantially as described. :(4) The profile frames, A A, C, box, D, bed, B, rockers and wheels combined, and operating, in relation to llach other, sUbstantially as described. (5) A., hinged toy-box arranged between two profile frames, substantially as described. (6) 'fhe, wheels, F; arranged upon the rockers in front and rear, in combination with ,the two profile fmwes connected together by a seat, substantiaUyas described. ,(7) A riding device, produced8uustantially as described, that iato saY,that .it can bC,converted Iilto a carriage or rocking-horse, through the medium of rockers and wheels, the latter adapted to be raised or lowered, sUbstantially as described."
The claiIns of the original patent were four in number, as follows : "(1) The frame, A, connected together 'by a s'eat, C,forming the body of a riding device, and allowing the feet' to project through it, when. combined and operating substantially as described. (2) The box, D, connected to the frames, A, inCQ.mbination with the seat, ,C, substantially as and, for the purpose described.' (3) The wheels, F, or rockers, B, in combination with body and seat, A C, substantially as and for the purpQse described, (4) The fl.·ames; A, seat, C, box, D, bed, n, and wheels, G, combined and' operating together, substantially as described." '
The claimsof No. 4,223, whiGh are alleged to have been infringed by the defendants, are claims 1, 2, 3, and 5. The "profile frames" are an ell'lIIlent. in each one of those four claims. These profile claims are shown, by the text oftha specification, to be frames showing the profiles of horses and" not profiles, of anything else. ,The drawings of the original patent and of No. 4;223, which are the same, show. prqfilea, pf horses. Under original patent the claims' were,
CRANDALL· V. RICHARDSON.
811
probably, not limited to the profiles of horses; but extended to any frames which answered the mechanical description of the frames described, withont reference to the profiles of the frames. But the claims of No. 4,223 are more limited in respect to the frames, and require the frames to exhibit the profiles of horses, besides answering the meeha.nical descriptions of the frames described. The admission in the record, in connection with the testimony of Smith, who is shown by the record to have been first duly sworn, and what is alleged in the bill and not denied in the answer, shows sufficiently that the defendants, before the bill was sworn to or filed, made, used, and sold children's carriages containing the improvements covered by claims 1, 2, 3, and 5. of No. 4,223. The bill avers that fact. The answer does not distinctly deny it, but only denies that the defendants so to the injury of the plaintiffs, or in violation oftpeir rights. The defence is want of novelty. In general terms, claim 1 is for profile frames and seat; claim 3, for profile frl1mes, seat, and toy-box; claim 5, for profile frames and toy-box; claim 2, for profile frames, and rockers. 1. It is contended that Anden made, in 1861, a structure like Exhibit No.8, containing the profile frames, seat, .foot-board, and rockers, and which anticipated claims 1 and 2. No, original struoture then made is now produced. No. 3, now produced, was made in 1877, as an illustration, by John H; Brown, from a drawing received by him from the and at their request. This No.. 3 is almost precisely like the plaintiffs' structure, minus the and the wheels. It was reproduced after full acquaintance with the plaintiff's structure. It was not made by Anden. After it was made it was produced on Anden's examination, and was then shown to him before he was asked to describe what he had made in 1861. Anden says that he made a number of these structures in the winter of 1861, while he was working for '8 Mr. Christian, in New York. Soon after that he ceased to work for Christian..He .says he afterwards made some of the structures and had them on sale at a place of his in Madison street, and sold a few, but found they would not take; that after that he went back to Christian's, and, before doing so, gave away three or four of them an-dburned the rest ; that he left Christian's again, last working for him in 1867, and was employed· by Elder & Brown for over three years, and at the sume time kept It toy store in Chatham street for over two years, of the 1869, and 1870. and sold some of these structures at thfLt place; that he has nOt seen of them8inoehe .left Chatham street, in 1871 or .1872,)l.nd has
812
, FEDERAu.aEPORTER.
made none since; that those he had left, from four to six, he gave to his landlord for rent, and that they were slow-selling things. Being asked the names of any persons in his employ when he made the articles in Madison street, he gives the names of Charles Guessnar and Richard Harding. Harding was called by the plaintiffs. He was acartman, and knew Anden in Madison street.as a painter, but did no work for him save carting a load of furniture. Anden states, as a. means of fixing the date when he first made these structures, that he was at the same time painting what was called the Boston rocker, belonging to Palmer Brothers, and that he has a memorandum showing the receipt Rnd delivery of Boston rockers, dated between December 7 and 10, 1861. He gives no description of what he calls the. Boston uQrdoes he state anything to show what it was, e;x:eept when asked if it had :He says it had "to secure thehaaJd in the single- . ", This is: all v:ery confused.. ,'I'M defendants claim that is, other evidence to show what this Boston ,rocker was. and that it was made about 1861, and to no great e:dent'afterwards. Rich testifies that he sold at Boston, from 1859 to 1861; a rockinghorse and ,cradle combined, made under patent No. 23,003, granted tlL.Arad,Woodworth, 3d, and others, February 15, 18S-9 ; ,but he says that it was, not, to his knowledge, called the "Boston rocker," Goodrich testifies to ,the, SltDl6 -rocker as. Rich, as sold in Boston in 1860, and says that it was known in the trade;genel'ally by the name of the "Boston rocker;" that the last he sold was in 1869, and that they-were 'not made. after. that to his own knowledge. Tibbals testithllit anjarticle called the "Boston rocker" appeared in New York about 1862; that the nearest thing to it i&' Exhibit 4, which is a rocker with a,sea;t in a box; and ,a horse's head in the middle in frdnt; that he hasnot seen one since 1869, and that it had a short run of about two years. The Woodworth rocker is one with a seat in a box, and a horse's head in the middle in front. On the whole, it must be accepted that the Boston rocker referred to by Anden was the Woodworth rocker. John II. Brown, of the firm of Elder & Brown, for whom Anden 'Worked jl,S above stated, testifies that Anden was their foreman painter for several years, including 1868; that he sold to Anden toys, and hobby-horses, and rocking devices in November, 1868, to be sold in his trade, he being engaged in business in Chatham street, and Bethune, and Washington; that Anden, during the time he worked for him, told him about his manufacturing hobby-horses, ," 5hoo-flys and Dexters;" that Anden called such hobby-holses and
v.
llICH4RDSON.
·:813
rocking "0. new line' of toy he had introduced j'''that behveen November, 1868, and Christmas, 1868, he saw, in Anden!:S'paint- . room, parts ofa profile horse, not complete, and that what'he so saw was "the sides, substantially the same as Exhibit 3." Brown also says that he .assisted Anden to go into business, by letting him have $148 worth of goods, and took the responsibility on his own shoulders. Anden was examined as a witness for the defendants on September 22, 1877, and gave the testimony before recited. On the same day Brown was examined as a witness for·the defendants. On his direct examination, at that time, he was not asked anything as to AndeD, .although Anden had just testified as to his being with Elder & Brown for over three years, and as to',hisliielling his structures at his toy store in Chatham street at the s8lme time that ha was 'wOtking for Elder & Brown. .On his01'oss-etamination, on September 22, 1871, Brown was asked: "Cross-Q; 58. Do you know JohI1,Anden, the previous witness, hqw long have you known him? A. I know him; lean go back asfld as 1868, when I sold him goods. CroBs.;Q. .59-. What ·was heengagedl 'A. Foreman for Eldel"& Brown,J»Y firm at ithattime. you ever see any roekiIfg:horses and, if .so·. when first?" A. I did not." . . . . ,. , .' , ' ·: , ( ,t
r)""
,:
This last question and anawelt; standing alone, would 'be understood as meaning that the witness had never seen any rocking-horse which Anden had previously made, and not that he had' nevar seen A.nden go through the process of making a rocking-horse. The ,above was 0.111 that Brown was then asked by either side about Anden. Brown's testimony stood thus' for more than two years, and ,until . October 2, 1879, when he was ,called. as a witness for the/plaintiffs, and gave, partly on direct examination and partly on cross-examination, the other testimony. betorerecited as given by him. The defendants urge that Brown, having a pecuniary interest: fu Anden's venture, had every reason to examine and notice his stock. Road, a. driver, says he knew Anden while And.Em had a store in Chatham square, and went into his store with and for goods' geherally about twice a week,-first in 1869, in the fall, and last about 1870, in the spring,-and never saw there a rocking device, with profile frames, resembling the plaintiff's structure. His testimony amounts to very little. The time he speaks of is more than a year later than the time spoken of by Brown, and he does not seem to have had any opportunity or occasion to see all that Anden had, or to visit all the rooms in his shop.
814
I'EDEnAL REPORTER.
Andends·attemptoo·to be contradicted on's; collateral matter, with a view of showing that he is not a truthful witness. In giving his testimony in September, 1877, he says that' when he went to work for Christian the second time ""ariousarticles, profile sides, representing horses, birds, etc., came contjnuallyto the shop to be repaired and painted from stores Mr. Christian dealt with." He does not state where the shop 'was to which he refers. McGill, who was with Christian as a woodLworker and';superintendent from 1857 to 1872, and who knew Anden there as a painter, says that while Anden was erttvloyedthere,therewere not, to his knowledge, "Shoo-flys, Dexters, or anything like Exhibit 11," brought there for repairs. Anden's identification of the articles he refers to as "profile sides, representing horses, birds, l' eta" is very vague and indefinite. It does not appear that hexefetsto the same things MeGill does, so no contradiction is made out. , .)n ,regard to Qther contradictjon& qf Andenby McGill, it appears that Chlistian had a factory up town and a wareroom down town; that McGill worked at the factory, and that Anden worked a.t the wareroom;' The plaintitJ contends,' and very forcibly, that from the .history of the 'success of the pla.intiff's structure any device made by Anden like No.3 would at 'once have attracted the attention of 'the trade and have gone into use.' This is' aftena controlling circum_stance in a case of.,doubt. But it often happens that, from various "fortuitous 'cucu,mstances, a complete invention in ,a branch of busi,ness, where much . ,on 'energy and facilities and capital, fails to, attract' that atterition, whioh, under ·different and better ':aJ}.spices, .it receives w.hen jndependently produced at a later day. On the.:who1&,it must beheld that Anden's structure is established I;I,S anticipatingelahns land 2.,: No.3 has no toy-box. Anden'says, in speaking of his structures ,,like No.3: "I found' it necessary to fix something in front, so that' a small clJild : wouldn't fall forward ill front, out of it.. So I fixed them in various ways,flome with a board or tray. or an angularboxJ that is, made at an angle to fasten in, with the rod through to - , 'c"} 1.:,' " , ,
"
This is very vague, and d()es,;nQt ·!thow the hinged toy-box ot the to be turned, over to let t,h..e child Oijt. Elsewhere, he says thlj.t the was fixed between the horses' so as to secure llle on larger-sized horses were the child in its 'iJ;!,;·that other!,\,slipped ill ,iWl1e:Q,the child took its seat, through a went through the cleats; 'and that others he had
horses' neck, "for 'amusement totbeiChild, as that:style<>f ttay,made that way, held the mQst.things that amuaed the·child."Thia is. too vague to show the plaintiffs' .atruct:ure. It was easy 'to aaY'ithat the box was arranged as in the plaintiffs' structure, if the fa.et wereao. 2. The making of a structure Exhibit No.4, by John H. It Brown, before the invention of Crandall, is satisfactorily has two side frames, terminating in rockers below, and connected" together by a seat and a foot-board, the arrangement being such aa to allow the feet of the rider to extend downwardly between the, frames. In the front and th.e,J:'Elar the space.o.cross is walled in by two vertical boards, one in the front and one in the rellof, while in the plaintiffs' patent .the spatles are open. The piece, solid to the edges of the rockers, while in the plaintiffs' the. space across under the bodies'oMhe horses is open. In the middle, of the width ofa horizontal cross-board, which ex.tendsrearward from the top of the front '\rettical cro8s.-piece,the,prQfile he.ad of a horse stands up vertically;f and from the middle, of the widthot ,s. back-board, to the seat, .projects ,rearward aprQfileofthe flying tail of a horse. The structure contains all the elemeJ).ts of claims 1 and 2 in which there is any patentableJnventipn. The fJ;amesdp,uohepresent horses in profile, and the structure repre.sent,g the appearaJ;lce of but one horse. There iss 'proVision for a bridle, and a Qh:ild can, imaginarily, drive, the one'horse witJ?out straddling it,andwitih()ut danger of falling onto , The child can rest its W;l,the 1tnd can rock itself after the manner of a rocking-horse. Whether the frames are the profiles or the outlines of horses, or are solid frames, is a matter purely of taste or design, and, so far as any is of no mechanical'effect Or result in the ,combination, is importance. So, putting a horse's head on each frame, or otherwise making the structure present to the eye, or to the mind of the child, inven, the appearance of two horses instead of one, is no tion, the other parts' of the combination being' the sanie, b.ny· more than it would be tq add the app,earance of more, or Jwo m.ore, horses in front, in any form ofar,rangement.' , 3. No.5 shows two frames term.inating in rockersbel{)w; and conneeted together by a seat :with a foot-board,and lpe (eet ot the rider canexteIid downwardly the frames.: 'The frames ar,e solid and continuous to the edges of the rockers, llind each :Qtan with 'of., the length of the frame, the beakp.olilting fo.rward8, tront.ltnd ,:rear l
816
FEDERAL-REPORTER.
parts of the frame being so painted as to represent the outstretched wings of the eagle, the legs and claws of the eagle coming out below, and there being on its breast a shield with stars and stripes. Mechanically, this structure contains all that there is in claims 1 and 2 of the plaintiff's reissue, although it contains no idea of a horse. But, whether the side frame be in the form of a horse 01' of an eagle, or of another bird or animal, is a mete matter of design, and has nothing to do with any mechanical element or combination found in either of those. claims. It is shown that Brown made half a dozen structures like No.5, and sold ana before Orandall's invention; that he also made half a dozen others, like No.5, before Crandall's invention, except that they had representations of swans instead of eagles; and that the eagleawere some ofithem shipped and some put ill the show-room; and the swans were put'-in the show-room. The evidence is also satisfactory that the structure, like No.5, had a hinged. toybox in front of the seat, serving to hold the child in place and forminga receptacle for playthings. It aould' be turned over to let the child out, and did not differ from that in ,the plaintiff's reissue. Tibbals does not remember but it is sufficiently proved by Brown, Cowry, and Allen. Claims:3 and 5 are, therefore, antici. pated by the structures like No.5. l' deem it unnecessary to consider any of the otber structures, or any of the prior patents set up in defence, as, on those above considered, the bill must be dismissed, with costs.
NEW AMERICAN FILE Co. v. NICHOLSON FILE Co. (Uircuit Court, D. Rhode I8land. 1. 1881.)
PATENT No; 29,236-FILE-CUTTING MACHINE-LwrEATION OF FOREIGN UPON UNITED STATES PATENTS-ExTENSION - PRIVATE ACT EXTENDING ORIGINAL GRANT-DEMURRER TO BILL.
Etieme Bernot, the inventor of a machine for cutting files, patented his invention in France, August 31,1854, and in England, March 27,1855. On July 24, l&lO,Un1ted States letters patent .No, 29,236 were issued to him for 14 years from that date. Under the statutes of and 1839, governing this issue, such a patent would have expired in 14 years from the date of the French patent, i. e., August 31, 1868; but in July, 1862, a private act of congress was passed, enacting that the grant should be valid for 14 years from its date. On .July 23, 1874, before its expiration, the commissioner of patents extended the patent for seven years from July 24, 1874. A demurrer to the bill, denying the right ot the commissioner to extend the patent, overt'uled.