474
, '05 FEDERAL BlIlPORTER.
euit court must. be, and it is, reversed;' and tbecause will be remanded to that court, with direction to enter a decree dismissing the bill of complaint .with COlitS.
crMIOTTI UNHAIRINGCO. lit aI. 1.
T.
BOWSKY. '
,.(ql:rc1l1t Cpurt, S. D. NewYpr/t. June 18, 1899.) PATENTI!l--INlI'BINGEMENT-IMPERFEOT bPERATION.
WheIJ. the features of the p!ltented are appropriated, InfrlIJ.geruent fs not avoided by the fact that defendllnt's device works imperfectly, oris not so practical as that of the patent. ' FOR REMOVING HAIRS' FRoM: FUR SKINS.
),
No. 557,129.:'"
The Sutton patent, No; 383,258, for: a machine :for removing halts from fur skins, construed, and held. valid 'as to claim 8, covering a combination ot which the essential fefl.ture is a" removable, r,evolvlng brush to brush down the. fur ,and leave the hairs standing , so as to, clipped orr by the cutters; and saId claim 'hCZd,lnfrlDged by the device of the Jenlk patent, '" j, ' . ,
LSAME. I , '·The Hedbll.vny reissue, 'No. 11,079 (Qrlginal No. 408,879), .tor a machIne fpr removing. hairs .fromiur sl.tlns, !1S to claims, 1 and 2, for want Invention. Claim 3, I,t Vlliid at limited, to the precilile co.nstructlon sbown; and It nor claim 41s infringed by the device ,of the Jenlk patent; N6. 551;129.' ' "
This inequity'6y the'Chn,iotti UnhaIringpompanyand John, W. Sutton again!!t. ,Maxllo'Wsky for, alleged, infringement of certain patents relati,ng to machines fOJ; J,'eIDoving;tpe pairlilfrom fur skins. '. i ' ,Louis C. Raegener, for _ RobertValeritine Mathews, fordefendarit.. TOWNSEND, District Judge. :F1inal ,hearing on ,uHI and answer raising question of infringement of the eighth claim of complainants' patent, granted May 22,1888, to ,John fW. Sutton, and of the foul' claims of the No. Muy 27, 1890, to Anton, Hedbayny; both being, for !machines for removing hairs fromtur skins. TheSe machines are more particularly adapted for seal skins, and of so treating the skins of coneys that in their completed state they resemble the genuine seal, being ,then known as "electric seal." The sk:ins of such animals are covered with fur and ,coarse, stiff, hair. To make the: pelt merchantable, it must be dyed and unhaired. Prior to 1879 this unhairing was done by hand. The skins were either drawn over a crossbar by hand, or were stretched by the operator over .his finger; and he then blew down the fur' so as to separate it frOm the hairs" which were cuto:tf or plucked out. Patent No. 213,735, granted to Castle in 1879, covered a machine for cutting off the coarse hairs, so as to be level with the fur,by means of a revolving comb and cutter. In 1881 the Cimiotti brothers obtained patent No. 240,007, for a machine for clipping the hairs in such skins. It comprised a knife-edged horizontal bar, over which the skin tightly stretched and revolved by
CIMIOTTI' UNHAIRIXG CO.V. BOWSKY.
475
lileans of ;rollers, a blower which forced a blast of air vertically down on to the portion of fur stretched on the knife edge,moving guard combs which' retained the skin in place, and horizontally moving knives for clipping off the ·stiff hairs which projected through said combs. The invention of the Sutton patent in suit dispensed with the blower device, and compI'ised, inter alia, a movable and revolving brush, which moved forward and brushed down the fur, leaving the hair standing, and then retreated while the knives cut off the hail'. An examination of the prior art abundantly confirms the admissions of defendant's expert that Sutton's machine was "probably the first wherein a movable rotary brush was used for ,* * * brushing away from the edge of the stretcher bar the fur," and was "an innovation in itself, * * * and an entirely new departure." !twas a new, a useful, and a meritorious invention. The eighth claim is as. follows: "The combination of a fixed stretcher bar, means for intermittently feeding the skin over the same, a stationary card above the stretcher bar, a rotary separating brUSh below the same, and mechanism, SUbstantially as described, whereby tl;1e rotary brush is moved upward and forward into a position in front of the stretcher bar, substantially as set forth."
The. defendant contends either that this claim does not cover a valid combination, because it oinits therefrom a'certain carding brush, D2, essential to the operation of the machine, or that, if it is not essential, the patent is misleading, and the patentee has perpetrated a fraud. He further contends that a harder brush must be used when D2 is dispensed with, while the specification describes a brush made of soft bristles. The following are sufficient answers to these contentions: Neither complainants nor defendant use the carding brush, D2, in their machines. Therefore it is not essential. The patent is not misleading. The eighth claim covers this specific construction without, D2. In these circumstances, invalidity is not shown by a mere difference in the degree of hardness of the bristles. It appears from an examination of patent No. 304,992, to Covert, that this carding brush, D2, is substantially the brush, G, of the Covert patent; that its functions are merely subsidiary, as explained on page 1, lines 93 to 100, and page 2, lines 1 to 5, of said Covert patent; and that it does not hold down the fur and hair away from the knife, but pulls out a section thereof, to be afterwar'ds submitted to the action of the rotary separating brush. 'l'he description of such nonessentials in the specification merely ,amounts to a statement of the better method of using the combination. City of Boston v. Allen, 33 C. C. A. 485. 91 Fed. 248. But the movable rotary brush of the patent in suit, whieh is on the opposite side of the guard, moves in a direction opposite to the motion of D2; and, as defendant's expert says: "It brUShes the fur [and hair] downwardly, * * * is then gradually re· ceded along the lower part or lower surface of the stretcher bal'. * * *" and "releases the water hairs. * · * Then the movable guard is advanced. following the motion of the brush, and holds the fur down while the kI\ife cuts off the projecting water hair."',
Infringement is further snfficiently proved by the admission of defendant's expert that defendant's machine has the exact combination
476
95
FEDERAL REPORTER.
of the eighth claiin, except that its "movable rotary brush is moved forward· and backward along the lower surface of the stretcher bar," while in complainants' eighth claim "the rotary brush is moved upward and forward into a position infrolit of the stretcher bar." This is a mere difference of arrangement, and does not avoid the patent. Defendant's counsel further contends that defendant's machine, claimed to be made in accordance with the specifications of patent No. 557;129, granted to Jenikin 1896, does not infringe, because it uses·a segmental rotary brush, which is only movable far enough to get out of the way of a singeing device, to be hereafter discussed. But the Jenik patent describes a rotary brush, which "passed over and brushed away the fur from the edge of the bar,P, and the gap following 'it allows the 'stiff hairs to rise," just as in complainants' patent his brush was so revolved '!its to separate the fur from the hairs, brushing down the former, leaving the stiff hair standing out." And defendant admits that while his machine, as originally constructed, with a stationary brush, was inoperative, he afterwards changed it so that the brush moved up and down behind the stretcher bar. It is not admitted, but it is evident, that the brush was made movable in order to escape the singeing bar.· If the limited range of movement of defendant's brush is only suffiCient to secure a part of the advantages derived from complainants' invention, this is no defense. The movable rotary brush is theessentiaI element of complainants' invention covered by the eighth claim, and complainants are entitled to all the beneficial uses Of such invention; and it is immaterial that the infringing device works poorly, or is not so practicable as the one infringed. These minor details of construction and additi<mal functions. claimed for defendant's machine do not show such substantial differences as affect the essential iidentity of the two machines, so far as the operation of the movable brush and its results are concerned. It is unnecessary to hold, as claimed by complainants, and almost admitted by defendant's expert, that complainants' is a pioneer invention. The proof and admissions of substantial identity are so clear that, upon either view of this meritorious patent, it is infringed. The original Hedbavny patent, No. 408,879, issued August 13, 1889, covered au unhairing machine with an oscillating incandescent conductor, instead of a knife or shear device. In 1890 he surrendered this patent because it was or invalid for the reason that its specification failed to describe the oscillating movement of the rotary brush, essential to the operation of the machine, and failed to clearly and intelligently describe the incandescent conductor, "the essential and important feature of the deponent's invention"; and he applied for a reissue, filing certain proposed amendments and drawings to show how the machine could be made operative. The appUcation was rejected as covering new matter. The applicant acquiesced, and canceled a portion of the proposed amendments and said drawings. He took out his reissue, with additional and broader claims, and inserted said new matter and said canceled drawings in a new application, and in 1893 received patent No. 502,359 therefor. The testimony of defendant's expert that the Hedbavny reissue cov-
CIMIOTTI UNHAIRING CO. V. BOWSKY.
477
ers an inoperative device is not denied. "The only difference of consequence between the original patent, No. 130,770, and the reissue, No. 9,743, is in the claims; the text of the two specifications being almost substantially the same, and the drawings differing only as to scale. * * * The claims of the reissue must be held to be limited to the specific mechanism claimed in the original patent." Electric Gas-Lighting Co. v. Boston Electric Co., 139 U. S. 481, 1!1 Sup. Ct. 586; Sutter v. Robinson, 119 U. S. 5.30, 7 Sup. Ct. 376; Matthews v. Manufacturing Co., 124 U. S. 347, 8 Sup. 01.. 639. Claims 1 and 2 of the reissue cover broadly any metallic conductor heated to incandescence by electricity and any means to bring it in contact with water hairs, in a machine for unhairing pelts. Claim 4 limits the element in the third claim to a guard comb having a serrated edge. Defendant's device does not infringe the fourth claim, and the first and second claims are so broad that they cannot be supported. The third claim of the reissue, which is the same as the second claim of the original patent, is as follows: ''The combination of a transverse, knife-edged bar, means for intermittently feeding the pelt over said knife-edged bar, a guard comb at one side of the knife-edged bar, a rotary brush at the opposite side of the same, and an intermittently oscillating incandescent conductor located above the knife-edged bar, so as to burn off the projecting water hairs when it is brought in contact therewith, SUbstantially as set forth."
If this claim can be sustained as for an operative device, it must be limited to the precise construction shown and claimed. The use of red-hot irons in unhairing skins was old. The prior English patent to Banks described and showed an incandescent wire for singeing off nap from woolen cloths. The prior patent to Rasmus, No. 275,077, described oscillating levers for intermittently operating guard and comb similar to those described by Hedbavny for his intermittently operating conductor. The novel feature of the Hedbavny machine is the means for moving the wire to and from the edge of the stretcher bar. Upon the question whether this means involved invention, and whether it is infringed, the expert testimony and briefs are not satisfactory. Complainants' expert merely says that in Hedbavny "suitable mechanism is arranged * * * to give a motion to the incandescing conductor, * * * which shall carry it to and from the angle of the pelt," etc., and that defendant's arrangement in general is the same, except that "instead of an incandescing conductor which moves directly towards the edge of the stretcher bar by an up and down motion, as in the Hedbavny patent, one is employed which is so mounted upon oscillating arms as to cause the same to move with what I should term a sweeping action across the water hairs," etc., and that "there is no material difference, as far as the purport, intent, or object of the two machines are concerned." Assuming that the claim for means to bring said conductor in contact with water hairs means "suitable, and not necessarily certain, mechanism for moving," etc., defendant's expert and counsel contend that said mechanism in defendant's machine "is not only composed of entirely diffe::ent elements, but its whole construction and mode of operation is based upon a different principle, and for a different purpose." The
is"'nowhere' desl?dbed. ,The 'question of not clear. Thepresumptioil Ofpatenbible det'liils 'of by tIle grant of the differefice' as, Idtet'·Jenik'tmtedt'Msllot been dvm-come: ' for an injunction and accounting as to cl:HriF8 of patent 383,258. As to reissueNoo 11,079, the bill may'be dismissed. The t() recover one-half of their costs.' " sAdENDORPH -y. aUGHES. (CIrcuit Gourt"E. D. Pennsyl1\T,Rnla. 1. DESIGN PATENTS-ANTIcIPATION. ,
Cdllstrudioti of
July 10, 1899.)
1'f two designsareM much 'alike that one may readily be taken for the ,otneroy anordillary observer, the ,earlier constitutes an' aintlcipation of the later, notwithstanding: differen,ces ill detail apd in nOIl-,essential matters. " ,
2. SAMI!J-METALI,W I:lmING FOR
The Sagendorph, patent, Nd. 17,235" for' a design for metallic siding for buildings,' which covers Ii representation' of raised brickwork with Intermediate depressed grooves curved In cross section, Is void. because of antic!, pationby the Hardy patent, No. a covering for the exterior walls {If bUildings.
Connolly, Bros., for complainant. , , Jame,s'S. Williams, for respondent' .:1
r.·,
.... }
McPHERSON, District The complainant is the owner of design pa;tentNo. 17,2305,. iss'iled 'April n,1897,theelaim of which is as follows: ," '''Insdesign for metalUcsidlllg for huMi'ngs, the representation of raised brlckwoI'k':wlth intermediate depressed',grooves * * * 'curved in cross section, supstll,ntially as ,sl1ow.n ap.d describejl."
HeaUegesthat the isj'n(finging the patent by manufacturing metallic siding nearly, if riot quite, identical in substance and appearance with the siding that he has been making and selling under his patent for several years. Infringement is not denied, if the patent' iff :valid; but the d,efendantdenies its validity upon two not new or original, but was grounds: ,(l)BeCallSe the design an imitation merely, and: not an invention; (2) Because, if the design be patentable, it'hadbeen anticipated by P. T.Rardy in June, 1875,'-patent No. 163,991 having been granted to him in that month for "a covering for the exterior walls . of buildings, composed of a sheet of lead or other soft metal, having impressed or otherwise formed upon its face the' configuration of brick, stone, or other facing usually employed' for walls, substantially as andfot the pur'pose specified"; and also because the complainant's design had been similarly anticipated by patent No. 296,647, granted in April, 1884, to Peter Toglio, for "imitation brick weatherboarding for frame houses, made with grooves on itssl1rface, treated in the manner described, stibstantiaJly as shown illld·for the purpose set forth." I sh;:.tll not consider the first gronndof defense, because I think the second ground has been established. . "The ti'ue test of identity of