896
FEDERAL REPORTER.
modifications of statement which emphasize the advantages of a rib around the mouth, but do not draw the invention out of the reach of the adverse crHicism of Judge Blatchford. The claim limits the invention to one locality, but in that locality, and with the benefits of the rib to the shoe at that point, patentability was denied in the decision of the present circuit j udga. Argument against the propriety of holding that the claim of the present reissue 'was Dot patentable by reason of the earlier patent, is argument against the propriety of the decision which was made in the Pritchard Case. The bill is dismissed.
EL'FELT
and others
11.
STEINHART and others. August 2, 1880.)
(Oircuit Oourt, D. Oalifornia.
1.
PATENTS FOR INVENTIONS-WEARING APPAREL-POCKETS.
Patent No. 178,287, for an improvement in pantaloons and garments of a similar character, its application to the garment adding to its durability by preventing the stretch of the cloth or stitching, sustained; and patent No. 178,428, for an improvement in pockets of.wearingapparel, helrJ, to be a patent for a combination. . 2. SAME-STITCHED PARALLEL LINES-Er,EMENTS OF COMBINATION. .
Where stitched parallel lines are an element in the combination patented, and a pocket opening is made without this element, there is no infringemlmt, although there might have been something patentable in the combination by omitting that one element.
Wheaton ff Scrivener, for complainants. Estee ff Boalt, for defendants. SAWYER, C. J. This is an action forthe infringement oftwo United States patents. The first is patent No. 178,287, for improvement in pantaloons, dated June 6, 1876. As to that patent I find the plaintiff entitled to the decree he asks for, establishing his right to it. And, as there was infringement, if he desires it I will make an order of reference to take testimony as to the profits, etc., though I understand that the parties on being notified ceased to use this patent, and I do not know whether or not there is any object in making such a reference. With respect to the other patent, No. 178,428, I had more dificulty. There was a great deal of testimony taken in this case, which I have examined very carefully, and I have come to the conclusion which I indicated to counsel the other day when I called
ELFELT V. STEINHART.
897
their attention to the diffioult point. Both thesE! patents relat& to the manufacture of pantaloons, overalls, and garments of like oharacterand description, and this one relates particularly topockuts in overalls, ek The patentee says: "My invention consists in making a pocket for and in wearing apparel, the opening of which pocket is without corners, curved upward to the perpendicular at bot'! sides thereof, and stiched longitudinally in the direction of the strain to which said pocket is subjected in common use. The object$ of this invention are to avoid the transverse strain upon the stiching which should support a pocket; to dispense with cross-tacks, corner patches, gussets, a.nd metallic fastenings as pocket supporters; and to secure strength and bility in pockets by a neat, simple, and cheap device." He goes on to describe the mode of making two kinds of pockets, one of whioh has been oalled the patch-pocket, and the other the inside or hanging pocket. After describing the mode of manufacturing the patch-pocket, he proceeds to desoribe the manner of making the other pooket, and winds up by saying: CIA perpendioular line or lines of stitching are made downward to n, figure 1." After giving the description he states the olaim, Or rather the two olaims, of the patent. The :first is: '" In combination wi,th pantaloons, or other articles of wearing apparel, a pocket, the sides of whose opening are curved upward to the perpendicular, and stitched to the pocket and garment in parallel perpendicular lines extending above and below the mouth of the pocket opening, whereby the strain to which both the pocket opening and pocket are subjected, in common use, ; is resisted by vertical stitching, substantially as herein described." One of the elements, and apparently in the opinion of the inventor· an important element, in that combination is the stitching of the pocket "in parallel perpendioular lines extending above and below the mouth of the pocket opening. ,/ The difficulty is in understanding what particular lines are referred to in that portion of the claim, because those lines are an element of the oombination, and it is a combmation patent. So that a garment not having that element of the combination would not be an infringement. The second claim is as follows: .. In combination with a pocket, the sides of wlJicp curve to the perpendicular, a line or lines of stitching coinciding and parallel with said sides of the pocket pattern, and intersecting the upper extremity of the curve of the pocket rim, substantially as and for the purposes herein specified." The patentee himself, and the experts who have testified on that side, insist that that olaim applies only to the patch-pocket, and the v.ll,no.8-57
898
1EDERAL REPORTER.
parallel lines of stitching .ar6 then· shown in figure 1, pocket a; and it is not seriously claimed .that there is any infringement of that claim. It is insisted, however, that the perpendicular parallel lines mentioned in the first claim are the lines stitched around the circular form, and rim of the poc¥:et. But there is a difficulty in so construing that language and still make it conform with the claim in the patent. It must be construed as 'the patent was obtained, when the claim was drawn and adopted, and not with reference to subsequent modes of manufacture in that particular; and it would be necessary ip order to adopt that view. I am unable to strain to see that those linescorresponq with the description. The pocket openinj:t is of So circular form, curving up perpendicular, and tllose lines follow the edge o{therim to the opening, and are not perpendicular in any part, while the claim calls for "parallel pendicular lines extending above and below the pocket opening." . In this patent there are seven different figures, some showing the modes of making the pocket, and others showing the pocket completed, with all the side stitching. There are, six completed pockets shown here, and everyone of them has parallel perpendicular lines, which correspond to the lines mentioned in the close of the description of the mode Of making the inside pocket shown in figure 1, letb. These lines are perpendicp.lar, extending above and below the opening, and th,ey s,titch the pocket to the garment, mouth of and are stiched longitudinally in the direction of the strain to which the pocket is subjected. They fully and accurately fill the description of the parallel perpendicular lines in the first claim in the patent. These lines are found on each side O,f all the pockets that are completed. The line is perpendicular, and extends above and below the mouth of the pocket opening, a double line of stitching affording resistance to the strain in a vertical direction with the line of stitching. That line seems to have been ignored by the experts for some reason, but those lines are found in all the finished pockets, and, in my judgment, are the lines referred to in this claim. They follow the description exactly, and perform the office indicated, and the other lines do not,and cannot, without a strained construction, be brought within the description. There is only a single point where they touch the perpendicular, and they do not extend above and below the mouth of the pocket opening. I think those expertsal'e also mistaken as to the second claim. I believe the same parallel lines are referred to in both claims. The Pena patent pocket is the pocket claimed to be an infringement, but
ELF.I!lLT V. ST·EINHART.
, 899
in that those parallel lines are dispensed with, and the stitching follows around on a circle, and goes entirely around the ellipsis like and below Gibbons', without the perpendicular lines extending the pocket opening, and the st'rain is distributed by' the curve. I am aware that the form here described in Pena's patent is elliptical, and intended to resist a transverse strain by distributing it around the circle, but Gibbons does not claim a crescent-shaped pocket as new, nor in any way, except as one element in his combination. But there is another element-the stitching in parallel perpendicular lines above and below the pocket opening, resisting the strain in_the line at the stitching; and that element is wanting in the garment shown here in the Pena patent. This subject has required considerable study. There was a great deal of testimony, which occnpied nearly a week to read through, bnt I have carefully examined it, and have come to the conclusion that there has been no infringement of any claim in the patent. If there has been any infringement at all it was in the use of the Pena patent, and under the'first claim. It may be that there might have been some· thing patentable by omitting that one element in the combination, but if that is dispensed with there is no infringement under the claim of the patent as made. Let a decree be entered for the cl;lmplainant on the first patent, and for the defendant on the second patent, No. 178,428, and as the complainant succeeds as to one patent, and is defeated as to the other, I snppose it will be fair that neither party shall recover costs. Mr. Wheaton. Upon the qnestion of infringement of the first pat. ent, does your honor find that there was any anticipation? The Oourt. I do not think there was any anticipation of that pat· ent. The pocket claimed most confidently as an anticipation is the one made under the Adams patent, bnt the garment pnt in evidence was not made in accordance with the Adams patent at all, and I am not satisfied that it was made before the invention of Giboons was bronght to the defendant's attention. I am not satisfied that the extra stitching was put on before the discovery of Gibbons. Iput the decision simply upon the gronnd that there is no infringement, according to my construction, of the first claim of Gibbons' second patent. He has put one element in the claim which was not found in the Pena patent; that is, the parallel perpendicular lines of stitch. ing, extending above and below the mouth of the pocket opening, resisting the strain in the direction of the line of stitching.
900
FEDERAL
MARKS
v.
CORN
and others.
(CirC'Uit Court, S.
n. New
York. October 19,1881.)
INJUNCTION.
Where the question of infringement is so doubtful as to make it improper to grant 3n injunction except as the result of a final hearing, a preliminary in· junction will be refused.
C. W. Betts, for plaintiff. G. M. Plympton, for defendant. BLATCHFORD, C. J. Understanding the subject-matter of the motion for an injunction herein to be whether a cap constructed substantially like the cap annexed to the affidavit of Samuel Corn, sworn to October 6, 1881, infringes reissue No. 7,808, Division B, I am of, opinion that the question of infringement is so doubtful as to make it improper to grant an injunction except as the result of a final hearing in the case. The cap in question, whether made so that the upper edge of the part which may be called the protector swings beloW' the lower edge of what may be called the body of the cap, or whether made so that such upper edge does not swing below the lower edge of such body, seems to be unlike in structure to the cap of the patent, and unlike in structure to any of the caps held to be infringements in the suit against Fox and in the suit against Schwartz. The same ultimate results may be accomplished in protecting the ears and the neck, when desired, and in removing the protector up and down, when desired, and in having a finished appearance in the cap when the protector is up, but the claims of the patent are for the means of effecting such results. It would seem that the defendant's cap has no upper edge of a protector, in the sense of the patent, and no separate protector attached to the cap by a tape or cloth, as in the patent. The second claim, equally with the other two claims, must be construed as applying only to such a separate protector as the patent shows. The motion is denied.