242
FEDERAL REPORTER.
The second point is a more technical one, and is founded upon tho 104U. S. principle which is thus stated in Pickering v. ' 310. "In a patentable combination of old elements, all the constituents must so enter iato it as that each qualities every other. * * * It [the cumbination] must form either a new machine of a distinct character and function, or prodnce a result nue to the joint and co-operating action of all the elements, amI which is not mere adding together uf separate contributions."
The defendant says that the object of this was so to construct a porcelain extension lamp fixture that the lamp and could together be raised or lowered at the will of the operator, and would remain in position at any desired point; that a device for removably securing the 5hade to the ring contributes nothing to this result, and does not enter into the combination so as to keep or cooperate with the other elements. I am of opinion that, in view of the nature of these questions,-the first more partwularly,-it is proper that an injunction should not be granted.
EMERY
and another v. CAVANAGH. June 4, 1883.)
{Oil'cuit Court, 8. D. New York. PATEXT8
Fon
INVENTIONS-PUBLIC USE.
Public use of an invention. unless by the patentee himself, for profit, or by his consent or allowance, will not work a forfeiture of his title, as forfeiture is not favored unless it clearly appears that the usc was soleI," for profit, and not with a view of further improvements or of ascertaining its defects, or,for any other purpose of experiment in rCclueing the invention to practice.
In Equity. Wm. A. lIIaeleod and George Harding, for plaintiff. Wm. S. Lezcis and Lucien Birdseye, for defendant. .SHlP}IAN, J. This is a bill in equity to restrain the alleged infrmgement of letters patent, grantetl February 10, 1874, to N. J. Simonds and E. R. Emery, for imnroved lD,achinery for moulding heelstiiIenings for boots and 5hoe5. - The plaintiffs are the owners of the patent, and John R. Moffitt is one of their licensees. The defendant was licensed by l\Ir. Moffitt to use t""o machines in accordance ",ith his patent of June 20, 1876. This license was revoked on Augnst 7,1 F<78, but thti defendant continued to use the machines. The alleged infringement in this suit consists in the use by the defendant, since the revocation of his license, in the two )Ioffitt machines, of the C:"vices claimed in the first and fOllrth claims of the Simonds Knery patent. The infringement theMoffitt patent isthe subJect of another action, which was tried at the same time with the present suit. The daims of the Simonds which ar:3 said to Laye been infrirlged,are as follows': '
v.
CAVANAGH."
243'
"(1) The combination of the dh'ided mould,i, i, aIHt form, n, suhstantially as described and shown. (4) In combination with mould, i, i, the cams, a', a'. substantially as described and shown.."
The testimony left no doubt in my mind that the devices named in these two claims were present in the Moffitt machine!>, and that the Simonds and Emery patent was valid. The defendant's attack upon the novelty of the invention, and upon the existence in the Moffitt machines of those portions of 'the invention which were clai.med in the first and fourth claims, was neither vigorons nor successful. He however insisted with earnestness that the inven,ion had, with the consent of the inventor, been in public. use more than two years before June 30, 1873, the date of the application for a patent. The patentees filed a caveat, dated December 9, 1870, setting forth their invention as it was then conceived. On December 20, 1871, the caveat was renewed. Between the fall of 1870 and the expiration of the renewed -caveat the patentees were constantly experimenting, at great expense, upon the machine as finally perfected, and upon machines which should accomplish the same result by different kinds of moulds, but finally came back to the device described in the caveat, a marked feature of which was a divided mould. During this period they used the machine in the condition in which it was from time to time, incidentally for profit, but the witness, whose testimony is hereafter referred to, says: "It was his (Simonds') idea to keep the machine as much from view as possible, and be courteous to visitors." Ur. StaclqJole, a witness called by the defendant, was a machinist in Simonds' employ for five years, commencing about the beginning of 1870, .and worked upon this machine. "He saw four years of experimenting on the machine." These experiments finally resulted in the adoption of substantially the original model of 1870, but, meantime, the machine had been changed in the auxiliary parts. 1\leanwhile it made counters freely, which were sold, but no machines were made which were sold, or were used by athol'S, or were licensed, ancl the machine could only be tested by the making of counters upon it. Until about the time of the expiration of the renewed caveat, the invention had not reached a position of perfection or of completion· where the inventors thought that it was fit, or where it probably was fit, to. be patented. "Public use of an invention, unless by the patenteehimself, for profit, or by his consent or allowance, will not work a forfeiture of his title, as such forfeiture is not favored unless it clearly appears that the use was solely for profit, and not with a view of further improvements, or of ascertaining its defects, or for any other purpose of experiment in reducing the invention to practice." Jones v. Sewall, 3 Cliff., 563; Pitts v. Hall, 2 Blatchf. C. C. 229; Eliz· abeth v. Pavement Co. 97 U. S. 126. Let there be a decree for inj unction and an accounting.
244
SCHILLINGER V. GREENWAY BREWING
CO. SUSTAINED-SCHIL-
(Circuit Court, N. D. New York. 1. PATENTS FOR INVENTIONS-REISSUED PATENT LINGER PAVEMENT.
July 11, No. 4,364
Reissued letters patent No. 4.364. I'(ranted to John .T. Hov 2, 1871, for an "Improvement in Concrete Pavements," compared with British patents No. of 1837, to Claridge, No. 330, of 1852, to Ghesneau ; No. 2,659, of 1855, to COlgnet; No. 771, of IH56, to De La Haichois; No. 7,991, of 1839, to D'Hareourt; No. 9,737, of 1843, to Austin; and United States patents No. 56,563, July 24,1866, to Huestis; and No. 5,475, "\larch 14,1848, to Huss,-and sustained as a patentable invention, not anticipated by sa.d patents. The Schillinger patent was infringed hy the pavement of defendant, and an injunction, and an account of protits aUlI damages, should be decreed.
2. 3.
SAME-INFHtNGE)IENT.
S.UIE-INVALID
IN HEISSUE.
The inval.dity of a claim in a reissue docs not impair the va!illity ofa claim in the original p.1tent wl.lich is repeated and separately stated in the reissue.
In Equity. Duell ,f Hey, for plaintiff. John L. King, for defendant. BLATCHFORD, Justice. This suit is brought for the infringement of reissued letters patent No. 4,3lH, granted to John J. Sch;llinger, May 2, 1871, for an "improvement in concrete pavements;" the original patent, No. 10il,S!)!), having been granted to him, July 19, 1870. The speCification of the reissued patent, reading in the following what is outside of brackets and including what in italics, and omitting what is inside of brackots, says: "Figure 1 represents a plctn uf my I pavement in plan view.J pavement. Figure 2 is a vertical section of the [pavement.] same. Similar letters indicatel:orrespondin.'l prJ,rls. This inveution relates to rpavements for sidewalks and other purposes; and consists in combining With] a COlu!rete pavement wh l c1t is laid in sedions, so that each set:tiun cal' be taken np anrlrclaid without disturbin.'l the adjoining sectiol/s. With the joints of this ser:tional concrete LImvements,] pavement are combined strips of tar paper, or equivalent material, arranged lJetween the several blocks 01' ser:tiolls in such a mantler as to a snitable tight joint, and yet allow the to be raised separately WIthout affecting [or injnring] the blocks adjacent thereto. In carrying out my inventioll I form the concrete by mixing cement with sand and gnwel, or other suitable [materials] material, to form a [suitable] plastic [composition] (,ompollnd, using about the following pruporciolls: One pal:t, by measurt>, of ceillent; one part, by measure, of sand; and "rulll three to six parts, by mpasure of gravel; [using] with sllll,cit'nt watet· to l make] render the mixture plastic; bnt I do not contine mysdf to any d3}inite proportions 01' 7Tl.llterilLls for making the concrete composition. While the mass is plastic I or spread the same [upon] on the fOllndation or bed of the pavemt'nt either In molds or between movable joists, of the proper thicknOlRs, so as to form the edges of the concrete blocks a, a, [etc. 'Vhen the block 12 has been I take strIpS of till' paper, b, of a width equal or almost equal to the helg!lt of the block, and place them up against t·ile edges of the bloek in snch a manner that they form the joints between such bloc.:k and the adjaeent D1ocks,] one bZ"ck being furmed aner the other. When the first block has set, I 7'em01:e the joilit:J 01' partition between it'and the bluck next to be furmed, arid then I form