42
FEDERAL REPORTER. GOOD v. BAIJ,EY and others. (Oircuit Oourt, E. D., Penn8ylvania. November 9,1887.) lNvENTtON8 PROv:m1olNT. INFRINGEMENT";" FLu-DRAWING MACHINES- 1M-
provemeJ;lt ill flax-drawing machines. S(;lts of gijl-pins are carried by end· less chainS; but. as stateq in his application for a patent for an improvement hi 1885; the working pins of one belt cannot be brought very close to those of the other, and, .on account of this break of very considerable length between the w·orking. portions of 'ihe t'Wo belts, the machine. while it works well for a long fiber; does not work' as well for a shorter one. The slower-moving series of pins of the Bailey & Lewis machine are operated by screws, and are brougb,t.ln.tO,and car.ri ed out ofa.ction.by means of cams. pon the SCI'.ew-rods. . which raise or loweitheir carrying bars; and the gill-pins in the faster-moving aeries are: divided between an upper and a lower endless chain; the pins of one other. These, with the o.ther mechanical dea.dmit of a much, qloser relation between the two vice8 series Of 'bars and pins than is found in complaipant's machine, and as close all is desirable to have thein. Helit, that the difference, though slight, is very important. and ill no infringement. . 1;1.
NO. 95.462 were issued October 5,1869; to Good, for an im-
·.. Billfor . '.' Bill"by: Good, complainant,against Bailey & ,Lewis, defendants, to certain letters patent granted for in: flax-drawing maohines.. . Gifford BrUMJrts,nd ,W. A. Redding, for complainant., W. H. DooliJi1e and Orawjord Dalku, for respondent. , BUTLERJJ·. ' .The suit is brought for infringement of letters patent No. 95,462, granted October 5,.1869, to Good, for an improvement infllliXdrawing machines. Tllevalidity of the patent, and ,the alleged infringement, ar.e.4enied by the answer. As r(lspects the first, little need be said. The patent was granted nearly.20, YEla.rs ago. The. machine wept into use·soon after, and has to be employe!! throl;lghout the country ever since. It was valuaple, ,aqd displaQe.d machines. previously used for the same purpose. of the patent has never been questioned save in this inEltance. Sucha,cql,lieIlOence is anel of itself is entitled to much weightipcoIJ,sidering the, question now raised. We have found nothing to justify an adverse decision; nothing sufficient ,to ovarin .the comethe.presumptions arising from the patent, and the acquiescence referred to. The history of the art, and the record of the complainant's and proceedings,.thereon, however, forbid .a,liberal construction of the claim. All the elements employed in forming the combination are old. The combination alone is new, and this differs so slightly from that of machines previously manufactured or described that the claim for it can only be sustained in connection with the special mechanical devices employed in forming it. Vie do not mean to say, or suggest, that its operation may be avoided by the mere substitution of known equivalents; but we think it may by the employment, instead, of other
..
,
GOOD
v.
BAILEY.
43
devices,a morepeffect combination,..l.oile better actapted to the contemplated use,-though this combinationniay have thesarne general char. acter. Has the respondent infringed? His machine is intended for the same purpose as complainant's, to do the same work, substantially by the same method, and was'pi'obably suggested by it. This, however,isnot very important. The· complainant's machine was not the first of its kind. Siinilar machines·· in most respects-designed for the same work, and doing'it in substantially the same way-were described and constructed long before. Hisfcombination, however, was slightly different, and this difference produced a better machine. Is the respondent's combination the same? This is the important question. The mechanical construction of the parts different. A cOmparison of the two machines by Mr. Appleton, an expert, is substantially accurate:
is
"In complainarlt's (Good's) patent, as before testified to, both sets of gillpins are carried by endless chains, and the points of the gill-pins inoperation are presented in a plane, in consequence of the arrangement of the sprocket wheels over which such chains pass and through the instrumentality of the bell cranks, 0, provided with pins and grooves co-operating with the fixed callis, P, B, and the guide plates, H. Whereas, in the Bailey & Lewis machines inquired of, the bars carrying the gill-poins of therearmost or slowermoving series 81'eoperated by screws, and such pins are brought into and carried out of actiop, by means of .cams upon the screw-rods, which raise and lower their carrying bars from alower to a higher plane, llndviceversa, while such pins are heldat all times lnthe same, or substantially the same, relative position with respect to the horizon; and the gill-pins of the forward or fastseries, while cacried by endless chains, are divided between an upper and a lower chain, which are 80 arranged as to make the pins of one chain pins of the other, the points of the pins of both chains in alternate with operation,l:>eing presented in a plane through the instrumentality of the chaincarrying wheels! blocks, c2 , upon the ends of the bars, carrying the gill-pins engaging with guide-ways,/2,/2, in the sides of the macbine frame and gears, H2, upon said bars, meshing with movable gUides, J2, J2, etc., surrounding the sbaft,s of the wheels around which the chains pass, bywbich means the gill-pins are maintained at all times in the same relation with respect to the with tbel'earmost or slower-moving series." horizon as is The of a screw for the chain, to operate the slower-moving Series of pins, o'fitself we would consider"unimportant, if it performed no other function than the chain. In.such case, it would be simply an equivalent forthe latter. Nor would we consider the devices for dropthe pin-bars, instead of revolving them, i,n this series important, if the effect was the same as that produced by the complainan\'s chain and in this respect. It is quite clear, however, that the screw, and mechanical devices connected therewith, for operating and dropping the bars, admit of a much closer relation between the two series of bars and pins than is found in the complainant's machine. If this difference was imll1nterial, if the closer relation was of no value, it would, of course, be an unimportant difference, and would not, therefore, disti.nguish the machine. The testimony, however, leaves no doubt that it is of essential value; and that the distance between the series in the complainant's ma-
FEDERAL REPORTER.
chine was a recognized defect. This is so clearly stated by the complainant himself in an application for another patent, intended to remedy the defect, (granted in 1885,) that it is unnecessary to do more than repeat what he says: "In such machines, [the complainant's here involved,] the drawing or spreading of the fibrous materials is performed by means of two or more endless belts or aprons, furnished with combing or hacking pins, and arranged one before the other, and running at different velocities; the operating points of the pins on the two belts being in, or nearly in, the same plane, and all said pins being presented in an upward direction dnring the time they are in operation. Such machines ha.ve proved very efficient in their operation to cause the two Qelts of pins traveling at different velocities to thoroughly comb and straighten the hemp, flax, or other materials during the travel of the fiber through or over the frame or machines, and while the fibers are free at both ends, but are subject to one objection, viz., that when the pin-carrying belts are arranged so that both present their operating points upward, or in the same direction, the working pins of one belt cannot be brought very close to those of the other belt, and consequently a break of such considerable length is left between the working portions of the two belts that, although the machine works well for a long fiber, it does not work as well for shorter fiber. The object of my invention is to bring the working pins 0+ one belt nearer to those of,the other, and thereby cause a closer nip of the fiber to be taken between the :piilsof the two:belts." 'rhe screws and connecting mechanical devices for operating ,the slowermoving series of bars, employed by the respondent, produce a machine free from the defect referred to. The connection ,of the two series seem to be a,s close as it is profitable to have them. The respondent has thus accomplished, in a different way, precisely what was intended to be effected by the complainant's subsequent patent. Does not this difference between the machines constitute a substantial distinction, and relieve the from the charge of infringement? We believe it does. The mechanical devices which effect a closer connection between the bars, and consequently produce a better machine, cannot he regarded as mere equivalents for the claimant's, because they do what the latter will not. This may seem to be a slight difference.' It is, however, a very important one, and is quite as great, we think, as the difference between the complainant's machine and some of those which preceded it. We attach no importance to the third over-riding series of pin-bari! in the respondent's machine. In the absence of the distinguishing feature just referred to, this would be regarded as an improvement, merely, added to complainant's machine. It would not be profitable to dwell longer on the subject. Sufficient has been said to indicate the grounds on which the decision. rests. A decree must be entered dismissing the bill, with costs.
WEST
V. RAE.
46
WEST v. RAE and others. «(Jircuit (Jourt, N. D. lllinoia.
November 21,1887.)
1.
PATENTS FOR lNVE:li[TIONS-lNVENTION-PAPER WRAPPERS.
D. A.. Swaney, January 17, 1882, procured a patent for incasing blankets in casings of paper of strong texture, closely sealed or pasted. to protect the blankets from soiling, dust, and fubbing in handling. Held, that as paper bags have been always closed with paste or gumming, it required no inventive genius to close .the mouth with paste, if desired, nor to form the bag to the shape of the article it is desired to inclose.
2.
Plaintiff filed a hill to enjoin the infringement of his patent, and defendant demurred to the bill. Reld, that when the court can, without referring to the pleadings and proofs, from its .common knowlerlge, from an ex.aminatioD of the patent itself, see that it is void, a demurrer will be sustained.
InEquity. Bill for injunction. Bill by plaintiff against M. E. Rae and others, defendants, to enjoin the infringement of a patent granted to D. A. Swaney, for a method of putting up blankets and similar articles. Banning &; Banning, for complainant. J. II. Raymond, for defendants; J. bill in this case charges infringement of letters patent, granted January 17 I 1882, to D. A. Swaney, "for a method of putting up blankets and other similar articles," and defendants demur to the bill on the ground that the patent upon its face shows that it is void for want of patentable novelty. The novelty and utility of the device covered hy the patent is stated by the patentee in his specificatiolls as follows: "Heretofore woolen blankets have been put up for packing, tranportatioD, and sale by folding, and then rolling them up in a tight roll. which was then covered by a sheet of paper secured by tiKhtly-drawn twine. In this form it was exposed at the ends to dust, and liable to become soiled by contact with other objects, and, by handling, the nap was liable to be rubbed off, and free access was given to moths. The latter has been a very common cause of loss to manufacturers and dealers. Otl1er objections have been the difficulty of pack. ing the blankets when put up in this form for transportation and sale, and the rUbbing of the nap and creasing caused by the many folds neCflssary to be given the blanket, and by the tightly-drawn string. I have discovered that if blankets are put up in· a tightly-closed strong paper bag they are perfectly protected from the entrance of moths, and that such a bag can be made in such form as to reduce the folding and handling to a minim um, and be most perfectly adapted for packing in cases for transportation, and at the same time be in a most attractive and salable form for the shelves of the retail shop. The complete inclosure of the blanket will protect it also from soilinK, dust, and rubbing in handling. The same kind of bags are very useful in packing the blankets and similar bedding of a household away during the warmer weather. and will supply a want long felt in domestic life." And the claim of the patent is: "The herein described method of putting up blankets and similar articles, consisting of enveloping them in a casing of paper of strong texture closely sealed or pasted, substantially as shown and described."
FEDERAL 'REPORTER.
I may remark, in passing, that I think this statement in the specifications of the method of putting upbhtnkets, before this patentee taught do it in his.way, must have been aV,ery incomplete the world use of the thlm'knowna:ppliances, as if it had then been deemed desirable to close the. ends of the roll with the paper wrapping, ·it could have been done by folding the 'paper over the ends as well as the sides of the ,,!oU,;a.s. is done by and whqwish to make an appno;ximately close package of any d,ry goods they put up for trans'port8.tion, handling; or protection. . There was no reason why a manufacturer of, or dealer in, blankets should not, before this alleged invention, have closed or; enveloped the ends of his package with his sheet of wrappi11g"paperif he desired tosoelose them, when articles like calsugal",.coffee,etQ.,haye heen put up in approximately ico, ribbons, close paper packages at the counters of retail merchants probably for centuries, and ever since the use of paper as a wrapping for, commodities $old or matrufactttredcame into use.. The patentee proceeds in his specifications to direct how the blanket is to be folded, in which there isoortainly no novelty, as he describes only the well-known method of folding the blanket in a series of longitudinal and transverse folds until it is brought to the· desired size for packing. It is then inserted in a paper bag of the size required to receivethe blan'ket as folded, and the open end of the bag through which the }Jlatiket is inserted is then·dosed by 'BJ;iefly 'the device covered by the claim of this patent consists. in wrapping upa blank'et oT/!-ny siIhilararticle paper, and·theti closing the ends and' .a.ides Of the paper Wrapper by pasting; for I take it that it is immaterial wnether you 'make your bag first, leaving the end or side open, and then insert your blanket into it, or whether you make your bag byw,rllpping the piper around the foldedbJanket, a.nd then fasten by Pasting: !tmaY,sa:ve time to makeup the bags on,e' erid but it can make no difference;in.prjppiple whether the bags' .are made oyer a "former," and the blankets·pushed or crowded in to them, or whether each bag is made over -the partionlar'folded blanket it is to hold: Theteeultinboth casesia the same; so {aras this patent is concerned. . ..· .' ·. . Papet pags lisa wrapping or en'lelope for dry goods,flour, groceries, common ,etc.,are·in; Eluqhcommon use that .thecourt can say frQm ;knowledge .that they were well known throughout the United States when this patent was applied for and granted; but usually,the open end'or mcJuth.through,which they were' fi11edwas closed by tying with a string', "and allegiid inventiollcovered by this patent; wh·en. rea.d)n the .o{tbat ¢PU"'q.il1. k1wwlcidge, consistein. putting afolded .blanket into a U'C · . · . ,,", . " , .. I .. . . . . ,b&g,. closmg the. m0l.1th of .the bug withpllstl'l instead oia string. The bottom or lower end of these bags. has always been closed with paste, or by gumming, and it certainly did not r,E!quire the exercise t() 9108e Tpe}ttl1 or end of the bag with paste, ,J£,l-Jwas f,oulld.for:nny to do InAact,. I can say as the result of my own pbservat,ion,and· knowledge, that Ihave l'\een paper
WEST V. RAl!ll:
47
bags in use in retail stores where the lips of the mouth weI:e coated with gum so as to admit of closing the mouth by moistening this gum and folding the lips over against thel'lide; but, without such observation, I say that,. when once 1,ou are instructed how to close one end of a bag with paste or gum, there can be no invention in closing the other by the same means. Nor is there anything patentable in, the idea of adapting the form of the bag to the article it is to inclose or contain. A paper bag, is but a paper wrapper partly put together forluse. If it was intended only to .inclose 1'008e articles, like coffee, flour ,etc., no attempt would be made to confine it to a particular shape; but if the manufacturer of!oafsug/!-r, , for instance, in the pyramidal form"with which :we are all f8l:J1i1il!or, should wish to incase his loaves in paper bags instea!! of paper wrapa string, he would, (){,course, bags UP90 a "form" like his sugar loaves; and in fact this patentee's bag!! for a are nothing more than the paper wrappings of a sugar loaf, with the paper fastened by paste, instead of being tied with a string to keep them in place. I not 'aware that the praqtiee,. of, rlli.sing,:by, 'deWuqer ,the question, based on common knowledge, that a patent is void for want of novelty, has the direct sanction oLany adjudg(1d ,case, but the boqks abound in cases where the court has of its common knowledge sua sponte held patents V'oid i f6rwantofpatentable novelty. IIi BrOUJnv.Pjper, 91 U.'S. ,;: ,"', ' : , " ' ; ",I,; "Theeourts, will takejuditlial cognizlince of whatjlver is generally kpown theJimits oftbllir jnriSdi(}tiotl, and if the> jUdge's memory is at fault, , be'mayrefresl1it by resorting th anY'lllean,s for that purposewhleh'llie may -deem safe and proper." ,', , ' ofthecow:t to apply i41 <lOrnmon And after this statement of the knowledge to the case in hand, he '" ' ',,; "The pleadings aFld proof in the case under llo.nlilidl1rationare l!ilentas to the ice-cream freezer; but it is a thing in'the common knOWledge 'altha peoRle throughout the. anll proof were: therefore unnecessary. , The stathte requiting notic6was not'intended to apply to'ltuch cases.', Too' cO\lrt .dan take 'judicial notice oflt, and give it the same effect as ,if it bad'be6n set " .up in the answer, and the proof,were plenary." , Andl1gain: , , i " , "Exafufned in the light of these considerations;' we think this patent was void upon itstface, and that the 'Oolnt might have stopped short at that instrument,[the patent itself,] and, with0llt looking'beyond itinto the Ilot:tswers ,and testim.om' sua, sponte, o.1:ljectiollil were not·, taken, by counsel, well in favor of the defenjiant." have And:therule here state,d has affirmed sinee this decision in Terhune v. Phillip8, 99U., S. '592; Durrhar v, Myer8, 94 U. S.187; SlaW8Qn v. Railroad,' (l)., 107 U. S. 652,2 Sup. Ct. Rep., 663; Wollenaakv.RUi.her,HoU. S. 96,5 Sup. Ct. Rep., llp7, and innumerous cases atoir:.cuit. " . The method of putting up fblankets,covered by this patent, is' but a .new use :oiall old and wel1-knQwndevice, in'common use and well ,and 'j" ;
48
publicly known long before this patent was applied for. Paper bags being old for various purposes when protection from dirt or wear was 'desirablej" there was no invention in using them to protect blankets; and aft article as flexible as paper, there can be,no invention in adapting".l't'oag made of paper to the shape of article it is to cover and protect. In the light of these authorities, I cannot see why, in a suit for infringement Ofa patent so clearly and baldly void as this, the court ought not to defendant from the vexation and expense of a trial upon 'proofs by sustaining a: demurrer to the bill. If, after a case reaches the supreme court, that court, can,fr0m it'S common knowledge, without reference to the pleadings and proofs, but merely from an examination of ,the patentt.itself, say:that the patent is void, I see no reason why the court 'Ofol'iginal jurisdiction capuot do the same. ',' The delfiurrer is therefore sustained, and the bill dismissed for want of ,
HUBElit . . '1
MYERS SANITARY DEPOT and others.
«(Ji;rcuie COWl't, S; D.New York. December 6, 1887.) . Plaintiffs purchased an invention upon which a British patent had beenob· tained. but which had expired before the purchase by reason of the failure to , ,pay'the 'fell to 'keep it alive;' ,Tho:y:theri obtained American patents, and SO, ugh,t to elljoin defebdants froJD mfringing upon them. eUl, that there 'wastpo much doub,t of the validity of the American patents to warrant the issuing o'f a preliminary injunction. H<,'
PATENT.
!
I"
In Equity. Bill for injunction. Albert Comstock, for complainants. Wm.' H. Sage, for ',,'.
LACOMBE,;1.. Tl;lis ill an application for a preliminary injunction to restrain the infringement of two letters patent, owned. by complainants, and issued, the one, June 27, 1882, (260,232,) to Henry Huber, assignee by mesne assignments of Peters & Donald; the other, March 28, (255:.4$5,) to James E,' Boyle. Both patents are for improvements insanitarywater-closets. The application, so far as, it concerns the Huber patent, is resisted, inter ,alia,' on the ground of abandonment. It appears that on April 7, 187:4,Petets & Donald took out a British patent for theirinvention. On April 9, 1881, this British patent expired by rea'lon oftheit failure to pay the fee required by the' British patent law to keep it Boyle subsequently (October 27, 1881) purchased the Peters & Donald invention, and 'sold it (November 26, 1881) to Huber, ,who on Nov.ember 29,1881, applied for a patent thereon. The American patent was granted to him June 27. 1882. , It is claimed by the defendants that by reason of the failure of the inventors tOikeep alive the British patent, their invention was abandoned