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ment of a violation of the act, growing out oftbe mKnner in which an express business has been conducted, it is essential, conceding that such business may, under cer4lin circumstances, when transacted by railway compa-nies, be subject to the regulations of the act, to show by proper averment that the circumstances exist, bringing the particular case within the purview of the law. For the reasons indicated, that is to say, because the indictment does not show that the Pacific Express Company is subject to the interstate commerce act, the demurrer is. sustained.
DANIElS 11. MORGAN.
(Circuit Court, D. Massachusetts. May 99, 1890.) P"-TENTS POX INVENTIONS-WHO ENTITLED To-EVIDENCE.
On application of two claimants for letters patent for the same invention, it appeared that complainant had the plan of the invention in miud for some years, and was the first to embody it in a drawing; that afterwards two drawings were made by respondent containing modifications of the proposed machine and finally a machine was constructed and put in successful operation by him. ec;mplainant testi· fied that he showed respondent a plan of the work, and respondent told him to go ahead and make a drawing in accordance with it. In regard to the same drawing, respondent testified that it was made by his direotion, and in accordance with his suggestions. At the time respondent was and complainant an em. ploye under him, in a manufacturing company, the work of which suggested the lDvention. HeW, that complainant was entitled to the patent..
In Equity. Maynadie:r Beach, for complainant. George S. Boutwell, for defendant. CARPENTER, J. This is a bill in equity, brought under section 4915 of the Revised Statutes, and prays a decree which shall authorize the issue of letters patent to the complainant for his alleged invention of a a new and improved apparatus for coiling wire rod as it comes from the rolls of a rolling-mill. He describes his invention, in the seventh claim of his application, as follows:
"The combination. with a rod-coiling receptacle or reel, of a spider or lifting plate mounted on a central shaft, which is supported and reciprocatively movable within the reel-supporting shaft. and provided with means f.or elevating said central shaft and plate, substantially as and for the purpose set forth."
For the apparatus here in dispute application for letters patent was made by the respondent June 24, 1886, and by the complainant June 26, 1886j and, after proceedings in interference, a patent was issued to the resp()Udent, numbered 416,940, under date of December 10, 1889. I am satisfied on the evidence, and it is indeed practically admitted, that the invention in question, which need not, for the present purpose, be more particularly described, was first embodied in a complete, materill-l form· in a'drawing which is produced by the complainant, and marked
FEDERAL REPOR'l'JJ:R,
vol. 42.
ttExhipit Daniels Drawing, L" This drawing was made in March or April,1879. Subsequently, two other drawings were made, containing modifications of the proposed maohine, but not affecting the invention here in controversy; and finally, in 1886, a machine was constructed by the respondent, and put in succesl'lfuloperation. The question, as presented in the opinions of the successive tribunals of the patent-office which have passed on this question, was as to which of the pal'ties is entitled to priority in the invention of the device which was embodied in the three drawings to which I have referred. On reading the whole testimony in the case, I have come to the conclusion that the evidence on behalf of each party, if it will support any conclusion, can support only the conclusion that the party on whose behalf it was presented ill, the sole and only inventor, and that the other party never at any time made the invention, in th.esemJe.of.the patent law. The only question, in short, raised by the testimony, as I regard it, is the question who was the author of the drawings. At the time the drawings were made, the respondent was the general superintendent of the works of the Wash burn & ¥oen Manufacturing Company of Worcester, and the complainant was in the erilploy of the same company in a capacity subordinate to the rasponda.nt. The drawings were made by the complainant. As to the first of them he testifies: "1. went to Mr. Morgan, and showed him my plan of a discharging platform. He.told me to go ahead, and make a drawing of a reel having a platform in with my plan."
As to the same drawing, the respondent testifies: "In the spring-I think, in March, 1879-1 gave directions to Mr. F. H. Daniels to make drawings for a reel with a lifting platform, operated by a hydraulic cylinder and piston. _* * . * Such drawings were made under my direction, snpervislon, and chiefly in accordance wlth my design." "lordered it made, and gave instructions in its design and details." "Mr. Daniels /ill.ggested:the cpmbinatiol1of the two hydranlic lifting cylinders, to be supplied thl'o\lghone pipe and valvll:..and * * * I adopted his suggestion, which was tbtl only part of the wh.ich was not suggested and designed by myself."· . ,
;;.
: TurningnQwito the testimony as to what had preceded the preparation of this drawing, it appears on the one hand that the complainant, in January and :February, 1878, had in mind a plan for a reel with a discharging device consisting. of a spidel' or f<.>rk actuated from an overhead track, and that he made a sketch of this plan, which is not produced; that in July, 1878', h'e "devised ltn automatic reel, having a discharging platform," operated by foot-power, and made sketches of the proposed apparatus, which have disappeared, and as to the construction of which there is no satisfactory avidence except his own statement; that in November, 1878, and thence to Febru'ary, 1879, he made three sketches, which are produced, and which shown reel with a platform elevated by a lever actuated by hydraulic power, and also a platform and reel with concentricshafts, and devised in one Mse to raise the platform, and in the other case t610wet the that the coil of wire may be removed: On the
DANIELS fl. MORGAN. '
453
side of the respondent, it appears that in October, 1878, Daniel C. Stover showed to the respondent a model of a discharging device which he had invented, "consisting of a disk attached to a shaft extending through the axis of the reel, which ,could be pushed forward by the actionofa cam, effecting the discharge of the coil," and that the respondent thereupon said to Stover that he could use that discharging rlevice in connection with a reel which he had invented, and of which he showed a model. It appears to me that the above recitals are all well supported by the evidence, and can admit of no doubt; and they are, so flu as I can see, the only facts having any material bearing on the authorship of the first complete drawing of this invention. The complainant, on the issue here tendered, assumes the burden of proof, and must, I think, as the evidence stands, maintain by a clear and undoubted preponderance of prqof that he is the sole author of that drawing. I am entirely satisfied that he has maintained this proposition. He had long before had under consideration a device for discharging the coil from the reel, and had eight months before made the sketches which show the substance of the invention which was there embodied. On the other hand, the respond:ent, before the making of the drawings, according to his own statement,had done nothing, except to entertain the casual thought that the disk attached to a shaft concentric with that' of the reel might be used to charge the coil. I have no doubt that the origin of the first drawing was precisely as described by complainant in his answer to interrogatory 27 as above quoted. The respondent insists that an inference contrary to the truth of the complainant's claim is to be drawn from the fact that on several specified occasions he neglected to set up the claim that he was the inventor of the device in question. I shall not go over the testimony, on these points, and shall only say that I see no evidence that there Will'! any time when either the complain!:mtor the respondent, if conscious that he was the inventor, would have felt called on to assert his rights, It does not appear that either of them ever claimed to be the until he applied for a patent, except so far as there was a constant tacit claim and admission between the two men in accordance with what both knew to be the fact; and, even in their own minds, I am by no meaJ1s satisfied that there was a concurrence of thought on this question, respondent's counsel, speaking in his brief of the final drawing made by the complainant, and from which the machine was built, uses this Ian,. guage: "The draWing WilS made while Morgan was in charge of the works, and.
by a necessary prl'sumption of law, it was made under his direction; and, in the absence of a contemporaneous claim on the part of Daniels, the conclusion must be accepted that, if the draWing represented new and patentable devices, those devices were the property of Morgan. "
It is not difficult to suppose that the respondent has held the same view of the relative rights of himself and those who were, like himself, but subordinate to himself, servants of the company. If he did hold that opinion, seeing[that the drawing which showed the invention was preby his order, and that the draughtsman made no claim flS to thQ
FEDERAL ltEPORTER,
atithOrship, he would'<loubtless feeFthat the invention was his own, and that he might lawfully so affirm both in his application fot a patent and in his subsequent testimony. Adecree will be made(authorizing the issue of a patent to the complainant as prayed.
KOCH
et .al. v.
BOJ,z
lit al.
(Oircuit Oourt, So D.1;iew York. March 81,1890.) I'AlrBlml FOB INVENTIONS-NoVELTY-A.'LiJihr CLABPS.
A patent for an album clasp consisted 'of fiat or lever springs, instead of spiral springs, which had formerly been to make the ('lasp, by"e;s;tending and contracting, adapt itself to any book. All ,the parts, except the difference in the kind of apring3 used, were used 1n the'clasps embracing the spiral sprhrgs. Held that, tlle use of fiat springs to do the work of tension and pressure had long been '!moWIi; the patent, if it could be sustained at all, should be limited to the exact detal1sof the combination as described i'nthe specification, and could not be infringed by t/le use of a similar spring for a similar purpose, with a difference in the manlI:er of applying it.
Bill for infringement ofletters patent. J. Solis Ritterband, (Edmund Wetmore, of counsel,) for complainants. Gilbert M. Plympton, for defendants. WALLACE, J. T4e only novelty in the improved"album clasp," which iathe subject of the complainants' patent, consists in the employment of flat or lever springs, in the place 6fspiral springs which had previously been. used; to make the clasps extend and contract, to adapt it to books of different thicknesses; The springs are located within the case or box of the extensible clasp, just as the spiral sprin/{s were, and act as the spiral 'springs did, by tension and pressure, to do the same work. The prior patent to Muller & Hipart describes all the parts in combination with spiral springs. .It is said that by using fiat the case can be made thinner, and consequently more artistic in appearance, than when spiral springs are used; and this seems to be true, unless the latter are 80 thillin diameter as to somewhat impair their efficiency. Inasmuch as lever or fiat sprin/{s and spiral springs were well-known. equivalents for one another, to do the work of tension and pressure,-so well known as to be a matter of which the court should take judicial notice,-ill various mechanisms in which two devices' are to be held in elastic relations to each other. it is very doubtful whether. there is any patentable novelty in the clasp of the patent. If there ie, it must be in the peculiar details of construction and arrangement ,by which the springs are made to cooperate with the other parts. ; ,. In the specification the patentees .state as follows: . "Within the box, e, there are sUitaQleSprings acting against these toes, i. prefer and use the volute spl'1ngs,f, the innel' ends of which enter the slOts 'intbeslruds, h, and the outer ends pass beneath or behind the toes, i."