HILL 1'. HOLYOKE ENVELOPE 00.

623

The evidence fails to show any willful violation by the defendant of the rights secured by the patent, but does fairly show that at least one trough, which embodied the patented invention, was made and set up by his workmen before the bill was brought. The extentof the infringement is not now so important as the fact that there was some, and more to be apprehended at the commencement of the suit, to furnish grounds for it. After the suit was brought, the defendant desisted, and there is occasion f(jt:an injunction. The defendant has contested the validity of the all .the way through, and the orator has thereby been compelled to prosecute the suit to establish its right. There must therefore, upon theseconsiderations, be a decree establishing the validity of the patent, and,. for an accouIIt,with costs. . .' ,. Let a deoree be entered that the patent is valid, that the defendant bas infringe4, andfor an account, with costs. . ,

no

HILL

w.

HOLYOKE ENVELOPE

CO.

(Clwcuit Clourt.JJ. MasBachuBett8. March 10.188'7.)
l'ATlIlNTSFOB .!N\rENTIONS-PATJilNT No.9,755-lNFBINGEHENT.

Thirteenth and claims of reissued letters patent No. 9.755, dated June 14, )881, granted to Wade H.Hill, as assignee of AbramA. Rheutan. for improvements in machines 'for counting and packing envelopes, heW, not upon the evidence, as it did not appear that the infringing w.achine had ever been used by the deftmdant.

..

In Equity. B. F. Thurston and (hu8Um' Br0tl11l.8, fOf complainant. J.L. 8. Robert8, for defendant. .
COLT, J. . This is a suit' iII equity for infringement of reissued letters patent No. 9,755, dated June 14, 1881, granted 'to the c6rn plainant as :D.ssignee of Abram A. Rheutan, the inventor, forimprovementsin machines, for counting and packing envelopes. The origil1alpatentwas granted May 19, 1874, to Rheutan,and afterwards assigned by him to , . , the complainant. The invention of Rheutan consists in this: that no count is made on his machine unless an envelope passes. Prior to the Rheutan invention there were machines for countin!!: folded sheets of paper which counted no more sheets than actually passed through the machine. In these machines the paper, moving against fingers or cams, actuated the pawl .and ratchet counting wheel. In the Rheutan machine the folded envelope, in its movement against the fingers or cams, does not directly actuate the pawl and ratchet counting wheel, but only lifts the pawl into such a position, that it may be acted upon by a constantly moving part -of the machine.

'624
The defendants are charged with infringement of the thirteenth and fourteenth claims of the Rheutan reissue. It is not contended that these · claims are. different from those found in the original patent. These claims in substance, the'Rheutan invention. The defendants took no evidence. The plaintiff called as a witness James Ball, superintendent of the defendalltcompany, and patentee of letters patent dated August 26. 1884,. for improveIIlen,ts in envelope machines. In the Ball patent we find'described a machine which counts with the passage of ·the envelope. Ball testifies that his first machine was built substan,tially in accordance with the specification in his patent, but that he had ·to make a good many alterations before the machine would run. and that he. could Ilot make the counter work. He subsequently built three other Ball inachines, and a fifth was in process of construction when this suit was brought. Each6f these four machines was so adjusted that they count at every revolution of the machine, and not with the passage of the envelope. Admitting that the Ball patent describes a machine where no count is made unless an envelope passes, and that the mechanism described for producing this result is substantially the same as that described in the thirteenth and fourteenth claims of the Rheutan reissue, still we find no sufficient proof that the defendants ever made or oseda Ball machine embodying the invention of Rheutan, and therefore no infringement is proved. A Ball machine made after the patent may infringe the Rheutanpatent, but a Ball machine 80 constructed or adjusted as to leave out from its operation the Rheutan idea of counting by the assistance. 'of the envelope is 110 infringement. 'fheevidence of what Rheutan saw in defendants' factory a short time before suit was brought, as to the operation of a Ball machine, is far from satisfactory, in view of the fact that Mr. Renwick testifies that by looking at a Ball machine very, carefully he does not think he could tell whether it was counting at each revolution or at each passage of an envelope. I am of opinion that the charge of infringement is not sustained by proof. That the defendants may infringe by a different adjustment of their machine is not sufficient to entitle the plaintiff to an injunction, because t4e plaintiff has no good ground to apprehend that any such adjustment will be rpade, in view of the evidence going to show that a Ball machinec 80 adjusted works imperfectly. Bill dismissed.

DOBSON V. LEES.

625

OF

PHILADELPHIA. l

WORSWICK

MANUF'G Co.

and another

11. CITY

(DiBfJrict Oourt, E. D. Pennsylvania. March 22,1887.)
PATENTS FOR INVENTIONS-RES ADJUDICATA-FEDERAL CmCUlT COURTS.

The decision of a United States· circuit court, where the subject-matter, pleadings, and the evidence are alike, will be followed by other circuit courts, especially when the validity of a patent is involved.

.

In Equity. Bill for injunction and an account. M. .D. & L. L. Legate, for complainant. McMichael & Warwick, for respondents.

By THE COURT. It is conceded that in the case of Worswick Man1J!g Co. v. f!ity of Buffalo, in the circuit court of the United States for the Northern district of New York, in the Second circuit, (20 Fed. Rep. 126,) the court, upon the same pleadings and evidence as we have in this case, decided that the third claim of the patent here involved is valid, and the defendants were guilty of infringement, and a decree was entered for the plaintiff accordingly· Upon examination of the pleadings and evidence before llS, this concession of the defendant appears to. be well founded. While the decision in that case is not absolutely binding upon this a proper regard for certainty and uniformity in the law requires that C(}urts of one circuit shall follow the decision of another, covering the same question, and especially the same letters patent. A decree will therefore be entered for· the plaintiff granting an injunction and ali account.

DOBSON 11. LEES. l

(Circuit Oourt, E. D. Pennsyl'Dania. April 25,1887.)
PATENTS FOR INVENTIONS-REISSUE-VALIDITY.

Reissued letters patent, containinlt a claim not mentioned in or covered by the original letters patent, are invalid, particularly where the reissued claim was refused upon the original application for the patent.

In Equity. George E. Buckley and Jiranci8 T. (fhamber8, for complainant. Hector T. Fenton, for respondent.
PER CURIAM.

is necessary to consider is that which involves the validity of the reissue
upon which the suit is founded. The reissue is assailed on two grounds: (1) That it is an expansion of the original patent, the sole claim in it
1

In the view we take of this case, the only question it

Reported by C. Berkeley Taylor, Esq.· of the Philadelphia bar.

V.30F.no.8-40