DAVIS fl. PARKMAN.
693
vice. It saves paper and space, and time and labor. It is readily operated with one hand, leaving the other free for holding the package to be wrapped, which is a decided convenience and advantage. The great and constantly increasing demand for it, dating almost immediately from its introduction, is strong testimony in its favor. It only requires to. be placed side by side with the prior devices to make its superiority apparent at a glance. Now, it is true that every element of the combination is old, but the result is a new and useful organization, which cannot be regarded as merely an aggregation. I satisfied that it displays invention ; that the patent for it is valid; and that the defendant is an infringer. It is trUe he does not employ a spring for holding the cutter to its place against the roll, but he substitutes what is an equivalent by making the cutter heavy enough to serve as a weight suf. ficient for that purpose. The decree will be for the complainants.
DAVIS 11. PARKMAN,
(two cases.)
(OO'cuit Oourt, D. MassachUBetts. Maroh 21,1891.)
L
2.
'rhe combination of a swinging rowlock and a pin or standard having an outward curvature. (letters patent No. 209,960, Nov. 19,1818,) intended to increase, while still . limiting, t)le path in which the button of the oar can travel, is not patentable, as the curvature of the pin requires only mechanical skill. SAME.
PATENTS POR IlIlVENTIONS-PATElIlTABILITy-RoWLOOXS.
.
The claim of a rowlock, swinging or stationary, having an inward convexity 1,1pon the upright, (letters patent No. 209,000, Nov. IlJ, 1878l ) being simply the surface of a thole pin or upright inclined to the plane of the norizon, is not pBitentable; the same device having been long in use on dories and other boats. A roWlock with an inset in the sill, as described in claim 2 of letters patent No. 209,960, Nov. 19. 1878, 80 as to permit the oar to .approach more nearly to a vertical position by removing further from each other the vertical planes of the outer side of the sill and the inner side of the offset arm, is not patentable. . . Claim 4 of letters patent No. 209,960, Nov. 19, 1878. for an outrigger consisting of double braces united at their outer ends, one of them being attached at its inner end to the center of the boat, and perpendicularly, or nearly so, to the side of the boat, whereby the latter can be grasped at its center for transportation, is not patentable,' since no inventive skill is required to so change the position of the braces. A foot-board for a row-boat having the point turned up at an angle with the body of the board (letters patent No. 231,017, Aug. 10, 1880) isa patentable invention, though the purpose was formerly accomplished by stufllng rags nnder the toe of the rower. . .
8.
SAME.
. . SAME-OUTRIGGER.
:6.
SAME-FoOT-BoARD.
-8.
The claim of. letters patent No. 281,016, Aug. 10, 1880, for "an oar, the portion, D, . of which; that. fits in the rowlock i8 in transverse section of a general form, as Ililscrit!ed, wherebr the oar may be rooked in the rQwlook WIthout lost motion between the oar and the rowlock, .. is not patentable. .. "
BAME-PATENTABILITY.
. In Equity. Joshua H.Millett, for complainant. GeorgeW.. E8tab1'ook, for respondent.
694
FEDERAL REPORTER,
vol. 45.
OARPENTER, J. These are'biUsin equity brought by Michael·F. Davis agaiustHenryParkman to en.join. alleged infringements ofletters patent No. dated November 19, 1878, by using rowlocks and outriggers like. those daimed in the patent; of letters patent No. 231,017, dated August rD, 1880, by usirtg foot-boards like those claimed: and of letters patent No. 231,016, dated August 10, 1880, by using oars like those claimed. The claims which are alleged to be infringed by the respondent's rowlock are as follows: <1(1) The combination of the swinging rowlock and the pin or standard, A. having the outward curvature, as therein described. <1(2) A rowlock, SWinging or stationary, having an inward conveXity upon the upright, and an inset in the sill, as described." As to the first claim, I do not find in the respondent's device the outward curvature described in the patent. The outward curve of the patent is evidently an outboard curve, and is intended to increase, while still limiting, the path in which the button of the oar can travel. The curved arm is still "to receive the button()f the oar." It facilitates the stroke, and so does the respondent's device; but they accomplish this end by different means, since..the respondent, by a curve parallel with the gunwale of the boat, removes the upright entirely from the path of travel of the button. Still further, 1 see no patentable invention in the device of the complainant.. If it be desirable to increase the length of the stroke, it involves only skill to' move outward such' partofthe mechanism as would otlJerwise limit that length. 'As' to the· second claim, I obstjrve that the operative part of is called in the patent "the inward convexity upon upright" is no more the surface of a thole-pin oTupright, inclined'to the plane of the horizon, .andishence antiCipatt-d ,by,:the pins long in usein dories and Borne other boats. These'6ld dettices permitted slide up withOf, more properly,. with very little friction, in the same out complainant's device·... As to the friction during the rotation 'of the oar, I can see no substantial the old and the new c.mstructions. . . I consider next the inaetinthe sill. olthe rowlock.rhe purpose of this inset is to permit the oar to approach more nearly a vertical position by removing from eaph· other. the vertical planes of the outer side of the sill and the inner siue of the arm, called the "offset arm." To increase this it is admittedly an old device to move autboard offset arm. This· being the' case, and the object sought being to increase the distance between two parts of the structure, there can be no in a devicE,' wpich, contemplates moving the sillfrom the arm rather than the arm, frulU,the. sill, unless it be that'the·sill is moved inward,with fQ,sQp:ae otnerpartofJhestruptare. In this case, the only way in WhICh there can be said to be a movement ·of the sill from the arm,- as distinguished from ·a movement of the a.rm froto the sill, is by referring the inset of the sill: to: the plane of the outboard side of the uprights. And the patent that the i,nner side of the sill is to be inboard from that surface. The claim can, I think, have no mean-
'DA VIS V·. PARKMAN.
695
ing unless it be so it ,is' clearly anticipated by the rowlock spoken' of in ,the testimony of Ge01'ge, Faulkner, and forming part of the "Delimdant's Exhibit Kennedy Outrigger." In that rowlock there is the same distance between the vertical plane of the uprights and the outside of the sill. The claim :which is alleged to be infringed' by the respondent's outrigger is as follow-s: "(4) The outrigger herein described, consisting' of the double braces. D. E. and brace,Jj": united at their outer ends, the said brace, F; being attached at its inner eM to the center of the bO/lt, and perpendicularly, or nearly so, to the side of tbeboat, wher,eby the latter can be at ,Us center for transportatipn, substantiaHy,as forth." So far as the claim cOvers the particular number: of.braces constituting the outrigger, I see no patentable invention. Outriggers have long,heen made, as the testimony clearly shows, with varying numbers of braces, according to the supposed advantages in strength and lightness. Nor can therel)e'inventiorl 'iri attaching 'one brace W of the boat. So far as carrying the boat is concerned, that cuuld be easier done if there were no and thel'e:cll.n be, no invention: in 60 placing these as to 'interfere with the person who has to carry,the boat. . Doubtless, however i the'intentbf the patentee is .to claim ,'the" outriggerha'Ving a. brace placed perpendicularly to the side, whei'eby;aIthough the outrigger be near the center j Ii person may still approach very; near to that so as to grasp and carry' the' boat. 10 such a construction there is, in my judgment, no patentable invention. To change' the:directionand point ofattachment ofthebraces so aato avoid ihe 'point opposite thecentel' of gravitybf ,the boat would ..be within the skill,of· any mechanic when once' the necessity for such a device was seen; ,8uohmoditications 'of structure to meet the varying requirements of the :caseJ abundantly appear in the :evidence, even if it complainant that there is no certain ·evidence·of the. previous use of an outrigger with the braces suhstantially at right angles with the' boat. his testimony 'a,ndargument, lays much stress on The certain supposed advantages as to supporting weight and resisting strains, which arise from the peculiarmanutlrin which the braces are connected and attached. As to this point, it is enough to say that the patent does not describe or claim those peculiarities of structure,nor the advantages supposed to arise therefrom. The claim whieh is alleged to be infringed by, the respondent's foot' board: is as follows: '1 (2) With a rOW-boat. 'of:a :foolrrest composed of the footboard, A 'haVing the point, b;' turned up at' an angle with the body of ·the wHh the heel-piece, C, .and board of aoout straps:or:pieces. d, d', lacl;l0Vef: the footju8tacross the bend of the described." the There is, on the ..evidence, I think,· no 'substantial contention that all the elements, of this combination are old except the ,point turned up at an angle with the main body of the'Joor-restoAs·.tothis, I am, not satj
696
isfied that it was in use before it was made by the complainant. The evidence of those who describe similar structures in the years from 1874 to 1878 is too indefinite to overcome the presumption arising from the grant in the patent, and from the undisputed fact that the complainant's device has been exclusively used for the purpose since it was produced. The use of a stuffing or packing of rags under the toe of the rower does not, in my opinion, amount to an anticipation. Such.a packing would only very imperfectly perform the function of the firm, unyielding surface of the shoe as described by the complainant, and, in fact, I do not think there is sufficient evidence to warrant the conclusion that it per. formed any function except to prevent injury to the hands of the rower. There will, therefore, in the first case be a decree that the respondent infringes. the claim for ·the foot-rest, and that he does not infringe the other claims. The claim which is alleged to be infringed by the respondent's oar is as follows: "(4) An ORr·. the portion. D, of which. that fits in the rowlock. is in transverse section of a general pentagonal form. as described. whereby the oar rp.ay be rocked in the rowlock without lost motion between the oar and the rowlock. substantially as described. II Turning now to the description to which the claim refers, it appears that the only information there contained is the statement, by implication, that the loom of the oar is of such section that it can rotate in the rowlock, and .the statement that one diameter of that section is equal to the width of the space between the uprights of the rowlock, and that the diameter at right angles to that last named is about equal to the space between the base and cross-bar of the lock. The application for this patent was filed March 18, 1880. It appears that oars had long been in use having the loom other than a circle in cross-section. It is also in evidence, and is not disputed, that the complainant in the year 1876 gave to Joseph S. Johnson, a maker of oars, a model of the loom of an oar adapted, as he said, to be used in the rowlook·invented by him, and authorized Johnsbn to make and sell oars made after that model, and that he made and sold many such oars in the years 187& and 1877. This model is produced as an exhibit in this case. So far as I can see by examination, without the use of instruments, this model is identicalwjth the drawing of the patent, and, if this be so, it follows that the invention was in public use more than two years before the application, and hence the patent Cannot be sustained. To this view, however, the complainant objects that the oars made by Johnson were not made according to the pattern, and, as evidence thereof, refers to the fact tl)at some of them required to be altered before they could be conveniently used. lam satisfied, however, that the changes which were made were only such fitting as would be expected to be necessary in order to suit a particular rowlock, or the convenience of the iudividual Qarsman. '. The complainant still further objects that, even if made ac-
DUEBER WATCH-CASE MANUF'G CO.
v.
FAHYS WATCH-CASE CO.
6.97
cording to the model, an oar would not serve· the purpose of the patented oar, because it could not be rotated in the rowlock. In order to demonstrate this, he has prepared a model representing a rowlock, but with a rectangular opening fot the reception of the oar, and so arranged that the side representing one of the pins can be adjusted and clamped at any desired distance from that representing the other pin. He then places the model in this diagramatic rowlock, so that the '(feathering diameter," as it is called, or that diameter which is horiZQntal when the oar is feathered, lies parallel with the sill of the rowlock, and clamps the side representing the pin at such a point that the two. pins exactly touch the sides of the oar model. In this position it appears that the oar model cannot be rotated, by reason of the fact that one diameter is greater than the feathering diameter; whereas, as the complainant contends, in the patented oar the feathering diameter is greater than any, other diameter of the section of the oar. As to this argument I observe in the first place that the loom of the oar. in actual use with its leather covering is much more elastic tha.n the wooden modeli and that the fit of an oar in a rowlock is by no means so exact as the fit of this model oar in the model rowlock. It would therefore be dangerous to draw inferences as to the operation of oars in rowlocks from the operation of these models. But, still further, if the essence of the invention consists in the proportions of the diameters, it is obvious that the patent cannot be sustained, because it nowhere states those proportions. It describes the loom of the oar as being "of a: general pentagonal form, as described." The only reference to the length of diameters is that above quoted, and this statement refers only to two diameters, and does not give the relative length of these, either expressly or by implication. It is indeed inferable from the patent that the o.ar is to be so constructed as to rotate in the rowlock. But to direct that an oar shall be· so made as to fit in all particulars the rowlock in which it is to be used, without describing by what means this is to be accomplished, certainly does not require the exercise of the inventive faculty. In the second case, therefore, the bill will be dismissed, with costs.
DUEBEB
W ATCH-OASE
MANUF'G
00. .". F AHYS W ATCH-OASE Co.
(Circuit Court, E. D. New York. March.1891.) LETTERS PATBNT-OORINGEM&NT-TITLE 01' PATENT.
A suit for infringement of letters patent cannot be maintained where it appears that the complainant has not the legal title to any of the patents, but has merely the defendant's contract to coDvey them; and complainant's position is not strengthened by a decree in his favor in another suit brought to compel a conveyance of the patents by the defendant, or by the fact that the conveyance had been executed and delivered to the clerk in escrow, whioh decree and conveyance were both suspended by appeal and BUperBeaeaa.
InEquity.
