.i'ELIX tl. LEDOS.
16iS
AMERICAN GAS CONTROLLER & FIXTURJD CO. v. GRE?,!,CO, (Circuit Court of Appeals, ,Third Circuit. 14, 1893.) Appeal from theCircult Court of the Untted States for the District of New Jersey. . ; In Equity. Bill by the agiWlst the American Gaa Controller & ]'ixtlll"e Company for infringement of letters patent No. 299,660, and of claims 1, 2, and 4 of No. 282,337, issued to Andrew B. Lipsey, respec· tively, June 3, 1884, and July 31, 1883, for improvements In gas lamps. The infringement alleged consist!'ld in the manufacture and sa.1e of the so-called "Arc Gas Lamp." A motion for a preliminary injunction having been hear4, the court made an order that defendant within 15 days ftle a bond in the clerk's office in the sum of $15,000, In default whereof a Injunction should l&!ue pursuant to the prayer of the bUL Defendant having failed to ftle the bond an injunction .was issued, and from thls interlocutory order defendant appeals. Appeal dismissed. The injunction was asked for on the following grounds: (1) Clear infringement; (2) undisturbed possession and acquiescence; (3) total irresponsibility of the defendants. The defenses were: (1) NoninfJ'ingementj (2) anticipation by certain patents to Westphal and others, all of which were subsequent to 1881; (3) anticipation by or instIfIicienc;v of invention in view of the patent to Siemens, No. 211,077, of May 3, 1881,based upon the prior French and German patents to Siemens. In order to avoid the effect of these alleged ll.nt;icipations, plaintiff offered· evidence to carry back the Lipsey invention to March, 1881, as adjudged by. the parent otlice In cel'taJ.n interference proceedings in the case of LLpsey v. Sanderson. John L. B. Roberts, tor appellant. John R. Bennett, for appellee. Before DALLAS, Circuit Judge, and WALES anel BUFFINGTON, Dlstrtct Judges. BUFFINGTON, District Judge. A caretul examInation satisfies this com1 that under all the facts before it there was no error in the court below awarding a prellmlnary injunction. As the case may hereafter CODle betore us on firutl hearing, we abstaJ.n from discussing it. The appeal is dismissed, at the cost of the appellant.
FELIX v. LEDOS et al. (Circuit Court, D. New Jersey. January 81, l893.) 1. PATENTS FOR INVENTIONS-INvENTION-COMBINATION-WATCH·CASE SPRINGs.
The first claim of letters patent No. 290,761, issued December 25, 1883, for an improvement in watch-case springs, consisting of the combination of a main sp¢lg piece and an auxiliary spring piece, whereby a slot is formed for the reception of the retainjng pin, which, withput adjustment, will always register with the hole in the watch case, are valid as producing a new and useful result.
lil. SAME-LnUTATION OF CLAIM-INFRINGEMENT. 'This claim is not limited to any particular means of connecting the auxiliary piece to the main spring, but covers any method of connecting the two so as to form the required slot, and, when this result is obta.lned, infringement is not avoided by varying the details of constnlction.
In Equity. 'Bill by Numa J. Felix against Eugene P. Ledos a.nd Robert L. Matches, trading under the firm name of E. P. Ledoe &:; 00., for infringement of a patent. Decree' for complainant.
164
FEDERAL REPORTER.
vol. 54.
George Cook, for complainant.
Philemon Woodruff, for defendants.
DALLAS,Oircuit Judge. This is a sutt brought to restrain in· fringement of the first claim of letters patent granted to the com· plainant, numbered 290,761, and dated December 25, 1883, for a.n improvement in springs. The case, upon pleadings and proofs, was, on December 28, .1892, submitted, by agreement of counsel, upon their respective' briefs. It has since been· held under advisement, and is now for decision. The only claim involved is: 'the "main piece" referred: to does hot materially differ, as a spring, from .tJM>se which had been generally in prior use to· open the face coveJ." of .0. watch when released from the bolt or catch which holds the lid in place when closed. These springs were (as they 'spnare) made separ;ately from the case. They were commonly thereto by mea,ns of a small, pin, whi(jh was passed through a.: hole in the rim 0If and into a similar hole in the spring. Th.ism;(')de of attachment required thl),t there: should 1::le it hole in the spi.'ingiat a point precil;lely corresponding with that in the watch case; but watch cases are not all of the same size, and the hole in thelp is not always placed in exactly the same position-To make the cases with more than one such hole is not desirable, and they are not so ma6e.;Therefore, ithadlbeen customary to make the springs with several holes in them, so that some one or other of them might, with somedegree ,of probability,.be to engage the pin .t):itS11lgle hole III any partIcular watch case. Some'imes, howeVer, of .tlIe holes in a sprmgwould tlIus receive tlIe pm, and in all cases the rejected holes· were certainly of no and possibly of some disadvantaige. The patentee's object was to overcome this defect. and the means which he claims that he had invented to accomplish the desired result is the combination of a main piece, or principal spring, with an auxiliary spring piece, attached to the body of tlIe main piece, so as to form an arc-shaped slot for the retaining pin.· . The claim is for a and for one wlp.ch is manifestly efficient and useful. Tlie attachment of. the aUXiliary spring piece to the main piece, irrespective of details, but in such manner as to form an are-shaped slot· for the retaining is the gist of the alleged. invention. BytlIis contrivance the spring may be quickly set in place in any case, and without adjustment. The slot takes the place of all holes formerly made in watch-case springs, and.it is formed, not. only without· weakening or otherwise impairing the spring,' but by the addition of a part having (if it at all affects the strength· of the spring); the incidental advantage of enhancing its durability. . . ·It,.iIJ t\.dmitted that the defendants have manufactured springs like in evidence.· marked, "Complainant's Ex. ·Defendants' Springs;" and examinati9n of these $prings discloses tlIat without "(1) A. watch.:case IlprJ]).g, composed ot a ml;lln piece, A., and of an auxillary sppng piece, B, attached to the body of the main piece so as to form an arcfor the retalniDg pin, substantially as set ;f{)rijl."
FELIX ". LED08.
165
doubt they embody every element of the first claim, and are what any skilled mechanic, having that claim. for his guidance, might readily have constructed in pursuance of its terms. It is, however, insisted that, "the complainant must be confined, in the construction of the claims, to the auxiliary spring pieces described in his patent, and that they cannot be extended so as to include the defendants' springs," which differ in details from those described in the second claim, because, as contended, unless so restricted, the invention claimed was anticipated, as shown by the evidence of the prior state of the art. The answer to this is that the first claim cannot be made other than it is by construction. The plain and ordinary meaning of its language precludes its limitation to any particular method of connecting the auxiliary piece to the main piece, provided they are so connected as to fohn the required slot. The substitution of "washers" for "cheeks," or the omission of "stays," is not material, if the first claim is a valid one. In that claim neither cheeks nor stays are even mentioned, bUt, on the other hand, both are distinctly and specifically included in the second claim; and, as has been repeatedly held, each claim must, if possible, be so construed. that both may be given effect. The first claim, if not valid as for a combination, is invalid; and the only substantial question is as to whether, as a combination claim, it should be sustained. If it should be, the defendants admittedly infringe. If it should not be, the right asserted by the, complainant does .not. exist. The evidence d.;>es not disclose any prior knowl· edge,' publication, or patent of the combination of a main spring, piece and an auxiliary spring, whereby a slot is formed for the reception of the retaining ,pill, whioh, without adjustment of amy kind, will always register with the hole in the watch case. This is what the complainant invented. It is what. he claimed. It was entirely new with him. The complainant's invention.:was of a true combination. He did not simply contrive a mere aggrega" tion of parts. In National Cash Register Go. v. American Cash Register Go., (decided December 23, 1892,) 53 Fed.. Rep. 367, the circuit court of appeals for this circuit stated the law as to tbis point as follows: "A combination. to be patentable, must produce It new and useful result, the product of the combination, and not a mere aggregate of seveI'alresults, each the complete result of one of the combined elements; there mllSt be a new result produced by their union." lIS
The present case is plainly one of a new result produced by the union of the combined elements. .' The remaining points urged on behalf of the defendants must also be disallowed. It is ]];Ot exact .to say that the complainant's first claim "is for nothing more than a hole." It involves, it is true, the arc-shaped slot; but what is claimed is the combination by which it is formed, and which gives it its especial utility, by peculiarly fitting it for the purpose for which it is intended. Neither is it true that the patentee did nothing but take two old and wellknown springs, "and attach the two by rivets to one another." He did more: He combined·\the two pieces so ag to produce a new
166'
FEDERAL RlilIPOR'fER',
MJd ,ulij(u!r nesult; as :the product of the combination,; and this T.bJe 'oomplainantisentitledto a decree in the usMit f9mIl,;whieb.,may'be prepared and submitted. ;,1 .· ,1 ;
'irULLER'&WARREN 00: \ l ,',
v. TOWN
OF ARLINGTON. /
(Circuit Court, D, Massachusetts. j
Se'Ptember 15, 1892.) FURNAOM.
·/1
PATEN.foS,.Pq.ll' INVENTIONS-INVENTION-MEOB;ANIoAt' SXILL-PRIVY ,
patent No. 264,568, issued September 19, 1882, to William 8. ,Ross, fora furnace for privies, conSisting of a metallic vault having a dre chamber at one e:qda,llqa fiue at the other, with a perforated platform tor , .sepllratlng,the sOlid from the fiuid matter, are void, as the alleged invention is resUlt of mere 'mechanical skUl.
the
",.',
J
'. . ,
·
,.
In· Equity. Suit by the Fuller & Warren Company against the town of Arlington far' infringement of letters patent No. 264,568, issued," September 19,1' 1882, to William S. Ross, for furnaces for privies. i' iBill The first claim of the patent rea.dS as follows: (1) Mllnattachmmt fOl' a privy, n horizontal, metalUc casing, constituting the depository for the fecal matter, and provided with the hinged lids and fire ilubstantlally as set
defendant;'
Esek, Cowen, forcorhplainant. Willi8.In:'H. H. Tuttle, John W. Munday, and Lysander Hill, for
PUTNAM; OircuitJndge. The contest in this case is nan'owed d6wnto'the fuet claim in the patent. The court calls special attention to'the fact that this claim relates strictly tQ a combination, and in nomahner tou'ches a/method or process. '.rhe pith of the complaimtJit'e alleged is stated by its expert. It is also stated in the COmplainant's brief in substantillJ.ly the same terms used by the expert, as follows: "The precise improvement made by Ross was as tollows: The ordinary country privy has for a receptacle simply a pit dug in the ground, which rematter, ,while the liquid soaks away through the soil. For this pit,RW\lsubstituted ",llat he calls a 'metallic casing,'-that is, an incombustiblll.(for,tqat is the only object of making it metallic) vault, tube, or duct, for the reception of the fecal matter, over which the privy soots are placed, and which Is open at both ends. At one end is placed an air shaft or fiue, which takes the all';!rom the interior of the vault or casing into the atmosphere above the building. At the opposite end of the vault is a fire chamber, conta1nlng a grate, for the purpose of highly heating air that enters the vault, which hooted airls drawn through the vault by the flue or shaft. The fecal matter, as it flills from the seats above, is, received 'upon a perforated platform which separates the solid portion from the liquid.' There is, therefore, a pile of solid mateaCh seat. When the grate is not in usej the doors at the end of the vault QPposite the, fille admit enough air to carry away the odors. Page 169, Une50. When the .cloeet is SQ full ,that it is desirable to remove its contents, a fire is built in the grate. 'thehE,iated air, mlngllng with the products of combustion, is drawn over and around the piles of matter resting on the platform. They are rapidly dried, and,when thoroughly dried, are usually mixed with some combustible matter and
