TABER BAS-RELlEF 'PHOTOGRAPH CO. ,V. MARCEAU.

871

TABER BAS-RELIEF PHOTOGRAPH CO. et a!. v. MARCEAU et al. (Circuit Court, N. D. California. No. 12,258.
1. PATENTS-hIPROVEMENTS-CONSTRUCTION OF CLAIMS.

May 17, 1898.)

Where the parties to a suit are operating under different patents, each of which is for a mere improvement in a well-known art, each must be confined to the precise method mentioned in its claims. Infringement is determined, not by the result accomplished, but by the means employed in attaining that result.

2. SAME-INFRINGEMENT.

3. SAME.

'l'he only material difference between two patents for producing em bossed pictures or photographs was that in one the picture was transin the other the ferred to the block, and then carved out therein, outline was cut on the block, and the picture then carved out, following a picture set up in front of the carver. Held, that there was no infringement, eacb patent being for a' mere improvement. The Taber patent, No. 556,591, for improvements in methods of producing embossed photogmphs, is not infringed by the process described in the Marceau patent, No. 567,748, for a process of producing photographs In reltef.

4.

SAME-EMBOSSED PHOTOGRAPHS.

This was a bill in equity by the Taber Bas-Relief Photograph Company and others against Theodore C. Marceau ,and others for allegro infringement of a patent covering a method of producing embossed ' " JohnB. 'Miller, for complainants. JOhn L. Boone, for defendants. MORROW, Circuit Judge. This is a suit in equity for infringement of letters patent No. 556,591, March 17, 1896, issued to Freeman A. Taber, for "improvements in methods of producing embossed photographs." It is conceded that the patent was assigned to the Taber Bas-Relief Photograph Company, and that the Taber Photographic Company is the licensee of the former. The only party dehendant is Theodore C. Marceau, the other defendants being fictitious parties. The defendant, Theodore C. Marceau, denies, in his answer, any infringement of the Taber patent, but admits that he has been engaged in the production and sale of photographs in bas-relief, and in that connection avers that he is the inventor and patentee of a novel process and method of producing such photographs, which is protected by letters patent No. 567,748, dated December 15, 1896, issued to him, for a "process in producing photographs in relief." At the hearing the complainants introduced the letters patent under which they claim an infringement, and several exhibits, to illustrate their method of producing embossed pictures or photographs. They also introduced the deposition of a witness as expert testimony in their behalf. The defendant presented no evidence, beyond introducing behalf the file wrapper of his patent. No specific act of infringement has been shoWP. In fact, the' question of infringement resolves itself into a consideration of whether or not the defend-

872

"fl"

a.nt, in producing and selling photographs in bas-relief under his patent,:is guilty ' The witIiesscalIed as an expert by the complainants ,testified to the effect that he was a s()lic;it()r of patents, and that he had examined the two letters patent introduced in e-vidence, viz. that of the complainantstind of the defendant, and that the invention of the defendant was, in his opinion, an infringement of, the c0nlplainants'. Whatever weight be given to this expressinn of expert' opinion, 'the question of infringement is one for the court, to be exercised upon its own 'independent judgment, and upon a comparison of the two patents,..,An, examination of both patents shows that each purports to be for improvements in the method of producing embossed photographs, or photographs in bas-relief. Neither of the patentees is a pioneer in the art of producing photographs in bas-relief. The following show that the same method is substantially covered: United States letters patent No. 242,414, issued to William H.Guilleband, of Hoboken, N. J., dated May 31, 1881, entitled, "Process of Producing Photogranhs in Relief;" United States letters patent No. 520,707, issued to Mario Rome, Italy, dated May 29,1894, entitled; "Art,of Reproducing Objects in Relief or Intaglio by the Aid of Photography;" .:Un}ted States letters patent No. 298,921, dated May 20, 1894, issued to Savillion Van Campen, of Jersey City, N. J., entitled, "pecora,tive Tile." Each of ,the patentees present suit is therefore but an imnrover in the art. It follows that this is a case where,in View 'of the state of the art, a pat· entee is'on)y entitled, at'themost, to the precise method mentioned in his claim. Boyd v. Tool Co., 158 U. S. 260, 261, 15 Sup. Ct. 837. There is but one claim in the Taber paten't;which,ls 'as follows:
"The method of embossing photographs. which consists In: transferring a print to the surface of a block. forming an embossing mold in said block in conformity' with !laid :print,' providillg, tl1i\' blo<:k witb, a fraIl?e to fOrIJI the register and mold. prints. to fit within said fJ;ame. and pressing Jhll print into the mold'rBpb!ltantfally as s(!t

The claims of the Marceau, ,patent are as follows:
"(1) The, methOd herein described 'for, preparing Intaglio blocks for the purIn cutting an outline of the picture pose of formmg relief pictures. to be t;hmwn. upin relief. tp.esame, ,upon the inner surface of the glass or other,smQoth-surfaced mold, filUng mold with a plastic substance which will afterwards set and harden. then removing the hardened material from the mold. disengaging the plcturllfIlomfts surface. and engraving the surface to correspond, with the portionsof,the picture which are to be thrown up in,to relie,f., ,(2), ,p.e method O,f, th,lJQ, ,:w:ing P,h,otographic ,pictures I,IP, ipto relief. consisting in cu,tting out one of ,the set of pict,Ires, fixing It the inner surface'ofa 'mold, filling the 'mold with a' plastic material which will afterward set' and harden. removing the hardened block, from the mold and disengaging the picture therefrom; engraving an intaglio to correspond ,with the outline left b, t,lle removed Pictur,e, llSillg th,eo,uter, portion from which the picture has been cut as, an, ol1,tline by which tbe pictures are accurately reg'lstered upon theengrave'q.1Jlock, and pressing the portions coincident with' the engraved surface thereinto so as to throw them up into relief When retnoveCifrom the block.; (B) .The method of forming. photographic pictures in reUef, consisting in cutting out one of a set of pictures, and outlining it upon a block formed by :hardening a plastic mass w;itJ;iip. a mold, en· graving an intaglio upon the block tQ correspond with said outline, then registering the other pictures upon the block, ,and pressing the portions coincident wlththll engraved sUrface thereinto!' ' '
'J,',

AMERICAN GRAPHOPHONE CO. V. LEEDS;

873

From these claims, and a description of both patents as contained in the respective specifications, it appears that the purpose of both patents is the same, viz. to produce an embossed picture or photograph, and that, the principal parts or functions of both methods are for the most part substantially similar. The only material difference be· tween the two is that by complainants' method, as covered by the Taber the picture to be embossed is to a block, and then carved out in the block, while by the defendant's method, as covered by his patent, the outline of the picture is cut on the block, and the picture is then carved out, following the picture, which is set up in front of the carver. This difference in the two methods of transferring the pictures upon the blocks for the purpose of carving them out is, in my opinion, sufficient to distinguish the two patents, and to defeat any claim for infringement. It true that the result accomplished, viz. an embossed picture,'is the same with both methods. But infringements are not determined by the result accomplished. It is the meanS by which that result is attained which is determinative a;nd controlJing upon a question of infringement. . Carver v. !.Iyde, 16 Pet. 513, 519; I.e Roy., v. Tatham, 14 How. ,156; Corning v.Burden, 15 How. 252; Burr v. Duryee, 1 Wall. 531; Fuller v. Yentzer, 94 U. S. 288; Knapp v. Morss, 150 U. S. 221, 14 Sup. Ct. 81. To constitute infringement, there must be identity in means, not merely in purpose, function, or effeCt. 3 Rob. Pat. p..46, § 893, and cases therecitM. Besides, the patent issued to the defendant, the complainants' assignor (the Taber patent), not being a pioneer invention, is entitled to a prima facie presumption in favor of its natentability. Boyd v. HayTool Co., 158 U. S. 260, 261, 15 Sup. Ct. 837; Putnam v; Bottle-Stopper CO.,,38 Fed. 234; Ney Mfg. Co. v. Superior Drill Co., 56 Fed. 152; Kohler v. George Worthington Co., 77 Fed. 844. It does not. apoear that the defendant has infringed by using or following the methOd covered by the Taber patent, andin this view of the case it would seem to be unnecessary to pass upon the question whether either Taber or Marceau Invented anything, inasmuch as both are restricted, as above stated, to the exact and specific devices or methods claimed by them, and the complainants have failed to show that the defendant has used the particular method to which they may be deemed entitled. From these views, it follows that the bill must be dismissed, and it is so ordered.

is

AMERICAN GRAPHOPHONE CO. v. LEEDS et al.

(CIrcuit Court, S. D. New York.

1. PATENTS-ANTICIPATION-GRAPHOPHONES.

June 18.

A recording cylinder for a graphophone, consIsting of a blank made of a pliable substance, cov l'ed with tin or metal foil. on which Indentations are made by a rigid indenting poInt, Is not an anticipatIon of a cylinder of a waxy substance from which the metal foll is omitted, and upon which an engraved record Is made. Where a patentee has made an actual living Invention, which the public are able to use, the court Is not called upon to struggle to decipher an an-

2.

SAME.