154

94 FEDERAL

edition of the cf)mplainant's; but there are nevertheless 'many passages which seem to have been conveyed from thecopyr.igllted edition. The answer to the question of fact upol1 which the case turns is not full to the ab?ve entirely clear. Even set forth 1 some of the resembll:tnces the two sets of pubhcation$ are strongly indicative of pirac;r. But a preliminary injunction, such as is prayed for, would be' practically a judgment in advance of hearing, working irreparable, damage to defendants; and it is thought best to relegate the question to final hearing;' Cross-examination may give so clear a conviction as to the direct evidence as to enable the court, to weigh the circumstantial evidence more correctly.
DUFF MFG. CO. v. KALAMAZOO RA):LROAD VELOCIPEDE & CAR CO.

(Circuit Court, W. D. Michigan. S. D.

1. PATENTs-PRELnUNARY INJPNCTION. ,'

August 3, 1898.)

Where a patent ha!! been sustained by the circuit court of appeals in another circuit aftet 'R sertOU!! contest, the court will award a preliminary injunctioll, if infringement is clear, aud postpone to the final hearing all questions relating to the of tbepa,.tent, unless there is, new evidence so clear and persuasiye In .character, as to leave no fair doubt such former decision was erroneous, and would have beep. different If the new 'matter had been before the court. ' ,The Barrett patents, Nos. 455,993 arid 527,1()2, for a jacking apparatus, construed on motion, for preliminary injunction, and held valid and infringed; tbe former as to claims 1 and 6, and the latter as to claim 19.
ApPARATUS:' " '"

2. SAlIE:.J.JACKING

This was a suit in equity by the, Duff ManUfacturing Company against the, Kalamazoo Railroad Velocipede &' Car < Company for alleged infringement of'letters patent No. 455,993, granted July 11, 1891, and No. 527,102, granted Oct<!ber 9, 1894, both to Josiah Barrett, for a jacking apparatus. ' The claims ihvolved are 1 and 6 of the earlier patent, and 19 of the later one. The cause Was heard on a motion for' preliminary injunction. Kay & Totten, for complainant. Howard, Roos & Howard, for defendant,. SEVEImNS, District Judge. A motion is made ill this case for a preliminary injunction to restrain the defendant from manufacturing or selling a certain kind of lifting jacks, whid} are, alleged to be infringements of the patents of the complainant. It apppar8 from examination that the claims in the complainant's patent8 here sued on have been the subject of litigation in the federal courts of thl' Third where their validity has sustained by the cireuit court and the circuit court of appeals upon re,cords nearly as full as the present in respect to the defense of anticipatiDn. Manufacturing Co. v. Forgie, 57 Fed. 748,78 Fed. 626; Id., 26 C. C. A. 654, 81 Fed. 865. Upon that point the question was quite elaboratel,)' considerpd, and evidentl,}' upon a bona fide record and strenuous controversy. The general rule of comity requires this court, in such circumstances, to

OVERWEIGHT C. ELEVATOR CO. V. IMPROVED ORDER R. M. H. ASS']'>.

155

award. a preliminary injunction, if there is infringement, and post· pone to the final hearing'the determination of the questions relating to the validity of the patent, unless there is new evidence of such clear and persuasive character as to leave no fair doubt that the former decision was erroneous in point of fact, and would have been different if the new matter had been before the court. 'Electric Mfg. Co. v. Edison Electric Light Co., 10 C. C. A. 106, 61 Fed. 834. 'l'he defendant here, for the purpose of obviating the consequences of this rule, submits and relies upon the Gard patents, Nos. 116,296 and 123,010, as clear anticipations of the complainant's claims. But, whatever consideration and effect may be given to those patents upon final hearing, I think it cannot be held that they constitute such clear and positive proof of anticipation as to meet the requirement of the present occasion. I think a preliminary injunction should issue as prayed. .

OVERWEIGHT ELEVATOR CO. v. IMPIWVED ORDER OF HED MEN"S HALL ASS'N ali'

<CIrcuit Court of Appeals, Ninth Circuit. No. 470.
1.

February 13,

PATENTS-PLEAD IN' AND EVIDENCE-ANTICIPATIONS.

There is no error In admitting In evidence a patent of which notice has not been given, under Rev. St. § 4920, where it Is introduced, not as an anticipation, but merely to show the prior state of the art, as bearing solely upon the question of Infringement. When a specific element is not claimed as a device by Itself, but an the claims are for a combination, this Is, in effect, an admission that such element was old, and 'was not invented by the patentee.
OF CLAIMS-COMll,NATIOl\B.

2.

3.

SAME-INFIUNGEMEN'l' OF COMlllNATION CI.AJ}lS.

If the Invention claimed be but an improvement on a known machine, by a mere change of form or combination of parts, the patentee cann(}t treat another as an infringer who has improved the original machine by the use of a different form or combination' performln:g the same functions. The inventor of the first improvement cannot invoke the doctrine of equivalents t(} snppress all other improvements which are not mere col(}rable evasions of the first.

4.

SAME-EXPERT EVIDENCE-JVHY TRIAL.

'Where, in a jury trial, the question is as to whether an element in defendant's machine is the mechanical equivalent of one of the elements in the patented machine, the mere fact that there is testimony by experts that it is such an equivalent does not necessarily require the submission of the case to the jury; for the court is not bound to accept the opinion of experts, but may draw its own conelusions from an inspection of the respective machines Or models, and if, in its opinion, the evidence is iusufficient to support a verdict fot the plaintiff, it may instruct the jury to find for defendant. The Hinkle patent, No. 257,943. for an improvement in freight and passenger elevators, construed, and held not infringed.

5.

SAME-EI.EVATORS.

In Error to the Circuit Court of the United States for the Northern District of California. For opinion of circuit court, see 86 Fed. 338.