CONSOLIDATElJ FRUIT JAR CO. V. BELLAIRE STAMPING CO.
91
. claims an express declaration to the effect that the claim extends to the thing patented, however its form or proportions may be varied. l'ke law'so interprets the claim without the addition of those words."
The defendant's instrument, in the form of a "telegraph transmitter" called a "sounder," appropriates and embodies the invention clearly intended to be secured to the inventor under this patent. Looking at all the language of the application that is designed to set forth the extent of the inventor's patent, and what he intends to se· cure by it, as constituting his claim, it is clear that the claim includes the combination when used in a sounder. So far as respects the use .of ihis combination, the sounder is the equivalent of the technical key; for the combination operates precisely alike in each. All the merits, as it seems to me, are therefore with the complainant, and the injunction moved for should be allowed.
CoNSOLIDA.TED FRUIT JAR
Co. v.
BELLAmE STAMPING CO.I
(Oircuit Oourt, S. D. Ohw, B. D. June 2, 1886.)
1.
PATENTS FOR INVENTIONS-INVENTION-INVALIDITY OF REISSUE.
Reissued letters patent No. 9,909. of October 25, 1881, to the Consolidated Fruit-jar Company, as assignee of Lewis H. Boyd, tbe original being No. 88,439, of March 3D, 1869, for improved mode of preventing corrosion of metallic caps, are void for want of invention over the Taylor & Hodgetts patent, No. 117,236, of July 18, 1871, for caps for preserve jars.
S.
SAME-CoMBINATION OF OLD DEVICES-INVENTION.
A claim for "the new article of manufacture, consisting of a screw-cap for fruit- jars and analogous uses. made of. them, soft metal, with corrugated screwthreads in it, and having combined with it a separate plate or partial lining of glass, or its equivalent, permanently secured therein, substantially in the manner and for the purpose set forth, " does not disclose a patentable invention, in view of prior patents, which showed all the separate elements of the claim, and all that patentee did was to combine the old Icrew-cap of one with tbe old lining-plate of another.
.. SAME-IMPROVEMENT-PATENTABILITY.
Although a patented device may be, as evidenced by public favor and extensive use, an improvement on all older devices, the question is whether it is a patentable improvement.
In Equity. Oausten Browne, W. O. Wilter, W. H. Kenyon, and ..4.. T. Gurlitz. for complainant. Geo. W. Dyer and Lysander Hill, for defendant. SAGE, J. The opinion read at Cincinnati, (27 Fed. Rep. 377,) shortly after the hearing of this cause, that the Taylor & Hodgetts patent is invalid because of abandonment to the publio prior to the issue of the patent, leaves the Boyd patent to be considered within I
See note at end of case. by Charles C. Linthicum, Esq.· of the Chicago bar.
92
FEDERAL REPORTER.
limits so narrow that it is not necessary to enter upon the discussion of many of the points argued in the briefs of counsel, or orally at the hearing. The court adopts the statement of complainant's counsel that the Taylor & Hodgetts patent covers broadly the porcelain-lined fruit-jar caps made and sold by the defendants, and the Boyd patent covers certain modifications in said caps. Unless, therefore, the Boyd cap is a patentable improvement upon the Taylor & Hodgetts cap, the Boyd patent is invalid, and we need not inquire whether it was anticipated by other caps in evidence, and referred to in argument. The claim of the Taylor & Hodgetts patent is for "the combination, with the cap or cover of a fruit-jar or other vessel, of a separate plate, lining, disk, or shield of glass, porcelain, or other equivalent incorrodible material, substantially as and for the purposes described." The object of the invention, as set forth in the specification, is to provide a remedy for the corrosion of the cap or cover by the action upon it of the contents of the vessel; and the improvement is described as the combination, with a cap or cover made of any suitable metal, of a separate plate or lining of incorrodible material, in such a manner that when the cap or cover is in place upon the jar or vessel the incorrodible material shall be interposed between the contents of the vessel and that portion of the cap or cover upon which the acids would otherwise act, and thereby prevent corrosion, and the injurious consequences resulting therefrom, referred to in the specification. In the drawings accompanying and forming part of the specification is the form of cap which was made by Taylor & Hodgetts, and described in their original application of March 26, 1856. But it is to be remarked that this is presented only as "a form of metallic cap . in which the invention may be successfully used;" and the specification adds: "It may, however, be of any other convenient form, and it may be constructed in any suitable mode, either by casting or otherwise," and the claim is so broad as to include this generalization in the specification. It is of soft metal, and is a screw cap or cover for tin cans, which were then used for preserving fruits. The plate of incon-odible material, it is said, may be combined with the cap in any convenient way. The method described is to construct the cap 80 as to form a rim around the inner face slightly deeper than the thickness. of the plate or shield, and then, after placing the plate or shield within the rim, to burnish the latter in any convenient manner down over the edge of the plate or shield, so as to securely attach it to the cap. The cap shown in the drawings is not suitable for glass jars. It has its screw-threads on the outside, adapted to tal,e into internal acrew-threads in the neck of the can, whereas ca.ps for glass jars have internal screw-threads, adapted to take into threads on the outside of the neck of the jar; and the metal of the cap for a glass jar must be thin and soft, with corrugated screw-threads flexible enough to adapt themselves to the irregulal1ities of the screw-threads on the outside of the neck of the jar.
CONSOLIDATED FRUIT JAR CO. ft. BELLAIRE STAMPING CO.
93
The claim of the Boyd reissued patent is for "the new article of manufacture, consisting of a screw-cap for fruit-jars and analogous nses, made of thin, soft metal, with corrugated screw-threads in it, and having combined with it a separate plate or partial lining of glass, or its equivalent, permanently secured therein, substantially in the manner and for the purpose set forth." Referring to the specification, we find that the screw cap "is made of tbin, soft metal, so as to be capable of adapting itself to the ir. regularities which are found in ordinary fruit-jars," which at the date of Boyd's original patent, were rapidly superseding metallic cans for the preservation of fruit; "and is provided with corrugated screwthreads, and sbould, preferably, be manufactured of the same mao terial, and in the same shape and manner, as the well-known caps used with the so-called' Mason jar.''' Into the top of this cap the' lining-plate of glass or other incorrodible material, of any desired thickness, and of any preferred cross-section, is closely fitted to the under side of the head or top of the cap, a slight shoulder to secure it firmly in place being preferably spun in the caps near its head or top; or, the specification states "it may be retained in position in any other convenient way, but it should be so secured as to form a permanent part of the cap." Tbat tbis was an improvement on the Taylor & Hodgetts cap is evidenced by the fact that it came into public favor, and was extensively sold, and that it bas, in all tbe years that have followed, held its place as a leading cap in the market, while tbere has been no demand for tbe Taylor & Hodgetts But the question is wbether it was a patentable improvement. The use of a non-corrodible lining was not new witb Taylor & Hodgetts. It is shown in tbe patent granted to R. W. Lewis, February 12, 1856. Tbe lining there was tin, but tbat is not a material difference. It was tin in the cap described in the original application of Taylor & Hodgetts. Tbe English letters patent to Betts & Stocker, granted in 1844, describe thin flexible metal close-tapped screw-caps, with separate stoppers or covers' of glass; and J. K. Chase's patent, October 27, 1857, shows and de. scribes a screw-cap of thin metal, spun to shape, and identical in all respects, except the glass lining, witb the fruit-jar caps made and sold in the market under the Boyd patent. Boyd's improvement on the Taylor & Hodgetts cap consisted in combining the screw-cap of Cbase witb tbe glass lining.plate of Taylor & Hodgetts, which was tbe equivalent of Lewis' tin lining, embodied also in the cap de· scribed in Taylor & Hodgetts' original application. Now, if the Crase patent and Taylor & Hodgetts patent had each been valid and in force when Boyd made his improvement, that improvement must have been held to be nothing more than an ingenious attempt to evade both those patents, and quite within tbe range of tbe skill of a. competent mechanic, but without anything of inVEntion, and therefore not patentable.
FEDERAL
REPORTER.
Recent rulings by the snpreme court of the United States make this proposition clear. In Thompson v. Boisselier, 114 U. S. 1, S. C. 5 Sup. Ct. Rep. 1042, it was held that "it is not enough that a thing shall be new in the sense that in the shape or form in which it is produced it shall not have been before known, and that it shall be useful; but it must, under the constitution. and the statute, amount to an invention or discovery." See, also, Yale Lock Manufg 00. v. G-reenleaj, 35 O. G. 386, 554, S. C. 6 Sup. Ct. Rep. 846, to appear in 117 U. S. In the case of Gardner v. Herz, 35 G. 999, S. C. 6 Sup. Ct. Rep. 1027, (decided May 10, 1886,) the supreme court held that where the mode of construction of the article claimed, the material employed, the form after construction, and the pm'pose for which it was to be used, had been described separately in ea:rlier patents, although the article itself had never been des·cribed in any single patent, and to that extent was novel, and was of great utility, it did not require invention to produce it. The court cites with approval Saxby v. Gloucester Wagon 00., 7 Q. B. Div. 305, which was heard before Lord COLERIDGE and Justices FIELD and BOWEN, in which the ruling was directly in point upon the proposition above stated. I therefore hold that the Boyd patent, reissued to the complainant as his assignee, was invalid for the reason that the improvement therein described was not patentable. '£he bill will be dismissed, at complainant's cost.
a.
NOTE. Nooelty and UtiliJ,y as FJvidence of Invention.
An increased utility, beyond what had been attained by devices previously in use, in {laseS of dOUbt, is usually regarded as determining the question of invention. Hollister v. Benedict & Burnham Manuf'g Co., 113 U. S. 59; S. C. 5 Sup. Ct. Rep. 717, (January 5, 1885.) The fact that the older devices were not used, and the speedy and extensive adoption -of the patented device, Bupports the conclusion of novelty in the latter. Consoiidated Valve Co. v. Crosby Valve Co., 113 U. S. 157; S. C. 5 Sup. Ct. Rep. 513, (January 19, 1885.) It is not enough that a thing shall be new, in the sense that in the shape or form in which it is produced it shall not have been before known, and that it shall be useful; but it must, under the constitution and the statute, amount to an invention or discovThompson v. Boisselier, 114 U S. 1; S. 0. 5 Sup. Ct. Rep. 1042, (March 30, 1885.) If the prior devices were nnsuccessfnl, and thEl improvelllentwhich resulted from the use of the patented device is manifest, there can be no doubt that the makingofthe latter involved invention. WALLACE, J., Bogart v. Hinds, 26 Fed. Hep. 149, (December 29, 1885.) Though the adjustment of the different parts of the combination was novel, and the {lombination as an entirety useful, still, if It exhibits only the expected skill of the mechEmic's calling, and not the creative work of the inventor, it is not patentable. DYER, J., Calkins v. Oshkosh Carriage Co., 27 Fed. Rep. 29G, (April, 1886.) "It has al ways been the law that a patentable invention, although new and useful, m;Jst be the result of something more than, and different from, mechanical skill; but the existence of novelty and utility in a patented thing was }lotent in the determination of the question of its patentability." McCormick v. Seymour, 2 Blatchf'. 240; Furb'ush v. Cook, 2 Fisher, 288 i Judge SIIIPMAN, in Celluloid Manuf'g Co. v. Comstock & Cheney Co., 27 Fed. Rep. 358, who also said that the decision in Hollister v. Benedict .& Burnham ]l,fanuf'g Co. "makes independent evidence of the existence of inventive .skill, apart from inferences of such existence which may be drawn from novelty and utility, to be of greater importance than has been understood heretofore." April 24, 1886.
CLARK V. WILSON.
95
The fact that the patented device went at once into such public use as almost to su· persede older devices is pregnant evidence of novelty, value. and usefulness; and this is a fact that has much weight, and is not to be overlooked. NIXON, J., New York Belt" ing & Packing Co. v. Magowan, 27 Fed. Rep. 362, (February 18,1886.) While it is true that the utility of a machine, instrument, or contrivance, as shown by the Ji:eneral public demand for it, when made known, is not concluHive evidence of novelty and invention, it is nevertheless highly persuasive in "that direction, and, in the absence of pretty conclusive evidence to the contrary, will generally exercise con· trolling influence. BUTLER, J. in Hill v. Biddle. 27 Fed. Rep. 560, (April 30, 1886.) Where an old device or machine in general use, with acknowledged serious defects, which have long been endured because no one has :previously discovered a means of obviating them, is taken in hand, and, by changing Its form or structure, they arc removed, and a different and iInproved result obtained, it may safely be affirmed that the change required invention. Where the improvement, and consequent public benefit, is great, very little evidence of invention is required. BUTLER, J., in Asmus v. Alden, 27 Fed. Rep. 684; citing Smith v. Goodyear Co., 93 U. S. 486; Washburn & M. Manuf'g Co. v. Haish, 4 Fed. Rep. 907; Eppinger v. Richey, 14 Blatchf. 307; Isaac v. Abrams, 34 O. G. 862, (May 13, 1886.) The doctrine that independent evidence of invention, in addition to evidence of novcIty and utility, is required to support a patent, reaffirmed in Yale Lock Manuf'g Co. v. Greenleaf, 117 U. S. 554, S. C. 6 Sup. Ct. Rep. 846, (March 16,1886,) and in Gardner v. Herz, 6 Sup. Ct. Rep. 1027, (May 10, 1886.) CHARLES O. LINTHICUK. Ohicago, July, 1886.
CLARK
V. WILSON. July 13,1886.)
(Oircuit Oourt, 8. D. NeJ/J) York.
PATENTS FOR INVENTIONS-EXPIRATION-ADAPTATION OF FOREIGN PATENT -WHEN IT WIT,L "EXPIRE-CLARK'S PATENT FOR IMPROVEMENT IN CORRUGATED' IRON SHUTTERS.
A patent which is a mere adaptation of a foreign patent expires in this country at the same time with the foreign latent, (16 St. at Large. 270: Rev. St. § 4887;) and patent No. 137,596, dated pril 8. 1873. for an improvement in corrugated iron shutters by applying soft material thereon to deaden sound, is amenable to this rule.
2. SAME-IMPROVEMENT TO TAKE PATENT OUT OF OPERATION OF TIlE STATUTE. Clark's patent, No. 137,596, dated April 8, 1873, for an improvement in cor· rugated metallic iron shutters by the application of soft material to deaden sound, is an adaptation of a foreign patent, and a slight modification therein, whereby such soft material is fastened at intervals, instead of at the ends only, is not such an improvement as to take the patent out of the operation of 16 St. at Large, 270, (Rev. St. § 4887,) which limits its exclusive enjoyment by the American patentee to the time limited by the patentee abroad. .
In Equity. Andrew J. Todd, for plaintiff. Francis Forbes, for defendant. WHEELER, J. The plaintiff's patent No. 137,595, dated April 8, 1873, is for an improvement in corrugated metallic rolling shutters, to deaden or prevent noise in raising or lowering them by applying to them strips of soft or pliant material, fastened when applied in the width, to the top of the shutter at one end, and to the bottom at the other, and also at any intermediate points, as required, so as to coil up with the shutter, and form a cushion between the coils. It was preceded by an English patent, No. 1,322, dated May 2, 1872, which