310 state. It applied alike toal1 railroad corporations. There was no such exemption to this corporation in the original act which gave it poweido dobusinesB here. The -repeal of the act which secured the exemption did not divest it,oi,any right secured by its charter. By its repeal the corporation was placed upon the same footing it stood when ,the law was enacted that secllred the exemption. Exemptions are always matters of expediency, and not of right, granted on consideration of public policy, which the' law-making power can recall at its In this instance the legislative power asserted what we must hold to be an undisputed right, which, in its clemency to this class 'ofcorporations, it had not before enforced, and which was clearly within its power under the constitution. This is the view, we think,tbi:l legislature entertained when it passed the act; and our respect for its intention forces this conclusion upon us, from which escape. It i81rue, that the plaintiff had, without any aid from either county or sta.te, constructed its road, and it would seem to be unjust to require it to aid in the construction of a rival road. But this isa question' which addressed itselfa.loI)e to the legislature, andis, we think, outside of judicial domain; It was for that power to determine whether the act, when proposed, "was in derogation of natural rights" or not. It b,as\passed upon the question, and we think the plaintiff is conoluded by' its action. The demurrer must therefore be sustained to the bin 8sit now stands; BOND,
J. I conour in the above opinion.
LEONARD
v.
LOVELL.
((}ircult (Jourt.
w: D. Michigan, S. D.
December 8, 188ft) "
PATENTS-!M:PROVEMENT IN THE OONSTRWOTION OF REFIUGERATORs-:-INlI'RINGE¥ENT-WANT OF NOVELTY. .' -
A suit was brought to infringement of letters pllotent No. 261,736. for improvements in the construction of refrigerators. the particular feature being this: The ice-floor being in the usual position. two sets of cleats are attached to the inside of the refrigerator case, at each end of the ice-floor. and extending perpendicularly from the ice-floor to the top of the case, and are in pairs. These cleats are arlitnged by twos, and parallel to each other. but a Httle distance apart, so as to forp:1 a groove, Into these grooves; and from the top. is slid the partition wall, so as to touch the ice-floor; but, being narrower than the height of the' chamber, leaves the necessary opening for t1?-e warm air to passovf.it at the top. claimed being that the wallls thus made whereby cleanslllg walls of the flue is facilitated. Held, invalid for want of novelty, and not infringed by defend. ant's patent, No. 2 9 5 , 2 5 9 . ' .
In Equity.
V. LOVELL.
311
Edwa.rd.'rpggart, for complainant. . Lo"isS. /:Jovell and Joyce cf;Spear, for defendant.
SEVERENS, J. 'l'he bill in this cause was filed in behalf of the com· patent No. 736 plainant, L,eonard, who is the pate]J.tee in for improvements in the construction of refrigerators. He alleges that the defendant,IJovell, professing to be engaged in the manufact· ure of refrigerators under letters patent No. 295,259, is constructing and selling what is, in substance and effect, an infringement upon the. first.mentioned patent, and he prays for an injunction and an The defendant's answer admits the issuance of the pat. ent to complainant as stated in the bill, and also admits that he, the defendant, is. manufacturing refrigerators under the Lovell patent, he denies that the was the original denies that they inventor of the devices claimed to be prior pat· constitute. a Patentable invention, and designateE! ents which the defendant insists anticipated the.apecific features in refrigerators which the complainant claims. a:J:epove:J:ed by his pate:pt. . '. .1, . · bas been taken, but the substance of it consists. in the sPeQificjI,ti.ons, for the Leonard and Lovell refrigthe speci,fiCl:J,tioDS, claims, and iHqstrations of the following patents : No. 201,1713, to' D. S. Stevllns, of date March 26, to G. F. Smith, October 22, 1878; No. 175,,143, to C. B.· Page, :March 21, 18'"76; No. 225,595, to Hale & Ramsey, ,March 16, 1880; No. 222,604, to Scott, December. ,16, 1879; No. 204,216,t9 R. T. F.[ambrock, May 28,1878; No. 62,643, to W. Lane, March 5, 1867; No. 133,147, to J. H. Fisher, Novem, ber19, 1872; and No. 207,356, to W. Horn, Jr., and others,,!ugust 27, 18J8;, The app}iclttion for the Leonard patent was filed June 13, )8$2, and that for the. Lovell patent, January 23, 1884. yarioullclaims covel'ed. by the complainant:s patent, were in the beginpingpf t:Q,e present controversy, alleged by him to be infringed bythe defendant; but in the end the contest has been brought upon th,e limits of· a single grouJ;ld, wpich will be indicated,after somepl'elitninary· suggestions. The first and principal in,quiry in the case arises out of the claim put forward in defense t,hat the patent of tpe complainant is void because-First, the invention is not original; second, it is not pat. entable for the reason that such invention, so far as the claim alleged infripged is concerned, was only that of ordinary mechanical to skill. and does not rise ·tothe quality of inventionintended to be pro. vided by the patent laws_' ;., .Refrigerators of different sorts have been in use for a considerable period, liifferently classed because constructed upon different. pIes. The present controversy relates to the class constructed upon tP,epr.inciple of a box Qr. oflos6 divided into two main com,partments; !.
312
FEDERAL REPORTER,
an upper one for an ice receptacle, and the lower for a chamber in which to store provisions or other material to be refrigerated, with an :>pening from the upper or ice compartm(mt downwards into the provision chamber, and another opening from thence into the upper part of the ice chamber. Thus, by.utilizing the natural law that the colder air descends and the warmer rises, a constant circulation is kept up until the ice is dissolved, and the motive power is dissipated. In carrying this principle into execution, the general plan on which prior patents have gone is to create an opening 01' openings, either by slots covered by projecting shelves or by round apertures protected in the same or some similar way, through the bottom of the ice-box, through which the cold air from the ice descends into the lower chamber, and to construct flues along the outer walls of the refrigerator, from the lower chamber to the upper part of the uppercbamber, from which the warm air ascending from the lower chamber is drawn thl'ough an opening inade for that purpose, again cooled by the ice, and forwarded through the same route in repeated Cir(lUlation. The sevard patents il!lsued anterior to either of these in question, and illustrations of which are put in evidence, were designed on this principle, and-adopted such a method' of construction. In this method the wall, of the refrigerator was generally used as one wall of the ascending flue, and either a fixed inner wall or the side of the ice-box served the double purpose of ret'aining the ice in place, away from the refrigerator wall, and o{forming an inner wall for the warm air flue. In some of the patents the inner wall of the flue was not carried to the top of the upper chamber, but a space was left between the top of wall and the top of the box,for the circuit of air above mentioned. In the case of the Stevens patent, the side of the ice-box constitutes the inner wall of the warm-air flue. The specifications indicate that the ice-box is made so as to be removable, ("detachable" is the term used, but this, I· take it, is equivalent to "removable,") and preferably otopen work.. This box or cage rests upon the ice-floor, but whether it is removable by lifting out at the top, or drawing out through the door in front, is not quite clear; but I infer the latter, from the use of what are designated "guide-strips." In this arrangement the air would be admitted from the flue to the ice at different heights, through the open work of the side of the box, instead of being all admitted through onl3 opening at the top. Mr. Leonard's patent was designed to cover certain claimed improvements in the construction of the ice-rack, and the cold-air opening below, and its protections; which are features not now material, all controversy apout any specific infringement of these having been abandoned. - Bilt the patent also covers a claim for an improvement iIi the construction of the inner wall of the warm-air flue, and which is also the end wall of the ice-box. The particular feature is this: The ice-floor being in the usual position, two sets of cleats are at-
LEONARD 1'. LOVELL.
313
tached to the inside of the refrigerator case at each end of the icefloor, and extending perpendicularly from the ice·floor to the top of the case, and are in pairs. These cleats are arranged by twos, and parallel to each other, but a little distance apart, so as to form a groove. Into these grooves, and from the top, is slid the partition wall, which descends so as to touch the ice-floor, but, being narrower than the height of the chambet:, leaves the necessary opening for the warm air to pass over at the top. The advantage claimed is that the wall is thus made "removable," whereby cleansing the walls of the flue is facilitated. It is said that at that point the condensation of the warm air is :nost rapid, and the depositions of impure matter on the walls is greatest. The Lovell patent is like this in this feature, except that this wall, instead of being run into grooves at the end of it, is attached, at its upper edge, by hinges, to the wall of the case, and, hanging in towards the ice.floor, rests upon the upper edge thereof. So, of course, this partition wall could be lifted in and up, upon its hinges, and its own weight carries.it back to its place, so that its lower edge rests upon the end of the ice.floor, as above stated, and it is perforatooto permit the passage of air. But this partition is not removable in the sense that it can be taken out of the refrigerator. ,The defendant, however, uses a different method of construction; and, instead of the hinges and the lateral fall of the partition, he brings the partition to a perpendicular position, from the end of the ice.floor, and runs a rod from front to rear of the refrigerator, a little below the top, to which rod the upper edge of the partition is attached. The lower edge is prevented from going baCK into the flue by the turning up, like a flange, of the edge of the ice-floor. Thus, it will be seen, the position of the partition is the same as in the complainant's patent, but the attachment is different, and, while it is movabla, it is not removable in the sense of being susceptible of being readily taken out.. It serves the same purpose, however, in affording facility for cleansing the walls, that the complainant claims for his device. With this description of the elements of fact in the present controversy, and which is as definite and clear as I am able to make it without the use of diagrams, we are brought to the substantial question whether this device of the complainants of a removable partition wall is such a new and useful improvement as to constitute a patentable invention; and it seems to me that I cannot hold it to be so without disregarding the plain doctrine on this subject towards which the supreme court has been verging for 30 or 40 years, and on which the law is now quite securely anchored. It appears to me, from as careful a study of the decisions of the court of highest authority on this subject as I am able to make, that the settled interpretation of the true spirit and meaning of the patent laws is that they were enacted for the purpose of stimulating the activity of inventive genius in the production of new and useful contrivances and products for
314
FEDERAL REPORTER.
the public advantage; and that it was not the purpose of those laws to protect as a monopoly, for bhe'advantage of any individual, the uct of the exercise of that common skill and mechanism which are the proper and expected work of artisans trained in the dexterities and science of their trade to the higher standard of its art. Not every trifling device, nor any obvious improvement in the material already possessed, 'is intended to be rewarded. The decisioDsto which I have referred are to be found in the following cases, and others occurring between, in the reports of the supreme court : Hotchkiss v. G-reenwood, 11 How. 248; Phillips v. Page, 24 How. 164; Stimpson v. Woodman, 10 WalL 117; Hailesv. Van Wormer, 20 Wall. 353; Smith v. Nichols, , 21 Wall. 112; Brown v. Piper, 91 U. S. 37; Reckendorfer v. Faber, 92 U. S. 34't;Dunbarv.Myers, 94 U. 8.187; Pearcev. Mulford. 102 U. S. 112; Heald v. Rice, 104 U. S.737; Vinton v. Ha,milton,Id. 485; Hall v. Maeneale, 107 U. S. 90; 8. C. 2, Sup. Ct. Rep. 73; Atlantic Works v. BradYr 107U. 8. 192; 8.C.2Sup. Ct. Rep. 225, which is an espe.. cially valuable and prominent:CQse, where Mr. Justice BRA.DLEY explained, in clear and admirable i1anguage, the intent and purpose of the statutes. ,Another valuablecttse in the same volume, and quite of the present, is Slawson v. Grand-street R. 00.,107 U. S. 649; S. C. 2 Sup. Ct. Rep,. 663. Following these, and fortifying and solidifying the doctrine, are Estey v. Burdett, 109 U. S. 633; S. C. 3 Sup. Ct. Rep. 531 ; Double-pointed Tack 00. v. Two Rivers Manuj'g 00., 109JU. S. 117; S. C. 3 Sup. Ct. Rep. 105; King v. Gallun, 109 U. S. 99'; S. C. 3 Sup. Ct. Rep. 85: Bussey v. Excelsior Manuf'g 00., 110 U.S.T31:S. ,0.4 Sup. Ct. Rep. 38: Pe:nnllylvania R. 00. v. Locomotive E. S. T. GP., 110 U. S. 490; S. C. 4 Sup. Ct. Rep. 220; Phillips v. Detroit, 111 U. S. 604: S. C.4 Sup. Ct. Rep. 080; Morris v. McMillan, 112 U. S.244: S. C. 5 Sup. Ct. Rep. 218: Hollister v. Benedict, etc., Manufg 00., 113 U. S. 59; 8. C. 5 Sup. Ct. Rep. 717; Blakev. San Francisco, 113 U. S. 679; S. O. 5 Sup. Ct. Rep.692: Thompson v. Boisselier, 114 U. S. 1; S. C. 5 Sup. Ct. Rep. 1042: Stephenson v. Brooklyn, etc., R. 00., 114 U. 8. 156; 8. C. 5 Sup. '. Ct. Rep. 777. It is true that language apparently implying a less stringent inter. pretation is found in the expressions of early authorities of high character, among them Chancellor KENT and Mr. Jus tice' STORY. These and other authorities are referred to in the dissenting opinion of Mr. Justice WOODBURY in Hotchkiss v. Greenwood, 11 How. 248. With the veneration due from one in this place, it would not become me to do more than to say of theirinterpretation that lam resistlessly borne in another direction by my MDstruction of the recent and authoritative cases. It may be that the constantly increasing multiplicity. of patents in branch of industry and manufacture has indicated the necessity, from public policy, of a more stringent rule,-one whioh should l"elieve those engaged in the common trades and avocations of life from tribute to those who drop down upon their tables in swarms, under
315
pretense of having the warrant of monopoly too often based on trivial grounds. And it may be that the increased facilities for education afforded by the public, and the quickened intelligence of the people, has carried the plane of patentable invention higher than where it once was. Of course, no reflection is intended in these suggestions upon the patents involved in the present suit. But notwithstanding the presumption arising from the granting of the patent, upon which the complainant's solicitor lays much stress, and which. is primafacie undoubtedly entitled to some weight, I cannot think that either of these patents, in respect to the feature in question, covers any patentable invention. The flues at the side of refrigerator for conducting the warm air upward, and over into the ice chamber, are nothing new. The use of the wall of the ice boxiorthe inner wall of the flue is not new. In some of the previouspatents this was rigid, but it served the same purposes of containing the ice and making a wall of the flue. In the Stevens pattent, however, this side wall was removable. The cage or box for the ice was made either entire, part way up, or "preferably of open work." I do not see that it could be very material whether the air should be admitted to the ice box in one opening through the wall or many; the two purposes above alluded to are both subserved. The method of securing·the partition wall in the complainant's refrigerator by a pair of cleats at each end is an old and very common device, resorted to for the ·purpose of making a movable wall or partition. The instances of such use are too common to require mention. Now, is there anything new in the feature that the wall is removable? It is claimed that this makes it easier to clean the parts most liable to become soiled by impurities, and this I can easily understand and believe. But the corresponding wall of the Stevens patent was removable for the same purpose. It is true that Stevens did not in the claims appended to his specification allude to this feature of utility as promoted by making his ice-box I'emovable, but the facts contained in his specifications disclose this feature for all there is of utility in it; and the authorities are clear that a patent is avoided for the want of novelty, although the advantages of the device were neither claimed nor seen by the prior inventor, provided his specifications disclose it. Tucker v. Spalding, 13 Wall. 453; Stow v. Chicago, 104 U. S. 547, 550. The adoption by the complainant of the old device of securing the ends by a pair of cleats, whereby it was renlOvable, to serve the same purpose and no other than those accomplished by a former patent, and in no respect in any substantially different way, was not invention j at least, not of anything patentable. It appears that all the sides of the. ice-box in the Stevens patent came out together. Whether the one afforded more convenience in this respect than the other I cannot say j but it could have no substantial effect upon the 'feature of removability that, whereas in the case of the complain-
316
ant's wall it could be taken out by itself, in the Stevens patent the same proceeding which would take one wall would also take out the other three. This wall in the defendant's refrigerator, neither as patented nor made, is removable from the case; and it seems to me that the difference between 'it and the complainant's, in the principle covered by complainant's claim, is greater than that between the complainant's and the Stevens patent. However that may be, I am of the opinion that the variations from what was already accomplished in the design and construction of refrigerators at the time when the patents in question were applied for were not, in respect to this peculiarity, at least, the result of such original invention as is intended by the statute. · Upon his specifications, Mr. Leonard also claimed the results from a combination of his ice-floor and his partition wall; but, as this is not much dwelt upon in the argument, I notice it only to say that, both the elements of the combination being old, and the constituents not qualifying each other in any'way. the combination is not pat. entable. Pickering v. McCullough, 104 U. S. 310. lt follows from these views that the bill must be dismissed.
WATERMAN
'l1.
MACKENzm and another.
(Circuit Oourt,8. D. New York. December 22,1886.) PATENTS FOR INvENTIONs-SUIT FOR INFRINGEMENT-TITLE OF COMPI.A.INANTASSIGNMENT-LICENSE.
February 11l, 1884, A., the owner of a patent, assigned it to B. November 20, 1884, B. granted to A. a license to manufacture and sell the patented article. November 2G,1884, B. assigned the patent to C., who assigned to D. April 16, 1886, B. assigned to A. all her right. title, and interest in and to the patent. April 24, 1886, A. filed a bill against E. to restrain him from infringing the patent; the assignment to C., which was made to secure payment of a joint note executed by B. and A., being still in full force. Held, that A. had not the legal title to the patent, and could not maintain the suit.
In Equity. Suit for infringement. The bill, based upon letters patent No. 293,545, was filed April 24, 1886. In July, 1886, the defendants filed a plea, alleging that the complainant, when he commenced the action, did not hold the legal title to the patent. Issue was joined on the plea. It appears from the record that on the thirteenth of February, 1884, the complainant assigned the patent to Sarah E. Waterman. On the twentieth of NovemlJer, 1884, Sarah E. Waterman granted to the complainant a license to manufacture and sell the patented article. On the twenty-fifth of November, 1884, Sons, and on the same day she assigned the patent to Asa L. they transferred it to Asa L. Shipman. On the sixteenth of April, 1886, Sarah E. Waterman assigned to the complainant all her right, title, and