818
, FEDERAL RlllPORTER.
'PUETZ,
Jr.,
".BRANSFORD.
BRANSFORD
v.
PUETZ,
Jr.
«(]i'rcuil Oourt, E. D. Mi880Uri. E. D. September 80, 1887.) 1. PATENTS FOR INVENTIONS-ASSIGNMENT-JURISDICTION OF FEDERAL COURTS.
Plaintiff ass 1gned to defendant one-third of the right to an invention. The divided the application for the patent into three applications for ,as many-inventions. T,he question in issue was whether this subdivision of the chums divested defendant of his interest in one 'of the patents issued. Held, that this was a question purely of patent law of which the circuit conrt of the ,United States had jurisdl!Jtion. In an, action by plaintiff for infringement of 8, patent, a cross-bill by defendant, asking tbat plaintiff be compelled to assign to him a one-third inter· est in the invention to which he laid claim, is not germane to a defense. The matter should be made the subject of demurrer to the complaint, or other appropriate form of d'efense. In an action for an of an interest in a patent, defendant pleaded a former suit in bar. Plamtiff claimed the former suit decided the question of an interest in the invention, and not the question of an interest in the patent. It appeared that in the former suit it was alleged in the bill, and denied in the ,answer, that plaintiff was" the sole and exclusive owner of the patent," and the decree was in terms to the same effect. Held, that the plea in bar was a good plea.
2.
SAllE-SUIT FOR INFRINGEMENT-PLEADING.
8.
SAME-SUIT FOR INFRINGEMENT-FORMER ADJUDICATION.
Motion for Rehearing and Plea in Bar. See 31 Fed. Rep. 458. Geo. H. Knight, for Tillman Puetz. Paul BakeweU. for George W. Bransford. MILLER, Justice, (oraUy.) In this case the application {or a rehearing in the matter of the decree on the cross-bill in the original suit has been considered by us, and I have myself particularly examined the pleadin/2:s with reference to the main ground urged for a rehearing, and that is that it is founded on a contract simply, (and not involving the patent laws of the United States, so as to give the circuit court jurisdiction without regard to citizenship.) It is'true that the cross-bill sets out that there was an assignment by the plaintiff in the original bill, to the defendant, of an interest in the invention before the patent issued. If it were simply a question on the validity of the contract, or on its enforcement as a for an assignment of the invention, the objection might be good. But while the plaintiff in the cross-bill sets out the assignment of the interest in that invention to himself. the answer of the other party admits that assignment, and there is no issue at all on the question of the validity of the assignment, and of its being capable of enforcement, but the issue that was made is, and the question decided by the court is, that the application so made was for the invention which was assigned. The patent-office required it to be divided into two or three applications for as many different inventions, and the question that the court decided, and the only i3ne on which testimony was taken, was whether this proceeding of the
PUETZ tI. BRA.NSFORD.
819
\;.-atent-office divested the plaintiffof his right to one of the patents issued on that subdivision of the claims. That is a question purely of patent law, and one of which the circuit court of the United States has jurisdiction; and the question which he insists should divest the court, or which he insists was the one tried by the court, was not in issue at all. There was no denial of the contract; there was an admission of the assignment. The assignment stood as confessed upon the pleading, and that which was in issue was the decision of the patent-office upon that assignment. As regards that matter we think very clearly that the decision is right; that there was no error. It was suggested by myself, in the course of the argument, that the matter of the cross-bill was not germane to the defense; and very possibly, i.f that matter had been taken up on demurrer, or in some appropriate form, I do not say it is probable, but it is possible, it might have been made effectual at that time. But as the matter did have something to do with the patent, with the and with the machine, I would not be willing, on a suggestion made by the court, but not from the bar, at this time to reverse a decree finally entered and relldered on full consideration on a point not brought before the court, and which is of very doubtful propriety anyway, and which does not reach the merits. For these reasons the application for the rehearing in the original case is overruled. In an independent suit subsequently brought by Bransford, against the plaintiff ill the original Buit, for a decree praying an assignment of an interest in tbe original patent, the defendant has pleaded the. former adjudication, and it is difficult to see why it is not a complete bar to this suit. The counsel for Bransford argued, with a good deal of forcp, and ingenuity, (and I was rather struck with it at first,) that the matter that was decided in the former suit was a question of an interest in the invention, and not the question of an interest in the patent, and, if that had been so, I am not prepared to hold this plea good; but, when I came to look at the pleadings, it is perfectly plain it was an interest in the patent that was in issue and decided in the first case. The plaintiff in that case alleges in his bill, among other things, that he is the sole and exclusive owner of that patent, and of the rights conferred by it. The defendant denies that he is the sole and exclusive owner of that patent, and, after asserting that he had this assignment of the interest in the invention, he then repeats that he is interested in the patent; so that they raised, as distinctly as language could possibly make it, the question whether Puetz was the sole owner of that patent, -he having !Ulserted that he was, and the other party having asserted that he was not,-and the decree in term says that he was the sole and exclusive owner of that patent, and on that ground gives a perpetual injunction against the claim of the defendant under that patent, .and it is impossible not to hold that that was not an adjudication of the ownership of that patent; and therefore the plea to the bill setting up that Bransford was the owner is barred by the former adjudication, and is a good plea.
320 KEARNEY
FEDERAL REPORTER.
and another v.
LEHIGH VALLEY
R. Co.
«(Jt"rcuit (Jourt, D. New Jer8ey. September 80,1887.)
1.
PATENTS FOR INVENTIONS-lNFRmGEMENT-SPARX-ARRESTER.
Letters patent issued April 11. 1871. to Kearney & Tronson for an Improved locomotive spark-arrester, the specifications and claims showing a grating with vertical bars placed at the foot of the spark or petticoat pipe, etc., held infringed by a spark-arrester with grating consisting of upright cast-iron bars, with connections between them at intervals, leaving long spaces or slots between the bars, and only interrupted by the connections, exactly like the spaces between the bars required by the patent. Complainants' application for a patent was made prior to the date of the patent of one S., introduced in evidence as anticipating it, but was not dated until after the date of the S. patent. Held that, in the absence of evidence that S.'s invention antedated complainants' application, the pre· sumption was in favor of the priority of complainants' patent.
SAME-PRIORITY OJ' INVENTION.
S ..u m:':':"ANTICIPATION-SPARll:-ARRESTER.
Letters patent issued Apri'l11. 1871, to Kearney & Tronson for an Improved locomotive spark-arrester, the specifications showing a circular grate of longitudinal upright bars, marked D, and a tube, E, on top of it, extending upward into the smoke-stack, 'with the netting, marked F, around the top of this tube, to prevent cin,ders from escaping into the smoke-stack, held not ll,nticipated by Vanclain's spark-arrester, consisting of a perforated cylindrical box or screen in which the perforations or apertures consisted of latitudinal (horizontal) slots, cut out of sheet-iron, nor by any other patent. In letters patent issued April 11, 1871, to Kearney & Tronson for an 1m· proved locomotive spark-arrester, the specifications showed a grating with vertical bars placed at the foot of the spark or petticoat pipe, etc. Held, that the patent was not to be restricted to the use of a petticoat pipe, but such, pipe might be of any form or dimensions. "
4.
SAME-RESTRICTION OF CLAIM-SPARX-ARRESTER.
5.
SAME-REISSUE,.....NEW MATTER.
In an application for reissue of a patent, paragraphs explaining the diffi· culties and defects of prior inventions of the same character, and how they have been avoided by the new invention, is not that sort of new matter which renders a reissue void. In an action for the infringement of a patent, the defense of lack of utility will not be sustained unless there is the clearest evidence that the invention claimed is utterly frivolous and worthless; and the fact that defendants have used it, and infrlnged the patent, is a strong argument against such defense.
6.
SAME-UTILITY.
Elwood C. Harri.$, for complainant. Andrew McCallum, for defendant. BRADLEY, Justice. This is a suit on a reissued patent, brought for an injunction and damages. The original patent was granted to Kearney & Tronson, April 11, 1871, for improvements in on locomotives. The, spark-arrester thus patented was located in the smoke· head of the boiler, instead of the smoke-stack above. It is described in the specification as follows:
"In the unoccupied space in this smoke-head we place a grate, the peculiar features of which are its perpendicular bars, with fixed apertures sufficiently fine to stop the sparks that come from the fire; the size of the grate being determined by the area of opening needed for the regular draught and escape of