vol. 41· , 11"1 "
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ReV. St. u. s. § 4929, prov.i6:ostltatalt1person · · *who;Ws'inveiite4 and pro, , or patterlJ, ,It It, or "'wdrlted i"OO, any article of man'l:(actUt'El, "may obtain a patent therefor as provided ',ill tire oaseot ilWenticlI:lli' or. liliseo"etiesl,r The claim of, delHgn: pa.tent' No, :}6,039, gran,ted for "a dl'l8ig.nior:. asewi.ug'-,mQ9hine 'o6$e. consisting ,of the rarsed panel,A,divul'ed into a series of 8ptaller I1anels,a, 'the,main patieli'.B, and fluted,or 'delldllll?cQmersj the' iJ&ueIsclellcrll>OO 'being on
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COVERS.
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-,; :the corneli,-and the pateDtia th6reforeitoid. ' : 'I-';;j'" ! ' ; ,",' .. 8.ulL" ' i i : , " " ' " ;.' "';', 'HI' ,,', ,': ") "',;,/ , , " I .' , ' , 'The first clatm of 14, .laas. to Nh'h\lll!oS 4J B''Ulii is. for'"the design for the brnam6iitatiou Of seWiDg'..maclhne cases! '." ,'It .. :,' 9UI;le Gothic top, 'OeMS, $,114tii f,ringedmil, 'C, "! : 'The , is for tlie ,by 1,',1, "on 'thll':tt6Iit :Of'l1he case. lator ,; ,! I;
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"', . i1 \T61i1f G. 'EWtbtt, 'f6r complainant. :" .\1'1';
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') ThIS' is:a. bin' tfot' lie! deS'Jgn' for !f.0'.' 16,
case," duly 'lilid; patent- No." 16 ,grl1,riterl.' 'a:e Ifhe saine :S;UlI, "4esign for a s'ewill'g-maciliHie,"biise" and duly df three' alid bne-'h,alfY'eara. ; Patent "Nb. describes the 'design ltS'.f611b'Ws: ; , .. "."' })anel\' ,raised' panel Is <Ii Ipto series tbt lib.gular cu'tsor grooves elttandikg 'at '1'lgIJt angles,'aiid: spaced to, SUIt s\\htl ,transfer or ornamentias seemd'El8lmllls·to:pnt on:tbe saine; 'each panel being . ,em all.sidell by the angular catsi .,', ! . ' L,JTl1Wcllse hAs' fibted 6r vertically, or at right angles with the-baSe of 'the 'case; arid'the' IS: .. A. design for a sewing-machine case consisting of the raised panel, A, divided into a series of smaller panels, a, the main panel, B, and fluted or beaded corners, c, as shown and described." The second patent, No. 16,040, describes the design as consisting of a ·front and main panel to a sewing-machine case and a raised center panel j the center panel being surrounded by a border consisting of a series of beads and grooves, forming a convex and concave border, being separated from the center panel by a bevel cut! which is deeper than the concave
April}'4.
,I;!UII,
of
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'lJ. BAUERLE.
779
This border'crOSses at the comers,and fornisaround eight distinct and smaller panels, the center panel being beveled ontl:\eedges; the bevels on the center panel and border panels extending on a straight line, and parallel with each other. The case above the main Pltnel has a fringed rail; the fringe being cut entirely across the edge of the rail. The case has roundecl corners, with transverse raised beads in center and at both ends thereQf, and has a Gothic top, moulded, with a series of beads in center and large concave on each side, * * '" aU· running parallel with the top of the case; and the claims are: "(1) The design for the ornamentation of sewing-machine cases; the same consisting of the Gothic top, D, haVing a series of beads, f, and fringed rail, C, as shown and described. (2) The design for the ornamentation ofs6wingmachine cases; the same. of the main panel, comprising the ter panel, 0, surrounded bythe bordet, a, formed of a series of each other at the corners, liS shown and described. (3) The design for the ornamentation of sewing-machine cases: the same 'consisting of the Gothic top, D, haVing a series of beads,f, and fringed 'rail,c, al'ld the panel, C,surro.unded by the border, a, as shown and described." '
cut
The·defenses interposed are (1:) that the patents are each of them void· for wanLofnovelty; (2) thafllefendantsdo not infringe; (3) that both these patents are void, except aEl to the second claim of No. 16,040, 'beCll.use'a:n the other claims are for more than one ornament. It may, I think, be said that, these patents having been applied for by the'same V,erson, and' having been· issued on tMsame day,each qualifies and lifuits the other; that is, that what is found in No. 16 1039 which 'is also found in Nt); 16,04;0 must be considered as belonging to No. 16,03\hnd to'quaIifywhateverthere is of the same character 16,040. 'Defendants addlitthat they made and sold in August, 1886, a small riu#l'ber'ofsewing-machine covers like those shown in No. '16,040; but say tMt,' 'on being notified. that they werefnfringing c0Il?-plaillant's patent;' they stopped makiug covers; and' the proof, t thihk, AUP-' ports this allegation. This musdje taken as an admission by defepilant.'\ of liability to SOme .extent for irifringementofpatentNo. 16,040, if such patent is Defendants also admit that; since they abandoned. the manufacture' of sewing-machinec(wers like those described in patent No. 16,040, they have manufactured', sewing-hllicbine co:vers substantially like co'mplainarit's ExhibitsA;B;and C. ' I Section 4929 of the Revised Statutes, under which these patents were granted, readsRs follows: ' "Any pet80n who, by his own industry, genius,efforts, and Ilxpense, haa invented and produced any new and original design for a ma'nufacturt'. bust, statue,aUo-relievo, or bass-relief; any new and original design fonhe'printing of 01' other fabrics;' any new and original imptes8iuD, ornament, patent, print. or ,picture ,be printed, painted. cast, or otherwise placed On ,or into of manulacture;or any new.Ql:!llful, and configuration of. !iny article of .same n\>t . haVing been knQwn or used by others before .his invention or production!, thereof. oj, 'patented or descriLfJd in allY printed 'publication, may, IJpon, payment of:the, prel:!cribed, and other· due: proceedings had, tile same a$ in' ClJllel:! of a patent therefor."J
780
FEDERAL REPORTER,
vol. 41.
. It will he seen that this statute authorizes the iS1lue ofdesign patents j of several different descriptions; (1) For any new andorigillaldesign for a mannfacture, bust, etc.; (2) for any new and original'design for the printing of woolen, silk, cotton, or other fabrics; (3) for any new Bnd original impression, ornament, pattern, print, or picture, to be printed, cast, or otherwise placed on or worked into any article of manufacture; (4) for any new- or original shape or configuration of any article of manufacture. As to patent No. 16.039, the patentee says in his specifications that he has originated and invented "a Dew and useful design for a sewing-machine oose," and that the photograph attached to the patent shows a view in perspective of a sewing-machine provided with a case constructed· according to This language would naturally the designW'asfor an entire case, but seetn to the full shows that th El design is only. for a the.pase,and. the sewing-machine case as an ,article of manufacture ,or configuration of the case, but only the frorit panel and comer,sothat this design is really for the orq()Vl'lf, and not for: the entire cover or main panel of the front of a sewcase. The specification with a in the center, tind panel .bybeads and grooves, and ,also is 'uiVided into series of t.he beading of sU,ch cnseby yertical belldsor fIHtings; .and the qlaim is fqf a geaign for a sewing-machine case consistipg Of this large panel, . penter paneldiviped into.a series of sI11allerpanels and the fluted, headed corners. As I construe this patent, theclairn, is for. front' 'main panel', from the central .part. of which the rllised rises; (2) a oe11tral raised panel divided into a sedell of smaller, ,Pflnels by a Of,angular grooves,at, .right angles to. other" these, angular grooves each of smaller Pll.:ne1s more beV:eled, acpord,tng ?btuseness of the,angular grQOveSj (3) the flutedoi- beaded cqrners;' or heading being vertie.al, or at'J;'jght angles .to. the ,base of the Case,· The arises, is not t,bis a design forJwo ornar'nElnts instead of One; that it1, a design for the iront panel o(asew:ing-macpin<;l coyer, with a raised panel divided into a. series of beveled subpanels, aQd a design for an ornament to the corners of tile sewing-machine case by flutings or beadings? The two qevices have no necessary rel!ltion orOOl111ection with !lach other. Each is complete by itself, and neither is necessary to ,the other, so that, it seems to me, we hav,e a patent for,twoseparllote ornaments.. The statute glyes'a patent for an "ornament":to lJeplaced on or worked into any artiQlq of manufacture, and an 'foimament" may. be composed of more than ol1aJigure, but t.he figures or lines n':IU'at all be necessary to make the one ornament; that is, more than otia, ol'combination of lines may be ' to make one drpal,rieilt';'but one claim can.oot in no way to each, other. TnJs panel front and beaded corner not parts of ones111g1e ornament,. IS an ind'ependent ornament; neither in any way relying for its effect upon the other. It istrue,tha.t
or
DUKES V. BAUERLE.
781.
may present a more pleasing and attractive appearance by having both these ornamentil upon it, and it may be more ornamented thereby; but they are separate orlll1ments, and not parts of one ornament. It is probable that a design patent may have different claims for different ornaments to be placed on the same manufactured article, but I am quite dear that a single claim cannot cover several ornaments in no way de. pending upon each other. It would be like joining ina single claim in a mechanical patent two different machines, having nothing to do with each other. It would not be a valid patent for the two, because they do not belong together; and it would not be a valid patent for one of them, because it would be impossible to tell which of them the patent-office or the inventor intended should be protected or covered by the patent. It is like multifariousness in pleading; the two unrelated subjects neutralizing and defeating each other. In Simpson v. Davis, 12 Fed. Rep. 144; the court said: . . "The difficulty with the claim does not arise from want of novelty in the forms employed, nor yet· hi the want of novelty in the method of arranging these forms, 'because, simple ·as the arrangement isdbe case furnishes no evidence that a sCl:oIlapd roses, were ever before oneabow·another, with only ab\lad between;bi:lt I find it difficulqp,collsider that th,escroll, roses, and bead, wh.en arranged as described in .ornamef!.t. There is no commingling of the lines the scroH; th.e bead! and the roses. No new idea seems to be embodied in the method of their arrangement. An that bas been done is to place tbesedistinct and welt·known .orQamen1;s ,one above the' 01 her. without the production'of any such 'dombined the w,bole tp be treat as a newandorigin<ll oruiJ,Q1ent. ".Nq effect as tp llew bas in fa,Qt been produced." . . . . So here we .have two separate ornaments, each acting by itself in· the .ornamentation of the case, but neither of them depending for its effect upon the other. There is no grouping of the two ornaments together so to make them practicall'y one ornament. I am,' therefore, of'Opinion that patent No. 16,039 is void, and gives no right of action to plainant. But, if I err in holding this patent void· for the reasons as· :signed, lam still of opinion that complainant hall no right to a decree; upon the.ground of invalidity of the patent for infringement, for reasons which will be hereafter given in considering the ' . -other patent. ra,tent No. 16,040, shows a sewing-machine case, the front of which .consistso.f ,a main panel, in the center of which is a raised panel with beveled. edges;' ,and around this central raised panel is a series of beads .and grooves which cross each other at the corners,and form .around; the .central raised panel eight smaller panels. Above the main panel isn fringed or notched rail extending the length of the panel. Whitt is called in the specifications the "Gothic top" or roofofthe cover:bas:a series of ,beads running its entire length in the center, :and Cdncave ctitstboth'above :and below these beads, and parallel to the beads.: 'The first'claim of pateut isfoT the ornamentation of the sewing-machine <case byt top, with a series of beads and the fringed ing, the ,plaQe:'of -the frieze' in the 'cOrnices pf'ordinary
782 wQodeo!
FEDEBAL BEP02TER,
The third claim; is for theorllatnentation of a sewingior, CQv:er by the Gdthictop, havinglB.' series of beads, the fcr:ingedi rail,and the raised :panel,] surrounded· by the beaded border" as sho,wn."l What:,!: have said; in regard to: the single:eJaim of the preceding 'applies with equal foreete>' both these claims; that is, they ,8;le, :fOE , more thall oue ornament, insteard:of,for a single ornabeing f(j)i' the Gothictopamdthe fringed rail; each beingseparatei brnaments, /tod,the third claim being for the Gothic top, the fringedrailj the raised all of which ara separate ornaments. . ':I'biscbrongsme:to,'consider the second claim, which is for the panel with thecentcl'panelsurroundedbya beaded border, as described,this claim beingeimply,foranornamentedpanelj the,ornamenting consisting, merely ,in the raised the beaded border around it.: Panels .with21'aised centers are old. We, see the doors and wainscoting of our dwelling-houses, in the furniture of OUDI homes, and where we gQ' So, ; of panelsis; old.,; i iThe desk land doors of this court.room show panels with raised centers :andrbeadsupon and around the' . The proof also a center panel sttflr6,bnded by grooves, it is true, c6nnguratiQD, tQe at the same it' J ' border which: ·dlv.Westhe main panel intoseveraLsnmller panels. ,I refer ,to the exhibit described as the SG, toQ, patent No. 16,039 iefor, a panel with a i'ttised· center;' 'raised .· :qy beads groovings; and what possible inveri'tion is there in'producIng thisfO'rm production ofth e panehhownin patent No. is :trllethere is some slight difference in the' shape of the grooves and be&ds, but notsllcha.,changeas to require invention. 'There is alBo,a.n, 'case:of a "Remington cover" which ,shows a main panel with ,the 'ceritral:partra4sed, 'and grooveS and· beading surrounding tbemoln panel. "':I'hiscoDsti'uction or desiguis much older, ,a,the ,proof:ehows\l than the complainant's patent;,'arid I think it may beproperl,y ;asked,what inv'entioncan! there be in running a grooved and ooaded,::oarder.: araundthe central (fllliSed panel, when it has been done before around the main panel? The proof also shows the use of grooves aind' beadings 'lUToundthecentral raised panels ,in whl1t are described! in the proof, as ,the f'Chapman bureau" and the "elevator cab" panels. 'l'hesetwo last fOl'insof,eonstroctiori:are not set out and alleged as anticipationsinthelRbswer. hutomy, I think, with propriety; 'be referred to Mshowing the sta.te of-the art at and lora long time befura this intTent4 0l'J :entered, 'the fiel<i,.iLsuch proof is' necessarr, and not a part of our Oomuilln knowledge. With ,thisproQf :before us, ItMnk neither of the olaims:o£:!tm, patent etm be 'sustai11ed i aSnoveh.nd original, :because there ds :notldnglbut'll, mere change ofloeatiQn, to say the irigSdlOd been known for many years; ,shown by the circulars. and exhibits in evidence thilltm.SBj to,:suclu,n, extenUhat, it seems to ! me" changes shown
fs'
. j'
, DUKES V.BAUERLE.,!,!.:
'783
,in:this':patent' from the older art could nothaY6' requ,ired· anytliinglike :inventive talent 'or genius.. ,The mere· change of locad:iou o£ grOOVeS! aud they have been adopted as a mode- of ornamentation for this class or manufactures, from the .outer border·,0f. the main :panel . to the outer :barderof the central raised panel;. seems tome the work.of amare.meohanio/and not invention, orthe worko! genius., ,The ReIb· . ington. cover, towhiahI have referred, shows also 'a; Gothic top ·with :.beads And grooves and concave cuts running lengthwise,':which,:whHe .like thos8.describedin the patent,seem!to,:me be all:; ailticipation:oHk I It Also shows a :mil, below the:oOrbel'l, as well as the center panel and grooves, to "'hiebr! have in Co.llsidering the validity of the second claim; and, with this form of orna· mentation in the art, I cannot see any novelty in the Gothic top and fringed rail, and main and -oontral raised panels, of this patent. But, if there is room for doubt upon the question of the novelty of these designs, or the validity of these patents, or any of the claims, for doubt that the defendreasons before ants do not in.nnge either of these patents further than what is admitted by the did'at one ,time.'make "a> few) covers like that described in No. 16,040, because Exhibits Band C, which are introof thede,fepdluft, .do not; have the, the,ceptral I nave :.a1ready/:§ai4;. w.aa ola, and.·toe centralpatiEll,. Py certain, vertical grooves and beadihg8' iri't'lie viciilit,l of eaeh end'{'l1rey'd'Q' not ha-ve the horizontal grooving and beading around the central panel, dividing it into smaller panels, and making a and beaded borderl3'lft-rtll!mding the raised part, which both these pateI'ltsoalVfoiL ., -Defendant's'case (complainant's Exhibit A) shows a raised 'panel')with' grooves and 'beads above and below, and diagonal cuts making groovings and beadings run'1ning'ae!osS·Jl.be faceof,th:etpanel'"but notsuuh (}ue8,'as are described by 'botb'of ooin plainant's patents,· which require the, grooves artd ,00 ,cross! each other at right inlgles, and which so differ inappeatance that "they :produce' an entirely difJereut effect up.on the eye from what is pro· -dueedby -defendants' caile,'{complainant's Exhibit A.) : , . . j ; ' Itis,.inanifesithat, .if: either of these pateritsis· to be .sustained, it must "be/in view 'of the' state of'the 41't, upOn the precise and special devices ,describ'ed'iri)andcowred by:them. The test that,any form which Pl'o· _duces the rsame effect upon the eye of the ordinary -observer as ,that 'pro'duced, by the design covered by the patent is arrinfringement,will,.if ,applied to 'the:complainantls patents, defeat both: oBhem, ,it Seems to me,because the effect'upon the eye Of the patent No., 16,· ;039 is certainly not essentially''different from! shown by,the<Jarey. this case, from theo:1derart,.andthe,Ste,vart, White,"and.'other Co.ve11sishown in the circulars in ;ev.idence . the Remington cover; ·with its,Gothic top, fringed. rail,. main plIDN,and , raised' oentral panel,: with :groovlngs and main "panel, ;arld th6Qeaded:comers, tome toOO,s:fu11. anticipatim, of
784
FEDERAL
REPORTER,
OOmpam!lDt'spatent No. 16,040... In other words, if these old cases had been,govered by design patents, there would be much more ground fOl'ttulintaining a suit for infringement against complainant by the use ofthe:designs covered by compWnant's patents than there is, it seems to mel tOr maintaining an action against the defendants for the manu· are brought in evidence as allegedinfringements. Being, therefore;, of 'opinion, as already ,said, that patent No. 16,039, and the first; of patent No. 16,040, are void as being for more ,·than'Oue:ornament in each, and that all these claims in both patents are anticipated by·theolder arl,and that· defendants do not infringe, the ibill is diBtnissed for want of equity.,·. "
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DUXES f1·. BAUERLE
et al.
. Letters,patent No. 16;040, granted April 14, 1885. to NIoholas A. Hull, for "a deliitn:·fol' the Orriamentation' of semng-maohine cases, consisting of the main panel. ;Bj .g, t.b.e b.Y the .bO.rder .. of a series or bea4s" are not Infring"d by a whose front Is a lingle pleoe extending from corner ·to COrnel'; with a 'riled iJ1 the center SUl'rOUDded by a grooved and tbere.1a no Pl'!lelon the front of Inoh oue. .
:rOB
COVBBI.
John 11.: i EUiott, for. C()rnplainant. Poale& !J.ro:wn,. for BLODGETT;,J.This,suit is for the alleged infringement of design patent No. 16;040, one of the' patents considered in .the previous ca:re. Ante t 778. It is not necessary that I should discuss at length the features: of this .patent, as they have been Jullyconsidered in the preceding opinion.' The infringement insisted upon in; this case is illustrated arid shown, it is claimed, by the complainant, in what is known in· the recordos"Complainant'sE?Chibit. Defendants' case D." With· out considering any other defense which has been discussed in the briefs or therecorlil.;.itas,sufficient, I think, to say that the defendants' case, ,in evidence" does not contain a front panel, the front of· the case being ,a single: pieceexotending .frorn end to end like, the side of a box, with a. l,'Jtwed ,centerl and around this center piece isa grooved and beaded uboJ;der.. ' What . I.havealready·'said in regard to the limited ,range or 8cdpe of, :thispatent, in the former case issuffici.ent, I think, "to show that this patent can only be maintained for the specifio device described in it, and certainly this defendants' case has not a pan· eled froiit.· Wabster defines a :panel "as a board having its edges in'serted,jp the groove ofa surrounding frame, as the panel of a
In Equ.itY.',i .