LALANCE & GROSJEAN llANUF'G CO. V. HABERM,A,NN MANUF'G CO.
375
die that would cut a bretzet Butler v. Steckel, 137 lJ. S. 21, 20, 11 Sup. Ct. Rep. 25. But in any view the invention is a narrow one. The prior art was full of machines for molding 'l1nd pressing plastic material by means of a die and plunger. Several of these machines are shown in the record. It is entirely clear that the patent cannot have a broad construction and that the doctrine of equivalents cannot he invoked to bring within the claims structures which do not contain the features expressly made a. part of the claims. Derby v. Tbompson, 13 Sup. Ct Rep. 181. Confining the claims t-o the apparatus deseribed, the defendants do not infringe. They do not use a holder which imparts a final finish to the candle, for the reason that it does not completely inclose the candle. They do not employ two dies at. opposite ends of the holder. They have a single die at one end for molding the coneshaped foot, 'after the wax has been softened to make it plastic. While this operation is being carried on, the tip of. the candle is held firmly in a cushion or bearing to prevent the candle from slippi.ng when subjected to the action of the plunger at tile other end. This bearing or cushion does not impart any form or finish to the tip of the candle as does the complainant's· die; its office is solely to hold the candle in place. The fil'St claim contains the following elements: First, a tubular holder for embracing the body of the candle, second, a die at one end of the holder, and, third, a pltinger at the opposite end. A machine which infringes this claim must be constructed with the· die and the plunger at opposite ends of tM holder. The cushioned support used by the de$endants is not a die. Therefore there is no die opposite the plunger end of their holder. Indeed, it is doubtful if they employ the first element of the claim. Their holder embraces a part of the candle only; it is. not adapted., to straighten, smooth or finish the exterior of the candle, or permit it to expand circumferentially. The upper part of the candle is not touched by the holder in I:I>ny way. Of course, if the first claim is not infringed neither of. the others is, as both of them describe a holder with two dies, one at each end. The defendants, as has peen seen, use an apparatus having but one die. The bill is dismissed.
& GROSJEAN MANUF'G CO.
v. HABER1\'IANN :M.ANUF'G CO. December 22, 1892.)
(Circuit Court, S. D. New York. 1.
PATENTS FOR iNVENTIONS-SUFFICIENCY OF SPECIFICATIONS-DESCRIPTION.
The fil"8t claim of letters patent No. 270,094, issued June 5, 1883, to Emile Kegreisz, covers an improved proc of giving a variegated appearss ance to the ornamentation of enameled ironware, by recoating it with a colored liquid after it has been enameled in the usual way. In the specification the process is described as follower: "After the ordinary process of enameling has been completed, I prepare a thin glaze eomposed of coloring matter that can be made to remain mechanically suspended a short time in water, and apply it to the article. * * * The glaze should be made su1ficiently thin to avoid being pasty, so that it will freely spread or run over the surface. * * * The glaze will be found to separate and coagulate in irregular spots," etc. Held, that the patent is not invalid for insufficiency of description, in that it does not state that the enamel must
376
:tEDElU:L REPORTER,
vol. 53.
be'coi.tfseground, so as to remain' but a short time meqhanically suspended; for one skilled in the art know that the result could only be ob· t;aipe(lby the use of coarse-ground enamel. ' 2. SAM;ll:-:.,IHVENTION.
In'vlewof theiact that Kegreisz was the first to perfect the art, and makcfWn' commercial su')Cess; and., that the' goods are pleasing and orna· mental, and have become popular with the publio, it must be held that t:q.e dl.$oQvery of the prooess Involved the exercl.$e of Inventive faculty. . . ' ·
.' .
8.
AntiCipation of the patent by the Vollrath process was not suffiCiently sJ.,lowp, the evidence thereof being that of witnesses who attempted to complicated process,practioed by them 10 or 15 years ago, and WhO didlnot agrE'e as tollie, C30Tlwosition of the enamel then used, 01' the had In vlewiPJldit that the results produced by tha.t were crude and ungainly, and that Vollrath himself, In his 1881pateht,' stated that tllemottled ,appearance was due to an oxidation of the metal lJ1lrface during the operation of, drying, (a process entirely foreign to that of the plltellt,) 'and it alsoa,p»earlng that he is himself a lioemree 1Ul4e,r the patent,...,ap,osition wholly inc()p.$tent with the theory tl).a1; he .was the first inventor. ' The olmmis In:fringed by one, who employs the Ililme process, although :he a(ldo;J thereto l.'nother step; namely, that of shaking the article after it ! 'htlfil dip.ped In the glaze.: Plor<ler to ,h!lstentl:\e p,rocess of accumulatto prodllceJpe mottl appearl,lllC since this kind of :d ' tnlWipulatlon was well known in the art of enameling. .,",",;,"', . "
4. Sili..,....INFltINGEMENT.
In Equity, On final am by the La,lance & Grosjean Manufacturing Companyagainf!lt the Habermann Manufacturing Oompany for ofa patent. Decree complainant. ,Artlluf for ,Robei1; N. Kenyon, for defendant. Judge. The complainant sues for the infringeCOXE, ment of letters patent No. 279,094, granted to Emile Kegreisz, .Tune 5, 1883, for an improvement in the. ornamentation: of enameled ironware. Tp.e invention consists ill an improved method of giving a variegated appearance to the ware, by recoating it with a 00101'e<1 liquid after it has been enameled by the usual method. By this process imperfections are concealed; and an irregtilarly mottled, Wu.vy appearance is imparted to the article reooated, which enhances its beauty and value. The specification describes the process as follows: "After theQI.'d,lnary process. of enameling has been completed, I prepare :1. thin glaze, composed of any Cf)lorin:g matter that can be made to rpmaln mechanically suspencdc;!l1 a shOl't time water, and apply it to the article, preferably either by immersing the llttter in a tank containing said glaze, or by pour· ing the glaze upon'the article. The glaze should be made sufliciently thin to avoid beingplISty, so that it wU1 freely.spread or run o:ver the surface. After the article, .has been submitted to. the .second bath of thin glaze, the latter will be fOlllld 1;0 separate and coagulate l.n irregular spots upon the smooth surface formed by the first coating of glaze" · · * After the application of the glaze, the article 18 placed in a .drying oven heated to temperature of al)out 130· Ifallrenhj'lit, and is kept there until the glaze is approximately dry, when it is removed the oven or muffie employed in the well-known enameling pro:Jcsses. wl1ere .it .is a second timefircll, as In the usual process of enampl· ing.," '
The claims; are:
LALANCE & GROSJEAN MANUE'G CO.
v.
HABERMANN MANUF'G CO.
377
"(1) The hereinbefore described process of enameling and ornamenting metal ware, which conffists in fi.rst covering the Lody of tlle article with a glaze of any suitable plain color, firing the I!a!ne. then applying to the surface an additional coating or partial coating of glaze, of a different color from the firbt, the glaze constituting the second cOating or partial coating being of such' a cOllsistency as to coagulate in irregular spots upon the surfac.e,'and aga.in dring, as set forth. (2) As a neW article of man)lfacture, an enameled vessel presenting a mottled or variegated surface of two or more colors, produced by the coagulation in irregular spots of one or more of the coatings of glaze, substantially as set forth."
The principal defenses are, insufficiency of the specification, anticipation, want of invention and noninfringement. The proof shows that in order to produce the mottled appearance referred to the enamel must be ground coarse, and the defendant argues that specification is defective because it omits all reference to coar'se grinding. The argument in this regard is admirably summarized in the defendant's brief as follows: "The patent says that all that is necesflary if< a thin glaze. There is nosuggestion that it is to be ground In any different way from (.rdinary glaze. Ordinary glaze 18 ground fine. Any person reading the patent, and finding tli.at nothing was said in the patent to the effect that the glaze should' be ground differently from ordinary glaze would naturally the glaze fine. It .he did so it is ndmitted that he could not carry out the process of the patent in suit. He would be left to find out by experiment what else was necessary. He might discover that coarse grinding was necessary and he might J10t.·'
The paragraph of the specification which is pointed out as partiCillarly imparting the desired information is this: "I prepare a thin glaze composed of any coloring matter that can be made to rem'Lin mechanically 8uApended a short time in water." That this statement is not as perspicuous as it might be may as well be admitted. {Tndoubtedly Irving or Hawthorne could have done better. But the de, scription is not addressed to rhetoricians or lawyers, but to enamelers. I am inclined to think that a competent enameler, reading the language quoted in the light of the avowed purpose of the patentee to produce irregular spots upon the smooth surface formed by .a coating of enamel applied in the ordinary way, would have little difficulty in finding the patented process. He would know,' first, that the second glaze must differ from the first glaze; second, that it must be capable of separating and coagulating in irregular spots; third, that it must be thin, and, fourth, that the coloring matter mnst remain mechanically suspended a short time in water. When to th(" information of the patent he added the information of his vocationthat fine ground enamel remains suspended a long time in water and that coarse ground enamel remains a short time only-it would naturally occur to him that a glaze that would coagulate, that was thin, that contained coloring matter which would remain suspended a short time, must be made with coarse-ground enameL If the specification had declared that the enamel was to remain suspended "only a short time," the description would have been sufficient. This is hardly denied. One familiar with the art would, it is thought, have no difficulty in supplying the missing word. The sentence 80 constructed obviously expresses the meaning of the patentee. It is argued by the defendant that the true construction should be: "I
'FEDE]UL. REPORTER.
vol. 53,
glaze composed, of any coloring matter' that can be suspended at least a short time in watQsay, infortned the that remaiIislUlpended for but must renm.br,i ',&1l1east, for a short time. If it sinks immediately to the ,;"\iVlll"."', : 'Th.,is contenti.,o.n., '\'9'0uId ,be if ,been mth,'e hll-bit of ustng powders WhICh sank unmediately when placed in water, but they had not. They were not familiar with SUCh, coloring, matter. The powder ordinarily lisedbflilierifwas Yery"fme, aimostinpalpable, and remained susllih$ 'thne. " "The ,main object in enameling always was to as 's,i1'possible." If tMpatentee had thought tfuitlUs' process byu'sing the old, and well-known cQIQringtnatte:r ,he woUld said nothing on. the'subject. It was not to gnard enamelers against the use of powders that ,sank too soon, but against those that did not sink soon enough. It ",MtherllSe,of powders that remained too long suspended-the only oAes ,the wished to prohibit. 'fhe skilJ,edWOl'ktiilin the patentwou'ld, then, ha,:e reached the conclusiQD 't.b.at he must matter which will remain suspendedbut81 'Bh.ort tUne. Heknewthat the only way to produce thig result $ltognD;d,'the enatIlelcoarsely. The patentee is criticised because he did not say this frankly. He should, it is argued. have made the. plain'" statement, "The enamel must, be ground coarse." But thisw:()wd ',have ,SUbjected him to other attacks equally well founded.' is meant oy 'coarse ?'" "How coarse should the enamel ''.By what standard is the workman to be guided in grinding?" Is it not probable that all this occurred to the patenteb or his solicitor; and that he thought he had taken the wisest and safest course· when he said that any coloring matter that remains mechanicaJly i suspended a short time will answer the requirements of the patent? May he not have thOught that he was thus furnishing an' ,infallible and uniform rUle, for guidance of the grinder? Where',' a' patentee hlUl' made a meritorious, invention the court shou'ld not be overzealous in trying to defeat bim by an illiberlll construction'ofthepatent. On the contrary the court should seek a construction which gives life to the patent and protection to the inventor. I ,am, therefore, of the opinion that the specification, though it might have been more specific, still sufficient. Is' the patent anticipated by the' Vollrath process? In consider'ing this question it is wall to keep in mind the rule upon this subject., He who alleges prior use. must establish it by the same hlgJi dass of testifu.ony which a prosecuting attorney is required to pro:duce ina crhninal cause. He holds the affirmative of that issue and must' prove it beyond a reasonable doubt. If the evidence is susceptible of two interpretations, the. one sustaining and the other destroying the patent, the court must accept the'former. See anthorities cite<'Ull Mack v. Spencer Manuf'g Co., 52 Fed. Rep. 819. Without discu8siDg the testimony in detail, the reasons which led the court to reject it, as failing to establish anticipation, may be briefly sum· marizedas follows:
LA LANCE & GROSJEAN, MANl,lF'G CO.V.HABERMAfNN MANUF'G
co.
879
First, the witnesses were atteinpting to describe acomplicateu process practiced by them from 10 to 15 years ago. The infirmities of the human memory are sueh that perfect accuracy in su'chcircumstances can hardly be expected. Second, the witnesses do not agree as to the important steps of the process, the composition of the enamel or the object they had in view. Vollrath himself, who should be informed upon the subject, describes a process very different from that of the patentee. Third, 'the specimens of the Vollrath process introduced, in evi· dence are crude and ungainly. They are no more to be compared to the beautiful and artistic exhibits said to be m.ade by the Ke· greisz process than the scenery of a theater is to be compared to the Sistine fNScoes. ' Fourth, the statement made in Vollrath's patent of 1881; that"In all known processes the marbled, mottled, or spotted appearance of the enameled surface is caused by the oxidation of the metal surface during the operation of drying the enameling composition fuere/)n."
Is it possible that he could have made sueh a statement if the Kegreisz, process had been known and practiced by him four years before? And, lastly, the fact that Vollrath is a licensee under the Kegreisz patent, which would seem wholly incompatible with the theory that Vollrath and not Kegreisz was the first inventor. None' of the prior patents or publications describes the patented process, or advances perceptibly the defendant's ,case from the point where it was Ip.ft by the Vollrath testimony. They all describe methods of producing pleasing effects in enameling, but they ,proceed upon different lines from the Kegreisz process. Does this process involve invention? One way to test invention is this: Imagine tlie art with the contribution made by the patent entirely eliminated from it. Blot out all that the patentee has done, and then ask the questions, Has the world lost anything? Is the art poorer than it was before? Can mechanical skill make good the loss? If it appears that the public has been deprived of something which it used, admh'ed, and demanded, and that' there is nothing else in existence which can be substituted for that which has been taken, it is quite safe to assume that the patentee has made an invention. Apply the test here. Take out of the art what Kegreisz has done, and it is plain that a void would be created that could not, be filled by anything that Vollrath ot' the others have contributed. Kegreisz was the first to perfect the process and make it a commercial success. The goods made under it are pleasing and ornamental in appearance, and have become popular with the public. Againlolt all that is said in hostility to the patent may be set the fact that those operating under the Kegreisz process were the first to make an assured success in this art. Nothing made before is worthy to be compared in beauty of ornamentation to the articles made by the complainant. It would be running counter to the recent decisions of the supreme court to deny patentability to the Kegreisz patent.
380
FEDERAL REPORTER t
1llfI:liJ;lgement is sufficiently established. It is admitted. that the ftl'tiQIeftJntroduced to establish infringement were made by the defeJldant. l1The process used by the defendant is the same as that de· scribed in the patent, with one step added which is not described. After' the vessel to be enameled has been dipped in the glaze the operaror shakes it, and by this means produces the desired result quieker than when the shaking is omitted. That the process can be practiced without this additional step is stlfiiciently demonstrated. It,was awell·known fact among enamelers that this manipulation would save time, and it is thought that one who applies it to the process in .question does not thereby escape infringement. He does not use the process any the less because he uses something in addition to the process. Even if 'it be assumed that the defendant has introduced.an improvement, it is an improvement upon the Kegreisz process, p.p.d SO as the defendant uses that process it must be treated asan\Dfrillger. The complainant is entitled to the usual decree. 'tALANCE & GROSJEAN H·ANUF'G CO. v. MOSHEIM. (Cil1euit Court, b. D. New York. December 22, 1892.)
.. In EqUity. "Bm by the Lnlance & Grosjean Manufacturing Company for infringement of . Dect'ee forcoi:nplainant. . Judge..Thedecision mthe preceding. cause (53 Fed. Rep. 375) this caUS,e It is concedE;ld that the defendant sold the are Uc1esllll?roof made by the Habermann Company. The secoM claim is in· tended«to iclhrer the product of the protiesl! in the first claim, and, thus limited, I think it is valid and that the defendant has infringed. Wile OOtAPla1llllat ise;qtltled to the uslliildecree upon the second claim
DE LAMATER et al.v;· DEELEY et ai. (CJircuit PATENTS
S. D. Ne;w York. December 17, 1892.)
Fo'R brVENil'IONS-VALIDITy-PRIOR USE AND SALE-,AIR ENGINES. Heillsued.patent No. 9,414, granted Oetober 12, 1880" upon original pat· ent Xo. 22f),052,Issued March 30, 1880, to John Ericsson for an air engine, is invalid because the assignees of the inventor marle and sold several rna· chines substantially the same as that of the patent more than two years prior to the /lrpplicatlon.
In Equity. Suit by William de Lamater and others against Robert Deeley and others for infringement of a patent. Bill dismissed. W. O. Witter and R. N. Kenyon, for orators. Ohas. G. ooe, for defendants. WHEELER, District Judge. This bill is brought upon letters pat· ent 9,414, reissued October 1l'580, for original patent No. 226,. 052, dated March 30, 1880, and granted to John Ericsson, aSilignor, on an application filed February 19, 1880, for an air engine. The principal defense is that the machine had been in public use and on