96 F. 344 | U.S. Circuit Court for the District of Southern New York | 1899
Final hearing on usual bill and answer, raising questions of validity and infringement of patent No. 314,204, issued March 17, 1885, to William O. Swett, complainant’s
“A fastener tor securing wooden, package covers, formed of a single piece of metal, with tailored shanks, D, and a thin metal plate, A, which is thick enough at its junction with bases, 0, of shanks, D, to form heads, B, for driving the shanks, D, in the wood, as specified.”
The fastener is in the form of a double-pointed staple, so thick at the corners as to furnish sufficient heads for the shanks, and so thin in the center as to he nonelastic, and easily hent over the corners of the wooden box. The specification says:
“The invention consists in a staple whose pointed shanks are projections from a plate which is made so thin at its middle portion as practically to be nonelastic, whereby the shanks, which are driven into the wood, will not be drawn out by the spring of the metal, and at the same time the thickness of the connecting plate shall not be such as to interfere when storing or handling fastened packages, or the, shanks be removed by contact with other articles.”
By this unique construction of a double-pointed staple the inventor so successfully accomplished the object of his invention that his sales amount to 60,000,000 a year, and for .13 years the public have acquiesced in the validity of his patent, except in a single instance, where this defendant co-operated with complainant in successfully stopping infringement by threat of suit.
The defendant manufactures an infringing staple under a patent issued to its president June 22, 1897. Said staple is practically idem deal in construction with that of complainant, except that the middle piece of metal is split and spread apart instead of being flattened. Its purpose and use is the same as that of complainant, as appears from (he following statement in the specification:
“Generally, In such uses, the clasp must be bent over a corner, and the end or ends driven Into the wood of the parts to be secured together. It is therefore important that the end of the tang or prong to be driven should be sharp; that the body of said prong should be stiif enough to penetrate the wood without bending; that the part Immediately adjacent to the prong should be of sufficient body to constitute a good driving surface; that the remainder of the body intermediate the ends should be wide enough to make a good bearing surface where it rests against the parts to be secured, and should also be flexible enough to bend readily at almost any point intermediate the prongs (if ihere are two), that it may be easily applied to the intended use.”
The defenses alleged are as follows: (I) 'Limitation of the claim by proceedings in the patent office, and denial of infringement by reason thereof; (2) denial of invention in view of the prior art; (3) anticipation.
There is nothing in the first point. All that Swett, the patentee, did, was to acquiesce in the action of the patent office in rejecting two of his three claims, leaving the second claim exactly as it was originally drawn. A mere remark of the examiner, “It is not seen that there is any material difference in the claims,” does not estop the patentee from claiming the construction shown by the specification and original claim. It is the cons traction of the patent as finally issued which is to be considered. Reece Buttonhole Mach. Co. v. Globe Buttonhole Mach. Co., 10 C. C. A. 194, 61 Fed. 958. Defendant says that, because the examiner, in rejecting the other claims,
In support of the defense of lack of patentable novelty in view of the prior art defendant has cited five patents. The Barney and But-terfield patent of 1874 had no thin shank, and did not have to be bent. The earlier patent to Carey, the president of the defendant corporation, issued in 1876, had none of the material elements of the patent in suit, and was not intended to be bent. The Winne patent of 1878, for a fastener for barrel hoops and heads, contains no hint of the patented invention; and Willard’s patent of 1884 was for the combination of two naüs with a piece of wire having eyes in its ends. Patent Ho. 244,282, issued to Moore in 1881, was cited by the patent office in rejecting claims 1 and 3. Counsel for defendant insists that the only difference between complainant’s device and that of Moore is that the latter is not in one piece. Moore’s tub fastener consisted of "a strip of tin or other suitable sheet metal into opposite ends of which are inserted headed nails,” and a -.fold-over strip to keep the nails from falling out, “for fastening the c.overs of butter tubs.” It was not made in a single piece; it was not adapted to the purposes of the patented staple; it was not so constructed as to be nonelastic, so that the shanks should not be drawn out by the spring of the metal, and the plate was not so thickened at the bases of the shanks as to form driving heads. This device has no bearing on the novelty of the patent in suit.
The defense of anticipation is a substantial one, and deserves and has received exhaustive consideration. Two.reputable disinterested tea merchants, Messrs. Hamilton and Mead, testify that small fasteners, which in general appearance and construction strikingly resemble the patented staple, were in use in this country, or were in the possession of the witnesses, prior to the date of the patent in suit. Hamilton says these fasteners were used in London prior to 1870 in securing parts of tea boxes together which were shipped to this country; that he came to this country in 1885, and saw tea boxes with fasteners in use which, to the best of his knowledge and belief, were the same to all practical purposes as those used in London; and that such fasteners were in general use in this country on tea chests which had come from China in 1874 or 1875. Mead says he is not familiar with the method of securing the parts of packages of tea together, but he produces three of these fasteners, which he testifies have been upon a tea chest during the whole time that it has been in his possession, a period of more than 17 years, and which he removed therefrom on the-morning of his examination. He further says he has seen tea coopers use fasteners of somewhat similar make in coopering teas in this-,