1 F. Cas. 320 | U.S. Cir. Ct. | 1877
There are several suits pending between these parties, and I will first- consider the case which was denominated “No. 1” on the argument, and which has been brought against the defendant corporation for-infringing certain letters patent, numbered 5,155, for “improvement in the manufacture of rubber-coated harness-trimmings,” being a reissue to the complainant, of the date of November 26th, 1872, the original patent having been granted February 13th, 1872, and antedated January 27th, 1872.
The case, as prepared and ably argued by the counsel, covers a very extensive field ■of investigation, and, having given to it the care and attention which its importance to the parties seems to demand, we shall proceed to briefly state our conclusions, rather than the processes of reasoning by which they have been reached. In the specifications of the patent, the patentee states, that his invention consists of malting a pair of dies for pressing, polishing and trimming the edges of the rubber coating of harness-trimmings, so as to imitate stitching, and to finish each article without hand-labor. In other words, he proposes with an instrument or tool to do an old thing in a new and better way. He was not the first to use dies in the manufacture of rings, buckles, terrets or ■other harness-mountings, nor the first to imitate leather stitching on rubber-coated articles, nor the first to density and polish with dies plastic compositions, surrounding a metal core, by heat and pressure. Numerous English and American patents — as, notably, the patent to Thomas Deakin, December 22d, 1S42, for the use of metallic dies to receive the metal skeleton; the English patent to Newton, September 4th, 1851, and to Moses Poole, March 28th, 1853, for the Goodyear invention of applying india-rubber compositions in making and finishing parts of harness; the patent to William Green, August 6th, 1857, in regard to imitation stitching; and the American patent to Welling, dated April 28th, 1862, for pressing and solidifying the mass of any plastic composition around an iron ring by means of. dies — reveal | methods of separately accomplishing those different results.
The operation of the invention is simple. A metal ring, buckle or other article is coated with the rubber and placed in one of the dies, and the other die is pressed down upon it. The dies, -or the article itself, are moderately heated, so that the pressure of the polished dies will polish or finish the article. The dies are beveled off at a and c of Fig. 2 of the drawings, so as to form sharp edges. These edges a cut off the waste at the inner side of the ring, while the edges c cut off the waste on the outer side. In this way the act of pressing together the dies polishes, trims and finishes each article in the best and quickest manner, e shows tlie indented lines, which produce an imitation of stitches. The dies touch each other, x, y, and z, so that they cannot crush the article placed in them. The claim of the patent in the original is for — “The construction and operation of the dies A and B with cutting-edges a and c, substantially as described, for finishing rubber-coated harness-mountings.”
On the 26th of November, 1872, the patent was reissued in two divisions, as is expressly authorized by section 4916 of the Revised Statutes. Of these Division A, numbered 5,155, was for the dies, and Division B, numbered 5,156, for the process of manufacturing metallic harness-trimmings covered with rubber or other known vulcaniza ble gum. Suit No. 1 was brought for infringement of the reissue No. 5,155. A comparison of the specifications, drawings and claims fails to show that any new matter has been introduced into the reissue which did not appear in the original patent. It is true that Division A does not embrace everything which is found in the original; but it is not necessary that it should, since the prohibition of the act is limited to the adding of new matter to the specifications, and there is no obligation upon the patentee to claim all things in the reissue which were claimed in the original invention. Carver v. Braintree Manuf’g Co., [Case No. 2,485.] Of what, then, does the invention consist as described in the reissue? "We have a die in two parts, so constructed as to press, solidify, polish and trim the edges of a partially made ring with an iron core, and to impart to it by a single operation the desired form, rib and’ imitation stitch, and at the same time separating the waste material from the article. It embodies the following features: (1) A central cavity for the body of the article to be formed; (2) a recess surrounding the cavity in which to form a projecting rib adapted to receive ornamentation; (3) provision, by grooves, for the escape of the surplus material; (4) cutting or defining edges to separate the surplus material on the inner and outer edges of the article; (5) concentric recesses to receive the waste; .and (6) bearing-surfaces to determine the thickness of
At complainant’s request they produced a pair of finishing-dies, such as they used in the manufacture of celluloid-coated harness trimmings, and the same has been marked complainant’s Exhibit No. 12. Complainant’s Exhibit No. 7 was put in to show the die described and claimed in reissue No. 5,155, and the question is whether the use of the former is an infringement of the characteristic devices of the latter. Their features of resemblance are more numerous than their features of dissimilarity. Even where they are not identical in form, they seem to be so in function. For instance, the sharp cutting-edges described and appearing in Exhibit No. 7, are not described and do not appear in Exhibit No. 12. Their absence, and the substitution in their place by the defendants of the broad bearing-surfaces, was largely commented upon by their counsel on the argument, and it was assumed that such a change effected a substantial difference in the mode of operation of the two dies; but actual experiments shown do not sustain the assumption. It was found that the dividing-ridge in Exhibit 12 — the defendant’s die— through bearing-surfaces, acted also as cutoffs of the surplus material, and produced substantially the same result at the sharper cutting-edges of Exhibit 7 — the complainant’s die. A thicker fin was ordinarily left on the outer rim of the article pressed in the one ease than in the other, and where a coating material was used less dense than the hard rubber, such as celluloid, it seems tliat the broad bearing-surface insured a better finish than the cutting-edges, by holding more of the material within the dies for solidification and polish; but the construction and mode of operation of the two dies are so substantially alike that the use of Exhibit No. 12 must be held to be an infringement of Exhibit No. 7.
Nothing was brought forward in the case which casts serious doubts upon the originality of the complainant’s patent, except the Sturgis die, Exhibit No. IS, produced by the complainant. Mr. Sturgis says that, in the spring or summer of 1865, he made a pair of dies to press up a composition with which he wished to coat an iron buckle to imitate the stitched leather buckle. He pressed up-different compositions, experimenting with leather and paper and cloth. He never made any quantity, or ever put any on the market, “being a mere matter of experimenting.” It does not appear that these experiments were successful, as he testifies that he abandoned them and laid the dies away upon the shelf in his shop, where they remained until they were brought out for the purpose of defence in this case. He did not perfect or adopt his invention, if he made one, to successful use. His dies were first made as molds or stuffing-boxes, with holes, at the back, through which he forced the composition around the iron frame previously placed in the die. That mode did not work successfully, as the tendency was for the composition to force the iron frame out of place. He then closed up the openings with solder, and, instead of forcing in the-composition, he placed it above and below the iron frame before the die was closed. He experimented alone about a couple of' months, and pressed up, with these different materials, probably a half-gross of buckles. He fails everywhere in his testimony to indicate that he regarded his device, whether used as a stuffing-box or a die, as. of any practical value, and he ceased for years all efforts to make it successful. Under these circumstances what he did must be put in the category of abandoned experiments. “He is the first inventor,” says. the supreme court in Whiteley v. Swayne, 7 Wall. [74 U. S.] 685, “and entitled to the-patent, who, being an original discoverer, has first perfected and adapted the invention to actual use.” Gayler v. Wilder, 10 How. [51 U. S.] 477; Washburn v. Gould, [Case No. 17,214;] Parham v. American Button Hole, etc., Co., [Id. 10,713;] The Corn-Planter Patent, 23 Wall. [90 U. S.] 181. Let a decree be entered in case No. 1 for an injunction and account, according to the-prayer of the bill of complaint.
It is not necessary to make any extended reference to case No. 2. The suit is brought for the infringement of letters patent No. 137,873, issued to the complainant April 15,. 1873, for “improvements in the manufacture of rubber-coated harness-trimmings.” The-patentee says in the specification that the-nature of his invention cpnsists in the formation of a die constructed of two or more pieces for stamping and finishing harness or carriage trimmings, when a metallic body is: covered with suitably prepared rubber, or other equivalent substances, without having any refuse or surplus material in the die when the process is done, and he alleges.
It should be said, in justice to the candor and frankness of the defendant corporation, that this admission on their part is quite as full as the complainant’s proofs. Their superintendent, Lockwood, says that prior to July, 1874, he saw in their factory a die similar to Exhibit No. 8, which it is admitted was constructed according to the patent ■under consideration, and the complainant, Albright, testified that he visited the defendants’ rooms in Newark, in October or November, 1873, and saw there one large oval brace-buckle die and one or two ring-dies constructed on the plan of Exhibit No. 8, and also buckles and rings, which, from their general appearance, he believed had been pressed in these dies. That seems to be the extent of the testimony as to the making and using the dies. It is a technical infringement, and is sufficient to authorize an injunction restraining their future use; but no reference will be ordered, as no damage or profits have been shown or suggested.
[NOTE. Patent No. 137,873 was granted April 15, 1873, and, so far as ascertained, was not involved in any reported cases, other than the above prior to 1S80. Patent No. 123,603 was granted February 13, 1872, to A. Albright, and was referred to in Albright v. Teas, 23 O. G. 829). This patent was reissued November 26, 1S72, No. 5,155.]
[See note at end of case.]