265 F. 675 | N.D.N.Y. | 1920
(after stating the facts as above). The Barber patent, No. 781,802, has been before this court repeatedly in various litigations, and after most careful study of the numerous prior art patents, presented to the. court in the various litigations to which said patent has been subjected, it has successfully withstood the attacks made upon its validity. The structure which the Barber patent shows and describes, the invention which it defines in claims 8 and 9 thereof, these being the claims here involved, the problem which this invention successfully and satisfactorily solves, and the conclusions reached after a careful and painstaking examination and study of the prior art patents heretofore set up against it, in this case and in other cases in which the patent is involved, are fully set forth in the opinions of this court (231 ’Fed. 755) and of the Circuit Court of Appeals (240 Fed. 723, 153 C. C. A. 521), and they need not be repeated here. For present purposes it is 'sufficient to say that on the original hearing in this case this court held:
“The evidence shows and it is well known that the valves of motor engines frequently get out of order and require cleaning and repairs of various kinds. A construction which is safe and of reasonable cost, and which will enable the owner to remove and replace these valves speedily and cheaply and without injury to the motor engine, is therefore of great value. Here was the problem which confronted Mr. Barber, the inventor in this case, and the evidence shows that he solved the problem satisfactorily, and that his invention went into use, and that this defendant and others have appropriated it, to his damage and, injury. Mr. Barber has not been guilty of any laches in endeavoring to enforce his rights. He is not a man of wealth, but this is no reason why courts should not give him the same consideration they would give wealthy men or wealthy corporations. I find and hold that the structure of the patentee discloses patentable invention in view of the prior art and that there is no anticipation.
“The defendant placed in evidence more than 20 different patents, but no one of them shows the combination of Mr. Barber, and no one of them shows a combination of elements which solves the problem presented to Mr. Barber, and which he successfully solved. There is no one element in the combination of Mr. Barber which is absolutely or entirely new; but he has a new combi*677 nation and a useful combination of old elements, and tlie making of this combination discloses patentable invention of a high order. His invention has been availed of by others, and several have taken a license under his patent, while others are boldly infringing. The defendant in this case struggled vainly to show a combination in any prior patent which solves the problem presented to this complainant. The defendant presented patents which disclose one or more of the elements found in the Barber patent, but it has been held again and again that a new and useful combination of old elements which results in a new structure of utility, and which the ordinary mechanic skilled in the art would not have produced, constitutes patentable invention.”
Again, at page 761 of 231 Fed.:
“It is vain to search the prior art for a construction and combination like this. Each and every patent in evidence, which shows a valve cage, or a screw pmg, or a combination of both, has one or more obstructions to a. removal of these parts, which interfere with the removal of the valves. Various of these patents show that efforts had been made in the direction of securing a quick removal of the valves, but no one had fully solved the problem until Barber came into the field. In a sense and to an extent, at least, he is a pioneer. In bur; one or two of the prior patents is any reference made to the problem which Barber sought to solve.”
The Circuit Court of Appeals, after quoting the last paragraph above quoted from the opinion of this court, said at page 726 of 240 Fed. . (153 C. C. A. 524):
“It will serve no good purpose for this court to traverse step by step the ground which the District Judge has very carefully gone over in his opinion. It must suffice to say that our examination of the patent and of the patents of the prior art fails to convince us that any mistake was made by llie District Judge in sustaining the validity of this patent.”
On this retrial, however, additional patents alleged to be in the prior art, and which have.not been specifically presented to this court before, are set up, and proofs have been presented by both parties with respect thereto. Of the new patents alleged to be of the prior art now set up in this case the Hirsch United States patent, No. 532,555, .and the Carling British patent, No. 110 of 1891, may be dismissed from consideration, for the reason that these patents are not directed ■ towards the problem of providing for the quick, easy, and convenient removal of the valves, which is the problem.with which the Barber patent in suit deals, but are directed toward a different object and purpose. This is also the view of Judge Hazel in connection with the Hirsch patent. The Fessard United States patent, No. 639,160, may likewise be eliminated for the same reason. Moreover, the valve of this patent is of the flanged type. It was the purpose of the Barber invention to avoid the use of that type of valve and the difficulties incident to such use. This is also the view taken by Judge Hazel with regard to the Otto engine valve cage device.
“Any person who has invented or discovered any new and useful art, machine, * * * not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than two years prior to his application * * * ”
—may obtain a patent. It is necessary, therefore, in the present case, to ascertain the dates when the Bousfield, Hall, Jerram, and Wohlgrath patents became “patents,” or “printed publications,” within the meaning of the statute, and then to ascertain whether or not these respective dates, or any one of them, was prior to tire date when Barber made his invention, or was more than two years prior to the date on which Barber made application for his patent. The Barber •application was filed February 24, 1902. Did any of these foreign patents become a “patent,” or a “printed publication,” earlier than February 24, 1902?
A Swiss patent to Wohlgrath, No. 20,387, and a book by Beaumont on “Motor Vehicles and Motors,” pages 285 and 291, have also been considered in this connection. No proof has been offered as to the date when the Swiss patent was sealed, nor as to the date when the Beaumont book was published. This book bears the imprint of “1900” as the date of its publication, and the printed “preface” purports to be dated “March, 1900.” Obviously these dates are too late.
For the foregoing considerations, I am of the opinion that the decree should be awarded the plaintiff, with costs, and the accounting proceedings resumed.