41 F. 778 | U.S. Circuit Court for the Northern District of Illnois | 1890
This is a bill charging defendants with the infringement of patent No. 16,039, granted April 14,1885, to Nicholas A. Hull, for “a design for a sewing-machine case,” duly assigned to complainant, and patent No. 16,040, granted at the same date to Nicholas A. Hull, for a “design for a sewing-machine case” and duly assigned to complainant; each patent being for the term of three and one-half years. Patent No. 16,039 describes the design as follows:
■ “The front portion of this case has a raised panel, — raised from the main panel. This raised panel is divided into a series of smaller panels, by a system of angular cuts or grooves extending at right angles, and spaced to suit such transfer or ornament as seem desirable to put on the same; each panel being beveled on all sides by the angular cuts or grooves.”
The case has fluted or beaded corners, — «aid flutes or beads extending vertically, or at right angles with the base of the'case; and the claim 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; 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
“(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 of sewing-machine eases; the same consisting of the main panel, B, comprising the center panel, o, surrounded by the border, a, formed of a series of beads crossing each other at the corners, as shown and described. (3) The design for the ornamentation of sewing-machine cases; the same consisting of the Gothic top, I), having a series of beads, f, and fringed rail, c, and the panel, C, surrounded by the beaded border, a, as shown and described.”
The defenses interposed are (1) that the patents are each of them void for want of novelty; (2) that defendants do not infringe; (3) that both these patents are void, except as to the second claim of No. 16,040, because all 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 person, frnd having been issued on the same day, each qualifies and limits the other; that is, that what is found in No. 16,039 which is also found in No. 16,040 must be considered as belonging to No. 16,039 and to qualify whatever there is of the same character in No. 16.040. Defendants admit that they made and sold in August, 1886, a small number of sewing-machine covers like those shown in No. 16,040, hut say that, on being notified that they were'infringing complainant’s patent, they stopped making such covers; and the proof, I think, supports this allegation. This must be taken as an admission by defendants of liability to some extent for infringement of patent No. 16,040, if such patent is valid. Defendants also admit that, since they abandoned the manufacture of sewing-machine covers like those described in patent No. 16.040, they have manufactured sewing-machine covers substantially like complainant’s Exhibits A, B, and C.
Section 4929 of the Devised Statutes, under which these patents were granted, mads as follows;
“Any person who, by his own industry, genius, efforts, and expense, has invented and produced any new and original design for a manufacture, bust, statue, alto-relievo, or bass-relief; any new and original design for the printing of woolen, silk, cotton, or other fabrics; any new and original impression, ornament, patent, print, or picture to be printed, painted, cast, or otherwise placed on or worked into any article of manufacture; or any new, useful, and original shape or configuration of any article of manufacture, the same not having been known or used by others before his invention or production thereof, or patented or described in any printed publication, may, upon payment of the fee prescribed, and other due proceedings had, the same as in cases of inventions or discoveries, obtain a patent therefor.”
“The difficulty with the claim does not arise from want of novelty in the forms employed, nor yet in the want of novelty in the method of arranging these forms, because, simple as the arrangement is, the case furnishes no evidence that a scroll and roses were ever before arranged one above another, with only a bead between; but I find it difficult to consider that the scroll, roses, and bead, when arranged as described in-the claim, constitute a single ornament. There is no commingling of the lines forming the scroll, the bead, and the roses. Ho new idea seems to be embodied in the method of their arrangement. All that has been done is to place these distinct and well-known ornaments one above the other, without the production of any such combined effect as to entitle the whole to be treat as a new and original ornament. Ho new ornament has in fact 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 as to make them practically one ornament. I am, therefore, of opinion that patent Ho. 16,039 is void, and gives no right of action to the complainant. But, if I err in holding this patent void for the reasons assigned, I am still of opinion that complainant has no right to a decree, upon the ground of invalidity of the patent for want of novelty and non-in fringenfent, for reasons which will be hereafter given in considering the other patent.
Patent No. 16,040, shows a sewing-machine-case, the front of which consists of 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 is a fringed or notched rail extending the length of the panel. What is called in the specifications the “Gothic top” or roof of the cover has a series of beads running its entire length in the center, and concave cuts both above and below these beads, and parallel to the beads. The firstclaim of this patent is for the ornamentation of the sewing-machine case by a Gothic top, with a series of beads and the fringed rail; this fringed rail occupying, substantially, the place of the frieze-in the cornices of ordinary
This brings me to consider the second claim, which is for the panel with the center panel surrounded by a beaded border, as described,— this claim being simply for an ornamented panel; the ornamenting consisting merely in the raised center panel, and the beaded border around it. Panels with raised centers are old. We see them — in the doors and wainscoting of. our dwelling-houses, in the furniture of our homes, and in railroad cars — almost everywhere we go. So, too, the beading of panels-is old. The desk and doors of this court-room show panels with raised centers and beads upon and around the panels. The proof also shows sewing-machine covers with a center panel surrounded by grooves, it is true, somewhat deeper, and somewhat different in their configuration, from those described in the complainant’s patent; but, at the same timej it is a grooved and beaded border which divides the main panel into several smaller panels. I refer to the exhibit described as the “Carey-Howe” cover. So, too,- patent No. 16,039 is for. a panel with a raised center, and this ^ raised center panel surrounded by beads and groovings; and what possible invention is there in producing this form of ornamentation, after the production of the panel shown in patent No. 16,039? . It is true there is some slight difference in the shape of the grooves and beads, but not such a change as to require invention. There is also .an exhibit in the case of a “Remington cover” which shows a main panel with the central part raised, and grooves and! beading surrounding the main panel. This construction or design is much older, as the proof shows, than the complainant’s patent; and I think it may be properly asked, what invention can there be in running a grooved and beaded, border around the central raised panel, when it has been done before around the main panel? The proof also shows the use of grooves and headings around the central raised panels in what are described in the proof as the “Chapman bureau” and the “elevator cab” panels. These two last forms; of-construction are not set out and alleged as anticipations in the, answer, but may, I think, with propriety, be referred to a,s showing the state of the'art at and for a long-time before this invent- or entered the field, ,if such proof is necessary, and not a part of our common knowledge. - With this proof before us, I think neither of the claims of this patent can be sustained as novel and original, because there is nothing.but a mere change of location, to say the -least, of groovings, and- beadings, which have been known for many years, and in common, everyrday u’se,, as :shown by the-circulars and exhibits in evidence in-this .ease) to.-suoh am ¡extent that,-it. seems to me,: the. changes, shown
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 reasons before discussed, there certainly can be no doubt that the defendants do not infringe either of these patents further than what is admitted by the answer, — that they did at one time make a few covers like that described in No. 16,040, because Exhibits B and C, which are introduced by the complainant as infringing manufactures of the defendant-, do not have the border or groovings and headings around the central panel. Both these exhibits show a central raised panel, which, I have already said, was old, and the central panel, cut by certain vortical grooves and headings in the vicinity of each end. They do not have the horizontal grooving and beading around the central panel, dividing it into smaller panels, and making a grooved and beaded border surrounding the raised part, which both these patents call for. Defendant’s case (complainant’s Exhibit A) shows a raised panel with grooves and beads above and below, and diagonal cuts making groovings and headings running across the face of the panel, but not such cuts as are described by both of complainant’s patents, which require the grooves and beads to cross each other at right angles, and which so differ in appearance that they produce an entirely different effect upon the eye from what is pro-’ duced by defendants’ case, (complainant’s Exhibit A.)
It is manifest that, if either of these patents is to be sustained, it must be, in view of the state of the art, upon tlie precise and special devices described in and covered by them. The test that any form which produces the same effect upon the eye of the ordinary observer as that produced by the design covered by the patent is an infringement will, if applied to the complainant’s patents, defeat both of them, it seems to me, because the effect upon the eye of the complainant’s patent No. 16,-089 is certainly not essentially different from that shown by the Carey-Howe cover, in evidence in this case, from the older art, and the Stewart, "White, and other covers shown in the circulars in evidence here, while the Remington cover, with its Gothic top, fringed rail, main panel, and raised central panel, with groovings and headings surrounding main-panel, and the beaded corners, seems to me to be a full anticipation of