37 F. 783 | U.S. Circuit Court for the District of Southern New York | 1889
This cause rests upon patent 219,464, dated September 9, 1879, and granted to the orator for an “improvement in visiting cards.” The patent describes a method of making bevel-edged cards, .and of ornamenting the. edges, by piling them obliquely, first, so that the slope of the pack will correspond with the desired bevel, compressing them to hold them in that position, beveling and ornamenting and finishing the whole pack on the sloping edge, which will bevel, ornament, and finish that edge of each separate card by each operation, and of successively treating the other sides and ends of the pack in the same manner, by which means the whole pack is treated as readily as one card. The first claim is for the method of treating cards in this manner, and the second is for a card so treated. The defenses are want of novelty, want of patentability, and lack of proof of infringement.
According to the evidence, bevel-edged cards were not new at the date of the orator’s invention;, neither was beveling in packs new; but arranging cards in oblique packs, and treating one side or end till all the cards were complete on that side or end, as if they were one card, and treating thé other side and ends successively in the same manner, does not appear by the requsite measure of proof to have been known before. By this process the packs can be grooved or embossed and ornamented in a manner to present beveled designs upon the edges of such cards, which could not be produced by treating cards separately, and the making of bevel-edged cards of any design is greatly facilitated. This method seems to be ingenious and useful. Such an arrangement of mechanical operations, that produces a new and useful result, or an old result in an easier 'or better manner, is understood to be patentable. Cochrane v. Deener, 94 U. S. 789; Telephone Cases, 126 U. S. 1, 8 Sup. Ct. Rep. 778. The first claim of'the patent, therefore, appears to be good and valid for tbe method described.
There is nothing new about the bevel-edged cards produced by this process, except that they are made in this way. They do not differ from those made in any other way, unless they do in design. The process does not inhere to the product, so that it differs from any like product made in any other way, as was the case with Cummings’s invention of rubber plates and teeth, in Smith v. Vulcanite Co., 93 U. S. 486; or the driven well, in Eames v. Andrews, 122 U. S. 40, 7 Sup. Ct. Rep. 1073. The product itself here is old in the sense of the patent law, and there can be no patent for it, although produced in this new way. McKloskey v. Du Bois, 8 Fed. Rep. 710, 9 Fed. Rep. 38; McCloskey v. Hamill, 15 Fed. Rep. 750. The second claim of this patent, therefore, appears to bé'invalid.
The plaintiff’s evidence tends directly to show that the defendants use this process; and the defendants do not, in testimony, deny that they do, nor dispute or meet this testimony. Upon this state of the evidence the infringement is found as a fact to exist of the first claim.
The patent might be held to be invalid on account of its covering the product, of which the patentee is not the inventor, and which is a material and substantial part of the thing patented. Rev. St. § 4920, subd. 4.