23 F. Cas. 731 | U.S. Circuit Court for the District of Southern New York | 1871
This suit was brought in August, 1866, by Frederick R. Taylor, as plaintiff. He died in October, 1860, and his administrator, William B. S. Taylor, was substituted as plaintiff. The suit is founded on letters patent granted to William B. S. Taylor, February 21st, 1865, for an “improved flexible tubing for illuminating gas,” and assigned to Frederick R. Taylor, July 10th, 1806.
The specification says: “My said invention consists in the use of glue, or a composition of which glue forms a principal ingredient, as a coating or liuing for flexible tubing used for the conduction of illuminating gas, and for the purpose of making such tubing impervious to the gas or its fluids.” Four figures of drawings are then given, one showing a section of a rubber tube, with an inner lining or coating of glue; one showing a rubber tube, with a glue coating and a rubber covering; one showing a cloth tube, with a glue coating and a cloth covering; and one showing a cloth tube saturated, with glue and having a covering of rubber or cloth. The specification proceeds: “I depend upon the glue to prevent the gas from penetrating through the tubing. In coating or saturating the tubing, the glue may be dissolved in water, and a portion, say one-third, of molasses, honey, or syrup added, to preserve the glue in a flexible state. Glycerine will answer as a substitute for molasses. The glue or glue composition is applied hot.
*732 [Drawing of patent No. 46,507, granted February,' 21, 1S35, to W. B. S. Taylor. Publishéd from the records of the United States patent office.]
In the case of the tube shown in Fig. 1,’ where the glue is used as a lining or inner coating, the glue may be poured into the tube so as to fill it, and, after standing long enough to form a film or coating of the desired thickness, the rest is poured out. To cover or coat the tubing on the outside, or to saturate it, the glue may be applied with a brush, or by dipping the tubing in a trough •of hot glue. When the tubing has an exterior cover of cloth or rubber, it is put on while the glue is adhesive, or it may be suffered to dry and a coat of rubber cement applied over the glue and the outer cover secured by it.” The claim is, “the use and application of glue, or glue composition, m the tubing, substantially as described, for the purpose of making the flexible tubing gas tight, whether of cloth or rubber or otn•er gum.”
The defences set up in the answer are, non-infringement and want of novelty. On the question of novelty patents are set up, granted in England, to Brockedon and Hancock, and enrolled Slay 19th, 1847, to Margaret Henrietta Marshall, and enrolled April 4th, 1S44, to Marius Pellen, and dated September 26th, 1856, and to Edward Joseph Hughes, and dated June 8th, 1857; anu a •description in a printed public work published in Eondon, England, in 1857, by Thomas •Hancock, on the India rubber manufacture. It is also set up, that prior knowledge of the invention was possessed by Edwin M. Chaf-fee, John F. Holt, William H. Luther, Thomas W. Prentice, Isaac A. Brownell, and Theodore Sweet, at Providence, Rhode Island; and by Charles T. Hartwell, Augustus Lacy, and Edwin R. Walker, at the city of Ney York. Of the English patents so set up, the only one relied on in the proofs is that ■ to Brockedon and Hancock, and the printed public work referred to was not. put in evidence. The other evidence relied on, as to a want of novelty, relates to an alleged prior invention at Providence, Rhode Island, by one Thomas L. Reed, and to another alleged prior invention, at the same place, by Thomas L. Reed and David K. Hoxsie. This evidence was put in without objection.
During the pendency of the suit, and after considerable of the testimony had been taken, the plaintiff, as administrator of Frederick R. Taylor, and sole owner of the patent, filed in the patent office a disclaimer, dated December 22d, 1870, to that part of the claim of the patent “which claims, as an improvement in flexible tubing for illuminating gas, the use and application of giue, thereby limiting the claim to the use and application of glue composition in the tubing, substantially as described, for the purpose of making the flexible tubing gas tight, whether of cloth, rubber, or ouier gum.”
The validity of this disclaimer is challenged. But I see no difficulty in upholding It. It is substantially such a disclaimer, and operates under substantially the same circumstances, as the disclaimer which was sustained by this court, in Tuck v. Bramhill [Case No. 14,213]. Nor is there any obscurity created in the specification, by engrafting on it, or incorporating in it, the language of the disclaimer. The disclaimer is only to a portion of the claim. It leaves unaffected the descriptive part of the specification. It merely strikes out from the claim the words “glue or.” The use and application of glue composition in the tubing, for the purpose of making it gas tight, while it possesses the property of flexibility, is adequately described in the specification, and is properly claimed in the claim as it stands, with the uis-claimer applied to it. The 54th and 60th sections of the act of July 8th, 1870 (16 o.at. 206, 207), contain substantially the same provisions, in regard to disclaimers, as the 7th and 9th sections of the act of March 3d, 1837 (5 Stat. 193, 194).
The flexible gas tubes sold by the defendants, and alleged to infringe the patent, were made by the use of glue and glycerine, in connection with animal intestines, the intestines being used in tubular form, and several being drawn one over the other. As animal intestines are shown to have been, at the date of the patent, a known equivalent, in the making of flexible gas tubes, for the cloth, or rubber, or gum, spoken of in the specification of the patent, the only point that could remain for consideration, on the question of infringement, would be, whether the glue and glycerine were used in the defendants’ tubes for the purpose of making the tubes impervious to gas while capable of flexure. The ingenious theory constructed by the counsel for the defendants.and sought' to be supported by testimony and by elaborate arguments, is, that the office of the glue in the plaintiff’s patent is to render the tube practically gas-tight, and that the office of the molasses, honey, syrup, or glycerine, in that patent, is to keep the glue moist, and prevent it from cracking when the tube is bent; that, in the defendants' tubes, the intestines are used to render the tube practically gas tight, the glycerine is used to keep the intestines moist, and prevent their becoming dry, and then cracking by being bent, and thus becoming leaky of gas, and the glue is •used to thicken the glycerine, and keep it from running off through limpidity; -and that, therefore, the defendants’ tubes do not infringe. But this conclusion by no means
Taylor’s invention was completed .as early as the first part of November, 1864. '"‘’The patent was applied for January 16th, 1866, the specification having been sworn to January 14th, 1865. Neither Reed nor Reed and Hox-sie made a successful flexible tube, coated with glue and glycerine, until the early part of 1865. Taylor may have started later in his experiments towards the invention than either Reed or Reed and Hoxsie did, but he arrived first at the goal, and first made the completed successful invention, and followed it up by his patent. In the race of diligence, he must be held to be the first inventor.
As to the tubing of the Brockedon and Hancock patent, it is clear, from that patent and the evidence, that it was not intended for gas tubing, and that it could not have been flexible gas-tight tubing; and it is more than doubtful whether it would have been gas-tight, even though not submitted to flex-ure.
There must be a decree for the plaintiff for a perpetual injunction, and an account, but without costs. Tuck v. Bramhill, before cited; Act March 8, 1837, §§ 7, 9 (5 Stat. 193, 194); Act July 8, 1870, §§ 54, 60, 111 (16 Stat. 206, 207, 216).