6 F. 500 | U.S. Circuit Court for the District of Southern New York | 1881
This suit is brought on re-issued letters patent No. 8,199, granted to the plaintiff April 23, 1878, for an “improvement in pocket check-books;” the original patent No. 183,347 having been granted to James R. Osgood, as assignee, on the invention of said plaintiff, October 17,1876. The specification of the re-issue, reading what is outside of brackets and what is inside of brackets, leaving out what is in italics, says: “Figure 1 represents a face view; Figure 2, perspective, showing manner of folding; Figure 3, face view of another mode of making my invention; Figure 4, perspective of same. Like letters indicate like parts in all the [drawings] figures. The object of my invention is to provide a pocket check-book which shall at once be convenient to carry in the pocket, and which shall at the same time be provided with suitable stubs having sufficient surface to enable the user to ke,ep the record of his checks drawn, and of his deposits. Prior to my invention pocket check-books were made having the stub at the roar end of the cheek, from which the check was torn when used. Such check-books were found, in practice, to be too long to be carried in the pocket. Other check-books had the stubs extending all along the tops of the checks; but such' books were too broad, and the stubs were of an inconvenient and unusual form. My invention avoids all of these difficulties, and consists in so constructing the check-book that it shall be not materially longer or broader than the cheek itself, while at the same time it provides stubs of the size and form used in ordinary office check-books. In my check-book, the stubs, AA, are of about the usual size, and are provided at tlifeir rear end with a lip or binding piece, bb, to bind them firmly into the back of the book. The chocks, cc, are attached to them, not at their front, but at the top and bottom, at the line, dd, so that the stubs extend from the bound back nearly the whole length off the check, and between them. The two stubs are formed of one piece of paper, the second one following the first in the length of the book. They are of about the size of those in any
Taking what is above cited from the test of the specification of the re-issue, and reading what is outside of brackets, and what is in italics, and omitting what is inside of brackets, we have the text of the specification of the original patent. The original patent had-but one claim, which was in-the same words as claim 2 of the re-issue. The drawings in the original and the re-issue are identical with each other. It is plain that the descriptions in the two specifications are the same, and that the only difference between the original patent and the re-issue consists in adding in the re-issue claim 1 therein. It is also plain that the drawings and
It is not claimed that the defendant has infringed the second claim of the re-issue, but it is alleged that he has infringed the first claim of the re-issue. The answer avers that the defendant has made and sold bank check-books under and by virtue of letters patent No. 191,436, granted to him May 29, 1877, for an “improvement in bank checkbooks,” and that he believes such making and selling are the acts of which the bill complains. The plaintiff proves the sale by the defendant of five check-books, one of which is produced, and which, it is clear, is made according to the description and drawings in patent No. 191,436. According to such description and drawings, and from the check-book so produced, it is manifest that in the defendant’s checkbook there is a combination of checks and stub pieces of substantially the same size, and that two checks lie between every two stub pieces. The defendant’s check-book is composed of a series of leaves, each printed on one side, to form a blank bank-check, and of another series of leaves, each printed on both sides, to form stub leaves on which to keep a record of each check, and of bank deposits and bank balances. Between every two stub leaves are two cheek leaves, the check leaves and the stub leaves being of the same size, bound together at the left hand, and each cheek-leaf perforated by a line of cross perforations near the place of confinement at the left, to enable the check to be readily severed. When the first check leaf at the right is filled out, the transaction is recorded on the adjoining face of the stub leaf at the left of it; and when the next succeeding check leaf at the right is filled out, the transaction is recorded on the adjoining face of the stub leaf at the right of that cheek leaf. Each face of a stub leaf has on it a place to record the particulars of the check belonging to it, and also by the side of such place a place to keep an account of bank deposits and of the bank balance, the former place being always nearer
The differences in construction between the book first described in the plaintiff’s re-issued specification and the defendant’s book are that in the defendant’s book the two checks are not attached to their stub leaf, one at the top and one at
On the question of infringement the first question is as to the proper construction of the first claim of the plaintiff’s re-issue. On this subject, as well as on the question of novelty, several alleged prior inventions are introduced. These are, English provisional specification for order books No. 2,918, filed December 21, 1858, by Nicholas Dawson; English provisional specification for arranging manifold letter books No. 1,992, filed September 1, 1859, by James Brine; English provisional specification No. 1,109, for counterslip note-book, filed May 3,1864, by Bradly and Fielding; United States patent No. 170,686, granted December 7, 1875, to Ben. Morse, for “an improvement in tickets;” United States patent No. 171,429, granted December 21, 1875, to John M. Savin, for “an improvement in tickets;” and the structures represented by Exhibits C and D, testified to by Joseph H. Mann. Savin’s patent need not be considered, as the application for the plaintiff’s original patent was filed May 6,1875, and that for Savin’s patent was filed November 4, 1875. In no one of the other prior structures referred to is there shown any check-book in which two checks were interposed between every two stub leaves or record sheets, or in which the check and stub leaves were of substantially the same size, or in which there were two checks between every two stub leaves, or only one stub leaf for every two checks, or less than one stub leaf for every check. These are distinguishing features of the plaintiff’s book and of the defendant’s book. Dawson’s specification shows alternate leaves perforated to be detached, and alternate leaves bound to remain, leaf for leaf; the leaves to remain being used for copies of matter written on the detachable leaves, either by making the detachable leaves of metallized paper, or interposing, while writing, carbonized paper between the two leaves. Brine’s specification shows alternate leaves of prepared copying paper and of ordinary writing paper, the latter being perfo
In Exhibit 0 of claim, the stub leaf is only one-half the length of the check, and there is but one stub leaf for each check. A book made of them, whether partially used or not, showed stub leaves of not substantially the same length as the check leaves.- Exhibit D shows nothing different from Exhibit 0.
It was not new at the date of the plaintiff’s invention, as shown by the foregoing matters, to make books containing leaves, which, when filled up, were to be detached, and other leaves for recording the contents of the first leaves, which other leaves were to remain in the books. Nor was it new at that date to make such books not larger, substantially, in either direction than the size of the leaves to be detached, and with the leaves to remain as large in size as the leaves to be detached. Nor was it new to make check-books with stub leaves, one stub leaf interposed between two checks, and one cheek between two stub leaves, and the book no larger substantially than the check. But these things do not meet the first claim of the plaintiff’s re-issue, nor do they meet the features found in the- defendant’s book which enter into said first claim, as those features are hereinbefore set forth.
It is suggested on the part of the defendant that the first
It results from the foregoing views that the charge of infringement is made out, and that neither what is claimed in the first claim of the plaintiff’s re-issue, nor what is found in the defendant’s book as infringing that claim, is shown to have existed prior to the plaintiff’s invention.
The answer sets up as a defence that the specification and claim of the plaintiff’s re-issue cover a larger improvement
No other defence set up in the answer is proved. No de-fence of abandonment is set up. All the views presented on the [part of the defendant have been considered, and there must be a decree for the plaintiff for an account of profits, and an ascertainment of damages and a perpetual injunction, with costs.