33 F. 261 | U.S. Circuit Court for the District of Northern Iowa | 1888
The complainants, as the owners by assignment of letters patent No. 157,124, issued to Joseph F. Glidden, under date of November 24, 1874, and declared to be for an improvement in wire fences, file the present bill for the purpose of restraining the defendants from continuing the manufacture of barbed wire at Waterloo, Iowa, on the ground that the wire so manufactured by defendants includes and embraces the improvements covered by the letters patent above named. In substance, the defenses interposed are—First, want of useful novelty in the Glidden patent; second, that, if there are elements of novelty in the patent in question, Glidden was not the first inventor thereof; third, that even if it be true that Glidden was the first person to construct the barb or spur upon fence-wire by winding around the plain wire a short piece of other wire, nevertheless he had dedicated or abandoned such improvement or invention to public use before he obtained the present patent.
In order to ascertain the elements of novelty, if any, embraced within the combination described in this patent No. 157,124, it is necessary to ascertain the progress that had been made in the development of what is now known as barbed-wire fences at the time Glidden entered the field,
“A twisted fence-wire, having the transverse spur-wire, D, bent at its middle portion about one of the wire strands, a, of said fence-wire, and clamped in position and place by the other wire strand, 2, twisted upon its fellow, substantially as speeiiied,”
When Glidden applied for the patent, in 1873, the use of a plain wire for fencing was old; the use of a twisted wire to increase the strength of the fence was old, being found in the Kelly patent of February 11, 1868; the use of spurs or shal'p points attached to the fence-wire to prevent animals from rubbing against, and thereby breaking, the same, was old, being shown in the patents of Smith, Hunt, and Kelly; the making of the spur, thorn, or barb out of a short piece of round wire was old, being shown in the second patent to Kelly, issued November 17, 1868.
Novelty in the Glidden combination is predicated of two things,—one in the mode in which the spur or barb is attached to the fence-wire, to-wit, by coiling it around the same, so as to leave the two ends of the
Examining these claims in the reverse order, is there novelty shown in the use made of the second wire in the Glidden combination ? The claim is that the second wire aids in keeping the spurs in their proper place. When the spurs are placed upon the fence-wire, motion in two directions is possible, to-wit, laterally along the wire, and by revolution around the wire. If the spur is drawn tightly upon the wire, freedom of motion in both directions is more or less prevented. The twisting of the second wire around the first aids in preventing freedom of motion of the spur, not by so clamping the spur as to bind it to the first wire, but by the blocking effect of the second wire; that is to say, if the spur be moved either laterally or circularly on the first wire, it will strike against the second wire, and further motion will be thus prevented. This is certainly the main effect produced by the second wire. It is true that if care is exercised in the making of the combination, and the second wire is tightly drawn, it will have some slight effect upon the spur by reason of the pressure against the same, thus aiding in the keeping it in place; hut, practically, in wire as usually manufactured, the beneficial results of the second.wire are almost wholly, if not entirely, due to what I have termed the blocking effect of the second wire. Is not the same true of the form of wire shown in the Kelly patent of February 11, 1868, and denominated “Figure 2 ” in the drawing thereto attached? The barbs' or spurs having been prepared with two sharp points, are strung upon the fence-wire, and are affixed thereto by a blow struck upon the side of the barb. The mechanical effect of the blow thus struck is the same as the drawing of the coiled spur in the Glidden combination. In both cases, the aperture in the barb through which the fence-wire passes is lessened for the purpose of causing the barb to adhere to the fence-wire. Then, in both combinations, a second wire is twisted around the fence-wire with the barbs thereto attached. When twisted around a wire having the Kelly barb on it, the second wire, if carefully and tightly drawn, will tend to clamp the barb against the fence-wire. Its effect in this particular would not probably be very great; but the difference in the operation in this respect in the Kelly and Glidden combinations would ho a difference, and that hut slight, in the resulting effect, and not at all in the mode of its operation. In the Kelly, as in the Glidden combination, the principal effect produced upon the barb by the use of the second twisted wire results from the fact that the twisted wire acts as a block to the motion of the spur, either Literally or circularly, upon the first or fence-wire. This blocking effect is absolutely identical in both combinations; that is, in each form of wire, motion of the barb is checked by the barb coming in contact with the twisted wire. It may be true, as was strongly urged in the alignment, that in the Kelly form of wire the barb can* be moved somewhat in a circular direction before it is arrested by the twisted wire, whereas in the Glidden wire but little or no circular movement can be had, but it is the twisted wire that checks the
But it is said that in the case of Manufacturing Co. v. Fuchs, 16 Fed. Rep. 661, in the Eastern district of Missouri, Judge Treat held that the Kelly patent did not embrace the blocking effect of the twisted wire, and that therefore it has been judicially determined that Glidden’s claim to novelty in this particular is not defeated by anything found in the original Kelly patent. An examination of the case cited shows that in fact it embraced five causes, in which complainants, as the owners of the Kelly and Glidden reissued patents, sought to obtain preliminary injunctions restraining the several defendants from manufacturing barbed wire, which it was claimed infringed the rights secured to complainants by the reissued patents relied on. Judge Treat held .that both the reissued patents were void, and therefore refused the motion for injunction. The judicial conclusion thus reached and announced does not determine the question now under consideration, nor does it relieve this court from the duty of examining and determining it. It is unquestionably true that in comparing the original and reissued Kelly patents, for the purpose of determining whether the reissue had been unlawfully expanded, the court considered the question whether the original patent suggested the locking effect sought to be secured by the reissued patent, and reached the conclusion it did not.
The court, in that case, was dealing with the two Kelly jaatents. In the present case, the court is called upon to determine whether, in the use of the twisted or second wire,—the form in which it appears in the Glidden combination, covered by the letters patent No. 157,124,—any patentable novelty is discoverable, when the same is compared with the combination set forth in the drawings and specifications connected with the original Kelly patent. The question is not whether Kelly’s patent secured to him this invention, but whether the drawings and specifications contain the idea or invention; for, if it is found therein, then Glidden simply appropriated that which was already known and in use. Turning to the specifications of the Kelly patent, after describing the maimer of making and stringing the thorn or barb upon the fence-wire, we find it said that, “I term these pieces ‘ thorns, ’ and it will be observed that each presents two sharp points. They may be so placed that they will all stand in the same plane, or they may stand irregular in many different planes. I prefer the latter arrangement. I can, when it is desirable to increase the strength of the wire, lay another wire of the same or a different size along-side of a thorn-wire, and can twist the two together by any suitable mechanism. This construction is represented in Fig. 2. It tends to insure a regularity in the distribution of the points in many different directions.” Now, certainly, the last sentence shows that Kelly understood and claimed that the use of the second wire accomplished a pur
Without any aid from the language of the specifications, a mere inspection of the drawing representing tho use of the twisted wire would disclose at once the result obtained in the way of blocking the free movement of tho spur or barb. It is a result that cannot possibly be avoided. A second or twisted wire cannot be used in the mode described by Kelly, without blocking the free lateral and circular motion of the barb, and its effect in this respect is so plain that it could not escape the notice of any reasonably skilled mechanic. If the contention of complainants in this particular is correct, and there is found patentable novelty in the Glidden patent, in the use of the twisted wire for the purpose of clamping the spur upon the fence-wire, then it would follow that, in 1878, (Hidden could have obtained a patent therefor. In other words, without any change in tho form of the spur or barb, he would have been entitled to a patent covering the use of tho second wire for tlie purpose of aiding in fastening or holding the barb upon the wire. In such case, ho would have presented to tho patent-office a drawing and specifications exactly describing the combination shown in Fig. 2 of the drawing attached to the Kelly patent, to-wit, the twisted wires, with the barbs or spurs locked between. The utmost that he could have asserted in support of his claim to a patent therefor would have been that he perceived more clearly the beneficial effect resulting from the combination in the direction of holding the spurs upon the wire; but he could not have successfully asserted that any act or thought of his had produced or increased the beneficia,] effect of the twisted wire used in combination with the Kelly barb. Kelly had invented or made known the combination. The combination, when used,, will aid in holding the spurs in place upon the wire, and cannot be used without producing this effect. It is ail absolutely necessary mechanical result. The fact that Glidden might have porcoiyed with greater clearness the results that How from the use of the second twisted wire would not have entitled him to a patent as the inventor of such use.
We are thus brought to a consideration of the question whether patentable novelty in the Glidden combination is found in the mode in which the spur or barb is constructed and affixed to the wire. In view of the fact that in 1873, when Glidden applied for his patent, the use of barbs upon a wire fence, and the use of a. second or twisted wire to aid in holding them in place, and the mode of affixing the barbs upon the wire, by passing the fence wire through an aperture in the middle of the barb, and the formation of the barbs out of pieces of short wire with sharpened ends, were all known and described devices, it is not to be wondered at that the claim of novelty asserted in support of the Glidden patent, growing out of the mode of constructing and affixing the barb, has been sharply criticised. That a barb constructed in the mode shown in the Glidden patent is simple and most effective cannot be questioned. It was a valuable improvement in the art of constructing wire fences. Its
It is contended, however, by the defendants, that Glidden is not the originator of this form of barb, and that this mode of constructing and affixing the barb was known and in use long prior to the date of the Glidden patent. The burden of establishing prior use is of course upon the defendants, and it is a defense needing clear and satisfactory evidence in its support. It cannot be rested upon mere possibilities or even probabilities, but it must be made practically certain in all essential particulars.
The first instance of prior use relied upon by defendants, is that known as the “Morley Invention.” In the case already cited against the Grinnel Wire Company, decided by Judge Brewer, it was claimed that a panel of wire fence had been exhibited at Delhi, in Delaware county, Iowa, at a fair held in 1858 or 1859, containing barbs put on by coiling the same upon the fence-wire. The evidence touching the same was evidently wanting in many particulars, as is shown by the remarks of the judge to the effect that it was not disclosed who made the fence, nor ■whence lie came, nor where he went, nor -was any part of the wire shown to be in existence. The defendants in the present case claim that one Alvin Morley was the exhibitor of the panel offence at the Delhi fair, and that they have proved that ho had used other specimens of his fence in several different ways or places, and that it consisted of a plain wire, with barbs coiled around it, made out of short pieces of wire with sharpened ends. The evidence introduced in regard to Morley’s invention covers many hundred pages, embracing the testimony of a large number of witnesses introduced on behalf of both parties, and the utmost I can do is to indicate the general or salient points connected therewith. It is an unquestioned fact that Alvin Morley owned lands in Delaware county; that his family lived in Bradford county, Pennsylvania; that for
On behalf of defendants, one John Dubois, a farmer living in Delaware county, testifies that in 1858 or 1859, at the time the fair was being held at Delhi, Alvin Morley came to his house, having with him a piece of fence wire which had short pieces of wire wound around it; that Morley remained with him that night; that the next day he saw a panel of fence on the fair ground exhibited by Morley, made by stretching wires from a tree or post to another post; and that the wire so used was the same or similar to that previously shown him by Morley. PI. L. Bates testifies that he is a blacksmith; that he attended a fair at Delhi, and aided Morley in putting up the panel of fence that was exhibited.. He describes the way the barbs were coiled around the fence-wire, testifies that he made the tools with which the short wires were twisted around the fence-wire; and describes the tools; and at the request of counsel, during an adjournment in taking the testimony, he made a set of tools, which are exhibited in the evidence; and by actual experiment it is shown that the barbs can be readily put on by means of these tools. The witness also testifies that he afterwards made a pair of shears for Morley, to be used in cutting the wore into pieces suitable for ba.rbs. T. W. Robinson testifies that' he acted as deputy-marshal at the fair at Delhi; that he rode a gray horse, and, having occasion to leave him, he hitched him for a few moments to a fence-post in the fair grounds, and on his return he found the horse’s nose and breast bloody, caused by a cut on his lip, and then, on examination, he saw that the wires attached to the post had snags or barbs thereon, formed by .coiling a short piece of wire around the fence-wire. This witness also testifies that in 1857 he was engaged in work upon a railroad being built through Delaware county, near which Alvin Morley had a piece of land; that Morley was frequently where witness was working, and tried ’to sell him the land for a pair of mules; that he had with him a piece of wire Avith snags on. it, which he exhibited to witness, saying he was going to get it patented. George Underwood testifies that he remembers the fair at Delhi; that he was then a lad'of eight or nine years of age; that, in playing with other boys on the fair grounds, he was thrown against a panel of .fence, and received two cuts; one above and one below his eye, which bled freely, and the scars of which are now visible upon his face; that the cuts were caused by the wires twisted on the fence-wire. Stephen Potter testifies that he attended the fair at Delhi;saw Morley thereat; that he was exhibiting a panel of a fence, made of Avires stretched between a tree ancj a post, with barbs made of short Avires
To meet this array of testimony in support of the allegation that Alvin Morley had used a barb of the same form as that found in the Glidden combination, the complainants rely, first, on the improbability of a man with the mental characteristics of Morley being able to conceive or invent such a fence. That he was of unsound mind is not questioned. The undisputed facts show, however, that he had ability enough to attend to his business affairs, and that his mind ran on inventions of different kinds. . Dr. Boomer, a witness called by complainants, who attended Morley professionally, and knew him from 1858 or 1859, testified that he was sane most of the time, and upon most subjects. Taking the whole evidence together, it wholly fails to show that, in 1858 and 1859, Morley did not possess sufficient mental ability to do all that is claimed that he did. Complainants’next reliance is upon the testimony of the immediate family of Mr. Morley, to the effect that they never heard him say anything about barbed wire or barbed-wire fences. None of Morley’s family ever resided in Iowa; they remained in Pennsylvania. Eliza Morley testified that she was the widow of Alvin Morley; that he had died 18 years ago; that she was 88 years old; that she never was in Iowa; that her husband had spent a great deal of his time in Iowa; that when at home he talked fully about his business; that she did not think he ever said anything about barbed-fence wire, or fence-wire with sharp points on it. It does not appear that he ever mentioned to her any of his inv.entions. The testimony of the two daughters was to the same effect. George Morley, a son, testified that he visited Iowa once in'1858, 1859, or 1860; that he was at his father’s mill some time, and saw no barbed wire about it, nor did he hear his father s.ay anything about it. Frank S. Morley testified that his father never said anything about barbed wire; that he did describe the traveling cow-pasture, and made a rough model of it. It will be remembered that, in 1866, Alvin Morley had applied for and obtained a patent upon a so-called traveling cow-pen. This patent was found upon the body of Alvin Morley, and-passed into the keeping of the son, Frank S. None of the family testify that the father ever mentioned any other invention save the cow-pen. This they' would remember because they had the patent. The complainants, by their own evidence, show that Morley had been working at a number of other contrivances in Iowa. If Morley never mentioned any of these to his
In regard to the fair exhibit, there are but two solutions that are admissible: Either the witnesses for defendant have been enabled to re
A large amount of evidence has been adduced by both parties in regard to what are termed the Long, Stone, Hutchinson, and Beer’s fences. It is unnecessary to refer thereto at any length. If I am correct in the conclusion reached o touching the Morley invention, it is immaterial whether the construction of these fences antedated Glidden’s. patent or not, for one instance of established prior use defeats the patent as effectually as a dozen. On the other hand, if the evidence in support of the Morley invention is insufficient to establish a ease of prior use, then it would be useless to claim that there was sufficient evidence to establish such priority in any of the other instances named.
Having reached the conclusion that the defendants have shown that Alvin Morley did, as early as the year 1859, make use of a barb, formed of a sharpened wire coiled around the strand or fence wire, for the identical purpose subserved by the barb in the Glidden combination, and that this use was not confined to mere experiment, but was applied in the construction of fences upon his property, and became knowm to bis neighbors and acquaintances, it follows that Glidden is proved not to have been the first inventor of either the twisted wire, or the coiled barb forming his combination; and, if he was not the inventor of either, then the only change he made in his combination was to substitute for the Kelly form of barb a coiled barb not his own invention; and this act of substitution cannot be held to be invention, as the result of the combination did not effect any novel result. This being so, the patent in question cannot be sustained.
Defendants also rely on the further defense of abandonment on part of the patentee; basing this upon the facts connected with his applications for the several patents issued to him. The first application filed by
“I disclaim the invention of prongs per se broadly, as such have been attached to wire fence before, but coniine myself to what is set forth in the claim. * * * I claim the combination of the prongs or spurs, D, E, with the twisted wire, A, A, and twister, 0, when the latter is used in the manufacture and support of the fence as set forth.”
The application as amended was again rejected; and Glidden, by his attorney, addressed the office, under date of December 29th, urging the value of the twister as an important and novel element in the combinaton. No reference is made to any claim for novelty in the form of the spurs, or in the manner of affixing the same to the fence-wire by coiling. Under date of January 12, 1874, the application was for the third time rejected. On the fourteenth of March, 1874, Glidden filed an application for a patent for an improvement in wire-strctchers for fences. In the drawing attached, two wires are shown with spurs, made of short pieces of wire coiled around the fence-wires. In the specifications, it is stated:
"1 do not claim to have originated the devices known as ! spurs ’ or ‘ prongs ’ on the wires, they having been used before, but confine myself to the means for holding the spurs at proper intervals on the wires, and to the means for obtaining a uniform tension of the wires, as claimed.”
A patent oil this application was granted under date May 12, 1874. On the twentieth of June, 1874, Glidden filed an amended specification in the application already rejected; and finally, on the twenty-fo-urth of November, 1874, the patent involved in this suit was issued. January 26, 1876, an application for a reissue of the patent of May 12, 1874, was filed, and granted under date of February 8, 1876; the claim being for, “in combination with a fence-wire, a barb formed of a short piece of pointed wire, secured in place upon the fence-wire by coiling between its ends, forming two projecting points, substantially as specified.” This reissue lias been adjudged to be void, being an attempt to enlarge the claim of the patent on which it is based.
There can be but little question that if Glidden had not procured the issuance of patent No. 157,124, on the amended specifications filed June 20, 1874, there would he no escape from the conclusion that either ho did not claim to have invented the coiled barb, or, if he had originated the same, that he had dedicated such invention to public use. In the combination filed December 9, 1873. a disclaimer of the invention of prongs is made; the claim being for the combination of prongs or ■spurs with the twisted wire. Taking the disclaimer in connection with that found in the application for patent No. 150,683, and remembering that in these applications and drawings the mode of forming the
The patent being void, however, on the ground that it is only a combination of known elements, of which Glidden was not the first inventor, for the production of an old and known result and that it is therefore lacking in patentable novelty, the bill in this cause must be dismissed on its merits, at complainants’ costs.