670
l1'EDlmA'L ·REFORTER.
MEYERS and 'others Circuit (Jourt, PATENTS FOR
'/1.; BUSBY·.
N. iJ.--Ca,li!prnia. October
The fourth and fifth defenses' tc> suits for infringements of patents. authorized to be illllde by section 49?Q. ,Rev.. St.· are separate and independent defenses; and each requires its appz:opriate notice or in order to let in testimony to establish the defense, -,
(Syllaott8 01/ the (Jourt.)
Action in equity to enjoin the infringement ofletters patent No. 141,. 580, to the complainant Louis Meyers, issued on the fifth day of August, A.' D. 1873, for" a glove-fastener.'" The claim is as follows: "I claim as my invention, and desire to secure by letters patent, the glove fastener, consisting of·a cord, B;whieh;is fastened with both ends to one flap otthe glove,.and drawn thro1,1gh.;h!)les in:theother flap, to operate in nation with the button or as set forth. II The respondent is a glove manufacturer at San Francisco, and practiced the invention under a license from complainant, and paid the royalties therein provided j but at its termination he declined to renew it. He continued, however, to practice tbe invention against the will of complainants, and thereupon this suit was commenced to .enjoin him. A preliminaryinjunction was granted at the commencement of the suit. The answer of defendant presents three matters of defense. It alleges: "Fi1'st, that the complainant Louis Meyers was not the first inventor or discoverer of any material or substantial part of the device for fastening gloves, covered by the letters patent mentioned in complainants' bHl of complaint; second, that the said device for fastening gloves so covered by said letters patent had been in public use or on sale in this country for more than two years before the application of said Louis Meyers for a patent therefor; third, that the defendant has not infringed the patent of the oomplainants." The provisions of section 4920 of the Revised Statutes, under which the first and second ofthe defenses are pleaded, are as follows: "(4) That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented. (5) That it had been in pUblic use or on sale in this conntryfor more than two years before his application for a patent, or had been abandoned to the public. If anyone or .more of the matters alleged shall be found tor the defendant, jUdgment shall be rendered for him, with costs." J. H. Miller, for complainant· . Gray &: 'Havens, for defendants. Before SAWYER, Circuit Judge. SAWYER, J" (orally.) In this case there is really only one defense that is available, and on which any testimony was taken, or could be taken under the answer, and that is, as to the prior public use for two years before the application for the patent. The fourth defense under the statute, that it is not new I and the invention has been made before, is a distinct defense from the fifth, and the defendants have given no sufficient
· MEYERS 11. BUSBY.
671
notice of any testimony--and no testimony other than that applicable to the defense of two years' prior USEr-on the question of prior invention; nC' notice of place of residence, or name of any party who invented it before, or knew ofit before it wa'siinvente&bythe patentee in this case. As to the other defensE1, no. two years.', publiq prior use has been sQown, :unless it be, in the state of New York. I do not think the defendants have made out the defense, that it was in use in New York state two years,or afany time before the application for a patent. It is true, that one man atone shop, another one atanother, testifiedthat they had seen it; that the patented articles, asiIIlilar glove, had been made and sold at the' manufactory where they worked in 1869, or /!-bout that time, but they are contradicted by other1witnesses, by one of the owners himself, of one shop, who said 1,1e .earned it ,Qn, and was. perfectly cognizant of what was done there, during the time referred to, and, also, by his glove-cutter. They both testified, positively, that the invention was not made in that shop, or sold or used by them. They knew the facts, and were the very persons pointed out by the witnesses who testified for defendant in the case, that he had conversed with upon the subject, and, inconjuction with them, investigated the mode of making. . The witness is, thoroughly, contradicted. It seems to be one of those:cases, where somebody, years afterwards, in looking back to find I,IJl that he remembers some such case. I do not think the two-years prior use, or any use at all, is, lilatisfactorily, shown. On the contrary, I think it is clearly contradicted. It is not merely the negative testimony of some one, who had never seen the thing. It is the positive. evidence of parties, one the owner and the other the cutter,who must ,have seen the invention, had it been ma.nufacturedby themin their shap,and then sold.. The same is true in the other case in New York. The testimony of defendants' witness is contradicted by several witnesses who could not be mietaken. In both cases at Chicago of parties one of whom said he brought a pair of similar gloves from Norway, and wore them in Chicago in 1872, and another who also brought to this country a pair in1874, the evidence is not satisfactory. If either is correct, the case was not in time, as the application for the patent WilE made July 16, 1873. I very much doubt the reliability of the' testimony. There was but a single pair brought some 15 years ago .from Norway. It is ecarcely probable that a pair of gloves would be kept or remembered so long, there. being nothing in particular to attract attention to the matter. It w;ould a very unsafe incident upon which to overthrow a patent, at this ll!-tedate, on the ground relied upon. At all events, it was not two years, or one year before the making of the applicatiqn for a patent in this case, which was made on the sixteenth of June, 1873.. One of these pairs of .gloves was .brought to this country in 1874 or 1876, long after the application, and the other was alleged to have been brought 1872, within the period of two years, even if the testimony be true; but, I greatly. doubt if that glove was brought from . ., Norway in 1872. . There must be a decree for the complainant, and a reference to the master to ascertain the net profits and the damages, and it is so ord,ered.
672
FEDERAL
THE W ALLACE. 1 ."j'
COMFORT !'.THE WALLACE.
(District Court, E. PILOTS - NEGLIGENCE MAIN CHANNEL.
n. NetUJ
York. November 9, 1887.) SHIP TOUCHING BOTTOM .
SWASH. CHANNEL -
ICE
IN
Libelant, a pilot, took a ship to sea through the Swash Channel. On the passage she touched bottom, and damaged her keel, and in this. action by the pilot for his pilotage fees the vessel set up, the said damage, and alleged it to have been caused by the pilot's negligence. The evidence showed that the "essel was in the channel, the depth of Water in which exceeded her draught, when she encountered a heavy and unusual wav.e"which lifted her, and caused her to strike; that the reason of her not taking the main channel was the presence in the latter of ice; and that libelant, before starting, had been warned by the owner not to take the ship through ice. Held, that no negligence on the part of the pilo,t was shown, and that he was entitled to his pilotage fees.
{krpenter &: M08he:r, for libelant. . Wing, Shoudy '&: Putnam, for claimant. BENEDICT, J. This is an action by a pilot to recover his pilotage for taking to sea. the ship Wallace, in February, 1885. The pilot took the ship through the Swash Channel, and, while passing through the channel, the ship touched the bottom, and damaged her false keel to the extent of about $200. The defense set up is that "the libelant, in whose sole charge the boat was, directed her course through the Swash Channel in so negligent and imprope!' a manner as to cause her to touch bottom." The negligence here charged is not keeping the vessel. in the channel proceeding through the Swash. .This charge is wholly unsupported by evidence. The negligence contended for in the brief of the claimant is in "attempting to take the ship through the Swash ChanneL" The answer does not permit such a contention, but, if it did, the contention must fail. It is proved that the Swash Channel, although narrower thlln the Main Channel, has the deeper water, and is Constantly used by vessels coming to and departing from New York; that, when this ship went through, the depth of water exceeded her draught; that the cause of the ship's touching bottom was a heavy and unusual wave,. which was encountered while in the channel, by which the ship was lifted so as to cause her to strike bottom; that when the pilot reached the Swash Channel there were large quantities of ice in the Main Channel, and before starting the pilot had been warned by the owner not to take the ship through the ice, because her bottom was of soft wood. These circumstances relieve the pilot of the charge of negligence. Attempting to take the Swash Channel under any circumstances is not to be held negligence, and I am not willing so to hold. The libelant must have a decree for the amount his pilotage, with interest and costs. 1 Reported
by Edward G. Benedict, Esq., of the New York bar.