J'EDERAL REPORTER,
vol. 64.
Sp,ppP1,g. The claims, three in· number, are designed .. toproteot the -tllswner and all its. features. The defenses are lack of novelty and invention, noninfringement and failure to mark the fasteners ''J'atented'' pursuant to section 4900 of the Revised Statutes. It appeaI"B that plates preciselY,like the patented plate, minus the holding jaws, had long been used as rope fasteners. Holding jaws for ropes were also old. Did it involve invention to place the old holding jaws upon the old plate? No new principle ie invoked, no new result is accomplished, 1/.0 new function is performed by this simple device for obtaining more friction. A mechanic finding tliat a rope held by the Sier or Sawyer fastener slipped under certain conditions would know that greater frictional surface was needed. 'l'hecomplainant's expert suggests one thing that he might have done, .but the thing which Taylor did do seems the more natural and obvious. Augmenting and decreasing friction according as the motion of the device in hand is to be retarded or accelerated is one of the oldest principles of mechanics. Taylor invented no new remedy, he simply gave a little larger dose of a very old rem· edy. It is thought that the defendant's expert is correct in saying: "In other words, In laying the Newell jaws onto the back of the Sier rope fastener, Taylor not only did not secure any different result or any new mode of operation. but did not even produce a new combination of parts, for this same combination was both suggested by, and substantiaIly embodied In, the Whiteman bale tie. the Johnson clothesline fastener and the Sherman fire escape."
In the recent case' of Sargentv. Covert, 152 U. S. 516, 14 Sup. Ct. 676, the supreme court say of, a device which, like the device O'f the patent, was a clasp or rope fastener: "Each of these screws' compresses the rope within the socket, but the Covert screw, being sharpened, penetrates further than the other. The change Is in degree and not in function. * * * Weare of the opinion upon this record that the alleged improvement was such a one as would have occurred to anyone practically Interested in the subject, and that it did not involve such an exercise of the Inventive faculty as entitled it to protection."
It is thought that this language is equally applicable to the patent in suit The bill is dismissed.
DALBY v. LYNES. (Circuit Court, D. Massachusetts. No. 2,561. 1. PATIllN'I'S.,...DElrlllNSE OF
July 12, 1894.)
PRrOR USE-EVIDENCE TO ESTABLISH. Proof that certain articles anticipating the patent In every particular, and of practical use, were J+lade for use as samples, held sufficient to estnbllsh the defense of prior use, although It was not shown that they ever'became known to any others than the person who made them, his daughter, who helped finish. them, and the person for whom they were made. Egbert v. Lippmann, 104 U.S.:333, followed.
DALBY fl. LYNES.
377
2.
SAME-DEFENSE OF PRIOR USE-BuRDEN OF PROOF.
The burden of showing that a prior use set up by defendant was forgotten and abandoned before the invention made by the patentee, It competent, is upon the complainant.
8.
SAME-INVENTION-KNIT GARMENTS.
There is no invention in applying to the making of undershirts a peculiar stitch and method of putting together, already well known in the making of Cardigan jackets. The fact that the patentee was the first to put upon the market articles made according to his specifications, and that they at once went Into public favor, so that large quantities were sold, cannot be considered as evidence of patentable Invention, except when the case is otherwise doubtful, nor unless enough Is shown, in addition to the mere fact of extensive sales, to enable the court to judge whether they arose from the intrinsic nature of the alleged invention, or otherwise. Watson v. Stevens, 2 C. C. A. 500, 51 Fed. 757, fonowed.
"
SAME-LARGE SALES AS EVIDENCE OF INVENTION.
Ii.
SAME-PATENTABILITY.
The Dalby patent, No. 357,068, for improvements in undershirts or vests, held void as to the third claim because of prior use and for want of Invention.
This was a suit in equity by Thomas Dalby against Alexander 357,068, issued Lynes for alleged infringement of letters patent February 1, 1887, to complainant, for "improvements in undershirts or vests." The invention is thus described in the specifications of the patent: "This invention consists, primarily, in constructing undershirts or vests so that they shall be shaped or fashioned to the body without the employment of either a narrowing or a widening machine, or the cutting of any portion of the fabric at the narrow portion of the body, or the cutting out of the·shape. The body of the shirt or vest is knit so as to have the same ribbed structure throughout, except that the top and bottom portions are formed of half Cardigan, and the central or waist portion of Derby rib (or, as it is also termed, 'one-and-one rib'), whereby the requisite narrowing of the body is secured at the waist to conform to the shape of the body without necessitating the cutting away or cutting out of any portion of the fabric. Two connected parts thus formed, and constituting the back and front, respectively, of the shirt, are joined together by selvage edges. The invention further consists in forming the sleeves separately from the body, the wrist portion being formed of a Derby rib, while the arm portion is formed of half Cardigan, whereby the requisite width and elasticity is secured, the arm portion being secured to the body by stitching, without the intervention of gores or gussets, all as hereinafter described."
The third claim, which was mainly in issue, reads as follows: "(3) An undershirt or vest having sleeves, the arm portions of which are formed of half Cardigan, and the wrist portions of Derby, or one-and-one, rib, the edges of each sleeve being united by a seam at x, and the arm portion stitched to the body of the garment, substantially as described."
The defenses mainly relied on were prior use and knowledge by others than the inventor, and want of invention. In respect to prior use and knowledge, there was testimony by one Charles Evans that in October, 1882, he made some children's shirts for Mr. William Carter, to be used as samples; that the cuffs of these. shirts were made with a "one-and-one" stitch, and the sleeves with a "royal rib;" and that they were finished by his daughter, Mary A. Evans, who put some crochet work on the neck.
378,
FEDERAL REPORTER,
John L.S.. Roberts, for complainant. , ," Storrow,' for defe,ndant. PUTNAM, Oircuit Judge. The ansWf;!radmits of the tMrdrclaim of the complainant's patemt'in,the evenUt is found to })e·valid.'::iIil: denies infringenlentof any other claim, and none such is proven. Therefore, it is conceded that the third chtim,is alone in r; r.t;4e, -Ql.e e,yidence in this cause is directed aiallegedpriol'use and knowI.edgebyothers than the in'entor. The last affirmation of the rule of ,evidence touching this defense Daniels,15S,'·U. S. 120,:123,14: Sup.Ct. 772, where it is to the of a'decisi<tn, of the commissioner of patents in a ,case.' of interference. lIt m, in snbstance, that the burden of proof rests on whomsoever sets up this defense, 'and that every doubt 'should be res()lved against him. The supreme cphttaee'm to ht\vethua laht down. a rule touching the weight of evidence not knowriin the common law in civil causes, with one or two extreme exceptioos. A practical illustration of its applicationis'fdUnd in Coffinv. Ogden, 18 Wnll.120. Conceding that the priorfuatter was not embryotic nor inchoate, did not raise any speculation or experiment, and had reached consummation, the courtht51dthat prior knowledge and use by a single peI'son Was suffi· cient. This Wf\JS under the act of 1836; but, so far as it touches the ease at bar, we are notaware of any change in the law. Even to public use,with the consent of the inventor, for more f4antwoyears prior .to his a,pplication, the court held, in the well-known case of Egbert v.Lippmann, 104 U. S. 333, that use, by a singlenerson was', SUfficient, if under such circumstances that the of the use might have been: communicated to others restrtction imposed by the inventor; and this couttin8titt v. R.ailroad 00.,22 Fed. 649, remarked (page 651) that it was not necessary that the prior matter should have been actually used (orihe purpose contemplated, although it must have been ca· such use... We to tlie conclusion that the manuthe for Carter meets clearly all the' requirements of this defense, in the way in which they were praeti· cally understood in the cases referred to. One of the original samples is and there cannot be the slightest doubt that they were made as. early October 1882, and that they anticipated Da:lby in every particular. Although they seem to have been used only as samples, and ·are not proven to have been known to, others than Evans, who knit them, his daughter, who aided in finishing them,and Carter,for whorn.tp.ey were,knit, y.et they were of practical complete in eve,ry particular, were in nosen$ee:x::perilU(mtal, except the, sense of being' experimental to the trade or accepted by it, and Carter was unger no re!3.trictiRn whatever with reference to tM dlltde,. use, or This defense seems to. be ,fuJ;bLmaintained·: i ; : , .' " . in {Jonverse v. l\!fatthews, 58 Fed. 2t6, this court Baid:
DALBY V. LYNES.
"There is no equity: nor· public policy which requirefl that one should be deprived of his just reward who revives a lost art, whether buried for ages or for only a few years, although with the latter there is, of course, more necessity fOJ: making SUrEl that tl;le. revival was not suggested by the knowledge of what'had apparently disappeared.;'
Although the statute, in legislating touching what was "not known or used by others in this country," contains no limitation of time, and might, so far as its letter is concerned, apply to what was known used by others within any period whatever, yet it must yield to reason in this particular. Especially is this tMIe with reference to the advance in mechanical arts, so rapid in- this generation, as is illustrated by what we further said in Converse v. Matthews, ubi supra: "With our rapid progress in mechanical improvements, what an ingenious man fails to accomplish to-day, with the appliances now at hand, another ingenious man may accomplish to-morrow, with the better appliances which he then finds; and, if the latter acts from his own resources, he is not to be deprived of the fruits of his ingenuity by reason of the prior failure of to-day, although, without taking into account the change in appliances, it may be diffiCUlt to understand why and wherein one failed and the other succeeded."
This question has been hinted at in the case at bar, but not so thoroughly presented as to enable the court to undertake to lay down any general MIles touching it. It comes in answer to the defense of prior use or knowledge by others, and the burden to make Qut the supporting it rests on the inventor or complainant. So far as authorities go, the line of investigation in this direction is far from complete, and the authorities themselves are neither definite nor well sustained. In Gayler v. Wilder, 10 How. 477, relied on by the complainant, the instruction to the jury, which was sustained, was as follows: "If Conner had not made his discovery public,but had used it simply for his own private purpose, and it had been finally forg-otten or abandoned, such a discovery and use would be no obstacle to the taking out of a patent by Fitzgerald, or those claiming under him, if he be an original, though not the first, inventor or discoverer."
Even this expression was doubted in Coffin v. Ogden, ubi supra, 125. In The Barbed-Wire Patent, 143 U. S. 275, 12 Sup. Ct. 443, 450, and more particularly in Edison Electric Light Co. v. Beacon Vacuum Pump & Electrical Co., 54 Fed. 678, this question might .well have been suggested, if it involved a MIle of very extensive application; yet it was not. We make these observations in order that it may be understood that we do not go beyond what the case at bar 'necessarily demands of us; and fol' that reason all we need say is that whatever may have been the facts when Carter or Evans gave their depositions, in 1890, the complainant has failed to show that, within the language of Gayler v. Wilder, ubi supra, what was done by Carter and Evans in October, 1882, had "finally forgotten or abandoned" in April, 1884, wheI(it is conceded that Dalby was making shirts described in his specifications and claims. There is, howevel', a more fundamental difficulty in the complainant'scase. A novelty invohing a state of art so universal and com-
380
I'EDERAL REPORTER.
"A nO'tel sh'OeB and gaiters, whereby the ordinary elastic 'gormg at the sides and the tedious lacing up at the front are both dispenliledwith,whtle at the sametlme the tops w1ll expand to receive the foot,and,fitnelltly and closely, around the ankle when the shoe is on, beingalso,water-tlght to the extreme top of the shoe." The relations to the prior art and the claimed advantages appearing in that case are singularly like those in the case at bar; and yet the patent was held void for want of patentable novelty. A similar result was reached in Patent Clothing CO. V. Glover, 141 U. S. 560, 12 Sup. Ct. 'l9,,.....a case of an alleged improvement in goring pantaloons, somewhat more sim.ple in its character than the claimed invention at bar, yet in its relations to the domestic arts substantially the somewhat analogous case is Cluett v. Claflin, 140 U. S. 180, 11 Sup. Ot. 725, involving an alleged improvement in adjusting the bosom of a shirt, 9Y which, as in complainant's patent, the raw, and loose threads would be avoided, and the bosom would be rendered firmer, and less likely to rumple or break. Every person owes something to his art, trade, or other occupation, which seems often forgotten when the fancy, tickled by what is new, too frequently elevates it to the importance of invention. Applying the COllunon knowledge and common judgment which, in a case presented Ott bill, answer, and proofs, the court is entitled to apply, as a jury may, we are unable to see anything in this patent except "the natural outgrowth of the development of mechanical skill, as distinguished from invention." Burt V. Evory, 133 U. S. 358, 10 Sup. Ct. 394. It appears that the various stitches referred to in the ,patent had been well known for a, long time, and that the half Cardigan stitch named in it was a mO,dification of the Cardigan stitch, also well known. The complainant testified, on cross-examination, that prior to 1884-the year in which he claimed to have made his invention-he had known Cardigan jackets in which the arm portion of the sleeves was knit in the Cardigan stitch, and the wrist portion in the same stitch which his specifications prescribe; that in these jackets the sleeves were knit in a flat piece, and sewed together on their edges, and sewed to the body of the jacket; that except in the fineness of the gauge, and that the Cardigan stitch was used in lieu of the .half Cardigan, there was no difference between the Cardigan jackets and the undershirts shown by Fig. 3 of his patent; that in this way the requisite width and elasticity were secured 'in the sleeves of the Cardigan jackets, and the wrists were sufficiently narrow without any other fashioning; that the workman, while knitting the Cardigan sleeves, could have changed from the Oardigan stitch to the half Cardigan by merely changing the order of the courses wllich he was knitting, and with very little trouble; that the two stitches could be made on the same machine; and that it was within the skill of an ordinary knitter to knit these
monas the making and adjustment of clmJ1ing must be of a radical charaeter,,'t?oy;ercome the presumption against its patentability. by the expre,ssions and conclusions of the OOl1rtittBurt' v.Evory, 133 U.S.349, 10 Sup. Ot. 394, where the alleged invention was stated as follows:
ANTHONY V. MURPHY.
381
two stitches on the same machine. This testimony was not noticed on the further examination of the complainant in his own behalf, and, while pressed on us by the defendant, has not been explained to us b.r the complainant. It seems to us to be a clear admission that all which the complainant did was to apply to an undershirt what was before well known in a Cardigan jacket,-an adaptation which was within the range of ordinary skill. The cases holding that there is no patentable novelty in this are too numerous and modern to reo quire citation of them in this connection. On the whole, we can say no more than that the complainant's manufacture is one which shows taste and skill in his art, for which, however, he seems to have received the consequent reward by securing an extensive market for a number of years. The complainant relies very strenuously on the claim that he was th'e first to put on the market shirts mapufacturedaccording to his specifications, and that they at once went into public favor, and that large quantities of them were sold. Watson v. Stevens 2 O. O. A. 500, 51 Fed. 757, gave effect to facts of this character; but the case was distinctly stated to be one "of doubt" and "closely balanced," and the improved machine there in question was accepted by manufacturers who had use for it, and who could judge standingly of its value. Touching propositions of this character, the decisions of the supreme court of late have been so numerous that we need not refer to them specifically. It is sufficient to say that they do not admit facts of this character, except when the cases are otherwise doubtful, nor unless enough is shown, in addition to the mere fact of extensive sales, to enable the court to judge whether they arose from the intrinsic nature of the alleged invention or otherwise. The case at bar meets none of these conditions. Bill dismissed, with costs. ANTHONY et at v. MURPHY. (CIrcult Court, D. New Jersey. 1. September 25, 1894.)
PATENTS-PHOTOGRAPHIC ApPARATUS-INFRINGEMENT.
The devices covered by patents to Cadett, No. 208,956, and Packard, No. 316,564, for improvements in photographic apparatus, are capable of joint use, and the patents are infringed by the "photographic shutters" sold by the defendant Where defendant contends that plaintiff's grant of letters patent was obtained by fraud and dishonesty, the burden of proof is upon defendant to overcome the presumption arising from the grant in favor of plaintiff, and the defense falls unless the proof adduced be of the most conclusive nature.
B.
SAME-PRIORITY OF INVENTION-PROOF OF FRAUD.
This was a bill in equity by E.· & H. T. Anthony and others against George Murphy for infringement of the letters patent for improved photographic shutter contrivances. Edmund Wetmore, for complainants. E. S. Roos, for defendant.