WOVEN-WIRE HATTaBSS CO. V. WIRE-WBB BED 00.
87
WOVEN-WIll.E MATTRESS
CO. v.
WIRE-WEB
BED CO.
(Circuit Oourt, D. Connecticut. June 6, 1881.) 1. RE-IssUE
No. 7,704-BEDSTEAD FRAMES-(JONSTRUCTION-INFRINGEMENT. He-issued letters patent No.7,704, granted May 29, 1877, to Woven-Wire Mattress (Jompany, for improvement in bedstead frames, limtUd as to its first claim to the language of the first claim of the original patent, sustained as to its third claim, and held infringed as to such claims.
2. RE·!sSUE-OBJECT.
It is competent for a patentee to restate his invention in a re-issue so as to point out and claim a characteristic feature which is not clearly stated in the original patent. 3. ANTICIPATION-J!:vmENCE-PREBUMPTION ATTACHING TO A PATENT.
Evidence of anticipation, to overcome the presumption attaching to a patent, must be clear and sufficient. 'l'he unsupported oral testimony of a patentee , that he made a number uf ,devices, containing a certain alleged anticipatorY element, long prior to the controversy, but which was not shown in his application for a patent for said device, and without producing a device containing such element, is not such evidence as would overcome the presumption which belongs to a patent.
In Equity. Oharles E. Perkins, for plamtIff. , F. Thurston, for defendant. SHIPMAN, D. J. This is a bill in equity founded upon the alleged infringe'ment ot re-issued letters patent, issued May 29, 1877, to the plaintiff, as assignee of John'M. Farnham, for an improvement in bedstead frames. The original patent was issued November 30, 1869, also to the plaintiff as assignee. ' The first question in the case relates to the validity of the re-issue, or to the construction of its claims; for if' the re-issue is not invalid, and if a literal construction is given to its claims without reference to the original patent, infringement of the first claim cannot be denied. The invention relates to a bedstead frame upon which is to be' extended a flexible or elastic'sheet or fabric for the support of the bedding. In the specification of the original patent the patentee said: " The invention consists in the use of slotted or double-inclined end pieces, in which the ends of the fabric are clamped, and in the employment of longitudinal adjnstable standards, to which the said end'pieces are secured."
The
were as follows:
"(1) The inclined double end-bars, C, of a bedstead frame, arranged substantiallyas and for the purpose herein shown and described. (2) The standards, B, arranged longitudinally, adjustable on the side-bars of bedstead frame, to permit- the inclined end-bars to be set at suitable distance apart, as set forth.;'
88 The re-issue says:
FEDERAL REPORTER.
" My invention consists in the comPination of the side-bars and end-bars, with the end-bars elevated above .the sille-bars in such a manner that the elastic fabric, stretched from end-bar t{) end-bar, can extend the entire width of the frame over the "ide-bars, and an elastic fabric attached to the end-bars only of the frame j 'tnd it also consists in the combination of the side-bars and end-bars of the frame, connected together by standarlls or corner-irons, B. By this arrangement the fabric is securely helll."
There are four claims in the re-issue, the first and second being as follo'Vs: "(1) The combination of the side-bars and end-bars and elastic coiled-wire fabric, D, attached only to the end-baJ;s, with the end-bars of the frame elevated above the side-bars, so that the fabric will be suspended above the sidebars from end· to end of the frame. (2) The combination in a removable bedbottom or bedstead frame of the side-bars, A, standards or corner-pieces, B, end-bars, C, and the elastic fabric, D, combined and arranged substantially as and for the purposes specified."
The third and fourth claims are substantially identical with the two claims of the original patent. It was competent for the patentee to restate the invention in a re-issue, so as to point out and claim a characteristic feature which was 'not clearly stated in the original, viz., the combination of side-bars and inclined end-bars, and elastic fabric attached only to the end-bars, the end-bars· being elevated above the side-bars, so that the fabric will be stretched from endbar to end-bar above the side-bars. But an important question is whether it was permissible in the re-issue to abandon the inclined feature of the end-bars. The plaintiff insists that although the oriGinal imperfect patent has been enlarged in the re-issue, the latter is not properly open to criticism, because it. is the right of the paJentee, if through palpable mistake or ignorance of the principles of his invention the patent has been cramped within too narrow bounds, to have such mistake corrected, and to have the real principles and character of the invention stated in the re-issue. The defendant insists that upon a comparison of the two patents, either with or without a knowledge of the state of the art, the change manifestly introduces new matter; for the inclined end-bar is no longer one of the two features of the invention, but any end-bar is included which is sufficiently elevated above the side-bars to meet the liberal requirements of the first claim. The defendant also says that the validity ot the re-issue is not of especial importance, because, if valid, the end-bars must, in view of the state of the art, necessarily
WOVEN-WIRE MATTRESS CO. V. WIRE-WEB BED CO.
89
be construed to mean the inclined end-bars of the original patent and of. the drawings. The last point requires an examination into the state of the art at the date of Farnham's invention, in order to see what the invention was, and whether the first claim of the re·issue must necessarily be limited to an end-bar of the specific form which was described in the original patent. Such examination shows that the public already had the combination of the first claim of the re-issue, if the claim is to be literally construed. The five Pohl iron bedstead frames made in Baltimore in 1865 had that general combination.. While the oral testimony of the maker, unsupported by the presence of the frames, is insufficient to satisfy me in regard to the existence of minor, and, at the time, comparatively unimportant, details of construction, it is sufficient to satisfy me in regard to the general plan of the frame, especially as it is inherently probable that such a construction would be made by a person seeking to stretch an elastic fabric upon the rails of a frame. The Campbell wooden bunk bottom, upon which Judge Blodgett relied in the recent and unreported case of Whittelsey v. Ames, was a rude frame supporting a canvas sheet, the whole structure having similar general characteristics to those ,of the Pohl bedstead. These examples are sufficient to show that the first claim of the re-issue must be limited so as to compel the end rails to be the inclined rails of the original and of the third claim. But little was said upon the trial in regard to the second claim. It, however, seems to me to be plain that the standard, B, is the longitudinally-adjustable standard, B, as described in both original and re-issue. The defendant's standards are not slotted, and the second and fourth claims are not infringed. The remaining questions are as to novelty and infringement of the first claim as herein construed, and of the third claim. These claims are said to have been anticipated by the Pohl iron frames. The maker testified that he made in Baltimore, in 1865, five iron frames, in which the end-bars or bows, as he styles them, were from fiveeighths of an inch to one and one-fourth inches square, and were inclined towards the bed bottom, making an inclination of 'about three-sixteenths of an inch. None of the bed bottoms are produced. They probably cannot now be found. The testimony of Mr. Pohl stands alone. His application for a patent does not describe the frames. This evidence is the unsupported oral testimony of a person in regard to a minor detail of the way in which a few frames
90
. ll'EDERAL REPORTER.
were made 15 years ago. It is insufficient to overcome the presump. tions which belong to the patent. The question of infringement remains. The defendant, by various witnesses, testifies that it was the intention of the officers of the company not to incline the end-rails, and that their frames were constructed with care and painstaking, so that they should not incline; and that if any inclination subsequently took place, it was owing to the shrinking or to the warping of the rails. Upon this hearing, testimony has been' given upon this point in addition to that which was introduced upon, the hearing of the motion for preliminary injunction, and I am impressed with the manner in which the witnessos state this part of the case. The end-rails of the frame, which were shown by the plaintiff on both hearings, manifestly incline, so that th!:3 under side of the fabric does not rest upon the end-bars. This inclination existed when·the exhibit was purchased at the furniture store, and it was not claimed upon the hearing of the motion that this was not a fair sample of the defendant's frames. An examination shows that these rails, incline because they do not fill the iron chair or standard. The defendant has satisfied me that it was not the intention.of the general manager of the company to construct .the rails so that the rails'should tb.ereafter incline. I have been in doubt about this part of the case, but my conclusion is that there has been infringement. That is proved by Exhibit 1. The extent of the infringement is to be ascertained by the master. Let there be a· decree against infringement of the first claim as construed, and of the third claim, and for an accounting. Question in regard to costs to be reserved until coming in of the master's report.
HOBB'S V.KING.
91 and others.
HOBBS
and others v.
KING
(Oircuit Court, W. D. Pen1J,8l1«Jania. May 3, 1881.)
GLAss-WARE-ANTICIPATION-VALmITT-
Letters patent No. 132,208; granted October 15, 1872, to John H. Hobbs, for glass-ware, held, "alid, and infringed improvement in manufacture of by graduated glass-ware manufactured under letters patent No. 217,050, granted July 1, 1879, to Marx Block. A glCUl8 measure graduated on its outer face, and a metallio measure graduated ,on its inner face, held, not to anticipate a gla88 measure graduated OL its in'ner face. ' Complainant's invention, consisting of glass-ware having a graduated scale on its inner surface, held, infringed by defendant's construction, in which the graduation extends entirely around the inner fa.ce 01 such gla.ss-ware.
In Equity, Geo. H. Christy, for complainants. Wm. Henry Browne, for defendants. AOHESON, D. J. On the fifteenth of October, 1872, letters patent No. 132,208, for an improvement in the manufacture of graduated glass-ware, issued to John H. Hobbs, who subsequently assigned the patent to the plaintffs, who sue for the infringement thereof. To graduate the cavity of a glass mold, and thereby produce articles of glass-ware graduated on their outer faces, was practiced prior to Hobbs' invention, and this is stated in his specification. But Hobbs describes in his specification an apparatus and method of producing internally-graduated hollow glass-ware. The operation of pressing is that ordinarily practiced, but his plunger is graduated to any desired scale, and in this way is produced any desired kind of open-topped glass-ware, with a graduation on its inner face exactly1lorresponding to that used on the plunger. Hobbs' claim is in these words: "Glass-ware graduated on its inner face, substantially in the manner set forth." In his original specification, filed with his petition for letters patent, Hobbs also claimed: "A glass-mold plunger graduated on its face, substantially as set forth." But this claim the office rejected; and Hobbs, acquiescing in the decision, amended his specification and struck out that claim. The effect of this amendment was to restrict the claim to the manufactured product or glassware graduated on its inner face, substantially in the manner get forth in the specification; but for all practical purposes the letters patent, as granted, secured to Hobbs all the benefits of his invention. The defendants insist that Hobbs' patent is invalid for uncertainty.