244
FEDERAL REPORTER.
SCHILLINGER V. GREENWAY BREWING
CO. SUSTAINED-SCHIL-
(Circuit Court, N. D. New York. 1. PATENTS FOR INVENTIONS-REISSUED PATENT LINGER PAVEMENT.
July 11, No. 4,364
Reissued letters patent No. 4.364. I'(ranted to John .T. Hov 2, 1871, for an "Improvement in Concrete Pavements," compared with British patents No. of 1837, to Claridge, No. 330, of 1852, to Ghesneau ; No. 2,659, of 1855, to COlgnet; No. 771, of IH56, to De La Haichois; No. 7,991, of 1839, to D'Hareourt; No. 9,737, of 1843, to Austin; and United States patents No. 56,563, July 24,1866, to Huestis; and No. 5,475, "\larch 14,1848, to Huss,-and sustained as a patentable invention, not anticipated by sa.d patents. The Schillinger patent was infringed hy the pavement of defendant, and an injunction, and an account of protits aUlI damages, should be decreed.
2. 3.
SAME-INFHtNGE)IENT.
S.UIE-INVALID
IN HEISSUE.
The inval.dity of a claim in a reissue docs not impair the va!illity ofa claim in the original p.1tent wl.lich is repeated and separately stated in the reissue.
In Equity. Duell ,f Hey, for plaintiff. John L. King, for defendant. BLATCHFORD, Justice. This suit is brought for the infringement of reissued letters patent No. 4,3lH, granted to John J. Sch;llinger, May 2, 1871, for an "improvement in concrete pavements;" the original patent, No. 10il,S!)!), having been granted to him, July 19, 1870. The speCification of the reissued patent, reading in the following what is outside of brackets and including what in italics, and omitting what is inside of brackots, says: "Figure 1 represents a plctn uf my I pavement in plan view.J pavement. Figure 2 is a vertical section of the [pavement.] same. Similar letters indicatel:orrespondin.'l prJ,rls. This inveution relates to rpavements for sidewalks and other purposes; and consists in combining With] a COlu!rete pavement wh l c1t is laid in sedions, so that each set:tiun cal' be taken np anrlrclaid without disturbin.'l the adjoining sectiol/s. With the joints of this ser:tional concrete LImvements,] pavement are combined strips of tar paper, or equivalent material, arranged lJetween the several blocks 01' ser:tiolls in such a mantler as to a snitable tight joint, and yet allow the to be raised separately WIthout affecting [or injnring] the blocks adjacent thereto. In carrying out my inventioll I form the concrete by mixing cement with sand and gnwel, or other suitable [materials] material, to form a [suitable] plastic [composition] (,ompollnd, using about the following pruporciolls: One pal:t, by measurt>, of ceillent; one part, by measure, of sand; and "rulll three to six parts, by mpasure of gravel; [using] with sllll,cit'nt watet· to l make] render the mixture plastic; bnt I do not contine mysdf to any d3}inite proportions 01' 7Tl.llterilLls for making the concrete composition. While the mass is plastic I or spread the same [upon] on the fOllndation or bed of the pavemt'nt either In molds or between movable joists, of the proper thicknOlRs, so as to form the edges of the concrete blocks a, a, [etc. 'Vhen the block 12 has been I take strIpS of till' paper, b, of a width equal or almost equal to the helg!lt of the block, and place them up against t·ile edges of the bloek in snch a manner that they form the joints between such bloc.:k and the adjaeent D1ocks,] one bZ"ck being furmed aner the other. When the first block has set, I 7'em01:e the joilit:J 01' partition between it'and the bluck next to be furmed, arid then I form
5CllILLlNGER V. GREENWAY nREWING CO.
24:5
the seuon,i block, awl so on, each succeeding block bein.q formed after the adjacent blocks hrive set,. and, since the conurete in setting shrinks, the second block, when set, does not adhere to the jil'st, and so on,. and when the pavement is compldet each blonk can be taken up independent of the adjoining blocks. Between the joints of the acljaeent blocks al'e placed strips, b, of tar paper, or other snitable material, in the fullowin,q manner: After completing one block, a, I place the tar paper, b, along the edge where the next block is to be form ell, and I put the plastic composition for such next bloek up against the tar-paper joint, and proeeed with the furmation of the new block nntil it is compleled. In this Illanner I proceed [in making all the blocks] until the pavelllent is completed, interposing tar vaper between [their] the several joints, as described. The paver constitutcs a tight water-pruof joint, bnt it allows the several blocks to hea ve separately, from the elfects of frost, or to ue raised or relllOved separately, whenever occasion may arise, without injllry to the afljacent blocks. The paper [does not allhere] when placed against the [edge of the fully formed] block .first formed, dues not adhere thereto, and therefore the joi nts are al ways free uet ween tile several blocks, althongh [adherellce may take place between the paper and the plastic edges of the bltwks which are formed after the paper joints are set up in place.] the Jlllper mny adhere to the edfles of the blor,k or blocl:s ji,rmed after the same 11'18 been sel lip in its place uetween tile joints. In sw:h cases, however, where cheflpness is an obier:t, the tar paper may be omitted, antI the blocks formed 'lJ) tlwnt lnterp-Isin.,! anything between their joi.nts, as previously described. In latter the Joints soon fill up with sand or dust, and the lJa'vement 1'en.dered snj!ir:iel/.fly tight for ma71.1/ while blocks nre defnr,hed from eru;l! oUler. alUl (;tl.ll. be tuken 1t1J and nlaid, each indeJNJdent of tile adjacent
nen-ding in the foregoing what is inside of hrnel<etR and whn-t is ont,side of bmcke"s, omitting what is in italics, gives tUe text of the original specification. claims of the reissue are as follows: " (1) A concrete pavement laid in detached blocks or suustantially in the manner shuwn alld described. (2) The HIT wgellJent of tar p,!!)pr, or its eqnivalent, between adjoining blocks of concrete, suustantially as aml for the purpose set forth." The original patent ilad but one claim, as follows: .. The of tar paper, or its equivalent, hf1tween adjoining blocl:s of conerete, substantIally as amI for the purpose described." On the first of March, 1875, Schillinger filed in the patent-office a c.iselaimer, wll iell, referring to the reissued patent, S'lys: That he has re:l,<on to helieve that, thwuO'h inadverteuee, accident or misthe spp.,'i:i.,'ations an<1 of said letters patent are too hroad: includIlIg that of winch your petitIOner was not the tirst invpntor, an,l he, therefore, herehy enters his disclaimer to the follow ing words: · and, since the concrete in setting shrinks, the second block, when set, does not adhere to the first, a1ll1 on,' aJlli which occur near tile midllle of said spel'itication, and to the follOWing wcmls near the elHI of the specilication: · In slle!I cases howe,·er. where is an object, the tar p:\per may be omitted. the hl.ocks fonne:1 anything between their joints, as preVIOusly des"nhe:1.. In t!IIS latter rase the joints soon fill up Wilh sand or dust. anll the pavement IS rendered snmcientl.r tight fOI' many purposes, while the hlucks are del.Lched froll each other, and c..'lll be taken up and relaid each co
246
FEDERAL REPORTER,
independent of the adjoinIng blocks, Your petitioner hereby disclaims tho forming of blocks from plastic material without interposing anything between their joints while in the process of formation."
This reissued patent waS under consideration by the circuit court for the southern district of New York in February, 1877., Schillinger v. Gunther, 14 Blatchf. C. C. 152. The court (SHIPMAN, J.) gave a construction to it in view of the discbimer. The defendant's pavement, in that case, had a bottom layer of coarse cement, on which was laid a course of fine cement, divided into blpcks by a trowel run through that course while plastic. It possessed the advantage of Schillinger's invention, because any block in the uppel' course could be taken up without injury to the adjoining blocks. Concrete pavement having been before laid in sections, without being divided into blocks, the invention of Schillinger was held to consist in dividing the pavement into blocks, so that one block could be removed and repaired without injury to the rest of the pavement, the division being effected by either a permanent or a temporary interposition of something between the blocks. It was held that the effect of the disclaimer was to leave the patent to be one for a pavement wherein the blocks are formed by interposing some separating material between the joints; that to limit the patent to the permanent interposition of a material equivalent to tar paper would limit the actual invention; that using the trowel accomplishecl the substantial results of the invention in substantially the same way devised by Schillinger; that the only difference in result was that the defendant's methocl left an open joint; that having a tight joint was not a material part of Schillinger's invention; and that the mode of operation involvea in using the trowel was within the first claim of the reissue. as it stood after the disclaimer. In the same suit, in August, 1879, the Bame court (BLATCHFORD, J" 17 Blatch£. C. C. 66) held that the disclaimer took out of the first claim of the reissue only so much thereof as claimed a concrete pavement made of plastic material laid in detached blocks, without interposing anything between their joints in the process of formation, leaving the claim to be one for Buch a pavement laid in detached blocks, when free -joints are made between the blocks by interposing tar paper or its equivalent. In California Artificial Stone Paving Co. v. Perine, 20 0.· G. 813, [S. C. 8 FED. REP. 821,] in May, 1881, in the Cil'cuit court for the district of California, {SAWYER, J.,) the defendant's pavement was made by cutting the lower course into sections with a trowel, and doi.ng the same with the upper course, the upper joint being dir ctly over the lower joint. Into the open joint in each case was loosely pat some oIthe partially set material from the top of the laid course, answering the pmpose of tar and leaving the pa'tement along the joint than in any other place... This was heldto'be an in. fringement.
1.'.
I:lnnn:;G co.
In the present case, it is agreed that the defendant's concrete pavement was constructed as follows: "The foundation floor, being prepared, has strips or scantlings of wood. 2x4, of sufficient length for the reqUired section, placed in position about 2i feet out from the coping and parallel therewith. A composition composed of sand, graYel, and cement, made plastic with water, was then spread within the monld formed by tbe aforesaid scantling. and rammed down so as to come within t inch of the scantling. Then a finer course, composed of fine sand and PorUand cement, about balf and half, made plastic witb water, was tloated over tbe coarse material, and smoothed over, or off with a straight edge. The block or section was then allowed to set. After becoming sulIiciently hardened, the scantling was remoyed from the outer edge of the bloc!, to about the same distance, and parallel with the outer edge of the completed block, and the second block or section formed of coarse material, the same as the first, after which a cutt'· g trowel was drawn across and through the coarse material, along the line of the completed block, and the fine upper finishing course poured in the mold on top of the lower coarse material, and strucl;: off and floated with a straight edge, as in the first block. A edge was then applied hetween the two blucks or sections, over the timher line, and a cutting trowel drawn through the upper course of fine material, oyer the cut in the coarse material. The edges of the two sections along the cut made by the trowel were then smoothed down with the float or trowel, and the remaining blocks or sections of payement were formed consecutively in the same way. No tar paper was placed between the blocks." .
The only difference between this pavement and that in the Gunther Case appears to be that in this case there is an open cut made by a trOlve! entirely through both courses, the line of the cut in the upper course being directly o\'er the line of the cut in the lower course. In the Gunther Case the trowel cut was only through the upper course. It is not stated in the admission in the record as to the mode of the construction of tbe defendant's pavement, in the present case, that any of the material from tbe top of the upper course was put loosely into the joint, as in. the Perine Case; or that the joint was a tight joint, or other than an open joint. Yet, on the cross-examination of the plaintiff's expert, it is proYed by the defendant that its pavement is used as a floor in a malt-honse, for the storage of malt during the process of malting, and that it is necessary that such a. floor sllOuld have tight joints. This is confusing, and it is not clear exactly what is meant by the statement, in the admission, that after the cut was made by the trowel tbrough the upper course, the edges of the hvo sections along the cut were .smoothed down with a float or a trowel. If this means tlwt the material from the sUt>face adjoining each edge of the cut was scraped into the cut loosely, and smoothed over the top of the cut,so as to lEmve a plane surface over the cut, then, by the setting of the material in the cut, the joint was made in a degree a tight joint, and the arrangement was the bame in character as in the Perine pavement. In sucll case there would be a comparatively tight joint made by asnbstance permanedly interposed, yet ing the blocks to he substantially free, and there would bean infringement of the claim of the original patent. But, independently.
248
of this, nnner a proper construction of the claim of the original pat. ent and the second claim of the reissue, the interposition of the trowel, effecting the object which it accomplishes, although it is interposed only temporarily, and is not left in permanently, is an equivalent for the tar paper, even though the joint be left open after the trowel is removed, and be not made tight. It may be an advantage to have a tight joint and at the same time a free joint, such as tar paper produces, but the substance of Schillinger's invention is availed of without having the joint tight, if it be free. The plaintiff's expert testifies that the defendant's pavem:mt is a concrete pavement formed in blocks or sections directly on the foundation on which it is to be used, the separation of the blocks being effected by the introduction of the trowel, forming a joint along the line of separation, the joint controlling the cracking of the prtvement, and allowing one block to be removed without material injury to the adjacent blocks. This evidence is not contradicted. The second claim of the reissue has, therefore, been infringed, if Schillinger was the first inventor of what it coyers. It is contended that the reissued patent is invalid, because it discards the water-tight feature resulting from the use of tar paper, set forth in the original patent; that unless the paper, or its equivalent in producing a water-tight joint, is permanently interposed in the joints between the blocks, the invention set forth in the original patent is not practiced; and that a concrete pavement with a cut or open joint is not suggested in the original patent. These views are met by the considerations suggested; and, to whatever extent the reissue might be heltl invalid in regard to a pavement not covered by its second claim, it was decided by the supreme court, at its last term, in Gage v. Herring, 2 Sup. Ct. Rep. 819, that the invalidity of a claim in a reissue does not impair the validity of a claim in the original patent wllich is repeated and separately stated in the reissneJ patent. That is the present case, and it is unnecessary to determine whether the first clnim of the reissue, as amended by the disclaimer, amounts to a claim for anything more than is covered by the second claim of the reissue, or wlJether such first claim is invalid in any degree. It is not clear that the reissue, as left bv the disclaimer, embraces anything of which Schillinger was not tlie first inventor. On the question of novelty, the defendant has introduced the following British patents: No. 7,489, of to Claridge; No. 350, of 1852, to Chesneau; No. 2,6;')9, of 1855, to Coignet; No. 771, of 185fi, to De La Haichois; No. 7,tl91, of 1839, to D'Harcourt; and No.9,737, of 1843, to Anstin; and the following United States patents: No. 56,563, July 24, 1866, to Huestis; and No. 5,475, March 14, 18-Hi, to No testimony is introduced by the defendant to point out whe.re!n any of these patents are supposed to bear on the invention of SchillInger. But the plll.intiff has produced evidence to showthat none of tllem anticipated his invention. The Claridge pavement is not a
SCHILLINGER V. GREENWAY BREWING CO.
249
concrete pavement, and is not formed in detachable blocks. The Chesneau pavement is formed of a compound which is not such a concrete as that of Schillinger. It is not composed of blocks made detachable to control the line of cracking, but sections of the pavement are set in frames and removably inserted in the surrounding pavement, so as to allow access to gas and water pipes. In the Coig. net patent there is not shown a concrete pavement made in detachable blocks in the manner described in Schillinger'S patent. In the De La Haichois patent there is no pavement formed in detachable blocks by joints. In the D'Harcourt patent there is nothing to indicate that one section can be removed without disturbing the adjacent sections. In the Austin patent, the pavement is made of wooden blocks, with intervals of an inch and a half in width filled with cement or concrete. The Huestis patent dof's not show a wearing surface of concrete, or a concrete pavement formed in detachable blocks by joints. The TIuss patent shows a concrete foundatIOn for a stone pavement, without joints, and having removable panels, consisting of frames filled with concrete, to be lifted out to give access to water pipes. It is further contended, that, as plain concrete pavements formed in blocks existed before, there was no patentable invention in making a joint in them. The defect in such pavements is clearly pointed out in the original patent, and repeated in the reissuo, that, where there are no free joints between the blocks, they will not heave separately from the effects of frost, and cannot be raised or removed separately without injury to adjacent blocks. No one remedied this defect before Schillinger. His invention was simple, valuable, and patentable. The pavement laid down by Brewster at Syracuse in 1841 had no free joints. TIeference is made to the testimony introducea from the case of Schillinger v. Phillip Best Brell'ing Co., in the eastern district of Wisconsin. This testimony was taken in November, 1882. So far as it refers to prior uses in Germany, not shown in a patent or printed publication, it was auly objected to in this case, and must be exclucled. As to the cemtmt malt floor which Row laia in Baltimore 25 years ago, he shows that it was not made in sections detachable by free joints. The testimony of Botzler as to a prior malt floor laid by him in Chicago is too indefinite to amount to sufficient evidence to defpat a patent. The plaintiff is entitled to a decree on the second claim of tho reissue, for an account of profits and damages, and a perpetual injunction, with costs.
250
. FEDERAL
REPORTER.
'WonSWICK l\.[ANUF'G CO.
v.
STEIGEn.
(Circuit C"urt, N. D. Ohio, E. D. April Term, 1883.) I. Fon INVENTTON-USE IN FORETGN ()OUNTRY. A simple use of an invention in a foreign country, if not patented ordescribcil in an.\' printed publication, is not a bar to the olJtainin!{ of a valid patent in this country.
2.
'Where the claim of a patent is a combmatlOn claim, consisting of several elements that co-operate together to produce the device claimed, such device can only be anticipated by a prior device, having identically the same elements, or the mechanical equivalents, of those that are not used. It will not do to find a portion of these elements in oue machine, and a portion in a second, and a third, and so on, and then say that the device is anticipated. 3. SAME-PATENT No. 108,898, AND REISSUES Nos, 8,025 AND 8,02G, SUSTAINED. Letters patent No. 108,898, granted to Herman Fischer, November 1,1870, for improvements in apparatus for pumping fluid from vessels, was not anticipated by letters patent No. IOG,008, of August 2,1870, granted ALel A. Webster, and the reissnes Nos. 8,025 and 8,026 of said original patent are valirl. under Miller v, Brll88 Co. 104 U. S. 350, and reissue No. S,026 is infringed the device used by defendants, and its use should be enjoined.
In Equity. John Crowell and !ff. D. Leggett, for complainants. G. W. Shul1w'ay, for defendants. WELKER, J. This suit is bronght upon original patent No. 10S,898, granted to Herman Fischer, November 1, 1870, and on rcis,med letters patent Nos. 8,025 and 8,026, granted to the 'Vorswick Manufacturing Company, assignee of William F. Class, the inventor. All these patents pertain to apparatus for pumping fluid from vessels. The answer filed by the defendant puts in issue the validity of the reissued patents, but as they were applied for within about four months from the date of the original, the defendants did not strenuously pre!;!! tbe point of their invalidity. In examining these reissues I find nothing claimed that is not clearly shown and described in the original patent, and as the application for the reissues was filed so soon after the date of the original, I see no valid objection to the claims as allowed in the reissues, provided the same is not anticipated in the prior state of the art. The defendants have set. up as anticipating the inventions described in the patents at issue, patent granted to A. L. 'Yebster in 1870, one to J. F. Navarro, and eight other United States patents; and also foreign use of the same prior to the application for patent in this country. The foreign use was conceded by stipulation, but under the statute a simple nse of the invention abroad, if not patented or described in any printed publication, is not a bar to the obtaining of a valid patent in this country. . The ?nly device among the several patents produced worthy of canlIHleratlOn us anticipating this invention, is the one shown and de·