WESTERN ELECTRIC MANUtr'G CO. V. ODELL.
821
view of the special circumstancea of each. 'The expected advantage to the estate was, indeed, far greater than that expected by the landlord, if such a sale and lease together could be effected. The arrangement made was valuable to the estate, and would have been approved by the court. The landlord shows no laches, nor negligence, nor disposition to take advantage of the estate, and is entitled to "a just compensation. From the fact, however, that the expected advantage to the landlord, to be derived from selling the property as it stood, was as much in the contemplation of the parties as the benefit to the estate, and considering, also, the difficulty of renting, and the vacancy of a portion of other similar property, which were, doubtless, the landlord's reasons for acceding to this arrangement, I think that this trial of the market should be regarded as an arrangement for the equal benefit of both, at the equal charge of both, and that the one-half of the proved rental value of the premises should be charged to each; and that $1,000 per year should, therefore, be allowed both as a reasonable compensation, and as most nearly representing the intention of the parties. At this rate the petitioners should be allowed and paid the sum of $2,445.36, which is hereby ordered.
WESTERN ELECTRIC MANUF'a
Co. v.
ODEIiI.
and others.
{District (Jourt, N. D. nUnais. October 29, 1883.) 1. 2. PATENTS FOR DESIGNS-WANT OF NOVELTY.
Letters patent issued on the fifteenth of February, 1876, to Charles W. Lewis, for a design for the dial of an annunciator, held invalid for want of novelty. SAME-LAW GOVERNING.
It is now tolerably well settled that design patents stand on as high a plane as utility patents, and require as high a degree of exercise of the inventive or originative faculty. In patentable designs a person cannot be permitted to se. lect an existing form, and simply put it to a new use, any more than he can be permitted to take a patent for a mere double use of a machine; but the selection and adaptation of an existing form may amount to patentable design, as the adaptation of an existing mechanical device may amount to patentable invention.
In Equity. Geo. P. Ba1'ton, for complainant. James L. High, for defendant. BLODGETT, J. This is a bill filed by the complainants, as owners of a patent issued on the fifteenth day of February, 1876, to Charles W. Lewis, for a design for the dial of an annunciator. The defendants demur to the bill, and raise upon the demurrer the question of v.18;no.5-21
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329
FEDERAL REPORTER.
the validity of the for want -of novelty. The scope of the pat. ent is best stated in the language of. the patentee himself in his spec· ifications. He. claims to have invented a design for the face or dial of an annunciator, of which the following is his description: "a represents the face or dial-plate of the annunciator, and is shown slig).ltly in perspective. b represents the figures on the dial-plate, which are intended to be the same as the number of the rooms with which the annunciator is connected. Letters are sometimes used instead of figures. care pointers or indicators which turn to the figures or letters indicating the room from which the call is mad£', The.dialis made a dark color or jet black. The (lgures, b, are made of the color of gold leaf, and the indicators are made Of· light metal color by preference. But I do not wish to limit my invention by makiJ1g the figures of gold the indicators light metal color, becallse the s!l:me contrast could' bepi"oduced by making the indicators gold color and the figures light metal color, Which would produce substantially the slime appearance in connection with :the black gmund. I' have not repra:. sentell the different colors in the dmwing. but have shown the different parts, 80 that, when. tajien in connection wita these colors, my invention will be limited. ,to the contrast of colors, sttbstantially as above specified,· my design sisting of the dark dial-plate, and the bright figures and indicators or ers of different bright colors, making a contrast of colors, and presenting a . very attractive appearance."
,I find the law on the subject design patents sowell condense4 and stated in a little work lately published by Mr. Simonds, that I cannot do better than read his summary, as stated on page 212: .. For a time it was the practice of the patent-office to grant these design patents for almost any subject-matter presented, and with little or no inquiry as to whether any of origination had been exercised. It is now tollirably well settled that design patents stand on as high a plane as utility patents, and require as high a degree of exercise of the inventive or originative faculty. In· patentable designs a person cannot be permitted to select an existing form and simply put it to a new use any more than he can be permitted to take a patent for a mere double use of a machine; but the selection and adaptation of an existing form may amount to patentable design, as the adaptation of an existing mechanical device may amount to patentable invention."
. In support of this enunciation of the law, Mr. Simonds quotes from Wooster v. Crane, 2 Fisher, Pat. Cas. 583, as follows: ,. The act, although it does not require utility in order to secure the benefit of. its provisions, does require that the shape produced shall be the result of industry, effort, genius, or expense, and must also, I think, be held to require that the shape or configuration sought to be secured shall at least be new and original as applied to articles of manufacture."
So, also, in Northrup v.
Ban. & A.5e7, it is said:
"The same general principles of construction extend to both. To entitle a party to the benetlt of the act. in either case, there must be originality and the exercise of the inventive faculty. In the one, there must be novelty and utility; in the other, originality and beauty. There must be something akin to genius,-an effort of the brain as well as the hand. The adaptation of old devices or forms to new purposes, however convenient, useful, or beautiful
WESTERN EIJECTR!C
CO. V. ODELL.
323'
tlley may be in their new role, is not If acornbinatioll of old designs be patentable at all,-of which I have some doubt,-the combinatiofl>illust bj3 sucll as to, a new appearance. If· the effect ntoduced be simply the aggregation of familiar designs, it would not be pilte,nt, able. For example, if one should paint upon a familiar vase a copy of portrait of Washington, it would not be patentable, because both elemenh of the combination,-the portrait and the vase,-are old; but if I any nev and original impression or ornament' were placed upon the same vase, i would fall within the express language of the section."
In Gorham Go. v. White, 14 Wall. 511, the supreme court said: "11 whatever way produced it is the new thing produced which the paten law regards." I have read enough to show that the text of Mr. Simonds is full: sustained by the authorities quoted. The patent in this case is for a mere black dial-plate, upon whicl the inventor places a gold letter or figure indicating the nnmber c the room, aud a white metal pointer, Thel'e is no border or confi{,' uration upon the dial, or around it, of a peculiar or ornamentalchal acter, nor is there a cornice or binding of any kind, but simply a bal' black face, with the gold-colored figureR or letters, and the silver 0 light metal.colored hands or indexes; nothing new or original in tb( shape or ornamentation of the dial-plate, figures, or pointers is showl or indicated. The only trouble I have hfl,d with the, case has beer! whether the court could import sufficient of what we call common knowledge into the case to say, on demurrer, that this· was an old device applied to a new use. While the case was on argument] drew my watch from my pocket, as I thought the analogy was a fair one, and opening it I found substantially the combination on its face or dial, with merely a change of the colors, that is shown on this patented dial-plate; that is, I found a white face instead of a black one, and black figures indicating the hours, and metal or gold-colored hands, so that there was the same contrast of colors as that on which this inventor claims to base his patent. " There were the three elements, the white face, the black figures, and the gold-colored pointers, making the precise combination for the purpose of contrast which the inventor says is the gist of his invention. An examination of the decision of the supreme court of the United States in Brown v. Piper, 91 U. S. 37, satisfies me that the court can from its knowl· edge say that the design covered by this patent is only a new use of an old and well-known device. Certainly there is nothing more completely within the scope of common knowledge than the dial-plate of a watch. The clock before us ip. thisfoom presents nearly the eontrast the inventor claims for his device, and you can hardly walk the streets without finding in nearly every sign-board the same contrast of colors for the purpose of making an ornamental and attractive sign. As I have already suggested, if, in connection with this con· trast of colors, there had been a border around the dial-plate of a new and original composition in combination with these old pads,
824:
with the old contrast of colors, the patent might be sustained; but there is no such combination here. The demurrer to the bill, therefore, is sustained, and the bill dismissed for want of equity.
NATIONAL PUMP CYLINDER Co. 'V. SIMMONS HARDWARE CO.l
(Oircuit Oourt. E. D. Missouri. 1. PATENTS-EvIDENCE. Where, in it suit for
November 2, 1883.)
the infringement of reissued letters patent, the defendant sets up as a defense that the reissued letters patent are broader than the original, and therefore invalid, and the plaintiff fails to introduce the original letters patent in evidence, the defendant may introduce them.
Where the original letters patent are so introduced, the question as to the validity of the reissued letters patent may be passed upon. 3. SAME-REISSUED LETTERS PATENT No. 7,006, FOR" IMPROVEMENT IN PUMPS," Reissued letters patent No. 7,006, for an "improvement in pumps," are no broader than the original letters patent No. 90,143, issued WI' the same invention, and are valid. They are for a metallic tube with vitreous coating internally, and with both ends flared so as to admit wit.hin it, from above aud below, the wooden tubing with which it is designed to be connected. ' 4. The sale and use of enameled tubes with a single flare held no-infringement. VALID-PATENT UONSTRUED.
2.
SAME-INQUIRY INTO VALIDITY OF REISSUED LETTERS PATENT.
In Equity. Suit for an infringement of reissued letters patent No. 7,006, for an "improvement in pumps." The letters patent are numbered 90,143. The "invention relates to certain novel improvements in wooden pumps, and consists-First, in constructing one of the sections or lengths of the pump-stock of metal, lined with a vitreous enamel, to present a smooth, durable surface to the pnmp-bucket or and adapted to receive within its ends the tapering ends of the wooden sections, and thus serve as a coupling for these sections, as will be hereinafter explained; second, in an annular-grooved which has confined within its groove a suitable packing, and which is constructed with an annular valve-seat on its upper side, adopted for a circular valve which moves freely upon a central valve stem." The original letters patent contain two claims, viz.: "(1) 'fhe metal· tube sectIOn, H, coated with a vitreous substance, and constructed with flaring ends, and receiving into said ends the lower terminus of the wooden section, A, and the upper terminus of the lower wooden section, H, all substantially as described. (2) An annular-grooved ring-piston, D, constructed with a raised valve-seat, 'D, and a forked sttlm, i, c, in combination with valve, g, substantially as described." 1Reported by Bellj. F. Rex, Esq., of the St. Louis bar.