SHANNON .t!. BRUNER.
289
te:rial of the pad substantially as is shown in the Scharling drawings, Nos. 2 and 5. But if I amwtong in'this construction, I am satisfied that the defendants do not infringe the Scherling patent. The claim of that patent, in substance, is for a hook foJ.'medof wire, with a safety-pin integral with the hook for attaching the hook to the pad. (The claim says the pin is for the attachment of the hook to the collar, but this is evidently a mistake, and it was undoubtedly intended that the safety-pin should attach the hook to the pad.) 'The defe.ndantsdo not use a pin integral with their hook for the purpose of fastening their hook tu the pad; but the hook is fastened to a piece of leather in such manner as to give it an axial or rolling motion; and this leather is riveted to the pad by rivets p-.lssing through the material of the pad. In view of the pat.:. ents to McClain, this Scherling patent must be confined to the special devices sbownand claimed, and cannot be enlarged or. expanded by.coa.;. struction, because hooks, both double and single, with whichtQ fasten pads to collars, and performing the same function in the same way !is is done byScherling, were shown.in the two McClain patents now ineuit, and also in McClain's Canadian patent; and hence as the defendants do Il,ot use asafety...pin integral with their hook to attach their padato the collars, th9Y cannot be said to infringe the Scherling pa,tent. For these reasons, I conclude the complainant's bill must be dismissed for want of equity.
SHANNON 17·. BRUNER.
(Oirc'Uit Court, B. D. Mi8sO'Uri, B. D. MayS,1887:) Plaintiff was the owner ola patent for laying a concrete pavement in blocks, so that one block might .be removed injuring the rest of the paveI ment; the division being effected by putting tar-paper or some equivalent . material between the blocks. Defendant first laid a lower course of concrete, removed the wooden frame around each block, and against the edges of the concrete placed paper, sand, or wood, to separate it from the adjoininglliock; then placed another course of concrete. above,and cut. thxough the upper course with a trowel, making the joints 'of the upper course coincide with those of the lower course. Held, that by the interposition of sand, paper, Or wood between the blocks in the lower course, he infringed upon the patent of the plaintiff. : . g. SAME-UTILITlr-CONCRETE PAVEMENTS. The evidence showed that many had heen made to lay concrete pavement substantially in the mode described in plaintiff's patent, and that when so laid it materially affected the wear of the pavelllent, and prevented cracking by frost. Held, that the patent was not void for want of utility. S. SAME-ANTICIPATION-CONCRETE PAVEMENTS. Plaintiff had a patent for laying a concrete pavement in blocks, so that the blocks could. be removed. Defendant plead that the patent was void for want of invention,ill view of prior patentS,-one for a concrete foundation for a stone pavement without joints, with removable panels; one ,for acombination for a pavement, but. not covering any method oUay.ing the SUbstance; and one for laying strips of wood across the bed prepared for the concrete, and spreading the concrete over them, but not providing for forming blocks 1 PATENTS FOR !:NvENTIONS-INPRt:NGEMENT-"CONCRETEPAVEMENTS.
v.33F.no.4-19
FEDElU.L REPORTER.
,,<_with joints extending, frQIfi the fouudat\on/ tpthe surface, 8.lI did tbf: plaln! #eld. that uQne,of these established the defense interposed by the de:, fendant ',,:" ,,' ,,' {I;"; ·
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Ii
I!1'lll<luity. BiU'tor injunction.:' .' Upton M,. Young, YOU'lt{l, and :Albert BWr,:for complainant.' HJ:Knight ana Hough, Overall &: Judson, for defendant.' :j
! "d, :
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This :is '. suit for infrinKemtJnt of letters patent on con. crete paivenients, to John J. Schillinger, July 19, '1870, and re. issued under date oflMay 2,'1871.' This patent has been several times oeforethe various "federal courts incases I of allegedinfringerrient, and the decisions 'are not wholly in accol'das' to what is covered by,the patent. The disagreement apPears to have misensince a disclaimer was filed' by" thl9 paf;entee in 1875:"whereby he withdrew certain .parts olthe specifiea-' tions 'ofthe reissued.'1etters. The cirCuit courts hitve very generally held since diSclaimer, ito consist in divid:ing a. concrete pave. m,ent, tas',itislMd ilIto" blocks 01' seCtix:lns,' so that one, block, may, be re. moved or repaired without1rijury to the; rest of the pa.vement, thediVis.. · ion' by interposing bstance· ,betWeep. the blocks, such as tar-paper, 'or some equivalent material. SchilJ,inger v. Gwtther, 14, BlgtChf.152; Barniv.d3a'flte, 1'7 Blatchf. 66; Paving Oo;v:. Molitar, 7 Sawy. 190,8 Fed. Rep. 821; SchiUingerv. Brewing 00., 21 Bla.t<:hf.383, 17,Fed,. Rep. 244; Kuhl v. Mueller,21 Fed. Rep. 510. On the other hand, the supreme court of the district of Columbia has held, in an' elaborate and carefully prepared decision, that the Schillinger invention, after the disclaimer, "comprehended only a strips of tar-paper, or its equivalent, with separateooncrete' blocks," so as to make a tight joint; and the equivaleJ:l,t to SOm,e or manage. able substanoe; likE! SchilUnger OranJord, (decided July 6, 1885,) Pt,1349... Owing the patent caseBconferred on the.Bu. (If the its decisions Jpsjlch matters, are entitled, to greatrespeot. ',But the supreme court of the United States, in a stUlllttercase, approved of the construction given to Q(,'theU:nited the cases first abovecited.POIUingOo. iV. Schalickei 119 U. S. 404, 7,Sllp. Ct. Rep. 391. Whiletild !H1preme court, ih the case last referred to, does not attempt the scope of the'Schillfriger'invention by an ,ex· amination of the subject, yet it referS with manifest approval to the 'of 81JhilJ,inger'v.GWntM;r, supra;, and other kindredcasesj and the of in the case unq.er consideratiQn;ismade to tum on thepoint:whether there had been a comdivision of the pavement into blocks, in ,the process of laying the; ill.tet'posit,ipn'M medium, so as to permit blocks'1;pl;llil and so to oontrol of fracture. Too' court say: .. ; ..': ' '. iii case shows that during the his paveJl1.ent. off its surfacEl in1;() squares. But,the iTHAYER,'J'.
the
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divided it into that the line ofc1'f.Lc"ing W(M,contl'olled,andindueed to foU!YW theJoints of the'dzvisio11!S; rath;er .0.1 the ,bloc&,! and, 80 tkat be tak.&(/, and a new one in ita. .p$ace., without di,stlJ,rbing or, tkp o4join.. 'i/n,gblock.,"," ": ' .. ' (, . . . . , . ' , ' ! i '
questio.nfsw1tethe1· he.
,
And, inasmuch as it appeared in that case that the defendant laid his pavement in strips, lind then marked the same crosswise, and 0):1 the 8'I'1;rfa:ce, with 't\ blunt marker, ,without dividing the sarile intO blocks, as provided in the Schillinger patent I the court held that the latter patent bad not been infringed. rregard the case of PdtJirtg Co. v. &haliclce as settling theconsti'uction to' be' given to the Schillinger patent, .and' as adopting a constrUction !Substantially in accordaocewith the rulings of JlldgeSSHIPMAN and BtATCRFORD in Schillinger v.Gunther, 152,and17 BIatchf.66. I turn,' therefore, to a consideration of the al· leged' aots of infringement in this' case. The testimony shows, beyond contradictioil, that' the defendant,;for several years past, has been' in laying concrete pavemenm. It is hot denied that he divides his pavements into sections or blocks in the processt>flayirig the same, and while the conctete is in aplastibsti1tei byJinterposing some substance, sl1'ch as tar-paper;' blue-paper,:sarid, 61' thin strips of wood, between the blocks. The evidence 'shows that he first lays a lower course of concrete, from 2i to 4 inches in thickness;' then removes the scantling forming the frame for the block, and against the edges of the 'Concrete places paper or sand or wood to separate it from the adjoining block; then forms the same manner as the first was formed, and eventually covers the lower course of' Mn· crete with an upper course of finer concrete, from one-half to three-fourths binn inch thick, and cuts through the upper courSe with atl'dwel, so as to make the joints of the upper course coincide With the joints of the lower course, which are filled with the material above stated; that is to say,' With paper, sand, or wood. The result oftheprocess is a concrete pavement, divided into with the joints of the lower course filled with Borne substance, which produces a. complete separation of the blocks from: the base to the surface, and permits them to be separately removed, and to crackseparately when upheaved by the frost, without injuring the adjoining blocks. On the hearing of this case, it was contended that the defendant only used thin wedge-shaped strips of wood to separate the various sections of the pavement. The testimony, how.. ever, tends strongly to show that strips of wood were only used by the defendant fof a brief period, and that, asa general rule, he has separated the blocks by the use of sand packed closely against theedgeil of the block while it is in a plastic state, and before the formation of the ad· joining block, or by the use of 1I0rne species of paper in the place of sand; or by the use of sand and paperoombined, or a poor quality of concrete. As the defendant divides a concrete pavement into blocks by the permanent interposition sand , paper, or wood between the same, in manner last described, it is not necessary, in this case, to cOnsider whether the making of a joint between the'sections by a trowel, cleaver, or some sharp
of
292
FEDERAL· REPORTER.
instrument, while the concrete is in .a plastic state, (the joint being left open or unfilled,) would be an infringement of the Schillinger patent. But the process above described,that has been adopted by the defendant, is, in my jUdgment, a cltfu.r infringement ofthe Schillinger patent; putting that con8tructoin upon the invention which I feel bound to do, under the authorities above i. With'respect to the secoqd interposed by the defendant, that the .patent is yoid f():l:want of utility, it wiU .8utfice to say that defense is not susf.a:ined by t4e proof. The fact that so many attempts· ha.ye. been made. (as disclosed by the proofsa-nd briefs in this lay wncrete in the lUodedescribed in the Schillinger specifications, . very conclusively that the method of dividing concrete pavElm,ent intoseparate sections asH is laid lJ.:as substantial merit. It seems clear that the laying of the concrete pavement in sections, rather than in one continuous sheet, has a very mllterial effect on the wear of th.e pavement; that the joints prevent the Pllvementfrom cracking to the same extent and in the manner that they would crack when upheaved by frost. This is evidently the view entertain,ed by men experienc.ed, in the business of laying concrete, (lrfloors,and there appears to be no reason to doubt the,utility of the invention. . , The third defense insisted upon by the defendant is that the patent is void for the want of invention" in view of the, older art. Numerous prior Ila.Wnts have been pleaded and offered in evidence in support of this de{ense.The patents chiefly relied upon seem to be those of F. N. Hopk.ips,,issued)n November, 1869j}p.at of Horace P. Russ, issued March tllat,ofW.B. SteEjle, issued in July, 1869. With respect to the Russ. patent, it is unnecessary to do more than to call attention to the remllorks of JudgeBLA'.\.'cHFORD,with respect to that patent, in the case ofSchiUingerv. Brewing OJ., 17 Fed. Rep. 244, namely: "The Russ patellt shows a cOllcreie found,ation for a stone pavement without joints, 8Ild having removable panels, consisting of frames filled with concrete, to De, lifted Qut to give ,access to water-pipes." Although no e:x:pert testimony was introduced, by the defendant in that case to point out wherein, theR,uss patent had a bearing upon the invention of Schillinger, yet the. patent itself specifications were before the court, and in themselves they clearly showed the nature and. extent of the Russ invention, and the bearing it had on the Schillinger process. Giving Schillinger patent the scope which has heretofore been given it, and that which is cla:j.med and covered by it is patentable, it obvious that it was not,anticipated by the Russ patent. Neither the,Hopkinspatent anticipate Schillinger invention. The Hopwas for. a combination of Richie. mineral or albertite, with sand. and gravel,<;>r other substances, to form a conglomerate for paving or roofing material. .The patent in question did not cover any particular method pf laying the substance. , The invEJ"ntor evidently conteIJlplllted, that'itwas to be laid in ope continuous sheet or mass, or that it s40uld be moulded into blocks, and laid,in thllsame Ulanner in which
KENNEDY V. HAZI,ETON.
293
bricks are ordinarily laid.
The Steele patent approaches8omewhatnearer
to the invention claimed by the Schillinger patent, but it cannot be said
that it anticipated the Schillinger patent. Steele simply laid strips of wood diagonally across the 'bed or foundation prepared for the concrete, and spread the concrete in one continuous mass over the strips of wood, so as to imbed them therein. Itdoes not appear, however, that he cantemplatedforming blocks or sections of concrete, with joints extending frbm the foundation to the surface, in the manner adopted by Schillinger. The result of my investigation is that none of the defenses interposed ,by the defendant have been established. A decree will accordingly be entered in favor of the plaintiff, as prayed for in the' bill.
KENNEDY
v.
HAZLETON.
(Oircuit Oourt, N,' D. Illinois. January 8, 1888.) PATENTS FOR INVENTIONS-CONTRACT TO ASSIGN SUE TO OTHER THAN INVENTOR. SPECIFIC PERFORMANcE-Is'
A bill to compel the specific performance to assign any patent which defendant might obtain for a certain invention charged that defendant, in order to evade his contract, had obtained the issue to a third party of a patent for an invention of which the defendant was the real inventor. Held,ondemtlTrer, that, conceding the facts charged, the patent would be void, and specific performance of a contract to enforce the same would not be decreed.
In Equity.
Bill for specific performance. Banni'fl,g &- Banning, for complainant. West &' Bond, for defendant.
Demurrer to bill.
BLODGETT,J., (orally.) The hill in this case charges that on the tenth of July, 1884, the complaipant entered into a contract with the defendant, Milton W. Hazleton, by which the latter agreed to assign to the complainant any and all patents which he might thereafter obtain from the United States or the dominion of Canada for certain inventions referring to steam-boilers. The bill then avers that shortly after the making of this contract Hazleton announced that he had in his mind an invention for the improvement of steam-boilers; explained some of the features of it to persons with whom he talked on the subject; and said that he should call it the "Tripod Boiler;" stating the general features of the new device, and especially that he was to divide the stand-pipe into two or three hollow parts, or water-legs, extending through brick-work. The bill then further avers that Hazleton afterwards formed the acquaintance of one Henry 0.. Gonlding, and combined and confederated 'with him to avoid the effect of the contract with complainant heretofore mentioned; and caused tqlle prepared at his (Hazleton's) own expense, but in the name of Goulding, the necessary papers for the procurement ofletters pat-