TONI?UER fl·. QIIAMRERS.
833
SIMONTON, J. Defendant is indicted under section 5479, Rev. St. The charge in the indictment is that he procured and aided one Mary Conyers to make an affidavit stating certain things which are false, for the purpose of obtaining a pension and arrears of a pension as the widow of a solrlier of the war of 1812. The motion proceeds upon the ground that this section 5479 does not apply to a case in which the affidavit used was in fact taken before the proper officer, even though the statements made in it are false. In the case of U. S. v. Staats, 8 How. 41, the statute of 3d March, 1823, was construed. This statute was subsequentlyamended by act of 8th June, 1872, by the insertion of the word "affidavit" among the other writings mentioned in the statute, and is incor.porated in the Revised Statutes as section 5479. In that case it was held that the act punished not only the crime ,of forging certain instruments, or altering them when forged, but also the offense of using a genuine Qut false instrument, knowing it to be false, in support of a daim with intent to defraud the government. This case is decisive of the point made. The motion. to quash is refused.
TONDUER 'IJ. CHAMBERS
et al·.
(fJircuitOourt, W; D. Pennayl'IJania. , Jan11ary lQ, 1889.)
1.
PATENTS 'FOD lNVENTIONS-VALIDITY-FALSE STATEM:ENTAS TO CITIZENSHIP;
It is 'defense tp a for the infringement of letters ,patent grante!lun,del'the RevJsed ,Statutes that the patentee in his applicatioll there, for made oath that he was a citizen of the United States, when he was not; such misstatement as to his citizenship having been made innocently, through mistake, without any improper design whatever; , " '
.2.
,
Letterspatellt No. 258,156, dllted May 16,1882, for improvements in g.!assannealinl'\' furnaces,· granted to Cleon TondlJer, sustained; and the defendants adj qdglld, to inJriiIge the same. Following V. Stewart, 28 Fed. 'Rep, :061:
PROCESS.,
.
In Equity. ·Bill for infringement of patent. W. Ba/.Giuiell &; Sons, for complainant. George Harding and George J. Harding,
, .,
, ACHESQff,J:This is a suit defendants of letters, patent No. 258,156, for imlill'OVemants in glass-annealing furnaces, granted to Clean Tonduer, the' plaintiff,on May 16, 1882; a patent which this court already has had occasion' 'to Mnsioer in the <lase of Tondeur v., Stewart, 28 there was a decree in favor of the patentee. The present defelld8rJ;lts, parties to that suit, and as some new proofs adduCedPythem', this case has been. ,as if none of the. q;uestion,s involved. t;>,een passed on, and the conclusions I ftnnOunce'MVeheen of the grounds ofthefurmer :fI.Q8.tefulcqosiderati<;>n of in all its '
,·\'The a of glass 'from the of tlie tUhnel;orleel'icotl'sisting oftwc>'setsGfparallel d and di ) extending lengthwise throtlghthEdeer;and .eieva:ted: above the bottom thereof, the %llJts'of therespeetive sets being arl'lingedslde by side, and alternately'between each other; one set reciprocating 10ngitudinaJly and conveyirig;1;heg1assi'and the other set the glass at certain timesiwhereby the of are supported in andcarl'ied through the leet,insubsfantially the same horizontal plane. The specification shows and describes'aeeries of transverse shafts to support the two sets of bars, 'each shaft being provided with two sets of arms, E', and E III , the arms,E',darrying grooved wheels, upon which the reciprocating or transmittingblll·g, d', rest,and whereby they have a free rectilinear motion 'back and forth in the leer; while the supporting bars, d, are made {astto thearms,E''', by a hinge-joint. By means of a lever connected ofthe 'shafts, one set of bars is raised, and the other is lowered' simultaneously to the extetltaltogether of about one inch, and thus the glass is shifted from one set of bars to the other. But, touching the motion of the bars, d, the spe<;:.ificll,tion states, and the fact is, that it "is very small," (being limited to the short distance the lever moves the arm, E''',) and "has no effect on the progress of the glass through the tunnel." The described operation of the device is this: .. The ends of the reciprocating bars} been pushed, iptothe: furnace, and a sheet of glass' placed thereon, the operator at the outer end of the leer d;ra,wstl1e: Qutwarrl, the'width of the a,heet. Then, \>y a. mOt tiD1i1of the levfll'(he lowers the bats, d', and raises'the .bars,d, and thus is tr,a;pcsfetred Jrom. to the bars, d, upon 'which it tests while bepQl'lhea thebars"d!,.back into the furnace. He then reverses the lever, and the bars,d';'takeup the sheet.' A second sheet is placed on, inller ehdsor the bars, d', the two sheets are 'dow,ritllelJJer,and, the bars"el, and::the bars, d', are againpushed,backl' This operation is repeated untils: series' of sheets extends throughout the le,er"when they are discharged from the ou.ter end, one by one, at each reciprocal rtlOvementof thebars,d'; , T'hepatent has five claims" but 'of the first claim orily is bere ,asserted. That c1kim is its follows =. . ," . '. ' :'(1), ,The combination ,of .the bars, (j,', arranged by side,and,/llternatery set; of glass while bars;d', are pUBhedtowai'ds tMloor or and the set, d', porting the sheets'of ,glass, andrrioving' them on wHrd and through the ,tnnnel. substHntially The answer'denies: that the pHdntiff was the and orlginalinventor of to him..(add also denies infringement..' .. .' ,·T{')smltaih'4'be defense the defendants' rely:, 'hot only upon patents,to Bowen, whic)J. were mainly relied on to defeat the. suit /l-1so upon letters patent dated;NoveiIiber 1873', gra:rlted to· J. :6ouHcauh; arid severiilF'rench ents, particularly therjateriti to Ai M. .: Now, in respect to the
TONDUEB "'.CHAMBERS.
no f?f, of antlclpabon 'of the court 10 the earher case. Of the BOul,lcaPlt "It , must be, that the drawings and ip ,so far:as they have ,to matter here are obscure. ,,any the con, Moreover, there is soine positive testimony tending to struction ,thereby contemplated was a failure in practice; and so, also, , there is evidence-especially the testimony of Henry L. Dixon, a furand practical strongly conon my mind that the Bouvy device is impracticable fodhe proper ,annealing ofsl1eets of glass. Hut, aside from these considerations, I think it can 'be confidently affirmed that not one of the several patents , set up 'as!tnticipatory shows two sets of bars, one of them (the 'conveyjng , set) havipg, a reciprocllting rectilinear motion, and theptber set supportit;lg the glass ,,:hile the first set is pushed back into the which is an essential characteristic of the plaintiff's device. then, what prior inventors may have achieved, I am of t11e opinion that 'Tonduer'sQ.evice possesses patentable novelty. And, tqill; is an,d };m.c;ontra'strongly sustained by the plaintiff's , dicted,-showing the great utility of his patented, invlmtic;u;l, aqd its iminediate and very general adoption. The leers which bad, been, Gom"monly in use were the car-leal;, in which the sheets of glass are trans, poned through, the annealing tunnel on Cars, and the heltrth-leer, in which the sheets are moved along the floor of the lee.r"resting thereon except at the instant of transfer from place toplace. But the plaintiff's great change in the practice of the u"t,to "it appertains. Glass manufacturers generally have abandoned, the, old , methpdi:l of transporting the glass through the annealing tuppel" an,d ·. have the plaintiff's device, and a large number oOhem inyatiparts ,qf the country have taken licenses from him ; and , 'the, secures more uniform, and thorough: ,re13ulting ,in a ,great saving of glass from br\lBkage,-andlllso quj.cker , work, than any device or method previously emploled for. the \iflf Now, facts astbese may not be deciSIve of the question",they goJar .toesta patentability, and to justify the determ,iI)a, ., tion of. the cou,rt as above expressed. Smith v. Vulcanite 93, U. s. '486i:forrrn'(Jo. v.Higgi'M, 105 U. S. 580; Valve 00. v. Valve Co." 118U. , S. 158, 179,5 Sup. Ct. Rep. 513. , ,,_ Coming, then, to the question of infringement, ,we find that the defend'..ants usetwo sets of elevated bars, and that the only difference (alleged in construction or mode of operation between, their deto be 'vice and plaintiff's specification is, that in defendant's leers the bars ',which support the sheets of glass ",hile the re'd 'bars are pushed towards the flattening wheel. are stationary, movement for shifting the. glass from one set of.balll to , .and the the reciprocating bars alone. differthe ,tlnce suf.t3,cient to relieve the defendants from the charge oOnfripging ;thefir.sfCllliint. of . , . . patent? Certainly the,variation is . · , . uh, " -- i.. ' . . .. ' ; '.',' -,' ,'.
;, u?m. the cOnclusIon u:pon the
I
,I"
. ,:' '.'
. "",.
386
FEDERAL REPORTER.
important. As was said in Tondeur v. Stewart, supra, most clearly the defendants' stationary bars perform the identical supporting function which the plaintiff's bars, d, only function, be it observed, assigned to those bars by the first claim. Then, again, it is evident that for the supporting of the sheets of glass by the bars, d, and the supporting and moving of them by the bars, d' , (the particular matters covered by thefirst claim;) it is altogether immaterial whether the vertical movement is divided between the two sets of bars, or is executed by the bars, d' , alone. The difference is not in principle, but in mere arrangement. In all essential particulars the plaintiff's described device and that employed by the defendants are' alike. Theyoperate in substantially the same way, and produce the same beneficial results. This, however, is not all; for not only do the defendants use and enjoy the substance of the plaintiff's invention, but their bars come within the very termR of the first claim of the patent. Therefore, to escape the charge of infringement, the defendants are under the necessity of contending that the first claim of the patent shall be construed to mean two sets of elevating bars. To sustain this view, much stress is laid upon certain passages of the specification which treat of the shifting movement of the bars, d, and d'. and also upon the disclaimer to be found in the patent, in the words following: "1 am aware that movable bars and fixed temporary rests for the glass have long been in public use to move sheets of glass through an annealing tunnel; therefore 1 do·not'claim these." Now, it may well be that the patentee considered the simultaneous change in the elevation of the two sets of bars as the most advantageous mode of shifting the glass from set to set, and this feature he has taken care to cover by the second claim of 'the patent. But the first claim calls for no sU,ch limit.ttion as is insisted on, and its language is free from ambiguity. Why, then, should the court import into the claim a qualification not expressed,-something wholly unnecessary to .the therein described opel'l1tion,-when the only practical effect would be to deprive a. worthy invehtor of the benefi.t of his patent? The disclaimer was considered in the case of TOrldeur v. Stewart, supra. and the judgment of the court was agaiilst giving to it the effect here contended {Qr. '1'0 that conclusion I must adhere. I will not repeat, or 'mnchenlarge 60, what was said upon this subject in the former opinion. The disclaimer is to be read with reference to the prior state of the art, and it IIlay;and ought to be construed so that it may harmonize with the plainly-expressed terms of the first claim of the patent. The claim follows directly upon the heels of aisclaimer. "but what I do claim is: (1) The combination of the bars, d, d'," etc. The specification de. scribes two setS of bars,-one set having a temporary supporting fune. tion, and the other set supporting and moving the sheets of glass through the leer. 'I:'h'e'first claim the patent is for the combination of these two setso! barsiirranged and co-operating in the manner and for the purpose defined. The claim should be, interpreted with reference to the actual invention. The reasonable presumption is that, having a just
of
·
TONDUER V. CHAM BERS.
337
right to cover and protect his whole invention, the patentee intended to do so. Winan$ v. Denmead, 15 How. 341. The construction of patents should be liberal, so as to secure to inventors what they have created, if it can be done consistently with the language used. Turrill v. Railroo,d Co., 1 Wall. 491; Klein v. RU88eU, 19 Wall. 433. Guided by these just principles, I must reject the construction the defendants would put on the first claim of the patent, and hold them to be infringers thereof. ,Bunhe defendants make the further defense (which was not set up in the prior !;luit) that the letters patent sued on are null and void, upon the ground that in the application for his patent the plaintiff made oath that he was a citizen of the United States, which he was not. The swer does not allege, nor is there any evidence to indicate. that the plaintiff was guilty of any fraud, or that his oath was willfully false. On the contrary. it satisfiwtorily appears that he acted under an 'honest mistake, and with no improper design whatever. The plaintiff left Belgium. his native land, in the year 1881, and came to the United States with the avowed intention of making this country thenceforth his permanent place of residence and citizenship; and he ignorantly supposed that by virtue Of his residence,' and the residence of his family, here, he became a citizen. This mistake he did not discover until a long time after the grant of his patent. Now, the question raised, it will be perceived, is not whether the letters patent are voidable, for the cause a13signed, at the suit of the government. The position taken is that the patent isa nullity. In support of the proposition, the defendants thecase·ofOhild .v.Adams, 1 Fish. Pat. Cas. 189, in which a similar defense was sustained by Judge GRIER. But that case arose under and was governed by the patent act of 1836, which aHowed the grant of letters patent to aliens only upon peculiar conditions, to which citizens were not subject. 5 St. at Large, 117. By that act the patent fee payable bya citizen was $30 only, whereas an alien was required to pay·at least..$300, and, .if a British subject, $500; and by the stringent guage of the act the fee was to be paid before the application for a patent could be considered by the commissioner. Section 9. Then, again, an alien patentee was compelled "to put and continue on sale to the public, on reasonable terms, the invention or discovery for which the patent issued." Section 15. It was. therefore, under act, of the highest importance that the applicant should truly disclose his citizenship; and any inventor should receive a patent he section 6 required that should "make oath,' * * * of what country he is a citizen." The decision cited was expressly put upon the ground that an alien, whether through ignorance or intention, falsely swearing that he was a citizen, in order to procure a patent, not only failed to perform a condition upon which his right to a patent depended, but committed a fraud upon the government. But the law the present case, i. e., thepatent apt of 1870, as embodied in the Revised abolished aHsueh: discriminations against aliens, and placed them upon the same footing as in respect to the grant Of letters patent for inventions, and the ()f ,the privileges. thereby secured. Rev. St. §§ 4886,4920, v.37F.Jo.7-22 .
'338
FEDERAL
REPORTER.
,4934.:1'here{ore, under the law as it stood when tHe 'plaintiff applied for and obtained his' patent, the mistake in his statement as' to his citizenship operated, and could operate, neither to his advantage, nor to the detriment of the government or the public. Furthermore, it is well 'worthy of notice that while section 4892, Rev. St., requires the applicant for a patent to "make oath that he does verily believe himself to ,be the original and first inventor," etc., in respect to citizenship, the language is, "and shall state of what country he is ,a citizen." This change in phraseology seems to be intentional and to dispense with the necessityohn oath as to At any rate, the citizenship of the applicant for a patent is no longer a matter of any real importance, and a mistake touching the same is harmless. I feel quite justified, then, in decliningto apply to this case the rule which prevailed in Child v. AdaTruJ, 8Upra., In the absence ofexpress statutory provision a"oiding a patent for a misstatement a8to citizenship, it would be going to'an extreme length """"'"and, indeed, in the face of well-settled equitable principles--for the oour1'1o hold that a mere mistake in that regard, innocently made, and working no sort of harm, should have such effect.: In Manufacturing GJ. v.Canning 00., 27 Fed. Rep. 78, where it was urged' that a was estopped to deny that his American patent was' for the same invention berore patented by him ina foreign country, by reason of his having made oath that such was the fact in his application for the former, 'it was held that, if tne, inventor was laboring under a mistake as to this point,hisrights ought not thereby to be defeated or abridged. At an early day Judge. STORY held, in Whittemore v.Cutter, 1 Hall. 429, that an e,rror in the form of the oath of an applicant for a patent was immaterial; and in, Orompton v. Belknap Mills, 3 Fish. Pat. Cas. 536, the court said that even the entire failure to· make the oath would not invalidate the patent. ' Upon, the whole, then, I am of the opinion that the misstatement: in the plaintiff's oath as to his citizenship is not an available defense to this suit. Leta decl'eebe drawn in favor of.ilie plaintiff.
CoaiJIN' CABINET! LoCK
,.
EAGLE "
LocK:: Co. . ", -'
DUER ". CoRBINOABINET LoCK (Oircuie Co'Un, PATBN'l'S'
Co.
D.
January 2i,1889.)
Letters, patent No. 188.148, issued April 28, 1873,' to E.G.Gory, for an Improvement in locks for drawers, cover, in connection with a cavity cut out by a router, rounded at the bottom, and, if desired, dovetailed tbroughout, a look with a front-plate of reduced size,rounded at the bottom. aback-plate of t.h.e, sameshar.e as the .front. but a little larger"and ;side-waUsengaging ,withthedovetai, the key-post being cut down flush with the back-plate, and all :projections of the selvedge beyond the plates alld walls cut' off. " The impro,vemeiltf:shown by. reissue No. 10,861, of July 1, 1888,: to l!'. W.Mix, letters , ,"'.
bvBNTIONs...,..NOVEI>TY'-CABINET LOCKS.