'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.
CORBII\
L.()CK
co.
V.EAGLE LOCK CO.
JS'o. 816,411,01 April 21, 181il5, to Spiegel" dwned by camp] aiDitnt. and letters;No. ,262,977, of AU/mst 22, 1882. tQ M. L ..Orum.. owned by defendaI\t, the Practie"lll removal of the side-wal1e by extending the front and back plates laterally to form spaces on the llides of the case engaging with a rib lefr in ·tbecavl.ty. so that a betterfit can be .obtained by bending the edges of, the back-plate to suit the dovetail, the extension of the front-plate beyoLd the baeI,-plate to fit a around the cavity, which allows the ell', torationof the former length of the key-post. and the extension inward of the top-plate or selvedge, so as to cover the increased depth of cavity required for the key-post. Complainant and defendant both sold locks having the extended front-plate fitting the countersunk recess, (not shown in the reis, sue.).but without side-ribs. under a rectangular selvedge, (as shown in the Spiegel patent of 1885,) and the spaces between the Plates, (not shown in the Orum patent.) Held, that the fact that this lock had commended itself to the public favor was no pmofof the inventive novelty of either of their patented Improvements, which were prima facie the product of mere mechanical skill. In llJquity. Bills by the Corbin Cabinet Lock Company against the Eagle Lock 'and by A.Adgate Duel' against tile Corbin Cabinet Lock Company, for injunctions against the infringen1entof certain patents. Charles K MitcheU, for the Corbin Cabinet Lock Com pany. . BenjamirfF. Thurston and WUrttarthH. Thurston, for the Eagle Lock Company\ andA. . Adgate Duer· . i LAdOMBE,i1. ThequE'Jltions raised in these cases are so closely conofin a single opinion. The patnected that they may best ents under wbich the respective parties claim all relate to what are known in the trade as "machine" locks, a term apparently referring to the method: oftheir iIll3ertionin the wood-work of the drawer or door to which tbeyareatttached. They Qre locks for furniture, such as are nsed on bureau or desk drawerS; the doors of wardrobes and washstands, etc., beingoHbegeneral·class of goods known as " cabinet locks." Prior to 1873 the;ohly style of cabinet lock known was the common lock; witb one is familiar,suoh as have been used on bureaus, washfor very' many years. All parts of. this old style stands,! and the lock were rectangular, or square-cornered. In order to insert one of them ina d:rawer it 'Was necessary to form a recess to receiVe its several' parts. Owinjlwtbeshape of tbese' parts' of tbe lodk, and the consequeht; rectarigularcharacter of thereeesses ma.de to receive them,it was absolutely necessaryihat :they' sbouldbecut by hand, for the reason that ,any machinery for.thepurpose must necessarily be ofa revolving character, the result of such revolution being to leave the recess so formed 'rbtlnded or semi-circular-in shape. After the recesses were cut, and the lock fitted in them, it was secured in place by screws, (usually two or four in Flum· 'ber,) also irlserted by hand-labor. The formation of these recesses by hand was slow arid expensive, requiring skilled workmen, andconsuming much ;time; With the development of improved methods and rnachinel'yfor the manufacture of the lock, its cost was steadily reduced, but ,tbe"oostof applying it remained practically tbe same,' with theresuIt thlita time came when the cost of applying the Jock'bythe old method, was almost as great, ifoot greater, thanihe cost of the lock itself. Tbis wiS a1serious matter Jo the, furniture makers, and: the. problem de
340
FEDERAL REPORTER.
reducing the cost of applying the lock was one calling for solution. It was of course known that mortises or cavities could be made by machinery very rapidly, and very cheaply, but the difficulty was to fit loek to ca,'· ity, without any hand-chiseling, and to rlispense with the necessity of the screws (driven by hand-labor) to secure it when fitted. In 1873 (April 220.) a patent for improvement in locks for drawers, etc., was issued to E. G. Gory. It is known as letters patent No. 138,148. Gory cut out, with a revolving tool known as a. "router," a cavity rounded at the bottom, and (if desired) dovetailed throughout. He made .his lock to fit this cavity so that it could be slid in from the top. This he accomplished by reducing the size of his front-plate, rounding it at the bottom, so as to conform to the shape of the cavity face; byextending his back-plate or cap-plate so that it was of the same shape as the front-plate, but a little largerj uniting the front and back plates by walls, which thus completely encased the mechanism'dand engaged with the dovetail of ,the cavity. He also cut down the flush with the back-plate, and out off all projections of the selvedge beyond the plates and their connecting walls·. To insert the Gory lock it was necessary only to cut the dovetailed cavity with a routing,machine g,!-uged to correspond with the size of the lock, which was then slipped into the cavity.yIt WitS there supportediagainstmovement dowl1wQ:t1d.or sideways by the eng!lgement of the /ilides and bottoms of its two plates and their ponnecting walls with the Sll,rrollnding woodworkjagainst ;t:novement inwards by the back-plate resting against the base ofthe cavity; against outwards by the engagement of the back-plate and the cOnp.ecting walls with the dovetltil of the cavity. Thus, also, tbe use· of screws ao,d band-labor in driving them was dispensed with:, In this Gory patent both parties have an interest. Neitherdisputesoits. novelty and invention. It seems to cover a distinct advance in,tbeart, and there is in thl;l.record which would warrant a finding that his invention was not patentable. It is with its modifications that these suits are concerned. . , The Corbin Lock Company, plaintiff iu.the first ant in t·he secoQdaction; is the owner of twopatelits:. May 1881, to HeJ;lry L.. Spiegel, (reissued as No.J.O,361,.toF. W. Mix, Jllly31, 1883.)for imprOvements in cabinet locksj and Na. Apri!21,J885, to Spieglll,.for'new and useful cases forIoeks., It claims that by the Eagle Lock Company:intringe the first claim of the reissued,patent,and all the claims of the. later patent. The·Eagle Lock Company; and A. Adgate Duer (whose intel'ests are the tro1patentNQ.262,977, dated A.ugust 22, 1882; to Morl.'isL. Ol'Um,fot a.n implJovellll;lnt in lockcases. The single claim ofthispatentit:iscootended that the Corbin Lock;Oompanyinfringes., . The improvements 90, Gory's which are, claimed to. be shown ill these patents, are (1), /fhe practical removal of the connecting w.alls' between ihe front and back plates. This.is effected by extending these ally, their shape (conformed to the rounded cavity.. ) 'By this means, in lieu ql'theconnectingand: eogagingwalls of Gory., there
CORBIN CABIN,ET LOCK CO. tI. EAGLE LOCK CO.
341
were formed spaces or grooves on the opposite sides of the lock-case. Into these spaces there interlocks a projection, or rib, left in the cavity by the router. Projecting rear and front plates are found in the old style locks. (2) The extension of the front-plate beyond the back-plate, its projecting· edges being adapted to fit a countersunk recess around the routed cavity. (3) The extension inward of the top-plate or selvedge, so' as' to cover the increased depth of cavity required for the extended key-post. The advantage of the first of these improvements (the side xtension of the plates) is apparently that the lock fits better, at least when used with a ,Gory dovetail. The side edges of the back-plate may be readily bent closer to, or forced further apart from, the front-plate, baing thus accommodated to the slight changes of form and size of the dovetail produced by heat or moiRture; and by nipping the wood more vig()rously hold the. lock more solidly than would the engaging connectingwalls. The advantage of the second of these improvements is that, as the in .its countersunk cavity effectually prevents the inward which in Gory's patent was resisted only by the encased lock restipg on the base of the cavity, the key-post which he cut offniay be restored to its former length, a restoration assisted by the third ification. T1W first of these improvements consists in the reduction of the .surface wh.ich engages with the wooden. dovetail, so that, instead of 1;1pon it (by means of the side walls) fordheentire depth of' the case, its only engagement is at the edge of the hack-plate.. So sim- " pIe a mechanical modification, in view of the fact that in the old style botll hack and front plates were often extended beyond the case, can, hardly be considered invention. S.o, also, the insertion oian extended: front-plate in R. countersunk reces!> was a no.t uncommon contrivance in; the old style.. ·When secured initsplace by screws it supported the lock firmly,giving room for .an extended key-post, and. it but accomplishes the same purpose when held there not by screws, but by the inward pull ()f the back-plate or dovetailed side-walls engaging on the wooden dovetail. Neither of these modifications, therefore, seems to evidence more than ordinary mechanical skill. Each party, however, there· is invention in the improvement exhibited in its patent, and both point to the history of the art for corroboration of that contention. 'It seems' that .locks made on the model shown by Gory were, not, at the time Spiegel Orurp. patentlld their,contrivances, in actual use in the trade. What efforts, it' any,' were mMe tp .introduce them to notice does not The principle, how-ever, on which theyoperated-a principle destined,' as one of nesses puts it,:" torevolutionize the art"-had been discovered and known, and, subject to Gory's monopoly, was at the service of those who.:. locks i,n. drawers and cabinets. To make ,the lock fit into a routed .cavity without hand-chiseling, and to support it against movement, with.out the uBe'?f;screws1>Y tqe engagement otits parts with thtiaufrounding wood-work, was, for all that appears in the case, the discovery of Gory. To e;tent the fi,elq. ,oecupied..as against sub:sequent inventors. .
342
FEDERAL REPORTER·
. The 'lmprovementsrespectiiVely claimed for the patents in suit are' the extension of the key-post to its original length, (Gory cut it off flush with the plate,) and the 'substitution of intervening' spaces between the plates for the inclined and engaging side-walls of the Gory encased lock. It appears that the new lock was immediately adopted by the trade. Its sales have constantly and rapidly increased, and it is steadilydisplacing the old style Jock. To this circumstance eaehside appeals as decisive upon the question of patentability. The fact that any new device has commended: itselftothe public as practicable and desirable, and a· better one than' those which had preceded it, no doubt affords a safer criterion of inventive novelty than any subsequent opinion of an expert or intuition of a judge. The difficulty in the present case, however, lies in the application of that criterion. The lock which has thus won the public favor is the lock neither of the Orum nor of the Spiegel' patents. The locks sold by both companies (they are substantially alike) .have the extended front-plate fitting into a countersunk round-bottom,recess, (not shown in the Spiegel reissue,) and adapted to hold the lock so as to give clearance for an extended but without side-ribs under a rectangular selvedge (as shown in the Spiegel patent of 1885,-a mode of fitting which forbade the entire abandonment of hand;.cutting.) They have also the intervening spaces between the plates, (not shown in the OrumJ)o,tent,) securing, as it is claimed; abetter fit. There is evidence to sMw that both of these 'modifications have' contributed to commend the new the public favor. That it would have suc<--eeded with either one alone, however,the evidence does not show. The proof of acceptance by the public, therefore, falls short of the measure required to demonstrate, in the case of either patent standing alone, :tbe inventive novelty of.what seems priroojacie to be the prOduct of ordinary mechanical .Usual decree for in each
case.
UNT.E:RlIIEYER 11.: FREUND d I
al. . '.'
(l!if'ouit (JOt"", \ .
s. D. lfellJ' 1'"ork. '
January 15, 1889.) ." .
',.'
....
:I. PATENTSJ'OB INvENTIONS-DESIGN ',: Letters'patentNo. 15,121 granted July I, 1884, fora design for
" .
S.
which consists of 8 central coriventlon:al star, in wbich' any ornament msy : be set, Pla.c.ed. . .pon a larger st8.r.. iOf.l.eaves. haVing diamo.nd-sh8 ped p.rojec-. , u . tionsbetweeD i,ts points, both sta.rs being in bas-relief. held, not void for of noveItt. '. ' . . . . .
SAME.
. If a design presents a differen·t impression upon the eye from anytbingwhlch ; precedes if it proves t? be p1tla'illg" attractive, 8I!d pop,ular, if,ll creates a ' eVen though It bestmp,le, aod . ,.demand for the goods of ItS. . ' showawlde departure' from othel'designs, its use will be protected.' , . i'
-In Equity, ... ,Bill for infringement of a' patent fur a design. Rowland Oox) for complainant. . .