594
. REPORTER,
vol. 38·
.ofcomplainapt'ssaidpatept No. 77.;878. .The adjustable feature of tain parts .of a single cOI)lbined 11Ilachine or grain harvester CIlnnot, in the light of the art as discll)sed in prior patents, be treated cOuegarded as the same or substantially the same thing as an independent bipding-meehanism,adjustable aSa whole, with all its parts fixed andunadjustable, simply because such binding device is. used in connection. with grain harvesters. 6.'rhat the bills in the above-entitled causes should each be displissed. at complaina.nt's costs,. it is accordingly so ordered and adjudged. .. ,
(}RANTf1.WALTER.
8·. iJ. NfM York. May 4. 1889.)
1.
PATB:NTsJ'OR
: LetterspatentNo. 267.192. issued W complainant November 7, .1882, for "imwinding silk and othllr thread, " contain pro;vements in the, art .. two (1)" A of silk or thread wound Upon a reel diagon· ally from side to side; in the manner described, and laced back and forth across its width to prl3serve its " etc.; (2)'" thllcomQination of the lacing with a wide silk· or ot1).er thread in whicl\ the strands are diagonally crossed; substantially," etc. The form of skein described in the patent was· well known I but the method of dyeing and winding·slIk by n!!vel' been th().ughtof. unjtq employed It and described It In thIS patent. stating that the lacmg "constItutes the chief point of my invehtion. and is what preserves the skein in its shape, and prevents its becoming entangled. in the 'process of dyeing." Dela, that the claiJD.!iI fail to cover and the patent is void. It would be of no avail to disclaim the skehi except fOfuse in the process of dyeing, as that would not .chanK6 the patent into one for the process, which is what the invention consists of.' . . , , ..
FOR DYEING.
,.
I.
BAME-DISCLAIMER.
. " . ' i ... . . . . . Bill for infringement Q( patent, filed by James M. Grant against Richard Walter. , , Wm.Edgar·Simonds, for cODlplninant. Henry GraB8e, for defendant·· This suit upon lettersPlJ.tentNo. dated Nov:eqJ,ber 7, 1882, apd.graqted tq theqra,t()l fpr ",hat are <::aIled in the pateJilt l!improvemeqts,iJ;l: arto( winding silk and "to .a, nov'elmanner other thread," .and which ..of winding silk or other pre. paratory t9i1$ being dyed," and tpqGlnsist ICin:windil)gthe silk or oth.er thread upon the reel in the. form of ,a b!ln4,· in which the thread in .the manner-pow crosses from sid,e tQ side as it is wound, 1ij!11ot by passing one ,emp;IPyed,:.but JayerPYer t4e other.. I prefer Cl()SS in five-sixtqs of .one}.'eyplutiqn of; although \Yhen
In
GRANT'. WALTER.
595
the requited 'quantity has :beeiI 'wound, I laeethe
or band, before it is removed from the reel, 'in One or more places, generally On opposite Bides of the reel, so as to divide it into a number of parts and hold it in its flat or 'band-like condition. This lacing constitutes the chief point of my invention, and is what preserves the skein in its shape and prevents its becoming entangled in the process of dyeing. After lacing, the skein is removed from the reel,and passes into the hands of the dyer. After winding in the manner above described the skein is so laid, one thread crossing the other, that its texture is more open, even, than the small skeins wound in the' ordinary manner, and, although much larger, the dye easily penetrates to every part, and insures auniform color. The several threads cannot become matted together, .as with the ordinary skein, wound in the customary manner." The utility of the invention is set forth as that by means of it "a. great saving is made in the expense of manufacture, the waste ofsilk is greatly reduced, and less skill is required in the winding after the dyeing, thereby dispensing with the highpriced, skilled operatives now employed upon this work." There are two claims: "(1) A skein ofstlkor other thread wound upon a reel diagonally from side to side, in the manner described. and laced back and forth acrOss its width to preserve its form, substantially as set forth. , "(2) The combination of the lacing with a wide skein of silk or other thread in which the strands are d.agonallycoossed, substan.tially as, described."
According to 'the evidence; silk is formed by the silk-worm into coCO<'lDS, which are soaked in a suitable bath, and the filaments of silk are unwound from the cocoons. and wound into skeins on reels or swifts. In this shape it forms the raw silk of commerce, and is imported' into America in large quantities. In manufacture the raw silk is ungummed; dried to a sufficient degree; and then, in skein-form, put on swifts, from which it is wound onto spools or bobbins; then the sflk;accordingto the use to which it is to be put, is further doubled, ,in which .operation it goes from spool to spool; is twisted, in which operation it goes again from spool to spool; anl1, when of sufficient size as to number of threads and of condition as to twisting, is reeled from the spool or bobbin into skein form. In this skein form it is dyed. The term "winding" means the changing of the silk from the skein 10rm to its fOl'm·on a bobbin or spool, and by "reeling" is meant the putting of the silk into the skein form. Before the orator's invention the skeins for dyeing were made up of several small skeins of threads wound without being crossed. These smaller skeins were difficult to separate and straighten after the operation, and skilled operatives were required. The orator's method produces a form of skein in which a larger quantity of si:k can be reeled than by the old method. It requires less skill on the part of the operative to reel the silk, and a large part of the waste, inseparable from the old method, is prevented. There appears to be a saving of about 40 per cent. in cost over that by the other method. After the skein has been dyed, it can be wound without parting, thus dispensing with the work of parting that required considerable skill \
JS96
FEDERAL Rll:J;'ORT:E;R,' vol.
38.
and experience in the other method of The· evidence also abundantly shows that raw silk was reeled diagonally broad skeins, and lacer! across for convenience in handling and transportation, before the orator's invention, but more closely, and not for the purpose of handling in the operation of dyeitlg. The great advantage of that form of skein for that purpose does not appear to have been known before. What the orator invented was the method of dyeing and winding silk by the use of that form of skein in the operation, and not the skein itself. That, being known before, was not patentable as such, even for a new use. Railroad Co. v.. Truck 00.,110 U. S. 490; 4 Sup. Ct; Rep. 220; Miller v. Foree, 116 U. S. 22,6 Sup. Ct. Rep. 204. The process of using it in dyeing and winding was probably patentable. Cochrane v. Deener, 94U. S. 780; The TelP.j!hone Cases, 126 U. S.l, 8 Sup. Ct. Rep. 778 .. He appears to have a patent for what he did not invent, and not to have one for what he did invent. The IQoseness in winding andd.ifference in sizeoLthe skeins made use ,of in the. practice of the Qrator's .invention are somewhat relied upon toupholdtbe. patent for the skein; but they are not mentioned in the claims, and are no more covered by them than the process is; and, if they were.· :difl"eren<;:es in. degree . merely WQuld not .seemtobe patentable. EsieYv. Burdett, U. S. 633, 3 Sup. Ct. Rep. 531. The specification makes many references.to the use of the skein in the process of dyeing, and this has been urged as forciblyas it could be as a gfoundfol' upholditig the patent for such a skein in use in that. process. Butthe cla-hus ute for tbeskeinmerely as a product, and they rigidly control; Burr v. Duryee, 1 Wall. 531;hmes v. Campbell, 104 U. S. 356. 'fhe..orator offerstl:HUsclaim the. skein except for use in the process of dyeing, but that would not change the. patent into one for the process. The patent for the skein would still be vohl, and the process of using it be still free from the patent. This is not like ·Cummings'patent for a set of artificial teeth, made in B,definedrnanner, which was held to cover as well th-e process as the pJ:oduct. Smith v, Vulcanite CO., 93 U. S. 486. The skein of this patent is not:.the, product, and is not new. The product is the wound. skein of dyed :silk:. This skein is merely put toa new use in the. process of produning that; and when that is produced it is not different from the wound skein of dyed silk produced in the forlllermode, and would not seem to be patentablf.>. MacKay v. Jcwkma.n, 12 Fed. Rep. 615·. Theinvention of the orator is so meritorious and valuable that the conclusion that the patent does not and cannot be made to cover it has been reached. with reluctance,an.d only after much considerntion of all the grounds urged in favor of an opposite result. Let there be B decree dismissing the bill of complaint, .' with costs.
. , ,':'
;. :.' , ,.
;J
DUEBER WATCH-CASE MANUF'G CO. V. DALZELL.
697
DUEBER WATCH-CASE MANUF'G
Co. v.
DALZELL
et al.
(Oircuit (Jo'urt, 8. D.
York.
May 14, 1889.)
PATENTS FOR INVENTIONS-,-AssIGNMENT-NoTICE.
Where it was agreed that certain inventions should be complaltlatlt's prop· erty, and be patented for its benefit, and where defendant knew that the in, ventions were in use in complainant's factory, and that the inventor made them while an employe of complainant, and defendant made no inquiries as to whether complainant claimed any right to nse the inventions, but took an exclusive license from the inventor. defendant is chargeable with constructive notice of the rights of complainant. D. stated that certain inventions of his were made before he 'was employed for complainant, alld the first products for complainant were made witll.hiS own appliances. He wail: employed by complainant to with ref· erenceto the subject of the inventions, was given several months time. and furnished with appliances, and accomplished the desired object by devices wbich ba,d been previQl:1sly used for analogous purposes., Complainant) ident testified that D.Buggested the patenting of the inventions for ant's benefit,saying that if complainant would pay the expense be (I).) wanted not):lingfor:bimself.P,teetified that he suggested that the inventions were worthy off,la\en ta, and he would obtain patents. but could not, then sparet):le mOlley, and that the president said that he (D.) could have 'what money he wanted. Bnd should be protected as if he had used his own money'! Though D. remained in complainant's employment several months after the principal patents were obtained, no attempt to agree. definitely as to the,ir respective rights was made. The expense of procnriug the patents was not charged by complainant to D. Complainant's allegations as to the agreementin,dilferent snits were somewhat at variance. and its president respOnded evasively to some of the Interrogatories. Held, that complainant was etltitled to the pat· ents. ',. '
S.
SAME.
InEquity. ' , ' ., ' Manufacturing Company against pal';' Bill by the Dueber :zell and the Fahys Watch-Case Company. , John H. V. Arnold and Jamea Moore, for complainant. Bowman « Bowman, (Edmund Wetmore, of counsel,) for the Fahys Watch-Case Company. WALLACE,
J. The defendant Dalzell and the Fahys Watch-Case Com-
,
'
pany having filed a bill against the complainant for infringementoftwo patents granted to Dalzell for inventions in apparatus for manufacturing {Joresfor watch-crowns, the complainant interposed a plea a.verring in SJ;lhstflDce that prior to the making application for the patents it was ,agreed between Dalzell and the complainant that the inventions should be the property of the complainant, and be patented for its .after the complainant filed this bill against Dalzell and the fahys Watch'Case Company, the exclusive licensee under the patents,to compel a conyeyanceofthe patents to it, together other patentssJ,lbseql.lently wanted' for other improvements in apparatusfol',u1akjng parts .of watch"cases. The case presents the of factwhet)ler,f!Uch:fln bet'Yeenpalzell and the u:!ikwas
