144
FEDERAL REFORTER J
vol. 88.
EDISON
et ale v.
KLABER.
Uircuit (lourt, S. D. New York. April 5,1889.) PATENTs-INFllJNGEMENT.
Claim 20f letters patent No. 180.8157, August 8, 1876, to Thomas A. Edison, descrIbing a method of printing in permanent semi-fluid ink, by puncturing II. sheet of paper or similar material with numerous small holes, filling them with a semi-liquid ink, and pressing the same on the surface to be printed, the puncturing .needle being reciprocated by a shaft revolved by electro-magnetic mCltors, is hot infringed by letters of November 28,1882, and December 22, 1885, to David Gestetner, describing a process in which bamboo fiber paper, prepared with a layer of wax or paraffine, is laid on a zinc plate, and on it autographic writinlr is produced by a little instrument like a pen-holder, to the end of Which is attached a diminutive wheel, provided with microscopic corrugations which cut slits in the paper as it rolls, forced along by the hand of the writer, sinqe ,the Edison patent is not restricted to autographic writing, and also must be restricted to the use of a stencil made by an electric pen, both from 'the terms of the specification and from the fact that the process . was not otherwise new.
Action by Thomas A. Edison, Robert Gilliland, and A. B. Dick Companyagainst D. Klaber, trading under the name of the Cyclostyle Company, for infringement of patent. John Tomlinson and Richm'd N. Dyer, for com.plainants. Price ({c Steuart, for defendant
In Equity.
a.
ent No. 180,857, dated August 8, 1876, granted to Thomas A. Edison, for an improv.ement in autographic printing. The inventor states: ,· ... My improvelIrehtrelates-First, to the instrument employed forpuncturlng the paper, whereby such instrument can be used by hand in thesame manIleras a drawit;lgor writlngpen; second, to the method ofprinting by direct inJ¥lrmanElnt semi-liquid Ink {rom the perforated: 'sheet; and, third, press for, holding such transfer sheet, and the to be. impressed· · , '" ... 'fhEi which I make use of consists "f a tube, tapering to a small pohit, and a'nee41e wIthin that tube, which nee':: Ie is reciprocated with great rapidity j and 'the needle point is projecteu it IS8Uffidiently long to i."each through the paper upon which the tube of the pen rests,:and when retracted the needle is drawn within the tube, so that the small end thereof is free to be moved from place to place. The great rapIdity in the movement of the needle point produces the punctures in the paper sufficiently close together to forIillines when the pen is manipulated in or drawing; and, as nothing is removed from the paper, its strength is not materially injured by the punctures or perforations; and it will be apparent that any suitable device may be employed for reciprocating the perforating needle. ... * * The mode of printing from the perforated sheet is to lill the holes with ink by means of a roller applied to the right side of the perforated sheet; and then, when said ink is Well worked into the holes, to place beneath such perforated sheet the paper upon which the impression is to be made, and then pass over the perforated sheet a roller that presses the ink through the perforations to the surface of the sheet below. ... ... * Various forms of electro-magnetic motors may be employed to revolve the shaft that reciprocates the puncturing
CoXE, J.
Thil'ds an action of infringement, founded upon letters pat-
EDISON V. KLABER.
745
needle, and the movement of a VIbrating armature might be transferred directly to the needle if desired. " '
The second claim only is involved. It is for "the method herein described of printing in permanent semi-fluid ink,by puncturing a sheet of paper or similar materialwith numerous small holes, filling such holes with a semi-liquid ink, and pressing the same upon the surface to be printed, substantially as set forth." The defenses are lack of novelty and invention, and non-infringement. The prior art shows many structures and methods closely approximating those of the patentee. An Italian, named Zuccato, discovered in 1874 a method by which an autographic stencil is produced by writing with an ordinary pen and caustic ink upon a varnished paper. The printing is done with a permanent semi-liquid ink byineans of pressure. In 1873 a patent was granted to Charles Bordas for a method of transferring embroidery patterns from a perforated original stencil to sheets of paper by forcing powder or a liquid through the holes. Letters and figures were printed by this method. In 1869, /George V. Metzel substituted for the brush' previously used, roller covered with plush, velvet, or carpeting, which was 1impregnated with ink, and pressed over the stencil-plate. Henry W. Rudolf, in received a patent which shows a method of printing by means of a'paper stencil and an inked roller similar to the ordinary type-roller. In the same year a patent was granted to Robert Boyd for an improvemenlf ill machineryJor tracing embroidery patterns. It describes a pericimtllining a reCiprocating perforating needle or stabber. So far as the pen proper' and the work done by it are concerned, it is almost the %xact of the Edison device. The motor is more cumbersOme, the machlneisriot so readily manipulated, but it would be difficult tb distinguisha stencil made 'by it from one made by tM electric peri: A machine similarly constructed' was in operation in the establishment. Of Mrs. McDonald, in New York city, prior to the spring of 1873; a.nd specimens of the work done thereon have been introduced in evidence. Patterns, monograms, figures, and autographic writing can be, and have been, made by it. Printing from these stencils was done with powdaor with ink. In 1866, Samuel Huffman obtained a patent for a new puncturing machine for making patterns, which is the exact counterpart of the Edison pen, except that it is lighter and less awkward in· handling, and the reciprocating needle is operated by clock-work, instead of an electro-magnet. Other references show stencils made by hand-guiUed implements in which a small toothed wheel punctures the paper. In others still, stencils are made by writing with a pointed stylus on a hard corrugated surface, like a file or rasp. Mr. Edison himself recognized the superior advantages in simplicity and cheapness of the latter method. and in 1880 procured a patent in which the stencil is formed by writing witll a blunt stylus upon a 'slab containing numerous fine perforating poi.nts; The electric pen has been superseded bytlfe "Mimeograph." It will be seen, therefore, that it! August, 1876, the field was extensh'ely occupied. A pioneer patent was out of the question in this alt. There could be n6 broad claim for printing with a paper stencil, semi-liquid
FEDEaA-LREPORTER, vol.
38.
Neither could there be abroad claim, for a puncturing Both were old. There was room for the invention of a practicaJ. could be used ,to adapt to the reprodqpti,<m :9:£ autographic writiog,; but the discpvery, of this instrJlment the inventor to tribute entire art. Mr. does the electric pep. ,For though jt is too expensive to be of great practical utility, he is entitled to credit. not, however, of a character aS,to block all furThe Other inventors qould improve as he had iIll,pro,ved OQ, Ifutrlllan and Zuccato., The described metpod was' not pracconvenientpraptiGal meansof,ma)dng,!l: stencil was at hand., It was was ignorant of the fact that ink :w:ouldgo tht<?ugh holes in papEll,' rolled with a printer's type-roller. ,T4e patepteE! JJ:la.de a new stenqil, ang, printed from it, by ,the old method. ;l;le now seeks ;toprevent others w,ho also invent p,ewstencils from using Qld, method. , Tpe, prior art, and tbe language of the claim to the use of a stencil made so restricted the claim is ll;lvalid; if sore40e8 pen, and ;'There wall'Ilotqing new in of, printing, apart Jrom ,tl;ie, ingen,i<msly formed could Ilot, ;1$76 fora new metllOd;of.,printing if the IiltenciluSEl9 ,pJl4! been Boyd or pen, or, a C,OlDrfheW:9rgl!! sentences sf.u,bbed out by ,the Memight bedupliC!\te<i all inkeq rollerp!,per, without the patept. It of :1iPe inventive faculties to do this in methq<i would been slightly changed to meet this is aU.. 'l:he, process ofprillting is the, same, tY,JlE! used Old English, GerIllan .Tefft,. brevier,or long is the procesS is thesa.I)le whether the ink which which repreor embroidery patterns. The ,method is the same, no device. .1
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if the. ,first expanded sp as to include any Dlaking, a stencil, and narrowed so as to exsten,cils, the defendant may be held as, an in.fr,iqg(ll', d()es nQt '!Jsetheword "autog,raphic," and it would th!,,:inveptordid so to invention. , ,The fQf; by: enable a person :tc;>'escape ,by px:inting :Romancharapters, upon his stencil, qf .thereon in, his Own proper haIldwriting. '. Indeed, it infringing or 1l9P;inffi11giMJ Ol;l,e, Il.ccqrding Wthe use to which.it) is put. A who it ch:dlll; if ,lle,cppied a design sl,e£endant's could 111twfllUy but ..
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The words, "the method. herein described," "BubstanHaliy/ as set forth,"shouJd not be ignored. The oniy described by which the sheet of paper is punctured with numerotIs' small holes iaby the use of the, electric pen. To permit. any puncturing method to be"substituted in place of the electric pen would be to give the claim aeon" struction which invalidates it,and whlch is not warranted by the proof. The claim,when properly construed, is not infringed by the defendant. r His method is as follows: Bamboo-fiber paper,prepared with a lay of wax or paraffine, is laid upon a zinc plate. On this paper, so placed, autographip writing or any design may be produced,-not byal). electric pen, for the hard bed would destroy the reciprocating needle, but by a. little instrument like a pen-holder, to the end of which is attached a diminutive wheel, with microscopic corrugations which cut lit,.; tle slits ini the paper as it rolls, being forced along by the band of the writer. . , For this instrument, and for the transfer paper, patents wel'e to David Gestetner, dated,respectively, November 28, 1882, and December 22, 1885. The printing from the stencil thus formed is done in the manner.' The" Cyc1ostyle" of the another step in the art. It is simple, and comparatively inexpensive. It is as much an' improvement on Edison's method as that W8l!l improvement on what preceded it. The bill is dismissed. rr'
(Circuit Oourt, W. D. Michigan, 8. D. PATmlT8
May 21, 1889.)
The circuit court of the United States h,as. no jllrisdictiQn of a suit .by the assignee of a patent against the licensee of Ilis assignor, for infringement, where the preliminary questions to be determined are-Fir8t, the construction of the contract licensing defendant; 8econd, whether the 'terms ofo'the contract have been complied with by defendant; third. if they have not, whether the non-compliance has worked a forfeiture of the contract. so that comprainant can enforce his righls as owner of the patent. instead of those arising to him as licensor, by virtue of the assignment of the contract to him by the original licensor. Such preliminary questions do not arise under. the patent laws. and the court has no jurisdiction, both parties being citizellB· of the S'8me state. '
1l'on. INVENTIONS-CONSTRUCTION
OF' .LICENSlll-JURISDICTlOW;
In Equity. On final hearing. Taggart Denison, for Dallas Boudernan, for defendant.
JACKSON, Je. The complainant, as assignee ofletters patent No. 146,. 632, issued November 6, 1873, to James Allen, for certain improve. mentsin lath machines (Jr mills, brings this suit against defendtllltas an alleged infringer of said patent, seeking to restrain said defendant froln