NOVELTY
CO. V. STAPLER.
919
by paying a pecuniary consideration for the assent of creditors, which is denounced by the statute. In this case, more on the ground of de minimis non cwrat lex than anything else, I will allow it. Let the case returned to the registe:r for further action in the premises.
NOVELTY PAPER-Box
Co. tJ.
STAPLER.-
(Circuit Oourt, D. Ne1/) J67B81/. . February 8, 1881.) 1. RE-IlISUE
No. 7,488-" IMPROVEMENT IN PAPER BOXES." He-issued patent No. 7,488, granted to the complainant, a!l the asaignee of Henry R. Heyl, February 6, 1877, for "improvement in paper boxes," Mld, not to embrace more than the original patent indicates and suggests. .
2.
SAME-FLAP-LoCKING DEVICE.
Held, o},so, that the evidence shows that there is nothing new in any of the instrumentalities used by the patentee, Heyl, ,except the interlocking the outer flaps of the ends of the box by his flap-locking device. 3. SAME-FLAP-TuclUNG DEVICE.
Held, al8o, that Heyl disclaims, in his said patent, a flap-fastening device of tongues projecting longitudinally from the fiap, and inserted and withdrawn in the line of the opening strain, and therefore complainant is estopped from asserting a claim for alblp-tucking device ' of that character. 4. SAME-CONSTRUCTION.
Held, o},80, that in view of the state of the art' at the date of the .eyl invention, and the language of the specification, the proper and necessary construction of the complainant's patent is fora flap-locking deflice of laterally-projecting tongues entering correspol}ding slots, contradistinguished from aftap-tucking device of longitudinally- . projecting tongues entering and withdrawn from slots in the line of the opening strain· .5.
Held, o},80, that, if the second claim of the complainant's said reo issued patent be regarded as simply introducing the tongues or corners without preserving the locking quality referred to, it is moh a departure from the original invention as to render the said re-issue invalid· .tReported byWm. A. Iwddlng; Esq., (jf the Philadelphia bar.
920
FEDERAL REPORTER.
6. SAME-PATENT No. 183,950.
And held, also, that the complainant's re-issucdpatcnt is not infringed by the defendant's use of boxes manufactured under patent No. 183,950, granted to Lockwood and Lynch, Qatober 31, 1876, because such boxes do not contain the flap-locking or hooking device deemed an essential quality or characteristic of complaillant''s said re-issued patent, but have a flap-tucking device with tongues. which tuCk but do not lock.
In Equity. Munson v. PhilJipp, for complainant. William A. Redding, for defendant. NIXON, D. J. This suit is for infringement of re-issued
letters patent No. 7,488, granted to the complainant, as the assignee of Henry R. Heyl, February 6, 1877, for "improvement in paper boxes." The original patent to Heyl was dated June 30, 1874, and numbered 152,636, and embraced a single claim, to-wit: "A paper or pasteboard wrapper secured in a tubular form, and closed at one or both ends by portions of the sides thereof, bent over and locked into each other by. laterally extending tongues and corresponding openings, as described." On the twenty-first of September, following, the patentee. Heyl, filed a petition in the patent-office to surrender the said letters patent, alleging that the same were not valid or avail. able to him, by reason of an insufficient or defective specification, and asking for a re-issue on amended specifications. These contained three claims, the fir.£t and second of which related to a particular-shaped kerf, which was not claimed in the original specification. The commissioner decided against the application, on the ground that "considerable new matter had been introduced into the amended specification, which was unauthorized by the original drawing and model;" and for the further reason that, in view of the state of the art, it was not invention to construct a paper box with any particular-shaped kerf, but simply a matter of judgment, depending . upon the exigencies of the case. No further steps were taken by the patentee for are-issue until November 17, 1876, when new amendments to the specifications, containing four cla.ims, were filed in the office. After various changes and modifica.
NOVELTY PAPER-BOX CO. t'. STAPLER.
921
tions the re-issue was granted February 6,1877, as above stated, and the suit is founded in an alleged infringement of the second claim of the said re-issue. In the meantime, however, Charles L. Lockwood and Daniel Lynch applied for a patent for an improvement in paper boxes, and on the thirty-first of October, 1876, obtained letters patent, numbered 183,950. The defendant insists that the paper boxes' which he has purchased. and used, and which are claimed to infringe the complainant's re-issue, werelawfully manufactured under the Lockwood and Lynch. patent; and that, if the product infringe any of the claims of the it is because the complainant has covertly incorporated into the amended specifications new matter, in. order to deprive the owners of the Lockwood and Lynch.patent of the benefit of their invention. - Under these circumstances three questions naturally arise -First, whether the re-issue is- for the same invention as the original patent; second, in view of the state of the art, what is the proper and neoessary construction of tbecomplainant's patent; and, third, whether it is infringed by the Lockwood and Lynch patent. 1. The first inquiry is determined by a compa,rison ()f. the original patent with the re-issue. Does the latter embrace more than the former fairly indicates and suggests? ,The patentee, in the specifications of the original, states that "his invention consists in making wrappers in tubular form, with one or both of the ends constructed with two or more flaps to fold one on another, the Quter flap being provided with laterally-projecting tongues entering correHponding slpts or open,. ings in the flap below, so as to constitute an effective lockthe line at which the tongues enter and leave the slits being at tight angles to the line of strain produced by internal pressure." He says "the principal objects qf the invention are to produce wrappers, as neat and attractive as finished boxes, with great economy in labor and material, and wrappers which may be quickly and securely locked, so as to pense with the need of tying." The four drawings, accompanying the specifications, .q,re
922
intended-'to exhibit to the eye, in the different stages of fold. ing, a wrapper or paper box made from a single piece of pasteboard, and showing the patentee's method of locking the ends of the box, so as to distinguish his device from any in which "the tongue is inserted and withdrawn in the line of the opening strain, or in which the tongue .projects longitlldinallyfroIn its flap, or is folded around the box in the same direction as the flap that it is intended to secure." The second claim of the re-issue-the one alleged to be m· fringed-seems tOM for the exact devices, or combination of devices,described in the original patent. This is so evident that the defendant's expert, Mr. Hicks, when asked by the counsel of the defendant to state what changes, if any, had been made in the re·issue, frankly replied, (defendant's record, 220): "1 have made the examination and comparison required by the question, and 1 find, in my opinion, no substantial change in the subject-matter of the re-issue from the subject-matter of the original patent." When a skillful expert, alive to the interests of his employer, makes such an answer, it may be safely assumed that the re-issue is for the same invention as the original patent. 2. -As to the construution of jhe second claim of the com· plainant's patent. It is insisted with much force, by the counsel for 'the defendant, that if it be as broadly construed, as the complainant contends for, it is void for want of novelty. The drawings and specifications, both in the original and the re-issue, exhibit the locking of the box by means of the shoulders of the tongues or Corners as the distinguishing feature of the invention. If this claim be regarded as simply introducing the tongues as corners, without preserving the locking quality referred to, it does not produce the result Bubstantially as described, and is such a departure from the original inventiqn as to render the re-issue invalid, being for a different invention. The evidence shows that there is noth. ing new in any of the instrumentalities used by the patentee, Heyl, except the interlocking the two outer flaps of the ends of the box in the manner set forth. The counsel for the complainant speaks of the box de.
NOVELTy' PAPER-BOX CO. V. STA.PLER.
923
scribed in the specifications of the patent as having thefol. lowing characteristics: (1) It is made entirely from one piece of pasteboard; (2) it is kerfed on the lines of its folds; (8) it has a lap secured to one of its sides to hold it in tubular shape; (4) it has four flaps at each end to effectually close the ends; (5) it has one of these flaps at each end provided, .with two slits or slots, cut at an angle to its hinge, into which the two corners of the outer fla.p are introduced, and act to hold down the four flaps and keep the end of the box closed. There was no novelty (a) in making boxes from one piece of pasteboard; (b) nor in kerfin:g the lines of 'the folds, unless kerfing is something 80 different from creasing for the same purpose as to make the difference a patentable invention; (c) nor in the lap to secure one of the sides to hold it in tubular shape; (d) nor in the four flaps at each end of the box. The testimony of a number of witnesses, as well as the several patents of J. W. Wilcox, granted February 28, 1871; of G. L. Jaeger, July 25, 1871; and of Charles T. Palmer, on October 22, 1872, reveal that these characteristics of the complainant's patent are old. Nor is the mere introducing, i. e., "inserting and with. drawing the tongue in the line of the opening strain, or in which the tongue projects longitudinally from its flap," the invention patented by Hey!. He distinctly asserts, in the specifications of the original patent, (which he fails, indeed, to put into the specifications of his re-issue,) that he claims something different and distinguishable from that, to-wit: the inlerlocking of the two tongues or corners of one of the flaps into the two slits of the opposite flap. Construing the claim by the specifications, and by the state of the art at the date {)f the invention, I am constrained to hold that it necessarily includes locking as well as tucking devices, and that if the locking cannot be accomplished except by the use of the later. ally-projecting tongues, then the complainant's construction of the second. claim renders the re-issue void, as a departure from the original invention. 3. Does the defendant infringe the claim as thus interpreted? It is not necessary for me to decide in regard to the
924
validity of the Lockwood and Lynch patent, under which the articles alleged to be infringements were manufactured. It is sufficient to say that I do not find in these articles the locking or hooking of the flaps which I have deemed an essential quality or characteristic of the complainant's re-issue. The tongues project, not laterally, but longitudinally, from their flap. They tuck but do not lock. The patentee, Heyl, asserted that he had discovered something better than these' longitudinal tongues or corners, and disclaimed them, directly in the original specifications, and inferentially in the re-issue. As a learned judge (Curtis) tersely remarked, in Byam v. Farr, 1 Curt. 264: "Upon the soundest principles, a patentee must be held to be estopped from asserting a claim which is expressly waived in the record." The defendant not infringing, the oomplainant's bill is dismissed, with costs.
THE
GARLAND.
(District Court, E. D. Michigan. February 21, 1881.) 1. DEATH-DAMAGES.
Although by the common Jaw, and apparently also by the civil law, no action will lie to recover- damages for the death of a human being, it seems that in admiralty a libel by a father, to recover for the loss of the services of his minor son, killed in a collision, will be sustained. 2. SAME-COLLISION-LIBEL IN REM.
Where a statute confers upon an administrator the right to recover for a loss of life occasioned by the wrongful act, neglect, or default of another, if such loss of life is occasioned by a collision upon navigable waters, the administrator may proceed by a libel in rem agains. the offending vessel
In Admiralty. The original libel in this case claimed damages for the loss of the services of two minor sons of the libellant, killed in a collision between the steamers Garland and Mamie, in the Detroit river, on the twenty-second of July last. The col-
THE GARLAND.
925
lision was alleged to have been occasioned by the fault and negligence of the Garland. On the fifteenth of February, 1881, a supplemental libel was filed, setting up the appointment o! libellant as the administrator of his son's estate, and claiming to recover in this capacity under an act of the legislature of this state requiring compensation for death by wrongful act, neglect, or default. Exceptions were filed to both libels on the ground that a court of admiralty had no jurisdiction of the subject-matter. Alfred Russell, for libellant. Moore & Oanfield, for claimant. BROWN, D. J. Can the original libel be maintained for the loss of services ?Ever since the case of Baker v. Bolton, 1 Camp. 498, it has been a settled doctrine of the common law that the death of a human being cannot be complained of as an injury in any court of civil jurisdiction. In such case the liability of the defendant ceases with the life of the person injured. This rule has remained undisturbed by a single well-considered opinion, except that of Sullivan v. The Union Pacific Ry. 00. 8 Dill. 884, for over 70 years, and although it seems to be based upon technical grounds, and does not commend itself to one's sense of natural justice, it is too firmly established to beshak&l1 by judicial opinion. Such was also the ruling of the supreme court of the United States in The Insurance 00. v.Brame, 95 U. S. 754, wherein it is said "that it is impossible to speak of it as a proposition open to question." The civil law writers appear generally to take the same view, although the court of cassation, in construing the Code Napoleon, seem to have held that such an action would lie. Hubgh v. N. O. & O. R. 00. 6 La. Ann. 495; Hermann v. Oarrolton R. 00. 11 La. Ann. 5. Were this an original question, then, I should feel compelled to hold that this libel could not be maintained. But other courts of admiralty in this country have furnished so many precedents for a contrary ruling, I do not feel at liberty to disregard them, although I am at a 10s8 to understand why a rule of liability differing from that of the common law should obtain in these
926
FEDEBALREPORTEB.
00urtS. The earliest case upon the subject is that of Plnmmer v. Webb, 1 Ware, 75, in which Judge Ware upheld a libel by a father for the death by ill-treatment of his minor son. On the question being first presented to Judge Sprague, he held, in Crapo v. Allen, 1 Sprague, 184, that "for mere torts the right of action by the general maritime law, as by the civil law, dies with the person injured;" citing Aall's Admiralty Practice, 21; Dunlap's Admiralty Practice, 87. But on reconsidering the subject in Cutting v. Seabury, 1 Sprague, 522, he thought it could not be considered as settled law that no action could be maintained for the damages occassioned from the death of a human being; but no. decided opinion was pronounced upon the point, and the 'libel was dismissed on other grounds. Notwithstanding the learned judge made no attempt to distinguish between a court of common law and a court of admiralty, his decision in Cutting v. Seab7Lry has been cited in a large number of cases as a precedent for holding that a court of admiralty would sustain such a suit, though a court of common law would not. The Sea Gull, Chase's Decisions, 143; The Highland Light, ld. 150; The Towanda, 23 Int. Rev. Rec. 384; TheOharles Morgan, 27 Law Reg. 624. The whole subject is exhaustively discussed by the learned judge of the district of Oregon, in the case of Holmes v. The O. <i C. Ry. Co. 5 FED. REP. 75, and the jurisdiction sustained. Against this concurrence of co-ordinate courts I do not feel at liberty to set up my own opinion, particularly in view of the fact that the common-law rule seems to be consonant neither with reason nor justice. I find less difficulty in sustaining libellant's claim under his supplemental libel. By chapter 212 of the Compiled Laws of this state, "whenever the death of a person shall be caused by wrongful act, neglect, or default, and the act, neglect, or default is such as would, if death had not ensued, have entitled the party injured to maintain an action and recover damages in respect thereof, then, and in every such case, the person who, or the corporation which, would be liable, if death had not ensued, shall be liable to an action for dam«ges, notwithstanding the death of the person injured, and
'THE GARLAND.
927
although the death shall have been caused nnder such circumstances as amount in law to felony." The second section provides that the' 'action shall be brought by the personal representatives 6fthe deceased person for thi:) exclusive benefit'of his widow and next of -kin. The tort in this case oc'curred upon navigable waters,and, had the decea.sed sur-' vived, there is no question that he could have maintained.the libel, irrespective of any state statute. In the 8teOltnboat Co. v. CluJ,se, 16 Wall. 532, Mr. Justice Clifford expressed a doubt whether a. state statute oould be regarded as applicable in suoh a case to authorize the legal representatives of the of the deceased to maintain such,an aotion for next efkin, giving as a reason that state laws oamlot extend or restrict the jurisdiction of admiralty courts. We had supposed from the reading of other cases that where a state statute gavt:l a right or action, a federal court wouldadininister the remedy where the requisite jurisdictional averments could be made; and; if the action was maritime in its nature, a court of admiralty would bEl a proper tribunal. Thus, in Ex parte McNeil, 13 Wall. 243, a libel was sustained under a state statute allowing pilotage fees to the pilot who first tenders his services. In delivering the opinion, Mr. Justice state law canuot give jurisdiction to Swayne observes: any federal court. But that is,not the question in this case. A state law may give a substantial right of such a character that, where there is no arising from the residence of the parties, the right may be enforced in the proper federal tribunal, whether it be a court of equity, of admiralty, or of common law. The stlttute in such cases does not confer the jurisdiction; that exists already, and it is invoked to give effect to the right by applying the appropriate remedy. This principle may be laid down as axiomatic in our national jurisprudence." Other cases in the same court announce a similar doctrine. But this question is also so thoroughly reviewed in the case of Holmes v. The O. IX C. By. Co., to which attention has already been called, that any further consideration of the subject will result in a useless repetition of Judge Deady's reasoning, in which I fully concur.
928'
In England the question a suit will lie in the admiralty courts under Lord Campbell's act ill.still unsettled. Sir Robert Phillimore sustained the jurisdiction, with some hesitation, in the case of The Guldfaxe, L. R.'2 Ad. & Ec. 325, and again ill The Explorer, L. R. 3 Ad. & Ec. 359. These rulings were affirmed by thf;lprivy (lou,ncil in 'The Beta, L. R. 2 P. C. 447. The qU/:ls,tion again arose in the case of The Franconia, 3 Asp. Maritime Law Cases, 415, 435, wherein the court of admiralty again asserted its jurisdiction. OJ! appeal to the new appellate court the lord justices were equally divided in opinion. In a similar case (Smith v. Brown L. R.6 Q. B. 720) the court of queen's bench issued a writ of prohibition to the admiralty court. See Marsden on Collisions, 64. The whole controversy turned upon the construqtion to be given to the word "damage" in the admiralty court act, the court ofqueen's bench contending that the application of this word should be limited to cases of damage to property, while the privy council considered that it applied equally to injuries to persons. As the jurisdiction of admiralty courts in this country is not fixed or limited by any similar statute, these decisions throw but litUe light upon the question. Upon the whole I think the exceptions should be overruled. If I am in error the supreme court will, upon application for a writ of prohibition, afford a summary and speedy relief. NOTE.
See, also, In Ttl
tltc.,
ante, 607.
END OJ!' CASES IN VOL. IS