FEDERAL REPORTER,
vol. 51.
agreement by which the United States retained jurisdiction over the Flathead Indian reservation can be called a ceding to the United States Of the'sarne. Eor these reasons I find that the defendant committed no which thiscou'tt can enter judgment punishing him. As thegqvemment of the United States ,has undertaken to control Indians by laws, and has left them no longer to be controlled by their tribal rules and regulations, It is to be regretted that an adequate and proper code of laws to this end has not been enacted by congress. This attempt.to adopt territopal and .state laws may be classed as indolent legislatiQn, not well adapted to producing order upon Indian reservations, or ip those pl/lces under the exclusive jurisdiction of the general governallowing men guilty of crimes, demanding in all civilized gqvern"r.nents punishment, as in this case, to escape their just deserts. The motion in. arrest of judgment is sustained, and the defendant disJfQJJ;l custody.
a
Co. v.
EDIs01itAMP
Co.
':! 1. ,"
C(Jtreutt Court, D. NeW Jersey. June 20, 1892.) , '.e.
," pro'vefuljiat Hi.: the process oflrianufacturin/r carbon' conductors for incandescent electric lamps, are void because of anticipation by patent No. 211,262, issueq January 7, 1879 to William E. Sawyer and Albon Man for the same invention j the evi'" 'cienqe :ofprior. invention, by· Weston being"insuJficient to overcome'the presump· " ti.Qt:I! to the prior. , , of theq.uestipn as to p'riority of invention,th\l" Weston patent is ·invtilid lIecause of two years' 'public use prior to his application, by Sawyer and Maniin'theirworkahopin New 'York city. PUBLIC USE. .." . .,· .' , .',"" ,"
.
,Patent No. 806,980. issued OctoQer 21, 1884, to Edward Weston, for an 1m.
INVENTIONS-ANTICIPATION.
I
2.
InEquity. Suit by ,the United States Electric Lighting Company for infringement of a patent. Bill against the ]Dcli,son Lamp dismissed,.. . .,.' " Kerr. .ife· and Geo·. H. Christie, for com plainant. Eaton « Lewis lJ.nd Frederic.H. Betts, for defendant. Judgf,l. This suit is brought for the, infringement of the States' No. 306,980, <fated October 21, 1884, to Edward Weston, upon an application filed May 27, 1881, for 'tR'.improvement in the process of manufacturing carbon conductors for uwandescent electric lamps. , The n,ature of the invention is sufficienH¥. by the claim, which is as i "Tne in the art of making carbon condllctors tor incandescent. lamps. which consists. in first forming a carbon ,core or base, and thenbuilding up core with carbon obtainedl!ond deposited upon the same by and dtlrlnt:the operation of electrically heating said core, while surrounded by orsaturoted with aC31'bonaceous substance, SUbstantially as hereinbefore set forth." " .
UNITED STATES ELECTRIC LIGHTING CO. fl. EDISON LAMP 00.
25
A number of defenses to the suit have been interposed; but it seems to me to be necessary to consider only two of them, namely-Firat, tha prior letters patent of the United States No. 211,262, for the same invention, dated January 7, 1879, grant to William E. Sawyer and Albon d Man, upon an application filed October 15, 1878; and, aecond, the alleged public use of the invention by Sawyer & Man, and those acting under them. for more than two years before Weston's applica.tion for a patent. That the invention set forth in Weston's specification and claim was fully disclosed by Sawyer & Man in their above-recited earlier ent is clear. It is shown, also, beyond contestation, that Sawyer & Man made and perfected the invention, and actually redu,ced it to practical use, in the month of March, 1878. Nevertheless, the plaintiff, the assignee of Weston, asserts priority of invention and right for Weston over Sawyer & Mann; and it appears that, in an, interference proceeding in the patent office between these inventors, the decision of the office; was in favor of Weston Qpon the question of priority. The proofs in: that proceeding, which were taken in the year 1882, have heen brought I into this case by stipulation, and SOme other additional tlvidence upon. -that question has been introduced. : Weston testifies that he commenced his experiments in treatiogcar-' bons by electrically heating them in a carbon liquid at Newark, N. J., "some little time prior to the Centennial in 1876,"-he "cannot, however, fix the precise date,"-at his laboratory No. 194 Eighth avenue,! and continued these experiments there, and afterwards, with some described modifications, at 228 Plane street, whither he remo,veq "in the early part of 1877,"-" about the month of April, 1877;" that "soap after" his removal toPlane street, "about the month of June or July, 1877,-it may have been a little later, or possibly a little earlier, but was not very far from the date named,"-he part oJ his apparatus, in order to have the advantage of steam power, to the. basement of the shop of the Weston Dynamo-Electric Machine Company at 284 -Washington street. This building had originally been Ii Jewish synagogue, and henceis designated by the witnesses, as the ".church." Mr. Weston states that, with his facilities in the "basement of the church," he there succeeded in obtaining carbons very much superior to anything he had before obtained. Upon that subject he says:. "They were extremely hard; in fact. so hard that they suggested to my mind the possibility of preparing in this way black diamonds. They were so hard and dense that! took particular pains to show them to .Mr. Edward E. Quimby, and I handed him a file to test them with. and he also endeavored to scratch the glass in one of tbe windows in the rear end basement of the factory. Mr. Quimby was so much struck by the metallic appearance of the carbon, its density and hardness. that he asked me to give him some samples, which I did at that time, namely. about the middle of the year 1877. From thattime I saw that I had overcome all trouble relating to the preparationof carbons for incandescent lamps." Mr. Weston then describes the process which he used most, and preferred at that time. Being asked,upon his examination in chief, to state generally to what extent and under what used
26
JrEDERAL BEJ'qRTE;R;
vol., 51.
tbis"pmce8Sbf:preparing carDons; $UJQSeqtlentlyto, the year 1877, he aIi$WBr.eti': " j , ' tim a I,ig,1,lt\D, or le$B, foomthllli!tlmeup to the present :WJ1111,l,ever 1 work ,on e,lectrid !,ye',d, on, dWl,1 i,n";th"iS,d,ireC,li\lU,', , he Jlltill found there ,were, numerous conditions to be met in 'or:der to setncandescent'eIectrlc lamp; aud; with th,igiidea in view, ti'Me 'to time, as time and circumstances wouldipermit, to:CifID"dorrretheotMrdilficulties. During this,time! used almost exclusl rarbons prf'p"red bj'! tl'ea.t6.ng a hightemperat,ure in ,the' presi:
.,.1,
:'
::Beitlglisked: 'upon his croBs-examination howmllny carbons ,hEl after heci»n'lmililced world.n'the basement of the church, Mr, Weston answered:'; I ; " ::; ,',', numberr I'kept'rio,veubl"d of quantity t>:eated. There were :';'''/' "i, , " .. ' , to' the" itiqu i!'Y'h6w long' he oontinned t6'treat carbons in the basemerlt of'tbecbui'CW. he stated! ' ' , ' , "Until ,to 'It' S'eparatebut!di'ng n'E-xtdoor' t() the fact<;ll'y. , I c.annot fix the date withotlt"teferElnCe totM bOoks of the comIl3tTy;,as:rtOl:>k:no'paina'to my'memory in to thisIDlttter. My impressidn is",l(owever, was lni,theearly part of the year."
'ot'
'He c6u!dartdwQuld:a:scertain the of the ratnoval. of his laboratorY'trOtnthe basement' of the church to the building ,next door" for"toe him the room ill the llextdoor" Wpay the rent." Afterward's, when hIS ex'amination.was Mr. Weston stated: . , '" '," .' preci$edate when 1 moVed into the, laboratory next dool' 'to the church, bli't the first' entry I can find on tbe books in regard" to rent paid is on the 1St'day of October. 1878,'" , ' . ," , · Edward Er:Quirnby,,(li quaintancewithMr. thus:," ,y',' ,',:, as ,
patents,) after h.is first ac· in May,'1877, testifies ",'" · ' :'
dil\cOvery that a depositor carbon was iIi a of by through it "whIle it, was' surrouncle'd by a the passage an hydm-carbon'atlllosphere. He IJtought to my office and gave me samples of stich deposits,wbich were in small partic!es,but of extraominary hardness. 'This me,by Mr. Weston, acco1'ding to the best 'Cif my recolle(jtion. within siX months OCthe date of my first acquaintance :'with him; whll$IWaBoengagedil1 perfecting some of his'oldel' patents by reo ' Mr. Qi;Jimbythen a,dayortwo later Mr. West<;m's laboratpry on WashiQgtPll,street,)n the old church, operation of his method of obtaining s,uchd,eposits; 11 and he describes the apparatus used and the operatiom " Upon his crossQuimby !:las no me,mor;anda in writing by which he can ,fix the date of this vil'it to Mr. Weston'a laboratory t bnt says it "was during the early part of my acquaintance with him;
UNITED STATES
LIGHTING 00. fl_ Eil;lISON LAMP CO.
27
was within six months of the time. of to:y first seeing him, a.nd was before cold weather set in." He says: "}fr. Weston moved his laboratory into the adjoining building some time .after the experiments to whi.ch I have referred , and after that removal my visits to his laboratory were more frequent than before." He states he has no ,recollection when that removal took place. Being asked if, after the removal, he saw !;lny incandescent electric lamps in operation in Mr. Weston'a labora-. "I cannot say. :M,y memory is wholly at limIt in tory, the matter." And being fu,ther asked when, after the experiments. he testified about, he first saw any incandescent electric lamp made by or for Mr. Weston, having an illuminating con,ductor of this treated carbon, Mr. Quimby answered: "It is impossible for me to say. I cannot recollect. " Levi Broadbent, who was a foreman·in the employ of the Weston Dy-· nama Electric MachineCempany from July, 1877, to September, 1879, testifies that upon one occasion, when passing through Mr. Weston's laboratory, he "SItW him treating or having carbons. in a globe filled with oil, anrl running a current of electricity through them." ThUl, he says, occurred "between the month of July, 1877, and the 1st of January, 1878. I can't positively fix the date; it was be.tween these points of time." He states that Weston subsequently spoke to . him about the matter, '.'and said that the carbon that had been in the oil, and the electricity run through it, was very hard, and so that a file would not touch it." Upon his cross-examination, Mr. Broadbent testifies thus: "Question, How do you know that it was previous to .January 1878? B7 what circumstance do you fix on that date a8 being the. date previopll to which you saw Mr. Weston treating the {'arbon? Answer. I know it by the circum1877; it stance that Mr. Weston's new laboratory was linished in was in the laboratory I saw this. Q. Was It in the lahoratory in the basel ment of the church? A. Yes, sir; we used to call it the' churchi it was a church once. Q. And you 8aw Mr. Weston treat these carbons in that lahoratory for the Iirst time, all I understand you? A. Yes, sir. Q. When did he move into that lahol'atllry? A. I couldn't place the date exactly. but it was just after it was finished. It was in December, 1877." The substance of the testimony by which it is sought to anticipate Sawyer & Man has been above set forth. Is the evidence, under all the circumstances, sufficient to establish a completed invention by Weston prior to March, 1878? Leaving out of view the negative testimony of the defendant's witnesses, who naturally would kI).oW of Weston's doings, the plaintiff's own evidence impresses me as singularly vague. Did Weston's operations, as described by himself and his witnesses, amount to anything more than experiments? Could the invention here in question be derived from anything Quimby or Broadbent saw Weston do orlearned from him, any more than it could have been deduced from .the Despretz publication of 1849? Do the pr()ols convincingly show a perfected invention made by Weston in the summer of 1877, AS alleged by him? Then, again, is there any reliable testimony to the aU-important matter of time? Here the plaintifi?s .case rests altogether upon mere recolledion, which is always unreliable as respects
dates) r; IfM 'only date oortainlyfixed is O'ctober 1, 1878, when rent wail piidfor the premises adjoining the basement of the "church, " so called.':But the book entry of that paymeut strongly suggests that the removal of Weston's laboratory from that basement to the building next door took place, 110t in the early part of the year 1878, according to Weston's "impression,".but late inthat year; and that conclusion would shake the whole fabric of the plaintiff's case. In this connection the testimony of BroadbEmt, quoted above, deserves the most serious consideration, for that witne8sseemsto testify that Weston did not go into his laboratory in the basement of the church until December, 1877. How' can Weston'a assertion that from I' about the middle of the year, 1877 t' he saw that he had "overcome all trouble relating to the preparation of carbons for incandescent lamps," be satisfactorily reconciled' with hi'ssubseqtlentconduct,-hissilence as to an invention then deemed 80 inipoi'til:l1t,andllis supineness? His great delay in applying for a patent fat this process is the more extraordinary when we discover from the proofs that in the years 1878 and 1879 he took()ut or applied for no less than 10 patents for various other inventions. FurthermOre, it is a significantfaot that when Weston eventually moved, on May 27, 1881, his application for a pateIit was made in the interest of the plaintiff compiiny;(which had become the owner of his inventions,) after the plaintiff had ·failed·:in its negotiations to purchase the Sawyer & Man patent, or acquire a license under the same. To overthrow the prior patent of Sawyer & Mlin"w'hich had issued so early as January 7,1879, and was itrimediatelyfollowed by uncommon publicity, the proof of anticipation be. at least; positive, u?equivocal, and convincing. Vantrell v. Wallu:k, 117, 11. S. 689, 695, 6 Sup. Ct. Rep. 970; Clark thread Oa.v" Willirnantic LinenCo., 140 U. 8.481,492,11 Sup. Ct. ;Rep, 846" 'I'aildng the proofs as a whole, they fail. to satisfy me that Weston's alleged invention preceded that of Sawyer & M3,n. iBut, whaiever conclusion upon the question of priority may be adtipted.' a'tgny Orate, under the· proofs, the' defense of two years' prior public use of the 'inV'ention before application for the patent in suit rests upon' impregnable ground. A public use does not depend upon the numberofpefsons to whoID,theuse is known, and it is enough if a Singledevide, embodying the invention, is publicly used by even one person.. Egbertv. Lippmann, 104 U. S. 333. And a public use of the invention morEl 'than two years before the application for a patent, although without the consent of the inventor, invalidates the patent. Andrw; v'. Hovey, 123 U. 8. 267, 274,8 Sup. Ct. Rep. 101, and 124 U. 8.694,8 Slip. Ct. Rep. 676. In March, 1878, when Sawyer & Man made theinve'tltionhere in controversy, they were engaged in completing an incandescent electric lamp of their devising, which they perfected to theit sli.tisfaetibil and patented in June, 1878. . Between March, 1878, and May, 1879; they and their assigns made a large number of these lamps, andcontintl.ously used therein for incandescent e.-,ctric lighting, at their workshop in the city of New York, carbons prepared by the method described in and covered by thekpatent ,?f January 7, 1879i and
the
UNITED STATES ELECTllIC LIGHTING CO. 11·. EDISON LAMP CO.
29
during that period they there exhibited both the actual treatment of the carbons by the patented method, and the use thereof in their lamps, to large numbers. of persons, besides the workmen in their employ. Clearly, this use of the invention, as shown by the proofs, was a public and practical use. It is here worthy of remark that the Scientific American, in its issue of March 8, 1879, published a clear description of treating carbons as practiced by Sawyer & Man, and of the as set: out in their patent. Whatever experiments Sawyer & Man after March, 1878, concerned their lamp, with a view of increasing its efficiency and commercial value, and did not relate to the carbon treatment itself, which was perfected in March, 1878, and required no subsequent Now, it may be that the Sawyer Man lamp did not prove the success the inventors supposed it to be, and that no perfect incandescent electric lamp was prOduced until the fall of 1880. But still, the Sawyer & Man lamp was actually operative and had sonie practical utility. That itwas not a commercial success is not here a controlling consideration. The material fact is that the method invented 'll.Iid patented by Sawyer & Man for the treatment of carbons was put to successful practical use by them in their lamp. No dtmbt the commercial value of the invention depended much upon the production of a perfect incandescent electric lamp, but, nevertheless, the treatment of carbons by electrically heating them while surrounded by or saturated with a carboIlliquid, was a distinct invention. It was an indepel1dent and valuable contribution to the general art of electric lighting. This, indeed, is the position of the plaintiff company; for it !llleges that Weston made anli perfected the invention as early as the summer Of 1877, before a perfectly successful incandescent electric lamp bad been devised by 3,ny one. I have only to add that it is quite evident from the proofs that the issue of a patent to Weston was inadvertently ulade, iil disregard of the expressed views of the examiner of interference, and the examiners. in chief, that Weston was precluded from the .grant of' Ii patent by reason of the statutory bar of two years' public use, disclosE',d by the evidence in the interference proceedings in the patent office. For the reasons above given, and without reference to other alleged defenses, the bill of complaint must be dismissed. Let a decree be drawn, dismissing the bill, with costs.
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tal.
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, , :.A'.'sbipwascbartered [in' LiverpoolM carry a !,
'otlumberfrolD Ship island,
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for any'e:ttraordlilal't'ooourrencerbeyond the colltrol of the ehartertlr8... , Held; the foould p,revaiU"g.at the ;time 01 the along. the tn'butarles of the Pascagoula river,and which prevented the ! 'C!t/lirtere1'il from otitaillibgthe timber. especially ai. it was th'e of the port "to ,reparecarS'oea ",... MossJ'oint, between wbich place and SbiJ),is,lllt¥) no drought t\le and parol eY.ldenC8waa not ailmlssibldo prove that such , alfroiight'W&s eontaminated by,the parties. ',.' ,,
from for the.8outhernDivi,sion of the Southof Mississippi, " "" ,·I,J,brl by JacobE.Sorenseri and Qtpers, owners of the S. Keyser, for demurrage. Libel ,dismissed. 4,8 Fed. Rep. 117. Libelants, Heard on motion by. the to be autho*ed take testimoIlY ,meaning of the W'9rd,.'fProught" in.tqec1:larter party",as understood blthe parties. Overruled.. " Grant,. tor Uh¢lants. Ford Jiflrd and Jqhn C. Avery, .i Befor.PABDP and. llcCORM::I,CX" Judges, and, Loen, District Judge.
em
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PARDEE,Circuit .fudge. This case js before thi$,Court on an appeal from tha district court, southern district of Mississippi,j'n' a suit in admiralty on a charter party contracting for the, !!hip Urania to take a cargo of timber from Ship island or PensRcola,which charter party contains thefo1l9wing clauses: .',',' "The act of Goil.restra,int of princes apd rulers. the'queen's enemies, fire, lloods, droughts, tit any extraordhlaryoccurreuce 'beyond the control of either aDd all and every other dl\ngers and accidents of the seas, rivers, and navigation, of what nature and kmd soevflr, dul"ing the said voyage, excepted." the computation (If the days allowed for delivering the cargo shaH beieJ!:cluded !lny time l"st byre"son of droughts, floods, storUls, or any extraordinary occurrence beyond of thecbarterers." The respondent in his answer alleges that at the time the said vessel reported for cargo under the terms of said charter there was an unusual drought. general and extensive, prevailing throughout the whole section of country Irom which timber is obtained for the loading of ships a1i Ship island, :Moss Point, and other points in that vicinity, which drought continued for a long while, and prevented respondent from obtainingcargo for the loading of said vessel, notwithstanding he had made arrangements for procuring cargo for her. and would have procured the ,ame in ample time to have loaded her within the said period of 27 working days but for the said drought. A further examination of the record shows that the contention between the purties to the suit is as to