lUCK
PPTIOAL ,¥ANUl'!a CO.
factur8t under th:e i third
,Rev. St., providip.g for patents. .SucQ,. ornaJJlental were old,and well f!.ndgener... foUy known. who is the, patentee, testifies, in answer. tQ questjO,n26: "l.Qlllke no. claim tol:1e t11e designer ofthis frame," . Besides this, the defend,ants' mirror does not look like this frame, and. would not infringe the patentfor.thisornam,ent. . The orator did QOtdesign an albuDl case, proper; nQr an ornament, proper, for.an alhum case; hut he appears to have.conceived the idea of placing such an ornament upon an album case. The statute provides for patents upon designs for articles of manufacture, and for patents upon ornaments to he placedupQni Qr worked into such articles, hut does .110t appear to provide·for a patent for the mere placing ·of an ornament on such articles. T11is patent d()es not, therefore, appear to .he valid, to ,be infringed. ;. Let a decree he entered dismissing the bill.
MACK:'. 1.
SPl!:NCER OPTICALMANUF'a
Co. et aL
'l'2 yearll old, professing to describe in minute detail alleged anticipating devices whicl1 he constructed 80 years before in the ordinary course of his tr3de;
A patent sl10Uld not be! 'overthrown on. the uncorroborated testimony of. witness
FOB INTBNTIONs-,ANTIOIPATION-EVIDBNOB..
(
.
when not appear that anything' has occurred during that time to ald or refresll his l"l'COllectioJi. 'The Barbed-Wire Patent, 12 Sup. Ct. Rep. 448, 148 U. So 275,:follllwed. . ROLDBBlI.
II.
Claims · and 1 of letters patent No. 26B.112, iuued November 28, 1882, toWUUam Mack, for improvements in ppera-gla88 holders, show patentable invention,:aIld are valid as covering a detachable telescopic opera-glass holder having at the upper end a clutch or fastening device adapted to clasp the transverse bars' or CYlinder of an opera glass. Mack v. LClJII, 48 Fed. Rep. 69, diatingu1shed. SAME-MEOHANIOAL SKILL.
8.
The opera-glass holder ()f thill patent could not have been the result'of mere meehanicalskill operatingu.pon the: mirror holders, monkey wrenches, oar couplers1 gllnwivers, toothbrushell,and mopll of .the prior art, but required the exercille 01 inventive faculty. patent No. 889,548, inued March 19, 1889,to tile lame inventor, possess no patentable invention, in 80 far as they merely provide tor corrugations on the telescopic sections of his prior patent to prevent tWisting, and for the substitution of a longitudinally forked attaching device for the oril{inal clutch.
,. SA14E.
In Equity. Suit for infringement o(two letters patent granted to William Ma.ck·. These patents have been the subject of judicial depision, onfinal.hearing, in Mack.v.Levy, 43 Fed. Rep. on contempt proceedings,in the same cast', 49 Fed. Rep. 857; apd 011 motion for a preliminary injunction in the suit at bar, 44 Fed. Rep. 346. Decree for .complainant. H. A . .West, for complainant. Charles a. Gill, for deitmdants.
820'
::This aetionil',fol1rtded iUpOb two letters patent Nos. 268,HZ: and 899,S43d;ranted tocottilliainant for ,improvements No'Vernbet' 28,1882, and in opera-glase holders anddllted, March 12,1889.' The decisibn in Mack Vl, UtYg,43 Fed',Rep. 857. establishes the following proposititms: Pirat{ th&tthe patent of 1882 must be narrowly construed because of sirnilarstrllctures made by one Stendickej aecbndjtbat even when 80 limited lit diElclosesa patentable inventionjthird, tkattbeclaim$ must be strictly confined to the clutching device described; fourth, that the fourth and sixth claims 'which cover this clutching device were the only claims ififringed j fifth. that the fourth 399,543, the otles involved, if they describe an and fifth invention a:taJi j t'nl1st beliniited to a handle in telescopic sections having a longitudimillyforked attMhingdevice at the end of the Upper section; Bidh, that 80 construed the said claitnswerEt'tlot infi'inged.iThesepropositions, so far as applicable to the present controversy, must be regarded as settled law. . . . . ... ..... A different state of facts is, however, presented by the present record. The exhibits introduced by Stendicke were constructed in 1890, in supposed fJ,'Qane an holder made in 1862, over a quarter of a century before, In the case of Mack v. Levy, there: was nothing disJ:lredit upon the testimony of this witness and it was taken for granted that the exhibits fairly represented wh!lrthe htl.<l. UPpn.tllepresent record, however,thls evidence must be disregarded. The situations are very different:The.. has his faculties, necesBanly., must be somewhat unpaued. That a person, 72 years of age, should be able to recollect theminute details of a tool made by him in But when he was should it appear that during this long interval he had been constantly engaged working at his trade;';"':ma.king hundreds and probably thousands of optical instruments-should it be shown also that nothing had occurred for, to <iirect his attention to the particular tool in ,of the slightest circumstance to aid question and that the case is orrefresh his recollection, such an exhibition of memory would be amazif not miraculous. If anyone doubts this let him attempt to recall the minute details of a trivial eventwhioh occurred in his daily .vocation swel\r to the minutimof a deed '3Oyel\rs agQ.A conveyancer which he drew in 1862 and has not seen or thought of since, would be doing no more than, Stendicke" has attempted. If the conveyancer had made aI!-operl1-g1ass holde't',orthe opti'cian 'bad drawn tl:lfl deed' the taskwould oe 'less' difficult', for e'ach' act would be unusual and out of the ordinary 'course of bUsiness. ',But is it prob'able th'at any human intellect canretaiii: with for SO years the petty details of an eventless and'humdrumoccupatibril? ,"It is, of course, possible that such testimony may be true, but the chance thnt it may not be true should be sufficient to deter a court of equity from striking down a valuable patent upon the strength thereof alone.
MACK V.SPENCER· OPTICAL HANUF'a CO.
821
Not only is Stendicke's story inherently improbable, it is wholly without corroboration. True,;a son of the witness was asked if he had an indistinct recollection of his father having made the Jarvis holder and he answered, "Yes." It appears, however, that the Jarvis holder was made, if at all, two years before the son's birth. Although the son may have inherited a memory of phenomenal power and capacity it would be hardly safe to trust it as to events which occurred two years before he was born. There is no proof that the holder was ever put to practical use and the description of both exhibits is inaccurate and uncertain. In short, Stendicke's story is replete with contradictions and inconsistencies; it is a beWildering snarl of improbabilities. It would be too harsh to say that the tru th is not in it; enough that the court has not the necessary analytical capacity to extract the truth from it. Even the most favorable view of Stendicke's testimony leaves the matter in doubt. His wholly iusufficient to carrY conviction to the mind that the witness in 1862 illl\dea structure like" the one which, for the purposes of this controversy, he constructed in 1890. Nothing can be more certain than this. ,A fail' doubt as to. its reliability is always sufficient to dispose of testimony of this character.. Such a doubt exists here. It is unnecessary to find, therefore, that the testimony is untrue; it is enough that it is unreliable. All that the court says upon· this subject in the Barbed- Wire Patent, 143 U. S. 275, 284, 12 Sup. Ct. Rep. 443, is applicable here. I am familiar with no case where the court has overthrown a patent upon the unsupported statement of a witness as to acts done by him 30.years before in the ordinary course of business, especially when his story is inherently improbable and is contradictory in several important particulars. Coffin v. Ogden, 18 WalL 120; Telephone ease, 126 U. S. 546, 8 Sup. Ct. Rep. 778; Tatum v. Gregory, 41 Fed. Rep. 142; Electrical Co. v. Julien Elect1'ic Co" 38 F,ed. Rep. 117,127; Thayer v. Hart, 20 Fed. Rep. 693, and cases cited. The Stendicke exhibits being out of the case, there is nothing which anticipates or materially limits the scope of the patent. A great number of patents and exhibits have been introduced, but it is thought that a fair summary of the prior art is that it shows each element of the combination separately, but not the combination itself. The question of patentable novelty is not an open one; it has already been decided in favor of the complainant and that, too, when the invention was confined within much narrower limits than now. That there was a display of the inventive faculties can hardly be doubted. The contention that an examination of the mirror holders, monkeywrenches, car-couplers, gun-wipers, tooth-brushes and mops of the prior art would suggest to the skilled mechanic the telescopic, detachable opera-glass holder of the patent, ,cannot be maintained. The skilled mechanic might study them till doomsday and he would not think of it. Brains were necessary, not hands only, to connect a car·cou piing tool or 11. tooth-brush with an opera-glass. To do this required thought-an ex.ercise of the inventive faculties which a mechanic does not possess.
822
,",FEDEIU:L ,:BEP08TER,
voL 52.
:1'
The' cbmplainant did recalhdhe i made by OhairAes'Lamb to the'ydi.mg pedant who declllilled,l{liat' he cl:>111d, write: likeSba;kes'peare ifhe Ii mind to. ,4' Yes," i" ' said Thainlb; Mack "waa: th$,first to produce a detachable;"tele$copic opera-glass holder. ,:: !illJs"WJlS the fil'lWpatent e\>er granted for sucb 'a 'structure. Th e detachable'holder has becordep0pular. Vast ntinibers of them are sold. All prominent opticians and jewelers keep them in stock. 'They may be seen at- &v61'Y'playhouse.i"'/l'ae ,complainant having conceived this newthought'andembodie'<i ,tin's practical de"Hie should be entitled to therewl1rdsofhis genius '8nd'lab4>r,', ,Therecanbeonojustice in restricting him to'acoDstruction, which' enables everyone; who has sense sufficient to eubstitute a diffEl1'$nt clutch, to pick and' pluI1der the patent with impunity.:,:ilt is ,that the patent covers any detachable telescopic holdet1havingat the upper end a clutch or fasteningdeviaeadapted to clasp thei 'trans\Terse bars or oJHnder of an operaglass. Wbet;ber'it it is unnecessary to decide· in this suit. :J : I I do not Qridersta;nd tbat.defendanta are chll,rged with 'infringement 'ofthe first claim. ,The claim'!8 almost brdad'enough to carry out the Ipatentee'sexpressed deaire:"toolaim broadly jyol:dingan opera glass to ;the eyes 'by':means of a :handleitlttached thereto." It covers a detachable handle no 'matter of what and without regard to the !placewhet'$it,'lS fastened to the' or the manner of its fastening. Substanthtl'ljr :the same criticism'; can be made of the second and third claims.'Th$'lfifth 'andaixth restrictedintermsand'it is at lellSt dopbtflil ,whE!'ther they areJnfringed. , TnefourtH and seventh claims'describe and claim the invention with f)ufficient' and 'both . infringed. They.areas follows: "(4)' The combiilationwiU; an opera glass, A, 'Of the handle, E, ill sections. as described and arranged. to close telescopically, the' end section thereof provided with afs$tening device oroJutchinthe manper set fortb." "(7) As an an hanllleJPade in scctions and pro. v.ide,l;l ,at ftll.ElJ?,4 described."
Eachrofthese claims, whenconstl'ued in the light of what has been said heretofore, describes adetaohable, telescopic opera-glass handle with a fastening device at the upper end to clutch one of the transverse bars or cylinder of the glass. The thraeholders of the defendants havesU of these elementssl1d both claims are infringed, by each one of ,these holders. Regarding the patent of 1889 but little need be said. The holder thereindescFibed is the holder of 1882 with cprrugations on the te1escopicseotionsto prevent twisting and with a longitudinally forked attaching device: substituted for the· clutchof tbeprior.patent. The court, in ;Mack v. Levy, decided that therewasnothing'ptitelltable in applying' well-known frictional devices to thetelescop'ic sections. This leaves. nothing but the forkedenlL If invention resides anywhere in the patentit.must be found in the fastening mechanism. In
KRICK t1.
JaNSEN.
823
bis former patent the complainant seems to recognize that this was only substituting one fasteniDg for another, for he says, "It is evident other fOrolS of clutches and fastenings may be made within wide scope, as I do not wish to confine myself to fastenings shown." ,This proposition is unquestionably true. Mere changes of form in the clutching mechanism which produce no new result would readily occur to the mechanic. The prior art is full Of similar forksjthey are even -shown as applied to opera glasses. Indeed, it would seem that the idea might have occurred to any: one who had seen an old fashioned clothespin. Tbefirst claim has an additional element-a tube or socket-but the defendants are not charged with infringing this claim. It follows that the complainant is entitled to the usual decree upon claims 4 and '] of the patent of 1882.
JANSEN. '
"
(C1f'C'l1At 1. PATBN.rs FOR
S. D. NeW .York. August 25, 1892.) OF OWNERSHIP.'
, ,In a bill for infringement it is insufll.oient merely to allege that oomplainant became, the owner of the. patent on a certain. date, without alSo alleging flontinued owne,rship at the time of filing the bill.
E!lA:O"';:ALLBGATI.ON AS TO
A bill for infringement is demurrable when it merely states that the alleged invention had not been in pu1:)!io use or on sale, for more than two years prior to the applioation with the patentee's consent or allowanoe. . . . Letters patent No. 408,4HI, issued to William C. Kriok, are for an improvement in floral designs, whereby, instead of tying single flowers to a toothpick and stioking them into a floral pieoe, so as to form a letter or design, the letter or design is flrst out out of some stiff material, the flowers fastened to it, and when the form is oomplete it is fastened to the floral pieoe by toothpioks. Held, that a want of patentable novelty is not so manifest on the. face of .the patent as to render a bill for infringement demurrable.
PRiem
USB AND SALB.
SAME-NOVBLTY-DEMURRER-FLORAL DESIGNS.
In Eq·uity. Suit by William C. Krick against Edward Jansen for infringement of a patent. On to the bill. First ground of demurrer sustained, and second gronnd overruled. I8aac S..,McGiehan, for complainant. Goe:pel' <rc Raege:ner, for defendant. TOWNSEND, Circuit Judge. This is a demurrer to a bill in equity for relief for infringement of letters patent No. 408,416 for an impro'rement in floral letters or designs. The first ground of demurrer assigned is "that it appeareth by the complainant's own showing by the said bill that he is not entitled to the relief prayed for." Under this demurrer, defEmdant claims that the bill is defective (1) because it states that the alleged invention had not been in public use or on sale for more than two years prior to the application of complainant with his consent or allowance.: (2) because complainant; while stating the date on which he