824
became the dwner ofthepatent, has 'failed to allege ownership at the date of filing/his bill. _Thecomplaint is·defective in both these particulars. Blessing.;,v.Tra.geser, 34 Fed..Rep, 753. The first ground of the demurrer:is sustained,with liberty to,the complainant to amend within 20 days without costs. . second ground ofdemul'rer assigned is want. of patentable novelty on .the face ·of the patent. The patent is foran.improvement in floral letters, or' ,designs, VIr hereby,. instead of tying. single flowers to a toothpickjitnd sticking them"when isotied, into a floral piece, so as to form a lettetordesign;thereon, tbeletterordesign is first cut'out.of some stiff ml'l.dJe:rial1 'and the flowers fastened to it. :When the form is complete, it is fas:tened:to the floraLpiecebytdothpioks. The question is whether this improvement involves invention. The patentee alleges that he is the first inventor and discoverer of this improvement. He claims that the questions of novelty and utility were heard and decided in his favor by the commissioner of patents, and that his invention has displaced all other methods of making floral designs. The question of patentable novelty is a question of fact(and, 'except ,iiI: a very clear case, it ought not to be decided until after an opportunity has been given to submit evidence there·ori: v. Trageser, Bwpra; Du:k'v; 'Supply Co., 25 Fed. Rep. And this question doubtful,ll.n extensive use by serVe to resolve the doubt in favor:9f the patentee. fl'opliff, 59 O. Gd257, 12 Sup. Qt. Rep. 825. lam not satisfied that the want of patentable novelty is,sopalpably,tp'anifest o,n the Jaooofthe:,patenMhat the bill of complaint should be dismissed on demurre'r.'" Thfhsecondgrotiii,d .overruled.·' , i
FRANCIS
et til.
t1. KIRKPATRICK
& Co., LImIted.
Court, W.. D. PennB1/wq:r!ti.a. September 17,1889.) No. 23. 1,
2.
Letters patent No. 408,475, granted August 6, 18811., to Evan James. Francis and Charles Banfield, for "a bottom for heating furna.ces, formed of segregated masses, broken pieces, or fragments of noncombustible material having interstitial pas., sages, and presenting a broken or uneven surface, "disclose a patentable invention, 13AME-ANTICIPA1'ION. :. , ,
PATENTS FOR INVENTIONS-INVENTION-SHEET-'I1EATING FtmNACES.
The defense of anticipation examined, discussed, and overruled.
In Equity. Bill by Evan James Fl'ancis and Charles Banfield against Kirkpatrick & Co., Limited, for infringement of a patent. Decree .for complainants. . J. I. Kay, for complainants. D. F. Patterson, for defendants. Before ACHESON, Circuit Judge, and BUFFINGTON, District Judge.
-'R'ANCIS
v.
KIRKPATRICK &, CO.
825
ACHESON, Circuit Judge. This is' a suitforthe infringement of letters patent No. 408,475, fo'r a'bottom fortbe heating chambers of sheet-heating furnaces, granted August 6, 1889, to Evan James Francis and Charles Banfield, the plaintiffs, Onarl application filed December 23,1887. The patent has a single claim, which is as follows: " A bottom for heating furnaces, formed of segregated tDasses, broken pieces, or fragments of noncombulltible material baving interstitial passages, and presenting a broken or Uneven surface, substantially asset forth." In such furnaces it is ,necessary that the heat should pass freely under the sheets, in order to heat them un:iformly, and, prior to the invention here in question, this was, and long had been, accomplished bya bed of coke of the depth of about six inches, spread over the "!?ottom of the furnace. But there were very serious objections to the use of such a coke bottom; As the combustible, it caused the bottom of the heating chamber to become, hotter than the rest of the chamber, and consequently the lower sheets became too hot, and thus were often spoiled. Then, without the exercise of much care, and often in spite of customary care and skill, the ashes and sulphur from the coke adhered to the sheets, marking and spotting them, and also frequently causing several sheets to stick together so as to spoil them. Moreover, the coke bottom had to be often renewed at great expense lind ,extra labor. To remedy these difficulties was the purpose of the invention described in the plaintiffs' patent. The specification states that the noncombustible substances forming the bottom ;may be broken pieces or fragments of cinder or slag, or oxide of iron, or asbestos, soapstone, etc., furnishing a remarkably cheap and durable bottom, free from dust, ashes, and sulphur, and which does not get hotter than the rest of the furnace; that, the segrega.ted character of these pieces or fragments causes interstitial passages to be formed, through which the heated gases are free to pass; and the upper side of the bed presents a broken or uneven surface; and thus the pile of sheets will be heated to the same degree at the top as aLthe bottom. The patented improvement is certainly very simple, but the proofs elearly show that it possesses uncommon merit, and has accomplished the most beneficial results, obviating the evils incident. to the coke bottom. As soon as it became publicly known, it was immediately and universally adopted in sheet-heating furnaces. That it was novel is indisputable. Under the proofs and the authorities, we do not hesitate to pronounce it to be a patentable invention. Loom Co. v. Higgins, 105 U. S. 580, 591; Magowan v. New York Belting 00., 141 U. S. 332, 12 Sup. Ct. Rep. 71; The Barbed Wire Patent, 143 U. S. 275, 12 Sup. Ct. Rep. 443. It is shown that the plaintiffs perfected their invention 8S early as October, 1887, and in the latter part of that month put the sanie into public and successful use at the sheet-iron works of Wallace, Banfield & Co., Limited, at Irondale. Ohio. But it is alleged that the plaintiffs wera not the original and first inventors, and that for several months before
826
'ODEBAL
vol. 52,.
th6i'r invemtionfurnace:botro:ms ,'c'&npoaeil ,ofb),'oken pricks, and ofeibtierwere llsed'at tb$'OallOos:burg at canoHllburg,· Pa. ,'and ,furnace.'bottotllif:oomposed Qfl were 80, used at 'tbeM'C1rks Of Samnrers, :Brosi'& (loc., StrutherSliOhiQ, at the ants' works at Leechburg, Pa,.,at thecChartierslroll &'·,Steel Company's and :the .l\P?110 in Armstrong
As respects the,.aUt:lged prlOr the the defendants examined five witnesses. Richard S. Jones testifies that about twoi;molithsbefore death of'JackOole, the then manager, (who diedIJatiuary 11,1886\}they tried a ,furnace bottom: made of broken but streaked the sheets, and ,that, after using this' :briclt botto:m'a week, they took it out, and put in cinder, and use John Williams agrees subst'at1'ftaUy with JdnI:lS, but there ,is strong evidence to show that he was hot' at those' works' 'between' April; 1885" and May ,1886. John F. :Bhd'kei 'the' of the company, testifies that the broken btickc 'lJottMiw8s putih. in the fall of1885,and used until the next ,8nmtntft'tland workedsatisfa.ctotily.· '. He says: the following summer. and Biily Richards, to me and told me that Banfield and Francis claimed a patent on tliis'cfDderbottom. ,and I told him that ldid not think they could claim a P1itetlt'otllt; and he lUlked me to ,try the oinder bottom in the big sheet fu rnaoe.',iiIitioldbim I woullli.whenever \Ve had time to alter the furnaces. In witb the brick small furnace. We, in the large furnace in the J uly arid have been tising
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account, that the use of cinder bottoms at'CiitiOtlsbUrg was after, he was informed by Richards of the plaintiffs' b11t' that' invention was not made until, the fall of 1887. The R: Richards does not help the defendants. He cannot gi'V'eiany:' datesi .:attdotherwise. ihisrecollection is deficient. The defendants' other witness on this branch of the case, Mark Lewis, Jr" oOkeat'first, then ,used then went back W'o()k:e; '81'1.dl then ufll!Jd,cinder aftertbat;" but he was not able to fix the ,dll.tewhend cinder bottOms were first: used. He further stated that he workeaat,the< sinGillftii'Q&Cedn which the broken brick bottom was used at the W'a.$ .tried, 'and 'he thonghtitwasmot used," very long," to the sheet, and be rolled out " with it;'tnakihg 1l.,10ngwHite streakonithe sheet.· Mr; Lewis was called. backtoflleiltand iby:theplaintiffsinrebuttal, and be then testified that he ithtnlght; the' br.okenbriOlt bottom was not: used !Ilonger than, a day 'or two," and that they then returned to the use of coke bottoms.. The defense by sev: witriesses.Enoch Thomas, a ral rollel' atthtlseworks 1884 to: September, 188&, testifies with ,particuI'Rl'ItyaMbtthe ·til'al of the broken' brick bottom,which.to6k ,place ( He says they used itfdrthree, heatsonly; that it marked 'the sI:¥Ele{s'llnd,,'fmade'them waste.'):· Restates:','! told Cole that it
S27 would not do. 'Well,' ,he -says:,'daUlD it, throw it.out.' Then. we throwed it out,and that was the eodofit. We put coke hack in, aod worked frorn that time on coke, untiL Iq uit there."Joseph A. Dean, who worked at this mill, first as a doubler, and then as a roller, from April 2, 1885, to April 2, 1890;gives; the same account of the trial of the broken brick bottom 8S Enoch Thomas, and Dean testifies that they used coke bottoms until December, 1887.. Reese Johns, a roller, and Robert Johns,. a heater, who worked there during the years 1885 anq 1886, testify that coke bottoms only were used down until they left, late in the fall of 1886. David Dlewellencorroborates this. Elias Williams, a sheet heater, who worked at Canonsburg from September, 1886, to October, 1890, testifies that they used. coke bottoms in the "big mill" WHhe spriIllgof 1888, when they put,in cinder bottoms, and that only a short time before was the change made from coke to cinder iathe "little mill." George Gittings went to work as a catcher in the little mill March 10, 1887. He testifies that they were then using coke bot. tows, and continued to use:them as late as Christmas of that year; and he thinks they first introduced cinder bottoms several weeks later. Such is the substance of the direct evidence on this branch of the case. Now, it is the established rule that he who sets up prior use as a defense to a suit for the infringement of a patent has the burden of proof upon him, and every reasonable doubt is to be resolved against him. Cantrell v. Wallick" 117 U. S. 689, 6 Sup. Ct. Rep. 970; The Barbed Wire Patent, supra. The defendants have not only surely fallen short of that standard of proof, but we think the decided preponderance of the evidence is with the plaintiffs. The only reasonable conclusion is that the use of the broken brick bottom in the fall of 1885 was an unsuccessful experiment, speedily abandoned, and that cinder bottoms were not used at the Canonsburg works until after the public use of them at Irondale. As to the use at the works of Summers, Bros. & Co., at Struthers, Ohio, little need be said. Undoubtedly the introduction of cinder bottoms into those works was not until after the plaintiffs had completed their invention, and put it into actual practice at Irondale, Ohio. What had been done previously at Struthers did not amount to the practice of the invention, either openly or The most that can be said is that occasionally,-William Summers states "every time the heater complained about the bottoms being dirty,"-'-for the purpose of holding the sheets up out of the ashes, a few shovelfuls of cinder were scattered across the rear end of the furnace bottom, when the coke had burned away there, and no coke was at hand to fill in at the rear; the coke, however, elsewhere on the bottom of the furnace being kept replenished. This was done by William Summers, the roller, and Frederick Bailey, the heater, secretly, and knowledge of the fact was carefully concealed from the mill manager. This casual use of cinder did not rise even to the dignity ofexperiment,Jor it does not seem to have then occurred to either Summers or Bailey' that coke could, be dispensed with,: and a incinder bottom substituted therefor. It may be that the germ
828
J'BDBBAL
REPORTER,vol. 52.
vention was in this use of cinder" but it was unperceived. At any rate the matter was not followed up beyond the experimental stage. Such use;: therefore, cannot avail as against the plaintilfs;Th,e Barbed Wire PafJent,BUFa· , It iSlSigtIiflcant that in the original answer, which was verified December 16, 1889, the defendants, in describing the construction of their' heating;furnaces at Leechburg,stated that HUp until about a year last past" they had used a layer of coke on the bottom of the furnace, but that "within about a yeai' last past" this layer of coke had been dispensed;;with. ' But oli December 11, 1890, by an amendment to the answer;lthey fixed the time when they first substituted a layer of bru\en cinder {oithe coke at "some time in the spring of 1887." The defense of anticipatory use at Leechburg rests upon the oral testimony of seven witnesses, doubtless honest enough, but who as to the time when cinder bottoms were intf9(1uced there from mere general reeo11eotion. No one of them pretends to exactitude, nor is any circumatancementioned having any natural conn'ection with the main fact, orteriding to determine the ,date with certainty. They testified. three 'years after the event. Upon the unreliability of such testimony, coming'even: from the best-intentioned 'witnesses, we need not enlarge. Oneo£tbese witnesses, Harry E. Sheldon, the manager of the Leechburg works; having ftom recollection :named ,the spring of 1887 as the time when ·the change from coke bottOms. to cinder bottoms was made, was if he had' then beard of their use elsewhere, . His answer was: "Howl first came to hear' about cinder bottoms in sheet furnaces I cannot tell;;Lhave been trying to think'. , Somebody told me, hut who it was ,I:cannotrecollectj nor dol recollect where.l!: But She1,10n's want of supplied by. George B. Pavitt, 'a witness on the part of the plaintiffel,and Johli C. Wallace; a member of the defen Iant firm, and also a member of the Irondale firm of Wallace, Banfield & Co., who testified, in !taebalf of the, defendants. " Being asked. 'On cross-examination at which 'place, (Irondale lei-Leechburg) the cinder bottom was first used, Wallace answered: "To ,the best of: my knowledge, as far as I know anything about it, it wadirat used at Irondale. That was the first place I knew of;itsuse. By 'Irondale' 1 mean at the works of Wallace, Banwho is a sheet heater, states that he first field & saw the cinder bottoms' used at the works of Wallace, Banfield & Co. , Limited, at Irondale, Ohio, where he was then wor:kinJ, and that he then and there learned that Francis and Banfield wer J the inventors; that subsequently-to the best of his recollection, in December, 18R7 -he made a visit to Leechburg, and' that they were then using coke bottOffiS at the defendants' Leechburg works; that on the occasion of this visit he conversed with Mr. Sheldon, the defendants' manager, about cinder bottoms, and he gives that conversation as this: "Mr. Sheldon asked me what 1 thought of the cinder bottom. I told him that it was a good thing. Then he asked me about what size they broke the tap to put in the· furnaoe, and I told him about the size of an egg. That was the conversation:between him and me." At the