PELZER V. GEISE.
869
This was a suit in equity by Allen H. Rowe against the Blodgett & Clapp Company for alleged infringement of a design patent for a horseshoe calk. W. E. Simonds, for complainant. L. P. N. Marvin, for defendant. TOWNSEND, District Judge. To this bill in equity for infringe· ment of patent No. 26,587, granted to complainant February 2, 1897, for a design for a horseshoe calk, defendant demurs on the ground that said design "is the product of mere mechanical skill, not amount· ing to a patentable invention." The defendant, in his brief, cites a number of patents, and asks court to take judicial notice thereof, and thereupon to hold that the configuration claimed in the patent in suit is lacking in originality and beauty. The court has no per· sonal knowledge as to these matters, and does not understand that, in a hearing on a demurrer, it is its duty to investigate the prior artAs a matter of fact, the writer supposed that the ordinary horseshoe calk was an integral part of the horseshoe, hammered to a point by a blacksmith. It is perhaps possible that evidence might be introduced to show that said design was patentable, as a "new and original shape or configuration of an article of manufacture." The demurrer is therefore overruled. PELZER v. GEISE. SAME v. ACME GAS FIXTURE &.METAL CO. RAME T. BUCK. SAME v. HORN .& :BRANNEN MFG. CO.
(C!J;cult Court,E. D. Pennsylvania. Nos. 37-39, 41.
June 25,
PATENTS-PRELIMINARY I;NJUNCTION-EF:FECT OF PRIOR DECISioNS.
The circuit court lind the circuit court of appeals for the Third circuit h<:!ld that several claims of an original patent were Invalid. Thereafter the circuit court or appeals In the Seconq circuit, after duly considering such prior decision, sustained the validity ofa reissue of the patent. Held that, In a subsequent suit In the circuit court of the Third circuit on the reissue, the court, on motion for a preliminary Injunction, would the decisions in the Second circuit sustaining the reissue as controlling upon It. "1 1
These were four suits instituted by complainant, Pelzer, against different defendants for alleged infringement of a patent for improvements in electrical fixtures. The causes were heard on motions for preliminary injunction. Rkhard N. Dyer, for <!omplainant. Hector T. Fenton, Theodore F. Jenkins, and Samuel Gustine Thompson, for respondents. DALLAS, Circuit Judge. The above·stated cases are suits upon reissued letters patent No. 11,478, granted March 12, 1893, to Luther Stieringer, for an improvement in electrical fixtures. The original (No. 259,235) was dated June 6, 1882, and was applied for March 15, 1882. A motion for a preliminary injunction has been made in each case. These motions were argued at the same time,
870
87 If,EDERAr,, REPORTER.
and may -he disposed of together.., The defenses are not, in some particulars, precisely 911t the point which has, been, <;hiefly relied upon is common to all the cases, and presents the only question which, on full consideration of the proofs, seems to me to be a serious one. In the case of Maitland v. Archer & Pancoast Co., 72 Fed. 660, the circuit court for the Southern district of New York sustained the fiJ,'st: claim of the reissued, sued upon, llnd in the case of MaitlaM v. Manufacturing C6., :Z9 C. C. A. 607, 86 Fed. 124, the circuit court of appel:\,ls for, the Second circuit also upheld that claiIn- It is contended that the, peculiar circumstances under which thel:\e were rendered make the general rule, which would require to be followed, inapplicable. The ,learned counsel for the liefendants in the present suit against the Horn & BrannenMaI;l.ufacturing Company conceded (as must necessarily be con,ceded) that a prior adjudication, m,ade in, a contested case, and ,after a full final hearing, 'be regarded, upon a motion for injunction, as decisive, or at least as prima facie conwith resped to, the of the but it is insisted that this case is, ,an exceptional one, for the reason about to be referred to. , When the OJ;,igillal Stieringer was before the court 'of' appeals for this circuit in' tM .case of Maitland v. Gibson, 11 C. C. A. 446, 63 Fed. 840, several of the claims of that 'patent were held to be invalid, and it is now argued that the courts in the, either disl,'egarded or that prior it would, I think, be injudgment. Jf this cumbent upo,n this court to adopt as authoritative the decision of the court Of appeals' for this circ'uit. ' 'But' this is' not plainly evident. In both of the courts of the" Second circuit the decision in fully and the question whether or not they this one properly ' it.i,s one Whicl;1,in my opinion, should be left fordetel'mination by the court which made it. The fact that the judgment of the court of appeals for the Third circuit was in accord 'with, that of this court, as it is now: constituted, should not, I think, induce me ,to enter upon an inquiry as to the purport and scope of that judgment.. ,', The ,courts of the Second circuit did not overlook it, the ,present purpose it is, I think, incumbent upon me to accept' their, which is certainly not manifestly erroneolis, wUh{)utcavU or crit-icism:' The application of the rule of comitY," as it is called} il!l n:ot,however, to be extended to :anything more than was actually adjudged; and, as 'only the first of the reissue was passed upon; there will be a decree in each of these cases for a prE:lin1inary injunction so far as respec.ts, that cl aim, but not as to any of the others. I
t·]
'I,
TABER BAS-RELlEF 'PHOTOGRAPH CO. ,V. MARCEAU.
871
TABER BAS-RELIEF PHOTOGRAPH CO. et a!. v. MARCEAU et al. (Circuit Court, N. D. California. No. 12,258. 1. PATENTS-hIPROVEMENTS-CONSTRUCTION OF CLAIMS.
May 17, 1898.)
Where the parties to a suit are operating under different patents, each of which is for a mere improvement in a well-known art, each must be confined to the precise method mentioned in its claims. Infringement is determined, not by the result accomplished, but by the means employed in attaining that result.
2. SAME-INFRINGEMENT. 3. SAME.
'l'he only material difference between two patents for producing em bossed pictures or photographs was that in one the picture was transin the other the ferred to the block, and then carved out therein, outline was cut on the block, and the picture then carved out, following a picture set up in front of the carver. Held, that there was no infringement, eacb patent being for a' mere improvement. The Taber patent, No. 556,591, for improvements in methods of producing embossed photogmphs, is not infringed by the process described in the Marceau patent, No. 567,748, for a process of producing photographs In reltef.
4.
SAME-EMBOSSED PHOTOGRAPHS.
This was a bill in equity by the Taber Bas-Relief Photograph Company and others against Theodore C. Marceau ,and others for allegro infringement of a patent covering a method of producing embossed ' " JohnB. 'Miller, for complainants. JOhn L. Boone, for defendants. MORROW, Circuit Judge. This is a suit in equity for infringement of letters patent No. 556,591, March 17, 1896, issued to Freeman A. Taber, for "improvements in methods of producing embossed photographs." It is conceded that the patent was assigned to the Taber Bas-Relief Photograph Company, and that the Taber Photographic Company is the licensee of the former. The only party dehendant is Theodore C. Marceau, the other defendants being fictitious parties. The defendant, Theodore C. Marceau, denies, in his answer, any infringement of the Taber patent, but admits that he has been engaged in the production and sale of photographs in bas-relief, and in that connection avers that he is the inventor and patentee of a novel process and method of producing such photographs, which is protected by letters patent No. 567,748, dated December 15, 1896, issued to him, for a "process in producing photographs in relief." At the hearing the complainants introduced the letters patent under which they claim an infringement, and several exhibits, to illustrate their method of producing embossed pictures or photographs. They also introduced the deposition of a witness as expert testimony in their behalf. The defendant presented no evidence, beyond introducing behalf the file wrapper of his patent. No specific act of infringement has been shoWP. In fact, the' question of infringement resolves itself into a consideration of whether or not the defend-