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by the patent-office, or the appellate tri- , curved portion, intended for the fore roll bunal, to which coutested applications only of the collar, instead of a curved are referred. Wben the terms of a claim portion for the fore roll and one for the in a patent are clear and distinct, (as they back roll.” It seems from his letter to the always should be,) the patentee, in a suit patent-office of September 2, 1882, to which brought upon the patent, is bound by it. reference has already been made, that in He can claim nothing beyond it.

endeavoring to practice the invention in Similar language is used in Railroad Co. his prior patent he found that the twov. Mellon, 104 U. S. 112, in reference to a roll spring was not generally applicable patented locomotive wheel. In Masury v. to collars of different sizes, as it had been Anderson, 11 Blatchf. 162, 165, it was said supposed it would be; as the rolls in col. by Mr. Justice BLATCHFORD: "The rights lars of different sizes and of different makes of the plaintiff depend upon the claim in varied so much that, while it would make bis patent, according to its proper con. a pad applicable to collars of different sizes struction, and not upon what he may er- for ligbt work, the same pad could not be roneously suppose it.covers. If at one used on collars for heavy work, and hence time he insists on too much, and at an- the invention proved to be imperfect. other on too little, he does not thereby | This resulted in the invention of the sinwork any prejudice to the rights actually gle-roll spriog of his second application. secured to him. Other cases to the same Practically the only povelty consists in effect are Merrill v. Yeomans, 94 U. S. 568; cutting the double-roll spring in two, and Burns v. Meyer, 100 U. S. 671; and Sutter using the fore roll only. While this enav. Robinson, 119 U. S. 530, 7 Sup. Ct. Rep. bles the pad to be located on the collar 376.

more readily than when two springs were It is true that, in a case of doubt, where used, the roll performs the same function thu claim is fairly susceptible of two con- as in the prior patent, and the patent can structions, that one will be adopted which only be sustained upon the theory that will preserve to the patentee his actual the discarding of the after roll involved invention; but if the language of the speci. invention. What shall be construed as infication and claim shows clearly what he vention within the meaning of the patent desired to secure as a monopoly, nothing laws has been made the subject of a great can be held to be an infringement which amount of discussion in the authorities, does not fall within the terms the patentee and a large number of cases, particularly has himself chosen to express his inven- in the more recent volumes of reports, turn tion. The principle announced by this solely upon the question of novelty. By court in Vance v. Campbell, 1 Black, 427, some, "invention" is described as the conthat, where a patentee declares upon a triving or constructing of that which had combination of elements which he asserts not before existed; and by another, giving constitute the novelty of his invention, he a construction to the patent law, as "the cannot in his proofs abandon a part of finding out, contriving, devising, or creatsuch coinbination and maintain his claim ing something new and useful, which did to the rest, is applicable to a case of this not exist before, by an operation of the inkind, where a paten tee has claimed more tellect." To say that the act of invention than is necessary to the successful work- is the production of something new and ing of his device.

useful does not solve the difficulty of givApplying these familiar principles to the ing an accurate definition, since the quescase under consideration, we are forced to tion of what is new, as distinguished from the conclusion that the curved hook of the that which is a colorable variation of defendant is not an infringement of the what is old, is usually the very question double spring described in the plaintiff's in issue. To say that it involves an opera-: specification and claim. While a single tion of the intellect, is a product of intuispring or hook embracing the fore wale tion, or of something akin to genius, asi of a collar may be equally as efficacious, distinguished from mere mechanical skill, the patentee is no more at liberty to say draws one somewhat nearer to an apprethat the spring encircling the after wale is ciation of the true distinction, but it does immaterial and useless than was the pat- not adequately express the idea.

The entee in Vance v. Campbell to discard one truth is, the word cannot be defined in of the elements of his combination upon such manner as to afford any substantial the same ground. This was evidently the aid in determining whether a particular theory of the patentee himself, since, a lit- device in rolves an exercise of the inventive tle more than two months after this pat- faculty or not. In a given case we may ent was issued, in a letter to the patent- | be able to say that there is present invenoffice of September 2, 1882, in which he tion of a very high order. In another we made application for his second patent, can see that there is lacking that impalpacovering the single-roll spring, be stated ble something which distinguishes in venthat “the single-roll spring must be con- tion from simple mechanical skill. Courts, ceded to be a structure positively and un- adopting fixed principles as a guide, have equivocally different from the two-roll | by a process of exclusion determined that spring.” There being no infringement of certain variations in old devices do or do this patent, there can be no recovery upon not involve invention; but whether the vait.

riation relied upon in a particular case is 2. The second patent was principally anything more than ordinary mechanical contested upon the ground of want of in- skill is a question which cannot be an. vention. In his specification the patentee swered by applying the test of any general states it to be an improvement upon his definition. prior patent, but differing materially from Counsel for the plaintiff in the case under it in the fact that “this spring has but one consideration has argued most earnestly

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that the only practical test of invention is one who made the manufacture of sweatthe effect of the device upon the useful pads a specialty; that he made them of a arts; in other words, that utility is the superior quality, advertised them in the sole test of invention, and, inferentially most extensive and attractive manner, at least, that the utility of a device is con and adopted means of pushing them upon clusively proven by the extent to which it the market, and thereby largely increased has gone into general use. He cited in the extent of their sales. Indeed, it is imthis connection certain English cases, possible from this testimony to say how which go far to support his contention. far the large sales of these pads is due to These cases, however, must not be con their superiority to others or to the energy strued in such way as to control the lan with which they were forced upon the guage of our statute, which limits the ben- | market. efits of patent laws to things which are *While this court has held in a number of new as well as useful. By the common cases, even so late as Magowan v. Packlaw of England, an importer-the person ing Co., 12 Sup. Ct. Rep. 71, (decided at the who introduced into the kingdom from present term,) that in a doubtful case the any foreign country any useful manufact- fact that a patented article had gone into ure-was as much entitled to a monopoly general use is evidence of its utility, it is as if he had invented it. Thus in Darcy y. not conclusive even of tbat, much less of Allin, Noy, 178, it is stated that, “where its patentable novelty. any man, by his own charge and industry, In no view that we have been able to or by his own wit or invention, doth take of the case can we sustain the secbring any new trade into the realm, or any ond McClain patent. We do not care to engine tending to the furtherance of a trade inquire how far it was anticipated by the that never was used before,

the various devices put in evidence, showing king may grant to him a monopoly pat the use of a similar spring for analogous

in consideration of the good purposes, since we are satisfied that a that he doth bring by his invention to the mere severance of the double spring does commonwealth;" citing several instances not involve invention, at least in the abof skill imported from foreign counties. In sence of conclusiveeridence that the single Edgebury v. Stephens, 1 Webst. Pat. Cas. spring performs some new and impor35,"it was said: "The act [of monopolies] tant functiou not performed by it in the intended to eucourage new devices useful | prior patent. The evidence upon this to the kingdom, and whether learned by point is far from satisfactory, and the travel or by study it is the same thing. decree of the circuit court must therefore

It is evident that these principles have be affirmed. no application to the patent system of the

(141 U. S. 560) United States, whose beneficence is strict. ly limited to the invention of what is new

PATENT CLOTHING Co., Limited, v. GLOVER

et al. and useful, and that the English cases, construing even their more recent acts,

(November 16, 1891.) must be received with some qualification. PATEXTS FOR INVENTIONS_VALIDITY - INVENTION That the extent to which a patented de

-PANTALOONS. vice has gone into use is an unsafe crite Letters patent No. 178,287, granted June rion, even of its actual utility, is evident 6, 1876, to Rodmond Gibbons, were for the "comfrom the fact that the general introduc bination, with the fly of pantaloons or similar tion of manufactured articles is as often garments, of an inelastic bridge or check-piece, effected by extensive and judicious ad

arranged across the crotch thereof; whereby the

strain at the crotch when the fly is opened and vertising, activity in putting the goods

spread apart is received by said bridge or checknpon the market, and large commissions

piece, instead of at the angle of the crotch itself." to dealers, as by the intrinsic merit of the The patent was reissued March 22, 1881, as No. articles themselves. The popularity of a 9,616 Held, that both the original patent and proprietary medicine, for instance, would the reissue are void, for the device described inbe an unsafe criterion of its real value,

volres no invention. since it is a notorious fact that the extent 31 Fed. Rep. 816, afirmed. to which such preparations are sold is

Appeal from the circuitcourt of the Unit. very largely dependent upon the liberality ed States for the southern district of New with which they are advertised, and the

York. Affirmed. attractive manner in which they are put Bill in equity by the Patent Clothing up and exposed to the eye of the pur- | Company, Limited, to restrain H. B. Glovcbaser. If the generality of sales

er and others, composing the firm of H. B. made the test of patentability, it would Glover & Co., from infringing complainresult that a person, by securing a patent

ant's patent. The circuit curt dismissed upon some trifling variation from previ.

the bill, and complainant appeals. ously known methods, might, by energy Causten Browne, for appellant. G. M. in pushing sales or by superiority in fin

Plympton, for appellees. ishing or decorating bis goods, drive competitors out of the market, and secure a Mr. Justice BREWER delivered the opinpractical monopoly, without in fact har. ion of the court. ing made the slightest contribution of This is an appeal from a decree of the value to the useful arts. The very case circuit court of the United States for the under consideration is not barren of tes southern district of New York, dismissing timony that the great success of the Mc the appellant's bill. The suit was for the Ciain pads and clasping hooks-a large infringement of a patent. Rodmond Gibdemand ior which seems to have arisen bons was the patentee. His original patand increased year by year-is due, partly ent was dated June 6, 1876, No. 178,287. at least, to the fact that he was the only This was surrendered, and a reissue oto.

were

fect.”

tained on March 22, 1881, being reissue No. directed a dismissal of the bill. On a re 9,616. Gibbons assigned to the appellant. | hearing, a further opinion was delivered, Suit was commenced by the filing of a bill the two opinions being found in 31 Fed. on June 18, 1884. The answer tendered | Rep. 816, 818; aud on August 4, 1887, the several delenses; among them, that the re- decree was entered, which, after reciting issue was void by reason of laches in ap- the hearing and rehearing, reads: “Now, plying for it, the application not being upon due consideration of the saine, and made until nearly five years after the date the court being of opinion that the second of the patent; berause it was broader claim of reissued patent No. 9,616, granted than the original patent, and included in to Rodmond Gibbons on the 22d day of it matters not claimed or described there- | March, 1881, is invalid, unless it is limited in; that the patent was void for lack of to the bridge or check-piece of the original invention and patentahle novelty; and al- claim, and with that construction there is 80 non-infringement. The patent was for no infringement, it is ordered, adjudged, an improvement in pantaloons, and the and decreed that the bill of complaint in specification in the original patent was in said cause be, and the same hereby is, disthese words: “My ip vention relates to a missed," etc. It will be seen from this defastening for the crotch in the fly of pan-cree, and more fully from the opinions, taloons or similar garments, and it con- that the conclusion of the trial judge was sists in bridging said crotch with a check- that the second claim of the reissue was piece of cloth or other inelastic pliable ma- an enlargement of the single claim of the terial, as hereinafter fully described. The original patent, and therefore invalid; or, object of this in vention is to prevent that if not, and it could be properly construed as, tension at the crotch ordinarily produced describing the same thing, that that which either by continued use of the garment, or was done by the defendant was no*inby any undue strain caused by the as- fringement. It is unnecessary to review sumption by the wearer of any posture of these opinions, or determine whether there the body, or by the removal of the gar- be, as the court found, any such variation ment, calcolated to produce such an ef- and enlargement. There is a more griev

And the single claim was: “In ous and radical defect in the appellant's combination with the fly of pautaloons or cage. There is not in the matter described similar garments, an inelastic bridge or and exhibited in any of the specifications check-piece, arranged across the crutch or claims any invention, within the meanthereof, substantially us described, where- | ing of that word, as developed in recent by the strain at the crotch, when the fly is decisions of this court, (Hollister v. Manopened and spread apart, is received by ufacturing Co., 113 V. S. 59, 5 Sup. Ct. Rep. said bridge orcheck-piece, instead of at the 717; Thompson v. Boisselier, 114 U. S. 11, angle of the crotch itself.” The specifica- 5 Sup. Ct. Rep. 1042; Howe Machine Co. tion in the reissue reads: "My invention v. National Needle Co., 134 U. S. 388, 10 relates to means for strengthening the Sup. Ct. Rep. 570; McClain v. Ortmayer, crotch in the fly of pantaloons, and has 141 U.S. --, 12 Sup. Ct. Rep. 76,) and for for its object to prevent that tension at that reason both patents, original and rethe crotch of the fly which is ordinarily issue, were void. produced either by continued use of the What is it that the patentee claims to garment, or by some undue strain upon have invented ? Formerly the button and the latter, caused by the assumption of button-hole strips in the fly of pantaloons sugie posture by the person wearing it, or were separate pieces, whose lower ends, by some mode of removal of the garment being placed face to face, were sewed tofrom the body calculated to produce sucli gether, and thus formed the crotch. Or an effect, and which tension* frequently course, then, any strain at the crotch was operates to rupture either the cloth or the resisted by only the direct strength of the seams, or botn, at the vicinity of the said thread. The idea of the patentee was to crotch. To this end my invention consists add to the strength of the thread the in the use, in connection with the fly, of a strength of a piece of cloth, and this he did check-piece or strip of cloth or other in- by a strip crossing the crutch as a bridge, elastic pliable material, arranged to bridge and running up along the button and butover and protect from tensional strain tbe ton-hole strips, and fastened to them recrotch of said fly, as will be hereinafter spectively. The strain, therefore, at this more fully described. And these were the place would be resisted both by the thread claims: “(1) The combination, with the and this strip of cloth, or "inelastic fly of a pair of pantaloons or other similar bridge,” as the patentee called it. A simgarment, of an inelastic bridge or check- ilar result was obtained when either one piece, arranged across the crotch of the of these strips, the button or botton-hole, fly, and operating substantially as de- was made longer than the other, and the scribed, to receive any strain occasioned longer one, instead of running downward by the spreading a part of the fly, and into the crotch, was turned at that place wbich would otherwise be exerted upon and used as a bridge across it, and then the crotch of the fly. (2) In combination ran up along the side of the other strip, with the fly portion of a pair of panta- and was fastened to it. By either of these loons or other similar garment, a check- processes the tension was placed largely piece made integral with the button-hole upon the strip of cloth, instead of solely strip of the fly, and adapted to prevent any upon the thread. But this was no new tension at the crotch that might operate idea; it is as old as pantaloons themselves. injuriously upon it." On proofs, the case It has been illustrated in the experience of went to final hearing before Judge Ship- every boy, for in his sports he not infreMAN, who, on the 14th of May, 1887, filed quently tears his pantaloons, and his an opinion adverse to the appellant, and good mother, not content with sewing

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the torn ends together, and thus holding claimed damages for injuries received on them by the direct strength of the thread, the road while it was in the hands of a reis wont to place underneath a piece of ceiver. There was division of opinion in cloth, and fasten it to the main body of the circuit court which tried the case, the garment for some distance on either which was certified to this court, but side of the tear. In this way the whole judgment was rendered in favor of the instrain, which otherwise would be solely tervener, and Olcott and others, the puron the threads closing the tear, is largely chasers, appeal. borne by the new cloth underneath. Sure- W. M. Baxter, for appellants. H. H. ly, when this idea is so well known, and has | Ingersoll, for appellee. been so practically illustrated for generations, it cannot be that there was any ex- *Mr. Justice BLATCHFORD delivered the? ercise of theskill of an inventorin applying opinion of the court. the same process to any part of the pan- A bill in equity was filed in the circuit taloons. If it be said that the strengthen- court of the United States for the eastern ing of the stay-piece, here applied, is not district of Tennessee by the Central Trust to the closing of a tear, but to a seam at Company of New York against the East an angle, it may be replied that such par- Tennessee, Virginia & Georgia Railroad ticular form of reinforcement is itself no Company, the Tennessee State Line Rail. new thing. An illustration is in the seam road Company, and one Thomas, to fore. at the angle made by the fingers and close a mortgage given June 15, 1881, by thumb of gloves. As to that, it appears the first-named railroad company to the from the testimony that the practice was trust company, on its property situated old of reinforcing the seam by an overlap- in Tennessee, Georgia, Alabama, and Mis. ping piece Other illustrations are also sissippi. On the 6th of January, 1885, one furnished by the testimony, but it is hard- | Fink was appointed receiver in the cause, ly necessary to refer to these in detail. and placed in possession of the whole of The matter is familiar to the knowledge of the property of the railroad company. all, and surely the application of this rein- On the 18th of March, 1886, a decree of forcing strip of cloth to any seam, or in foreclosure and sale was entered. That any place where without it the tension decree contained the following provisions: would be solely on the tbreads, cannot be “And the purchaser or purchasers of said an exercise of the skill of an inventor. property at said sale shall, as a part of We think, therefore, that the patent sued the consideration of the purchase, and in on was void for want of patentable nov. addition to the sum bid, take the said elty, and affirm the decree.

property upon the express condition that

he or they will pay off, satisfy, and dis. Mr. Justice BRADLEY and Mr. Justice charge any and all claims now pending Gray did not hear the argument or take

and undetermined in either of said courts, part in the decision of this case.

accruing prior to the appointment of the (141 U. S. 543)

receiver herein or during the receivership, OLCOTT et al. v. HEADRICK.

which may be allowed and adjudged by

this court as priorin right to said respect(November 16, 1891.)

ive mortgages, together with such in. RANROAD COMPANIES-MORTGAGE FORECLOSURE- terest as may be allowed, except as to TERMS OF SALE.

murtgages prior to said mortgages fore1. The decree for the sale of a railroad in closed in this suit, and subject to which foreclosure proceedings provided that all claims, said property shall be sold; and also upon debts, and demands accruing during an existing the further express condition that he receivership should be paid by the purchaser, but that the claims should be barred unless pren charge all debts, claims, and demands, of

or they will pay off, satisiy, and dissented within six months from the confirmation of the sale. The decree confirming the sale omit- whatsoever nature, incurred or which ted any provision as to the time in which the may hereafter be incurred by said receiver, claims must be presented, and the purchasers Henry Fink, and which have not been or made no objection to it as rarying from the terms shall not hereafter bc paid by said reof the decree of sale. Held, that persons bay.

ceiver or other parties in interest berein; ing such claims were entitled to present them after the expiration of six months from the con

and said purchaser or purchasers, their firmation of the sale.

successor or successors or assigns, shall 2. Since the proceeds of the sale were sub

have the right to appear and make destantially a fund in court, it was within the dis fense to any claim, debt, ordemand sought cretion of the court to abrogate the six-months to be enforced against said property ; limitation, and, there being nothing in the rec- and said purchaser or purchasers, their ord to show on what grounds it acted, it will be

successor ur successors or assigns, shall presumed that its discretion was properly exer

also have the right to enter appearance cised.

in this or any other court, and contest Appeal from the circuit court of the any claim or demand pending and undeUnited States for the eastern district of termined at the date of the confirmation Tennessee. Affirmed.

of such sale. All claims, debts, and deThis was a petition of intervention, fled mands accruing during the receivership by O. B. Headrick in a mortgage fore- herein shall be barred, unless presented, closure suit brought by the Central Trust as herein provided, within six months Company of New York against the East after the confirmation of said sale; and juTennessee, Virginia & Georgia Railroad risdiction of this cause is retained by this Company and others, in which suit the court for the purpose of enforcing the proroad had been sold to Frederick P. Olcott visions of this article of this decree. A and others as a committee on the part supplemental decree was made April 26, of the bondholders. The intervener 1886, and a special master, on the 25th of

V.128.c.-6

May, 1886, sold the property at public this court in this cause; (4) the obligation auction to Frederick P. Olcott and others, of the purchasers to pay for and discharge the appellants herein, for $10,250,000. The all the liabilities and obligatious of the master reported the sale to the court, and receirer on all accounts, as a part of the a decree confirming it was made June 28, terms of their purchase of the property.' 1886. That decree recited that the plaintiff To this petition it was answered as a dehad applied for the confirmation of thesale; fense that the petitioner's right of action, that the sale had been made to Olcott | if any, was barred by the provisions of and others acting as a committee on the the decree of sale and the decree of conpart of the bondholders as purchasing | firmation, because the petition was not trustees; that no exceptions to the report filed until after the lapse of six months of the sale had been filed, and sufficient after the decree was made confirming the notice of the hearing of the application sale. It was, in fact, filed more than had been given to the solicitors of the par- eight months thereafter. On the hearing ties to the cause; and the decree went on of the petition by the circuit court, held to confirm the sale and the report of sale, by the circuit judge (Judge JACKSON) and and to provide that the special master the district judge, (Judge Key,) their should execute a proper instrument in opinions were opposed on the following writing conveying to the purchasers, as questions: “(1) Whether or not the petia committee acting on behalf of the bond. tioner was entitled to file said petition in holders as purchasing trustees, all the said cause after the lapse of more than six property described in the decree of sale, months after the entry of the decree conand further provided as follows: "And it firming sale; (2) whether or not, under is further ordered, adjudged, and decreed the decrees of sale and confirmation of that the said purchasers shall take the sale, plaintiff's action was barred; (3) said property, and that it be recited in whether or not the purchasers of the propsaid deed that they do take the said property were liable for any claim against the erty, subject to, and that the said pur- | receiver, presented to the court more than chasers assume and pay off, any and all six months after the decree of confirmation debts, claims, and demands of whatso- of the sale." The opinion of the circuit ever nature now pending and unde- / judge was in favor of the petitioner, and termined in either of the courts in which judgment was entered accordingly, and the original and ancillary bills in this the foregoing questions were certified to cause are pending, which may be allowed this court. The judgment was for $500 in and adjudged by this court, or either of favor of the petitioner, with costs, and said courts where ancillary bills are pend. against the receiver; but the judgment ing, as prior to any right secured under stated that, as the receiver had been dissaid consolidated first mortgage, under charged from further liability, and the foreclosure of which the said sale was purchasers took the property subject to, made; and subject likewise to all debts, and assumed to pay, any and all claims claims, and demands, of whatsoever nat. *and demands of whatsoever nature inure, incurred by Henry Fink, as receiver curred by the receiver, it was adjudged that in this cause, and which may remain un- the purchasers pay the $500 and costs to paid at the termination of said Fink's re- the petitioner. We are of opinion that ceivership.” It does not appear by the the first and third questions must be anrecord whether such deed was given, but | swered in the affirmative, and the secit is to be presumed that it was.

ond question in the negative, and that On the 20 of March, 1887, an intervening the judgment must be affirmed. Althongh petition was filed in the cause by 0. B. the decree of sale provided that all claims, Headrick, the appellee herein, alleging that debts, and demands accruing during the he, on March 30, 1886, as a passenger upon receivership should be barred unless preone of the trains of the railroad operated sented within six months after the confir. by the receiver, had been seriously injured mation of the sale, yet the decree of confirand permanently disabled, by reason of a mation provided that the purchasers collision which occurred on the road, should take the property, and that the without fault on his part, but through deed should recite that they took it, subthe negligence of the agents and employes ject to all debts, claims, and demands, of of the receiver; and he prayed for a judg- whatsoever nature, incurred by the receiv. ment for damages for such injuries, and er, and which might remain unpaid at the that the same might be paid out of one or termination of his receivership. It does the other of the following funds, alleged not appear that the purchasers objected to be in the custody of the court and still to the terms of the decree of confirmation, undistributed: “(1) The fund resulting or appealed to this court from that de from the operation of the road by the re- cree. They might have done both, on the ceiver, and hitherto unappropriated; (2) ground that the decree of confirmation the funds hitherto in the hands of the re-varied from the terms of the decree of sale ceiver, which have been by him diverted under which they had bought, in destroy. from the expenses of the receivership anding the six-months limitation. It was appropriated to the payment of the uncertain, under the terms of the decree of bonded indebtedness of the railroad com- sale, what claims might be presented pany, defendant, and to the purchase of within six months after the confirmation rolling stock for, and the permanent im- of the sale, and be allowed by the court; provement of, said railroad property; (3) and, as they became parties to the prothe funds resulting from the operation of ceeding by their purchase, they should said railroad by said receiver, which were have seen to it that the terms of the deturned over to the purchasers of said rail. cree of confirmation did not create still road under the sale ordered thereof by i further uncertainty by destroying the six.

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