Mr. Frank v. Briesen for the complainant.

Messrs. Frost & Coe for the defendants.

WALLACE, J.:

These suits are founded upon Letters Patent No. 76,394, granted to W. E. Brock, and bearing date April 7, 1868, for an improvement in dummies for displaying clothing. Such devices are used by designers and sellers of wearing apparel to test and display the cut, style, and general appearance of the garments. The specification describes the invention to consist of a shell of paper or papier-maché resembling in configuration the body of a buman being, with legs and arms, if desired. A head-piece, of wood or other suitable material, is secured in the neck or upper end of the shell, into which is fitted a vertical supporting-shaft, which extends centrally through the shell, and is furnished at its lower end with an appropriate base. The shaft is provided with radial braces, which serve to retain the shell in proper position upon the shaft. It is designed to be an improvement upon the wire dummy in ordinary use for displaying clothing, and contains the same parts and arrangement of parts, except that the paper or papier-maché shell is substituted for the skeleton frame of the wire dummy. It is shown by the proofs that paper and papier-maché had been used in constructing lay figures representing various celebrated personages, and was well known as a suitable material for that purpose, previous to its use by the patentee. These lay figures were hollow, and the paper or papier-maché was used to form the shell or exterior surface of the figures, but the faces and hands were usually made of wax. They were clothed with costumes appropriate to the personages represented.

Inasmuch as the wire dummies did not contain the paper or papier-maché shell, and the lay figures did not contain head-piece, shaft-braces, or base of the patented device, they were not anticipations of it. The proofs show that the patented dummy has commended itself to the public interested in such devices. It is a better model of the human figure, and because of the continuous surface of the shell clothing can be made to fit more accurately upon it than upon the intersticial frame or shell of the wire dummy; but the patent cannot be sustained because the device is destitute of patentable novelty. If the substitution of the paper or papier-maché for the wire of the shell or frame was obviously practicable the patentee was not an inventor. If mechanics skilled in the particular department of construction could have seen at a glance the feasibility of the change, then, although the device may have been mechanically new, it was not intellectually novel. The paper which was substituted for the wire had been used to make the shell of a figure in imitation of the human body, and the figures in which it was thus used had been employed for displaying clothing. displaying of clothing was not the primary purpose for which these lay figures were intended; but that use was not only suggested, but

was very obviously one of the ends in view. Not only, therefore, had the material that the patentee substituted for the wire been employed as he employed it, to make the shell or frame of a figure resembling the human body, but it had also been applied to perform the same office. The new application of an old material to a cognate use will not generally support a patent, but here it was employed in the same use. The bill in the several cases is dismissed.

[United States Circuit Court-Northern District of New York.]

TILLINGHAST v. HICKS ET AL.

Decided September 6, 1882.

23 O. G., 739.

PRACTICE IN THE COURTS-PRELIMINARY INJUNCTION-DELAY.

Where there was a delay of ten years between the original patent and the reissue, a controversy as to the validity of the reissue and as to the infringement, no decision of any court establishing the validity of the patent, no royalty or, license-fees paid to the patentee, no general use or public recognition, no present manufacturing or sale of the patented article, and no allegation of irresponsibility on the part of the defendants, a preliminary injunction will be refused.

Mr. William A. Abbott for the complainant.

Mr. Esek Cowen for the defendants.

COXE, J.:

Complainant moves for a preliminary injunction in an action brought to restrain the infringement of a patent for an improvement in railroad, car ventilators. The patent was originally issued January 3, 1871. The claim was as follows:

The improvement in car-ventilators or dust-guards, which consists in providing the leaves A and A' with the right-angled edges b and b3, hinged to the car, substantially as described, by means of which the current of air is directed past the joint with the window-jam or side of the cars, as and for the purposes specified.

The patent was reissued February 15, 1881. In addition to the claim of the original patent just quoted the reissue contained the following language:

2. The combination, with the side of a car, of hinged deflectors or dust-guards hav. ing their hinged edges shielded by a "break-joint" strip projecting from the car-side to deflect the current of air past the joint and prevent the entrance of dust, substantially as set forth.

A disclaimer was filed by the complainant March 23, 1882

To that part of the specification which is in the following words, to wit: "It is evident that a close round hinge attached to the inner edge of the deflector would in a measure serve a similar purpose, and yet be within the scope of my invention, which consists in providing the deflectors with such a means of close connection with the car as will direct the current of air past the point of junction with the car when the leaf is extended outward and in use."

He also renounces his

Broad claim to a freely-swinging pivoted shield having a flange at its inner or pivoted edge that rests against the side of a car when the shield stands at right angles to the same; and your petitioner desires to explain that his claims are intended to cover hinged deflectors or dust-guards having their hinged edges shielded by a strip on the car or by a projecting part of the car-frame in such manner as to form a "break-joint," so that the entrance of dust, cinders, &c., at the pivoted edges of the deflectors or guards is effectually prevented.

It is thought that sufficient has been quoted to warrant the defendants in asserting that the complainant's invention and his own statements regarding it are involved in some perplexity. Prior to the reissue and disclaimer, and on the 21st day of January, 1879, and on the 29th day of July, 1879, respectively, the defendant Reynolds was granted two patents for an improvement in dust-guards for car-windows. The claims in the second of these patents-the first is not produced-are in these words:

1. The combination, with a hinged dust-guard, of a guard-strip, E, provided with one or more standing flanges, e, adapted to form a dust-tight joint with said dust-guard, as herein specified.

2. The combination, with the pintle B, of the socket C, provided with the spring D, as and for the purpose herein specified.

Briefly stated, the difference between complainant's device and the one used by the defendants is this: Complainant's dust-guard, as shown by his drawings, is in one piece, provided with an angular edge, which, when it is extended for use, fits closely against the window-jamb or against a projection on the wall of the car, thus preventing the ingress of dust. Defendants' dust-guard is in two pieces, the one consisting of a plain flat leaf, the other a metallic strip projecting from the car about a quarter of an inch, against the outer edge of which the inner edge of the hinged leaf rests. Whether the latter is an infringement of the former is a question which must ultimately be decided in this case. It is only necessary to say, for the purposes of this motion, that the question is not free from doubt. Ten years elapsed before the reissue was applied for. The application was then made with full knowledge of the device of the defendants. Such a long delay would seem to bring the case within the doctrine of Miller v. Bridgeport Brass Company (21 O. G., 201). Complainant's acquiescence for so long a period in the terms of the patent as originally stated would operate as a dedication to the public of those improvements not specifically claimed by him. (Sheriff v. Fulton, 12 Fed. Rep., 136.) But it is argued that the claim in the original patent is broad enough to cover the device used by the defendauts, and that no new principle or combination is stated in the reissue. This position is vehemently combated by the defendants, and they refer to the following language of the patent, which they interpret as meaning that, although the complainant in 1871 had in mind a ventilator similar to the defendants' device, he did not deem such an invention practicable, and so did not include it in his claim:

It has been proposed for many years to have ventilators consisting of the plain flat

been made therewith; but owing to the difficulty of having a joint which, while it would allow the leaf to come in contact flatwise with the side of the car, would also, when at right angle thereto, present a close joint, the common and usual method of hinging has been applied.

These considerations alone might not lead to a denial of the motion; but the complainant, for other reasons, disconnected from the questions arising on the patents, has failed to bring himself within the rules applicable to these cases. No suit at law or in equity has ever been com. menced by the complainant. His invention has not gone into public use. No manufacturer has ever paid royalties to the complainant. His device has not been extensively used on any railroad, nor has it been recognized by the public. It is not asserted that it is now in use anywhere or for sale anywhere. The defendants are large manufacturers and vendors of the ventilators described in the Reynolds patent. To put a stop to this branch of their business would be likely to cause them irreparable injury. There is no allegation that the defendants are irresponsible or unable to respond in damages should the complainant finally succeed. The granting of an injunction rests in the discretion of the court, having in view all the circumstances of the case, its effect upon the defendants as well as upon the comlpainant. If it can be plainly seen that greater mischief will result from granting than from refusing it, the writ should be withheld. No case is cited, and I have been unable to find one, sustaining an injunction where, as in this case, the following facts concur: (1) A delay of ten years between the original patent and the reissue; (2) a controversy as to the amended claim of the reissue and also upon the question of infringement; (3) an apparent apathy on the part of the patentee regarding his rights for many years following his invention; (4) no decision of any court establishing the validity of the patent; (5) no royalties or license-fees paid to the patentee; (6) no general use; (7) no present manufacturing or vending under the patent; (8) no public recognition; (9) large interests of the defendants jeoparded; (10) no allegation of irresponsibility. On the contrary, the courts have frequently regarded the existence of a few of these circumstances as sufficient to authorize a denial of the application. Fish v. Sewing Machine Company, 12 Fed. Rep., 495; Neilson v. Thompson, Webst. Pat. Cas., 278; Brown v. Hinkley, 6 Fish., 370; Robertson v. Hill, Id., 468. For these reasons the court would not be warranted in granting a preliminary injunction.

Motion denied.

[United States Circuit Court-District of Connecticut.]

COTTER v. NEW HAVEN COPPER COMPANY ET AL.

Where defendants' process is not the patented process, but omits a patented step, and in its stead includes one which the patentee intended to avoid, it is not an infringement.

Mr. John S. Beach, Mr. George Harding, and Mr. Charles E. Mitchell for the plaintiff.

Mr. Benjamin F. Thurston and Mr. Charles R. Ingersoll for the defendants.

SHIPMAN, J.:

This is a bill in equity to restrain the defendants from the alleged infringement of reissued letters patent, dated October 16, 1877, to Andrew O'Neil, assignor to Samuel A. Cotter, for an improvement in preparing sheet-copper for boilers and other vessels. The original patent was

granted to Mr. O'Neil as inventor on April 6, 1869.

Prior to the date of the original patent tinned sheet-copper for the manufacture of culinary utensils was furnished to the coppersmith in the form of a soft sheet of copper tinned on one side, and the copper side discolored by the action of the heat and acids employed in the tínning process. This soft, porous, flexible sheet was then made dense aud hard by tedious and expensive hand hammering, or "planishing," as it was called, which consisted of hammering the sheet upon an anvil with hammers of a curved surface to make the sheet dense, and then with hammers of a plane surface to smooth and brighten it. Tinned copper had been also sometimes cold-rolled or passed through polished rolls, whereby the sheet was made more dense; but the form in which the coppersmith generally received the sheet for manufacture into utensils was the one which has been described. Sometimes the discoloration was attempted to be removed by the use of acid. Mr. O'Neil, in 1867, received letters patent for a tinned copper sheet prepared in this way. A varnish, made after a prescribed formula, was applied with a brush. to the copper side of the tinned sheets in the rough state" without subjecting them to any acid bath, scouring, plauishing, or any other chemical or mechanical preparation." The varnished sheets, when dry," were passed through highly-polished rolls of steel or case-hardened or chilled iron." In 1869 the original of the reissue, which is now in suit, was granted to Mr. O'Neil.

The specification describes the invention as follows:

The object of my invention is to prepare for market tinued copper sheets, with smooth and uniform and permanently-lustrons surfaces, without artificial coloring. Sheets of tinned copper, as now usually prepared for pot-bodies, acquire a discolored, stained, and mot led appearance by the oxygenating agency of the heat and acids employed in the process of tinning; and to these causes of disfigurement there is often added that arising from the overflow of the tin itself on to the copper side. This disfigurement is now sought to be removed by acids, which in turn "cut" the tin and initiate rust, and by tedious and costly mechanical abrasion, which consumes much time and material. In consequence of the above, it is frequently necessary to retin the interior of the vessels after they are made up, which reproduces the evils above alluded to. To the above evils there is cominonly added that of unevenness of tiuned surface, due to hand planishing or stripping, the tin being found to wear rapidly away from the ridges or eminences.

10452 0 P-12