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I have carefully considered the additional evidence as to lack of patentable novelty presented by certain British patents and model exhibits, which it is claimed show a prior use of pedal bars like those of the patent in suit. I do not find in this evidence anything which would lead me to a conclusion different from that reached by the learned judge who tried the case in Maryland. The claim of defective title is not sustained by the evidence.
Under the assignment by the complainant the Overman Wheel Company, of June 10, 1886, the legal title to the patent vested in the complainant the Pope Manufacturing Company, subject only to the reservation by the Overman Wheel Company of the sole right to make pedals . like the infringing pedal. The two complainants, therefore, own ail rights under said patent, and are the proper parties in this suit. Manufacturing Co. v. Clark, supra. The decisions of the United States circuit court and the United States supreme court in Pope Manuf'g Co. v. Gormully, etc., Manuf'g Co., 34 Fed. Rep. 892, and 144 T'. S. 248, 12 Sup. Ct. Rep. 637, are cited in support of the claim that the patent for the invention in suit has been judicially declared invalid, It is true that the Latta patent, therein referred to, does, in the drawings which accompany it, suggest a construction similar in general appearance to that of the patent in suit. It is also true that certain claims of said Latta patent were declared invalid by the circuit court in the above case, and that, in the opinion of the United States supreme court, affirming the decree of the circuit court, it said: "If there be any novelty at all in the Latta patent, it must receive such an exceedingly narrow construction that the defendant cannot be held to have infringed it.” But it appears upon examination of the Latta patent that none of its claims embrace the invention of the defendant. It further appears that the second and third claims of said patent, being the claims which defendant in above cases was alleged to have infringed, are for pedal bars coated with rubber, longitudinally grooved. This form of pedal bar was expressly disclaimed as old by the patentee of the patent in suit. I have been unable to adopt the construction of the above decisions claimed by defendant's counsel. But, if there is any force in the claim that, by such construction, the decision of the Mary and court has been virtually erruled, this claim is one which may more properly be presented to and passed upon by the appellate court. I shall therefore follow the rule as stated in Brush Electric Co. v. Accumulator Co., 50 Fed. Rep. 833.
“The rule is well established that where, as the result of a contested controversy, letters patent have been sustained, preliminary injunctions will be granted against infringers, as a matter of course, by the court which has adjudged the letters patent valid, and, as a matter of comity, by the federal courts in other circuits."
The motion for the preliminary injunction is granted.
THOMSON v. CITIZENS' NAT. BANK OF FARGO.
CITIZENS' NAT. BANK OF FARGO V. THOMSON.
Nos. 156, 167.
Letters parent No. 385,648, July 3, 1888, and reissued letters patent No. 10,977, December 25, 1888, issued to Walter Thomson for an improvement in the manufacture of bank account books, whereby the short leaves are creased or perforated for folding in such a manner as to transfer the column of balances on the right-hand page to the succeeding left-hand page, are valid, as even skilled bookkeepers had not previously discovered it, although the device is so simple and obvious, as well as useful, that it would seem that it should have been always known and used. Hollister y. Manu
facturing Co., 5 Sup. Ct. Rep. 717, 113 U. S. 59, 72, distinguished. 2. SAME-SCOPE OF PATENT LAWB.
A new and useful improvement in the manufacture of bank account
books is embraced within the terms of the patent laws. 8. SAME-LICENSE-NONTRANSFERABLE.
A copartnership conducting a bank was permitted to use an Improvement in bank account books for seven months before application for a patent was filed, which was done December 31, 1886. The firm was dissolved January 1, 1887, and succeeded by a corporation which used the old account book, and perhaps other similar books, with the patentee's consent, during 1887. In 1888, 1889, and 1890 it paid a royalty for all such books used, though purchased in part from unlicenzed makers. Thereafter it used the books, but paid no royalty. Held, that the implied license to the co partnership under Rev. St. $ 4899, was incapable of assignment or transfer, and that the corporation infringed. Appeals from the Circuit Court of the United States for the District of North Dakota.
In Equity. Bill by Walter Thomson against the Citizens' National Bank of Fargo, N. D., for infringement of letters patent. The circuit court held the patent valid, but dismissed the bill. Complainant appeals, his cause being numbered 156. Defendant also appeals, his cause being numbered 167. Reversed, and decree directed for complainant.
Statement by SANBORN, Circuit Judge: These are cross appeals from a decree dismissing a bill in equity brought by the patentee in original letters patent No. 385,048, dated July 3, 1888, and reissued letters patent No. 10,977, dated December 25, 1888, for an inprove ment in the manufacture of bank account books, against the Citizens' National Bank of Fargo for infringement. The patented improvement consisted in constructing each of the short leaves of bank account books, by so ruling and perforating or creasing them, that the margins thereof could be conveniently folded back upon themselves, and made thus to disclose a column for the entry of balances of account on the pages preceding those to which these columns belonged, so that when the leaves were unfolded the columns thus disclosed would appear on the pages succeeding those upon which they appeared when the leaves were folded.
The state of the art prior to this invention was such that bank account books had long been manufactured with long and short leaves. On the margin of each long leaf, on the left-band page of the open account book, were usually written the names of those haring accounts with the bank. The remainder of this page and the right-hand page were generally divided by perpendicular lines into six spaces, to accommodate the business of the six days of a week, and each of these spaces was again divided by like lines into three columns, for the entry, opposite their names, of the checks, deposits, and balances of the customers, respectively. One or more of the leaves succeeding each long leaf was so far shortened that when turned to the left its margin would fall upon the line on the long leaf that separated the space where the names were written from the columns for the accounts. This shortening of these leaves obviated the necessity of rewriting the names upon the short leaves as they were turned, but, when the right-hand page had been filled, it was necessary to rewrite upon the next page the last column, which contained the balances of the accounts, as a basis for their continuance, and to accomplish this the bookkeeper must continually turn the leaf as he proceeded, or must copy off the entire column upon a separate piece of paper, and then recopy it upon the sueceeding page. To obviate the necessity of thus rewriting this columa jf balances, and to transfer it without copying from the margin of the right-hand page of the book to the margin of the succeeding left-hand page, was the object of complainant's invention. This he accomplished by so ruling and then creasing or perforating each of the short leaves in a line parallel to its margin, and at such a distance therefrom, that by folding it upon itself it disclosed upon the right-hand page of the open book and in the proper location of the last column of balances thereon, the first column on the succeeding left-hand page, which was ruled for the column of balances. When any leaf was thus folded back, and this column filled, the simple turning and unfolding of the leaf transferred this column of balances to the succeeding page. After describing in his specifications the usual construction of bank account books, his improvement in their manufacture, and its advantage, vith proper references to figures attached illustrating it, the patentee claimed:
"(1) The bank account book, A, having a suitable number of full leaves, C, and alternate series of short leaves, B, each of said short leaves having margin, b, creased or perforated at h' substantially as and for the purposes set forth.
“(2) The bank account book herein described, composed of alternate long and series of short leaves, the several long leaves prepared to receive the depositors' names on the left-hand side, and both also prepared to receive the accounts for several successive days, the right-hand end of each of said short leaves having a margin adapted by folding to receive the last day's balance, so that when the leaf is turned, and said 'nargin straightened out, said balance fornis the beginning of the next day's account on the next page:"
The application for the original lettr's patent was filed December 31, 1886. The defendant was organized as a national bank January 1, 1887. It succeeded to the business, books, and bookkeeper of the Bank of Fargo, which was a copartnership. Complainant ordered the first book containing his improvement in April, and received it in May, 1886, and the bookkeeper of the Bank of Fargo, who got his first idea of this improvement from complainant, commenced June 2, 1836, to transfer his balances on the account book he was using, without rewriting, by folding the short leaves of his account book to the right, and continued tu lise this book in that way, with the knowledge of, and without objection from, complainant, during that year and the next, until the book was filled. The complainant arranged with certain manufacturers to make and sell bank account books containing his invention in 1887, and the defendant bought its account books for 1888 and 1889 of these manufacturers. Defendant ordered from unlicensed manufacturers in 1889, and used in 1890, account books containing this intention, and paid the complainant a royalty thereon. Defendant ordered from unlicensed manufacturers in 1830, and used in 1891, account books containing this invention, and for this infringement this suit was brought.
The circuit court held the patent valid, and this holding the defendant assigned as error. That court held that, "within two years prior to the application for the patent by Walter Thomson, the Bank of Fargo, the predecessor of the defendant, made and used a bank account book with the knowledge and consent of Thomson, the said patentee, embodying substantially the same devices embraced in and protected by said reissued letters patent No. 10,997, and the defendant, as successor of the said Bank of Fargo, has a right to make and use, and to continue to make and use, the thing invented, the right to which is secured in said patent, without liability therefor," and on that ground dismissed the bill, and this holding is assigned as error by the complainant.
C. E. Joslin, for Walter Thomson.
Before CALDWELL and SANBORN, Circuit Judges, and SHI. RAS, District Judge.
SANBORN, Circuit Judge, (after stating the facts.) Letters pat. ent grant a public franchise, giving to the inventor some compensation for the exercise of his inventive genius in the discovery of, and his labor and ingenuity in reducing to practice and describing, novel and useful inventions, by which the public may attain beneficial results with less expenditure of time and labor. From every patented invention of value the compensation derived by the inventor is small in proportion to the benefit conferred upon the public. The inventor's reward is limited to a few years, at most, while the benefit to the public continues forever. No patented invention can, in the nature of things, be valuable to its owner unless it is of greater value to the public even during the term of his franchise, since the latter will not purchase the right to vend or use it unless it is more profitable to do so than to do without it. Letters patent issued under our constitution and laws thus offer the necessary pecuniary inducement to those gifted with inventive genius, without which they would not be able to bestow the thought, time, and toil required to find, perfect by experiment, reduce to practice, and give to the public many of those useful inventions which have enabled us to excel in the manu. facture and use of machinery, and in progress in all the useful arts, that promote the efficiency and comfort of our citizens. The time, thought, labor, and expense that produce a valuable invention are the inventor's, the completed invention which is their l'oduct is his, and when, in consideration of his describing it, and making it useful to the public forever, he is granted the exclusive right to use and vend it for a limited time, this franchise should not be regarded as a monopoly conferred on him at the expense and to the prejudice of the public, but as a just and fair consideration, granted for valuable services rendered, which both equitably and legally entitle him to the same protection for this property that the owner of any other species of property enjoys.
The defendant, after recognizing and paying for the use of com. plainant's invention for three years, infringed it in 1891, and seeks to justify its course on the ground that the patent is void for want of novelty, and that its predecessor in 1886 used the invention without objection from the complainant.
The letters patent were prima facie evidence of the novelty of the invention, and no evidence was produced that it had ever been known, described, or practiced before complainant discovered it. A glance at the patent and the invention itself, and the fact that defendant used and paid a royalty for the use of it for three years, and now infringes, sufficiently establish its utility.
The mere fact that the patented invention is but a combination of old ingredients or materials is not a tenable objection to the patent, since it is a general rule that a patentable invention may con
sist entirely in a new combination or arrangement of old or well. known ingredients or elements, provided a new and useful result is thereby attained. Seymour v. Osborne, 11 Wall. 516, 542, 548; Rees v. Gould, 15 Wall. 187, 189.
That after the discovery and practice of the invention it seems so simple and obvious that the wonder is that it had not been always known and used is not always conclusive evidence that it has not sufficient novelty to be patentable, especially where the desirability of the useful result attained must have been long obvious to all persons skilled in the art or manufacture to which it pertains, but no one discovered or practiced it before the patentee. In The Barbed Wire Patent, 143 U. S. 275, 281, 283, 12 Sup. Ct. Rep. 443, the Glidden patent for the coiled barb in combination with the twisted wire, by which the barb is clamped and held firmly in position, was sustained, although strands of wire twisted together had long been used for fencing, and the older patent of Kelly described a wire fence composed of twisted wires and a two-prong diamondshaped barb, with a central perforation, by which it was strung upon one of the wires, and afterwards fastened in place by the blow of a hammer. From this invention of Kelly to the coiled barb and twisted wire of Glidden, clamping the barb rigidly in place, is a slight advance, and it now seems obvious that the twisted strands would hold the barb coiled upon one of them rigidly in place; but no one seems to have perceived this fact, and put the twisted wires and coiled barb to this beneficial use, until Glidden conceived the idea, and thus utilized it, and the supreme court sustained his patent with the remark:
"It may be strange that, considering the important results obtained by Kelley in his patent, it did not occur to him to substitute a coiled wire in place of the diamond-shaped prong, but it evidently did not; and to the man to whom it did ought not to be denied the quality of inventor."
In Magowan v. Packing Co., 141 U. S. 332, 341, 343, 12 Sup. Ct. Rep. 71, the Gateley patent for “improvements in vulcanized Indi:1 rubber packing" consisted simply in combining and uniting by vul. canization packing described in the prior patent of McBurney, which consisted of alternate layers of canvas and India rubber, and an elastic packing of pure gum, so that the gland of the stuffing box would force the packing with such tightness against the piston r'od that a tight joint would result. The difficulty experienced with the MeBurney packing had been that, as it was worn away by the piste 11 rod, it did not have sufficient elasticity to keep the joint at the piston rod tight at all times. It may seem now that any mechanic skilled ili the art, who observed the difficulty, must, by the exercise of his skill and reasoning powers, have arrived at the now obvious remedy: but no one seems to have done so before Gateley. His discovery was therefore held to be novel and patentable.
Defendant's counsel relies chiefly upon the decision in Hollister 5. Manufacturing Co., 113 U. S. 59, 72, 5 Sup. Ct. Rep. 717, to sustain his contention that the complainant's improvement does not constitute an invention, but is "the suggestion of that common experience, which arose spontaneously, and by a necessity of human