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reasoning, in the minds of those who had become acquainted with the circumstances with which they had to deal.” But the reasoning of Mr. Justice Mathews in that case is inapplicable to the invention now before us. It rests upon the fact that as soon as the evil which the patented improvement he was speaking of remedied, became known, and the result attained by it became desirable, the improvement was immediately suggested. Thus, further on in the opinion, he said:

“As soon as the mischief became apparent, and the remedy was seriously studied by those competent to deal with the subject, the present regulation, which embodied the improvement, was promptly suggested and adopted; just as a skilled mechanic, witnessing the performance of a machine, inadequate, by reason of some defect, to accomplish the object for which it has been designed, by the application of his common knowledge and experience perceives the reason of the failure, and supplies what is obviously wanted. It is but the display of the expected skill of the calling, and involves only the exercise of the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice."

But the evil which the complainant's invention remedied had been apparent for years. The useful result his invention attained must have been sought by generations of skilled bookkeepers, and their common knowledge and experience had never suggested this improvement. It had been apparent to all men manipulating the account books of banks ever since such books existed that it was desirable to make the last balance column of figures on the margin of the right-hand page of the open book the first column on the succeed ing page, and thus to obviate the necessity of copying and recopying it whenever two pages were filled, and it became necessary to turn the leaf; but skilled bookkeepers, supplied with the special knowledge of their calling, "and the facility of manipulation which results from its habitual and intelligent practice," had gone on, from generation to generation, copying off this last column, turning the leaf, and then recopying it on the succeeding page, and no one of them, during all the time since such account books have been in use, by any display of the expected skill of his calling, or by the exercise of his faculties of reasoning, had ever arrived at the conclusion that complainant's improvement would accomplish its beneficial result until he discovered and made known his invention. The probative forcu of this fact, added to the presumption arising from the letters pat. ent, satisfies us of the novelty and patentability of this invention. If the display of the expected skill of the calling or the exercise of the ordinary faculties of reasoning had been sufficient to discover and put in practice this improvement, some bookkeeper would have dis. played that skill or exercised those faculties, and thus obtained this result long ago. These were not sufficient. It required something more to attain this result; it required the exercise of “that intuitive faculty of the mind, put forth in the search for new results or new methods, which creates what had not before existed, or brings to light what lies hidden." This faculty the complainant exercised, and the result is this invention,-an invention, it is true, that now seems so simple that we marvel that it did not before occur to every bookkeeper, but one that clearly did not, and that is of such obvious utility that complainant is equitably, as well as legally, entitled to the full protection of his franchise. Loom Co. v. Higgins, 105 U. S. 580, 591; Consolidated Safety Valve Co. v. Crosby Steam Gauge & Valve Co., 113 U. S. 157, 179, 5 Sup. Ct. Rep. 513; Magowan v. Packing Co., supra; The Barbed Wire Patent, supra.

The technical claim of the defendant that this invention is not patentable because it is not embraced within the terms of the patent laws is without merit. The statute provides that “any person who has invented and discovered any new and useful art, machine, manufacture, or coinposition of matter, or any new and useful improvement thereof, may obtain a patent therefor," when his invention or discovery is made under the circumstances proved in this case. tion 4886, Rev. St. It is not perceived why one who invents a new and useful improvement in the manufacture of bank account hooks is not equally entitled to a patent with one who invents an improve. ment in the manufacture of barbed wire for fencing, of packing for the stuffing boxes of pistons, of safety valves for engines, of looms for weaving cloth, or of any other article upon improvements in the manufacture of which the supreme court has sustained patents.

A single question remains: Do the facts that the copartnership styled the Bank of Fargo was permitted to use the patented invention for seven months before the application for a patent was filed, and that the defendant subsequently succeeded to their business and property, confer upon it an implied license to make and use new account books, embodying the patented invention? The application for this patent was filed December 31, 1886. The Bank of Fargo first applied the invention to their account book June 2, 1886, and used it thereafter with complainant's consent until the firm was dissolved, January 1, 1887. The defendant corporation was organized and commenced business on that day. It succeeded to the business, account books, and assignable assets of the Bank of Fargo, and this old account book and perhaps others embodying the invention were used by the defendant with complainant's consent until January 1, 1888. In 1888, 1889, and 1890 it used the invention in its account books, and paid complainant royalty therefor. The defendant claimed, and the court below held, that under this state of facts the defendant held an implied license to make and use account books embodying this invention without liability to complainant under section 4899 of the Revised Statutes, which provides that “every person who purchases of the inventor or discoverer, or with his knowledge and consent constructs, any newly invented or discovered machine, or other patentable articles, prior to the application by the inventor or discoverer for a patent, or who sells or uses one so constructed, shall have the right to use, and verd to others to be used, the specific thing so made or purchased without liability therefor.” This claim was unfounded, and the court below erred in sustaining it. The defendant did not purchase, construct, or use any article embodying the complainant's invention before he filed his application for a patent, since it did not come into existence until after that filing. Whatever license it had it derived from the dissolved copartnership

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by purchase or assignment; but the only right the partnership had was the statutory privilege of using, and vending to others to be used, the specific patentable thing they had made with complainant's consent. This was not a grant of any portion of the franchise; it vested no title or interest in any part of the patent in the copartnership; it did not grant an exclusive right in the whole or in any specific part of the territory of the United States; it did not give an exclusive right or privilege in anything; it was a mere naked license, personal to the copartnership, and incapable of assignment or transfer. The members of the copartnership could convey, and the succeeding corporation could take, nothing under it by purchase, assignment, or succession, unless it might be the right to use the old account book until it was filled, and that was accomplished early in the year 1887 without objection from any one. Thus, in Hapgood v. Hewitt, 119 U. S. 226--234, 7 Sup. Ct. Rep. 193, where an employe of a Missouri corporation engaged in the manufacture of sulky plows invented cer. tain improvements thereon, which the corporation, with his consent and assistance, embodied in the plows it manufactured and sold before he filed any application for a patent thereon, and that corporation was subsequently succeeded by an Illinois corporation, composed of the same stockholders, to which all the business and property of the former corporation were assigned and transferred, it was held that whatever license the former corporation derived from these facts was confined to it, and could not be transferred to its successor. Again, in Locke v. Bodley Co., 35 Fed. 289--294, an employe of a copartnership invented, perfected, and assisted his employers in manufacturing and reducing to practice an improvement in stop valves before he filed his application for the patent, which he subsequently obtained thereon. One of the partners died, and a corporation, in which the surviving partners owned all the stock, except 30 shares reserved for its employes, succeeded to the business and property of the firm, and to it the surviving partners assigned all the firm assets; but in a suit against the corporation for infringement these facts were held to confer upon it no right to use the patented improvement. To the same effect are Nail Factory v. Corning, 14 How. 193--216; Oliver v. Chemical Works, 109 U. S. 75--82, 3 Sup. Ct. Rep. 61. The result is that the implied license conferred upon any person who purchases of the inventor or discoverer, or with his knowledge or consent constructs, any newly invented or discovered machines or patentable articles prior to his application for a patent therefor, and within two years thereof, to use, or to vend to others to be used, the specific thing so made or purchased without liability therefor by section 4899 of the Revised Statutes, is a mere personal license, and is incapable of assignment or transfer. The defendant, therefore, was not protected by the implied license to the copartnership that preceded it in business, and the decree below is reversed, with costs, with instructions to enter a decree in favor of the complainant for a perpetual injunction, damages, and costs.

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HUNT BROS. FRUIT PACKING CO. v. CASSIDY.

(Circuit Court of Appeals, Ninth Circuit. October 24, 1892.) 1. PATENTS FOR INVENTIONS — INFRINGEMENT - OPINION – EVIDENCE – DRYING

APPARATUS.

In an action for infringement of a patent for improvements in fruit dryers, the patentee, after stating that he had been engaged in mechanical pursuits, had seen many different dryers. and had sufficient knowledge of mechanics to permit him to give an intelligent opinion as to the cost of a piece of machinery when he saw it, was asked which in his judgment would be the cheaper to construct, his or ihe alleged infringing dryer. Held, that the question was not objectionable, on the ground that the witness had said he did

not know the cost of the infringing dryer. 2. SAME-INVENTION-BURDEN OF PROOF-DIRECTING VERDICT.

The existence of letters patent issued in due form constitutes prima facie evidence of the validity of the patent, and where, in an action at law for in. fringement, such letters are introduced, an alleged want of invention is matter of defense, the burden of showing which is on defendant; and the court cannot direct a judgment for defendant, even though the patentee, on crossexamination, bas given evidence that may tend to show a prior state of the

art excluding invention on his part. 3. SAME-INFRINGEMENT-INSTRUCTIONS-QUESTIONS FOR JURY.

Whether there was invention in the patent, whether plaintiff was the first inventor, and whether the use of gravity catches as mechanical equivalents of spring catches was known at the time of plaintiff's application, were ques.

tions of fact for the jury 4. SAME-DISCLAIMER-MECHANICAL EQUIVALENTS.

In letters patent No. 172,608, issued January 25, 1876, to John W. Cassidy, for an improvement in fruit dryers, the patentee first claimed “spring or other catches." but, on an objection that his application was not in proper form, amended by striking out “or other.Held, that this was not a disclaimer of gravity catches, which were known mechanical equivalents for

spring catches. 6. SAME-NOMINAL DAMAGES-EVIDENCE.

Plaintiff, owning a patent for two improvements in fruit dryers, sued for the infringement of but one. Held, that nominal damages only were recoverable, where the evidence showed only the amount of a license fee for both devices; and the profits to be made in manufacturing fruit dryers containing

both improvements. 6. TRIAL-INSTRUCTIONS—WAIVER OF OBJECTIONS.

An exception to the court's refusal to direct a verdict for defendant at the close of plaintiff's evidence is waived by proceeding in the cause, and introducing evidence for the defense. Railway Co. v. Cummings, 1 Sup. Ct. Rep. 493. 106 U. S. 700, and Insurance Co. v. Crandal, 7 Sup. Ct. Rep. 685, 120 Ú. S. 527, followed.

In Error to the Circuit Court of the United States for the Northern District of California.

At Law. Action by John W. Cassidy against Hunt Bros. Fruit Packing Company to recover damages for infringement of patent. Judgment for plaintiff. Defendant brings error. Reversed.

M. A. Wheaton, I. M. Kalloch and F. J. Kierce, for plaintiff in error. John H. Miller, for defendant in error.

Before MCKENNA, Circuit Judge, and ROSS and KNOWLES, District Judges.

KNOWLES, District Judge. Defendant in error instituted suit in the circuit court of the United States for the northern district of

V.53F.no.2-17

California for an infringement upon his letters patent for improvement in a drying apparatus for drying fruit.

The allegations in the declaration are: “Tbat said invention related to an improved device for desiccating fruit and other substances by means of artificial heat, and consisted, among other things, of a novel means of moving the trays on which the fruit is held within the dry. ing chambers from the time it is admitted until it is removed therefrom, as will more fully appear from the letters patent hereinafter set out, to which reference is here made for a fuller description.

The charge is that defendant“Has wrongfully made, used, and sold large numbers of machines containing and embracing the invention described and claimed in and by the said letters patent.

Turning to the letters patent, we find what are the inventions clained by Cassidy. He says:

“First. My invention relates to an improved device for desiccating fruit and other substances by means of artificial beat, and it consists, first, of a novel method of utilizing the heat which passes through flues from the furnace, and by leading these flues around the chamber within suitable pipes or cases, and making certain openings from these cases into the chamber, I am enabled to admit heated air from any or all sides and at different heights between the layers of fruit, while heat is also admitted from the bottom of the chamber or not, as may be desired.

“Second. My invention also consists in a novel means of moving the fruit within the chamber from the time it is admitted until it is again removed.”

In describing this second invention the applicant says: "In order to elevate and support the trays of fruit after they are introduced, I have employed a combination of movable and stationary standards upon two opposite sides of the chamber, and these standards are provided with spring catches, which can be forced inward to allow a tray to pass up, but will return to their places after it passes, and prevent its going down.”

Plaintiff in error says in his brief: “The patent was for alleged improvements in a drying apparatus.” Defendant in error says in his brief: “The patent in suit was granted to John W. Cassidy * and covers im. provements in drying apparatus used for drying fruits, vegetables, and other prod. ucts.

It contains two claims. Infringement is charged of the second only.

Again,“The device covered by the first claim is a system of flues for evenly distributing the heat. No infringement thereof is charged, and it may be dismissed from consideration."

Again,“There is no resemblance whatever between the Alden and Cassidy machines, further than the fact that they are both stack dryers. But the Cassidy claim is not for a stack dryer. It is for a peculiar mechanism to lift the trays of a stack dryer.'

From the foregoing it would appear that there was no contention but that defendant in error's patent was for improvements in fruit dryers, and not for a fruit dryer. In the subsequent consideration of this case this may become important.

Plaintiff in error urges that the circuit court committed an error in allowing Cassidy to give an opinion as to the relative costs between

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