Page images

“(1) The hereinbefore described process of enameling and ornamenting metal ware, which consists in first covering the body of the article with a glaze of any suitable plain color, firing the same, then applying to the surface an additional coating or partial coating of glaze, of a different color from the first, the glaze constituting the second coating or partial coating being of such a consistency as to coagulate in irregular spots upon the surface, and again firing, as set forth. (2) As a new article of manufacture, an enameled vessel presenting a mottled or variegated surface of two or more colors, produced by the coagulation in irregular spots of one or more of the coatings of glaze, substantially as set forth."

The principal defenses are, insufficiency of the specification, anticipation, want of invention and noninfringement. The proof shows that in order to produce the mottled appearance referred to the enamel must be ground coarse, and the defendant argues that the specification is defective because it omits all reference to coarse grinding. The argument in this regard is admirably summarized in the defendant's brief as follows:

“The patent says that all that is necessiury is a thin glaze. There is no sug. gestion that it is to be ground in any different way from ordinary glaze. Ordinary glaze is ground fine. Any person re:ding the patent, and finding that nothing was said in the patent to the effect that the glaze should be ground differently from ordinary glaze would naturally grind the glaze fine. If he did so it is xidmitted that he could not carry out the process of the patent in suit. He would be left to find out by experiment what else was necessary. He might discover that coarse grinding was necessary and he might not."

The paragraph of the specification which is pointed out as partie :1larly imparting the desired information is this: "I prepare a thin glaze composed of any coloring matter that can be made to remain mechanically suspended a short time in water.” That this statement is not as perspicuous as it might be may as well be admitted. Undoubtedly Irving or Hawthorne could have done better. But the de. scription is not addressed to rhetoricians or lawyers, but to enamel

I am inclined to think that a competent enameler, reading the language quoted in the light of the avowed purpose of the patentee to produce irregular spots upon the smooth surface formed by a coating of enamel applied in the ordinary way, would have little difficulty in finding the patented process. He would know, first, that the second glaze must differ from the first glaze; second, that it must be capable of separating and coagulating in irregular spots; third, that it must be thin, and, fourth, that the coloring matter must remain mechanically suspended a short time in water. When to the information of the patent he added the information of his vocationthat fine ground enamel remains suspended a long time in water and that coarse ground enamel remains a short time only—it would naturally occur to him that a glaze that would coagulate, that was thin, that contained coloring matter which would remain suspended a short time, must be made with coarse-ground enamel. If the specification had declared that the enamel was to remain suspended "only a short time,” the description would have been sufficient. This is hardly denied. One familiar with the art would, it is thought, have no difficulty in supplying the missing word. The sentence so constructed obviously expresses the meaning of the patentee. It is argued by the defendant that the true construction should be: "I prepare a thin glaze composed of any coloring matter that can be made to remain mechanically suspended at least a short time in water.” That is to say, the patentee informed the skilled operator that he must use enamel that may remain suspended for hours, but must remain, at least, for a short time. If it sinks immediately to the bottom it will not do. This contention would be more plausible if enamelers had been in the habit of using powders which sank immediately when placed in water, but they had not. They were not familiar with such coloring matter. The powder ordinarily used by them was very fine, almost inpalpable, and remained suspended a long time. "The main object in enameling always was to grind enamel as fine as possible." If the patentee had thought that his process could be practiced by using the old and well-known coloring matter he would have said nothing on the subject. It was not necessary to guard enamelers against the use of powders that sank too soon, but against those that did not sink soon enough. It was the use of powders that remained too long suspended—the only ones then employed—that the patentee wished to prohibit. The skilled workman reading the patent would, then, have reached the conclusion that he must use coloring matter which will remain suspended but a short time. He knew that the only way to produce this result is to grind the enamel coarsely. The patentee is criticised be. cause he did not say this frankly. He should, it is argued, have made the plain statement, “The enamel must be ground coarse.” But this would have subjected him to other attacks equally well founded. “What is meant by 'coarse?'“How coarse should the enamel be?" "By what standard is the workman to he guided in grinding ?” Is it not probable that all this occurred to the patenter or his solicitor, alid that he thought he had taken the wisest and safest course when he said that any coloring matter that remains mechanically suspended a short time will answer the requirements of the patent? May he not have thought that he was thus furnishing an infallible and uniform rule for guidance of the grinder? Where a patentee has made a meritorious invention the court should not be overzealous in trying to defeat him by an illiberal construction of the patent. On the contrary the court should seek a construction which gives life to the patent and protection to the inventor. I am, therefore, of the opinion that the specification, though it might have been more specific, is still sufficient.

Is the patent anticipated by the Vollrath process? In considering this question it is well to keep in mind the rule upon this subject. He who alleges prior use must establish it by the same high class of testimony which a prosecuting attorney is required to produce in a criminal cause. He holds the affirmative of that issue and must prove it beyond a reasonable doubt. If the evidence is susceptible of two interpretations, the one sustaining and the other destroying the patent, the court must accept the former. See authori. . ties cited in Mack v. Spencer Manuf'g Co., 52 Fed. Rep. 819. Without discussing the testimony in detail, the reasons which led the court to reject it, as failing to establish anticipation, may be briefly summarized as follows:

First, the witnesses were attempting to describe a complicated process practiced by them from 10 to 15 years ago. The infirmities of the human memory are such that perfect accuracy in such circumstances can hardly be expected.

Second, the witnesses do not agree as to the important steps of the process, the composition of the enamel or the object they had in view. Vollrath himself, who should be informed upon the subject, describes a process very different from that of the patentee.

Third, the specimens of the Vollrath process introduced in evidence are crude and ungainly. They are no more to be compared to the beautiful and artistic exhibits said to be made by the Kegreisz process than the scenery of a theater is to be compared to the Sistine frescoes.

Fourth, the statement made in Vollrath's patent of 1881, that

"In all known processes the marbled, mottled, or spotted appearance of the enameled surface is caused by the oxidation of the metal surface during the operation of drying the enameling composition thereon."

Is it possible that he could have made such a statement if the Kegreisz process had been known and practiced by him four years before?

And, lastly, the fact that Vollrath is a licensee under the Kegreisz patent, which would seem wholly incompatible with the theory that Vollrath and not Kegreisz was the first inventor.

None of the prior patents or publications describes the patented process, or advances perceptibly the defendant's case from the point where it was left by the Vollrath testiniony. They all describe methods of producing pleasing effects in enameling, but they proceed upon different lines from the Kegreisz process.

Does this process involve invention? One way to test invention is this: Imagine the art with the contribution made by the patent entirely eliminated from it. Blot out all that the patentee has done, and then ask the questions, Has the world lost anything? Is the art poorer than it was before? Can mechanical skill make good the loss? If it appears that the public has been deprived of something which it used, admired, and demanded, and that there is nothing else in existence which can be substituted for that which has been taken, it is quite safe to assume that the patentee has made an invention,

Apply the test here. Take out of the art what Kegreisz has done, and it is plain that a void would be created that could not be filled by anything that Vollrath or the others have contributed. Kegreisz was the first to perfect the process and make it a commercial success. The goods made under it are pleasing and ornamental in appearance, and have becoine popular with the public. Against all that is said in hostility to the patent may be set the fact that those operating under the Kegreisz process were the first to make an assured success in this art. Nothing made before is worthy to be compared in beauty of ornamentation to the articles made by the complainant. It would be running counter to the recent decisions of the supreme court to deny patentability to the Kegreisz patent.

Infringement is sufficiently established. It is admitted that the articles introduced to establish infringement were made by the de. fendant. The process used by the defendant is the same as that described in the patent, with one step added which is not described, After the vessel to be enameled has been dipped in the glaze the operator shakes it, and by this means produces the desired result quicker than when the shaking is omitted. That the process can be practiced without this additional step is sufficiently demonstrated. It was a well-known fact among enamelers that this manipulation would save time, and it is thought that one who applies it to the process in question does not thereby escape infringement. He does not use the process any the less because he uses something in addition to the process. Even if it be assumed that the defendant has intro duced an improvement, it is an improvement upon the Kegreisz process, and so long as the defendant uses that process it must be treated as an infringer.

The complainant is entitled to the usual decree.


[ocr errors]

(Circuit Court, S. D. New York. December 22, 1892.) In Equity. Bill by the Lalance & Grosjean Manufacturing Company for infringement of a patent. Decree for complainant.

COXE, District Judge. The decision in the preceding cause (53 Fed. Rep. 375) disposes of this cause also. It is conceded that the defendant sold the articles in proof made by the Habermann Company. The second claim is intended to cover the product of the process described in the first claim, and, thus limited, I think it is valid and that the defendant has infringed.

The coinplainant is entitled to the usual decree upon the second claim

DE LAMATER et al. v. DEELEY et al.


Reissued patent No. 9,414, granted October 12, 1880, upon original pat-
ent No. 226,052, issued March 30, 1880, to John Ericsson for an air engine,
is invalid because the assignees of the inventor made and sold several ma-
chines substantially the same as that of the patent more than two years
prior to the application.
In Equity. Suit by William de Lamater and others against Robert
Deeley and others for infringement of a patent. Bill dismissed.

W. C. Witter and R. N. Kenyon, for orators.
Chas. G. Coe, for defendants.

WHEELER, District Judge. This bill is brought upon letters patent No. 9,414, reissued October 12, 1880, for original patent No. 226,052, dated March 30, 1880, and granted to John Ericsson, assignor, on an application filed February 19, 1880, for an air engine. The principal defense is that the machine had been in public use and on

sale for more than two years prior to the application. The proofs clearly show that C. H. de Lamater & Co., assignees of the invention, made several of these engines, and set up one for Jonathan Thorne, charged it to him, and sent a bill of it, which he paid by check October 6, 1875; that they sold another to Russell H. Hoadley in the summer of 1877, for which he paid $250; and that they sold some others; but these sales are the most significant. The plaintiffs claim that these engines were sold among friends for experimental use; but they were sold without reservation, and the experiment seems to have been more to see if unskilled persons could operate them than for the improvement of the machines. In Egbert v. Lippmann, 104 U. S. 333, the use of a pair of corset steels presented by the inventor to a friend was held to be sufficient to avoid the patent. The case at bar differs from Manufacturing Co. v. Spragnie, 123 U. S. 249, 8 Sup. Ct. Rep. 122, where the sale was of the product of the machine itself. The court there said:

"A single sale to another of such a machine as that shown to have been in use by the complainant more than two years prior to the date of his application would certainly have defeated his right to a patent."

The engines sold were like those of the patent in all respects, except that in those a walking beam moved by the working piston was crooked, and at its end worked a pump at the side of the cylinder, while in those of the patent the walking beam is straight, and works the pump at the side of the cylinder opposite to the pivot of the walking beam; and in those the rod of the exchange piston was connected with the ends of a forked lever by a straight crosshead on the piston rod, and straight rods from the ends of the crosshead to the ends of the forked lever, while in those of the patent this connection is made by arched rods between the ends of the forked lever and the head of the piston rod. The walking beam was made straight in one of the first engines; the arched rods first appear in the application for the patent. The arched rods are better than the crosshead and straight rods were, and the straight walking beam is better where there is room for it than the crooked one was, but they do the same things in the same way. All the claims are for combinations of parts in such an engine; and the crosshead and straight wds were equivalents for the arched rods, and the crooked walking beam for the straight one, wherever found in these combinations. Those engines sold would have been full infringements of the patent. These absolute sales of these engines by those acting under the inventor, without reserve, more than two years before the application, appear to be a full answer to the patent.

Let a decree be entered dismissing the bill, with costs.

« EelmineJätka »