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KNOX ROCK-BLASTING CO. v. DRAKE et al.

(Circuit Court, S. D. New York.

December 31, 1890.)

No. 4,596.

PATENTS FOR INVENTIONS-VALIDITY-PRIOR USE.

Letters patent No. 291,606, issued January 8, 1884, to John L. L. Knox, for "an improvement in methods of and tools for blasting rocks," was not invalidated by any prior use of the invention therein described.

In Equity. Bill by the Knox Rock-Blasting Company against Drake and Stratton for infringement of a patent. Decree for complainant.

The bill charged defendants with infringement of letters patent No. 291,606, ranted on January 8, 1884, to John L. L. Knox, for an improvement in nethods of, and tools for, blasting rocks. Defendants alleged that the patent was invalid by reason of prior use of the invention by others. The claims of the patent, of which infringement was charged, are: "(1) The withindescribed method of blasting rock, whereby the alignment of the fractures upon the opposite sides of the bore is insured, which consists, essentially, in forming longitudinal grooves in the opposite sides of a cylindrical bore, said grooves having equal sides, and so situated as that a plane bisecting twoopposite grooves will bisect the axis of the cylindrical bore, substantially as and for the purposes described. (2) The within-described instrument for cutting grooves in cylindrical blasting bores, said instrument having a hexagonal flat cutting face, two sides, c, parallel, and of the length and distance apart, equal to the sides of a square inscribed within the circle of the cylindrical bore to be operated upon, and cutting edges, a, of equal length, and so situated as that a line joining the points, b, will pass through a point equidistant from the ends of the sides, c, substantially as and for the purposes described."

W. Bakewell & Sons and Kerr & Curtis, for complainant.
Arthur C. Butts, for defendants.

WALLACE, Circuit Judge, (after stating the facts.) It is altogether unlikely that an invention which is so useful and meritorious as the one which is the subject of the patent in suit, and which, as soon as it was patented, and introduced to the notice of quarrymen, was so immediately and generally recognized as an extremely valuable one, would have made no mark, and slumbered in obscurity, if it had been known and used by intelligent quarrymen any considerable length of time before it was patented. The defense of prior use made by the evidence for the defendants is an unusually weak one, tested by the rules which apply to such a defense, and falls far short of the satisfactory demonstration which is required to overcome the presumption of novelty arising from the grant of letters patent. American Bell Tel. Co. v. People's Tel. Co., 22 Blatchf. 531, 536, 22 Fed. Rep. 309. A decree is ordered for the complainant.

WANAMAKER v. ENTERPRISE MANUF’G CO.

(Circuit Court of Appeals, Third Circuit. January 27, 1893.)

No. 16.

1. PATENTS FOR INVENTIONS-COMITY BETWEEN CIRCUITS.

A circuit court should follow the decision of another circuit court upholding a patent, except when new evidence of invalidity is introduced, and in the latter event should confine its investigation to the additional evidence. National Cash Register Co. v. American Cash Register Co., 53 Fed. Rep. 367, followed.

2. SAME-CIRCUIT COURT OF APPEALS.

The rule of comity between circuit courts in respect to decisions in patent cases does not apply to the circuit court of appeals, and the latter court will examine independently all the questions presented by the record.

8. SAME.

The first claim of letters patent No. 271,398, issued to John G. Baker. January 30, 1883, for improvements in mechanism for cutting up plastic or yielding substances, consisting of a machine in which the sole reliance for cutting is upon a knife or other cutting device, operating in conjunction with a perforated plate at the points of discharge from the casing, and in which there is no intentional disturbance of the substance to be cut other than to force it forward before it reaches the plate, is not invalid because of anticipation. 46 Fed. Rep. 854, affirmed. Enterprise Manuf'g Co. v. Sargent, 28 Fed. Rep. 185, and 34 Fed. Rep. 134, approved. 4. SAME-INFRINGEMENT.

This claim is infringed by a machine which contains all of the elements enumerated therein, although there is some unintentional disturbance caused by the forcing apparatus in the substance to be cut before it reaches the plate. 46 Fed. Rep. 854, affirmed.

Appeal from the Circuit Court of the United States for the Eastern District of Pennsylvania.

In Equity. Bill by the Enterprise Manufacturing Company against John Wanamaker, as a seller of a meat-cutting device, for infringement of letters patent No. 271,398, issued January 30, 1883, to John G. Baker, for improvements in mechanism to cut up plastic or yielding substances. The circuit court found that the first claim was valid, and that defendant infringed the same, but that he did not infringe the second claim, and accordingly entered a decree for infringement of the first claim. See 46 Fed. Rep. 854. Defendant appeals. Affirmed.

The first claim of the patent reads as follows:

"The combination, in a machine for cutting up plastic or yielding substances, of the following instrumentalities, namely: First, a casing for containing the substances to be cut up; second, a perforated plate at or near the end of the casing; third, a device for forcing the crude mass forward in the casing and against the said plate without otherwise disturbing the integrity of the said mass; and, fourth, a knife operating against the inner face of the plate, and serving as the sole means, in connection with the said plate, of cutting up the mass by severing therefrom the portions which enter the perforations; all substantially as set forth."

In the opinion delivered by the circuit court it is said:

"The first claim is clearly and precisely stated. Its essential elements are the casing; the perforated plate; the forcing device, which drives the mass forward without otherwise disturbing its integrity; and the knife operating

against the inner surface of the plate, and serving as the sole means, in connection with the plate, of cutting the mass."

The circuit court further said in respect to the alleged infringing device:

"The defendant's machine is accurately described by these terms. It contains each of the elements named. It has in combination the cylinder or casing, a forcing device, a perforated plate, and a knife operating against its inner side, serving as the sole means, in conjunction with the plate, of cutting up the mass. The fingers and cylinder are so constructed that their coaction operates to force the mass forward, while the sharpened edges or flat sides of the former act as knives, and sever the particles of meat or other plastic substance, as they enter the perforations in the plate. In principle, operation, and effect it answers the descriptive terms of the claim. It shows marked structural differences, but they are unimportant."

Horace Pettit, for appellant.

Charles Howson, for appellee.

Before DALLAS, Circuit Judge, and WALES and BUFFINGTON, District Judges.

DALLAS, Circuit Judge. This suit was for infringement of claims 1 and 2 of patent No. 271,398, issued to John G. Baker upon January 30, 1883, for an "improvement in mechanism to cut up plastic or yielding substances." The circuit court decided that the second claim was not infringed, and therefore the first claim is the only one for consideration here. The defenses were and are that the patent is invalid; and that, even if valid, it is not infringed. This claim had been twice before the circuit court for the district of Connecticut, by which its validity was considered,-first on motion for preliminary injunction, and afterwards upon final hearing. On both occasions it was sustained. Enterprise Manuf'g Co. v. Sargent, 28 Fed. Rep. 185, and 34 Fed. Rep. 134. The circuit court here was asked to consider the whole subject anew. This it declined to do, but, accepting the prior decision of the circuit court in Connecticut as determinate of the effect of the evidence upon which it had been based, confined its own investigation to the additional evidence introduced in this case. This was precisely accordant with well-settled and approved circuit court practice. National Cash Register Co. v. American Cash Register Co., 53 Fed. Rep. 367, (decided by this court at this term.) That practice, however, is not applicable to this court; and we therefore have independently examined the entire record before us, irre spective of the decision of Judge Shipman, to which we have referred, and in review of the decree now appealed from. This examination has, nevertheless, fully satisfied us that (so far as presently material) both are right; and the two opinions, taken together, so amply sus tain the conclusion reached by the court below in this case as to render it wholly unnecessary to add anything in its support.

The decree of the circuit court is affirmed, with costs.

ACCUMULATOR CO. v. CONSOLIDATED ELECTRIC STORAGE CO. et al.

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Where a court issues an injunction to prevent infringement of a patent solely upon the authority of a decision in another circuit in a suit between the same parties, it will, on a motion for an attachment for contempt in violating the injunction, follow the construction which was placed upon the patent in such other circuit.

2. SAME-CONTEMPT-EVIDENCE.

In contempt proceedings to punish an alleged violation of an injunction against the infringement of reissued letters patent No. 11,047, granted December 17, 1889, to Joseph Wilson Swan, assignor to the Electrical Accumulator Company, for an improvement in secondary batteries, the question being as to whether, in the plates now made by defendants, the active material, or material to become active, is packed in the perforations of the plate exclusively, or is it also made to adhere to the surface of the plate, the court will not adjudge them guilty of contempt when there is a direct conflict between the expert witnesses as to the fact; for, the proceeding being criminal in its nature, defendant is entitled to the benefit of any reasonable doubt.

In Equity. Bill by the Accumulator Company against the Consolidated Electric Storage Company for infringement of reissued letters patent No. 11,047, granted December 17, 1889, to Joseph Wilson Swan, assignor to the Electrical Accumulator Company, for an improvement in storage batteries. An injunction was heretofore granted on the authority of the decision by Judge Coxe in the circuit court for the southern district of New York in Electrical Accumulator Co. v. New York & H. R. Co., 50 Fed. Rep. 81. The cause is now heard on a motion for attachment against defendants as for a contempt in violating the injunction. Motion denied.

F. H. Betts, for the motion.

William H. Kenyon and C. L. Mitchell, opposed.

GREEN, District Judge. The defendants are charged with the willful violation of the injunction heretofore granted by this court, whereby the defendants were commanded and enjoined

"Forever to desist from directly or indirectly making or causing to be made, using or causing to be used, or vending to others to be used in any manner, any secondary batteries containing or embodying the invention secured to Joseph Wilson Swan on the 17th day of December, 1889, by letters patent No. 11,047, for an improvement in secondary batteries, which invention was described therein as follows: 'A perforated or cellular plate for secondary batteries, having the perforations or cells extending through the plate, and the active material, or materials to become active, packed in said perforations or cells only, substantially as described.'"

It is alleged by the complainants that the structure now made, used, and sold by the defendants is practically the same structure which they were enjoined from using, making, or selling, and that, if such structure is in any respect whatever different therefrom, the difference is an unsubstantial one, introduced for the very purpose

of evasion, and, in effect, still appropriates the essence of the invention secured to Mr. Swan.

The cause in which the enjoining decree of this court was made was never argued or presented to it for adjudication upon its merits. A suit wholly identical in character, between practically the same parties, touching the same invention, and alleging the same acts and causes of infringement, was at issue in the circuit court for the southern district of New York, and was there finally determined in favor of the complainants; the decree upholding the letters patent referred to, in all respects, and sustaining the invention thereby secured to Mr. Swan as clearly having patentable novelty. Electrical Accumulator Co. v. New York & H. R. Co., 50 Fed. Rep. 81. As a result of this adjudication, the defendants were duly enjoined by that court from all further infringing acts. This adjudication being brought to the attention of this court, upon the well-known doctrine of comity, it was immediately followed in this circuit; and, practically without any contest, an enjoining decree similar to the one made in New York was made in this circuit. It follows that the construction which the circuit court in the district of New York gave to the letters patent in this case is the construction supposed to be adopted by this court in its action granting the injunction; and such construction will be adhered to in the consideration of this motion. In fact, upon the somewhat hurried examination that has been given to the matters involved on this motion, I cannot see how any other or broader construction could be given to the letters patent than has been given in the suit referred to by his honor, Judge Coxe. The only claim made by the inventor expressly declares that the main characteristic of his invention, consists in a plate for secondary batteries, having cells or perforations extending through the plate, and the active material, or material to become active, packed in said perforations or cells only. The word “only” clearly means "exclusively," and that the inventor meant, therefore, to say that in his invention the active material, or the material to become active, was to be placed or packed in the perforations or cells of the plate, to the entire exclusion of every other receptacle or part of the plate. Judge Coxe, in his opinion, tersely says:

"The real invention of Swan was the combination of a support, plate, or grid, a perforated plate, with active material so combined therewith as to exist only in the perforations.'

I concur fully in that conclusion.

Adopting, then, this as the true and legal definition of the invention of Mr. Swan, and which the defendants were enjoined from using, making, or vending, does the structure now made and sold by them in any wise infringe it? If it does, they have undoubtedly violated the mandatory order of this court. If it does not, this motion must go for nothing. The defendants place their sole defense to this serious charge upon the fact that not only do they pack the active material in the perforations of a grid or supporting plate, but, as well, and as an essential part of that structure, pack it upon the surface of the plate; and they insist that grids forming part of a storage battery having active material packed, pressed upon, or

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