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3. Because the respondents do not infringe the combination of mechanism patented and employed by the complainants. (Prouty vs. Rug. gles, 16 Pet., 341; Vance vs. Campbell, 1 Black, 428; Gill vs. Wells, 22 Wall., 26.)

4. Because the respondents do not infringe the process patented by the complainants, the rule being that a process, like a combination, is an entirety, and that the charge of infringement in such a case is not made out unless it is alleged and proved that the entire process is employed by the respondents. (Howe rs. Abbott, 2 Story, C. C., 194; Gould vs. Rees, 15 Wall., 193.)

I concur in this dissent.-STRONG, J.

(United States Circuit Court-District of New Jersey )



0. G., vol. xi, p. 740.

In Equity.Before Nixon, J.-Decided March 27, 1877.

Long public acquiescence in the complainant's patent, together with the adjudications

in favor of its validity, are prima facie sufficient reasons for the grant of a prelim

inary injunction when the infringement is palpable. A disclaimer limiting the actual invention of the patentee, the result of an error or

mistake on the part of the Office, may be onitted in a reissue.


The application in this case is for a preliminary injunction; and it is founded upon long public acquiescence in the complainant's patent, and on adjudication in other courts in favor of its validity.

The existence of these facts is prima facie a sufficient reason for the court to interfere by the injunction, pending the litigation, only in those cases where the infringement is palpable. If any reasonable doubt exists upon that point, and especially if the defendant is acting under the authority of a patent, there should be no interference by the court until after the examination and decision in regard to the claims of the conflicting patents upon the merits of the case.

Much controversy was had on the argument concerning the scope of the invention owned by the complainant. The original patent, No. 26,329, was for a new article of manufacture, and was granted to James M. Allen, the assignee of Newman Silverthorn, the inventor, on the 29th of November, 1859, for an “improved boot and shoe tip.". In the speci. fication and claims it was limited to a shoe-tip made of manufactured rubber or gutta-percha. The invention expressly disclaims leather tips or metallic tips, and he enters into a long argument to show why the rubber tips are different and how they are superior.

I am aware she says] that the leather tips have been known and used for a long time, and that metallic tips have been made and patented. I lay no claim to either of these things. I make a tip that is more ornamental than the leather, which it reseinbles very much, and much more durable than leather. Both the leather and the metal are difficult to crimp, fashion, or form, so as to make a veat covering for the toe of the shoe. But the prepared rubber may be molded, fashioned, or formed with great ease and perfection, and with a finish equal to the best patent leather; so also may the gutta-percha be molded into form, the nature of the materials of which my tips are composed being such that it can be readily put into any form or shape and retain its enduring properties, while they admit of a high degree of polish, that adds greater market value to the shoe than the leather or metal tips do. “Patent leather," as it is termed, is exceedingly difficult to crimp or tree into shape for a boot or shoe tip; but a prepared rubber or gutta-percha tip can be molded or formed into the required shape with the greatest facility and finished to bear the greatest resemblance to patent leather, while it is much cheaper, more endurable, and much more readily secured to the boot or shoe; thus in every essential making a better article than either the leather or metal tips heretofore used.

The complainants insist that notwithstanding this broad disclaimer of leather and metal tips, the invention of Silverthorn, in fact, covers them, and that the disclaimer was the result of a mistake or error in the offi. cers of the Patent Office, which was subsequently corrected.

It appears from a record submitted on the argument that on the 16th of May, 1856, Silverthorn filed a caveat in the confidential archives of the office, claiming that he had “made certain improvements in the mode of constructing boots and shoes," and was then "engaged in making experiments for the perfecting the same preparatory to his applying for letters patent therefor.” He therein describes the nature of his invention to consist

In providing the upper on the toes of boots and shoes with fenders of copper, brass, india-rubber, gutta-percha, or any other substance, for the purpose of protecting against grasses, &c., cutting or wearing out the uppers on the toes of boots and shoes, which fender is required to be made so as to fit upon the toe, previous to putting on the outsole, and to extend beneath the outsole far enough to receive the pegs, which are to fasten it on, &c.

He claimed as his invention The application to the toe of boots and shoes, in the manner (therein) described, of any substance that would protect the upper from being cut or worn out by the long grasses, &c., as herein described.

With this caveat pending, on the 16th of December following, one George A. Mitchell filed an application for letters patent for a metallic tip. After describing the mode of making and attaching it to the boot and shoe, he claimed as his invention

The application of a thin plate to the toes of children's, boys', and men's boots and shoes, so as to prevent them from wearing out; using for that purpose the aforesaid metal, or compounds, or any other, substantially the same, which will produce the intended effect.

An interference being declared between them, a large amount of testimony was taken, and the Commissioner of Patents, on the 6th of November, 1857, decided in favor of the priority of the Mitchell invention and granted to him letters patent for the same.

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Silverthorn then withdrew his application, with the condition, however, annexed, that he should not be debarred at any future time from testing the validity of the patent granted to Mitchell.

On the 7th of December, 1858, Mitchell, having surrendered his patent, obtained a reissue with an additional claim for the metallic tip, described in his specification as a “ new article of manufacture."

On the 13th of July, 1859, the application of Silverthorn waş renewed, limiting the claim to a shoe tip of india-rubber or gutta-percha, disclaiming the metallic tip; and the above-recited letters patent No. 26,329, dated November 29, 1859, were issued to James M. Allen, his assignee.

On the 12th of December, 1860, Mitchell surrendered his reissue patent, and applied for a reissue thereof under the broad claim for a protecting tip of any materials for the toes of boots and shoes. The Commissioner allowed the claim and ordered the reissue, but before it was taken from the Patent Office Silverthorn's assignee surrendered his patent, and on the 14th of February, 1861, applied for a reissue, with a claim as broad as Mitchell's, and in direct conflict therewith.

An interference being again declared, the controversy between the appellants went from the Examiners to the Commissioner, who again decided in favor of Mitchell. The assignee of Silvertborn appealed to the supreme court of the District of Columbia. The court, on the 4th of August, 1862, by Chief Justice Dunlop, reversed the decision of the Commissioner of Patents, and held (1) that the two surrenders and applications for reissues opened the claims of both parties for re-examination as if they had been original applicants, and enabled the former errors in the patent to be corrected ; (2) that Silverthorn was the original and first inventor of the invention claimed; (3) that the design of Congress in authorizing a reissue was to confer on inventors the full benefit and extent of their whole invention, and (4) that the assignee of Silvertborn should have reissued to him the letters patent for the shoetip, as claimed.

A reissue was accordingly made on the ed of September, 1862, to George Goodyear, who has become the assignee of Allen by letters patent No. 1,339, which, being assigned to the complainant corporation, was again surrendered and reissued August 4, 1868, by letters patent No. 3,070. The patent expiring November 29, 1873, the Commissioner extended the same for seven years from that date, and the suit is brought on these extended letters patent.

Having described the invention in the specification of the last reissued patent, it is stated

That the claim of invention is not confined to the particular material of which the tip is or may be made; nor yet to the manner or process by which the same is or may be produced or applied, but what is claimed as the invention of the said Newman Silverthorn is a formed tip, substantially as described, as an article of manufacture.

The controversy between Silverthorn and Mitchell as to the priority of the invention of the boot-tip generally, as an article of manufacture, closed more than fourteen years ago, and, so far as the knowledge of the court extends, the public has generally acquiesced in the decision in favor of Silverthorn.

It is too late to open the inquiry on a motion for a preliminary injunction, and if the shoe-tip, as an article of manufacture, which the defendants acknowledge to have made and sold, infringes the claim of the Silvertborn patent, a prima facie case is revealed that warrants and demands the interference of the court until the final hearing.

The defendants frankly produce the article of which complaint is made, and describe the process of manufacturing. It is a very ingenious and useful contrivance, and it has some features, I am inclined to believe, which render it more valuable than the complainant's device.

But it is a formed shoe-tip, nevertheless, and is an article of manufacture made and sold separate from the shoe. It is a toe-protector, and although it does not cover the upper leather of the boot it is in verted and fastened around the toe, substantially as the complainant's tip, and performs the same useful functions of protecting it against wear. I do not see how it can be used without infringing the central idea of the complainant's patent, to wit, the protection of the toe of the boot or shoe; and although it may be an improvement, it is nevertheless an infringement; and an injunction must be ordered to restrain the defend. ants until the further order of the court, and it is ordered accordingly.

(Onited States Circuit Court-Southern District of New York.]


0. G., vol. xi, p. 741.

In Equity. Before SHIPMAN, J.-Decided February 21, 1877. The infringement being of a patent for an improved chain composed of alternate closed

links and open spiral links formed of one or more coils of gold tubing, the distinctive feature of the invention consisting in the construction of the open spiral links from a specified material-viz., gold tubing—the damage sustained is not the advantage derived from the use of open links or open spiral links of gold tubing over what would have ensued from the use of closed links of tubing or open spiral links of solid gold, as the two eleinents of utility and novelty which the new article possesses do not exist in a soldered chain of tubing, or in a chain made of split gold rings of solid

wire. The patented and unpatented articles are entirely distinct from each other, and the re

sult which is found in the former cannot be obtained from the latter; therefore the

principle decided in Mowry vs. Whitney is not applicable. B. F. LEE for complainants. HENRY BALDWIN, Jr., for defendants.


[The facts of this case tully appear in the opinion of the court on final hearing, 9 OFFICIAL GAZETTE, p. 204.]

The patent bad two claims

1. An ornamental chain for necklaces, &c., formed of alternate closed links A and open spiral links B, substantially as shown and described.

2. The open spiral link B formed of coils of tubing, substantially as shown and described.

Upon the accounting it appeared that the defendant had made certain chains constructed precisely as described in the first claim of the patent, and certain other chains composed entirely of the open spiral link claimed in the second claim of the patent. Upon these chains the master awarded as damages the entire profits which the complainants would have made on the sale of the entire chains, deducting, of course, the cost of manufacturing, selling, &c.

The defendants made certain other chains, in which open spiral links were used to connect a series of several closed links joined together in the usual manner. Upon these chains the master awarded as damages the profits which the complainants would have made on the spiral links alone in said chains.


The defendants except to the master's report in regard to the amount of damages found to have been sustained by the plaintiffs by reason of the infringement of their patent.

The principal exception is stated in two forms: That, inasmuch as the defendants had a right to make chains of alternate links, and to use tubing for one link, provided it was soldered so as to make that liuk closed, the question to be determined by the master was, first, what ad. vantage was derived by the defendants from using the open links over what they would have bad in using closed links made of tubing? Or, second, what advantage have the defendants gained by reason of having used open spiral links of gold tubing over what would have ensued from the use of open spiral links of solid wire ?

The patented article was a new ornamental chain or necklace, a new article of manufacture, and the first claim has been held by this court to be a claim for a chain composed of alternate closed links, and open spiral links formed one or more coils of gold tubing. (9 OFFICIAL GAZETTE, p. 204.) The distinctive feature of the invention, it was held, did not consist in the fact that the link was spiral, but did consist in the construction of the open spiral link from a specified materialviz, gold tubing. The two elements of utility and novelty, which the new article possesses, are described in the opinion, in which it was shown that these elements did not exist either in a soldered chain of tubing which could not be taken apart, and wbich required finishing

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