to swing upon a hinge at the bottom. The grain may be taken from either side of the car which carries the hoisting apparatus; but it is delivered from the end only to a car upon the same track. The device could not be used to deliver grain from a vessel to an elevator and it would not suggest to the skilled mechanic such a structure as Dunbar conceived. Certainly no one ever did think of it, though the Sykes patent was granted in 1869. Whether the Sykes hoisting device ever went into practical operation does not appear. Dunbar knew, of course, that elevators and elevating-legs and similar mechanisms were old. What he wished to accomplish was the transfer of grain from the hold of a vessel to the immense storagehouses without continually shifting the vessel. Did Sykes show him how to do this? Manifestly not. Assuming that Sykes's patent showed him that a machine for shifting grain from one freight car to another might run on a railroad-track, it did not show him how to shift the tall elevator-tower, often weighing as high as six hundred tons, which had always been stationary and an integral part of the house. But even if the idea were suggested it required something more than mechanical skill to adapt the Sykes structure to the vastly-different environment. Since the decision of Potts v. Creager (C. D., 1895, 143; 70 O. G., 494; 155 U. S., 597) the courts are prone to look with more favor upon the work of the inventor who produces a new result, even if he does it with an old device, provided important changes are required to adapt the old device to its new use. Indeed, [says the Court,] it often requires as acute a perception of the relation between cause and effect, and as much of the peculiar intuitive genius which is a characteristic of great inventors, to grasp the idea that a device used in one art may be made available in another, as would be necessary to create the device de novo. Can any one doubt that Dunbar's task would have been quite as difficult if Sykes's patent had never seen the light? The patent to Walsh shows a portable elevator designed to be placed upon the deck of a boat or the roof of a car. The patent to Winslow and Goldsmith shows a similar construction designed mainly for discharging coal. The patent to Godwin shows an appliance for facilitating the transmission of grain or other bulky cargo from a ship, quay, or other place to a warehouse when sacks and other containers and carts or vehicles are employed. The other references are still more remote. What has been said of the Sykes patent applies with greater force to each of the others. The patent cannot be held void for lack of novelty. The drawings of the original and reissued patent are the same except in one unimportant particular. The descriptions are identical. The claims of the original are substantially reproduced in the reissue. The file-wrapper of the original is very meager, and the proceedings in the Firth interference do not apparently appear in full in the record; but the solicitor who acted for Dunbar testifies that the sole reason for limiting the claims of the original was the discovery of the Firth patent. He says that he supposed at the time that the Firth invention was prior to Dunbar's and so consented to strike out the fourth and fifth claims. Subsequently, on discovering that Dunbar was first in point of time, he applied for the reissue for the purpose of having restored what had thus been inadvertently given up. To the same effect is Dunbar's affidavit of October 6, 1883. If this be a correct statement of the facts, it is plain that the patentee should not suffer for the very natural mistake of his solicitor. What else could he do? He could not appeal because the Firth patent was before him on the record and his own eviscerated patent had actually been issued. In order to get what he was entitled to, it was necessary, first of all, to dispose of the Firth patent. When that was done a patent commensurate with the invention could be granted to Dunbar, but not before. To hold that the patent in suit is invalidated by the proceedings in the Patent Office is tantamount to a declaration that a meritorious invention may be destroyed by a patent subsequent in point of fact but improperly bearing a prior date. I can see no equity in such a ruling. Unless his conduct has deprived the public of some right he should have the fruits of his invention. The defects which have proved fatal to other reissues are all wanting here. The application for the reissue was seasonably made. Between the original and the reissue no adverse equity sprang up. Indeed, as Dunbar was the first in this particular field and as no one has attempted to dispute his right until the defendants built their elevator, no one can be misled by giving him a patent equal to his invention. To restrict him to less than this because of the reissue would be an arbitrary injustice without sense or precedent. The defendants for some time prior to the commencement of this action were and now are operating a movable tower in connection with the elevator owned by them at Buffalo. That this tower has the main characteristics of the patented structure is beyond dispute. It is mounted upon wheels moving upon rails. It is moved back and forth by machinery located in the tower. It discharges grain into the main house, and when located for operation it is held in place by guys or stays. There seems to be some misconception as to the scope of the third claim, the last clause having apparently caused the confusion. If this clause imported into the claim a stationary tower and sought to cover merely a combination of the two legs when operating in the same vessel, there would be considerable plausibility in the argument that nothing more than an aggregation is described. After the movable tower is anchored and in operation it is precisely like the other towers, and there can be no more joint action between it and a stationary H. Doc. 354-31 tower than between two stationary towers. If one pump will not empty a reservoir, a second may be brought into action; but each acts in the old way independent of the other. There is no coöperation between them in a patentable sense. So with two elevator-legs. (Bunching Co. v. Williams Co., 44 Fed. Rep., 190, 192, and cases cited.) But I do not understand that such a construction of the third claim is necessary or even permissible. The clause beginning with the words "whereby two elevators," etc., is merely descriptive of the result which is accomplished. It adds no new element to the combination. It might as well have been omitted. The claim is a broad one for the combination of the main house and the movable tower, as shown and described. It is not for every elevator and every tower, but for the elevator and tower of the description and drawings. The tower contains eleven stories, approximating one hundred feet in height. It is mounted on wheels moving on rails and is provided with machinery for preventing it from tipping forward when in use. The storage-house is one corresponding in dimensions with the tower. It is so constructed and arranged that grain can be received in its bins from any point along its front to which the tower can be moved. The combination of such a tower and such a house produces the advanta geous results before referred to. It is not an aggregation, but a valid combination in which each element limits and qualifies every other aud helps to produce the desired result. Such a combination was unknown before. It was new, useful, and entitled to protection. I do not deem it necessary to enter into a minute analysis of the other claims. Unquestionably the methods adopted by the inventor to carry out his conception, considered separately, were old, but the combinations were new. Wheels, tracks, spouts, windlasses, troughs, and guy-ropes were undoubtedly well known, but no one had ever assembled them in congeries producing a movable elevator-tower. The complainants are entitled to a construction broad enough to enable them to secure the fruits of Dunbar's actual invention. Nothing in the patent or the art limits them to a Chinese copy of the description and drawings. An infringer cannot escape by varying non-essential details. For instance, in the patent the grain is received from the spout into a long trough; in the defendants' structure it is received into a series of hoppers arranged side by side-in fact, the complainants' trough partitioned off. In the former the tower is held in place by cables tightened by drums, in the latter by hooks tightened by screws. In the one case the tower is moved by an anchored rope passing around a drum, in the other by a sprocket and chain supplemented by hand-power. But all these things are not of the essence of the invention. Dunbar showed one method of accomplishing the desired result. The defendants show a slightly different method of accomplishing the identical result, and because they have left the shadow they assert that they may take the substance with impunity. The law is otherwise. To paraphrase the language of the Supreme Court in Morley Sewing Machine Co. v. Lancaster, (C. D., 1889, 380; 47 O. G., 267; 129 U. S., 263, 284:) It makes no difference that in the infringing structure the staying mechanism is more simple, and the propelling mechanism and the mechanism for receiving the grain are different in mechanical construction, so long as they perform each the same function as the corresponding mechanism in the Dunbar structure, in substantially the same way, and are combined to produce the same result. It follows that the complainants are entitled to the usual decree for an injunction and an accounting, with costs. [U. S. Circuit Court-District of Indiana.] MULLEN et al. v. KING DRILL COMPANY et al. Decided July 22, 1896. 76 O. G., 790. MULLEN AND MULLEX-GRAIN-DRILL-VALID-INFRINGED. Claims 1 and 2 of Letters Patent No. 355,462, issued January 4, 1887, to Winfield W. Mullen and Francis M. Mullen, for improvements in grain-drills, Held to be valid and infringed. Mr. Chester Bradford for the complainants. Messrs Coburn & Strong for the defendants. BAKER, J.: This is a suit in equity, in the usual form, for infringement of Letters Patent No. 355,462, issued January 4, 1887, to Winfield W. Mullen and Francis M. Mullen, two of the complainants, for certain improvements in grain-drills. The invention which forms the subject-matter of the patent is designed for the special purpose of drilling seed between rows of corn in the farming process known as "double cropping." It differs from ordinary grain-drills, either adjustable or non-adjustable, in that its outer drillteeth automatically follow the bases of the corn-hills. In the specification it is said: This drill is mostly used where it is desired to sow grain between rows of coru, and its operation is as follows: The three central drill-teeth, being rigidly mounted on the frame A, move directly forward, as the drill progresses through the field, in parallel lines; but the outer drill-teeth, being mounted on the spring-mounted wings B, as they move along next the hills, will swing in and out and accommodate themselves to the inequalities in the ground produced by such hills, and leave a line of seed which practically follows the bases of the hills of corn. By this means any tearing up of the hills of corn is avoided and at the same time the grain is drilled very close to them, which is very desirable. Only claims 1 and 2 are involved in this suit. They are as follows: 1. The combination, in a grain-drill, of the main or central frame, A, the usual drill mechanism and drill-teeth, and the outer frame parts or wings, B, said wings being pivoted to the frame A, with springs interposed between said wings and said frame. 2. The combination of the main frame A, the usual seed-box and feeding mechanism, the spring-mounted wings B, and spouts leading from the seed-box to the drill-teeth, the spouts which lead to the teeth on said wings being of a telescopic construction, substantially as set forth.. The defenses are want of invention, as shown by the prior state of the art, anticipation, as disclosed by certain prior patents, and noninfringement. The patent is prima facie evidence of both novelty and utility, and neither of these presumptions has been rebutted by the evidence. On the contrary, they are strengthened. No anticipation of the complainants' combination is shown, although the attempt has been made to prove anticipation. The fact that it has been infringed is admitted by the defendants' expert, and its utility is sufficiently established as against the defendants by their infringement of it, as well as by direct proofs of utility found in the record. Let a decree be entered adjudging the validity and infringement of claims 1 and 2, with the usual injunction and reference for an accounting. [U. S. Circuit Court of Appeals-Third Circuit.] NATIONAL SEWING MACHINE COMPANY v. WILLCOX & GIBBS SEWING-MACHINE COMPANY. Where the parties entered into a contract that a royalty of forty per cent. should be paid on all sales of the machines, and the contract also contained the provision "If the parties of the second part shall sell or lease, or [shall] cause to be sold or leased, for use, or shall cause to be used, in any foreign country, [the machines in question,] then the royalty to be paid shall be fortyfive per cent., in lieu of forty per cent., as herein before provided," Held that this provision is not retroactive, and that therefore a royalty of forty-five per cent. should be paid only on sales made after the commencement of foreign sales. 褥 IN ERROR to the Circuit Court of the United States for the Eastern District of Pennsylvania. Before ACHESON, WALES, and GREEN, Judges. Mr. Frank P. Prichard and Mr. John G. Johnson for the plaintiff in error. Mr. A. H. Wintersteen and Mr. George Tucker Bispham for the defendaut in error. |