Reporter's Statement of the Case ing no load in normal flight and therefore not functioning under normal conditions as a supporting surface. In the Government machines the wings have no sinuosity, and the curvature of the front ends of all the fore and aft cross ribs is substantially the same. The only part of the wing where the front of the fore and aft wing section is less sharply curved than the front of sections nearer the center is beyond the outer rib of the wing in the extreme, small, triangular tip portion. The Government machines are provided with motors and propellers for propulsion through the air. The motor may be shut off, however, when the machines are in the air, and the machines may then be operated or controlled while descending under the impetus of gravity. VIII. At the time said Montgomery devised his alleged improvements, set forth in the said claims at issue in this suit, the following letters patent were in and a part of the prior art and, as shown by the file wrapper of the said patent in suit, were referred to by the Patent Office Examiner in passing on the application for said patent, and are, by reference, made a part of this finding of fact: IX. In addition to the letters patent referred to in the file wrapper of the Montgomery patent in suit, the following letters patent were also in, and a part of, the prior art at the time said Montgomery devised the said alleged improvements, and are, by reference, made a part of this finding of fact: X. In addition to the aforesaid letters patent, the following publications were in, and a part of, the prior art at the time said Montgomery devised the said alleged improvements, and are by reference made a part of this finding of fact: L'Aeronaute, published at Paris, January, 1872, pages 2 to 9, La Locomotion Aerienne, by A. Goupil, published at Charleville, Experiments in Aerodynamics, by S. P. Langley, published at Revue de L'Aeronautique, published at Paris in 1893, pages 69 Proceedings of the International Conference on Aerial Navigation, published at New York in 1894, pages 11 and 21 to 38, inclusive, 81 to 83, inclusive, 253 to 264, inclusive, and 273 to 287, inclusive, containing, respectively, papers by C. W. Hastings, S. P. Langley, W. Kress, and A. F. Zahm-- Reporter's Statement of the Case The Aeronautical Annual for the years 1895, 1896, and 1897, 66 Journal of the Western Society of Engineers, published at Chicago, Ill., October, 1897, Vol. II, No. 5, pages 593 to 628, inclusive, article by Octave Chanute, entitled “Gliding Experiments" McClure's Magazine for June, 1900, published at New York City, June, 1900, pages 127 to 133, inclusive, article by O. Chanute, entitled Experiments in Flying' Annual Report of the Board of Regents of the Smithsonian Journal of the Western Society of Engineers, Vol. VI, No. 6, Flying, No. 2, published at London, March, 1902, pages 53 to 86 87 88 104 34 Wiener Luftschiffer-Zeitung, published at Vienna in August, 1903, pages 173 and 174___. 89 Journal of the Western Society of Engineers, published at Chi- 30 Scientific American. Vol. LXXXIX, No. 16, published at New 1 90 Opinion of the Court American Inventor, Vol. IX, No. 9, published at Washington, Nov. 1, 1903, pages 208 and 209, illustrated article entitled "The Langley Flying Machine ". Revue Generale des Sciences, published at Paris, November 30, 1903, pages 1133 to 1142, inclusive, illustrated article by O. Chanute entitled "L'Aviation en Amerique ". And Progress in Flying Machines, by Chanute, published at New Deft.'s Ex. No. 91 92 XI. At the time Montgomery devised his alleged improve. ments, set forth in the patent in suit in the aforesaid claims at issue, the following structures were in, and a part of, the prior art: 1. Aeroplane glider, constructed in the United States by the Wright brothers and put into use at Kitty Hawk, North Carolina, in 1900. 2. Aeroplane glider, constructed in the United States by the Wright brothers and put into use at Kitty Hawk, North Carolina, in 1901. 3. Aeroplane glider, constructed in the United States by the Wright brothers and put into use at Kitty Hawk, North Carolina, in 1902. 4. The Wright glider of 1902, as altered and put into use at Kitty Hawk, North Carolina, in the summer of the same year. 5. The motor-driven flying machine of 1903, constructed in the United States by the Wright brothers and put into use at Kitty Hawk, North Carolina, on December 17, 1903. The court decided that plaintiffs were not entitled to recover. BOOTH, Chief Justice, delivered the opinion of the court: This is a patent case. The petition alleges that under the act of June 25, 1910, 36 Stat. 851, plaintiffs are entitled to recover for an infringement by the Government of claims 4, 9, 12, 16, 17, 18, 28, and 32 of Letters Patent #831173 granted on September 18, 1906, to John J. Montgomery, now deceased. The Government denies infringement and challenges the validity of the patent. Opinion of the Court A preliminary question of title is called to our attention. On July 27, 1914, the plaintiffs assigned an undivided interest in the patent to Frank A. Garbutt. The consideration for the assignment was a duty imposed upon Garbutt to attempt to reconcile the conflicting claims of Montgomery with other inventors in the same art and procure for the Montgomery patent a sufficient recognition to entitle the owners of the patent to realize its worth in money; failing in this, to institute suits for infringement of the patent. Garbutt did commence two suits, both were dismissed without prosecution to a conclusion, and subsequently, i. e., after this suit was commenced, Garbutt reassigned his interest in the patent to the plaintiffs. We think in view of the result of this suit that the contention of the defendant is unimportant. The petition alleges infringement of claims 4, 9, 12, 16, 17, 18, 28, and 32 of Montgomery's patent. There are forty-six claims in the Montgomery patent. The plaintiff's case is predicated largely upon a contention that Montgomery, the patentee, was a pioneer in the art and his patent a basic patent; that he was the first to invent the principle of wing warping to secure equilibrium and lateral control essential to flying; that .the other elements of his machine disclose the principles of stability and rudder control, all of which, or their equivalents, are embodied in the Government machines, offered as exhibits of infringing devices. The record in the case is most voluminous and involved and has required exacting attention and labor. The first vital issue depends upon whether from the record it is to be held that Montgomery was a pioneer inventor and his device a basic patent. If so, his claims, as repeatedly adjudicated, are to be accorded a broader construction than were the situation otherwise. Unless it may be said and established by proof that the inventor has a patent which performs a function which was not performed before, he is not entitled to be designated a pioneer inventor. Westinghouse v. Boyden Power Brake Co., 170 U. S. 537. Attempts to construct flying machines did not, of course, originate with Montgomery. The art is old, its progress was slow, the early development crude and impracticable. |