Here is the whole of the specification and claim, and there is nothing in it nearly or remotely suggesting or hinting at anything more than merely protecting the springs by japan. There is not a word about any method of tempering them whatever, nor that his treatment of them has any tendency whatever to temper them. All that is said relates entirely to their need of protection and to his mode of protecting them. The Patent Office so understood and construed it; rejected it because japanning was open to all, and informed him of the rejection and its grounds, and he acquiesced in it as long as he lived. There is no question but that the rejection upon that understanding was right. It is not claimed that this patent or any patent could be maintained for merely protecting steel or any other metal in the form of these springs or any other form by japan. The discovery is that moderate heat, such as may be applied in japanning, will restore and impart temper to these springs. The patent is therefore for the springs tempered in this manner. The application does not take that discovery or invention back to its date at all. It shows nothing affirmatively about any such thing. Still it is claimed that the proofs in the case show that Eagleton was in fact the first inventor or discoverer of this improvement. When the application fails to take the date of the invention back of the date of the patent, and the defendants make out prior knowledge and use by others beyond any fair or reasonable doubt, as the law requires, the burden is shifted onto the plaintiff to show invention or discovery by the patentee still prior to that. The evidence on which the plaintiff claims to make this out is weak, not so much in the number and character of the witnesses as in what they pretend and appear to know that Eagleton discovered and did. They fail to set forth such experiments, and tests, and results examined by him as would ordinarily accompany such a discovery. On this subject his original application is very weighty and important. As said by Mr. Justice Nelson in Manny v. Jagger, 1 Blatchf., 372 The description of the invention by the patentee, in his own language, affords the highest evidence of the thing or instrument which he claims to have discovered. In view of all the evidence on this subject it not only does not appear that Eagleton did make this invention or discovery before the others, but it appears that he did not and that probably it never came to his knowledge while he lived. It is said in argument that it is not necessary he should have known the full effect of the process he invented in order to uphold the patent, and that if he invented japanning it might not be necessary for him to know that japanning would temper. It is doubtless true that an inventor need not know all the uses to which his invention is capable of being put, and equally true that there must be some patentable invention patented before any use of it can be covered by the patent. Here japanning by itself was not patentable. Eagleton described no mode of japanning which would temper or strengthen the steel. The temper and strength are produced by the heat altogether, and not at all by the japan. He did not even mention that the japan was to be applied with heat. Had a patent been granted to him on his application it would have covered japanned springs, not tempered springs. He did not invent or discover anything patentable of which any one use could be made, and, a fortiori, not anything of which more than one use could be made. Upon this view of these questions of fact the issue of fact joined upon the traverse of the answer must be found for the defendants. Further, upon these facts, the law, both at the time when the original application was made and at the time of the amendments, required the applicant to make oath that he verily believed that he was the original and first inventor or discoverer of the art, machine, composition, or improvement for which he solicited a patent (act of 1836, 5 Stats. at Large, 117, sec. 6; Rev. Stats., sec. 4892); and that if the application was by executors or administrators the oath should be varied so as to be applicable to them. Act of 1836, sec. 10; Rev. Stats., sec. 4896The invention which Eagleton made application for, and to which his oath was applicable, was japanning steel furniture-springs merely. He authorized his attorneys to amend the application. At his death their authority ended. Bac. Abr. Authority; E. Hunt v. Rousmaniere, 8 Wheat., 174. They made the amendments in his name without any authority in fact, whatever authority they may have supposed they had. The amend ments were not mere amplifications of what had been in the application before, but carried into it the pith and substance of the whole invention for which the patent was granted. The patent was granted upon this without any new oath by the ad. ministratrix. Probably a patent may well be taken out by an administrator upon the application and oath of the intestate to that invention for which the patent issues; but that is not this case. This invention is entirely different. This application, as to the invention for which the patent issued, was made and acted upon as upon the application and oath of a living persou when there was no such person and could not be any such application and oath. The proceedings of the Patent Office are presumed to be regular and founded upon proper proceedings; but they must necessarily be founded upon the applications of living persons or their personal representatives, such as the law recognizes, and not upon those of persons who are merely supposed to exist, and should be founded upon the oath of the inventor or his personal representative, in accordance with the statute. In this case the substantial part of the thing patented was imported into the application of a person not in existence in his name, without the support of the oath required by the statute from either him or his personal representative or anything but the act of those who had been his attorneys, but who could not be such, for he could have no attorney then. In Railway Co. v. Sayles (97 U. S., 554), before cited, Mr. Justice Bradley says: It will be observed that we have given particular attention to the original application, drawings, and models filed in the Patent Office by Thompson and Batchelder. We have deemed it proper to do this because, if the amended application and model filed by Tanner five years later embodied any material addition to or variance from the original-anything new that was not comprised in that-such addition or variance cannot be sustained on the original application. The law does not permit such enlargements of an original specification which would interfere with other inventors who have entered the field in the meantime, any more than it does in the case of reissues of patents previously granted. Courts should regard with jealousy and disfavor any attempts to enlarge the scope of an application once filed or of a patent once granted, the effect of which would be to enable the patentee to appropriate other inventions made prior to such alteration or to appropriate that which has in the meantime gone into public use. This case is stronger against the patent than that there spoken of. Here the addition was made wholly without authority in fact, while there apparently it had the support of the inventors themselves all the way through. This objection is not specifically set up in the answer, and it is claimed that for that reason it cannot properly be taken notice of. Some defenses to suits on patents, like those resting upon prior knowledge and use by others and those resting upon failure of the specification to disclose the whole truth in respect to the improvement, and others named in the statutes, have to be set out more fully in some cases than the ordinary rules of pleading would require, because the statutes so require; but all defenses are not required to be so specifically set forth. Brown v. Piper, 91 U. S., 37; Terhune v. Phillips, 99 U. S., 592. The defendants deny infringement and set up the right to make tempered springs sufficiently to put the plaintiff to proof of the patent alleged in the bill; and that proof may be met by any proof on the part of the defendants which will tend to show there was no valid patent; and such evidence is admissible under these pleadings unless it goes so far as to attempt to make out a defense which the statute requires to be alleged that is not alleged. This is like evidence under the general issue at law which is always admissible to show that a written instrument declared on never had any valid existence in fact, although it did have in form. Let there be a decree, dismissing the bill of complaint, with costs. [United States Circuit Court-Western District of Pennsylvania.] MCNISH v. EVERSON ET AL. Decided June 8, 1880. 17 O. G., 1506. 1. Patent No. 149,875, granted C. A. McNish, April 21, 1874, for improvement in annealing-boxes, declared void by reason of an established knowledge and use of the device prior to the date of invention by the patentee. 2. The annealing-box as first made and used being substantially identical with what was subsequently produced by the patentee, it follows from the practical utility of the latter that the former was useful in equal degree, a fact which is further established by direct evidence: Hence, being clearly a complete and useful invention, the abandonment of its use thereafter furnishes no warrant to the patentee to claim it as the first inventor. Mr. D. F. Patterson and Mr. William A. Stone for the complainant. Messrs. Bakewell & Kerr for the respondents. Before Judges McKennan and Acheson. MCKENNAN, C. J.: The defendants do not deny infringement of the patent on which this suit is founded; but they allege prior use by others of the invention claimed, and that therefore the plaintiff's intestate is not the first inventor thereof. The invention is a very simple one, and its nature and scope are very clearly defined in the claim. It is there stated to be A bottom for annealing-boxes having ribs or bars, of wrought-iron or other metal of a similar fibrous elastic nature, extending through it, substantially as described. The method of forming these ribs is by placing wrought-iron rods in the molds for casting the annealing-boxes and extending throughout their whole length, so that the molten metal, when poured into the molds, will completely surround the rods, and thus they will be incorporated with it. The object of the invention is to give these boxes additional strength in the line of the strain upon them, and so prevent their transverse fracture. The patent is dated April 21, 1874, upon an application filed March 17, 1874, and the question is, Was the invention described and claimed practiced by others than the patentee before the date of the application! The answer to this question is decisively furnished by the testimony of Robert C. Totten. He was a machinist and founder, and testifies that he made annealing-carriages for the defendants or their predecessors as early as July 13, 1866, which had iron rods imbedded in them, and that he subsequently made several others of the same kind for the same per sons. I use his own words: The general shape of the boxes was like the drawing in Exhibit McNish's Patent, and the bars of iron were cast in the sides of the box, as shown in this drawing. The bars were placed in the space in the molds before casting, and then the iron was cast on them. The object of the introduction of the bars was stated to him by Mr. Everson, and is thus explained by him: The ordinary boxes were found to break crosswise, and it was proposed to obviate this by the use of these wrought-iron bars. This is an exact statement of the nature, object, and mode of construction of the invention described and claimed in the patent, and leaves no room for doubt that the device made by Mr. Totten and that covered by the patent are the same. And there is just as little room for doubt that the boxes made by Mr. Totten were used by the firm of Everson, Preston & Co., and that the advantage expected from their peculiar construction was realized in their use. After some time Everson, Preston & Co. ceased to use annealingboxes as described by Mr. Totten, and it is argued that such use is to be regarded as an unsuccessful experiment. We cannot concede this. The device used was complete in its construction, and it was used sufficiently to demonstrate its practicability. Indeed, in view of the proofs of the completeness and utility of the device described in the patent, the conclusion is irresistible that a prior device exactly similar to it and used in the same way must have been alike successful in practice. It was clearly a complete and useful invention, and the abandonment of its use by Everson, Preston & Co. furnishes no warrant to the patentee to claim it as the first inventor. The bill is dismissed, with costs. [United States Circuit Court-Southern District of New York.] LORILLARD v. THE STANDARD OIL COMPANY. Decided June, 1880. 17 O. G., 1506. 1. There is no statute or rule in the equity courts of New York which prohibits or prevents a married woman, owning a patent, from bringing suit thereon without joining her husband as a party thereto. 2. By the law of New York a married woman may own property of every description in the same manuer as if she were a femme sole, and under the Revised Statutes suits in equity for infringement of letters patent must be brought by the party in interest in his or her own name, and such right cannot be delegated to others to bring suit in their own names when the suit is not in any way for their benefit. Therefore the husband, having no legal interest in the patent or the suit, is neither a necessary nor a proper party to be joined. Mr. Abraham L. Jacobs for the plaintiff. |