When the idea is once suggested, as in that exhibit, to have openings of that character, it is but ordinary knowledge to vary their number and size according to the thickness of the material. Neither claim of the patent can be sustained, and the bill is dismissed, with costs.
PENTLARGE V. PENTLARGE.·
(Circuit Court, E. D. New York. January 22, 1884.)
INTERFERING PATENTS-ACTION UNDER REV. ST. § 4918-PLEA IN BAR.
In an action under Rev. St. § 4918, where the plaintiff seeks to have the defendant's patent declared void on the ground that it is for the same invention, and subsequent to the plaintiff's patent, Ii plea in bar by the defendant, which a.dmits the priority of the plaintiff's patentfor the same invention, hut sets out Ii fact which would render the plaintiff's patent void for want of novelty, must be overruled, because the fac' is immaterial in this proceeding.
BENEDICT, J. This case has, for the convenience of counsel, been presented in several aspects. To an .amended bill the defendants have filed a demurrer. The questions raised by this demurrer are the same as those heretofore raised and determined upon a demurrer to the original bill in this cause. The action, so far as it rests upon facts supposed to make out a case of duress, is not strengthened by anything contained in the amended bill, nevertheless the amended bill can stand for the same reason that the original bill was allowed to stand. The demurrer to the amended bill is therefore overruled. Next may be considered the question raised by a motion on the part of the plaintiff to strike from the files a plea interposed by the de. fendants; or, otherwise, that the plea stand as an answer. By this motion the question has been raised whether the fact stated in the plea must not be brought before the court by answer, and not plea. This action is a proceeding taken by virtue of Rev. St. § 4918, where provision is made for a suit in equity whenever there are interfering patents. The bill, after setting forth a certain patent issued to the plaintiff, as the first inventor of the invention therein described, charges that the defendants bave a patent issued subsequent to the plaintiff's patent, and for same invention, which patent the plaintiff prays may be declared void, pursuant to the provisions of section 4918. To this bill the defendants have interposed a plea in bar of the action, in which plea they say that the invention described in the plaintiff's patent was described in an English patent issued in 1855
Preston Stevenson, for plaintiff. . Brodhead, King & Voorhees, for defendants.
1Reported by R. D. & WyllysBenedict, of the New York bar.
to William Rowland Taylor, and printed and published,' and filed in the United States patent-offioe prior to the time of .the plainti£:'s leged invention, by reason whereof plaintiff's patent is void, and does not entitle him to maintain any action based thereon. And the question arises whether the subject-matter of this plea can be brought before the court by plea. If a decision of this question of practice wert; necessary on this occasion, it might be difficult to assign any substantial reason why, if the facts stated in the plea respecting the English patent be fatal to the plaintiff's right of action, such facts may not be presented by plea, provided the defendant elect, as this defendant has done, to present them in that way, and not by answer. But a decision of that question is not called for here, inasmuch as the argument of the plea, which was had without prejudice to the ques" tion raised by the motion, has satisfied me that the plea must be overruled upon the ground that the fact pleaded, if true, is immaterial in an action like the present. , The proceeding is statutory, instituted by virtue of section 4918. Such a proceeding, as I conceive, has for its sole object a determination of the question of interference and of priority of invention. It is, by the terms of the statute, limited to cases of interfering patents, and it is only in case interfering patents are found to have been issued that the court is empowered to "adjudge and declare either of the patents void." The implication is that when the patents are found to interfere, the result .of the proceeding shall be a decree making void the patent issued to the later inventor. But if the defendant in such an action may attack the plaintiff's invention upon any ground which the statute permits to be set up by answer in an action for infringement, it would often result that the proceeding would fail to secure an adjudication of the qnestion of interference; and so' the proceeding be rendered futile for the purpose which the statute intended should be accomplished. Such would be the result in this case. By this plea the defendant admits the averment of the bill that the plaintiff's patent is for the same invention as that scribed in the defendant's patent, and also that the plaintiff was the first inventor. Upon these facts, according to the statute, the plaintiff should have a decree declaring the defendant's patent void, and yet if the plea be allowed the plaintiff will obtain no adjudication upon this question, while the defendant will obtain a decree declaring the plaintiff's patent void and leaving his own to stand ; and this,. too, when the fact stated in his plea, if true, taken in connection with the facts 'Stated in the bill, which are admitted, show the defendant's patent to be also void. The defendant, then, by his plea and his admission, taken together, .shows his own patent void,and, upon showing, claims a decree declaring the plaintiff's patleaving his :6wn unaffected. Such a result cannot, as ent it seems to me, be permitted. According to my understanding of the statute, the proceeding permitted thereby is to be confine<l to a
GLOBE NAIL CO. V. UNITED STATES HORSE NAIL CO.
determination of the questions of interference and priority, and, if 1 am right in this, the issue tendered by the plea is immaterial. This conclusion has not been reached without giving careful consideration to the opinion expressed by TREAT, J., in Fosterv. Lindsay, 3 Dill. 126, where the opposite conclusion was arrived at. With all my respect for the opinion of that distinguished judge, I am unable to agree with him. An order will accordingly be entered overruling the plea.
GLOBE NAIL Co. v. UNITED STATES HOBSE NAIL CO.
(Oircuit Oourt, D. Massachusetts.
March 20, 1884.)
Patent No. 92,355 for a horse-shoe nail made by cold-rolling the shank of " headed blank cut from a hot-rolled ribbed bar,lteld to be infringed by the manufacture of a nail produced in the same manner, except that the head is coldroUed, aDd a small portion of the shank next to the head not rolled at all,
2. SAME-METHOD NOT SHOWN IN PREVIOUS PATENT;
The nail secured by letters No. 92,355 differs in hardness in its different parts; and the validity of the patent is not affected by the description in a previous patent of a method of manufacturing nails of uniform hardness throughout.
PA'I'ENT No. 5,207.
Reissued patent No. 5,207 held to be 8uhstantiaUy identical with the original, No. 78,644, and therefore valid. The process described by reissue No. li,207, of beveling the points of horse-shoe nails b3' spreading the metal lateraJly and then shaving off the superfluous projections, '/,6ld to be infringed by a method purporUng to force the metal up>vards instead of sidewise
4. BAME-lNFRINGEMENT-HoRSE-SHOE NAILS.
In Equity. Chauncey Smith and George L. Roberts, for complainant Browne, Holmes J: Browne, for defendant. Before LOWELL and NELSON, JJ. NELSON, J. The first of these suits is for the infringement of patent No; 92,855, granted to ArIon M. Polsey, July 6, 1869, for an improved manufacture of nails. According to the description given in the specification, the invention consists in a horse-shoe nail, the head of which is in that condition of softness which is produced by hot-rolling the metal, and the shank or body ofwhioh is hardened by rolling, when cold, with a constantly increasing pressure from head to point. A blank is first cut from a hot·rolledribbed bar, the projection and form of the rib being that of the finished head of the nail. The blank, when cold, is submitted to a rolling process,which begins at or near the 'base of the head, and·continues with a gradually inoreasing oompression to the point. By this operation the rigidity nf the body of the nail is left; nearly uniform throughout its whole