FEDERAL REPORTER, BUTLER and others v. BAINBRIDGE and others.·
(Oircuit Oourt, S.
n. NetD York.
November 16, 1886.)
PATENTS FORlNVENTIONS-JOINT INVENTOJlS·
. The defense that two persons to whom a patent has issued as joint inventOrS were not. in fact, joint inventors, is so purely formal that it cannot be ,regarded with favor, unless, it be shown that the action of the patentees i1;1 thll.t reg31'd was disingenuoQs, or calculated to mislead the defendants. 'Where the defense or wl1nt of joint invention in the patentees was not pleaded,'nor fairly raised by the answer, but proofs to support it were taken, ,and the point made at the hearing, held.. there was grave doubt whether the defensll ('ould be considered.
PROOF OF WANT OF. OF WANT OF JOINT INVENTION-PLEADING.
Where devices which were definitel, proved to have been before did not anticipate thll.invention, and,those which would anticipate were not definitely 'proved to have been before, held, that the evidence was too vague, uncertain, and indefinite to satisfy the mind of the court beyond a reasonable doubt, and to overcome the presumption of novelty arising from the patent itself. 4. BAM'$-INVENTION-PRESENCE OF, now DETERMINED· .In a pl1tent case, the question of invention must depend upon the facts and cireumstances of the case,'and the perplexities which surround such controversie!l:cannot always be'solved by an examination of adjudged cases. They to the paths to be tra!e,rsed..but he who desires to select the rlghtone must depend largely upon his own Judgment. IS. BAME"'-EMBOSSED CARDS. A claim for" a circular or card two or more folds, upon one or more of which embossed or pressed out araised panel or panels. to represent cards, upon'which the printing is afterwards done, substantially as and tor the 'purpos'eset forth." sustained. although the art of embossing was old at the of the invention, and cards having smaller printed cards pasted upon them,anq papers struck up, with various figures, emblems, and devices, including sinall rectangular panels, were well known pilor to that date. 8. SAME.. , . ' Although the invention may be a simple one, and it is hard to understand why' the' idea did not occur to some one long before; still if the fact remains that it ,never did, although something of the kind was long wanted, these circuwatances warrant the,conclusion that there was invention in producing it. 'I. SAME-CHARACTERISTICS OF INVENTION-l'IIECHANICAL SKILL. , "It is the presence of a thought like this 'which raises an'ordinarymechanic to the plane of an inventor. Invention requires thought; mechanical skill does not. The' ane is the result of mental, the other of manual action."
In E.quHy. Bill for infringement. James A. Whitney and L. E. Gilbert,forcQmplainants. Edwin H. Brown, for defendants. ' COXE, J. This is an action in equity, based upon letters patent No. 273,023, granted to Orlando W. Butler and Thomas W. Kelley, February 27, 1883, for an improvement in paper for cards and circulars. The purpose of the invention was to supersede the expensive and cumbersome method of pasting separate cards upon wedding invitations and similar papers, by substituting therefor a card having
1 Edited by
Charles C. Linthicum, Esq.. of the Chicago bar.
two or more folds, upon'which the desired number of panels. to resent cards, are embossed or pressed out. On these raised panels the printing may afterwards be done. When the invitation is folded, the unsightly cavities produced by the prOc;less of embossing are cealed from view by one of the flaps of the paper. The cards when finished have the same general characteristics as their pasted cessors, but, in additIon. they are more symmetrical and uniform in appearance, can be manipulated with greater ease, are less liable to become soiled, and are about 50 per cent. cheaper. The invention has received the marked approval of dealers in stationery, and of the public. The patented cards have gone into general use, diBulacing the old devices .referred to. The claims are aEi follows:
(1) A circular or card having two or more folds. upon one or more of which are embossed or pressed out a raised panel or panels. to represent cards, upon which the printing is afterwaxds done, SUbstantially as and for the purpose set forth. (2) In an invita,tion-card, a portion upon which is embossed or pressed panel or card for the invitation proper, in combination with folds, upon "orie or more of which is embossed asmaHer card or cards, for the names of the parties SUbstantially as herein shown and described. (3) .The ce:iltralportion, A,in combination with the folds, B, C, embossed cards, D, D, and embossed panel or all constructed as described, and for the purpose herein forth an!!
The defenses are laCk of novelty and invention. and that the plainants are ;not. joint inventors. Infringement of the fil'stand second claims is adlllitted·.. The cards dealt in by the defendants are almost theexl1ct counterpart of Fig. 2 of the drawings, and were sold in boxes marked with the date of the complainants'patent. The defenl'le that eomplainants are not joint is so purely formal in oharacter that it eannotbe regarded with favor, unless it be shown that the action of tbepatentees in this-regard was diRingenious. or caloulatedto mislead the defendants. Nothing of this kind appears, and it is thought that, upon principle and authority, tbereoan be little difficulty in sustaining, upon the merits, the aqtiou of the patent-office in issuing the patent in its present form. Worden v. Fisher, 11 Fed. Rep. 505; Barrett v. Hall, 1 Mason, 447; Hotchkiss v. Greenwood, 4 McLean,"456, 461. There is, however. grave doubt whether the: defendants" are in a position to present the question. The defense is· not pleaded, and there is nothing in the _ answer which can fairly be construed to put the matter at issue·. Wq,lk. §§ The question of novelty and invention reUlains to be considered. It is entirely clear that at the time the complainants conceived the invention, in the fall of 1880. the art of embossing was old and well understood, Cards having smaller printed cards pasted upon them, and papers -struck up with various figures, emblems, and .devices, including small· rectangular panals, were all known to printers, engravers, and stationers prior to -this date. This, in. brief, is a fair
general statement of the art as it existed at the time of the invention. The defendants have introduced in evidence nearly a hundred limiting and anticipating exhibits. It is not disputed that many of them are wholly irrelevant to the issues involved, and it is conceded that others had no existence prior to the invention. Of others, it may be said that the dates when they were first seen are wholly conjectural. In short, those which are definitely proved to have been before do not anticipate, and those which would anticipate are not definitely proved to have been before. The evidence is too vague, uncertain, and indirect to satisfy the mind of the court beyond a reasonable doubt, and to overcome the presumption of novelty arising from the patent itself. Unquestionably, however, the proof demonstratesthat the field in which the complainants operated was at best a narrow one, and the question arises, is the patent, though it cannot be :defeated for want of novelty,void for lack of invention? To this question it is by no means easy to give an entirely satisfactory answer. Each case must depend upon its own facts and circum.. stances. The perplexities which surround such controversies ca'nnot always be solved by an examination of adjudged cases. They serve to illuminate the paths to be traversed, but he who desires to select the right (me must depend Iargelyapon his own judgment. Although the present case is very near the border-line between invention and mechanical skill, it is thought that the doubt which arises should be resblved in favor of the patent. No one ever did before what the complainants did, viz., produce an invitation card with two or more folds, having panels to represent cards, embossed thereon,upon which the printing is ,afterwards done. This particular structure is new, ful, and inexpensive. It soon became popular; itlmpplies a need. Time 'and thought were required in its development. The obstacles which theretofore could only be surmounted by skilled labor were entirelyeliminated. All this required something. more than the work of the mechanic. It amounted to invention. The whole matter is well illustrated by a question and answer quoted with approval upon the defendants' brief. One of the complainants was asked if he thought that prior to October, 1880, persons of ordinary skill in the art would have been unable to producerepresentations of cards by embossing upon paper, and the answer wa.e: "If they happened to think of it; probably they would not." Exactly so. It is the presence of a thollght like this which raises an ordinary mechanic to the plane of the inventor. Invention requires thought;' mecha.nical skill does not. The one is the result of mental, the other of manual, action. ; Grant that the invention is'asimple one, that 'when viewed from standing-point it is hard to understand why the idea did our :not oecor to some one long before, and yet the fact remains that it never did, though something of the kind was long wanted. After subject the best thought of whiohI am c.apable, I am convinced
MACHESNEY V. BROWN.
that to relegate these complainants to the condition of mere skilled workmen would be to do them a grave injustice. In the light of the present, the idea of substituting hard rubber for other material, as a plate for holding artificial teeth, or of providing tubular kerosene lanterns with an irreversible current of air by means of deflectors, seems simple enough, and yet the men who thought of these things conferred lasting benefits upon the world, and received the rewards of inventors. Lantern Co. v. Miller, 21.Fed. Rep. 514; Smith v.Goodier, 93 U. S. 486. In Crandalv. Watters, 20 Blatchf. 97, S. C. 9 Fed. Rep. 659, the patent was for a box loop for carriage tops, made of thin metal, from which the loop was struck up. It was used as a substitute for the old leather housing. In sustaining the patent, the remarks of Judge BLATCHFORD are so applicable to the case at bar that I quote briefly he says: from the opinion. At page
"Various old devices are introduced. ... ... ... But no article like the capable of being taken and used for the purposes for which the plaintiff's can be used, without alteration and adaptation, requiring invention, existed.before.. Almost all inventions, at this day, that become the subject of patents, 'are the embodiment and adaptation of mechanical appliances that are old. In that consists the invention. When the thing appears it is new and useful. No one sawit before; no one produced it before. It supplies a need. It is at once. adopted. All in the trade desire to make and use it, yet it is said to have been perfectly obvious, and not to have been patentable. Where an article exists in a given form, and applied to a given use, and is taken in substantially the samB form, and applied to an analogous I1SB, so as to make a case of merely double use, there is no invention. But it is very rarely that a thing of that kind secures a patent."
There should be a decree for -the complainants for an injunction and ari account, ,with costs·.
(OVrcuit Oourt, No D. N(f/J) York. November 26, 1886.)
PATEl\lTB FOR INvENTIONS-ASSIGNMENT-ATTORNEY IN FACT-lNSTRIDmNT UNDER SEAL. '
The assignment of ,.a patent for an invention when executed by one acting BS attorney, by an instrument under seal. must be executed in the name of the principal, and purport to be sealed with his seal, in order to bind the prin. cipal.
, In Equity. Bill to restrain the infringement of letters' patent for an invention. Plea allowed, with costs, 'and leave granted to complainant to move to amend his bill. The facts are sufficiently stiLt(>d in the opinion. . Silas J. Douglass, for complainant. WilliamH. ,Bright, fo!, defendants. v.29F.no.3-10