KILBOURNE et al. v. W. BINGHAM CO.

(Circuit Court, N. D. Ohio, E. D. July, 1891.)

PATENTS FOR INVENTIONS-INFRINGEMENT-SINKS.

Letters patent No. 240,146, granted April 12, 1881, to James Kilbourne, for a sink which is to be manufactured by swaging or striking up from a single sheet of wrought steel or iron, are void for want of invention.

In Equity.

Suit for infringing letters patent No. 240,146, granted April 12, 1881, to complainant James Kilbourne for a sink. Claim first, which is in ssue in this case, reads as follows:

"The herein-described sink, made of a single sheet of wrought steel or iron, without joint, seam, or interior angle, substantially as set forth."

The patentee, in his specifications, says:

"My invention consists of a sink swaged or struck up from a single sheet of wrought iron or steel, without joint, seam, or interior angle. Heretofore, so far as I am informed, sinks have been made of cast-metal. Sinks of this kind are neither strong nor durable. They break easily and frequently in shipping or in storing them, and also in placing or setting them in position for use. They are also liable to fracture or break if water should freeze in them; and, in order to give them the modicum of strength which they possess, a considerable amount of metal must be used in their construction, making them cumbersome and heavy, and increasing expenses of manufacture.

"I have discovered that the above-specified defects can be completely removed by making the sink of wrought iron or steel, said sink being swaged or struck up from a single sheet of such metal, as herein before first specified. "Such a sink is, of course, stronger than one of cast-metal, and is not liable to be fractured or broken by a sudden jar or blow. It is cheaper than a cast-metal sink, for the reason that much less metal is required in its construction, and it can be, by the swaging operation,-as, for instance, by being struck up in a drop-press,-made more rapidly and economically.

“And, again: The sink being, as seen in the drawings, without interior angle. has practically equal strength at all points, and has no corners where sediment or dirt can gather.

M. B. Leggett and Watson, Burr & Livesay, for complainant.

Briesen & Knouth, H. M. Turk, and Arthur v. Briesen, for defendants. Before SAGE and RICKS, JJ.

SAGE, J., (after stating the facts as above.) The complainant's sink differs in no respect whatever from sinks manufactured by him and others prior to his patent, and in general use, excepting that it is constructed of wrought iron or steel, swaged or struck up from a single sheet, by a process which is old and perfectly well known. The material is old; the mode of manufacture is old; and the only thing claimed in addition to what is set forth in the specification, to support the invention, is that the result is a new manufacture, having the advantage over the old that. whereas cast-iron is porous, and therefore absorbs impurities, and gives out unpleasant and unhealthful odors, the wrought iron or steel is impervious, and free from that objection.

There may be novelty in that precisely this construction for a sink is new, but there is not invention. It is true that in Hotchkiss v. Greenwood, 11 How. 248, where the patent was for an improvement in making door and other knobs of clay or porcelain, instead of iron, brass, wood, or glass, which was held to be nothing more than the substitution of one material for another in constructing the article, the court said that the clay or porcelain door-knobs had no properties or functions which other door-knobs, made of different materials, had not. Like expressions are to be found in other cases, as in Hicks v. Kelsey, 18 Wall. 670. But in each case where a patent has been sustained by reason of the use of new material it has been upon a finding, on the facts and circumstances of the case, that invention was displayed.

There is no doubt, as stated by Mr. Phillips, in his work on Patents, page 134, that "there may be cases in which the substitution of a different material may be matter of contrivance or invention, and in such case the particular mode of applying the new material would be a good subject of a patent."

In the case of Hotchkiss v. Greenwood, the court announced that superiority of material cannot be itself the subject of a patent, and that "the meaning of the doctrine is that the superiority must extend beyond mere comparative cheapness or durability, or adaptation to the purpose for which the old material was used, and must lead to some change in the construction or mode of operation." Many other cases might be cited, but it is not worth while. The doctrine is well known, and well understood. In this case, not only was the material old, and its qualities, including that which it is claimed sustains the patent, perfectly well known, but it is shown by the defense that various structures, manufactured in the same way, and from the same material, without joint, seam, or interior angle, were manufactured and in public use long before the date of the complainant's alleged invention. Among these is a bidet pan, manufactured in New York as far back as 1876; a butler's tray, in common use before 1880; a flanged baking-pan, resembling in shape the complainant's sink, made of wrought iron or steel, before 1880; and there is testimony that articles like that exhibit have been stamped for eighteen or twenty years in large quantities. So, also, oval and round dishpans, round wash-boilers, oblong bake-pans, perforated and solid washbowls, umbrella drips, and scoop-trays, were stamped out of sheet-metal before 1880.

Without entering upon a consideration of the patents shown in anticipation, what has already been said is more than sufficient to establish that there is no merit in the complainant's patent.

The bill will be dismissed.

BOTTLE SEAL Co. v. DE LA VERGNE BOTTLE & SEAL Co.

(Circuit Court, D. New Jersey. July 8, 1891.)

1. PATENTS FOR INVENTIONS-NOVELTY-BOTTLE STOPPERS.

Letters patent No. 438,709, issued October 21, 1890, to William Painter, for a device for extracting an arched bottle stopper by attaching a headed stud to the crown of the arch, and applying force thereto, so as to cause a retroversion of the arch destructive of the lateral pressure of the stopper, and so rendering its removal easy, were not anticipated by the ordinary stoppers of wash-basins and bath-tubs, or by ordinary ink-bottle corks with their attendant corkscrews.

2 SAME-ANTICIPATION.

Nor was said patent anticipated by the statement in letters patent No. 327,099, issued in September, 1885, to said William Painter, that "it is sometimes desirable to remove the disk stopper without the use of a tool. In such cases I form the disk with a lug or ear. I may also attach to the disk an eye of wire, like the shank of a button, or a string, cord, or other device to facilitate its removal."

& SAME-EQUITY PLEADING-Demurrer.

The validity of a patent may be attacked for lack of inventive novelty by demurrer to a bill to restrain infringement, although the bill properly alleges the novelty and usefulness of the patented device. Following Brown v. Piper, 91 U. S. 44.

SAME-JUDICIAL NOTICE.

Courts will not take judicial notice of patents for inventions.

GREEN, J. This matter comes before the court upon demurrer to the bill of complaint. The bill is in the usual form of bills of complaint, seeking injunction and relief upon an alleged infringement of letters patent. It sets forth that in September, 1885, one William Painter, of Baltimore, Md., being the original and first inventor of a certain new and useful improvement in bottle stoppers, which had not been known or used by others in this country, and had not been in public use for more than two years prior to the application for letters patent, was granted letters patent bearing date the said day of September, 1885, and numbered 327,099. That on October 21, 1890, the said William Painter, having invented another new and useful improvement in bottle stoppers, not before known or used in this country, was granted therefor letters patent bearing the said date, and numbered 438,709. That these letters patent, by certain indentures of assignment, have been granted, assigned, and transferred to the complainant, who is now the sole and exclusive owner thereof. That the inventions and improvements described and claimed in said respective letters patent were and are capable of joint use, and were and are so conjointly used, and are intended so to be; and that the said inventions and improvements, and each of them, are designed and intended to be used together and in combination and connection with bottles or similar vessels. That said improvements and inventions are of great pecuniary value to the complainant; are of great benefit and advantage to the public; and that the public has generally acknowledged and acquiesced in the rights of the complainant under said letters patent.

The bill then charges that the defendant is infringing both of the said letters patent willfully and knowingly, to the irreparable loss and injury of the complainant, and prays for a writ of injunction, and for other customary relief. This bill of complaint, so far as the alleged infringement of letters patent No. 327,099 is charged, the defendant has fully answered; but to so much of said bill of complaint as charges and seeks relief for the alleged infringement of letters patent No. 438,709, a general demurrer has been interposed. The causes of demurrer assigned are that the alleged improvements in bottle stoppers supposed to be secured by said letters patent are lacking in novelty, invention, and patentability. It is a general principle in equity pleading that, as a demurrer proceeds on the ground that, admitting the facts stated in the bill of complaint to be true, the complainant is not entitled to the relief sought, all matters of fact are admitted by the demurrer, and cannot be disputed or disproved in aid thereof, and such admission extends to the whole matter and form in which it is stated in the bill. Treating the question before the court simply as one of pleading, it would be exceedingly difficult to find the slightest ground for the justification of a demurrer in the present bill of complaint. The bill is complete, full, and orderly in its statements. It avers properly that Painter was "the original and first inventor of certain new and useful improvements in bottle stoppers," as fully described in the letters patent referred to; that said invention and improvement "had not been known or used by others in this country, and had not been patented or described in any printed publication in this or any foreign country, before the invention and discovery thereof, and had not been in public use or on sale for more than two years prior to the application for letters patent." It further avers that "said invention has been and is of great benefit and advantage, and that the public has generally acknowledged and acquiesced in the rights of the complainant under said patents." It finally charges in express and precise terms that the defendant willfully infringes said letters patent by making, selling, and using the improved "bottle stoppers," protected by the letters patent, to the irreparable loss and injury of the complainant. Every one of these averments is admitted to be true by the demurrant. Certainly, under such admission, stronger ground for equitable relief could hardly be shown. The right, the infraction, the irreparable injury, the actor in the wrongdoing, are clearly set forth and described. As a pleading in a cause, this bill of complaint is not open to adverse criticism in any particular. But it is claimed by the defendant that, notwithstanding the effect of the demurrer upon the averments of the bill, the invention alleged to be protected by the letters patent of October, 1890, is wholly wanting in patentable novelty, and that such defect appears from the very letters patent themselves, or by reason of other matters, of which the court will take judicial notice. In other words, although the defendant admits the usefulness and novelty of the invention, yet the insistment is that such usefulness and such novelty are really negatived by the letters patent in question, or by matters of common knowledge. Notwithstanding this incongruity resulting from the contradiction of the pleading by the con

tention of the defendant, it must be taken as settled that the validity of a patent may be attacked for lack of inventive novelty by way of demurrer. The leading case of Brown v. Piper, 91 U. S. 44, so holds, and is necessarily a controlling authority. But it is equally certain that a demurrer for such cause can only be sustained in those cases where the court can adjudge the device described and claimed in the letters patent to be without patentable novelty, without the least scintilla of evidence, and solely because of facts of which the court is bound to take judicial notice. There are two reasons assigned by the defendant in support of its demurrer. The first is based upon the letters patent themselves, which, it is insisted, are void upon their face. The second is drawn from the state of the art at the time the letters patent were granted, and the contention is that the court will take judicial notice of that as disclosed either in publications, by the general use by the public of articles or devices similar to that described in the letters patent and anticipatory of it, or in other letters patent granted previously to the application for these letters patent by the complainant. An examination of the letters patent under consideration shows that the complainant, having previously invented a bottle stopper involving in its design the principle of the arch, which immediately met with great success, discovered by experience that the one defect in his device was the absence of means surely to extract it from the neck of the bottle, easily, readily, and without injury to the stopper itself. To remedy this defect was the problem he set himself to solve. He did solve it in this way: He attached to the stopper, at its center, a headed stud, to which a tool could be applied. with great facility and precision, and thereby the stopper extracted with ease. This stud, he declared, might be in the form of a straight shaft, passed through the disk stopper, and was to be provided with a head at each end, or it might be made of a wire staple, passing through the disk, having its ends twisted together to form a hold for the extracting instru

Previous to this conception, the stopper was extracted in one of three ways, as stated by the complainant in the second patent: (1) By means of a pointed instrument, which would penetrate the substance of the stopper, and then lift it out, inverting its arch; (2) by rotation under pressure applied to one edge of the stopper; (3) by means of an ear or flap attached to one edge of the stopper, all of which, however, were far from satisfactory. The defendant insists that in the first letters patent granted to the complainant another or a fourth way of extracting the stopper from the mouth of a bottle was described as follows:

"It is sometimes desirable to remove the disk stopper from the bottle without the use of a tool. In such cases I form the disk with a lug or ear. I may also attach to the disk an eye of wire, like the shank of a button, or a string, cord, or other device to facilitate its removal."

This last described device-the eye of wire, like the shank of a button, or string or cord, or other device to facilitate removal-the defendant deciares describes exactly, or, if not with exactness, certainly substantially, the very device for which the last letters patent were granted. And it is insisted that things described, but not claimed, in a patent, cannot