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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. Nero 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, a plea in bar by the defendant, which admits the priority of the plaintiff's patent for the same invention, but sets out a fact which would render the plaintiff's patent void for want of novelty, must be overruled, because the fact is immaterial in this proceeding.

In Equity.
Preston Stevenson, for plaintiff.
Brodhead, King & Voorhees, for defendants.

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 defendants; 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 have 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

1Reported by R. D. & Wyllys Benedict, of the New York bar.

v.19, no.11—52

to William Rowland Taylor, and printed and published, and filed in the United States patent-office prior to the time of the plaintiff's al. leged invention, by reason whereof plaintiff's patent is void, and does not entitle him to maintain any action based thereon. And the ques. tion arises whether the subject matter of this plea can be brought before the court by plea. If a decision of this question of practice were 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 question 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 iesued 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 question 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 described in the defendant's patent, and also that the plaintiff was the first inventor. Upon these facts, according to the statute, the plain. tiff 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 that showing, claims a decree declaring the plaintiff's patent void and leaving his own unaffected. Such a result cannot, as it seems to me, be permitted. According to my understanding of the statute, the proceeding permitted thereby is to be confined to a determination of the questions of interference and priority, and, if I 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 Foster v. 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 Horse Nail Co. (Two Cases.)

(Circuit Court, D. Massachusetts. March 20, 1884.)

1. PATENT-HORSE-SHOE NAIL-INFRINGEMENT.

Patent No. 92,355 for a horse-shoe nail made by cold-rolling the shank of a headed blank cut from a hot-rolled ribbed bar, held to be infringed by the manufacture of a nail produced in the same manner, except that the head is cold

rolled, and 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 atfected by the description in a previous

patent of a method of manufacturing nails of uniform hardness throughout. 3. SAME-REISSUED PATENT No. 5,207.

Reissued patent No. 5,207 held to be substantially identical with the original,

No. 78,644, and therefore valid. 4. SAME-INFRINGEMENT-HORSE-SHOE NAILS.

The process described by reissue No. 5,207, of beveling the points horse-shoe nails by spreading the metal laterally and then shaving off the superfluous projections, held to be infringed by a method purporting to force the metal upwards instead of sidewise

In Equity.
Chauncey Smith and George L. Roberts, for complainant
Browne, Holmes & Browne, for defendant.
Before LOWELL and NELSON, JJ.

NELSON, J. The first of these suits is for the infringement of patent No. 92,355, granted to Arlon 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 of which is hardened by rolling, when cold, with a constantly increasing pressure from head to point. A blank is first cut from a hot-rolled ribbed 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 increasing compression to the point. By this operation the rigidity of the body of the nail is left nearly uniform throughout its whole length, since its cross-section diminishes in area from head to point in about the same ratio as the metal becomes harder under the increasing pressure. A nail is thus formed with the head sufficiently soft to yield under the hammer and imbed in the groove of the horseshoe, with the shank near the head hard enough to keep from bending, but not so hard as to prevent it from conforming readily to the nail hole, and with the point end so rigid as to retain its form and direction in driving. The single claim of the patent is this:

“A nail made by punching or cutting from hot-rolled ribbed bars of metal a headed blank, substantially as described, and by elongating, hardening, and compressing the shanks of such blanks by cold-rolling from the head to the point, thereby giving to all parts of the nail so produced the peculiar qualities specified.”

The nail manufactured by the defendant is made in the same manner, and is in all respects the same as the Polsey nail, except that in the case of the former the head is cold-rolled with diminishing hardness from the top to the base, and the cold-rolling of the body commences a short distance below the base of the head, thus leaving a small part of the shank next the head, described as about one-tenth of the length of the blank, unrolled. The position of the defendant is that these alterations in structure take its nail out of the claim of the patent. But we are unable to give to them this effect. The leaving unrolled a small portion of the shank next the head, where in the patent the metal is left comparatively soft, so as to easily conform to the irregularities of the nail-hole, is manifestly only a trivial and unsubstantial variation from the Polsey nail. The same may be said of the added hardening of the head. An attempt is made to show that by making the shank soft near the head the nail will drive and fit the nail-hole more readily, and that hardening the upper part of the head renders it better capable of resisting the wear of the pavement, and thus a more serviceable nail is produced. We think the evidence fails to prove this. But, if true, the new elements must be regarded as additions to the Polsey nail, and not as rendering the nail a substantially different article. A nail so constructed still possesses all the essential qualities of the Polsey nail. It is a nail made by cutting a headed blank from a hot-rolled ribbed bar, and then elongating, hardening, and compressing the shank by cold-rolling, substantially from head to point, which is the invention described in the specification and claim of the patent.

The defendant further insists that the Polsey method is shown in the Whipple patents, No. 41,881 and No. 41,955, both anterior to the Polsey patent. The former is for a blank for horse-shoe nails, with the head of the form of the frustra of two pyramids having a common base, and the shank tapering therefrom to the point, the blank to be afterwards drawn out and flattened into a nail by a suitable machine or by hand. The latter is for a machine to produce such blanks by swaging, and to flatten and finish them into nails by rolling. We have examined these patents with care, but find nothing in them resembling the Polsey invention. Whether the operations described for forming the blanks and nails are performed when the metal is hot or cold is not stated. But in either case the nail is left with an equal hardness throughout the head and shank, and thus differs wholly from the Polsey invention.

In the second case the plaintiff sues for the infringement of reissue patent No.5,207 dated December 31, 1872, and granted to the plaintiff, as assignee of S. E. Chase, for an improvement in finishing nails. The original of this patent was No. 78,644, dated June 6, 1868. The invention is described in substantially the same terms in the specifications of the original and the reissue. It relates to a method of finishing horse-shoe nails, and giving them the desirable curvature throughout the body and a beveled and pointed form at the end by means of mechanism. The method described consists of two successive operations. In the first the nail, when nearly finished, is submitted to the action of a die, which, by compression, gives to it the proper curvature flatwise and forms a bevel at the point, the superfluous metal being spread out by the pressure on each side and beyond the point end. In the second the nail is again subjected to the action of a die which forces it through an orifice in a bed, the die and orifice having corresponding outlines and the requisite dimensions and contour. The die and orifice together operate as shears to shear off and remove the superfluous metal spread out on the sides and point in the first operation, and to cut and trim the nail at its point to the exact form of the finished nail. In the first operation the nail receives its longitudinal curvature and its bevel at the point and is fin. ished flatwise; and in the second the point is formed and the nail straightened and finished sidewise.

The original patent contained a single claim, as follows:

"I claim in finishing nails the process of curving their bodies and beveling their points, and afterwards forcing them through an open die to shear off superfluous metal, substantially as and for the purpose specified.”

The reissue contains two claims, the second of which is thus stated :

“(2) The process of curving the bodies of nails and beveling their points by spreading the metal laterally, and afterwards forcing them through an open die to shear off superfluous metal, substantially as and for the purpose specified."

We are unable to perceive any essential difference between the two claims. It is true the second claim of the reissue contains the expression, “by spreading the metal laterally," which is not found in terms in the original claim. But the original claim, construed in the light of the description of the invention given in the specification, clearly implies that the lateral spreading of the metal in the die is the necessary result of the compression given in the first operation of the finishing. The two claims are therefore, in substance, the same, and the reissue is not invalid, at least in its second claim, as being a

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