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(251 U. S. 134) BONE V. COMMISSIONERS OF MARION done by a display of the patent and the case.

and must be accounted for, which is best COMMI COUNTY.

First, as to the patent: It describes the (Argued Nov. 11, 1919. Decided Dec. 15, 1919.) invention as being one that,

"relates to improvements in retaining walls No. 63.

for abutments to bridges, * and such PATENTS 328–FOR RETAINING WALL CON places as it is desired to retain earth or other TAINING NO NOVELTY AND NOT INFRINGED.

matter permanently in place with its face at The Bone patent, No. 705,732, for a retain- an angle nearer vertical than it would naturally ing wall of reinforced concrete, with a heel repose when exposed to the action of the elesuch that the weight of the earth' thereon tends ments of gravity,” and “consists principally of to keep the wall erect, held, under Rev. St. introducing into masonry of concrete, stone or $ 4866, in view of prior patents and descrip- brick a framework of steel or iron in such way tion of the device in foreign printed publica- that the whole wall is so much strengthened tions, to contain no patentable novelty, except, thereby that the volume of the masonry may be perhaps, in its special form, and in that re- greatly reduced, and yet the height, base, and spect not infringed.

strength against overturning, bulging, or set

tling will still be ample.". On Writ of Certiorari to the United States Circuit Court of Appeals for the Seventh Cir.

The following figure represents a crosscuit.

sectional view of the device-A representing Suit by Frank A. Bone against the Com- Bi the earth on which the wall rests. The

the masonry, B the material retained, and missioners of Marion County. Decree for de metal parts within A are indicated by the fendants was affirmed by the Circuit Court

smaller letters. of Appeals (249 Fed. 211, 161 C. C. A. 247), and complainant brings certiorari. Affirmed.

•135 *Messrs. Clarence E. Mehlhope, of Chicago, Ill., and Arthur H. Ewald, of Cincinnati, Ohio, for petitioner.

Mr. V. H. Lockwood, of Indianapolis, Ind., for respondents.

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Mr. Justice MCKENNA delivered the opinion of the Court.

Suit brought in the District Court of the United States for the District of Indiana to restrain the infringement of a patent for a retaining wall, which, to quote petitioner, is “a wall to prevent the material of an embankment or cut from sliding.'

After issue joined and proofs submitted, the District Court (Anderson, J.,) entered a decree dismissing the bill for want of equity. The decree was affirmed by the Circuit Court of Appeals, to review which action this writ

•137 of certiorari was granted.

*The patent does not insist upon that form The bill in the case is in the conventional of the masonry in all particulars. The base form and alleges invention, the issue of a of the wall may be, it is said, "varied to suit patent numbered 705,732, and infringement the circumstances"; it (the base) may er. by respondent. The prayer is for treble dam- tend to the rear rather than the front "with ages,' an injunction, and accounting.

proper proportions of metal

the The answer of respondent is a serial denial form shown in the drawings being what of the allegations of the bill and avers antici- might be called an inverted T, while those pation of petitioner's device by prior patents suggested would be in the form of an L or and publications, in this and other countries. reversed L." This summary of the issues is enough for

The utility of the wall of these shapes is our purpose and we need only add prelimi- represented to be that it is “not so liable to narily to their discussion that Bone's device be overturned from the pressure of material has the sanction of a patent and a decision behind it as would be a wall of the same sustaining it by the District Court for the height and area of section but having a recNorthern District of Ohio and the Circuit tangular, trapezoidal or triangular shaped

section," the latter shapes requiring more Court of Appeals for the *Sixth Circuit. The masonry. And it is said that the patented difference of decision in that circuit and the wall, “having more base and less weight" Seventh circuit is an important consideration than such other shapes, "will rest more se

On For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes

136

(40 Sup.Ct.) curely on a soft or yielding foundation, thes their co-operating functions, and adjudged weight of the material resting on the heel" the patent valid and the wall of the city of causing the latter “to press on the earth be- Akron an infringement of it. low, and thus cause friction to prevent the The Circuit Court of Appeals affirmed the whole wall from sliding outward.” This is decree. The court said that the record disthe especial effect of the patent, achieved by closed nothing which anticipated "the subthe wall of the shape described, and distin- stantial thought of the patent.” If it had guishes it, is the contention, from the retain. done so, or, to quote the exact language of ing walls of the prior art.

the court: The patentee admits, however, that retain

"If the prior art had shown a structure ining walls had been “constructed of concrete tended for a retaining wall, and having a heel and steel, but none” to his “knowledge" "had such that the weight of the earth thereon been supported on their own base as” his, nor would tend to keep the wall erect, it might be had “any of them entirely inclosed the steel difficult to find invention in merely adding the within the concrete,” nor had “any of them form of reinforcement most suitable to create used the weight of the material retained as the desired tensile strength; but we find no a force to retain itself."

such earlier structures.” 2 Such, then, is the wall and the utility at

140 tributed to it. The combinations which may *On application for rehearing the court rebe made with it are set forth in 17 claims, of fused to direct the District Court to open the which 1, 3, 5, 16, and 17 are involved in the case to permit the defendant to put in proof present action. Counsel for petitioner con- regarding a German publication of 1894. siders, however, that 1 and 17 are so far il

Those decisions confronted the District lustrative that the others need not be given. Court in the present suit and fortified the They are as follows:

pretensions of the patent. They were at"1. The combination with a retaining wall

the uprights serve the function of a cantilever beam •138 having a *heel, of a metal structure embedded the heel is transferred to the upright portion of the

whereby the weight of the material pressing upon vertically in said wall and obliquely in said heel, wall and operates to retain the wall in a vertical so that the weight of the retained material up- position. ... on the heel of the metal structure will oper- "Considering the claims of the patent, and the ate to retain the wall in vertical position." testimony, I am of the opinion that Bone, the pat

“17. The combination with a retaining wall entee, was the first to reinforce the retaining wall, having an inclined heel and a toe at opposite or similar wall of concrete or masonry in such a sides thereof, of a metal structure embedded would be utilized to impart through the reinforcing

manner that the weight of the retained material within said wall and heel, said structure con

members tensile resistance to the stern or vertical sisting of upright bents at the back part of part of the wall, thereby fortifying this part of the the vertical wall and continuing down along the wall against breaking strains. opper part of the heel of said wall to the back “This was an advancement in the art and possesspart thereof, whereby by reason of the toe and ed novelty and the structure of the defendant city the heel the weight of the retained material infringed this patent. upon the heel of the metal structure will oper

"While many of the features of concrete strucate to maintain the wall in a vertical posi- and described in this Bone application for a patent,

tures were old, yet this combination as outlined tion."

It is also in evidence that there has been

a large sale and general acquiescence in the Bone So much for the device of the patent. How patent." far was it new or how far was it anticipated ? * The following is an extract from the opinion

Bone's idea was conceived in 1898, and his of the Circuit Court of Appeals: patent issued in 1902, upon an application substantial thought of the patent. Masonry or con

"The record discloses nothing anticipating the made in 1899, but according to his counsel crete retaining walls were deep and heavy, and the value of the invention was not recognized maintained by gravity in their resistance against a "until after the lapse of several years,” when horizontal stress. There was no occasion for reinhe, Bone, brought a suit against the city of forcement. Sustaining walls had been built of con

crete with vertical reinforcement; but they were Akron, Ohio, in the District Court for the maintained against side strain by cross-ties or Northern District of Ohio, in vindication of beams, without which they might tip over. If the the patent and in reparation for its infringe- prior art had shown a structure intended for a rement. He was given a decree which was weight of the earth thereon would tend to keep the

taining wall, and having a heel such that the affirmed by the Circuit Court of Appeals for wall erect, it might be difficult to find invention in the Sixth Circuit. 221 Fed. 944, 137 C. C. A. merely adding the form of reinforcement most suit514.

able to create the desired tensile strength; but we

find no such earlier structures. Those which have The District Court (Judge Day) gave a

that shape are sustaining walls only, and were so clear exposition of the patent, the relation of obviously unfit for use as retaining walls that no • 139

one seems to have seen the utility for that purpose, Its metal parts 1 to the ma*sonry parts and which the form, when properly adapted and

strengthened, was capable. There is also a prior * The following is an extract from Judge Day's wall, wholly of metal, fairly disclosing a unitary opinion:

heel adapted to hold the wall erect; but to see "The reinforcing members [metallic members) are that this could become merely a skeleton imbedded placed near the back face of the wall and heel and in concrete may well have required, in 1898, more Rear the lower face of the toe. The oblique rein- than ordinary yision. Upon the whole, we think inforcing bars in the heel acting in conjunction with vention was involved, and the claims are valid."

40 SUP.CT.-7

was new.

of

*141

tacked, however, as having been pronounced Planat which appeared in 1894 and 1896 in upon a different record and this conclusion a scientific magazine called "La Construction was accepted by the District Court. The lat- Moderne,” published in Paris; also a publiter court found from the new evidence the cation which appeared in Germany in 1894 existence of a structure upon the nonexist- concerning a wall which is given the name of ence of which the Circuit Court of Appeals Bauzeitung wall. The article recites that a for the Sixth Circuit based its conclusion. "utility model patent" had been granted, The District Court said that Bone was not consisting "of a vertical and a horizontal the first to do the things he asserted he was member.” the first to do, and that whatever the record The Coignet patent is somewhat indefinite. in the Sixth Circuit might have shown, so It relates, according to its declaration, to far as the record before the court "was con- "monolithic structures, or articles made of cerned, the absolute converse of that prop-artificial stone paste" into which irregular osition” had “been demonstrated."

shaped irons are introduced to be “arranged The court, therefore, as we have said, dis

• 142 missed the bill for want of equity.

in such a *manner as to interlace each other, The decree was affirmed by the Circuit so that by the combination of this metallic Court of Appeals; indeed, the reasoning of skeleton and of agglomerated artificial stone the District Court was approved after pains- paste the thickness of the walls or size of the taking consideration of the patent and an

articles may be considerably reduced and yet estimate of the anticipatory defenses; none

great strength be attained." of which the court said was introduced in

It will be observed that there is nothing the Akron Case, “otherwise a different con- explicit of how "stone paste" and the "irreguclusion would have been reached," adducing lar shaped irons" operate or co-operate, aside the opinion of the court. 249 Fed. 214, 161 from their cohesion or interlacing. Their C. C. A. 247. This being so, and there is no arrangement is not definite as the “metallic doubt it is so, the present case is relieved of members” in the Bone patent are, so that the authority or persuasion of the Akron there might be as in that patent, reinforcing Case and it becomes necessary to consider metal in the heel of the wall acting with its the prior art and decide the extent and effect upright portion serving the function, to quote of its anticipation.

Judge Day, "of a cantilever beam whereby We have given a cross-section of the device the weight of the material pressing upon the

heel is transferred to the upright of the wall of the *patent, showing its shape and and operates to retain the wall in a vertical strengthening “metallic members," and the position.” patent informs of their co-operative function. If there was any prophecy (to borrow We reproduce the device and set by its side counsel's word) in it the world was slow to the Marion county wall for comparison. discern it, and we are not disposed to give

much anticipating effect to it, a view in which we have confirmation in the disclaimer of Bone—he conceding he was not the first to discover the art of reinforcing concrete.

The Planat publications are more explicit. We there see a relation between the metallic and masonry parts of a wall and their cooperation to produce strength in the wall and resistance to the pressure of and bulging from the stress of earth behind it. Both articles the Court of Appeals said, “deal with retaining walls of reinforced concrete of the cantilever type" and quoted from the article of

1896 as follows:
Вон
MARION COUNTY

"These computations suppose that one has

effectively realized the fixing of the vertical If we may assign novelty to the Bone wall wall to the horizontal slab at their junction. and consider it a broad advance upon the This fixing requires special precautions. The prior art (the extent of its advance, if any, force which tends to pull them out of the

bars at the point of junction exert a pulling we shall consider later), we may assign in

concrete. * * * But here we have only a fringement of it by the Marion county wall. half beam on a cantilever span. It is necessary To an examination of the prior art we are therefore brought.

that the extremities of the bars in the *region It would be difficult to add anything to of fixation should be held in a sufficient mass of the consideration and comment of the Court concrete or maintained by some other means. of Appeals. The court cited in support of

“One is able to reduce these projections in its judgment a patent issued to Francois bind together the vertical bars and the horizon

a very large measure, if one takes care to Coignet in 1869, and one issued to Stowell & tal bars at their point of intersection. In this Cunningham in 1899 upon an application way the pull of the bar is carried, not only on made in 1897, and to articles written by P.l its prolongation, arranged for anchorage, but

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•143

•145

(40 Sup.Ct.) also on the bar which is perpendicular to it, words, to execute them and laments that and whose great length permits it to offer a Bone should be robbed of the credit and relarge resistance to the force tending to pull ward of adding to the world's useful instruit out transversely."

mentalities which, but for him, would have The court did not enlarge upon other ex- remained in theories and the “dust from amples of the prior art nor do we think that which respondent recovered them.” it is necessary to do so. The court, however,

To execute theories by adequate instrureferred to a publication in Bauzeitung and mentalities may indeed be invention, but an the patent to Stowell & Cunningham. The answer to petitioner's contention we have former is too technical to quote and the latter given by our comment on the Bauzeitung and has not the simplicity of the Bone device; Planat publications and the fullness of their but both publication and patent represent expositions. Bone may have been ignorant structures that resist a tendency to tilting or of them and his device may not have been bulging from the pressure of the earth in

their suggestion. They seem to have been their rears.

The Bauzeitung article did this unknown to American engineers, not even by a wall which consisted of a "vertical and the interest of the controversy in the Sixth á horizontal member" which were "rigidly

Circuit having developed their existence. connected with each other" and

From this local ignorance nothing can be de

duced favorable to the patent. Its device “the ratios so chosen that the resultant of the having been described in printed publications, earth thrust passes through the horizontal part although in foreign countries, patentable or through the foundation respectively, so that there exists no longer any tendency to tilting novelty or originality cannot be asserted for so long as the two parts continue to be firmly

it. Section 4886, R. S.; 29 Stat. 692, c. 391 connected with each other."

(Comp. St. § 9430). *Such is the provision of It is further said:

the law and we cannot relax it in indulgence

to what may seem the individual's merit. "To increase the stability, the horizontal part is furthermore connected at its rear end by

The Circuit Court of Appeals, to show the means of anchors with the underground."

progress of the prior art, made use of the

illustrations of the patents and publications It will be observed, therefore, that there are no metallic reinforcing members. It is the shape of the wall-one having a base extending to the rear in the form of an L, the exact antecedent of one of the shapes de scribed by Bone as having advantage over other shapes. And there was also the suggestion of the value of a firm connection between the "vertical and horizontal member." In other words, the publication showed a retain

BAZEMING 1896

PLANT 1896 Stare Cirengren 1899 ing *wall having a heel such that the weight of the earth thereon would tend to keep the wall erect, an effect and operation that Bone declares in his patent no wall had attained prior to his invention. And that effect and operation the Circuit Court of Appeals for the Sixth Circuit considered the essence of the Bone patent, and the court said that

“It might be difficult to find invention in merely adding the form of reinforcement most

PENBEIN- 1894

PANIT • 1894

MALTHENIUS 1895 suitable to create the desired tensile strength.”

that preceded Bone's, and we also avail ourThe Stowell & Cunningham structure is, selves of the same to show that Bone's patent as we have said, somewhat complex in its was a step, not a leap, in that progress, and mechanical parts. But these are but details; that the only originality that can be accordthe physical laws that they are to avail of are ed it is in its special form and there can be explained so that “the volume of masonry" no infringement except by a copy of that of retaining walls may be reduced yet retain form or a colorable imitation of it. We do their strength by the use of metallic reinforce- not think the Marion county wall is subject ments.

to either accusation and the decree of the Counsel attacks the sufficiency of the as- Circuit Court of Appeals is serted anticipations, especially the publica- Affirmed. tions, and in effect says that whatever codceptions lurked in them conveyed no sugges

Mr. Justice DAY took no part in the contion of a "concrete entity,” to use counsel's sideration or decision.

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•144

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(251 U. S. 128)

The Attorney General and Mr. Leslie C. UNITED STATES V. BOARD OF COM’RS Garnett, of Mathews, Va., for the United OF OSAGE COUNTY, OKL., et al. States.

Messrs. Preston A. Shinn and Corbett Core (Argued April 16, 1919. Decided Dec. 15, 1919.)

nett, both of Pawhuska, Okl., for appellees.

•129 No. 309.

*Mr. Chief Justice WHITE delivered the

opinion of the Court. 1. INDIANS 6-POWER OF PROTECTION BY UNITED STATES NOT EXHAUSTED.

Although the subject was fully stated in By Act June 28, 1906, as to distribution of McCurdy v. United States, 246 U. S. 263, 38 the land and funds of the Osage Tribe of In- Sup. Ct. 289, 62 L. Ed. 706, nevertheless, to dians, the United States did not exhaust its throw light on this case, we recall the facts power as the protector and guardian of such concerning the distribution of the land and Indians, and so leave it no longer any mission funds of the Osage Tribe of Indians made or authority as to them in such respect.

under the Act of Congress of June 28, 1906, C. 2. INDIANS C27(1) - PROTECTION BY OFFI- 3572, 34 Stat. 539.

CERS OF UNITED STATES AGAINST WRONGFUL Of the tribal land there were reserved from TAXATION.

allotment certain parcels, some of which That Act June 28, 1906, as to distribution were used by the United States or the tribe of the land of the Osage Indians, subjected and others of which were used by individuals the surplus land to taxation, does not prevent for the benefit of the tribe. From the reofficers of the United States acting in its name mainder, each member was allotted three to prevent the systematic violation of the state tracts of 160 acres each, of which one was tax law, committed for purpose of destroying the rights of the Indians created by the act of Con- to be desigpated and held as a homestead.

Any land which remained was also to be al. gress.

lotted. The funds in trust in the hands of 3. INDIANS C27(1)-PROTECTION BY OFFI• the United States were divided pro rata, to

CERS OF UNITED STATES AGAINST WRONGFUL be held subject to the supervision of the
TAXATION.
As the United States, as guardian of the mineral rights in all the lands were reserved

United States. The oil, gas, coal, and other Indians, has the duty to protect them from spoliation, and therefore right to prevent them for the benefit of the tribe. The tract selectbeing illegally deprived by excessive taxation of ed as a homestead was made inalienable and the rights conferred by Act June 28, 1906, as nontaxable, subject to the action of Congress. to distribution of lands of the Osage Indians, The land embraced by other than the homeofficers of the United States can invoke relief stead allotment, called surplus land, was for the accomplishment of that purpose.

made inalienable for a period of 25 years and 4. INDIANS Om 27(1)–MULTIPLICITY OF SUITS nontaxable for 3, subject to the action of ConAS GROUND FOR ENJOINING WRONGFUL TAXA- gress. Power was conferred, however, on the

Secretary of the Interior to give to the allotNotwithstanding the remedies afforded in- tee a certificate of competency, upon receipt dividuals by state law for correction of tax of which the surplus land held by such an assessments, equity will, to prevent a multiplic- allottee become immediately alienable and ity of suits, entertain a suit by the United taxable. States on behalf of numerous Indians to prevent

In September, 1917, the United States Disenforcement of excessive taxes.

trict Attorney for the District of Oklahoma, 5. INDIANS Om27(1)-ENJOINING WRONGFUL by direction of the Attorney General, comTAXATION TO AFFORD ADEQUATE REMEDY. menced this suit in the name of the United

The wrong relied on not being a mere inis- States, for the benefit of named noncompe take or error in the enforcement of state tax tent members of the Osage Tribe and of all laws, but a systematic and intentional disregard of such laws by state officers, to destroy other mem*bers in the same situation, to pre the rights of the whole class of noncompetent vent the enforcement of state and local taxes Indians, subject to the protection of the United assessed against the surplus, although taxStates, there is a right to invoke the interposi- able, lands of said Indians for the 8 years tion of equity, that an adequate remedy may between 1910 and 1917 inclusive. be afforded.

The defendants were the board of county Appeal from the United States Circuit commissioners of Osage county, including the

county clerk and county treasurer, officials Court of Appeals for the Eighth Circuit.

charged by the laws of the state with the enSuit by the United States against the forcement of the taxes which were assailed. Board of County Commissioners of Osage After averring the existence of authority in County, Oklahoma. Decree dismissing the the United States, in virtue of its guardianbill was affirmed by the Circuit Court of Ap- ship of the Indians and as a result of the peals (254 Fed. 570, 166 C. O. A. 128), and terms of the allotment act, to protect and complainant appeals. Reversed

and re safeguard the interests of the Indians from manded.

the enforcement of the illegal taxes comFor other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes

TION.

• 130

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