WIRT v. HICKS et al. (Circuit Court, S. D. New York. February 23, 1891.) 1. PATENTS FOR INVENTIONS-FOUNTAIN PEN-ANTICIPATION. Letters patent Nos. 260,134, issued June 27, 1882, to Marvin C. Stone, and 311,534, issued February 3, 1885, to Paul E. Wirt, for fountain pens, in which the ink is led to the nibs by capillary attraction between the pen and a lip which extends into the ink reservoir, were not anticipated by British letters patent No. 2,858, issued October 2, 1869, to John Butcher, and letters patent No. 14,425, issued March 11, 1856, to A. F. and C. M. H. Warren, for pens having channels for guiding a flow of ink by gravity which might produce capillary attraction to aid the flow. 2. SAME-INFRINGEMENT. Said letters patent are infringed by a pen in which the ink is drawn from the reservoir by capillary attraction, though in it the atmospheric pressure which sustains the ink and regulates its flow is assisted by a disk with holes in it instead of a nozzle, as in the Wirt pen, and though the extension of this disk into the reservoir is different from the lip in the Wirt pen, since these parts, though different, do the same things in substantially the same way. 3. SAME-APPLICATION-AMENDMENT BY ATTORNEY. Where an application for patent is made by the inventor during his life by attorney, the fact that changes were made by the attorney in the specifications and claims without new oaths will not invalidate the patent, since a discretion as to the allowance of such amendments is vested in the commissioner. In Equity. Bill for injunction. WHEELER, J. This suit is brought upon letters patent No. 260,134, granted June 27, 1882, to Marvin C. Stone, and No. 311,534, granted February 3, 1885, to the orator, for fountain pens, in which the ink is led to the nibs by capillary attraction between a lip and the pen, and in those of the latter the ink is brought within reach of the attraction by an extension of the lip into the reservoir. The defendants' pens are made under George H. Sackett, and letters patent No. 349,753, granted to him September 28, 1886. These inventions were under consideration on substantially the same evidence in Sackett v. Smith, 42 Fed. Rep. 846, brought against a dealer in the orator's pens; and the question of their order in time was passed upon. The conclusion upon this was that Stone's was first, the orator's next, and Sackett's last. A careful examination of the evidence now leads to the same result, and the reasons there given for the conclusion are fully concurred in. The novelty of the inventions of the orator's patents is further questioned upon several prior patents, and most closely upon British patent No. 2,858, of October 2, 1869, to John Butcher, and American patent No. 14,425, of March 11, 1856, to A. F. and C. M. H. Warren. Each of these describes channels for guiding a flow of ink by gravity, which might produce capillary attraction to aid the flow, and might not; neither describes drawing the ink to the nibs by that process. Stone's invention stands first as to that, and the orator's first for extending the lip into the reservoir. The validity of both of the orator's patents is further questioned, because after the applications were filed important changes were made by attorney in the specification and claims upon which the patents were granted without new oaths. The proofs show that the inventions patented were made by the inventors, respectively, before the making of the applications. Amendments in correction or amplification by attorney appear to be allowable. Eagleton Manuf'g Co. v. West, etc., Manuf'g Co., 111 U. S. 490, 4 Sup. Ct. Rep. 593. Whether proposed amendments come within the scope of what is proper in that behalf must rest largely in the discretion of the commissioner, while the inventor is alive, and prosecuting his application by attorney. If the patentee was not the first inventor, or was not alive, and capable of having an attorney, or of prosecuting the application at the time of the amendment, the patent might fail. Eagleton Manuf'g Co. v. West, etc., Manuf'g Co., 18 Blatchf. 218, 2 Fed. Rep. 774; 111 U. S. 490, 4 Sup. Ct. Rep. 593. These amendments do not appear clearly to have been outside of the commissioner's discretion, nor within any of these disabilities. None of the defenses or objections to either of the patents appears to be tenable, and both must therefore be considered as valid. This conclusion is borne out, to some extent, as to the orator's own patent by Wirt v. Brown, 30 Fed. Rep. 188, 32 Fed. Rep. 283. All these pens have a reservoir in a handle, closed at the top, in which the ink is sustained partly by atmospheric pressure. In Stone's this pressure is assisted by sponge or other porous material between the body of the ink and the pen, which also assists in regulating the outflow of ink and influx of air. In the orator's this pressure is assisted by what he calls a "nozzle," with openings through it for the outflow of ink and influx of air, and which holds the lip and its extension in place. In the defendants' this pressure is assisted by a disk, with holes through it for the outflow of ink and influx of air, and which supports a lip for leading ink to the nibs by capillary attraction, and an extension into the reservoir for keeping ink within reach of the attraction. The form of the disk is very different from that of the nozzle, and that of the extension from the disk into the reservoir very different from that from the lip through the nozzle into the reservoir, and the form of the lips is somewhat different; but still these parts do the same things in substantially the same way in each of these respective pens. Stone invented and patented the capillary feed; the orator the extension from the feed into the reservoir, in fountain pens. Neither invented mere improvements on these parts, although they were only improvements on such pens, but each invented the part itself in that combination. Each by his patent became entitled to a full monopoly of what he had so invented and patented. SewingMachine Co. v. Lancaster, 129 U. S. 263, 9 Sup. Ct. Rep. 299. The disk and extension into the reservoir of Sackett may be, and probably are, improvements upon the corresponding parts of the orator's pen; but taking the patented parts to build upon is none the less an infringement. The defendants have taken a part, at least, of the patented invention of each patent, as they are now considered. The orator therefore appears to be entitled to a decree. Let a decree be entered for an injunction and an account, with costs. v.45F.no 4-17 WAITE v. CHICHESTER CHAIR Co. (Circuit Court, S. D. New York. February 23, 1891.) 1. PATENTS FOR INVENTIONS-CHILD'S CHAIR-UTILITY. Letters patent No. 224,923, issued February 24, 1880, to Joseph W. Kenna for a combination child's high chair and carriage, consisting of the frame of a low chair on wheels, hinged at the lower front corners to the upper front corners of a frame to support it as a high chair, with a bail hinged to the lower frame for a handle to the carriage, turning under a yielding rest below the rear stretcher of the upper frame, to support the back as a high chair, are not void for want of utility, though a chair made of this combination alone would be liable, when used as a high chair, to tip forward, so as to throw the child out, by the weight of the child when thrown forward. 2. SAME-INFRINGEMENT. Said patent is infringed by a chair which differs from the one described in the patent only in dispensing with the yielding rest, and carrying the bail up to the seat of the chair, where it will be held in place by the seat, and will support the back part of the chair. Following Thompson v. Derby, 32 Fed. Rep. 830. Where a defendant has been manufacturing an infringing article for 10 or 11 years, and the patentee has known of it for 5 or 6 years without making objection, a preliminary injunction will not be granted to restrain the infringement. In Equity. J. E. Maynadier, for complainant. WHEELER, J. This suit is brought upon letters patent No. 224,923, dated February 24, 1880, and granted to Joseph W. Kenna for a child's chair and carriage. Thompson v. Derby, 32 Fed. Rep. 830, in the circuit court for the district of Massachusetts, was brought upon this patent. The second claim, which is the one in controversy here, was held to be valid, and the chair alleged here to infringe was held to be an infringement. The principal questions here, therefore, are whether this case differs materially from that, and, if so, to what result it leads. The patent is for a combined high chair and low carriage, convertible into either by hinging the frame of a low chair on wheels at the lower front corners to the upper front corners of a frame to support it as a high chair, into which it will turn to be lowered to make a carriage, with a bail hinged to the lower frame for a handle to the carriage, turning under a yielding rest below the rear stretcher of the upper frame, to support the back of it as a high chair. The second claim is for the combination of the two frames with the bail and yielding rest. The validity and scope of this claim as affected by reference of the patent office to the Pearl chair, numbered 292 in Heywood Bros.' catalogue, was considered in the former case. That chair had a yielding rest, not shown in the catalogue nor in the case. This is much relied upon now. If the claim was for a yielding rest, this would be very material; but it is not. The claim is for the combination of these parts in the formation of combined chair and carriage, each of which was well known in such a combined chair and carriage before, but which had never been combined together in any combined chair and carriage before. The combined chair and carriage produced by the combination of these several parts together in it was new in the sense of the patent law, and patentable. This conclusion is not varied by proof of prior knowledge of any of the parts. The defendants in the former case claimed that Lemuel A. Chichester was the first inventor of this combination. The defendant makes the same claim here upon additional testimony. This new state of the proofs does not, however, warrant any conclusion that the order of invention in time was any different from that to be presumed from the patents, and from that found before. A chair made of this combination alone would be liable, when used as a high chair, to be tipped forward above the hinge, by the weight of a child thrown forward, and to throw the child. out. Much stress is laid upon this as showing that the invention covered by this claim is inoperative, useless, and not patentable. This does. not appear to have been shown and so relied upon in the former case. The patent showed one way, and various others were known, for preventing this tipping forward. In Loom Co. v. Higgins, 105 U. S. 580, the Webster wire motion in question would not operate at all without putting other parts with it, not mentioned. Still the patent was upheld against objection for that reason. The other necessary parts were said to be implied and understood. Besides this, a chair made only of the parts named in the combination, as usually constructed, might not be wholly useless. It would be safe in some positions, and not dangerous in any, without throwing the weight outside the joint. The most serious question is that of infringement. As the parts are all old, the combination of any less than all of them in their place in a chair would make a different chair in that respect and not infringe. The defendant dispenses with the yielding rest, which would hold the bail in place under the rear stretcher, and carries the bail up to the seat of the chair, where it will be held in place by that, and support the back part of the chair. The operation of the bail is the same in each. It is a handle for the structure as a carriage, and a support for the back part of the seat when the structure is a high chair. The yielding rest of the Pearl chair was at the under side of the seat, where the defendant's bail rests; but that does not limit the scope of the combination of the patent. That rest there is the equivalent of that of the combination. The seat answers the purpose of the rest in either case, and is the equivalent of either. The question of infringement is therefore the same now as it was in the former case, and is to be decided in the same way. A question about an injunction is made now which was not made in the former case. The defendants and its predecessors have been making the infringing chair 10 or 11 years, and the orator has known of it 5 or 6 without making objection. The granting of an injunction is somewhat discretionary, although the recovery of damages, and of profits as damages, is a matter of legal right. This subject, with the authorities bearing upon it, is well examined by CoxE, J., in Kittle v. Hall, 29 Fed. Rep. 508. The orator appears to be entitled to a decree for an account of profits and damages, but, under the circumstances, the question of granting an injunction is left until the coming in of the master's report. Let a decree be entered for the orator for an account of profits and damages, with costs. HILL v. BOARD OF CHOSEN FREEHOLDERS OF ESSEX COUNTY et al. (District Court, D. New Jersey. February 19, 1891.) ADMIRALTY JURISDICTION-INJURY TO VESSEL IN DRAW. The admiralty jurisdiction of the federal courts extends to a libel in personam for an injury to a vessel resulting from negligence in the management of a drawbridge over navigable tide-waters of the United States. In Admiralty. Libel in personam. Charles E. Hill, pro se. F. W. Stevens, for respondents. GREEN, J. This libel was filed to recover from the respondents damages sustained by the libelant's steam-propeller Mignon, under the following circumstances, as alleged and stated in the libel: On the 16th day of September, 1889, the propeller Mignon, under the charge of a competent master and crew, was proceeding down the Passaic river, within the territorial limits of the state of New Jersey, and near a certain bridge constructed over that river, connecting Bridge street, in the city of Newark, and Harrison avenue, in the town of Harrison, and commonly known and designated as the "Free Bridge." The river, at the point where the bridge is so constructed, forms a part of the navigable tide-waters of the United States. The bridge is a double swing drawbridge, having two draws or openings to permit the passage of vessels navigating the river. On the day in question, as the Mignon, on her course down the river, approached this bridge, the usual signal whistle was sounded to warn the bridge attendant of her approach, and to notify him to open the draw, so that safe passage could be had. The duty of attending to the bridge, and of opening and closing the draw, it is alleged, is cast by law upon the respondents, and, upon this occasion, this duty was so unskillfully, negligently, and carelessly performed by the respondents' agents and servants that, without any fault of the Mignon, she was brought into collision with the overhanging part of the draw-bridge, and sustained, in consequence, serious pecuniary damage. It is to recover of the respondents this damage that this libel has been filed. The matter comes before the court now, not upon the merits, but upon the question of jurisdiction. The respondents have filed their answer to the libel, and, inter alia, they insist that an action for damage or loss sustained by the collision of the Mignon with the bridge in question, under the circumstances stated, is not a case of admiralty and maritime juris |