Strom Manuf'g Co. v. Weir Frog Co.

SAGE, District Judge. The defendant demurs to the first, second, third, sixth, ninth, and tenth claims of the complainant’s patent, granted to Charles Alkins, November 6, 1886, for an improvement in rail braces. (1) The first ground of demurrer is that the bill does not contain any matter of equity whereon this court could ground any decree and give to tho complainant any relief against the defendant on account of said claims. (2) That the alleged Improvements specified in said claims were not new and patentable at the time of the alleged invention thereof, inasmuch as before that time it was the common and general knowledge of the public, of which the court will take judicial notice, that the art of striking up metal blanks into hollow articles was old, that the shaping of the article produced depended upon the form of the dies used, and that it has been held not to be invention to change the form of a die so as to make a new-shaped article under It. [282] (3) That cast rail braces of the character and form of the patented one, but with the solid abutments, being admitted by the bill to be old before the date of the alleged invention, it is not shown by said bill that there was any invention in making the abutment hollow; that being a well and generally known result of the common practice of the art of striking up metal into any hollow form, of which the court will take judicial notice, and no novel, special, or other means than the public possessed is described in said patent for the accomplishment of this result. Counsel subsequently added the following causes of demurrer: (4) That there is no- allegation that the invention, or so much of it as is specified in said claims, had not been patented or described in any printed publication in this or any foreign country before the date of the invention. This ground of demurrer was conceded by counsel for the complainant, who prepared and submitted to defendant’s counsel an amendment curing the defect, which has been admitted to the files. (5) That the patent is void, so far as it relates to claims 1, 2, and 3, because there is no sufficient description, as required by section 4S88 of the Revised Statutes of the United States. (6) That the patent is void, so far as it relates to claims 9 and 10, because there is no sufficient description, as required by section 4888 of the Revised Statutes of the United States. The fifth and sixth causes for demurrer will be overruled for the reasons stated in Kilbourne v. W. Bingham Co., 1 C. C. A. 617, 50 Fed. 697. That suit related to a sink swaged or struck up from a single sheet of wrought iron or steel, without joint, seam, or interior angle. The court said that, if that element of the claim were a new process, it was not sufficiently described to meet all requirements of section 4888, but that the antiquity of the process, and the fact that the patentee did not expressly or by implication claim it, saved the patent from the objection. The court further said that “the art of swaging metals .into any required form was venerable long anterior to this patent.” Then follow illustrations, and the statement that “the variety of manufactures by this process has been limited only by the art of designing, the ductility of metals, and the possibilities of machinery.” The same case in the court below is reported in 47 Fed. 57, where a like view was taken. So here, although the process is not stated in detail in the claims, it is, considering-the antiquity of the art of swaging, sufficiently shown in the drawings and in the specification. The remaining causes for demurrer are well founded upon the authority of the cases already cited. It appears from the specification of the letters patent that, prior to the complainant’s invention, braces formed of cast metal, and of the character of the brace described upon which the claims are founded, had been in common use, and the only novelty in the complainant’s construction consisted in the production of a rail brace stamped or struck up by dies from a blank of wrought or malleable iron or steel in a manner to convert the blank into a suitable base provided with a hollow abutment adapted to engage the rail in order to effectively brace the same. The blank, it is stated in the specification, can be sheared from a strip or oblong plate, then cut or trimmed with reference to the [283] desired ultimate shape of the abutting end or face of the hollow abutment, and to the particular way in which it is desired that .the same shall bear against or engage the rail. There is no invention displayed in this improvement. The reasons for this conclusion are so fully stated in the cases cited above as to make the reference sufficient. The suggestion made by counsel for the complainant that general demurrers to bills in patent suits ought to be discouraged, upon the authority of McCoy v. Nelson, 121 U. S. 484, 7 Sup. Ct. 1000, and other cases cited in the brief, is fully met and overcome by the later cases (see Locomotive Works v. Medart, 158 U. S. 68, 15 Sup. Ct. 745), which favor consideration of the merits upon demurrer, and dismissal of the bill whenever it appears upon the face of the patent that it lacks invention. Certainly sucli practice ought to be encouraged. Otherwise, the life of a worthless or invalid patent might be prolonged, and sums exacted by way of compromise from users by reason of the dread of the heavy expenses attending the taking of testimony and other matters necessary to the preparation of patent suits for final hearing. The demurrer will be sustained upon the first three grounds assigned. The fourth ground, having been, by consent, cured by amendment, will be treated as withdrawn. The fifth and sixth grounds of demurrer will be overruled. The bill will be dismissed, at .the costs of the complainant.