Burdett v. Estey.

Brattleboro', in Vermont, prior to the commencement of this suit. Mr. Renwick, the plaintiff's expert, testifies, that said Exhibit C contains, in his opinion, the arrangement of instrumentalities recited in the first claim of the plaintiff's patent, because it has a reed board corresponding with the reed board A described in the patent, having a complete diapason set of reeds at one side of said reed board, and a complete octave set of reeds at the other side of said reed board, and having an additional partial set of reeds extending from about tenor F upward through the scale of the instrument, arranged intermediately between and above the other two sets of reeds, substantially as represented in the drawings of the patent, so that the width of reed board required is practically the same as that required for the two complete sets of reeds only; and that the reeds of said Exhibit C correspond substantially, in their relative dimensions, and positions, and arrangement in the reed board, with the reeds described and represented in the plaintiff's patent, and are, therefore, substantially the same, considered as mechanical instrumentalities. This testimony is not contradicted, and it must, therefore, be held that the charge of infringement of the first claim is established.

The main question in the case is, whether the invention covered by the first claim was new. The evidence is very voluminous. It would not be profitable to discuss it at length. Most of it relates to the question whether one Arvid Dayton was the prior inventor of what is covered by the first claim. All the evidence, and the exhibits, on the question of novelty, have been carefully considered and examined, and the conclusion of the court is, that no arrangement of reed board and sets of reeds substantially the same as that covered by the said first claim, as that claim has been herein before defined, existed prior to the plaintiff's invention of what is covered by said first claim. Much of the evidence in the case relates to Exhibit 21, produced by the defendants as an organ made by Dayton in 1866, prior to the plaintiff's invention; and a large part of it consists of evidence put in by the plaintiff with a view of establishing as a fact, that the parts of that organ which are contended by the defendants to be substan

Burdett v. Estey.

tially, in arrangement, like the arrangement specified in the first claim, were fabricated for the purposes of this suit, after it was commenced, while another large part of it consists of evidence put in by the defendants with the view of establishing as a fact, that those parts were made in 1866, prior to the plaintiff's invention. The plaintiff's view as to such fabrication would, if true, make it necessary to conclude that such evidence on the part of the defendants is, to a large extent, founded on fraud and perjury. An examination of the evidence on both sides on that subject has led the court to the conclusion, that Exhibit 21 contained, when it was made in 1866, the same arrangement of reed board and reeds which it now contains. But such arrangement did not and does not embrace the entire arrangement specified and claimed in the plaintiff's first claim, as that arrangement has been hereinbefore defined. Although there was and is in Exhibit 21 an additional partial set of reeds put in on an incline, and although the reeds in that set may have been tuned flat in relation to the reeds in the diapason set, yet such additional partial set was not and is not in the vacant space between the other two sets, in the sense of the plaintiff's patent, and was not and is not at all in the reed board as made for two sets of reeds, but is entirely above such reed board, and is placed in an addition to such reed board, constructed expressly for receiving such additional partial set, and, although the reeds in such additional partial set run obliquely, they do not run to the foundation board, but run only to such reed board, and the vibrating ends of such reeds do not rest on the same base as the other sets of reeds, but extend down no farther than the upper surface of such reed board, and are the entire thickness of such reed board above the vibrating ends of the reeds in the other two sets. No arrangement of reed board and reeds, adduced as anticipating the invention covered by the first claim of the plaintiff's patent, contains the entire arrangement claimed in that claim.

The second claim is in these words: "The reed board A and the foundation board G, constructed with the contracted valve openings D, F, F, and the reeds arranged in relation thereto, all in the manner described." The expression,

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Burdett v. Estey.

the reeds," in this claim, means, the reeds in the two sets and the additional set. In the specification and drawings, D is the valve opening in the foundation board, and F, F, F, are the throats or air passages communicating with the reeds. The language of the second claim, in connection with that of the descriptive portion of the specification, and with the drawing, Fig. 3, indicates, as testified by the plaintiff's expert, Mr. Renwick, "that the idea conveyed by the word 'contracted,' when used in reference to the valve openings and passages indicated by the letters D and F, is, that the valve openings and passages for the two complete sets of reeds and the intermediate partial set are contracted or condensed within the same space which is usually occupied by the valve openings and passages for two complete sets of reeds only, in an instrument of the usual construction previous to the date of the invention." As otherwise expressed by the same witness, the valve opening in the foundation board and its valve are not practically of any larger size than is required for the first two sets of reeds only, so that the operator has the advantage of using three sets of reeds throughout a large portion of the scale of the instrument, without applying any more force to the keys than is required for opening the valves for two complete sets only." The valve openings in the plaintiff's arrangement are contracted from what their length and size would be in an instrument with three full sets of reeds, as in the tri-reed board shown in the plaintiff's patent of 1866. The difficulties arising from the use of the long valve of the tri-reed board with three full sets of reeds, are painted out in the testimony of the plaintiff, in his answer, before cited, to question 37, on his direct examination. The plaintiff, by his new arrangement, gets the advantages of three sets of reeds, so far as three sets are practically useful, and dispenses with the difficulties attending the large valve openings before used with three full sets of reeds, and has valve openings no larger than would be used in a reed board with only two full sets of reeds. In this sense, his valve openings are "contracted," when they are considered with reference to the reeds used with them; and the invention claimed in the second claim is useful and patentable. It has been infringed

Burdett v. Estey.

by the defendants, in the making and selling of Exhibit C. The invention covered by it was new at the date of the plaintiff's invention. Nothing is adduced that anticipates it. It is not found in the plaintiff's patent of 1866. The valve openings in Exhibit 21 are not the contracted valve openings of the plaintiff, but are as large as the valve openings in a tri-reed board having three full sets of reeds. The lowest and longest reeds in the two full sets do not, as in the plaintiff's arrangement, have their vibrating ends as near together as they can be, with room only between them for the tracker pin. Nor are the plaintiff's contracted valve openings found in any of the other prior reed boards of Dayton. In regard to the fourth claim, the evidence shows, that independent dampers, such as those mentioned in that claim, were used in reed organs many years before the plaintiff's invenThere was no invention in adapting such dampers to a reed board having the sets of reeds described in the plaintiff's patent of 1869.

It is contended, on the part of the defendants, that the plaintiff's patent is void, on the ground of deceptive and fraudulent description in the specification; and on the ground of fraudulent and deceptive misdescription in regard to the method of tuning, and in regard to the peculiar quality of the tone produced, and in regard to the power of the instrument and its ease of operation, and in regard to other matters; and because it claims what is not described in the specification or shown in the drawings. These objections have been considered by the court, and are not regarded as tenable.

It is also contended, that the plaintiff's patent is void, because he has not disclaimed the inventions claimed in the third and fourth claims of his patent. Assuming that, in a suit where the third claim was alleged to be infringed, and was involved, the court would, on the construction proper to be given to such claim, hold that it was invalid, it cannot be held, in this case, that the plaintiff has unreasonably neglected or delayed to enter, at the Patent Office, a disclaimer to either of those two claims. The questions involved in construing those two claims, with reference to their validity on

Burdett v. Estey.

the points of novelty and patentability, are largely questions of law, and not of fact; and the fact that the patent was granted for those two claims, under the circumstances attending the granting of it, entitled the plaintiff to repose upon it as valid in respect to those two claims, until the decision of a court holding otherwise. This is the view deducible from the authorities. O'Reilly v. Morse, 15 Howard, 62, 121; Seymour v. McCormick, 19 Howard, 96, 106. The plaintiff is entitled to recover on the first two claims of his patent, although he did not, before the commencement of this suit, disclaim what is covered by his fourth claim, inasmuch as he was not guilty of unreasonable neglect or delay in not making such disclaimer; but he cannot recover the costs of this suit, because he did not, before the suit was brought, file in the Patent Office a disclaimer of what is claimed by his fourth claim. O'Reilly v. Morse, and Seymour v. McCormick, above cited; Tuck v. Bramhill, 6 Blatchf. C. C. R., 95; Hall v. Wiles, 2 Id., 194, 198; Smith v. Nichols, 21 Wallace, 117, and cases there cited.

When the plaintiff shall have presented to the court satisfactory evidence that he has filed a proper disclaimer of what is claimed by his fourth claim, he will be entitled to a decree for a perpetual injunction, and an account of profits and damages, as respects the first and second claims of the patent, but without costs.

This case, because of the large interests involved in it, and for reasons growing out of the character of some of the evidence in it, was heard before the Circuit Judge and the District Judge sitting together. It was argued on both sides with great care, research, ability and zeal, and we have given to it our most earnest and attentive consideration. The results reached express the concurring views of both of the judges.

George F. Edmunds and Edward J. Phelps, for the complainant.

William M. Evarts, Edmund Burke and Edward N. Dickerson, for the defendants.