Monce v. Woodworth. similar to defendant's Exhibit M, (the tool which Morison purchased in 1860-'61), wheel set in wood similar to this. Should think this might be it, but could not swear to it; could not swear to the length of handle. Says he stood near, watching the process, and afterward the tool was held up near his eyes, and the cutter rolled with the finger. Now, this witness does not swear positively to the identity of the tool; but he does. swear that it was similar to the one annexed to the deposition of Mrs. Herbert (Exhibit M), and as Morison swears that this is the only tool of the kind he ever had, it makes it quite certain this was the tool which he saw. Warren S. Hill, an expert, called as a witness by defendant, says that the rotary cutter in Exhibit M is the same, in kind and form, as that described in letters patent to the plaintiff, No. 91,150. So says another expert, Edward H. Johnson. Indeed, there can be no doubt the tool described in the complainant's letters patent No. 91,150 and the one purchased by Morison in the winter of 1860 and 1861, are substantially similar in form, material, construction and use. This, I think, was conceded in the argument. So far, there would seem to be very little, if any, doubt, that in the winter of 1860 and 1861, Charles L. Morison purchased a tool embodying the complainant's invention, constructed subtantially in the same way, and used for the same purpose. It would also seem very probable that Henry F. Herbert had a similar tool, used for the same purpose, at the same time, and up to 1865. If so, the complainant's case must fail, because he was not the original inventor. Lippincott, 2 Fish., 1. Rich v. But the case does not rest solely upon this evidence. Milo Bailey, another witnesss called by the defendant, testifies that he is a trader at Haverhill, New Hampshire, at Haverhill Corner; that he traded at the Oliverian Village in that town from 1860 to 1867, and in 1867 removed to the Corner. He says that while trading at the Oliverian Village in 1865, latter part, or 1866, he purchased some rotary glass-cutters, either three or six, of a peddler; that he has one of them now, which he annexes to his deposition, marked O; that he sold the others, one to Michael Carlton, Jr.; that these cutters were for cut Monce v. Woodworth. ting glass, and that he used the one retained by him for cutting glass, and that he so used it at the Oliverian Village before he moved thence, in 1867. This was two years or thereabouts before the granting of the patent to the plaintiff, in 1869. He says, he recollects the fact of having the tool before he moved from the Oliverian Village; that he kept it in the money-drawer, and used it to cut glass when he had not the size to suit a customer; that was what he bought and used it for. Charles K. Carlton, being called as a witness, says that his father, Michael Carlton, Jr., purchased a rotary glass-cutter of Milo Bailey in the spring or summer of 1867; that he stood beside him when he purchased it; and it has since been in his father's or his own possession, and was bought to cut glass with, and has been so used, and for nothing else. He says it was purchased when Mr. Bailey first moved to Haverhill Corner, and when the store was entirely new, newly repaired. He says this tool had upon it a label or paper, on which was printed "carbonized disk," which he removed at or about the time of the taking of his deposition. This tool is produced, marked P, and is identical in appearance with the one marked O, and the two are identical in construction with the one purchased and produced by Mr. Morison. Here, then, are three tools shown, which are claimed and proved to have been purchased and used prior to the granting of the complainant's patent, and one of them several years. To overcome this testimony of the defendant, the complainant offers the testimony of George Henry, who says he has been engaged in the manufacture of the carbonized-disk glasscutter; that he commenced in the latter part of 1869, and continued somewhat over two or three years. At first he disposed of them to persons "coming along," "happening in," but the greater part to one man, a Mr. Brooks; and that, in all, he manufactured some sixty or seventy thousand of them. Upon being shown the tools exhibited by the defendant, marked M, O, P, he says he thinks or believes he made them at his shop, and gives his reason for such belief, that the brasses are driven in in the same way, and pinned in the same way, and that the general style is altogether the same. There was no mark upon them but the paper label. Monce v. Woodworth. Charles Brooks, another witness, called by the complainant, states that he had bought and sold the carbonized-disk cutter made by Mr. Henry for three or four years; that the amount of his trade was, in all, seven or eight thousand dollars. Upon being shown the tools marked M, O, P, he says he should say they were similar to the tools made by Mr. Henry, and that they were a part of the tools made by him, in his belief. Neither of these two witnesses, however, swear positively that Henry made these tools. There is no certain, sure mark upon them, beyond a general similarity, and the paper label, which seems to have been on one of them. Now, if they could identify them as made by Mr. Henry, would the testimony of those two witnesses overbear the testimony of the defendant's witnesses, fixing the time and reciting the circumstances with the particularity that they do? There are other witnesses called, to whom I have not alluded, because I have found nothing in their testimony which could have changed the probabilities of the case, or the balance of testimony. The letters patent to the plaintiff are prima facie evidence of the novelty of the invention, and the burden of proof is upon the defendant to overcome this evidence, and in this case I think he has done it. Barnard & Mitchell, for the complainant. Pike & Blodgett, for the defendant. Miller v. Smith. NATHAN G. MILLER vs. FRIEND W. SMITH ET AL. IN EQUITY. Upon the construction given by the court to the second claim of the patent granted to James W. Lyon, for improvement in padlocks, dated April 22d, 1862, and numbered 35,030, the defendants held not to have infringed. (Before SHIPMAN, J., District of Connecticut, May, 1879.) SHIPMAN, J. This is a bill in equity, based upon the alleged infringement of letters patent which were granted to James W. Lyon, on April 22d, 1862, for an improvement in padlocks. The patent was assigned to the plaintiff on March 18th, 1874. The device, which is alleged to be an infringement, is used upon the post-office street letter-boxes in various cities of the country, and is manufactured by the defendants under a contract with the United States Government, and was patented December 23d, 1873. It was adopted by the Post-Office Department after a competitive trial, and is a secure and successful lock. There is no evidence that the plaintiff's lock has ever been manufactured, and there is satisfactory evidence that it is an unsafe lock. The patent was purchased after the plaintiff knew that the defendants had obtained their contract. The specification of the plaintiff's patent states as follows: "The first part of my invention consists in combining with the shackle two separate and independent sets of tumbler-catches -one set to lock the heel, and the other set to lock the front or staple of the shackle-the two sets being so arranged and so adapted to each other, substantially as hereinafter described, that both sets are released from the shackle by the direct action of the key lifting the several tumblers of each set, in the usual manner of actuating tumblers, by a key, and without the em Miller v. Smith. ployment of other intervening mechanism, between the key and either end of the shackle, than the tumbler-catches, which are each so constructed and so arranged and adapted to each other in the combination as to perform the function of a catch or bolt, a tumbler, and a detector, the whole performing the office, and affording the security of a double series of tumbler-catches. "The second part of my invention" (which is the part claimed to have been infringed) "consists in providing against the release of the tumbler-catches from the heel of the shackle by the action of a key, other than the proper key or a duplicate thereof, by the relative arrangement of the grooves g, in the dogs or tumbler-catches a, with the pins or flanges b on the part d, projecting from the heel of the shackle, whereby they act in combination with each other as guards or detectors against attempts to open the lock with a key or other instrument which will move the tumblers a to a greater or less distance than the proper key." The second claim is as follows: "I claim in combination, the grooves g, in the dogs a, and the flanges or pins on the projecting part of the heel of the shackle, substantially as and for the purpose described." If the second claim is for a combination of gated tumblers, called grooves in the patent, which must be moved to a definite distance before the lock can be unlocked, with a stump or projection mounted upon the heel of a shackle, extending below the point of suspension of the shackle, on the opposite side of the pivot from the nose, these parts being so arranged that the ends of the tumblers nearest the stump are in such location, with respect to the stump on the heel, that the parts of the tumblers in which there are no gates will directly resist any attempt to open the shackle until the tumblers are so moved that the gates come directly opposite the stump, then the defendants infringe. In other words, if the plaintiff's patent is broad enough to include any projection upon the heel of a shackle, extending downward below the pin on which the shackle vibrates, and acting in combination with grooved or slotted tumblers, so as to enter the slots of the tumblers when the tumblers are acted upon by the proper key, then it includes the defendants' lock. But I think that the second claim of the plaintiff's patent is |