California Artificial Stone Paving Co v. Molitor

• Decision Date: 02 March 1885
• Citation: 28 L.Ed. 1106,5 S.Ct. 618,113 U.S. 609
• Parties: CALIFORNIA ARTIFICIAL STONE PAVING CO. v. MOLITOR. 1 (Two Cases.)
• Court: U.S. Supreme Court

113 U.S. 609

5 S.Ct. 618

28 L.Ed. 1106

CALIFORNIA ARTIFICIAL STONE PAVING CO. v. MOLITOR.¹ (Two Cases.)

March 2, 1885.

M. A. Wheaton, for Paving Co. E. M. Marble, for Molitor.

BRADLEY, J.

A bill was filed by the appellant in this case against the appellee, complaining that the latter had infringed, and continued to infringe, certain letters patent granted to one John J. Schillinger, and which had been assigned for the state of California to the complainant. The patent was for an improvement in concrete pavement, and was originally issued July 19, 1870, and reissued May 2, 1871. The improvement, as described in the reissued patent, consisted in laying the pavement i detached blocks, separated from each other by strips of tar paper, or other suitable material, so as to prevent the blocks from adhering to each other. As stated in the specification, 'the paper constitutes a tight water-proof joint, but it allows the several blocks to heave separately from the effects of frost, or to be raised or removed separately, whenever occasion may require, without injury to the adjacent blocks.' Prior to this invention, it seems, from the statement of facts made by the court, that concrete pavements had been made in one continuous sheet, without being divided into blocks, whence it was liable to crack in irregular directions, and to break up in such a manner as to render it useless. The specification of the reissued patent contained the following clause: 'In such cases, however, where cheapness is an object, the tar paper may be omitted, and the blocks formed without interposing anything between their joints as previously described. In this latter case the joints soon fill up with sand or dust, and the pavement is rendered sufficiently tight for many purposes, while the blocks are detached from each other, and can be taken up and relaid, each independent of the adjoining blocks;' but this clause had been disclaimed by filing a disclaimer in the patent-office. The patent had two claims, as follows: '(1) A concrete pavement laid in detached blocks or sections, substantially in the manner shown and described; (2) the arrangement of tar paper, or its equivalent, between adjoining blocks of concrete, substantially as and for the purposes set forth.'

The defendant answered the bill, denying the validity of the patent and denying infringement, and declaring that the concrete pavements made by him were made under and in accordance with certain letters patent granted to one J. B. Hurlburt, April 20, 1875, the process of which is described in the answer, as follows:

'The said Hurlburt invention is a novel method of forming blocks of artificial stone or cement pavement, whereby they are prevented from becoming uneven by sinking below or rising above a common plane, and consists in beveling the edges of the blocks so that they will measure more across their under side in one direction and less across their upper side than across their under side in the other or opposite direction; and also consists in the novel construction of a forming frame, whereby the blocks are beveled as devised by using the different sides of the frame alternately; and also in the novel construction of a parting strip, whereby the colors are kept separate, showing a straight line between the blocks and while forming their edges in actual contact, the same strip being of great service to rest a straight edge upon while beveling the block in process of formation, and that by said invention the process of laying cement pavements saves from 10 to 15 per cent. in cost of labor over any other known process, entirely dispenses with tar paper or any equivalent, and all other expensive superfluities, and makes a close-beveled joint; it being impossible to raise, or attempt to raise, any separate piece of work without chiseling and digging and materially unjuring adjacent work.'

What the proof was as to the actual process employed by the defendant, whether it strictly accorded with Hurlburt's plan or not, does not distinctly appear. The appellee's counsel in his brief states that the respondent was originally adjudged to have infringed the rights secured by the patent, by reason of having pressed into the joints made by the cutting of the large sections into blocks with a trowel, a fine concrete which was held to be the equivalent of the tar paper, as it accomplished the objects claimed to be gained by the patented invention, viz., producing a suitable tight joint and yet allowing the blocks to be raised separately without affecting the block adjacent thereto, and allowed the several blocks to heave separately from the effects of frost. But this fact is not shown by the record before us, and we are in the dark as to what particular form of pavement was adjudged by the court to have been an infringement of the patent sued on. We only know that, proofs having been taken and the cause heard, the circuit on September 10, 1881, decreed as follows:

'That the reissued letters patent No. 4,364, granted and issued on the second day of May, A. D. 1871, to John J. Schillinger, of New York, being the patent referred to in the bill of complaint herein, are good and valid in law. * * * That the said defendant, Charles A. Molitor, has infringed said reissued letters patent, and upon the exclusive rights of the complainant under the same; that is to say, by making or selling one or more artificial concrete cement pavements within the state of California, and while the complainant was the owner of said reissued letters patent, as charged in said bill of complaint. * * * And that a perpetual injunction be issued in this suit against the said de- fendant, Charles A. Molitor, restraining him, his agents, clerks, servants, and all claiming or holding under or through him, from making, selling, or using, or in any manner disposing of, any artificial stone-block pavements embracing the invention and improvements described in the said reissued letters patent, pursuant to the prayer of the said bill of complaint.'

Had the defendant continued to make concrete pavements in the manner set up in his answer, or in the manner in which it was proved he did make them, and which the court decided to be an infringement, there could have been no doubt that he would have violated the decree; but it would seem that he varied his mode of making the pavement by ceasing to make it in separate and detached blocks, and only making a mark or indentation on the surface while in a plastic state with a trowel or marker extending to a depth of from one-eighth of an inch to an inch, and thus giving the pavement the appearance of being made in detached blocks, and, in fact, answering all the purposes of detached blocks, the crease on the surface being sufficient to produce the results obtained by Schillinger's process.

In October, 1883, more than two years after the decree was entered, the complainant obtained a rule on the defendant to show cause why he should not be punished for a contempt of court in disobeying the decree; the alleged contempt consisting of the construction by the defendant of concrete pavements in the manner last mentioned, to-wit, at Redwood City, in San Mateo county. Of course, the question was at once raised whether the process now used by the defendant was an infringement of the patent. The judges being opposed in opinion, a decree was made in conformity with that of the circuit judge, declaring that the pavements thus constructed by the defendant did not infringe the patent; that there was no...