American Sales Book Co. v. Bullivant

• Decision Date: 05 May 1902
• Docket Number: 791.
• Citation: 117 F. 255
• Parties: AMERICAN SALES BOOK CO. et al. v. BULLIVANT.
• Court: U.S. Court of Appeals — Ninth Circuit

117 F. 255

AMERICAN SALES BOOK CO. et al. v. BULLIVANT.

No. 791.

United States Court of Appeals, Ninth Circuit.

May 5, 1902

The circuit court in the case found the following findings of fact:

'(1) That the plaintiff American Sales Book Company is a corporation duly organized, existing, and domiciled at Elmira, in the state of New York, and that Warren F. Beck is a citizen of the state of New York, also residing at Elmira, aforesaid, and that the defendant is a citizen of the state of Oregon.

'(2) That on the 24th day of April, 1900, letters patent of the United States were, upon the application of the plaintiff Warren F. Beck, as inventor, duly issued to said Beck, by the United States patent office, under number 647,934, for an improvement in manifolding sales book and holder; and in and by such letters patent there was granted, unto the said Warren F. Beck and his legal representatives, the exclusive right for the term of seventeen years, beginning said 24th day of April, 1900, being the date of said letters patent to make, use, and sell, and permit others so to do throughout the United States and territories thereof, manifold sales books embodying the features described in the specification forming a part of said letters patent, and therein claimed as follows: 'The combination, with a manifold pad of a holder or cover therefor having a carbon or transfer-sheet secured thereto, said transfer-sheet being folded over upon the leaves of the pad at their free ends, and having a portion cut away to expose a portion of the leaves at or near free ends, for the purpose set forth. The combination, with a manifold-pad, of a carbon or transfer-sheet normally resting upon the top of the pad, and overlying the leaves thereof, said transfer-sheet having a portion cut away to expose a portion of said leaves at or near their free ends for the purpose set forth, the leaves at their free ends being otherwise concealed by the transfer-sheet.' And that plaintiffs' Exhibit A is a true copy of said letters patent, and plaintiffs' Exhibit B is a manifolding sales book embodying said patent improvement.

'(3) That the said Warren F. Beck is still the owner of said letters patent, and that, by an agreement duly entered into between himself and the plaintiff American Sales Book Company, the former gave the latter the exclusive right to make, use, and sell throughout the United States and its territories manifold sale books, or pads, embodying the alleged invention described and claimed in said letters patent.

'(4) That the defendant is, and for a long time has been, carrying on a grocery business at Nos. 461-463 Jefferson St., in the city of Portland and district of Oregon.

'(5) That, subsequent to the granting of said letters patent, the defendant, without authority from or consent of the plaintiffs, or either thereof, or their legal representatives, procured from one W. H. Jarrett, doing business under the name of the Ideal Duplicate Order Book Company at Seattle, Washington, number of sales books of the style of plaintiff's Exhibit C; and that the defendant used said duplicate sales books in the ordinary course of his business, and continued to so use the same after he had been personally advised of the granting of said alleged letters patent to the said plaintiff Warren F. Beck, and the alleged rights of the plaintiff American Sales Book Company under said alleged letters patent.

'(6) That the manifold sales book procured and used by the defendant as aforesaid embodied the said features and improvements patented to the said Warren F. Beck by said letters patent.

'(7) That prior to the discovery, by said Warren F. Beck, of said alleged patented improvement in manifolding sales book, no manifolding sales books were made, used, or known embodying said particular and patented features or improvements, to wit, comprising a holder, or cover, and a pad on the top of which normally rested a carbon or transfer-sheet, said sheet overlying the free ends of the leaves of the pad, and covering the leaf under it; and said transfer-sheet having a portion cut away to expose a portion of said leaf under it near its free end, and facilitating the withdrawal of the same from under said transfer-sheet, as in said patent described and claimed, and as shown in plaintiffs' Exhibit B. But for many years prior to the application for the issuance of the said letters patent on said alleged invention of Beck, duplicate order books were in general use in the United States, having a carbon sheet, loose or secured in place, for transferring the memorandum of the order written on one sheet to a duplicate sheet, or sheets, arranged below, one illustration of which is defendant's Exhibit A. But in none of such manifolding books did the carbon sheet have a corner cut away, or a thumbhole for the purpose stated by said Beck in his specification of his said invention, forming a part of said letters patent.

'(8) That, prior to the said invention and letters patent, duplicate order books with carbon were also in common use in the United States, in which books with carbon were also in common use in the United States, in which books certain sheets thereof on which the memorandum was to be written or copied had corners cut away, as shown in illustration on card of Charles E. Crosby & Company, being defendant's Exhibit B, and also as illustrated by defendant's Exhibit C.

'(9) That, for many years prior to said invention of Beck, books, ledgers, and the like have been in common use in the United States, which, for the purpose of facilitating the use of the index with which they were provided, had thumbholes enabling the opening of the book at a certain place.

'(10) That in accordance with said agreement between the plaintiffs, American Sales Book Company and Warren F. Beck, said American Sales Book Company has extensively practiced the said alleged patented invention, and manufactured, advertised, and introduced throughout the United States manifold sales books embodying said alleged patented improvement; and that in the Northwestern states, within the year ending about August, 1901, large quantities of manifold sales books embodying said alleged invention, to wit, about 500,000, have been sold to merchants and others in said Northwestern territory, and are now in use in said territory.

'(11) That the defendant relied on the stipulation as to facts herein, and also as illustrated by defendant's Exhibits A, B, and C, and also upon the use of thumbholes in indexes for books, as proving that the said invention lacks novelty, and is merely a mechanical change of said existing devices.

'(12) That the said alleged patented improvement offers no greater advantages or utility than the form of manifold sales books in use in the United States prior to said alleged patented invention, as shown by the evidence, defendant's exhibits, and stipulation herein.

'And, as a conclusion of law, the court finds: That the patent relied upon by the plaintiffs, being numbered 647,934, and issued to Warren F. Beck by the United States of America under the seal of the patent office, and on the 24th day of April, 1900, is void for lack of novelty; that, being void, the defendant, Josephus Bullivant, Jr., by the acts committed has in no way damaged the plaintiffs herein, and that a judgment be entered in favor of the defendant for his costs and disbursements taxed at thirty dollars; and that plaintiffs take nothing by reason of this action.'

T. J. Geisler, for plaintiffs in error.

Otto J. Kraemer, for defendant in error.

Before GILBERT, Circuit Judge, and HAWLEY and DE HAVEN, District Judges.

HAWLEY District Judge (after stating the facts as above).

This action was brought by the plaintiffs in error to recover damages from defendant for the infringement of letters patent No. 647,934, dated April 24, 1900, issued to Warren F. Beck of Elmira, N.Y., for 'certain new and useful improvements in manifold-pads and holders. ' The following specification is set forth in the letters patent:

'My invention relates to improvements in the pads used by merchants and others in taking manifold copies of orders, etc., and to the holders for such pads, the objects of my improvements being: First, to provide a simple and cheap form of holder wherein a pad and a carbon or transfer-sheet may be placed and replaced independent of one another; and, second, to provide means for manipulating the leaves of the pad without touching the transfer-sheet with the fingers. I accomplish these objects by the construction and arrangement of the parts, as illustrated in the accompanying drawings.'

The claims of the patent which are alleged to be infringed read as follows:

'(2) The combination, with a manifold-pad, of a holder or cover therefor having a carbon or transfer-sheet secured thereto, said transfer-sheet being folded over upon the leaves of the pad at their free ends, and having a portion cut away to expose a portion of the leaves at or near their free ends for the purpose set forth.

'(3) The combination, with a manifold-pad, of a carbon or transfer-sheet normally resting upon the top of the pad and overlying the leaves thereof, said transfer-sheet having a portion cut away to expose a portion of said leaves at or near their free ends for the purpose set forth, the leaves at their free ends being otherwise concealed by the transfer-sheet.'

A stipulation was filed by the respective parties waiving a jury, and the case was tried before the...