Boyd v. Janesvilleco

• Decision Date: 20 May 1895
• Docket Number: No. 305,HAY-TOOL,305
• Citation: Boyd v. Janesvilleco, 158 U.S. 260, 15 S.Ct. 837, 39 L.Ed. 973 (1895)
• Parties: BOYD v. JANESVILLECO. et al
• Court: U.S. Supreme Court

158 U.S. 260

15 S.Ct. 837

39 L.Ed. 973

BOYD

v JANESVILLE HAY-TOOL CO. et al.

No. 305.

May 20, 1895.

John M. Boyd filed a bill in the circuit court of the United States for the Western district of Wisconsin against the Janesville Hay-Tool Company and its officers, charging the defendants with infringement of letters patent granted the complainant, numbered as No. 300,687, and dated June 17, 1884, for an improvement in hay elevator and carrier.

The answer denied that complainant was the original and first inventor, and alleged anticipating patents, prior knowledge and use by others, and that defendants have made and sold hay carriers in accordance with patent No. 279,889, granted June 19, 1883, to F. B. Strickler.

There was a general replication; evidence was put in; on November 9, 1888, a decree was entered dismissing the bill of complaint (37 Fed. 887), and from this decree an appeal was taken to this court.

Curtis T. Benedict, for appellant.

C. K. Offield, for appellees.

Mr. Justice SHIRAS delivered the opinion of the court.

John M. Boyd, the appellant, filed his application on October 25, 1882, and, after several amendments, letters patent were granted him on June 17, 1884, and numbered as No 300,687. The specification discloses tht the invention has relation to improvement in hay elevators and carriers, and consists in the peculiar construction of the several parts, and in their combination and arrangement. There are 14 claims, of which 12 appear to be for combinations of parts, and 2 for specific devices which are claimed to be novel.

It clearly appears that Boyd was not a pioneer in this department of machinery. Many inventors had preceded him, and many patents had been issued for improvements in hay carriers in form and purpose similar to those described in Boyd's specification. We think the case is one where, in view of the state of the art, the patentee is only entitled, at the most, to the precise devices mentioned in the claims.

It is conceded that the defendants, before this suit was commenced, were manufacturing and selling hay carriers made under the Strickler patent, No. 279,889, dated June 19, 1883; and it is claimed on behalf of the appellant that, as the application for the Strickler patent was filed on May 15, 1883, several months after Boyd's application, that the Strickler patent furnishes no defense to the defendants if the machines made and sold by them infringed any of the Boyd claims.

Upon the assumption that, owing to the previous condition of the art, Boyd is to be restricted to the exact and specific devices claimed by him as novel, we do not deem it necessary to determine whether either Boyd or Strickler invented anything, because we think that the appellant has failed to show that the defendants have used the particular devices to which Boyd can be considered entitled. Our discussion, therefore, will be confined to the question of infringement.

As both applications were pending in the patent office at the same time, and as the respective letters were granted, it is obvious that it must have been the judgment of the officials that there was no occasion for an interference, and that there were features which distinguished one invention from the other. In American Nicholson Pavement Co. v. City of Elizabeth, 4 Fish. Pat. Cas. 189, Fed. Cas. No. 312, Mr. Justice Strong said: 'The grant of the letters patent was virtually a decision of the patent office that there is a substantial difference between the inventions. It raises the presumption that, according to the claims of the later patentees, this invention is not an infringement of the earlier patent.' It would also seem to be evident that, as the purpose of the inventions was the same, and as the principal parts of the respective machines described were substantially similar, it was also the judgment of the office that the distinguishing features were to be found in some of the samller, and perhaps less important, devices described and claimed. Burns v. Meyer, 100 U. S. 671.

We find it useful to adopt the following description of the Boyd invention, given in appellant's brief:

'This carrier involves novel features, which may be stated in a general way as follows:

'The stop, h (adapted to be secured to the under side of a single track), having the continuous lugs, h³, inclined upwardly from each end of the stop to the center, and therewith the downwardly inclined lugs or bearings, h⁴; the stop being adapted to lift the catch coming to it from either direction, to engage the catch and prevent the travel of the carrier, to force the catch down (if it fails to fall by gravity) as it leaves the stop, and to permit the...