Heaton Peninsular Button-Fastener Co. v. Schlochtmeyer

• Decision Date: 22 July 1895
• Docket Number: 4,775.
• Citation: 69 F. 592
• Parties: HEATON PENINSULAR BUTTON-FASTENER CO. v. SCHLOCHTMEYER.
• Court: U.S. District Court — Southern District of Ohio

69 F. 592

HEATON PENINSULAR BUTTON-FASTENER CO. v. SCHLOCHTMEYER.

No. 4,775.

United States Circuit Court, S.D. Ohio, Western Division.

July 22, 1895

Jas. H Lange, Odin B. Roberts, Gardner Perry, and S. L. Swartz, for complainant.

Taggart Knappen & Denison, for respondent.

SAGE District Judge.

The bill is for an injunction and account against defendant as an infringer of two patents, owned by complainant, for button-fastening staples,-- the first being No. 324,053, to John H. Vinton, August 11, 1885, and the second No. 451,070 to George W. Prentice, January 26, 1891.

The defendant demurs upon the grounds: First, that it is apparent upon the face of the letters patent referred to, that the two inventions and improvements described and claimed therein cannot be used conjointly in the same structure; second, that the Vinton patent is invalid for the reason that the improvements described and claimed did not, in view of the state of the art within common knowledge, and of which the court will take judicial notice, constitute patentable invention; and, third, that the Prentice patent is invalid for the same reason. The first ground of demurrer was abandoned upon the argument, and upon the averments of the bill was untenable. That a demurrer to a bill for infringement will be sustained in any case where it is apparent to the court that the alleged improvement does not involve patentable invention, although the bill alleges novelty and utility, is well-established. The demurrer admits only those facts which are well pleaded, and an allegation of fact in one part of the bill, which by inspection of the entire bill appears to be untrue, cannot be said to be well pleaded.

In Wollensak v. Reiher, 115 U.S. 96, 5 Sup.Ct. 1137, the supreme court held, upon inspection of the original and the reissued patent, and upon demurrer to the bill, that the original specification was not insufficient or defective, and that the sole object of the reissue was to enlarge the claim, and sustained the demurrer, notwithstanding the averment of the bill that the original patent was inoperative or invalid by reason of an insufficient or defective specification, which insufficiency or defect had arisen through inadvertence, accident, or mistake.

In Richards v. Elevator Co., decided by the supreme court of the United States, May 20, 1895, and reported in 71 O.G. 1456, 15 Sup.Ct. 831, Mr. Justice Brown, delivering the opinion of the court, said that:

'While patent cases are usually disposed of upon bill, answer, and proof, there is no objection, if the patent be manifestly invalid upon its fact, to the point being raised on demurrer, and the case being determined upon the issue so formed.'

The patent in that case was for a grain-transferring apparatus, and the claims were for combinations which the court held to be for a pure aggregation of old elements. It was not claimed that there was any novelty in any one of the elements of the combination. The court said that they were all perfectly well known, and if not known in the combination described, were known in combinations so analogous that the court was at liberty to judge of itself whether there was any invention in using them in the exact combination claimed. In the language of the opinion, the justices of the court 'did not feel compelled to shut their eyes' to certain well-known facts in reference to the use of grain elevators in transferring grain from railway cars to vessels,-- that this method involved the use of a railway track, entering a fixed or stationary building, an elevator apparatus, an elevator hopper scale for weighing the grain and a discharge spout for discharging the grain into the vessel. Applying to the patent these facts, and other facts referred to in the opinion, which were not averred in the bill but were generally known, the court held that the combination claimed was a pure aggregation, and affirmed the decree of the court below, dismissing the bill.

The patents sued upon in this case are for improvements in button-fastening staples, to be used in attaching buttons to shoes. The Vinton patent describes a staple made of wire. The claims are as follows:

(1) 'As an article of manufacture, a button-fastening staple composed of wire, the legs ow which are provided with V-shaped points broader than the diameter of the wire from which the staple is made, the cutting edges of both of said points being substantially at right angles to the length of the staple head, substantially as described.'

(2) 'A staple fastener for leather work, it having V-shaped points spread wider than the diameter of the wire, and set at one side of the center of the wire forming the legs above the point, to thus compel the staple to clinch uniformly in the desired direction, substantially as described.'

The Prentice patent described a wire staple of similar general construction. The claim is as follows:

'A one-piece metallic button fastener, substantially uniform in size throughout, consisting, essentially, in an arc-shaped crown or top and two curvilinear side portions diverging from said crown or top, the whole forming a body portion, the curvilinear contour of the inner wall of which follows substantially the curvilinear contour of the outer wall thereof, or is parallel therewith, and an attaching portion consisting of two prongs or legs substantially parallel with each other and depending from the extremities of the body portion, the junction of the legs with the body portion forming corners or bearing shoulders to define said body portion, and to limit the penetration of the legs of the fastener into the material to which it is to be attached, substantially as described.'

The bill makes profert of the letters patent in this language:

'All of which will more fully appear by the said letters patent, or by a copy of the same duly certified from the records of the patent office, and in this court to be produced as your honors may direct.'

This is a formal profert, and is sufficient to make the letters part of the bill, so that they may be considered on demurrer. Dickerson v. Greene, 53 F. 247; Bogart v. Hinds, 25 F. 484. Courts, in determining the validity of a patent, will take judicial notice of matters of common knowledge relating to the state of the art. This proposition is supported by the decision of the court in Richards v. Elevator Co., cited above, where the court referred to facts not set forth in the record, but recognized because they were perfectly well known.

The rule suggested by Judge Blodgett in Manufacturing Co. v Adkins, 36 F. 554, imposes a proper limitation, to wit, that the court must keep strictly within the field of common knowledge, and the judge must be careful to distinguish between his own special knowledge and what he considers to be the knowledge of others in the field or sphere where the device is used. 'But when the judge before whom rights are claimed by virtue of a patent can say from his own observation and...