Martin & Hill Cash-Carrier Co. v. Martin

• Decision Date: 09 May 1895
• Docket Number: 97.
• Citation: 67 F. 786
• Parties: MARTIN & HILL CASH-CARRIER CO. v. MARTIN.
• Court: U.S. Court of Appeals — First Circuit

67 F. 786

MARTIN & HILL CASH-CARRIER CO. v. MARTIN.

No. 97.

United States Court of Appeals, First Circuit.

May 9, 1895

M. B Philipp (Frank D. Allen, Edwin C. Gilman, and J. Steuart Rusk, on the brief), for appellant.

Frederick P. Fish and William K. Richardson, for appellee.

Before COLT and PUTNAM, Circuit Judges, and NELSON, District Judge.

COLT Circuit Judge.

This bill was originally brought for the infringement of three patents, Nos. 255,525, 276,441, and 284,456, granted to the defendant, Martin, for improvements in automatic cash-carrier systems for store service. These patents have been assigned to the plaintiff. By amendment to the bill, the two latter patents were stricken out, and the suit as it now stands is limited to the first claim of patent No. 255,525, which issued March 28, 1882. In answer to the charge of infringement, the defendant relies upon a subsequent patent No. 399,150, issued to him March 5, 1889.

The first question which arises is how far the defendant is estopped in this action. In a suit for infringement, brought against the assignor of a patent by his assignee, the assignor is estopped from denying the validity of his patent. He cannot say that the patent has been anticipated by prior structures, or that it is void for want of novelty or utility. Babcock v. Clarkson, 11 C.C.A. 351, 63 F 607; Id., 58 F. 581; Ball & Socket Fastener Co. v. Ball Glove-Fastening Co., 7 C.C.A. 498, 58 F. 818; Faulks v. Kamp, 3 Fed. 898; Onderdonk v. Fanning, 4 Fed. 148; Purifier Co. v. Guilder, 9 Fed. 155; Curran v. Burdsall, 20 F. 835; Underwood v. Warren, 21 F. 573; Parker v. McKee, 24 F. 808; Barrel Co. v. Laraway, 28 F. 141; Corbin Cabinet-Lock Co. v. Yale & Towne Manuf'g Co., 58 F. 563; Chambers v. Crichley, 33 Beav. 374; Hocking Co. v. Hocking, 4 Rep.Pat.Cas. 434, 438, 442; Walton v. Lavater, 29 Law J.C.P. 275.

But it is the settled rule with respect to the construction of patents that the prior state of the art is admissible in evidence 'to show what was then old, to distinguish what was new, and to aid the court in the construction of a patent. ' Brown v. Piper, 91 U.S. 37, 41; Eachus v. Broomall, 115 U.S. 429, 6 Sup.Ct. 229; Grier v. Wilt, 120 U.S. 412, 7 Sup.Ct. 718. That this rule applies as between assignor and assignee has recently been held by this court in two carefully considered cases,-- Ball & Socket Fastener Co. v. Ball Glove-Fastening Co., ubi supra, and Babcock v. Clarkson, ubi supra. In the latter case the court (adopting the language used in the former case) says:

'The record contains very much touching the state of the art and prior patents. From what we have already said, it is plain that they cannot be introduced here for the purpose of invalidating any of the patents covered by the contract, or any portion of any claim of any of such patents. Nevertheless, they, as well as the file wrappers and their contents, are appropriate to be considered for ascertaining the true construction of the various patents involved, and especially for determining whether, according to such construction, the improvements were of a primary or secondary character, and how far the combinations admit of the doctrine of equivalents.'

The appellant also claims an estoppel different from that which we have considered, to the effect that, under some circumstances, a patentee assigning his patent after it has been apparently embodied in a machine is estopped, as against his assignee, from denying that the machine correctly represents the substance of the patent. But in the present case several patents were assigned. Only one is brought before us, and we do not know the scope of the others. Non constat the patents which have not been brought to our attention, and not the one in suit, furnish the basis of this alleged estoppel, if such an estoppel can be maintained. Therefore, we are not called on to consider this question, either as one of law or of fact.

Looking at what was old at that time, it is impossible for us to give the broad construction to the patent in suit which is contended for by the plaintiff. The patentee himself declares in the specification that the invention 'relates to the details of the construction of automatically moving cash boxes and devices for moving such boxes from one place to another. ' At the date of this invention, conveying apparatus of various kinds were old. One variety of conveying apparatus then existing was especially intended for use in stores. The Brown patent, No. 165,473, dated July 13, 1875 shows a conveying apparatus which is described as 'for transmission of goods, packages, money, etc., in general, but more particularly as an expedient and cheap method of transmitting packages, bill, and money in stores and salesrooms, from the salesmen to the cashier, and vice versa, without the aid of the now employed cash boys. ' The White patent, No. 229,783, dated July 6, 1880, also shows a conveying apparatus 'whereby articles are carried from the counters of a store to a central desk, and each back to the counter from which it was sent. ' In our opinion, the patent in suit cannot be considered in any proper sense a pioneer patent which lies at the foundation of a new art, but it is a patent, as the specification declares, for improvements in the 'details of...