ROSS
Circuit Judge.
Prior
to the bringing of the present suit, the defendant to the
suit commenced an action in this court against Eugene
Cermain, Isaac B. Newton, and William H. Mitchell, composing
the firm of the Crown Sprinkler Company, to recover damages
for the alleged infringement of letters patent No. 443,734
issued to the then plaintiff, December 30, 1890, for an
'improvement in law sprinklers.' The defendants to
that action denied that the patentee was the inventor of the
lawn sprinkler so patented, denied infringement, and alleged
that, prior to the date of his alleged invention, letters
patent had been issued by the United States to one Clement
Gauthier, for an invention called therein 'atomizer,'
substantially identical with that described in the Wilgus
patent. The case was tried before the court with a jury, and
a general verdict was rendered for the defendants to the
action, together with answers to certain special issues
submitted. The issues and answers were as follows:
'(1)
Was Clement Gauthier the inventor of a patent described in
letters patent of the United States, No. 386,121, issued by
the patent office of the United States of America, on the 7th
day of July, 1888, and for which an application had been
filed in said office on the 22d day of November, 1887, and
for which letters patent on the 23d day of April, 1887, had
also been issued to him by the republic of France? Answer
Yes. (2) Did Clement Gauthier assign said patent, issued by
the government of the United States, to W. H. Mitchell, and
did said Mitchell assign three-fourths interest therein to
Eugene Germain and I. B. Newton, and were such assignments
duly recorded in the patent office of the United States?
Answer: Yes. (3) Did said patent include a nozzle with a
tangential inlet, so as to produce a gyratory motion of the
water in the barrel or cylinder, and have a top opening
inwardly, so as to come to a sharp edge where the water first
came in contact with such opening? Answer: Yes. (4) Is there
anything in the specification, drawings, or claim in said
patent limiting the size of said nozzle? Answer: No. (5) Is
there anything in the specifications, drawings, or claims in
said patent limiting said nozzle to any particular shape or
form? If so, state what such limitation is. Answer: Nothing.
(6) If the nozzle described in the Clement Gauthier patent,
No. 386,121, were made of the same size as the one introduced
in evidence as plaintiff's sprinkler, would it
substantially perform the same functions in the same way as
that of plaintiff? Answer: Yes. (7) If there is any
difference between the plaintiff's sprinkler and the
nozzle mentioned in the Clement Gauthier patent, if made of
the same size, as to the functions performed by each, or the
manner in which such functions are performed, state it fully.
Answer: * * * . (8) Was the patent issued to plaintiff, No.
443,734, dated December 30, 1890, and was the application
therefor filed in the United States patent office, June 14,
1890? Answer: Yes. (9) Is there anything in the
specifications, drawings, or claim in plaintiff's patent
limiting its size? Answer: No. (10) Does Clement Gauthier, in
his specification and claim, show that his invention has for
its object to subdivide the water by means of the tangential
inlet and orifice or opening or top of the
muzzle, by which the gyratory motion is first given to the
water in the barrel or cylinder, and discharged as a spray
from the top or opening? Answer: Yes. (11) If the nozzle
described in Clement Gauthier's patent is quite small,
will the water be discharged as a fine mist or spray? Answer:
Yes. (12) If the nozzle described in the Clement Gauthier
patent, No. 386,121, is made the same size as plaintiff's
sprinkler offered in evidence, will the water be discharged
therefrom in larger quantities, and as a heavier spray or
sprinkle? Answer: Yes. (13) Has Clement Gauthier's
patent, No. 386,121, a tangential inlet into a circular
reservoir or barrel, with a central discharge opening at the
top? Answer: Yes. (14) Is the central discharge opening at
the top of Clement Gauthier's patent tapering inward to a
sharp or knife-shaped edge? Answer: Yes. (15) Is there any
difference between the action of the water passing through
the nozzle described in Clement Gauthier's patent, when
the nozzle thereof is made of the same size as
plaintiff's sprinkler, and the action of the water in
passing through plaintiff's sprinkler? Answer: No. (16)
If you should answer that there is a difference, state fully
what such difference is. Answer: * * * . (17) Does plaintiff
make any claim for the concave top of his alleged invention?
Answer: Yes. (18) How many sprinklers did defendant sell or
dispose of? Answer: * * * . (19) Was plaintiff damaged by
reason of the sale or disposition of the sprinklers sold or
disposed of by defendants, and, if so, in what amount?
Answer: * * * .'
Upon
the verdict so returned and entered, judgment was, on
September 4, 1894, entered by the clerk, that the plaintiff,
Wilgus, take nothing by his action, and that the defendants
to the action recover their costs from the plaintiff; the
judgment upon its face reciting only the general verdict. The
plaintiff in that action carried the case by writ of error to
the circuit court of appeals for the Ninth circuit, where the
judgment was affirmed. 44 U.S.App. 369, 19 C.C.A. 188, and 72
F. 773. In concluding its opinion, the court there, after
considering various points assigned as error, said:
'There
are several assignments of error which challenge the
rulings of the court in giving and refusing instructions.
It will be unnecessary to refer to them in detail. They are
all based on the general assertion and contention of the
plaintiff in error that there is no similarity in name,
shape, size, or construction between the inventions of
Gauthier and Wilgus. It is urged that the Gauthier patent
is intended for spraying trees and plants; that it differs
in shape from that of Wilgus; and that it delivers the
fluid in the form of mist, whereas the Wilgus sprinkler
delivers water for sprinkling purposes only, and in the
form of drops; that in the one patent the opening for the
discharge of the fluid is smaller than the opening for its
inlet into the nozzle, while in the other the reverse is
true. Other points of difference are pointed out. All these
questions were properly submitted to the jury. There was
evidence to the effect that the principle of both
sprinklers was the same, and that there operation was the
same. It does not follow as a rule of law that, because the
Gauthier sprinkler was used in sprinkling trees, and
delivered the fluid in the form of mist, the Wilgus
sprinkler, which was used to sprinkle laws, and delivered
the water in drops, was not anticipated in the prior
invention,'--citing Tucker v. Spalding, 13
Wall. 453; Smith v. Nichols, 21 Wall. 112;
Machine Co. v. Murphy, 97 U.S. 120, 125;
Machine Co. v. Keith, 101 U.S. 479.
One of
the questions in the present suit is...
