Newton Mfg. Co. v. Wilgus

• Decision Date: 21 November 1898
• Docket Number: 713.
• Citation: Newton Mfg. Co. v. Wilgus, 90 F. 483 (S.D. Cal. 1898)
• Parties: NEWTON MFG. CO. v. WILGUS.
• Court: U.S. District Court — Southern District of California

90 F. 483

NEWTON MFG. CO. v. WILGUS.

No. 713.

United States Circuit Court, S.D. California.

November 21, 1898

M. L Graff, for complainant.

Cole &amp Cole, for defendant.

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 whether the judgment in the action just referred to is conclusive of the rights of the present ...