Swift v. Jenks

• Citation: 19 F. 641
• Parties: SWIFT v. JENKS and others.
• Decision Date: 03 March 1884
• Court: U.S. District Court — Northern District of New York

19 F. 641

SWIFT v. JENKS and others.

United States Circuit Court, N.D. New York.

March 3, 1884

Duell &amp Hey, for complainant.

Neri Pine, for defendants.

COXE J.

This is a motion for a preliminary injunction. The complainant is the inventor of an alleged improvement in lubricators for which letters patent were issued August 28, 1883. The claims in controversy are as follows '(5) In combination with the steam-condensing duct and its horizontal extension, c, the lubricant-cup composed of metal and provided in front of the duct-extension, c, with an observation-port, r, covered with a transparent plate substantially as and for the purposes set forth.

'(6) In combination with the oil-cup of a lubricator, the port, r covered by a glass plate, and the pipe or tube, c, having an inclined end or face, substantially as set forth.'

Prior to this time, and on the second day of May, 1882, letters patent for a similar invention were issued to the defendants. An interference was declared, and, after a thorough investigation, the examiners and commissioner concurred in deciding that the complainant was the prior inventor. But the proceedings in the patent office determined more. Upon defendants' motion to dissolve the interference the commissioner was required to pass upon the question whether or not the subject-matter claimed was patentable. Various references, which, as was urged by the defendants, anticipated the complainant's invention, were presented, and although the examiners in chief and the commissioner were not in accord upon this question it cannot be denied that the issuing of the patent was, to the extent that the question was there investigated, a decision in favor of the complainant. The proceedings in the patent office having, as between these parties, determined,-- First, that the complainant was the prior inventor, and, second, that the subject-matter of the patent was not void for want of novelty, the complainant would be entitled, if there were no other considerations, to the injunction prayed for, there being no dispute as to the infringement. Smith v. Halkyard, 16 F. 414; Shuter v. Davis, Id. 564.

But the defendants again insist that the patent is void for want of patentable novelty, and in support of this defense they produce various references not presented to the examiners. They also produce affidavits tending to show that one Giles was the original inventor of the patented device or combination. But the argument having the most weight with the court is the one based upon the complainant's prior patent of March 21, 1882. It is urged that he there fully discloses the subject matter of claim 5, supra. The...