Tompkins v. Gage.

The only remaining question arising under this patent is, whether or not Daniel Tainter is the original and first inventor. On this point, the burden of proof is on the defendants. The patent is strengthened, in this feature, by the testimony of Clark and Sandford, and I do not think that the proofs offered by the plaintiff are overcome by the evidence adduced. by the defendants. It is not enough that the latter raise a doubt on this question. They must show, by satisfactory and preponderating evidence, that they antedate the invention set forth in the patent. After a careful comparison of the whole evidence on this point, I think they have failed to show that any combination substantially like the one described in the Tainter patent existed prior to his invention.

So far as the re-issued patent to Tompkins and Johnson is concerned, the defendants are charged with infringing the second claim only. This claim, when read by itself, is simply for revolving the shaping plates by a positive motion with, and at the same velocity as, the take-up motion, substantially as described. The object of this arrangement is to secure, by the lower and circular plate, an even pull of the fabric as it comes from the circular row of needles below, keeping the threads at uniform angles, and thus securing its uniform elasticity. The upper plate is oval, so as to pass the web in a partially flattened state to the rod or cloth spreader. The only difficulty with the claim is, that it is not so full and specific as it should have been. But, when read in the light of the preceding and descriptive parts of the specification, it must be understood to embrace the connection of the moving plates with the take-up mechanism, and their operation together in the peculiar manner set forth. This is the only construction which leaves any intelligent meaning in the claim. This peculiar arrangement of the plates and take-up mechanism, is not found in the Whitehead machine; nor is there satisfactory evidence that it existed in any other prior to the invention of Tompkins and Johnson.

As to the infringement, the only important difference between the arrangement and operation of these plates in the

Tompkins v. Gage.

plaintiff's and the defendants' machines is, that, in the former, they are fixed to the rod or spindle, and are revolved by the gear which carries it, while, in the latter, the spindle to which they are attached turns freely and without gearing. This dif ference, in the judgment of the Court, is not material, but is only a mechanical equivalent, as the arrangement is, in all other respects, nearly identical, and accomplishes the same result in essentially the same manner.

It is, however, objected by the defendants, that the specification points out no means by which this arrangement can be made to operate successfully in a machine where the spindle carrying the plates runs free, instead of being driven by gear. This point is not free from difficulty. But, on the whole, I conclude that the patentees had a right to assume that those who desired to understand all the conditions under which their invention could be operated, were acquainted with the preceding state of the art immediately connected with this particular subject-matter. A mere glance at the Tainter machine, with which all persons acquainted with this branch of business must be presumed to be familiar, and which is referred to by name in the specification, would at once show that it is immaterial, so far as the function and arrangement of these plates are concerned, whether they are carried round by force of gear applied to the spindle, or on a free spindle, by force of the web acting on the plates. Indeed, the patent itself says, that it is not essential that the plates should be immovably fastened to the spindle.

It is insisted, however, by the defendants, that this is an after-thought, inserted in the reissued patent after the patentees had seen the defendants' machines, and for the purpose of covering what was not embraced in the original patent. But the Court has no means of judging of the force of this objection, as the original patent is not in evidence. As no comparison can be made between that and the reissued patent, no inference of this character can be drawn against the latter.

It follows, from these views, that an injunction must issue against the use of the invention described in the Tainter

Tompkins v. Gage.

patent, and also against the use of the one described in the second claim of the Tompkins and Johnson patent.

Before dismissing this case, I deem it proper to express, in explicit terms, the disapprobation, by this Court, of the loose manner in which the specifications of patents are very often. drawn up. I am well aware that sometimes it may be difficult to clearly and exactly state and describe the subjectmatter of an invention. This is the case where the mechanism constituting or embodying the invention is extensive and complicated. But these difficult instances bear no adequate proportion to the cases in which specifications, and especially those parts of them which are devoted to stating the claim, are very loosely framed. Patents are constantly being reissued, for the purpose of restating the claims of the inventor, in order that the description may coincide with the invention, where the subject-matter is neither complicated nor difficult to delineate. In many cases where they are not reissued, the Courts are called upon, under the rule of "liberal construction," to pass upon confused and obscure specifications, and upon claims which have very scant and imperfect relation to the more detailed descriptions in the bodies of the instruments. This loose practice is injurious to inventors, is the prolific source of litigation, and multiplies the embarrassments and labors of the Courts, in their efforts to protect the fruits of inventive. skill and meritorious ingenuity. If a small proportion of the acumen and ability which counsel exhaust upon the construction of patents, were originally expended by draughtsmen in framing them, the property of inventors in the products of their ingenuity would be much more secure, and its protection by the Courts much more easy and certain.

VOL. V.-18

Moke v. Barney.

GEORGE MOKE AND OTHERS vs. HIRAM BARNEY.

The Act of February 26th, 1845, (5 U. S. Stat. at Large, 727,) requiring a written protest against the payment of duties, in order to sustain an action against the Collector, to recover them back, applies to the payment of unascertained and estimated duties, which are to be afterwards liquidated, and the protest may be made at the time of the final liquidation.

The fact that the Collector exacts duties in violation of instructions, does not supply the want of a protest.

(Before NELSON, J., Southern District of New York, October 27th, 1865.)

THIS was an action against the Collector of the port of New York, to recover back an alleged excess of duties paid by the plaintiffs, but not under protest, on the importation of certain merchandise which was subject to duty by weight, under the Act of March 2d, 1861, (12 U. S. Stat. at Large, 178.) At the time of the entry, the duties were estimated on a given number of pounds, as shown by the entry, and the amount thus estimated was paid and a permit granted to land the goods, with the usual directions to the Government weigher to weigh the selected packages. The goods were weighed and reported with the customary allowance for tare, but no allowance for draft. This occurred at the final liquidation of the duties, and after the Secretary of the Treasury had issued his circular of March 21st, 1861, instructing the officers of customs that allowances on account of tare and draft would be governed by the 58th and 59th sections of the Act of March 2d, 1799, (1 U. S. Stat. at Large, 671, 672.)

George T. Curtis, for the plaintiffs.

E. Delafield Smith, (District Attorney,) for the defendant.

NELSON, J. The only question presented in the case isare the plaintiffs entitled to recover the excess of duties, not having protested at or before the final liquidation of them?

Moke v. Barney.

This Court has decided, (Napier v. Barney, ante, p. 191,) that, under the 58th and 59th sections of the Act of March 2d, 1799, the merchant is entitled to allowances or deductions for both tare and draft, on articles the duties on which are to be ascertained by weight.

The Act of February 26th, 1845, (5 U. S. Stat. at Large, 727,) which revived the right of action against the Collector to recover back an excess of duties paid, which right had been taken away by the 2d section of the Act of March 3d, 1839, (5 U. S. Stat. at Large, 348,) as interpreted by the Supreme Court, in Cary v. Curtis, (3 How., 236,) contains this provision: "nor shall any action be maintained against any Collector, to recover the amount of duties so paid under protest, unless the said protest was made in writing, and signed by the claimant, at or before the payment of said duties, setting forth distinctly and specifically the grounds of objection to the payment thereof." A previous clause in the section had declared, that nothing in the Act of 1839 should take away, or be construed to take away, or impair, the right of any person, who had paid, or should thereafter pay, money, as and for duties, under protest, in order to obtain his goods, to maintain an action against the Collector to recover back duties not authorised or payable by law. The construction that has been uniformly given to this Act of 1845, since it became a law, is, that to entitle the merchant to a suit against the Collector to recover back duties illegally exacted, there must not only be a protest made against the payment at or before the payment, but it must be in writing, and in the form, substantially, that is prescribed by the statute. The question before us is, whether or not the facts stated and agreed upon in this case take it out of this construction of the Act of 1845, no protest in writing having been made.

One ground taken by the learned counsel for the plaintiffs, to exempt this case from the protest required by the Act, is, that the Act does not apply to the case of the payment to the Collector of "unascertained duties," which are payments in gross, on an estimate as to amount, and where the merchant,