The United States Stamping Company v. King. third piece, forming the top, was not joined to the upper part of the body, but rested on it. The Manning tea-pot and the tin pitcher are neither of them loaded at the base, nor are they self-righting, nor did they ever suggest the making of such a cuspadore as Heath's, with a loaded bottom. Many articles had, prior to Heath's invention, been made of three or more pieces of sheet metal joined together by horizontal seams, but the question as to whether it would be useful or practical to make a metallic cuspadore of three pieces of metal in the way suggested by Heath, and with a loaded bottom, still remained for the exercise of invention. The defendants sell cuspadores made by Jewett & Sons of Buffalo, who are licensees under the Topham patent. But Jewett & Sons do not make the structure of Topham. They make substantially that of Heath. The Topham structure is lacking in the essential features of the Heath structure. Topham's spittoon is not a cuspadore, and is not metallic, and is not made of three parts joined together. In Heath's cuspadore the rounded form and the load in the base coöperate to make the structure self-righting. In Topham's spittoon there is no such coöperation between the form and the weighted base, as the sides are nearly straight, and the bottom is not rounded. The porcelain cuspadore, easily upset, easily broken, sure to remain upset when upset, had been in existence for years. Its disadvantages, the desirability of remedying its faulty features, had been obvious for years. But the remedy was not obvious. Topham's structure furnished no remedy, because, although it had a loaded bottom, it was still a spittoon and not a cuspadore, and had not the points of advantage which the porcelain cuspadore had, in union with its disadvantages. Nor did any remedy come till Heath's cuspadore came. Topham, on the 29th of July, 1873, obtained a re-issue of his patent, with broader claims than those of his original patent, not confining his invention, as in the original, to vessels made of paper, but extending it to all spittoons or similar vessels weighted at the bottom. Whatever may be the force of the re-issued patent in suits brought on it, it can have The United States Stamping Company v. King. no effect as against the Heath patent, in this suit, because it is subsequent to that patent. A re-issued patent has the same effect and operation in law as though it had been originally filed in the corrected form, only on the trial of actions brought on it for causes thereafter arising, and has no such effect in any other case or for any other purpose. (Act of July 8th, 1870, § 53, 16 U. S. Stat. at Large, 205; Rev. Stat. U. S., § 4,916.) The Heath cuspadore was first introduced into the market in the summer of 1871. It was immediately appreciated by the public. In the first season 20,000 were made; in the second, 40,000; in the third, over 80,000. Since that they have been sold in large and increasing numbers, and have been constantly growing in favor with the public. This result, in connection with all the differences, before adverted to, between the Heath cuspadore and prior structures, leads to the conclusion that the invention claimed in the Heath patent is a patentable invention, and that the patent is valid. The case falls within the principles laid down in Smith v. Goodyear Dental Vulcanite Co., (3 Otto, 496,) and in Hicks v. Kelsey, (18 Wallace, 670.) It is urged, that, as the decision in the New Jersey case was one on final hearing, this Court ought, on a motion for a preliminary injunction, to follow it, from comity, until it is overruled by the Supreme Court. But, in addition to the suggestions before made, in regard to the New Jersey suit, it appears that a large number of suits have been brought on the Heath patent, and that in none of them but the New Jersey suit has there been a decision against the validity of the patent. In some of these suits the defendants have submitted to injunctions after investigating the subject. In two suits at law the plaintiff recovered against such defences as were set up. In several suits in equity there have been injunctions and decrees for the plaintiff. This court, in Ingersoll v. Benham, (14 Blatchf. C. C. R., 541,) decided that the Topham patent did not show the combination covered by the Heath patent. The Manhattan Brass Company took a license The United States Stamping Company v. King. under the patent for a royalty. Several firms started to manufacture the cuspadores, but, on being notified that they would infringe the patent, they abandoned the manufacture. Some of these firms had licenses under Topham's re-issued patent. No one is now infringing the patent, by manufacturing the Heath cuspadore, except the Turners and Jewett & Sons. The Meriden Britannia Company was enjoined and then took out a license. All these considerations make a case in which it is proper to grant a preliminary injunction. In a direct suit brought by the owner of the Heath patent, for an infringement, against Jewett & Sons, in the Northern District of New York, (Ingersoll v. Jewett, 16 Blatchf. C. C. R., 378,) it has been decided by Judge Wallace, that the decision in the New Jersey case cannot avail Jewett & Sons as a plea of res adjudicata or estoppel. That decis ion must control, on that question, at this stage of this case. The questions on which this motion turns, are questions of law as to the construction of the Heath specification and as to the patentability of the invention. There is no disputed question of fact to be elucidated by the taking of plenary proof for final hearing. The technical point is made, that the only infringement shown is the sale by the defendants of two cuspadores, prior to the assignment of the patent to the plaintiff. This is so. But, the case has been argued on the part of the defendants on the assumption that such sale took place after the assignment to the plaintiff, which was March 4th, 1879, and the date of the jurat to the bill, which was March 5th, 1879, and on the assumption that the defendants have continued to sell the infringing cuspadores. I have examined this case with care, and the more because of the views expressed by my brother Nixon, and have arrived at the undoubting conviction that the plaintiff is entitled to an injunction. It is, therefore, granted. Frederic H. Betts, for the plaintiff. Charles F. Blake, for the defendants. VOL. XVII.—5 Schillinger v. Gunther. JOHN J. SCHILLINGER vs. HERMANN A. GUNTHER. IN EQUITY. A concrete pavement, made of cement, sand and gravel, made plastic by water and then laid in blocks, in a plastic state, at the place where it is to be used, and suffered to set or harden there, is not anticipated by a pavement made of blocks of cement made elsewhere, and then laid, like bricks or flags, at the place of use. Under §§ 4,917 and 4,922 of the Revised Statutes, where a proper disclaimer is entered during the pendency of a suit on a patent, there may be a recovery for the plaintiff, in respect of what is not disclaimed, provided there has been no unreasonable neglect or delay to enter a disclaimer, but the recovery is to be without costs. There may be a disclaimer of something which was introduced into a re-issued specification and did not exist in the original specification. In connection with a disclaimer of a claim or part of a claim, it is not improper to eliminate or withdraw, by the same writing, the parts of the body of the specification on which the disclaimed claim or part of a claim is founded. The disclaimer in this case upheld, against the objection that the matter disclaimed was not introduced by mistake, but with the intent to defraud or mislead the public. (Before BLATCHFORD, J., Southern District of New York, August 26th, 1879.) BLATCHFORD, J. The defendant contends, that the first claim of the plaintiff's re-issued patent is for a concrete pavement laid in detached blocks or sections, and that such claim is void, because blocks of cement had before been made, and carried to the place where they were to be used, and laid down side by side, thus forming a sectional cement pavement having all the advantages of the plaintiff's pavement. This view is not sound. The first claim of the re-issued patent claims "a concrete pavement, laid in detached blocks or sections, substantially in the manner shown and described." The concrete pavement referred to is shown by the specification to be a pavement made not of cement alone, but of cement, Schillinger v. Gunther. sand and gravel, made plastic by water, and then laid, in blocks, in a plastic state, at the place where it is to be used, and suffered to set or. harden there. This is a different thing from blocks of cement made elsewhere, and then laid, like bricks or flags, at the place of use. Equally unsound is the view, urged by the defendant, that the disclaimer takes out of the patent the entire first claim of the re-issue. It takes out of that claim only so much thereof as claims a concrete pavement made of plastic material laid in detached blocks or sections, without interposing anything between their joints in the process of formation. The first claim originally included a concrete pavement made of plastic material laid in detached blocks or sections, without interposing anything between their joints in the process of formation. The first claim, as amended by the disclaimer, claims a concrete pavement made of plastic material laid in detached blocks or sections, when free joints are made between the blocks, by interposing tar paper or its equivalent. The alleged prior inventions of Russ and Little have been disposed of by the rulings of Judge Shipman in this case, and so has the question of the infringement by the use of a trowel or a knife. By § 4,917 of the Revised Statutes, which was in force when the disclaimer in this case was filed in the Patent Office, it is provided as follows: "Whenever, through inadvertence, accident or mistake, and without any fraudulent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or discoverer, his patent shall be valid for all that part which is truly and justly his own, provided the same is a material or substantial part of the thing patented; and any such patentee, his heirs or assigns, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of such parts of the thing patented as he shall not choose to claim or to hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing, attested by one or more witnesses, and recorded in the Patent Office; and it shall thereafter be |