MacDonald v. McLean

38 F. 328, 13 Sawy. 635, 1889 U.S. App. LEXIS 2823

• Court: U.S. Circuit Court for the District of Southern California
• Decided: March 26, 1889
• Status: Published

Opinion

Ross, J.

The bill in this case is founded on letters patent issued to the complainant for a joint marking and dressing tool for cement pavements. It charges infringement by defendant, and seeks to have him enjoined from further infringement, as well as to recover damages for past infringements. Besides denying any infringement, the defendant, in his answer, for the purpose of avoiding the patent, alleges: First, that the complainant was not the original inventor of any material or substantial part of the tool described in the patent and bill, but that the same was invented by one Magner, of Oakland; and, secondly, that a tool similar to complainant’s patented tool had been in public use, and on sale in the open market in the state of California, more than two years before complainant made his application for a patent; that said tool had been for more than two years before said application publicly manufactured and sold in the cities of San Francisco, Los Angeles, and Oakland, and was publicly used in said cities by certain persons named in the answer. Voluminous testimony was taken, and a large number of exhibits introduced in evidence. I have examined the testimony and exhibits with care, and have reached the conclusion that the patent is invalid for want of novelty. No useful purpose would be served by a review in detail of the evidence. It is sufficient to state the grounds of my decision. If the patent is valid, I have no doubt from the evidence that the defendant infringed; but I think the evidence clearly shows that tools similar to complainant’s patented tool were in public and general use in California more than two years before his application for a patent. What is claimed by the complainant as patentable is the lateral concavity and the longitudinal convexity of the face of the tool. Now, many of the numerous tools introduced in evidence, and which are shown to have been in general use in the trade for many years prior to complainant’s application for a patent, are made upon precisely the same principle, and, as the evidence shows, produce in substantially the same way substantially the same results. The face of them is concave laterally and convex longitudinally, and they mark or joint the cement, to prevent •cracking in the process of drying, and round or dress the edges to prevent chipping, just as complainant’s tool does. It may be that complainant’s tool attains a greater degree of perfection in its lateral concavity and longitudinal convexity, and consequently does better work than any of the others, but that is not sufficient; the established doctrine being that “a change only in form, proportions, or degree, the substitution of equivalents, doing substantially the same thing in the same way by substantially the same means, with better results, is not such invention as will sustain a patent.” Smith v. Nichols, 21 Wall. 119. The bill must be dismissed, with costs to defendant, and it is so ordered.