Palmer v. De Yongh

90 F. 281, 1898 U.S. App. LEXIS 2493

• Court: U.S. Circuit Court for the District of Southern New York
• Decided: November 15, 1898
• Status: Published

Opinion

COXE, District Judge.

The third claim of the patent has reference to a valance for hammocks, canopies, lambrequins and similar articles where hanging drapery is commonly used. The valance is composed of a woven fabric and a fringe. The fringe is made of the regular weft-threads of the fabric and additional weft-threads which engage a portion only of the warp-threads at the fringe edge of the fabric. The introduction of the additional threads tends, of course, to thicken the fringe. When completed the valance hangs from the hammock body ‘‘in full form,” or in graceful wavy folds. As described in the specification and shown in the drawing the valance performs no function of any kind, certainly no useful function. It is designed solely for ornament.

The complainant Peder, in whose interests this suit is prosecuted, does not deal in hammocks, furniture or upholstery of any kind. He and the defendant are engaged in selling a braid or edging intended as a protector for women’s skirts. This braid is about half an inch in width and is sewed to the bottom of the skirt so that its lower edge, which consists of a thick brush or fringe, extends a short distance below the skirt. It is said that this arrangement is useful and popular, the edging tending to protect the skirt from wear. To the uninitiated it would seem that the brush must act as a dust collector where the filth of the pavement will find a lodgment. In view, however, of the enormous sales reported in the testimony, this view is probably erroneous.

It is unnecessary to decide whether, in view of Exhibit 6 and the ‘Hensel sample,” it involved invention to produce the valance of the claim, for the reason that the court is of the opinion that the claim cannot be broadened to cover the defendant’s braid without including these exhibits also.

It is unquestionably true that the inventor of a machine is entitled to the benefit of all the uses to which it can be put whether he knew of them or not. But the defendant must use the invention which the patentee has described and claimed. The rule cannot operate to sweep within the patent structures which do not embody the invention claimed-and resemble only some of its subordinate features. Por instance, one who Ras patented a new Rawser for towing vessels at sea would Rardly expect to cover a shoestring even though twisted on the same principle. A manufacturer-of tootR brushes may proceed without fear of molestation from the patentee of an improved street sweeper even though the method of inserting the bristles is alike in both cases and was first adopted by the latter. A patent for a shell for a 13-inch rifle cannot be tortured into covering the head of a lead pencil or the ferrule of a cane. In the present case the claim is expressly limited to a valance and the range of equivalents which the patentee thought might be included by him is plainly indicated in the specification. They all are designed for uses similar to that of a hammock valance. The braid of the defendant is in no sense a valance or the equivalent of a valance. The one is alleged to be useful; the other is known to be ornamental. The sole function of the braid is to protect the skirt and to remain unseen; the sole object of the valance is to be seen and add to the beauty of the hammock.

The legitimate rights of the holder of the patent cannot be invaded, by one who protects from wear the bottom of women’s skirts. The two fields are wide apart and have nothing in common. If the defendant were sued as a hammock maker and if “Velour Edge Mohair fc?kirt Binding” were found in the prior art it can be imagined with what contempt it would be denounced by complainants’ expert witnesses if offered as an anticipation. They' would dismiss it as belonging to a totally different art and having nothing whatever to do with the patented device. It is said that if size, length of fringe and stiffness are to be considered it will be difficult to determine where the dividing line between fringe and brush is located. This may be true in some cases which may be imagined, but here the defendant’s braid lies far outside of the debatable territory. The bill is dismissed.