between employed and employer, and the contract was upheld as a reasonable protection of the master's business. The contract in this case was for the protection of what was in effect the business of the four men who bound themselves, and the same result is reached by the same reasoning. [4] (3) There was no new agreement with Ellis in the sense of an annulment of that of 1905. None of the contracting parties was bound to invent or attempt so to do; they only agreed that, if they did make inventions of a certain kind, they would disclose and assign the same. Ellis was employed to work as an experimenting chemist, which is quite a different matter. But even if Chadeloid Company had discharged Ellis from his contract, Chalmers had no right to complain. He had severally contracted, and remained bound, even though Ellis had been released. If the conduct of Chadeloid Company in giving such release was injurious to Chalmers as a shareholder, his remedy plainly did not consist in breaking his own agreement. [5] (4) Defendants seem to think that the injunction issued is such as is usually granted in an action on a patent. This is only true in the sense that, having been compelled to surrender patents that do not belong to them, they are forbidden to manufacture what the patents disclose. This last is what does happen to some rare infringers who have an erroneously issued patent covering absolutely nothing not already patented. But Chalmers and his company (which took with ample notice, and is but another name for Chalmers himself) should have disclosed and assigned these very inventions; therefore they are contractually excluded from any use of them, and the injunction was in proper form. [6] (5) The court below granted an accounting as against a trustee ex maleficio. Whether this was within the rules of equity is not now before us. The decree appealed from is interlocutory. We can review it only by force of the statute now contained in section 129, Jud. Code. An appeal under this section brings up nothing but the propriety of granting or refusing an injunction or receivership, as the case may be. Procedure not specifically covered by the statute remains unchanged thereby. The question of accounting must await final decree and is unaffected by this appeal. Kilmer v. Griswold, 67 Fed. 1017, 15 C. C. A. 161; Howe v. Dayton, 210 Fed. 801, 127 C. C. A. 351, and cases cited; Lederer v. Garage, etc., Co., 235 Fed. 527, 149 C. C. A. 73. Decree affirmed, with costs. (243 Fed. 611) BESSER v. MERRILAT CULVERT CORE CO. No. 4702. 1. PATENTS 328-VALIDITY-CORE FOR Concrete Culverts. The Besser patent, No. 952,869, for a metallic core for concrete culverts, held void, on the ground that the device is not practically useful. 2. PATENTS 47-VALIDITY "USEFUL" DEVICE. The term "useful," as used in the patent law, when applied to a machine, means that the machine will accomplish its purpose practically when applied in industry. [Ed. Note.-For other definitions, see Words and Phrases, First and Second Series, Useful.] Appeal from the District Court of the United States for the Southern District of Iowa; Martin J. Wade, Judge. Suit in equity by Charles A. Besser against the Merrilat Culvert Core Company. Decree for defendant, and complainant appeals. Affirmed. For opinion below, see 226 Fed. 783. Ralph Orwig, of Des Moines, Iowa (W. P. Bair, of Des Moines, Iowa, on the brief), for appellant. Harold J. Wilson, of Burlington, Iowa (W. E. Jackson, of Burlington, Iowa, on the brief), for appellee. Before SANBORN and SMITH, Circuit Judges, and AMIDON, District Judge. AMIDON, District Judge. This suit is brought to restrain infringement of patent No. 952,869, issued to the plaintiff, Charles A. Besser. The answer sets up invalidity and noninfringement. The trial court. dismissed the bill, largely on the defense of noninfringement, claiming that plaintiff's patent was greatly restricted by what occurred in the patent office while the application was pending. We think both defenses have been made out, but that the decree can best be rested on the ground of invalidity. [1, 2] The patent relates to a metallic core for concrete culverts so constructed as to expand and contract, and thus be adapted to culverts for different sizes. The core is made of curved, galvanized plates overlapping and sliding upon each other, and operated by an internal mechanism by which the core can be expanded and contracted. Claim 4 of plaintiff's patent (being one of the claims alleged to be infringed) makes resiliency of the plates an element of the patent. A study of the evidence shows that resiliency is an indispensable feature of the mechanism, if it is to be useful and workable. The cores are made of galvanized iron. That is the only material that is sufficiently strong and cheap to be commercially available. But galvanized iron is not resilient. On the other hand, it is flexible. A curved plate made of For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes that material, and subjected to pressure so as to remove the curvature when expanded, will not return to its original form when the pressure is removed. That is the fatal defect of plaintiff's invention. It embodies no device to secure resiliency or provide a core which, when it has once been expanded and then subjected to the pressure of the superimposed concrete, will return to its original form. This is made plain by Exhibit 46 at page 71 of the record. Only six of plaintiff's cores have been made, and when tried and expanded for the largesized culverts, the plates have been so bent that the edges extend far out from the plates which they overlap, and the mechanism is thus rendered inoperative. In other words, plaintiff's invention is "new," but it is not "useful." The term "useful," as contained in the patent law, when applied to a machine, means that the machine will accomplish the purpose practically when applied in industry. It is to be given a practical and not a speculative meaning. It means that the machine will work and accomplish the purposes set forth in the specifications. Even if the machine can be made to accomplish the purposes specified, it is not useful, within the meaning of the patent law, if from its inherent nature it will accomplish the purpose only to such a restricted extent as to make its use in industry prohibitive. This has been the interpretation put upon the term in the patent law from the earliest decisions to the present time. Bliss v. Brooklyn, Fed. Cas. No. 1,546; Chandler v. Ladd, Fed. Cas. No. 2,593; Troy Laundry Mach. Co., Limited, v. Columbia Manufacturing Co. (D. C.) 217 Fed. 787. These views are fatal to plaintiff's machine. It would work as a core if it was started at the smaller size and expanded through the range of its expansibility. After that had been done, however, it would not work. when contracted for smaller sizes. The expense of the machine made it worthless in the industry if its use was thus restricted. To be sure, it is well established in patent law that a machine need not be perfect in order to be patentable. If it will accomplish the purposes set forth in the specification practically in industry the patent is valid, although the machine may be greatly improved by the addition of some new element. If, however, it will not work practically in industry when constructed according to the claims and specifications, it is not useful, and cannot be sustained upon a showing that it can be made to work by a small improvement. That is the objection to the suggestion of plaintiff here that if a wire be applied to his machine it can be made to work some. See Bliss v. Brooklyn, Fed. Cas. No. 1546. Plaintiff had a new idea. It was valuable in industry. Unfortunately for him, however, an idea is not patentable. Only a machine is patentable, and when plaintiff undertook to embody his idea in a machine he did not give it an expression which would work in industry. His machine, therefore, was not patentable. The defendant has met this difficulty by attaching a system of torsion springs to the plates, so as to produce and maintain the desired resiliency. This new element is fundamental to the structure, and defendant, by adding it, was the first to embody the invention in a workable and useful form. The decision of the trial court was right and is affirmed. (243 Fed. 613) MILLER PASTEURIZING MACH. CO. v. RICH. (Circuit Court of Appeals, Second Circuit. April 10, 1917.) No. 197. PATENTS 328-VALIDITY AND INFRINGEMENT ICE CREAM FREEZER. An order granting an injunction against infringement of the Hoefler and Schantz patent, No. 921,837, claim 2, for an ice cream freezer, reversed, on the ground that, after full hearing, the claim had since been held void by the Circuit Court of Appeals of another circuit. Appeal from the District Court of the United States for the Western District of New York. Suit in equity by the Miller Pasteurizing Machine Company against Paul J. Rich. From an order (216 Fed. 192) granting an injunction, defendant appeals. Reversed. This is an appeal by the defendant from an order granting an injunction restraining the defendant from infringing claim 2 of patent No. 921,837. The order suspended the issuing of the injunction until after the decision of this court. Henry D. Williams and William S. Pritchard, both of New York City, for appellant. Edward R. Alexander, of Washington, D. C., for appellee. Before COXE, WARD, and ROGERS, Circuit Judges. COXE, Circuit Judge. We think the order holding that Exhibits A to E inclusive infringe claim 2 of the patent and granting an injunction should be reversed for the following reasons: First. Claim 2 is for a combination having a large number of elements. The validity of the claim is questioned by the defendant and we are not convinced that the claim can be sustained. Second. Infringement is denied by the defendant both as to his original and present construction and the questions thus presented are vital and deserve serious attention. Third. The Circuit Court of Appeals for the Third Circuit has, since the decision of the District Court in the present case, handed down a decision holding that the patent in suit is invalid. The District Judge of the Middle District of Pennsylvania had followed the decision in this case and his decision was reversed by the Circuit Court of Appeals. A copy of this opinion has been handed us, as it was decided at the October term of the court and has not yet been printed in the reports. Referring to the claim in question Judge McPherson says: "With one exception all the elements named in this narrow and specific claim are old in the art (see patents to Miller, to Walker, and to Thompson); and the new element-namely, the swinging joint with axial and radial pas For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes sages-is an old and well-known device, altho it had not as yet been used in the construction of freezers. Evidently therefore the claim is for a combination or a subcombination of old elements, and in such a situation the rule is, that while the combination may still be patentable a patent should only be granted if the old elements have been so combined as to operate in a new way or to produce a new and useful result. Tried by this established test, we think the claim in suit cannot be upheld. Every element therein described operates in the same way as before, and, while the result is not precisely the same, the difference is so slight that we do not feel justified in pronouncing the machine either new or useful in a patentable sense. So far as ap pears, the chief, if not the only, advantage in the construction lies in the fact, that when the scraping knives need sharpening--and they need it only about once a week-they are more accessible and can probably be removed more conveniently from a machine that tilts than from a machine that is fixed in place. In other respects we do not see that the patent affects the usual operation of a freezer in any degree that needs attention. The brine flows in the same way and by the same course; the mixture to be frozen is the same and is subjected to the same cold; it is removed in the same way, and its quantity and quality are apparently what they were before. Neither is the patented combination used even in the frequent cleaning of the freezer; this is accomplished by an old method, which requires no tilting of the can. In short the evidence discloses nothing more than this: the product is unchanged, and so is the mode of operation, except that the tilting of the freezer permits the knives to be taken out somewhat more rapidly and conveniently." We are clearly of the opinion that a claim which has been held invalid by a court of co-ordinate jurisdiction should not be held valid by this court and especially so upon an appeal from an order for a supplementary injunction. To say the least, the validity of the claim is in doubt and an injunction should not issue in a doubtful case. The order is reversed. |