(E.) ENGLISH STATUTES.

29 Car. II, ch. 3. § 17. Statute of Frauds....

27 Geo. III, ch. 32.

51 Geo. III, ch. 96.

54 Geo. III, ch. 171.

Remission of Penalties..

399

414

CASES ADJUDGED

IN THE

SUPREME COURT OF THE UNITED STATES,

AT

OCTOBER TERM, 1884.

THOMPSON, Trustee, & Others v. BOISSELIER & Another.

SAME v. SAME.

APPEALS FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE EASTERN DISTRICT OF MISSOURI.

MCNAB & HARLAN: MANUFACTURING COMPANY & Another v. THOMPSON, Trustee, & Others.

EATON & Others v. SAME.

APPEALS FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE SOUTHERN DISTRICT OF NEW YORK.

Argued March 10, 1885.-Decided March 30, 1885.

The third claim of reissued letters patent No. 978, granted to William S. Carr, June 12, 1860, for "improvements in water-closets," (the original patent having been granted to him August 5, 1856, and, as reissued, extended July 23, 1870, for seven years from August 5, 1870,) namely, “In a valve for water-closets, a cup-leather for controlling the motion of said valve in closing gradually, substantially as specified, said cup-leather moving freely in one direction, and closing against the containing cylinder in the other direction, and the leakage of water in said cylinder allowing the movement VOL. CXIV-1

Opinion of the Court.

of said cup-leather, as set forth," construed, and the operation of the device explained.

The state of the art, as to prior devices, and the construction and operation of the defendants' device, set forth.

In view of the state of the art: Held, That, for the purpose of securing the free passage of water in one direction, and preventing its escape in the other direction otherwise than gradually, the defendants had used nothing which they did not have a right to use, and had not appropriated any patentable. invention which Carr had a right to cover, as against the defendants' structure, by the third claim of his reissue.

All that Carr did, if anything, was to add his form of orifice to the valve and cup-leather of an existing pump-plunger.

The third claim of the Carr reissue involves, as an element in it, the means of leakage set forth.

The only point of invention, if it could be dignified by that name, was the special means of leakage shown by Carr, but which the defendants did not

use.

To be patentable, a thing must not only be new and useful, but must amount to an invention or discovery.

Recent decisions of this court on the subject of what constitutes a patentable invention cited and applied.

Under them, claim three of the Carr reissue must, in view of the state of the art, either be held not to involve a patentable invention, or, if it does, not to have been infringed.

The first claim of letters patent No. 21,734, granted to Frederick H. Bartholomew, October 12, 1858, for an "improved water-closet," and extended, October 2, 1872, for seven years from October 12, 1872, namely, "The use of a drip-box or leak-chamber, arranged above the closet, and below and around the supply-cock, substantially as described," must, in view of the state of the art, be limited to a drip-box arranged above or on top of the closet, and is not infringed by a structure in which the drip-box is cast on the side of the trunk, near the top, but below it, and not on top of it.

These are suits in equity, to restrain infringements of a patent. The facts which make the case are stated in the opinion of the court.

Mr. Edmund Wetmore and Mr. George G. Frelinghuysen for Thompson, Trustee, and others.

Mr. Llewellyn Deane for Boisselier and Another, for the McNab & Harlan Manufacturing Company and for Eaton and others.

MR. JUSTICE BLATCHFORD delivered the opinion of the court. These are four suits in equity. The first one was brought

Opinion of the Court.

in February, 1877, in the Circuit Court of the United States. for the Eastern District of Missouri by Charles F. Blake, as trustee of William S. Carr and Frederick H. Bartholomew, against Elizabeth E. Boisselier and John C. Kupferle, for the infringement of reissued letters patent, No. 978, granted to William S. Carr, June 12, 1860, for "improvements in waterclosets," the original patent having been granted to him August. 5, 1856, and, as reissued, extended, July 23, 1870, for seven years from August 5, 1870.

The second suit was brought in February, 1879, in the same court, by Charles F. Blake, as trustee of Sarah Bartholomew, against the same defendants, for the infringement of letters patent, No. 21,734, granted to Frederick H. Bartholomew, October 12, 1858, for an "improved water-closet," and extended, October 2, 1872, for seven years from October 12, 1872.

The third and fourth suits were brought in July, 1879, in the Circuit Court of the United States for the Southern District of New York, by Charles F. Blake, as trustee, &c., and William S. Carr and Sarah M. Bartholomew-one against the McNab & Harlan 'Manufacturing Company and John Harlan, and the other against John Eaton and others--each for the infringement of the said Carr patent, as reissued and extended, and of the said Bartholomew patent, as extended.

In each of the two suits in Missouri a decree was made in May, 1880, adjudging that the patent sued on was not good and valid in law, and dismissing the bill. In each of the two suits in New York, a decision was made in February, 1881, 19 Blatchford, 73, adjudging that the two patents were good and valid in law, and that the third claim of the Carr reissue, and the first claim of the Bartholomew patent, had been infringed, and awarding an account of profits and damages; and in January, 1882, a final decree was made in one suit for $1,200 damages and $118.74 costs, and in the other for $415 damages and $101.24 costs. The plaintiffs in interest in each of the Missouri suits, and the defendants in each of the New York suits, have appealed to this court. The questions are the same in all of the suits and arise on the same proofs.

The third claim of the Carr reissue is the only claim of that

Opinion of the Court.

patent which is alleged to have been infringed. So much of the specification of that reissue as relates to that claim is as follows:

"Fig. 1 is an elevation of my closet as in place for use; Fig 2 is a plan of the cock and part of the plan of said closet; and Fig. 3 is a vertical section of my cock made use of in letting the water into and shutting the same off from said closet.