* *

the granting clause declares that the grantor does, in consideration of the premises recited, "grant, bargain, sell, assign, and set over to the said John N. Kershaw, his heirs and assigns, all the abovedescribed tract or parcel of land, situated as aforesaid, containing the whole island of 1,500 acres, more or less," etc.; and the deed from Kershaw to Johnson also declares that the grantor "hath granted, bargained, and sold, and by these presents doth grant, bargain, and sell, unto the said Henry Johnson, his heirs and assigns, all that certain tract of land called the island of 'Belle Isle,' situated near the mouth of the river Atchafalaya, in the parish aforesaid, containing 1,500 acres, more or less, together with all the appurtenances and advantages whatsoever thereunto belonging or in any wise appertaining; * and the said John N. Kershaw, for himself and his heirs, the said tract or parcel of land, and every part thereof, against him and his heirs, and against every other person or persons whatsoever, to the said Henry Johnson, his heirs and assigns, will forever warrant and defend." Under these deeds Walter Brashear held, when, on the 1st day of May, in the year 1822, the heirs of Gonsoulin and others brought suit against him in the district court of the Fifth district, parish of St. Mary, in which they "represent that, notwithstanding their right and title to the said land, a certain Walter Brashear, of the parish of St. Mary, has entered upon the said tract of land and taken possession of the same." After the death of Walter Brashear, under the judgment against his heirs rendered by the circuit court for the district of Louisiana fieri facias duly issued and was levied upon the property of the estate of Walter Brashear, including the land in controversy, and was duly sold and conveyed by the marshal for the district of Louisiana to Robert B. Lawrence as the purchaser, the deed being in the due and customary form for judicial sales, and expressing "that I, the said marshal, in consideration of the premises, and by virtue of the law in such case made and provided, do sell and transfer the said above-described property [with the exception above noted] to the said Robert B. Lawrence," etc. These conveyances appear to us to undertake to pass the land itself, or all property in the land, to the grantees, and cannot in reason, or as we read them in the light of the Louisiana decisions, be held to be in any sense quitclaim deeds, or such as are not translative of property, and not adequate to support the claim of the 10-year limitations provided by the laws of Louisiana. If these deeds are conveyances translative of property such as, with proper proof of possession, will support the claim under the 10-year statute of limitations, the defendant's claim under that statute is abundantly made out, and thereby the peremptory instruction given by the trial judge was also not only justified, but required.

Finding no error in the judgment of the circuit court, it is affirmed.

(115 Fed. 886.)

DOWAGIAC MFG. CO. v. SUPERIOR DRILL CO.

P. P. MAST & CO. v. SAME.

(Circuit Court of Appeals, Sixth Circuit. April 8, 1902.)

Nos. 989, 1,041.

1. PATENTS-SCOPE-INCIDENTAL ADVANTAGES OF INVENTION.

A patentee is entitled to all the uses and advantages of his invention. whether he knew of them or not.

2. SAME-PATENTABLE INVENTION-PROOF OF COMMERCIAL SUCCESS.

The fact that a patented device went at once into extensive public use, and has continued therein, does not of itself conclusively establish either novelty or utility; but if, upon technical grounds, the matter is doubtful, it is persuasive evidence of those qualities, unless it appears that such commercial success was due to other causes.

3. SAME-VALIDITY.

It is no objection to the validity of a patent for an improvement in a physical structure that its utility depends on the use of the structure in a particular manner, when such mode of use is described in the specification in terms intelligible to those skilled in the art.

4. SAME INVENTION-NEW COMBINATION OF OLD ELEMENTS.

If a new combination of old elements is such that it produces a new mode of operation, and a beneficial result, there may be a patentable invention.

5. SAME-INFRINGEMENT-CHANGING FORM OF PARTS IN COMBINATION.

One does not escape liability for infringement by changing the form or dimensions of the parts of a patented combination, where such change does not break up or essentially vary the principle or mode of operation pervading the original invention.

6. SAME-GRAIN DRILLS.

The Packham patent, No. 557,868, for an improvement in disc grain drills, consisting of a shield extending below the end of the sced conduit, and in front of the same, adjacent to the lower and rear portion of the disc, on its convex side, so as to stand within the angle of the furrow, and having its front and lower edges bent inwardly and brought close to the disc,-its purpose being to keep the furrow clear of obstructions from the land side until the seed has been dropped therein, and also to act as a guide for the seed,-was not anticipated, shows patentable invention, and is valid. Claims 1, 2, 3, and 6 also held infringed by the device used by each of the defendants, one of which was that of the Mast patent, No. 615,727.

Appeal from the Circuit Court of the United States for the Western District of Michigan.

Appeal from the Circuit Court of the United States for the Southern District of Ohio.

The following are the opinions in the courts below:

Superior Drill Co. v. Dowagiac Manufacturing Co. et al.

WANTY, District Judge. Suit is brought on the first claim of patent No. 347,982, issued to W. B. Arnett, on August 24, 1886, which reads as follows: "A spout on conductor for a seeding machine having its lower end flattened laterally and formed with a delivery orifice elongated in the direction of the line of travel, whereby the spout is enabled to deliver the seed centrally in a narrow furrow." And on the fifth claim of patent No. 527,621, issued to F. R. Packham, on October 16, 1894, which reads as follows: "In a furrow opener, a support having a laterally projecting trunnion and a vertically arranged conduit, a lubricating chamber formed in the top

of said support and having a laterally extending passage leading therefrom and ending on the periphery of said trunnion, substantially as specified." And on the first, second, third, and sixth claims of patent No. 557,868, issued to F. R. Packham, April 7, 1896, which reads as follows: "(1) A furrow opener consisting essentially of a frame or support having a conduit therein, a disk journaled on a suitable trunnion on said frame or support which is located in front of the conduit, said frame or support being provided with an extended portion which projects below the lower end of the conduit and in front of the same, said extension being formed at the front to conform to the shape of the side of the disk adjacent to which it is adapted to lie, substantially as specified. (2) The combination with the frame having a conduit therein, and a furrow opening disk journaled at an angle on the frame of a guide shield extending below the end of the conduit and in front of the same, said shield being located within the angle of the furrow opening disk so as to stand wholly within the furrow, substantially as specified. (3) The combination with the supporting frame having a conduit therein, and a disk journaled on said frame at an angle to the line of draft, as described, of a downwardly projecting shield in front of and below the conduit, said shield being curved at the front so as to lie adjacent to the disk and being placed wholly within the path of said disk so as to extend within the furrow formed thereby, substantially as specified. (6) The combination with the frame having a supporting trunnion, and an angularly arranged furrow opening disk thereon, a downwardly projecting shield in the rear of and below said trunnion, said shield being located between the said disk and a line extending through the cutting edge thereof parallel to the line of draft, a lug or projection on said frame, and a scraper con nected to said lug so as to bear on the inside of said disk, substantially as specified." And on the fourth claim of patent No. 578,941, issued to F. R. Packham on March 16, 1897, which reads as follows: "(4) The combination with a furrow opening disk and its support of the drag-bars connected to said support, one of said drag-bars being extended forwardly and upwardly in a line behind said disk, and the other drag-bar being extended forwardly and laterally, as well as upwardly, at a different vertical as well as lateral angle to the other bar, both of said bars having a common line of attachment, substantially as specified." These claims all relate to the construction of what is known as the single disk drill for seeding. Grain drills have been a fruitful subject for patents for a great many years, as shown by the 27 patents introduced in evidence by the defendants to show the prior state of the art; and during later years the disk drill has received considerable attention.

*

The claim sued upon for the infringement of the Arnett patent, No. 347,982, above quoted, is not for a spout in combination with a disk, but for one to be used in a seeding machine, having its lower end flattened laterally and formed with a delivery orifice elongated in the direction of the line of travel, whereby the spout is enabled to deliver the seed centrally in a narrow furrow. An examination of the specifications shows that Arnett claimed this spout applicable, not only to a disk drill, but to other machines as well. Mr. Packham testifies that grain spouts or conduits with flattened or elongated discharge ends, according to his recollection, were used in connection with hoe and shoe drills six or seven years before the date of the Arnett patent; and we find them in the Wagoner patent, No. 60,096, issued November 27, 1868, and in the prior Arnett patent, No. 312,791, dated November 24, 1885. In this Arnett patent the spout is shown in connection with a disk furrow opener as in the patent sued on. I find this claim to have been anticipated.

The fifth claim of the Packham patent, No. 527,621, refers to the lubricating parts of the device. It had been common for a great many years to provide means for lubricating a journal, and in the prior art relating to grain drills this device is found in the patents issued to La Dow and Bramer, in 1880, and there was no invention in the adoption of it by Packham.

The fourth claim of the Packham patent, No. 578,941, is for the combination with a furrow opening disk and its support of the drag-bars connected to said support, one of said drag-bars being extended forwardly and up

wardly in a line behind said disk, and the other drag-bar being extended forwardly and laterally, as well as upwardly, at a different vertical as well as lateral angle to the other bar, both of said bars having a common line of attachment. The use of the double drag-bar extending forwardly to a common line of attachment is shown in the Wagoner patent of 1866, the Shepard patent of 1869, the Arnett patent of 1885, the McClelland patent of 1888, and the Packham patents of 1894 and 1896, and was, therefore, old in 1897, when Packham took out this patent. The Wagoner and McClelland patents show double drag-bars extending forwardly at a different vertical angle to bring their forward ends to a common line of attachment, as claimed by Packham in this fourth claim of his patent of 1897.

The main patent relied upon in this suit is the one, No. 557,868, issued in 1896, and it is claimed that the first, second, third, and sixth claims, above quoted, of this patent, solved the problem in grain drills which made successful what had before proved a failure. It is claimed that this solution consisted in a combination and arrangement of parts whereby all act harmoniously, and for the first time made it possible to plant a predetermined amount of grain regularly and evenly at a specified depth, by scat tering the seed centrally in a furrow wholly made by the revolving disk. After a review of the prior state of the art, including the 1894 Packham patent, No. 527,621, every feature which enters into the 1896 patent is found, except the guard, extension, guide, or shield, by which names the device to prevent the land side of the furrow from caving in until the grain has been deposited is called in the claims above quoted. This shield, wherever mentioned in the claims, read in the light of the specifications, lies wholly within the path of the disk and forms no part of the furrow opening device. The complainant's expert testified that all of the parts thus brought together were old, except the extension or shield. There are a number of patents in the record which show the use of shields of various kinds to protect the grain from obstructions falling into the furrow until after the seed has been deposited. It is claimed by the defendants that the adding of this shield, which had formerly been used for the same purpose, did not require the exercise of the inventive faculty. The co-operation accomplished by this protecting device, which is located below and in front of the conduit and wholly within the furrow, and is shaped in front so as to conform to the side of the disk, had never before been accomplished. By this construction the disk opens, and the shield prevents the obstructing of the furrow until the grain is deposited, and it tends to deflect the grain against the revolving disk and scatter it in the furrow. The spout ends where the shield or guard begins; but, with the revolving disk and shield, the grain finds its way to the bottom of the furrow scattered in the center more thoroughly than it could be if it was conducted there by the spout, instead of falling against the disk and shield. Although the spout, disk, and shield in different form are found in the prior art, there was no such combination as is effected by this patent; and, although the elements are old, the beneficial result accomplished by this combination has great utility, which is shown by the general adoption of it by manufacturers of seeding machinery, including the defendant company. The defendant company has adopted this shield for the exact purpose set out in the claims of the patent, makes the same combination, and secures the result which has made this single disk drill a commercial success. I find the first, second, third, and sixth claims of patent No. 557,868 valid and infringed.

There is no proof found in the record supporting the allegation in the bill that defendants C. E. Lyle, W. F. Lyle, and N. F. Choate are joint infringers with the defendant company, and the bill will be dismissed as to them, and a decree entered against the defendants the Dowagiac Manufacturing Company and W. F. Hoyt in the usual form.

Superior Drill Co. v. P. P. Mast & Co. et al.

CLARK, District Judge. In respect to the Arnett patent, No. 359,832, issued in 1887, I need only say that according to the weight of the evidence it was never a success in actual use, constituted nothing more than a patent on paper, never reduced to actual practice, and lacking in the element of

utility. The bill, therefore, so far as based upon this patent, cannot be sustained. I do not think any case for relief against those sued as individuals is sufficiently made out, and the bill is not sustained in this regard. With reference to claim 8, patent No. 578,941, and the claims of patent No. 601,477, here involved, it seems sufficient to say that, looking to the prior state of the art, including the Packham patent of 1896, No. 557,868, if there is anything in these devices by way of improvement which can be regarded as new, it is the particular support and conduit formed integrally, rigidly and strictly limited to the particular construction; and, so limited, there is no infringement. This leaves remaining the really troublesome part of this lawsuit, involving as it does the two questions principally discussed of whether or not, in view of the existing state of the art, there is anything patentable in the Packham invention on which letters were issued April 7, 1896; and, second, how far, in view of the late case of Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485, 20 Sup. Ct. 708, 44 L. Ed. 856, this court is required to independently consider and decide the very questions already passed on by another court of co-ordinate jurisdiction.

In regard to the first question, it is certainly a serious issue whether the shield, as the same is now adjusted with reference to the conduit and disk in the plaintiff's device, does not appear by actual inspection of the models to perform the function of opening, in part, at least, the furrow, just as it undoubtedly did as used in prior devices under the name of guard, etc. It is true this is claimed not to be any part of its function in the present device; but does this militate against the fact that, although it is an unclaimed function not specified, it is nevertheless a part of the actual use made of it in the combination? On the other hand, although it was not a function, specified or claimed in prior devices, of the guard or shield to hold open the furrow and protect the grain while passing down from the conduit into the furrow, was it nevertheless not plainly a function which it in fact did perform, and does not this appear by actual inspection to have been the case? The distinct claim now made for the combination is that the shield is so adjusted to the conduit that it stands within the line of the furrow, but operates independently of the furrow opening function in older devices, and that its distinct use is to hold open the furrow, and, in combination with the conduit, to protect the grain while falling from the conduit. I am not prepared to say that there is such new and independent testimony introduced in the present case, or that the issues are sufficiently varied from those involved in the case before Judge Wanty, as to require otherwise than that I should accept his judgment as correct to the extent that he actually ruled the same questions which are now involved. It seems to conduce to a more orderly and better administration of the law to accept the deliberately expressed judgment of a court of co-ordinate jurisdiction, unless it very fully and very clearly appears that the case is so different in the evidence as to imperatively require a different result. Although the question has been to me one of no ordinary difficulty, I have decided, as stated, that I should accept Judge Wanty's opinion so far as it goes, because I do not believe that there is now anything new in the case which requires a different ruling, and I think it highly probable that, if it turns out that Judge Wanty's views are not approved by the circuit court of appeals, it will be because that court differs in opinion with him upon the case actually presented to him on the former hearing, and quite independently of anything that has been offered by way of new or additional evidence on the present hearing. I take this course the more readily be cause the case disposed of by Judge Wanty is now pending in the circuit court of appeals, and I am quite certain and am advised that any ruling now made will go up for review, and the cases can be heard at the same time, and every issue made in both cases disposed of by one judgment of the court, and this is desirable as bringing about the earliest possible termination of the litigation in regard to these patents. I consequently sustain the patent, and grant relief to the extent that Judge Wanty did, and dismiss the bill in all other respects. This result does not seem to require that the costs should be adjudicated otherwise than in the usual way of following the result of a suit.