
    MacKNIGHT v. McNIECE.
    (Circuit Court, S. D. New York.
    October 4, 1894.)
    1 Patents — Bill for Infringement — Defenses.
    It is no defense to a bill for infringement that defendant did not designedly order an infringement, but left his superintendent to make the article according to his own judgment.
    2. Same — Witnesses to Prior Invention and Use — When to tie Named in Answer.
    Rev. St. § 4020, only requires that the answer shall name tlie persons who are claimed to have previously invented, or had knowledge of, the tiling patented, and does not make it necessary to give the names of the witnesses who are to testify to such prior invention or use.
    3. Same — Invention—Artificiad Pavements.
    In malting artificial stone pavements, the turning down of two layers of the material, instead of one, to form a curb, does not involve invention. Neither does making an obtuse angle, instead of a right angle, at the meeting point of the pavement and curb, nor the making of a forwardly projecting bead or molding to serve as a guard to protect tin; curbing and arris from tlie impact of wheels when backed against the curb.
    4. Same — Invention and Prior Use — Artificial Pavements.
    Tlie JlacKniglil patent, No. 373,295, for improvements in artificial pavements, held void as to tlie first claim, because of prior use, and as to the second claim, for want of invention.
    5. Same — Invention.
    Tlie MaeKniglit patent. No. 387,308, for improvements in artificial pavements, held void as to claims 2, 3, and 4, for want of invention.
    This was a suit by John W. Mac K night against James McNiece for infringement of patents for artificial pavements.
    Frank V. Friesen, for complainant.
    John H. V. Arnold, for defendant.
   TOWNSEND, District Judge.

This is a bill in equity for the- infringement of claims Nos. 1 and 2 of letters patent No. 373,295, dated November 15, 1887, and of claims 2, 3, and 4 of letters patent No. 387,308, dated August 7, 18.88; both said patents being for improvements in artificial pavements, and the complainant being the patentee. The defenses are noninfringement, want of invention, and anticipation.

Infringement of both patents is proved by the testimony of one Steinman, who testified that, while foreman for the defendant, he, acting under instructions from defendant, laid pavements which, according to his description, were of such character as to be covered by said claims of said patents. His testimony is supported by that of the expert Du Faur. No testimony or evidence in contradiction of these statements has been offered, and the infringement must be taken as proved. Even if tbe defendant, as claimed by bis counsel, bad left tbe superintendent to make tbe pavement according to bis own judgment, and bad not designedly ordered an infringment, tbis would not be a defense in tbis' action, although such facts might avail in an action for a penalty. Taylor v. Gilman, 24 Fed. 632.

The first claim of patent No. 373,295 is for “a pavement consisting of a series of layers, of which tbe upper layer is curved downward at tbe curb.” In tbe second claim “tbe two uppermost layers are curved downward at an obtuse angle at tbe curb, and overlap tbe lowermost layers.” In patent No. 387,308, tbe second claim is for “a combination of an artificial pavement with a composite curbing, d', having a bead, e, that projects forward beyond tbe line of tbe curbing.” Tbis bead is also designated in tbe specification as a “projection” or “nose,” and is once spoken of in the evidence as a “molding.” Its purpose is to serve as a guard against tbe impact of wheels of vehicles when backed up against tbe curb, and thus save tbe curbing proper and tbe arris from being injured. Tbe third claim is for “a combination of an artificial pavement, having an upper layer, d, with a composite curbing, d', joined to tbe upper layer at an obtuse angle, and provided with a forwardly projecting bead, e, and with tbe groove, e2.” Tbe essence of tbe improvement in these three claims is tbe addition of tbis bead or projection.

Plaintiff objected to tbe testimony, generally, of defendant’s witnesses as to anticipation, on tbe ground that they were not named in tbe answer. Defendant claimed that they were called to show', not any prior invention, but simply tbe state of tbe art, and thereby that tbe alleged invention of tbe complainant was really no invention at all; citing Machine Co. v. Keith, 101 U. S. 479. And tbe defendant claims also that, if it was necessary to name such witnesses in bis answer, “complainant should have given notice that upon tbe final bearing be would move to strike from tbe record tbe testimony of these witnesses, so that tbe defendant might have moved for an amendment of bis answer by tbe inserting of their names.” Defendant cites no authority for tbis latter position. Judge Woodruff, in Elm City Co. v. Wooster, 6 Fish. Pat. Cas. 452, 4 O. G. 83, Fed. Cas. No. 4,415, allowed such evidence to stand, on tbe ground that complainant’s brief did nor contain a motion to strike out, but decided tbe case in favor of complainant on the whole testimony. Machine Co. v. Keith, 101 U. S. 479, bolds that “an objection to tbe examination of a witness should state specifically the ground of tbe objection, in order that tbe opposite party may have tbe opportunity of removing it if possible,” and adds that if tbis bad been done in that case tbe defendant might have postponed tbe examination, and moved to amend bis answer. It makes no reference to any requirement of notice of a motion to strike out. Complainant’s brief mentions tbe fact that tbe witnesses are not named in defendant’s answer, and says that such witnesses, or their principals, must invariably be named in tbe answer, in order to apprise tbe complainant of tbe contemplated de-false. Otherwise, the objection is not insisted upon in complainant's brief, and the testimony of the witnesses is carefully discussed therein. But the provisions of section 4920, Rev. St., only require notice of the names and residences of the persons alleged to have invented, or to have had the prior knowledge of, the thing patented, and where and by whom it had been used. It does not require the names of the witnesses who are to testify to such prior invention or use. Machine Co. v. Keith, supra.

The testimony of Gough was objected to by complainant, and is too indefinite and uncertain to prove prior use. The testimony of Schmidt was objected to, but he testifies to prior use by Graham & Son at Madison avenue and Seventy-Sixth street in 1886, and there was no specific objection to the testimony as to their use. The testimony of J. H. Dryer was objected to, but his testimony shows prior use in Central park in 1870 by the department of public parks, to which there was no specific objection; also, prior use by one Philips, of New York, at Helmboldt’s block, Long Branch, state of New Jersey, in 1872, to which there was no specific objection. The firm of Becker & Downs is named in the answer, with a statement that the first names of the partners were unknown to defendant. Alexander R. Becker, one of the firm, testifies to prior use by A. T. Meyer in 1884, at the Hoffman Arms, Madison avenue and Fifty-Ninth street, New York City. He does not testify to any prior use by the firm of Becker & Downs, although he does to prior use by himself. This A. T. Meyer, however, was named in the answer, which makes his testimony admissible. Julius Hopke testified to the same effect, and both Becker and Hopke stated that complainant was superini.endent of the work for A. T. Meyer at that time. Hopke also testified to prior use at Long Branch in 3871, at the Helmboldt block, and there is no specific objection made to this testimony. Asher T. Meyer is named in the answer, and his son, Louis G., testified to use by him at 23 East Seventy-Fourth street, at Fifty-Ninth street and Madison avenue, and at Fifty-Fifth street and Broadway, all in the summer of 3884, and that complainant assisted upon one of them. No contradiction whatever of this testimony is offered, and I must accept these facts as proved.

The prior use testified to was mainly the making of the upper layer of the pavement and the curb in one piece. If the construction testified to by the witnesses differs from the first claim of patent No. 373,295, it would seem that complainant, who superintended the laying of some of the pavements, might have explained the difference by testimony. I find that the first claim is void by reason of prior use.

The second claim of patent No. 373,295 merely makes two layers, instead of one, turn down to form a curb, and provides for an obtuse angle where the curb and pavement meet. The second, third, and fourth claims of patent No. 387,308 add only a bead or projection, a groove below the bead, and in the third claim include the .obtuse angle, and, in the fourth, a series of layers. Turning down two layers, instead of one, does not involve invention. Neither does making an obtuse angle, instead of a right angle, at the meeting point of the pavement and curb, nor the making of a forwardly-projecting bead. Complainant has introduced no evidence whatever to show that his pavement was more useful by reason of the alleged inventions, nor has defendant introduced any testimony on this point. Defendant’s counsel, on the hearing, accounted for the deficiencies in their evidence by stating that defendant had disappeared, and could not be found. If the above claims include any advance beyond the prior art, it consists merely in an improvement in degree or finish by the use of ordinary skill in the extended application of well-known processes or devices, and cannot be held to involve invention. Walk. Pat. § 25 et seq.; Trimmer Co. v. Stevens, 137 U. S. 423, 11 Sup. Ct. 150; Mill Co. v. Walker, 138 U. S. 124, 11 Sup. Ct. 292; Johnson Co. v. Pacific Rolling-Mills Co., 2 C. C. A. 506, 51 Fed. 762; Wilson v. Copper Co., 4 C. C. A. 484, 54 Fed. 495; Westinghouse v. Electric Light Co., 63 Fed. 588. Let the bill be dismissed.  