1884 



GLEANINGS IN BEE CULTURE. 



587 



THE PATENT ON THE ONE - PIECE 

 SECTION. 



ALSO SOMETHING VALUABLE IN REGAKI) TO GET- 

 TING PATENTS IN GENERAL. 



«S there are some valuable lessons to be 

 gathered from the following jjupers, 

 we have thought best to submit them 

 to our bee-keeping friends. I know 

 it occupies considerable space in our 

 journal ; but as tlieic lias been some discus- 

 sion in regard to patents, wlietlier it is ad- 

 visabh^ to exi)end money in getting them, 

 and as to Ml lat constitutes a patentable in- 

 vention, the infonnation, 1 think, is well 

 worthy of the place tiie jtapers occupy, even 

 though they might otherwise be considered 

 dry details. Friend Osborne wrote us in 

 June as follows :• 



Friend Root: — i have had correspondence with a 

 large number of bee-men at different times since 

 taking: charge of your case, and I have promised 

 many to let them know "just the points made " in 

 the Forncrook suit. I can not answer them; and 

 as I thoug-ht it might be of interest to the bee-men 

 generally, I inclose you a summary of my brief, 

 made for Justice Stanley Matthews. If you think 

 it of interest to the readers of Gleanings, publish 

 it. If you think otherwise, put the MS. where you 

 j)ut spring poetry. 



I wish you would express to the many bee-men 

 wh<j have cheerfully furnished me with information 

 on the one-piece section, my thanks for their kind- 

 ness and courtesy. .T. A. Osborne. 



Cleveland, ()., June U, 1884. 



Below we give friend O.'s brief above 

 mentioned, which was sid)mitted to Justice 

 Matthews : 



osborne's brief, as submitted to .lustke 

 matthews. 

 Circuit Court of the United States. 

 Northern District of Ohio. 

 James Forncrook 1 Brief of J. A. Osborne 



I's. - for 



Amos I. Root. ) Defendant. 



The proof establishes the fact beyond question, 

 that (iJl the features of tlie plaintiff's device, to wit, 



A lilank loi-mcd nl a siiij^le piece of wood (A) hav- 

 ing transxcrsc angular grooves (f) to form the cor- 

 ners and dentateil cncLs (((); 



Recesses (li) for the passage of the bees; and a 

 longitudinal groove (</) for- fastening in the guide- 

 strip,- 



Were old, and long in use, before his alleged inven- 

 tion. 



IT IS A MERE AGGREGATION. 



All that the plaintiff has done is to bring together 

 in a single section, diflerent fcatni-cs which were be- 

 fore scatti'i-cd through scvci-al lioiicx-sccrions. 'i'hese 

 ^:evri-al tcaturcs, when thus bioiiylit together, do 

 not i)erfoi-ni any functions which th- , did not pei- 

 foi-m in formei- sections; and neitlier all of them to- 

 gether, nor any part of them, perform any johit 

 function. It is a mei'e aggi'egation of devices, and 

 can not be considered an invention.— (Jurtis on Pat- 

 ents, Sec. 111. c; Walker on Patents, Sec. 33; Hailes 

 \ . Van Wo}iner, 20; Wallace, ;i.53; Beckendorfer v. 

 Faber, '.):.', l. S., 3.57. 



Your houoi- (.ludjic Matthewsi, in |i)-oiiouiK'iiig the 

 opinion of the court in I'ickei-iiig \. McCuilouah 

 (104 ('. S., :il(ii, sai.l: -In a pateiitahle c(.inl.iii:Ui(>n 

 of old elements, all the constituents must so enter 

 into it as that each (|ualilies every other; to diaw 

 an illustration from another branch of the law. t liev 

 must lie .joint tenants of the domain of invention, 

 seized each of every pai't. in r iin/ il iirr iniit, and 

 not mere tenants in connnon, wit li sepai-ate inter- 

 ests and estates. It must form either a new ma- 

 chine (device) of a ilistinct character and function, 

 or produce a result due to the joint and co-op<M-at- 

 ing action of all the elements, and which is not the 

 mere bringing together of separate contributions." 



In the light of this opinion, and of the facts in this 

 case, the complainant's device can not be consider- 

 ed an invention. The i)laintiff admits, that the dif- 

 ferent features of his device i)erform no functions 

 but what they formed in other sections theretotore 

 made, and the evidence shows that thert' is no de- 

 pendent co-operation existing between them. The 

 patentee has " merely added together sei)arate con- 

 tributions." 



IS IT A COMBINATION"/' 



While we urge that it is a "mere aggregation," we 

 think the most liheral construction the couit can 

 give the patent is. that it is for the combination. In 

 determining whether a patent is foi' a distinct in- 

 vention, or for a combination, no ticneral rules can 

 be laid down for guidance in (piestions ol this liind, 

 depending exclusively on the i)articular facts of 

 (>ach case. "There is, however, one circumstance 

 that will alwa.vs lie decisive in construing a patent 

 auainst a claim foi- the several things described in 

 the s]iecitication, and that is, that one or more of 

 them are not new. I!' this turns out to be the case, 

 then the<|uestion will be, whether the ))atent can 

 be sustained for the combination."— Curtis on Pat., 

 Sec. ~'4!t; Ncilson v. Harford, 1 Webs. Pat. Cas., 317. 



As all the features of complainant's device are 

 old, his i)atent can not be sustained for a distinct in- 

 vention; and it must be sustained for the combina- 

 tion, if it can i)e sustained at all. 



If the court should hold that the plaintiff's manu- 

 facture is more than a "mere aggregation," then 

 the question will arise, 



DOES the DEI-'END.\NT INFRINGE? 



It is conceded, that the defendant has never made 



I any sections with the longitudinal groove ((/) in 



them. To this obleetion the idaintitl' savs, nM, that 



this groove is immaterial; .sirodr/. that if th< defend- 



1 ant leaves out the groove, exincl ing his eustoniers 



I to supply an " ei|Uivalcnt," he can not thus avoid 



I the iilaiiitiff's jiatent, and he is guilf.v of infringing. 



j To the tirst i>i(i)iositi()n we say, that the patentee, 



by the restricted form of his claim, made the groove 



(d) a material part of his deviee, and the court can 



not dei'larc that if is inunatei-ial.- C. S. Kev. Stat., 



Sec. -isss; Water-meter Co. v. Desper, 1(11 V. S., 33:i, 



, 33T; (iage v. Herring, 107 U. S., tiiS. (Sec claim of 



patentee.) - 



The second proiiosition we concede to be good 

 law; but as the manufacture of the defendant does 

 not contemplate the use of anything in the place of 

 the groove ((/), the (|uestion of "equivalents" is en- 

 tirely out of 1 lie rase. 



In V iew of t he facts in this case, and of the law as 

 we understand it, we claim: 

 1. That theie is no invention or novelty In bring- 

 j ing together the different features found in com- 

 I plainant's device; 



1 2. That if the patent is sustained, it can be sus- 

 tained for the combination only, and the defendant 

 is not liable, because only a part of the combination 

 is used; 



3. That the comi)lainant"s device was anticii)atcd 

 by the Fiddes section, ma.lc from is;:.', and by th.> 

 Coltom and Cook sections, m;lde from IS',,") on; and, 

 as shown by the cross-examination of the plaintiff's 

 expert. Mr. Kay ton, there is no substantial advance 

 in the Fornciook section over the other one-piece 

 sections nameil. 



Kespectfully submitted, 



J. A. Osborne, 

 Of Counsel for Deft. 

 Cleveland, ( )hio, June 6, 1884. 



Anu»i I. Hoot:— I inclose you a copy of Justice 



Matthew's decision in case of Forncrook vs. Root. 



You will see that Judge Matthews gives Mr. 



j Fiddes the glory of having invented the one-inece 



section. The good old honest farmer did not know, 



I when lie sat during the winter of 1872 making bis 



"strawberry-box frames" that he had gotten up 



; something that was to benefit the bee-world so 



' much, and bring him into such prominence. If he 



had ol)taincd a patent on the one-piece section at 



that time, it miuhf have been good, and made the 



jKJOi- nnin rich. 1 hope the gratification he will cn- 



' joy Irom being accorded the honor of maldngthe 



; first one-i)iecc section will pay him for thcwatcr- 



jnelons 1 ate iit his hundilc home in the woods. 



Cleveland, (».. Aug. l.'), \XM. .). \. Osuoune. 



