UNITED STATES DISTEICT' COUET. SOUTHEEN DISTRICT. BEFOEE JUDGE BLATCHFOED.—FATENT LOCKS—COMPLETED INVENTION. Pavl C. Catlin VB. James B. Ogden and Lucius Woodruff.—Ta\s was a suit for infringement of letters patent i-elssued to Charles A. Miller, assisnee of Wm . s: Kirkham, the inventor, .January 27. 1863, for an improvement in locks aid latches, and assigned to the plaintif The object of the JnYen-tion is stated in the specification to be, to render a door latch readily applicable to either right or left-hand doors. The defenses up were that the invention was previously made by one Barthol Erbe. at Bumlngham, m Pennsylvania ; that the claims of the reissued patent arc not for any patentable invtmtion, nor for any mechamsm arranged for a particular Purpose, or to produce a particular effect, but are for an effectuer functloii. irrespective of any particular mechanism, and that the patent Is therefore void : that if the patent is valid the defendants have not infringed it. . . Held by the Court.-That the loc]( made and sold by the defendants in its mechanical construction, substantially the same as the lock descn bed in the plaintiff's patent, with only such vanatlons as the skill ot a mechanic would suggest, the invention ofKirkham being taken inits me.chan-ical construction and arrangeme-. t. This being so, and the iiiventiOii of Kirkham, as described, being infringed, the ruless of law require ttiat the plaintiff's patent shall, if possible, be so construed as to make it vlid wit:!! reference to the defendant's lock-tit magig valeat quampereat. Upon this prilereo M rmng th e claims the patentas to relieve ltiem trtm t objeon inad tthey clai results or eSects ; for the claims must be construed in connection with the descriptive parts of the specication, and with reference to what Is seen t.o be the real lnven-tion (Case s. Brown, % Wallace, 8'20). As to the question ot novelty, the reversible latch claimed to have been invented and _made . by Erbe, prior to Kirkham'a invention, undoubtedly embodied the Iiiventiras claimed In the plaintiff's patent as above construed. The question then arisses whether the Erbe lock antedates as a completed invention the Kirkham.lock. The weight ofevidence shows that Klrlcham did not make his lnventlon at an earlier date than March 1,1861. Erbe made his invention in the latler part of the year186ft and soon after exhibited it to three persons experienced in making locks. He did not make a second lo ck tlie ldnd till, he made one which was deposited in the Patent Office in 1864, in connectlOn wi th an application for a patent. N or did he put any suoli lock into use on a door unil aitex he had so applied for a patent. On these facts it is clalmed by the plaintifl- that the lock made by Erbe prior to Kirkham's inv.ention rested only in experiment, and was not a completeed lQ.vention. h1Ss p.oSl-tirn cannOt be maintained. The lock made by Erbe in 1860 was Put in a practical form, ana was ready for use. It :",:as, therefore, a. co!-lipreted iii-v(-mtion, and the imparting a knowledge of its cohstructio.n by E.roe to thet three persons connection with the business of locli: making, saw it and understood its arrangement was the giving tothe public ssucli a lono'vl-edge of it as a completed invention as to deprive Kirkham of the right to be considered in law as the first inventor of such 'nvention, though hewas an ori?:mal and independent inventor of it. An invention may be completed and ready for practical use without bemg actually in use, 1n the usuaal acceptation of the word. Use is not necessary to show completion, though it is generally strong evidence of it. These views are conflrmedby the mostcarefully considered cases on the subject. (Reed vs. Cut ter, 1 Story, 590 ; Bedford vs. Hunt, l Mason, 802 : Curtis on Patents, sec. 87, TVnitelyv'?-Swyne, 7 Wallace. 685). Kirkham's Invention was, therefore, fully anti-c at of Erbe. IBieI' 't'hf1!*!ai''nUir,'o'.'Gifford ; for the defendants, B. F. Thurston, and S. D. Law.
This article was originally published with the title "Patent Decision" in Scientific American 21, 25, 396 (December 1869)