Turner & Seymour Mfg. Co. v. Dover Stamping Co., 111 U.S. 319

R. Jus tice Matt hew s delivered the opinion of the court. is is a bill in equity filed by the appellees as assignees of [p. 320] Timothy Earle, for an injunction and an account, against the appellants, as infringers of reissued letters patent No. 6,542, for an improvement in egg-beaters, dated July 13th, 1815, for which the application was filed June 8th, 1815, the original No. 39,134, dated July 7th, 1863.

“Now, as the albumen of an egg consists of a peculiar thick, [p. 321] glairy substance, it can be worked more effectually with a cutting instrument than with one which has a blunt edge. In fact, so well is this understood that housewives [universally] commonly make use of the blade of a knife for the purpose.

“ My invention also relates to the method of holding the machine m position while it is used. In the previous machines for this purpose the machine has been generally attached to or supported upon and in connection with the vessel which contained the materials to be operated upon, thus requiring a specific kind of vessel for the purpose, which, in effect, formed part of the machine or the frame of the machine was fixed to some stationary object, with the revolving beater or beaters projecting downward below the ma-vol. cxi—21 [p. 322] chine, into the vessel which contained the matters to be treated, the vessel being held below the machine, and entirely detached from it. Sut by my improvement the machine becomes a separate detached implement, which can be used in any vessel, and without any mechanical fastening of the machine to the vessel or to any other object. This part of my invention, therefore, consists in providing the bottom of the fixed frame C of the machine with a foot, F, or other suitable support, to rest upon the bottom of the vessel to support the lower part of the machine and raise the revolving-beater frame A above the fixed frame C sufficiently to permit it to revolve freely ; and also providing the top of the machine with a handle, G-, by which the machine can be held upright upon the bottom of the vessel by one hand, while the beater-frame is operated by the other, as is described.

“ The devices which were in use prior to the invention of e plaintiffs’ assignor were composed of round wire, which, y their rotation, broke rather than cut the material. The pa o [p. 325] the invention which is the subject of the first claim consisted in such an introduction of the knife-blade of the housewife and the mechanism for operating the blade into an egg-beater, that the egg could be rapidly cut, and the egg matter could be aerated, and be beaten into froth. The original, and also the reissued specification, dwelt upon the particular form of the cutters of the inner frame, and the original claim limited the invention to the cutters a, a, &c., but the scope of the invention was larger, and the principle was embodied in any revolving frame composed of thin and plain, as distinguished from corrugated, cutting surfaces, so arranged as when rotated to cut edgewise through the material, provided the frame was constructed and arranged substantially in the manner described in the specification. It is not claimed that the reissue is void, upon the ground that it is for a different invention from that shown or indicated in the original specification, but such a construction is attempted to be given to the reissued claim, as would limit it to the precise language of the surrendered patent. The patent was surrendered because the grant was not co-extensive with the invention, and it would be an unnatural construction of the reissued patent, which should cramp the claim within the limitations which had been discarded. In my opinion, the natural meaning of the words which were used is to be permitted, and giving to the claim such a freedom of construction, the defendants’ device is an infringement.”

contained all that is expressed in the claim of the reissued [p. 326] patent. The original claim has been made broader by the reissue, so as to embrace the device used by the appellants, which was not previously an infringement.

They are few, but decisive. The original patent was issued July 7th, 1863. Eleven years after, in 1874, the competition of the appellants’ device became apparent and was felt. In 1875, application was made for the reissue ; the original patent was surrendered and the reissued patent granted, July 13th, 1875. Here is a delay of nearly twelve years, without the offer of an explanation or excuse, without even the suggestion of inadvertence or mistake in the original application. The only inference that can be drawn is, that the discovery and experience of successful competition in 1874 suggested first and led [p. 327] to the discovery, that the original claim did not cover everything that might have been embraced, and was not broad enough to maintain the monopoly desired but not secured.

share alike; that the undivided half of the mine had been [p. 328] acquired by Irvine and Sinton by their common efforts and at their common expense, and pursuant to an agreement between them to acquire the title thereto and sell and otherwise dispose of the same, and share equally the profits and losses. The other undivided half of the mine was, so the bill alleged, held by Irvine in trust for certain other persons.

The bill also averred, that on September Sth, 1874, Sinton assigned and conveyed to one George P. Ihrie all his right and title in the mine, and declaration of trust, and everything coming or that might come to him by virtue thereof, that on March 17th, 1875, Irvine, and the owners of the other undivided half of the mine, organized under the laws of California a corporate body called the Morgan Mining Company, and that on April 9th following, Irvine and the other persons having an interest in the mine, except Ihrie, sold and conveyed [p. 329] the same to the corporation, and received in consideration thereof shares of stock in the company, in proportion to their interest in the property conveyed, Irvine receiving ten thousand shares for the undivided half held by him for himself in trust and for Ihrie, as the grantee of Sinton, and that Ihrie then and there became entitled to the one-half of the ten thousand shares.

The prayer of the bill was that Irvine be decreed to hold m trust for the complainant said five thousand shares of the capital stock; that the court would declare what sum was [p. 330] justly due to Irvine from the complainant on account of the necessary expenses, &c., incurred by him in and about the mine, and that upon the payment of the same by complainant to Irvine the latter might be decreed to assign and transfer said five thousand sfiares to him.

Upon final hearing the Circuit Court decreed that Irvine hold as trustee, for the use and benefit of the complainant, the one-half of 9,997 shares of the capital stock of the Morgan Mining Company, the shares being the gross proceeds received by Irvine as the consideration of a conveyance and disposition by him to the Morgan Mining Company of one-half of the mining property, the half of the stocks so held by Irvine in trust for the complainant being subject to a claim of Iryine for one-half of all the necessary expenses referred to in the [p. 331] declaration of trust, and of assessments on said stock made by the Morgan Mining Company and paid by Irvine. And the court confirmed the report of the master to whom the case had been referred, finding that the one-half of the expenses and assessments paid by Irvine was $14,221.76; and decreed that upon the payment of that sum by the complainant to Irvine, the latter should assign and transfer to complainant 4,998| shares of the capital stock of the Morgan Mining Company. From this decree Irvine appealed.

’ 870, from the sheriff, and was put in possession of the operty by a writ of assistance. Prior to the purchase at the [p. 332] tax sale James G. Fair and A. A. Selover had been in possession of the mine ; they claimed that Irvine had purchased the mine at the tax sale for them. Irvine demanded a large sum for his services, and after some delay gave them notice that if they did not accede to his demand he would hold the title for himself, Fair and Selover never paid the sum demanded by appellant, or any part of it, and appear to have abandoned all claim to the property. About this time, Henry D. Bacon and his associates, seven in number, were claiming title to the mine. On April 14th, 1873, they compromised their controversy with the appellant by an agreement that he should apply for a patent for the property in his own name, and, having obtained it, should sell the property and divide its proceeds, retaining one-half himself and turning over the other half to Bacon and his associates. The appellant accordingly applied for and obtained a patent in his own name for the property. When the Morgan Mining Company was formed, and the mine was conveyed to it, Bacon and his associates got half the stock in consideration of their interest in the mine held in trust for them by the appellant, who received the other half of the stock.

Without going into a discussion of the evidence, we state our opinion to be, after a careful examination of the record, that it is established by the testimony that Sinton, who was an experienced dealer in real property, contributed money and aided the appellant by his advice and co-operation in obtaining the tax title to the Morgan mine, and afterwards in getting the patent therefor from the United States, and in compromising the controversy between the appellant and Bacon and his associates in regard to the ownership of the mine; and that the money and services were contributed by Sinton on the agreement and understanding that he and the appellant were to share equally in the results of the enterprise. The fact that Sinton furnished the appellant money on account of the mine is found by the master to whom the case was referred, and no exception was taken to that part of his report. It is established that the appellant, after the compromise with Bacon and others, agreed to hold the title to the undivided half of the mine in trust for himself and Sinton, share and share alike, [p. 333] subject to the payment of the proportion of such undivided half in the costs and expenses incurred in securing title to and managing the property. The declaration signed by the appellant on March 28th, 1874, was simply an admission in writing by him of the contract between him and the appellee in relation to their interest in the Morgan mine.

The next contention of the appellant is that the decree s onld be reversed, because there has been no sale or disposal 0 his property, and that by the terms of the trust Sinton [p. 334] had only a right to the net proceeds after its sale or disposal.