Statement of the Case.

GANDY v. MAIN BELTING COMPANY.

APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE EASTERN DISTRICT OF PENNSYLVANIA.

No. 148. Submitted January 8, 1892. - Decided March 7, 1892.

Letters patent No. 228,186, issued June 1, 1880, to Maurice Gandy, for an improved belt or band for driving machinery and an improved mechanical process of manufacturing the same, are valid, and the novelty and utility of the invention protected by it are not disturbed by the evidence in this case.

The "public use or sale" of an invention "for more than two years prior to" the "application" for a patent for it, contemplated by section 4886 of the Revised Statutes as a reason for not issuing the patent or for its invalidation if issued, must be limited to a use or sale in this country.

THE Court stated the case as follows:

This was a bill in equity for the infringement of letters patent number 228,186, issued June 1, 1880, to Maurice Gandy, for an improved belt or band for driving machinery, and an improved mechanical process of manufacturing the same. In his application the patentee stated that his invention consisted, first, of an improved cotton belt; second, of an improved mechanical process for making cotton belts. "The belt consists, first, of cotton canvas or duck composed of warp stouter than the weft, both warp and weft being hard spun and the canvas hard and tight woven; second, of cotton canvas or duck thus made, folded and united by longitudinal rows of stitching and stitched under tension; third, of cotton canvas thus made, folded and stitched, saturated with linseed oil; fourth, of cotton canvas thus made, folded, stitched and saturated with linseed oil, pressed and stretched until it is hard, even and rigid, by which the belt is rendered insensible to the atmospheric changes and non-elastic."

The machinery for manufacturing the belting is also set forth in the specification, but the only claim alleged to be infringed in this case is the second, which reads as follows:

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"2. The improved article of manufacture consisting of a hard, even surfaced, rigid, impervious, non-elastic belt composed of cotton canvas or duck having its warp thread larger than the weft, both warp and weft being hard spun, the fabric tight woven and folded, stitched and saturated with linseed oil."

The bill was in the ordinary form, and prayed for an injunction and an accounting. The answer denied that the invention was new, or patentable, and also denied infringement. From a decree dismissing the bill, 28 Fed. Rep. 570, the plaintiff appealed to this court.

Mr. Amos Broadnax and Mr. J. Edgar Bull for appellants.

Mr. E. Cooper Shapley for appellees.

MR. JUSTICE BROWN delivered the opinion of the court.

The bill in this case was dismissed by the court below upon the ground either that the second claim of the patent was anticipated by a provisional specification of Robert B. Jones filed in the office of the British Commissioner of Patents, July 31, 1878; or, if Gandy made the invention before the date of Jones' specification, that there had been a public use and sale of the invention for more than two years prior to the application for the patent in suit-in other words, that the same testimony which showed priority of invention. on the part of Gandy, showed a public use or sale by him of such invention more than two years prior to his application.

On May 9, 1877, plaintiff Gandy, who is an alien, and a subject of Her Britannic Majesty, deposited at the office of the British Commissioner of Patents a provisional specification, upon which a patent was subsequently issued for an improvement in machinery belts. He stated the object of his invention to be the manufacture of belts of cotton canvas that would not give out by stretching, or be detrimentally affected by variations in the atmosphere, and at the same time be sufficiently pliable to allow of their running around small pulleys without cracking. To accomplish this he manufac

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tured his belts of cotton canvas or duck, "hard woven," put together either by hand or by folders, and formed into a belt of the desired width and thickness, stitched with rows of stitching, and then soaked or saturated in linseed oil. After the saturation, the canvas is formed into a belt by folding and stitching. After this, it is passed through rolls to squeeze out the superfluous oil, and it is then dried and painted, and lastly stitched. The claim of this patent was "for constructing belts or bands for driving machinery of cotton canvas or duck, 'woven hard,' and stitched, and saturated or soaked with oil, such as linseed oil or any combination thereof, as herein described or set forth, or any modification thereof." In 1883 this patent became the subject of litigation in the chancery division of the High Court of Justice, and was held to be invalid. In delivering the opinion of the court, Mr. Justice Pearson expressed a serious doubt whether the patentee could claim as a new invention a belt made of hard woven canvas, when belts made of other descriptions of canvas and saturated with oil were well known and manufactured years before. He did not, however, decide the case upon this point, but upon the ground that Gandy had not taken out his patent for his real invention. "I think," he said, "he has described something in his patent which was not his invention, and he has not described in his patent that which was really his invention. It appears that in the beginning of the year 1877 Mr. Gandy was making various experiments in order to perfect a belt which he was intending to patent, and having made those various experiments with different kinds of canvas he at last discovered that a canvas of a particular strength in the warp was the best canvas that could be used for making these belts.. But in the patent which he took out there is not a single word to indicate that the warp ought to be stouter than the weft; least of all is there any indication that one particular strength in the warp and one particular strength in the weft would make the best canvas." The learned judge held the patent to be bad because it did not disclose the very best way of making the manufacture, remarking that in a patent subsequently obtained by him, in 1879,

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he did describe the mode in which the belt was to be made, by saying that the canvas in the warp was to be stouter than in the weft.

On appeal to the Court of Appeal, the Master of the Rolls expressed regret at the misfortune of the patentee in not describing his discovery, "because," said he, "I think Mr. Gandy did make a discovery." He held that the evidence showed that Gandy's belts could only be made out of a particular class of hard-woven canvas, and, as his claim was for the whole class, it was too large. In short, he held the patent to be invalid because it did not properly describe the invention, and closed his opinion by again expressing his regret that from the way in which the specification had been drawn up, that which was a real and valuable invention in itself did not seem to have been claimed. Lord Justices Cotton and Lindley expressed practically the same opinion. Gandy v. Reddaway, 2 Cutler's Rep. of Pat. Cases, 49.

Prior to this decision, however, and on December 1, 1877, Gandy filed a substantial copy of his British specification with the Commissioner of Patents, and made a similar claim for "a belt or band for driving machinery, constructed of hardwoven cotton canvas or duck, stitched and saturated and interlarded with oil, such as linseed oil, or any combination thereof, as herein described or set forth." A patent was refused, however, upon the ground that the alleged invention was substantially anticipated by certain English patents issued in 1858 and 1861.

Subsequently, and on September 10, 1879, he filed the present application, and, after some correspondence and amendments of his original claims, this patent was issued. With his application he also filed a specimen of his belt, which was the same in all respects as the specimen filed with his prior application of December 1, 1877, and was, in fact, the identical specimen.

(1) The defence to this patent is that on the 31st day of July, 1878, one Jones filed a provisional specification with the British Commissioner of Patents for an improvement in belts, which consisted in increasing the strength of the warp or

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longitudinal fibres or yarns over the weft or cross fibres-in other words, precisely the same specification as that contained in the second claim of the plaintiff's patent, or at least for the only element of such claim which is novel. Plaintiff's reply to this is that, while Jones' application antedates his own in point of time, his own invention was prior in point of fact, and in proof of this he produces the three small pieces of belt attached to his application of December 1, 1877, which the Commissioner of Patents has certified were filed in the Patent Office by Gandy at that date, and more than six months before the Jones specification was filed in the British Patent Office. This canvas is really the only one for which the patentee has sought to obtain a patent, although his first application was refused because he neglected to describe his real invention. Each of these belts is made of canvas with warp obviously larger than the weft, and containing every other element of the second claim of the patent. In relation to this Mr. Gandy also testifies that he was acquainted with Jones, who was a member of the firm of Garnock, Bibby & Co., of Liverpool, and were customers of his. "They also," said he, "made a stitched sail-cloth belting, and when they found I had taken a patent for a belting that was a success, they also applied for a patent. Seeing which in the papers, I asked Mr. Jones to tell me what he was patenting, as he need have no hesitation in doing so, seeing he had filed his provisional specification. He at once told me that it was for a belt made with the warp stouter than the weft. I told him if he would walk along to my factory I would show him that I had been using for some time before his application a cloth to make my belts in which the warp was stouter than the weft. He went with me and saw the cloth and the belts and was satisfied that such was the case, and hence went no further with his patent, but abandoned the application." The fact that no patent appears ever to have been issued upon Jones' application makes the truth of this statement seem quite probable. The canvas of which Gandy made use in England, it seems, was manufactured by the Mt. Vernon Company of Baltimore, and in further proof of the date of his invention,