Heap v. Greene

No. 362
Decided Circuit Court, D. Massachusetts
Disposition
dismissed
full scope · unanimous
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Court
Circuit Court, D. Massachusetts
Decided
Judge
CARPENTER, District Judge
Posture
Final hearing in equity
Complainant (1)
Charles Heap
Edwin H. Brown
v.
Defendantss (2)
Henry S. Greene and others
John L.S. Roberts, John J. Jennings

Overview

The bill is dismissed with costs.

Case summary

Charles Heap filed a bill in equity in the Circuit Court for the District of Massachusetts against Henry S. Greene and others, alleging infringement of U.S. Patent No. 377,151 issued to Henry Nicolas Grosselin, fils for a machine for napping cloth. The patent claim involved a combination in a gig mill with a rotary drum, card or teaseling rollers, driving belts, and devices for varying speeds and directions. Defendants raised defenses of patent invalidity and non-infringement. The court, in an opinion by District Judge Carpenter, declined to rule on validity but found the patent limited by prior art, particularly an 1823 English patent to William Davis and an 1878 German patent to Moritz Jahr. The court concluded the patent must be confined to the specific methods described and that defendants did not infringe. The bill was dismissed with costs.

Abstract

Plaintiff filed a bill in equity alleging infringement of a U.S. patent for a cloth-napping machine involving a specific combination of components in a gig mill. Defendants raised defenses of patent invalidity and non-infringement, with the court narrowing the patent scope based on prior art from English and German patents. The court found no infringement by the specific methods claimed and dismissed the bill with costs.

Opinion of the court

Majority
opinion
CARPENTER, District Judge
  • Patent No. 377,151 is limited by prior art
  • Specifically limited by Davis (1823) and Jahr (1878) patents
  • Patent must be confined to specific methods described
  • Defendants do not infringe
  • No opinion expressed on patent validity

Jurisdiction

not challenged
Subject matter
Patent infringement suit in equity
Jurisdictional facts
  • Suit filed in Circuit Court, D. Massachusetts

Procedural posture

Posture at trial
Final hearing in equity
Posture on appeal
Direct appeal not specified; appears to be trial court opinion
Preserved issues
  • Defense of invalidity of patent
  • Defense of non-infringement

Subsequent history

Petition for rehearing
not filed

Legal categories

Business

Case record

Full case name
HEAP v. GREENE et al.
Docket number
No. 362
Court
Circuit Court, D. Massachusetts
Trial court
Circuit Court, D. Massachusetts
Trial court judge
CARPENTER, District Judge
Decided
Opinion author
CARPENTER, District Judge
Opinion type
published
Precedential status
precedential
Judges on panel
CARPENTER, District Judge

Issues & holdings

2
Issues raised
1
not reached
1
affirmed
1
Holdings
Standard of review

Not specified (trial court opinion)

Disposition rationale

Court declined to express opinion on validity, focusing instead on non-infringement

Preservation

Issue preserved for review

Standard of review

Not specified (trial court opinion)

Disposition rationale

Court found patent limited by prior art (especially Davis and Jahr patents) and defendants did not infringe

Preservation

Issue preserved for review

Holdings of the court

Patent infringement
Defendants do not infringe patent No. 377,151
Patent is limited by prior art, especially English patent to William Davis (1823) and German patent to Moritz Jahr (1878), and must be confined to specific methods described; defendants' machine does not fall within this limited scope
unanimousbinding precedent

Statutory interpretation

1
Statute
Patent No. 377,151 claim 1
Question
Scope of patent claim in light of prior art
Court's reading
Claim limited to specific methods described, not broad functional result
Canons applied
Limitation by prior art

Burden of proof

Prosecution burden
Complainant must prove infringement by preponderance of evidence
Burden met
false

Standards of review

  • Patent infringement — de novo Patent claim construction and infringement are typically reviewed de novo

Timeline

4
Events
26,632
Days, incident to ruling
—
Span
factual eventcited in opinion

English patent No. 4,820 issued to William Davis for cloth-napping machine

Prior art cited to limit scope of Grosselin patent

Patent limitation by prior art
William Davis
factual eventcited in opinion

German patent No. 4,949 issued to Moritz Jahr for cloth-napping machine

Prior art cited to limit scope of Grosselin patent

Patent limitation by prior art
Moritz Jahr
factual eventcited in opinion

Letters patent No. 377,151 issued to Henry Nicolas Grosselin, fils for machine for napping cloth

Patent at issue in infringement suit

Patent validityInfringement
Henry Nicolas Grosselin, fils
procedural eventcited in opinion

Final hearing and opinion issued by Circuit Court, D. Massachusetts

Outcome: Bill dismissed with costs

Court found patent limited by prior art and no infringement

Patent limitationNon-infringement
CARPENTER, District Judge · Charles Heap · Henry S. Greene · Edwin H. Brown · John L.S. Roberts · John J. Jennings Circuit Court, D. Massachusetts trial court

Facts & evidence

Key facts

3 facts
  1. Bill in equity filed to enjoin alleged infringement of patent No. 377,151 issued January 31, 1888 to Henry Nicolas Grosselin, fils for machine for napping cloth
  2. Patent claim involves combination in a gig mill with rotary drum, card or teaseling rollers, driving belts, and devices for varying speeds and directions
  3. Defendants raised defenses of patent invalidity and non-infringement

Disputed questions

  • Whether defendants' machine infringes the patent claim
  • Extent of patent limitation by prior art

Procedural history

2 steps
  1. Suit filed in Circuit Court, D. Massachusetts
  2. Final hearing held

Evidence in the record

Documentary
  • Letters patent No. 377,151
  • English patent No. 4,820 to William Davis (1823)
  • German patent No. 4,949 to Moritz Jahr (1878)
Challenged
  • Evidence type: Patent scope · Challenge basis: Prior art limitations · Trial court ruling: limited · Reasoning: Patent must be confined to specific methods due to Davis and Jahr prior art · Challenged on appeal: false

Objects of relevance

Gig mill with rotary drum and card rollersCloth-napping machine

Authorities

Cited authorities (2)

English patent No. 4,820 to William Davis (1823)
distinguisheddistinguished
Prior art limiting Grosselin patent
German patent No. 4,949 to Moritz Jahr (1878)
distinguisheddistinguished
Prior art limiting Grosselin patent

Statutes

  • Patent No. 377,151

Standards & doctrines

  • Patent limitation doctrine
  • Prior art as limiting scope

Legal principles applied

  • Patent must be confined to specific methods when prior art exists
  • Functional claiming limited by prior art

Notable quotes

“The patent is so limited by the prior art and especially by the English patent to William Davis (No. 4,820), of July 24, 1823, and by the German patent to Moritz Jahr (No. 4,949), of September 1, 1878, that it must be confined to the specific methods used to produce the main result which is the general function of the patented machine”
CARPENTER, District Judge — Explaining why defendants do not infringe
Key holding on patent limitation by prior art
Index terms51
Summary terms
Legal mechanisms
Various actions
Various actors
Legal concepts
Legal outcomes
Legal issues
Legal procedures
Legal remedies
Legal evidence
Legal arguments
Legal defenses
Legal penalties
Legal procedural steps
Geo locations
Judges
Attorneys
Procedural terms
Substantive offenses
Entities and documentation
Legal actions
Action type
dismissed
Target
Bill in equity
Appealed from
Circuit Court, D. Massachusetts
Context
Court dismissed the bill with costs after finding no infringement
Scope
full
Further instructions
Costs awarded to defendants
Disposition vote
unanimous
Physical materials
Search facets
Parties
Judges
Carpenter
Courts