#### FRANK G. FARNHAM v. THE UNITED STATES.

[No. 33300.

Decided May 31, 1921.]

*On the Proofs.*

*Infringement of patent; jurisdiction.*— In the Act of June 25, 1910, 86 Stat, 851, conferring on the Court of Claims jurisdiction of claims against the United States for infringement of patents, the provision excluding from the court’s jurisdiction claims based on the use of any “ article ” theretofore “ owned, leased, used by, or in the possession of the United States,” relates not to the use of the patent itself, but to the use of a particular infringing article.

*Same; identity; validity of patent.*— The decision of the court in a prior case, 49 C. Cls., 19, holding the plaintiff’s patented device not to have been used by the United States, and that the patent was void for want of novelty and invention, reaffirmed.

*The Reporter's*statement of the case:

*Mr. William, F. Hall*for the plaintiff.

*Mr. Daniel L.*Morris, with whom was *Mr. Assistant Attorney General Frank*Davis, *jr.,*for the defendant. *Mr. Edward G. Ourtis*was on the briefs.

The following are the facts of the case as found by the court:

I. On March 17, 1896, the plaintiff, Frank G. Farnham, a citizen of the United States, filed an application in the United States Patent Office for letters patent for improvements in stamp holders, upon which application there were granted and issued to him United States Letters Patent No. 596656, dated January 4,1898, a copy of which letters patent, marked “ Exhibit A,” is contained in a bound and indexed Exhibit Book, marked “ Frank Gunn Farnham *v.*United States — Defendants’ Book of Exhibits and Illustrations ”; *291and also marked “ Exhibit Book, Finding of Fact.” Said copy of patent, Exhibit A, is by reference made a part of these findings of fact.

II. The claims in the specification accompanying the plaintiff’s said application for patent were as follows:

“ 1. A stamp sheet having unprinted spaces at intervals in the body thereof, substantially as described.

“ 2. A stamp sheet having unprinted spaces at intervals in the body thereof and a backing cover for said sheet adapted to be divided into sections to form books, substantially as described.

“ 3. A stamp sheet having unprinted spaces in the body thereof to provide for the folding of the sheet on said lines and wider spaces centrally of the sheet combined with a backing sheet adapted to be divided with the stamps into a series of covers, the wider spaces providing for the formation of flaps on the cover, substantially as described.

“ 4. A stamp book comprising a cover and a series of connected stamps having a central imperforate space with fastening means extending along this space securing the stamps to the cover, substantially as described.

“ 5. A stamp book comprising the cover blank, the stamp sheet and the interposed sheet, the detachable end margin formed on the stamp sheet, and the corresponding extensions of the cover blanks and interposed sheets, said margins and corresponding parts being correspondingly perforated, substantially as described.”

Upon the plaintiff’s application the following proceedings were had in the Patent Office:

On April 10, 1896, the examiner in charge of the application entered the following action:

“ It is noted that the modification in figure 6 should have the flap lettered P".

“ The oath is found to be a year older than the date of filing, and a new oath is required according to the last paragraph of rule 46.

“ Claims 1 and 5 are rejected on the patent to Cooke, No. 306674, October 14,1884 (Bookbinding: Leaves).

“ Claim 4 is rejected on Cooke, in view of Worthington, No. 373791, November 22, 1887 (Bookbinding: Books and binding), and Swiss Patent No. 2907, of 1890, to Guillaume (Bookbinding: Books and covers). It is thought immaterial whether stamps or other printed matter are bound, as margins are required for binding in either case.”

*292In response to the above action of the examiner the plaintiff, on April 22, 1896, amended as follows:

“ Page 4, line 3 from the bottom, *P' to P".*

“The drawing has been corrected to conform to this change.

“ A new oath will be filed before final action.

•“ Claim 1, line 1, before ‘ unprinted,’ insert *a plurality of imperforate.*

“ Cancel claims 4 and 5 and insert:

“4. A stamp book comprising the cover blank, the perforated stamp sheet, the interposed sheet, and the corresponding detachable margins formed on the cover blank, stamp sheet, and interposed sheets, said margins each being provided with corresponding aligning openings, substantially as described.”

On this amendment the examiner, on May 21,1896, entered the following action:

“ The requirement for a new oath is repeated.

“ Claim 1 is rejected as relating to nothing of patentable novelty, since it is within the personal recollection of two employees of the office that the old unperforated sheet of postage stamps had such unprinted spaces. The patent to Cooke shows such spaces as at present perforated.”

On May 25, 1896, the plaintiff amended as follows-:

“ Cancel claim 1 and insert:

“ 1. A stamp sheet having perforated spaces between the rows of stamps and divisional spaces of greater width and imperforate, substantially as described.”

On June 23,1896, the examiner replied to the above amendment as follows:

“The claim is thought not true in ‘divisional spaces of greater width *and imperforated.’’*These spaces have two rows of perforations where the others have but one.

“ The claim is rejected.”

On June 29, 1896, the plaintiff amended as follows:

“ Cancel claim 1 and insert:

“ 1. A stamp sheet having unprinted spaces of varying widths in the body thereof, substantially as described.”

On July 14, 1896, the examiner replied to this amendment as follows:

“Case examined as amended the 29th ult. Claim 1 is thought to relate to nothing of patentable novelty, being a mere matter of design, and is rejected.”

*293On July 18, 1896, the plaintiff amended said claim 1 to read as follows:

“ 1. A stamp sheet having one series of narrow unprinted spaces in the body thereof, and along which said sheet is adapted to be stitched and folded, and another series of wider unprinted spaces adapted to be cut off, substantially as described.”

■ On August 4, 1896, the examiner replied to this amendment as follows:

“ Claim 1 is thought to relate to nothing of patentable novelty, differing from the ordinary structure of stamp sheets with their blank margins only in a matter of degree. Applicant’s claim can only be read when including the blank margins of the ordinary stamp sheet.

“ Only a claim to the specific construction can be allowed.

“ Claim 1 is rejected.

“ The remaining claims are allowed.”

On August 11, 1896, the plaintiff amended as follows:

“ Cancel claim 1 and insert:

“ 1. A stamp sheet having one series of narrow unprinted spaces in the body thereof, a second series of spaces wider than the first, along which said sheet is adapted to be stitched, a third series of spaces wider than the first and second series extending around the edges and centrally of said sheet, substantially as described.”

This amendment was allowed by the examiner, and on August 19, 1896, the plaintiff was notified that his application for patent had been allowed.

The plaintiff having failed to pay the final fee required for the issue of a patent within six months after the date of allowance, he, on September 11, 1897, filed a renewal application for said patent, which application, upon examination, was allowed on October 16, 1897; and upon payment of the final fee the patent was issued January 4, 1898.

III. The plaintiff bases his claim against the Government in this suit wholly upon infringement of claim 2 of his said Letters Patent No. 596656, which claim reads as follows:

“A stamp sheet having unprinted spaces at intervals in the body thereof and a backing cover for said sheet adapted to be divided into sections to form books, substantially as described.”

*294IV. The following letters patent were duly issued prior to the date of the plaintiff’s original application for his said Letters Patent No. 596656:

1. United States patent to Snow, No. 27166, February 4, 1860.

2. United States patent to Keep, No. 155312, September 22, 1874.

3. United States patent to Beaumont, No. 192893, July 10, 1877.

4. United States patent to Cussons, No. 237825, February 15, 1881.

5. United States patent to Cussons, No. 240099, April 12, 1881.

6. United States patent to Carter, No. 300569, June 17, 1884.

7. United States patent to Cooke, No. 306674, October 14, 1884.

8. United States patent to Worthington, No. 373791, November 22, 1887.

9. United States patent to Clark, No. 375125, December 20, 1887.

10. United States patent to Mendham, No. 392048, October 30, 1888.

11. United States patent to Cussons, No. 414500, November 5,1889.

12. United States patent to McCalmont, No. 401961, April 23,1889.

13. United States patent to Kokusek, No. 464690, December 8, 1891.

14. United States patent to Bright, No. 492912, March 7, 1893.

15. United States patent to Cussons, No. 462627, November 3,1891.

Copies of said letters patent are contained in the aforesaid indexed exhibit book, and are by reference made a part of these findings of fact as Exhibits B-l, B-2, B-3, B-4, B-5, B-6, B 7, B-8, B-9, B-10, B-ll, B-12, B-13, B-14, and B-15, respectively.

V. The following described unpatented devices bearing upon the prior state of art were known and used in the *295United States prior to the date of the plaintiff’s original application for said letters patent, illustrations of which devices are contained in said indexed exhibit book, and are by reference made a part of these findings of fact.

*Defendant's Exhibit Woodward No. 3 (p. Jfi Exhibit Boole).*

A book of franking stamps illustrated by this exhibit, used by the Western Union Telegraph Co., in 1895, manufactured from multiple-book stamp sheets and backing covers, and having paraffine or waxed paper leaves between the gummed leaves of stamps, to prevent adhesion. Said exhibit shows the book minus the backing cover.

*Defendant's Exhibit E. A. No. 1 {p.*3, *Exhibit Booh).*

A sheet of franking stamps of which this exhibit represents the left-hand half, which sheet was used by the American Bank Note Company as early as the year 1883 in manufacturing for the Western Union Telegraph Co. books of franking stamps, such as the book illustrated by said Exhibit Woodward No. 3. In this stamp sheet the vertical spaces a, a, a, and the horizontal spaces 1, 1, 1, were perforated for easy separation of the stamps from one another in the completed book; the wide horizontal spaces A, A, A, were used for binding margins; the horizontal spaces 2, 2, along the lines of the words “American Bank Note Company, New York,” were for cutting the sheet into book strips, and the vertical spaces b, b, were for cutting the stitched or stapled collection of book strips and paraffined sheets into individual books. Covers for these books were printed from plates so designed as to. print five cover faces and five cover backs on one sheet at a single impression, the covers being separated by cutting, and a cover attached to each individual book.

*Defendant's Exhibits Woodward No. 1 and Leh/re No. 1 {p. 4-, Exhibit Booh).*

A sheet of franking stamps illustrated by Exhibit Woodward No. 1, used by the International Bank Note Co., successor to the American Bank Note Co., in the year 1895, in the *296manufacture, for the Western Union Telegraph Co., of books of franking stamps such as the book shown, without a cover, in said Exhibit Woodward No. 3, described above. In* the manufacture of the books, a book layer composed of a number of these sheets assembled, with paraffined sheets between, were stitched or stapled along the outer longitudinal margin of each double row of stamps and the sheet then cut in half through the central vertical blank space, producing two smaller book layers of six individual book sections of four stamps per book leaf. These smaller book layers were then cut in halves longitudinally, making book layers of' three individual books each, side by side, to which was then attached the complemental flyleaf and cover-lining sheet illustrated by Exhibit Lehre No. 1, described next below.

A flyleaf and cover-lining sheet illustrated by Exhibit Lehre No. 1, complemental to, and the book sections of which were adapted to register with the book sections of, the three book layers described next above, by the folding of said sheet lengthwise through its middle, doubling it around said layer and gluing it along its folded edge to the top of said layer. After the process indicated above, said three book sections or layers were cut up into individual stamp books and a- backing cover applied to each book by pasting.

*Defendant’s Exhibits Keen No. 1-A and Keen No. 1-B (pp. 82 and 23, Exhibit Booh).*

A ticket sheet illustrated by Exhibit Keen No. 1-A, used by the Globe Ticket Co. as early as December, 1894, in the manufacture of commutation ticket books; and a cover sheet or strip, illustrated by Exhibit Keen No. 1-B, the book sections of which were adapted to register with the book sections of each horizontal row of tickets in Exhibit Keen No. 1-A, each ticket representing a book leaf. The spaces a, a, a, a, a were for binding stubs. In manufacture, the ticket sheets were assembled, one above another, to the desired number and then cut horizontally along the bottom of each horizontal row of tickets, thus forming five book layers of ticket strips, each of which contained the tickets for five individual books. Then cover strips, either like Exhibit *297Keen No. 1-B or of twice that width, and folded so as to afford both a front and back cover, were placed on the book layers, and the ticket strips and cover strips then stitched or stapled together through the space or margin a, after which the book strips or layers were cut up into the individual books.

*Defendant's Exhibits Keen No. £-A and Keen No. £*— B *(pp. ££ and*£3, *Exhibit Booh).*

A ticket sheet and cover strip, respectively, illustrated by these exhibits, used by the Globe Ticket Co. in the early part of 1895, the manner of whose use was similar to that of the use of Defendants’ Exhibits Keen No. 1-A and No. 1-B, described above, the spaces a, a, a in the ticket sheet being used for binding stubs, and there being two tickets instead of one in each page of the book.

*Defendant's Exhibit Keen No. 3 {p. £3, Exhibit Booh).*

A ticket sheet illustrated by this exhibit used by the Globe Ticket Co. in making ticket books in the maimer described above with reference to Exhibits Keen No. 1-A and No. 1-B, and Keen No. 2-A and No. 2-B. The vertical blank spaces marked “ a ” were used as binding stubs, and after four book strips had been produced by cutting up a stack of these ticket sheets, the cut being made vertically one stub width to the left of each vertical row of perforations, the book strips were divided into individual books by cutting through the horizontal blank space having no perforations just above the words “ Northampton Street Railway,” each book page thus consisting of two tickets. A complemental cover strip was used with the book strips similarly as with the said Exhibits Keen Nos. 1-A and 1-B, and Keen Nos. 2-A and 2-B.

*Defendant's Exhibits Keen No. 1¡.-A and Keen No. 1¡.-B (p. £1, Exhibit Booh).*

A ticket strip and a complemental cover strip, respectively, illustrated by these exhibits, used as early as 1890 *298to make ticket books. The ticket strips and a cover strip were stacked together and then fastened together along the left-hand margin, which formed a binding stub, and the resulting book strips were then cut crosswise into five individual ticket books, each ticket forming a page of the individual book.

*Defendant's Exhibit McKirmey No. 1 (p. 20, Exhibit Boole).*

A ticket sheet illustrated by this exhibit, used as early as 1890, in the manufacture of ticket books. In the manufacture of the books a number of these sheets were stacked one upon another and then cut through the middle lengthwise, making two layers of book strips, each layer consisting of tickets for five books, with a binding stub at the left side. Multiple top and bottom covers for these book layers, registering therewith, were then applied, and the whole then stitched together through the binding margin, after which the layer was cut crosswise into the individual books.

*Defendants Exhibit, McKinney No. 3 (p. 20, Exhibit Booh).*

A ticket sheet represented by this exhibit, used in making ticket books, which were made by cutting a stack of such sheets through the central horizontal blank space, thus forming two book strip layers of five individual books each, then binding through the upper margin of each layer, above the top row of perforations, and then cutting the bound strips crosswise into the individual books.

*Defendants Exhibits, Fitch No.l (p. 24-, Exhibit*Booh).

The ordinary Government postage-stamp sheet, illustrated by this exhibit, and which was made and used by the Government many years prior to the date of the plaintiff’s alleged invention of the patented device involved in this suit.

VI. From and including June 25, 1910, down to January 4, 1915, the date of the expiration of the plaintiff’s said patent, the defendant manufactured and sold to the public small “ vest-pocket-size ” postage-stamp books, which are illustrated by the small books (with stamps in outline) shown as Exhibit No. 1 (p. 27, Exhibit Book).

*299In the manufacture of said stamp books by defendant, stamp sheets were printed of the design shown by the blank stamp sheet Defendant’s Exhibit No. 2 (opposite p. 26, Exhibit Book). These sheets were fed singly through a perforating and cutting machine which perforated the sheets horizontally and cut off the bottom margin close to the lower edge of the stamps, and also cut the sheet in halves along a horizontal line close to the lower edge of the stamps of the bottom row of the third horizontal group from the top. It also cut off the top margin of the sheet with the exception of a small portion of it left for a binding stub. The half sheets so formed were then fed through another cutting and' perforating machine, by which the outer vertical side margins were trimmed off close to the stamps and the sheets perforated vertically. The trimmed and perforated half sheets were then put into a cutting machine which cut them along the lines (b, b) close to the lower edge of the bottom row of stamps of each horizontal group, which operation produced strips of stamps, each strip having three horizontal rows of stamps, as illustrated by the strips (with stamps in outline) designated Exhibit No. 3 (p. 26, Exhibit Book).

For backing covers, cover sheets were made and used similar to the cover sheet designed Defendant’s Exhibit No. 4 (opposite p. 27, Exhibit Book). These cover sheets were cut along the lines marked “c” to form cover strips corresponding in dimensions with the said stamp strips, Exhibit No. 3, some of the cover strips being for front covers and others for back covers, and a set of which is illustrated by Defendant’s Exhibit No. 5 (opposite p. 27, Exhibit Book).

Said stamp strips and cover strips, the book sections of which registered with each other in dimensions and position, were, together with paraffin paper strips of similar dimensions, then assembled in proper order to form book strips, each consisting of a back cover strip, alternately arranged stamp strips and paraffin paper strips, and a front cover strip, which book strips are illustrated by exhibit No. 6 (p. 27, Exhibit Book).

*300These book-strips were then stapled along the left-hand margin as shown by exhibit No. 7 (p. 27, Exhibit Book), after which they were cut crosswise into the individual stamp books of which they were composed, producing the stamp book of said exhibit No. 1 (p. 27, Exhibit Book).

Said exhibits No. 1, No. 2, No. 3, No. 4, No. 5, No 6, and No. 7, referred to in this finding, are by reference made a part of these findings of fact.

The Government stamp sheet (Defendants’ Exhibit No. 2) and cover sheet (Defendant’s Exhibit No. 4) used in the manufacture of said vest-pocket postage-stamp book, together with the method of manufacture of said stamp book therefrom, was devised by a bookbinder who was a foreman in the stamp division of the United States Bureau of Engraving and Printing and who took as a basis for said stamp sheet the ordinary Government stamp sheet, shown by said Defendants’ Exhibit Fitch No. 1 (p. 24, Exhibit Book), from which he eliminated two rows of stamps and distributed and used the space occupied by these rows for binding stub spaces, thus producing the said Government stamp sheet, Defendant’s Exhibit No. 2 (opposite p. 26, Exhibit Book), in which said binding-stub spaces are maked “ 3.”

This stamp sheet was made and used by the Government in the manufacture of said stamp books for about two years, after which the plate was cut in half horizontally and the sheets thereafter printed half size. This reduction in the size of the sheet was because of the excessive wastage of stamps in the cutting, resulting from imperfect registry of the stamp-strip sections, and of the book sections and stamps thereof, and of the book sections of the cover strips with the book sections of the stamp strips, which imperfect registry was due to unequal expansion and shrinkage in the large sheets of paper used, the process of manufacture requiring the moistening and drying of the sheets.

On account of the imperfect registry and wastage that would result, it would not be practicable to stitch or staple together and then cut up into individual books a collection of stamp sheets and cover sheets as large as the said Government stamp sheet Exhibit No. 2; and it is for the purpose of *301obviating this wastage and loss that in the Government’s manufacturing of said stamp books the said stamp sheets and cover sheets are first cut up into the said stamp strips (Exhibit No. 3) and cover strips (Defendant’s Exhibit No. 5).

VII. At the time of the plaintiff’s devising the stamp sheet and backing cover of claim 2 of his said letters patent, there was neither patentable novelty nor patentable invention in said stamp sheet or in said backing cover, or in the combination of said stamp sheet and backing cover.

VIII. No device of the plaintiff’s said letters patent has been made or used by the defendants in the manufacture of the said Government vest-pocket postage stamp book.

Booth, Judge,

delivered the opinion of the court.

The plaintiff instituted an original suit in this court April 13, 1906, to recover royalties alleged.to be due upon an implied contract for the use of a patented article. On June 9, 1911, a second petition was filed covering the same subject matter and serving no other purpose than to extend the period of the first claim up to and including June 30, 1910. Subsequently the two cases were by proper order consolidated, heard together, and finally decided by this court on February 12, 1912. In an opinion going exhaustively into the case the petition was dismissed, the court resting its decision upon a conclusion that the patent was void and of no effect. (47 C. Cls., 207.) The plaintiff moved for a new trial, which motion was disposed of in a second opinion of considerable length, in the course of which the court discussed every feature of the case raised by either the plaintiff or defendant and sought to dispose of the entire case and every contention advanced to sustain or defeat it. (49 C. Cls., 19.) The motion for a new trial was overruled and the case was appealed to the Supreme Court, which court (240 U. S., 637) in affirming the decision of this court, upon the issue presented here used this language: “ The second petition related to a period extending to June 30, 1910, thus embracing five days after "the approval of the act of June 26, 1910 (c. 423, 36 Stat., 851), permitting recovery from the *302Government of reasonable compensation in cases of infringement. The petition, however, like the first, did not purport to present a case within this act, but was rested solely upon implied contract. The judgment, however, should be without prejudice to the presentation of any claim the petitioner may have under the statute; and with this modification the judgment is affirmed.”

On the coming in of the mandate from the Supreme Court the plaintiff for the first time asserted his claim for an infringement. Recovery is now urged upon an alleged infringement of the plaintiff’s patented article, as set forth in and covered by Claim 2 of his Letters Patent No. 596656. No other claim is involved. The case is, of course, an important one to the plaintiff, and if we were now confronted with a contention at variance with the exhaustive briefs heretofore filed in the long course of this litigation we would be disposed to again review it in detail. Inasmuch as the issue presented upon the former hearings necessarily involved the legality of the plaintiff’s patent and a careful examination of all his claims with respect thereto, we now deem it necessary only to again refer to that portion of this court’s opinions treating the subject. Wé have come to this conclusion after a final and deliberate review of the entire record now before the court. The court adheres to its determination that the alleged patent in suit was devoid of novelty, presentedmo patentable invention, and was not used by the defendant; that letters patent covering the same were improvidently issued, and that no suit for infringement can be maintained therefor. We again file findings of fact, exhibiting the record from the standpoint of an infringement case.

Nothing remains except to dismiss the petition, which is • accordingly done. It is so ordered.

Graham, *Judge;*Hay, *Judge;*DowNey, *Judge;*and Campbell, *Chief*Justice, concur.