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a trunnion with knife edges having bearings in holes in the cross brace substantial to the plaintiff's purpose?

purpose? It seems to me to be. It was urged as the value of the plaintiff's device by Mr. Munn in his letter of October 25th, supra, and the language of the claim cannot be escaped.

It appears to me this case is very similar to Prouty v. Ruggles, 16 Pet. 337, cited by defendant's counsel. In the latter case the patent was for a combination. The syllabus of the case says:

"Where that third element, as described in the specification, was forming the top of the standard of a plow so as to secure brace and draft, by extending the standard back from the bolt to such a distance as to form a brace to the beam, and making the after part of this extension square, in such a manner that, being jogged into the beam, it relieved the bolt in a heavy draft. Held, that the specification and claim covered only this described manner of relieving the bolt, and, if the defendant did not jog the bolt into the beam, he did not infringe.”

The court in commenting on the case, at page 339, states what the claims are:

"(1) • * * (2) * * * (3) The forming the top of the standard for brace and draft. We do not intend to confine our claim to any particular form or construction. +

The court, commenting, says: “The plaintiffs offered to prove utility of the alleged improvement, which proof was dispensed with by the defendants. Certain plows alleged by the plaintiffs to be made in conformity with their letters patent, and certain plows made by the defendants, which were the alleged infringement of the plaintiffs' patent, were produced in court; and no substantial difference be tween them was shown by the defendants to exist, unless the fact that the top of the standard in the defendants' plow was not jogged into the beam, and did not extend so far back upon the beam, was to be so considered. And the plaintiffs offered evidence to show that the top of the standard formed, as stated in the specification, would serve for both purposes of brace and draft, although not jogged into the beam. The defendants introduced no evidence. The counsel for the plaintiffs requested the court to instruct the jury as follows, to wit: "The counsel of plaintiffs respectfully move the court to instruct the jury that if the defendants have used, in combination with the other two parts, a standard of the description set forth in the specification, and it is proved to serve both for brace and draft, such use was an infringement of the plaintiff's claim in that particular, although the defendants may not have inserted into a jog in the beam. Also, that, if any two of the three parts described as composing the construction claimed in the specification had been used in combination by the defendants, it was an infringement of the patent, although the third had not been used with them.' The court refused to give the instruction so prayed, or either of them, in manner and form as prayed by the plaintiffs; but did instruct the jury as follows, to wit: "That, upon the true construction of the patent, it is for a combination, and for a combination only. That the combination, as stated in the summing up, consists of three things, namely: (1) * * * (2) * * (3) The forming the top of the standard for brace and draft. That, unless it is proved that the whole combination is substantially used in the defendants' plows, it is not a violation of the plaintiffs' patent, although one or more of the parts specified, as aforesaid, may be used in combination by the defendants. And that the plaintiffs, by their specification and summing up, have treated the jogging of the standard behind, as well as the extension, to be essential parts of their combination for the purpose of brace and draft; and that the use of either alone by the defendants would not be an infringement of the combination patented.' And thereupon the jury rendered their verdict for the defendants."

The supreme court held that: "The first question presented by the exception is whether the extension of the standard, and the jogging of it into the beam, are claimed as material parts of the plaintiffs' improvement. We think they are."

These views were elaborated, but I need not quote further.

But plaintiff contends, if the parts of the defendant's device be different, they are nevertheless equivalents. The plaintiff's invention is an extremely narrow one, and I think it would broaden it too much to give it so liberal a rule of equivalents. It seems to me the comments of the supreme court in the cases of Miller v. Manufacturing Co., 151 U. S. 186–208, 14 Sup. Ct. 310; Knapp v. Morss, 150 U. S. 221–230, 14 Sup. Ct. 81; Wright v. Yuengling, 155 U. S. 47–51, 15 Sup. Ct. 1; Coupe v. Royer, 155 U. S. 565–576, 15 Sup. Ct. 199; Deering v. Harvester Works, 155 U. S. 286, 15 Sup. Ct. 118,-apply.

In Knapp v. Morss the court said (and I only quote the principle, omitting the facts):

"If the Hall patent was a valid pioneer invention, the doctrine of equivalents might be invoked with regard to the sliding blocks and rests, and thus a different question would be raised; but, being confined to the specific elements enumerated by letters of reference, it is neither entitled to a broad construction, nor can any doctrine of equivalents be invoked so as to make the appellants' device an infringement of the second claim in controversy. Our conclusion, therefore, is that the Hall patent is invalid, and, further, if it could be sustained at all, it would have to be in the most restricted form, and, thus restricted, it is not infringed by the appellants. It follows, therefore, that in each case the judgment of the courts below must be reversed.”

In the case of Wright v. Yuengling the same doctrine is applied. The court, after commenting on the narrowness of plaintiff's invention, said:

"But the absence of the semicircular connecting piece, d, is a circumstance worthy of more serious consideration. In the defendant's engine there is no such semicircular connecting piece as is described in the Wright patent, but the guiding cylinder extends backward to a connection with the head of the steam cylinder, the side of such guiding cylinder, through which the crosshead operates, containing an opening oval in shape, and narrower at each end than in the center. The equivalent for the connecting piece, if found at all, must be in this continuation of the guiding cylinder backward to the steam cylinder. But this portion of the cylinder is neither scooped out in a semicircular form, nor does it admit of ready access to the crosshead shown at this point in the Wright patent. Instead of access to the crosshead being easier at this point than any other, it is in reality more difficult, as the oval opening is narrower there than in the center. Now, while this semicircular connecting piece may be an immaterial feature of the Wright invention, and the purpose for which it is employed accomplished, though less perfectly, by the extension of the guiding cylinder in the manner indicated in defendant's device, yet the patentee, having described it in the specification, and declared it to be an essential feature of his invention, and having made it an element of these two claims, is not now at liberty to say that it is immaterial, or that a device which dispenses with it is an infringement, though it accomplish the same purpose in, perhaps, an equally effective manner.”

In Coupe v. Royer the court said: "The principle of construction which we think applicable to plaintiffs' patent is that such construction must be in conformity with the self-imposed limitations which are contained in the claims. Such claims are the meas

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ure of their right to relief. Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 278, was a case where the manufacture of round bars, flattened and drilled at the eye, for use in the lower chords of iron bridges, was held not to be an infringement of a patent for an improvement in such bridges, where the specification described the patented invention as consisting in the use of wide and thin drilled eye bars applied on edge; and Mr. Justice Bradley, delivering the opinion of the court, said: 'It is plain, therefore, that the defendant company, which does not make said bars at all (that is, wide and thin bars), but round and cylindrical bars, does not infringe this claim of the patent. When a claim is so explicit, the courts cannot alter or enlarge it. If the patentees have not claimed the whole of their invention, and the omission has been the result of inadvertence, they should have sought to correct the error by a surrender of their patent and an application for a reissue.

But the courts have no right to enlarge a patent beyond the scope of its claim as allowed by the patent office, or the appellate tribunal to which contested applications are referred. When the terms of a claim in a patent are clear and distinct (as they should always be), the patentee, in a suit brought upon the patent, is bound by it.

He can claim nothing beyond it.'”
To the same effect is the case of Deering v. Harvester Works.

It follows from these views that the instruction will have to be granted. To make myself clear as to the grounds of my ruling, defendant's motion is denied on the first point, to wit, that defendant is only the agent of the Singer Sewing-Machine Company. It is granted on the second point, to wit, that the defendant is not guilty of infringement because the machines sold by him are not similar to that described in the plaintiff's patent.

Mr. Boone: Will your honor permit us to save an exception ?

The Court: Of course. Gentlemen of the jury, you may not understand my views, which are more or less technical, and addressed to the lawyers rather than to the jury, but it follows that it devolves upon me as a matter of law to instruct you to bring in a verdict for the defendant. This being a matter of law, you have no concern with it. If I have committed an error, it is easily corrected. You will therefore find a verdict for the defendant. You can do that by retiring to the jury room, or select one of your number as foreman here, and sign the verdict.

The jury accordingly selected one of their number as foreman, and signed u verdict in favor of the defendant.

JOHNSON CO. v. PENNSYLVANIA STEEL CO.

(Circuit Court, E. D. Pennsylvania. May 14, 1895.)

No. 21

PATENTS-LIMITATION-ROLLING MILLS.

The Moxham patent, No. 303,036, for an improvement in rolls for rolling metal blooms or piles into girder shapes, construed as to claim 2, and held to be limited to rolls having a "pass" substantially of the contour shown in the drawings, and therefore held not to have been infringed.

This was a bill by the Johnson Company against the Pennsylvania Steel Company for infringement of a patent relating to rolling mills.

Harding & Harding, for complainant.
Philip T. Dodge and Joshua Pusey, for defendant.

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DALLAS, Circuit Judge. This is a suit brought by the Johnson Company, a corporation of the state of Kentucky, and having a rolling mill and plant at Johnstown, Pa., against Pennsylvania Steel Company, a Pennsylvania corporation, having a rolling mill and plant at Steelton, Pa., for infringement of the second claim of letters patent No. 303,036, dated August 5, 1884, granted to Arthur J. Moxham, and by him assigned to the complainant.

The claim involved reads as follows: “(2) A set of rolls for rolling metal blooms or piles into girder shapes, provided with a dummy pass or grooves, having spaces, as at E and D, substantially of the contour indicated in Fig. 2, the desired shape of metal in the space E being imparted by elongation, but in the space D mainly by displacement independently of elongation, all substantially as described and for the purposes set forth.”

The learned counsel of the complainant have ingeniously argued “that rolling is a combination of the entering piece and the pass into which it is entered," and that "the true scope of the claim under consideration, to be effective, like all rolling actions, consists in the combination of a piece having certain characteristics, and a pass adapted to act upon that piece in a particular manner.'

The plaintiff's case rests upon the assumption that the claim should be construed in accordance with the theory thus suggested, but I find it impossible to acquiesce in this. It is strenuously insisted by the defendant that its pass does not act upon the piece in the “particular manner" in which the plaintiff's pass acts upon it; but, waiving this question, it is, at least, clear that the defendant's pass is not "substantially of the contour indicated in Fig. 2” of the patent, and I have no doubt that to the pass so specified the claim in suit should be restricted. To give to the language by which the action of the pass is described the effect of burdening this great industry with a monopoly covering any pass whatever by means whereof the peculiar desired shape may be imparted to the metal, “mainly by displacement independently of elongation,” would be to construe the patent as for the mechanical operation or function of the device, and this, too, in contravention of the plain terms of the claim, by which a particular structure is specifically designated.

The bill is dismissed.

MAST, FOOS & CO. et al. v. IOWA WINDMILL & PUMP CO.

(Circuit Court, N. D. Iowa, Cedar Rapids Division. May 13, 1895.) 1. PATENTS-REISSUES-BROADENING OF CLAIMS.

A reissue which broadens the original claims can only be had when mistake or inadvertency is shown whereby the original patent failed to cover what it was then intended should be covered, and when the application for a reissue is made within a reasonable time; and, where the applica

tion is delayed for nearly three years, it is too late. 8. BAME-ANTICIPATION-PRIOR USE.

The fact that another than the patentee first conceived the idea of his invention, and reduced it to a successful experimental form, does not

amount to anticipation where the experiment was then abandoned and was not made the basis for an application for a patent, and there was no

attempt to manufacture and sell the article. & SAME-PUMPS.

The Bean original and reissued patents, No. 175,588 and No. 8,631, respectively, analyzed and construed, and the first four claims of the reissue found to be broader than the claims of the original patent; held, therefore, that such reissue claims are void, because the application for the reissue was delayed for nearly three years, and because no mistake was shown in procuring the original. SAME.

The Martin patent, No. 339,445, and the Hooker patent, No. 259,394, for improvements in pumps, held valid and infringed; the first as to claims 1 and 3, and the second as to claim 1.

This was a bill by Mast, Foos & Co. and William B. Hooker against the Iowa Windmill & Pump Company for alleged infringement of certain patents relating to improvements in pumps.

H. A. Toulmin and Lysander Hill, for complainants.
R. S. Taylor and C. H. Worden, for defendant.

SHIRAS, District Judge. The bill charges an infringement by the defendant of the first, second, third, and fourth claims of a patent reissued to Roscoe Bean, under date of March 25, 1879, and numbered 8,631, the original patent being No. 175,588, and dated April 4, 1876; also, of the first and third claims of patent No. 339,445, issued to Samuel W. Martin, under date of April 6, 1886, and of the first claim of patent No. 259,394, issued to William B. Hooker, under date of June 13, 1882,-it being averred that the complainants are the owners, by proper conveyances, from the patentees of the rights secured by the named patents, all of which are for improvements in the mode of constructing pumps.

The first defense pleaded to the Bean reissued patent No. 8,631 is the invalidity or illegality of the reissue upon the ground that the reissue broadens the terms of the original patent in a material matter, and as it was not applied for until nearly three years after the issuance of the original, and as the latter patent was not inoperative or invalid by reason of a defective or insufficient specification or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, and as there are no special circumstances disclosed excusing the delay in applying for the reissue, it must be held that the purpose of the reissue was to broaden the claim, and, consequently, the reissue must be held, pro tanto, to be invalid. As already stated, the original patent to Roscoe Bean was issued April 4, 1876, and it has therefore expired by limitation, although not until after this suit was brought, the bill herein having been filed in 1891. No case involving the validity of the reissue has been brought to trial, and hence the question is res nova. It will probably aid in the presentation of the questions involved to set forth in parallel columns the material portions of the specifications in the original and reissued patents, together with a copy of the drawing attached to both patents.

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