99 F. 95 | U.S. Circuit Court for the District of New Jersey | 1900
This action is brought for infringement by the defendant of two patents for photographic shutters, owned by complainant, viz. No. 362,211, of May 3, 1887, to George F. Green, and No. 287,858, of November 6, 1883, to Henry B. Perry. The bill alleges conjoint infringement of these patents, together with another patent, afterwards withdrawn from consideration in this suit.
“Photographic shutters are designed to be combined with either one end or the other of the lens tube of the photographic camera, so as to close such tube against the entrance of light to the interior of the camera containing the sensitized plate, until such time as it is desired that light should be admitted thereto, when the shutter opens for this purpose, then closes accordingly, as the mechanism is rnanip
As we have seen, the object had in view by the patentee of the Green patent was a shutter, so divided into four wings, instead of two, that each pair of wings would stow or pack away in the opposite sides of the lens opening, and take up nearly one-half less room laterally in the frame of the front board than wTas occupied by the two-winged shutters. The diminution of lateral space required for the stowing of the shutters when the lens was open seems to have been the primary object of the invention. How the patentee sought to accomplish this is set forth in claim 1, which is as follows: “(1) A photographic shutter provided with four wings, AA, BB, overlapping each other, and having different ranges of movement, whereby they are enabled to fold back into the case side by side, substantially as set forth.” As the other claims have only to do with the specific mechanism, the first is the only claim with which we are concerned in the question of infringement. This claim, then, is the measure of the monopoly granted to the patentee, and this monopoly cannot be extended beyond what is demanded in the claim, although it may be limited by the state of the art. The claim is not for four wings having different ranges of motion, but for a combination of these, when so constructed and arranged, as to enable the wings to fold back into the case side by side. The claim is not broadly for a four-winged shutter, but is limited by the designation of these wings by letters, and by reference to the drawings and words, “substantially as set forth.” The words, “fold back into the case side by side,” must be given what would seem to be their ordinary and first-blush meaning. That meaning, plainly, is not only, or chiefly, that the two pairs of wings should, on opening the lens, move back side by side, but that, when in the state of rest, they should lie side by side in the space on each side of the lens opening. To accomplish the object of diminishing the lateral space necessary to hold the shutter wings, which we have seen was the object of the invention, it was essential that the wings should lie superimposed, the one upon the other, or side by side. It was not essential that, in the act of moving back to the place of rest, they should move side by. side. The words, “to fold back into the case side by side,” refer, it is true, to the act of folding, but contemplate the completion of that act when the wings are folded back into the case side by side. The folding back, then, of the four wings, AA, BB, with different ranges of movement, so that they •should lie side by side, seems the essential feature of the invention. Not only does the claim thus interpreted not permit of a broader
Comparing the claim thus interpreted with defendant’s four-winged shutter, we find that the latter is a photographic shutter provided with four wings, one pair of which are on one side of the lens opening, and the other pair on the opposite side. As arranged in practice, one pair is on the upper’ side, and the other pair on the lower. The upper pair are narrower than the lower pair, añd they have different ranges of movement. The four wings also overlap each other somewhat, when the lens is closed, with the obvious purpose of insuring the exclusion of light. This feature is given to other forms of shutters, and notably so in the case of the two-winged shutter of the first Green patent; but, when the lens is open, the shutters do not fold back into the case side by side, as do the shutters of the Green patent. The shutters of the Green patent are pivoted on one side of the lens, and fold back alongside of each other, until they close, like the sticks of a fan, on each side of the lens opening. In the defendant’s shutter, the wings above and below, while overlapping when closed, retreat from each other to opposite sides of the lens, and do not, in any sense, fold back side by side, or lie side by side when they are folded back. It is true, that, when the lens is open, the tips of the lower wings slightly overlap the tips of the upper wings, or vice versa; and on this account, as well as on account of the overlapping when the lens is closed, they move in different, though parallel, planes, so that they should not meet edge to edge in the center or when folded back. But the overlapping of the points of the wings, when folded back, does not constitute a “folding back into the case side by side,” as set forth in the claim, nor do the “wings, BB, close back in the 'same space occupied by the wings, AA.” In the act of unclosing the wings of defendant’s shutter, instead of folding back side by side, they retreat from each other. They are closer together when the lens is closed than when it is open. It would be quite possible to cut off the points that overlap when the shutter is open, so that the wings should not touch at all, without destroying the essential features of the defendant’s device.
The defendant’s shutter, therefore, seems to lack the essential feature of the Green_ patent, viz. the folding back of the two pairs of wings, side by side, when the lens is open. It is not clear what the object of the defendant’s four-winged shutter was. The evidence does not disclose it, and the counsel for defendant says that it can only be conjectured. But, whatever it was, the means employed in defendant’s shutter, are two sets of wings, having different ranges of movement, it is true, but they are not the combination of two sets' of wings, AA, BB, adapted to fold back into the case side by side. As has juSt been said,, the object of defendant’s form of shutter is not apparent, but it could hardly have been to diminish the space occupied by the shutters when the lens was open; for, whatever economy may have been gained as to the lateral space, it was more than lost in the increase of vertical space required for the stowing of the upper and lower pairs of shutters. The contention of defendant
Tne other patent, of which a conjoint infringement: with the Green patent, just discussed, is alleged in the hill, is that granted to Henry B. Perry, hereinafter called the “Perry Patent,” being 287,858, of May 3, 1887. The claim of this patent reads as follows: “The combination of the frame, A, slides, IIP, having stud, b', links, B', and lever, O, with the cylinder. D, having piston, d, connected to the lever, and the air bulb, E. and its tube, e, all constructed and arranged to operate substantially as and for the purpose set forth.” The patent shows and describes a shutter comprising two slides, lettered, 15B, provided with openings which, in one position of the slides, may coincide with and uncover the lens opening of the camera, but which, in a different position of the slide's, are moved out of coincidence, so as to close» the lens opeming. These slide:s are separately shown in Figs. 3 and 4 of the patent drawing. The original purpe>se: of the inventor is shown by the tile wrapper and contents, and it was, in the; language» of the specifications, to “eexpeese: the lens to the light at the center first, and dose it at this point last.” The original application cerníained three claims, the first of which was as follows: “(1) In a shulier for (¡ameras, the combination of two perforated slides, moving in opposite: directions, whereby the exposure; is from the center towards the edge's, substantially as and for the purpose set forth.” The first claim was objected to upon reference to the British Journal of Photography Almanac, for 1880 (page 123), and was erased by the applicant. The original second claim read as follows: “In a photographic shutter worker, a frame containing two oppositely mewing perforated slides, connected together and operating simultaneously, in combination with an air cylinder, provided with a piston and an air bulb and conductive tube, substantially as described and shown.” This claim was rejected upon reference to the Spurge and Whitcher patent, and was then amended to read as follows: “In a photographic shutter, a perforated frame containing two oppositely moving
It is thus apparent that the patentee supposed, when he made his application, that he had invented a photographic shutter which would “expose the lens to the light at the center first, and close it at this point last,” and particularly the means for constructing and operating such a shutter. It is a matter of record that the rejection of these claims was acquiesced in by the applicant, and that he consented finally to confine his monopoly to the narrow limits set forth in the single claim contained in the patent as issued. It seems to the court, then, that his monopoly must be measured by the particular mechanism and combination described in the claim. And this conclusion seems all the more necessary, by reason of the fact that in the claim the separate parts of the combination are designated by the specific letters of reference used in the drawings. “When a patentee, on the rejection of his application, inserts in his specification, in consequence, limitations and restrictions, for the purpose of obtaining his patent, he cannot, after he has obtained it, claim that it shall be construed as it would have been construed if such limitations and restrictions were not contained in it.” Roemer v. Peddie, 132 U. S. 317, 10 Sup. Ct. 99, 33 L. Ed. 383. In this patent, therefore, we have a combination of three things: First, two oppositely moving perforated slides; second, a mechanism for moving them in opposite directions at the same time, which consists simply of a lever of the first order, pivoted or fulcrumed in the middle, each arm of which is connected with one of the slides by means of a connecting link add stud, so that when power is applied to move one end of the lever in one direction, and moving the slide with it, the other end moves in the opposite direction, and communicates that motion to the other slide; third, a pneumatic engine, which actuates the mechanism by moving a piston attached to one end of the lever.
A careful examination of the testimony of the experts in that regard clearly demonstrates that there was nothing new in the device of the two perforated slides moving in opposite directions; nor is there anything new, or that required invention, in the use of a lever for transmitting the motion given by the piston of the pneumatic engine in one direction to the other end of the lever in an opposite direction, nor was the pneumatic engine new in the art. Without stopping to inquire whether these, old devices so co-operated in combination as to produce a new result in a new way, and whether the combination involved patentable invention, it will be sufficient, for the purposes of this case, to inquire whether this particular combina