89 F. 491 | 7th Cir. | 1898
after making the foregoing statement, delivered the opinion of the court.
There is, to commence with, a dispute whether, by “means for feeding the lubricant to the upper guide,” as that phrase is used in the
In respect to claim 3 of patent No. 396,209, the patentee, who was made a witness, after describing prior constructions of engine frames, and explaining points of weakness in them, said:
“To overcome these defects, I designed the tubular form of engine frame. It is well known that a certain amount of metal in the form of a tube will resist more strain, and will maintain a nearer correct alignment under excessive strains, than the same amount of metal in any other form.' In addition to the advantage of rigidness by this tubular form of frame, this construction brings all of the strain in the central part of the tube or engine frame, and the line of center is nearly surrounded by metal, which entirely avoids any tendency to buckling or springing out of alignment under the*495 heaviest loads. This construction of frame also enables the working parts of the engine to be inclosed, the bottom portion of the tube or frame being gradually inclined or sloped towards the crank shaft, thus forming a suitable incline and receptacle or base for containing tire oil or lubricant necessary to insure the automatic and complete lubrication of all the working parts of the engine, while the box form of extensión below the tubular form of the frame gives a rigid support for the lower crosshead guide, and forms a long-rigid bearing or support for the engine bed, which enables the engine to be of the double-crank pattern, and self-contained, and of sufficient, rigidity to support the overhanging cylinder on one end and the crank shaft and fly wheels on the opposite end. without springing out of line, and without the use of massive foundations for holding the engine bed and crank shaft in true alignment.”
That Ls to say: If it were conceded that he was the first to abandon the old style of frames, made of heavy Umbers, with guides and hearings of iron or steel bolted thereon, and to contrive a frame of metal, the problem, according to his own testimony, was hardly so difficult as to require the exercise of extraordinary skill. It was well known that metal in tubular form was stronger to resist strain than when solid, and how to cast the desired tubular shapes in connection with other parts of a structure was, of course, well understood. The patentee, however, was by no means the first to design such a frame. The proof shows that in no single feature is his design novel, and as an entirety it is not entitled to be called an invention. Counsel for the appellee asserts as “the well-settled law that a patent for a meritorious invention cannot he defeated by citing as anticipations a large number of patents, some of which show some of the parts of the invention, while others show other parts used in a different connection, and under entirely different conditions.” The proposition is, of course, true, but it does not fit the case. Every part of the frame of this patent is shown in earlier patents and frames substantially in the same relation to other parts as in this frame, and of necessity performing, or adapted to perform, the same office. Indeed, the testimony of the expert examined in support of the defense was that the equivalen! of the entire frame was to he found in each of a number of frames shown in earlier patents, and in earlier frames of which proof was made. On the other hand, the expert for the appellees pointed out in detail the differences between the frames referred to and that of the patent, hut differences of such a character in most instances as to have, in our judgment, no materia] bearing upon the question of invention. Fot- instance, it was pointed out that patent: Nfo. 144,818 “does not show the hollow base as distinguished from a number of pedestals, which,” the witness added, “is one of the essential features of the invention of the patent in suit.” It: is impossible that the hdllow base should be a feature of the invention. Just as well might a blacksmith discard the wooden block under Ids anvil, and put in its place a hollow nidal block, and call it an invention. Besides, the hollow base is shown in earlier frames. In another instance the expert pointed out that the frame referred to was not constructed for the attachment of an overhanging cylinder. If (lie patent were valid, infringement could hardly be avoided by extending the frame under the cylinder. In other instances the frames had only a single bearing for the main shaft, and therefore were not to be considered, though
The intention of patent No. 400,682 seems to have been to embody a method, or, as it is called in the brief for the appellees, “a system,” of automatic lubrication. If the crank shaft were léft out, the claims of this patent would not be obnoxious to the criticism that they include in the combination specified any part of the engine which is not a part of the means employed to effect lubrication. The crank shaft is not essential, because the necessary disk might be revolved by other means. The third claim is confessedly ambiguous. Indeed, as worded, it is meaningless. The expert of appellees says the ambiguity is “due to the omission of several words, and to a clerical error in writing the word ‘bearing’ instead of the word ‘housing.’ ” He deduces that conclusion from the history of the application in the patent office, as disclosed in the‘file wrapper, of which he makes a labored analysis. The statute provides for a correction of defective patents by means of reissue, and we are of opinion that a court of equity has no power, in a suit for infringement, to give existence, on the theory of correcting a mistake, to a patent never issued in the mode provided by law, and adjudge damages for its infringement. It follows that only the second claim of this patent need be considered. The essential elements of it are: (1) A revolving disk; (2) an oil tank or basin beneath the disk; (3) a housing or casing, with an oil-receiving surface in the plane of the disk; (4) a trough within the housing to receive fluid lubricant cast by the disk on the inner surface of the housing; (5) a pipe leading from the trough to a bearing to be lubricated; and (6) a valve in the pipe. All else in the claim is an enumeration of minutiae of construction which might better be found only in the specification. The essential idea of this claim is the throwing of oil from a trough or basin upon the parts of the engine to be lubricated, or against the surface of a housing, to be collected and carried thence by pipes, channels, grooves, and funnels to the bearing surfaces to be lubricated. The use of such pipes, channels, grooves, and funnels is illustrated by patent No. 321,726, and the prior art considered in reference thereto; and that a combination of such means for the passage of oil or other lubricant by force of gravity from an initial point to different bearing surfaces of an engine or machine in the manner shown in those letters was not patentable we have already decided. Their use in this patent is not different, and, if there is here the novelty necessary to sustain the patent, it must be in the combination of the basin of oil, the revolving disk, and the housing, with its tr ough to receive the oil cast thereon. There was, and for many years before the date of this patent could have been, nothing new in that conception or in the means ■ described for carrying it out. In the Ourtis patent of 1856, which was for improvements in lubricating the axles of loco
Upon the proof made of the prior art. as found in earlier patents and structures, we see no escape; from the conclusion that all of the claims in question of the three patents sued on come under the rule declared in Thompson v. Boisselier, 114 U. S. 1, 5 Sup. Ct. 1042, and often reaffirmed by the supreme court and by the circuit courts of appeals, that “it is not enough that a thing shall be new, in the sense that the shape or form in which it is produced shall not have been before known, and that it shall be useful, but it must, under the constitution