64 F. 384 | 6th Cir. | 1894
(after stating the facts). It may be well, before discussing the questions raised upon this appeal to make a few general remarks concerning the subject-matter under examination. In stem-winding or keyless watches, the mainspring is wound and the hands are set by the rotation of the shaft or stem arbor which extends from the outside of the case, through the hollow stem, into the movement of the watch. The rotating force applied to the stem arbor by the action of the fingers of the operator upon its exterior head or crown is communicated to the winding wheel or to the setting wheel by an intermediate device of varying form in different patents, which is generally called the “winding and hand-setting train.” It • is usual, in all watch-movement. patents, for the stem arbor to carry at its winding end a clutch or pinion which communicates the rotating motion of the stem arbor to the wheels of the winding and hand-setting train with which it engages. That the rotation of the stem arbor should at one time wind the mainspring, and at another set the hands, the train must be shifted so that its wheels shall at one time engage with the winding wheel, and at another with the hand-setting wheel, at the will of the operator of the watch.
There are three well-known forms of the winding and hand-setting train in the art: one is the yoke, another is the breguet key or clutch, and the third is the rising and falling pinion. Of these we have, in this case, to do only with the yoke form of train. That is a pivoted, edgewise swinging plate in the movement of the watch, carrying one wheel, centered upon the pivot of the plate, not varia-
If is obvious ihat. when the watch is in the poclcefc the engagement of the train should be with 1he winding wheel, rather- than with the .suiting wheel, because, if ¡lie engagement is with (he setting wheel, any accidental rotation of the crown of the si era arbor would change the hands, and destroy the time-keeping qualities of the watch, whereas such accidental' disturbance, resulting in a. slight winding of the mainspring, would be of no injury whatever. It is also evident that the stem arbor is more likely io be disturbed accidentally when it is pulled out than when its crown is close to the ooier end of the stem. For this reason, in watches which are stein or pendant set, Hie inward movement of the stem arbor is generally made to produce the engagement of the winding wheel, while the outward movement brings about the engagement with the selling or dial wheels. The usual method, before Hie Church invention, by which engagement with the dial wheels was pv<4uced through the outward movement of the stem arbor, was io fasten the rieui arbor to the movement, so that the shifting could be effected by the direct pull of the arbor. The result of this arrangement was that Hie movement could not be removal from tine cave without also releasing the shan arbor. This was objeef jenable, because watch movements are made separably from their cane, and it Jb? of great trade advantage to have the movement capable of easy separation from the case, so that one movement may fit in a great number of cases, and a case be useful for any number of movements. The ready interchangeability of movements and cases is one of the well-known objects sought for by inventors in the watchmaking field, and this, as he stsit.es in his patent, was the chief object of Church's invention.
To describe Church’s patent in a general way, It has a stem arbor which reaches but a short distance into the movement, and is
It is contended on behalf of the appellants that the Church patent has no novelty in it whatever, because every feature of it is old. It is quite true that the stem arbor which is used in the Church patent was the invention of Colby. It is also true that the winding and hand-setting train used by Church was a common form, well known to the art. It is also true that in the Wheeler patent of March 1, 1.881, the same winding and hand-setting train is shown in normal engagement with the dial wheels, and that the winding engagement in the Wheeler patent is brought about by extraneous force aj)plied to the movement to overcome the effect of the spring, and thus produce the normal engagement with the setting wheels. It is also true that the intermediate loose or sliding device may have been suggested by the analogous use of such, an intermediate device in the patent of J. D. Brez, of July 20, 1875, where it was used to communicate pressure from the stem arbor to the spring holding and releasing the hinged case of the watch. But notwithstanding the fact that all the parts are old, in the sense that each of them may
The only patent disclosed in the record for a watch movement in which the winding and shifting are both done by the stem arbor, and in which the movement may be removed from the case without disturbing the stem arbor, is the patent granted to N. Woerd, February 6, 1883, a description and drawing of which appear in
The strongest evidence .that the Church invention is a useful one is the fact that to-day considerably more than half of all the watches that are manufactured in the United States with open faces are made under.it, and embody the combination of elements which is set forth in its specifications. This fact is- said to- lose significance because the owners of the Church patent, the Waltham and Elgin Watch” Companies, are able to control the business of watch-case making and watch making to such an extent, by their enormous output, as to foist upon the public, and compel the purchase of, a poor device. We must assume that the two companies referred to, with the large resources at their command in purchasing patents and using them, would exercise ordinary business discretion, and would be guided by the demands of the public for the best watch movement, and must hold that, no matter how large the control or business of the two companies which own this patent is, that its very extensive use is strong evidential weight of its useful character.
But it is said that the claims of the reissued Church patent arc. void because they seek to appropriate results or functions, rather than means or devices for accomplishing results. Unless the claims are to be restricted by construction, this criticism is a just one. The inventor, in his first claim, seeks to monopolize a train “adapted” to be placed in engagement with the winding or setting wheels by the longitudinal movement of a stem arbor having no positive connection with the train. la this to be construed to claim lor the patentee the right to keep all others from using a train which is in any way adapted to engage with the winding or sidling wheels by the in and out movement of a stem arbor not having positive connection with the train? We think not. The only adaptation capable of appropriation by the inventor is that which Is shown in the specifications and drawings of Ids patent, and this is the necessary limiting effect of the words, “substantially as and for the purpose specified.” In this way the court may sustain the validity of the claims, as it is its duty to do when possible. In the Corn-Planter Case, 23 Wall. 181/225, 226, one of the claims was as follows:
“What I claim under this patent is a seed-planting machine wherein the seed-dropping mechanism is operated By hand or by an attendant, in contradistinction from mechanical dropping, the mounting oí said attendant upon the machine in such a position that he may readily see the previously made marks upon the ground, and operate the dropping mechanism to conform thereto, substantially as heroin set forth.”
Beferring to this clsihn, Mr. Justice Bradley, speaking for the court, says:
“The first of these claims, if construed simply as claiming the placing of the seed dropper on the machine, would probably be void, as claiming a mere result, irrespective of the means by which it is accomplished. But, if construed as claiming the accomplishment of the result by substantially the means described in the specification, it is free from that objection; and wo ought to give a favorable construction, so as to sustain the patent, if it can fairly be done. By reading the claim in connection with the final qualifying clause, thus, ‘the mounting of said attendant upon the machine,’ etc., ‘substantially as herein set forth,’ the fair construction would seem to include the means and manner of placing him upon the machine.”
Construing the claims in the Church patent in the light of the Corn-Planter Decision, it is evident that they must be limited to
The objection that the reissued patent is void for unduly enlarging the claims of the original patent cannot be sustained. The sixth claim of the reissue is quite the same as the second claim of the original. They are both for a combination of the following elements: (1) The winding and hand-setting train normally in engagement with the setting wheels, as set forth. (2) The stem arbor or key, having no positive connection with the train, as set forth. (3) The intermediate loose or sliding device for communicating the force of the in-thrust of the arbor to the train, by which the train is shifted into the winding engagement, as set forth. The change in the reissue from the words “loose or sliding device” to “intermediate” device is not to be construed as widening the scope of the claim. If, in any alleged infringement, that which communicates the stem arbor’s in-thrust to the train is not a loose or sliding device, or its manifest and well-known mechanical equivalent, it certainly is not an intermediate device, “substantially as and for the purpose set forth” in the specifications and drawings of the patent. It is not necessary to examine closely the other claims of the reissued patent, to see whether they unduly expand the scope of the monopoly of the reissued patent beyond that of the original, because a construction of them in the light of the specifications and drawings, and the history of the art, requires either that they should be rejected as invalid, or treated as combination claims with the same elements as those contained in the sixth claim given above.
We come now to the question whether the defendants’ watch movement is an infringement of the Church patent. A description and a drawing of the defendants’ watch movement appear in the statement of the case. It is a movement in which the stem arbor to be used discharges the double function of winding the wheels of the movement, and of shifting the engagement from the setting to the winding wheels. It is a movement in which the normal engagement is with the dial wheels. This is denied by counsel for the appellants, but it certainly is true that whenever the pressure of the stem arbor is removed the force of a spring in the movement itself will produce engagement of the yoke or train with the dial wheels. That is the normal engagement, in the sense of the Church patent. The winding and hand-setting train in the defendants’ “movement is somewhat different from that of the Church patent; but Church, in his specifications, expressly states that the intermediate device for shifting the engagement may be in all the well-known forms of intermediate mechanism, and that his invention is not limited to the particular device shown. It is conceded that the yoke of the defendants’ movement is a very old form, and may be found in the English patent of Nicole of 1844. The device by which the pressure of the short stem arbor is continued into the movement, and made to effect the shifting of the yoke, differs somewhat, in the defendants’ movement, from that of the Church patent. The loose or sliding stud
The conclusion we have reached with reference to the validity of the Church patent, and the infringement by the defendants, is fully sustained by the decision of Ihe circuit court of appeals for the Seventh circuit in the case of Watch Co. v. Robbins, 3 C. C. A. 42, 52 Fed. 215.
The decree delow awarded a perpetual injunction against the infringement by the defendants, and referred the case to the master to determine the damages. That decree was appealed from, under the seventh section of the court of appeals act, as an interlocutory order granting an injunction; and the point ivas mooted whether we should examine the record as upon an appeal from a final decree, or only examine the question whether the court below had exercised proper discretion in the issuing of an interlocutory injunction. It was decided that we could not hear and finally determine the merits of the controversy as to the validity of the patent and its infringement. 6 U. S. App. 275, 3 C. C. A. 103, 52 Fed. 337. In looking into the record, however, to determine whether tbe discretion of the cir