84 F. 171 | 7th Cir. | 1898
Lead Opinion
Appellant, a corporation, exhibited its bill in the circuit court, alleging infringement by appellee, which is also a corporation, of the first claim of letters patent of the United States numbered 480,304.. This patent was issued August 9, 1892. Complainant owns the same, as assignee of the inventor, Lewis E. Wa
“In a corn planter, tlie combination, substantially as hereinbefore described, of a seed box, mechanism for measuring and delivering seed from the box, co-operating disks on either side of the box, which disks carry or support the seed-box and the measuring and delivering mechanism, and which actuate the ■latter, and means for adjusting the disks so as ,to vary their covering capacity.”
.As applicable to this claim, the specification and diagrams of the patent show a horizontal frame, approximately round, with an extension or tongue from one side inclining slightly downward, and cut out vertically at its. outward extremity into two arms, which arms pass on either side of, and are pivoted to, a central forward portion of the rigid frame whereby the subsoiler is held to a double-moldboard lister plow. This circular frame is, by means of th'e pivot whereby it is attached in the rear of the plow, movable vertically out of its horizontal position. Transversely across and underneath the broadest portion of this frame, and at right angles to the direction of the plow, extends an axle, on either end of which ground wheels, not spoked, but made, in the form of disks, are fixed. On this frame, itself supported by the axle and ground wheels, is supported vertically a cylindrical seed box, containing in its bottom a seed measuring and delivering mechanism, and a spout leading from' the bottom downward through said frame to a tube or- conductor fixed -vertically behind the subsoiler, and in the frame which carries the subsoiler. Through this spout and tube, as the plow parts its furrow, and the subsoiler the secondary furrow, the seeds are dropped into the latter furrow in fixed quantities or charges, and at fixed intervals. On the axle, which turns with the disks or ground wheels, and by the friction between the outward edges of the latter and the ground as the structure is drawn in the wake of the subsoiler, is a vertical, beveled cog wheel, which : engages with cogs on the underside of a horizontal annular plate in the bottom of the seed box, and thereby actuates the seed measuring and delivering mechanism. This vertical, beveled wheel is between the center of the axle and the disk fixed on the end thereof. So far as now described, the structure contains all the factors of the claim quoted, except the last, namely, “means for adjusting the disks so as to vary their covering capacity.” These factors, not being in combination with the last, would themselves combine to the one result of dropping the grain in fixed quantities, and at fixed intervals, into the secondary furrow behind the advancing subsoiler. In such hypothetical combination, however, the disks would have merely the function of wheels. As disks, they would be functionless. But the patentee, by the operation of his device in dropping the corn, undertakes also to cover the same as and when dropped into the furrow. For this purpose the axle between the disks is made in halves. These are joined together under the central portion of the seed box by a coupling operative as a universal joint. By this means each ground wheel or disk may be set so that its plane of revolution, being a vertical plane, is at a greater or less angle with that vertical plane which would pass through the central longitudinal line of the .furrow, or direction of the
The patent Ao. 418,526, issued December 31, 1889, to T. P. Lynch, shows, in a lister plow or corn planter, the combination “of a seed box, mechanism for measuring and delivering seed from the box, co-operating” wheels “on either side of the box, which” wheels “carry or support the seed box and the measuring and delivering mechanism, and which actuate the latter.” In the device of the Lynch patent, the ground wheels, which are npt disks, but spoked w'heels, are fixed vertically on the ends, respectively, of the axle, so that tlieir planes of revolution are parallel to each other, and to a vertical plane through the longitudinal central line of the furrow. In this patent the axle is not divided, or hi halves; the means for covering the grain being two curved shovels adjusted to follow in the rear of the advancing seed box. In the patent in suit the divided axle, the central coupling forming a universal joint, the angular adjustment of the disks, and the frame whereby (lie axle and disks are held in position, and attached to and made to follow the plow, constitute the mechanism described in the specification, whereby earth is thrown over the com to cover it. The central coupling between the two meeting ends of the divided axle forming the universal joint, the tube or bearing in which each half of the axle is journaled, the brackets on the tube, with the bolts and slots through the frame, whereby the axle is held to the frame which supports the seed box, constitute the last element specified in the claim, namely, the “means for adjusting the disks so as to vary their covering capacity,” as described in the specification. The construction of the Lynch device, above referred to, has the one distinct result, namely, it drops the grain in fixed quantities, and at fixed intervals, in the furrow. If we suppose the divided axle of the patent in suit to be sei. and secured so that the two halves are in a straight line, the disks will then have only the function of the wheels in the Lynch device. On this hypothesis, if the words, “means for adjusting the disks so as to vary their covering capacity,” be omitted from the claim in suit, the remaining elements, as expressed in the claim, would attain the result of the Lynch combination. But disks, as disks, would not be a factor towards such result. Again, disks attached to a lister plow, following the subsoiler, set, as in the patent in suit, angularly to the direc
Counsel for appellee has put in evidence a very large number of prior patents. To about 12 of these he makes reference in his argument. The patent 305,430, to E. A. Daniel, in 1884, is seemingly dwelt on with most confidence. Counsel says:
“The patent to Daniel, of 1884, shows each of the parts named in said first claim. In the Daniel structure there are three .disks on each side of the center of the machine; constituting two groups, which throw in towards each other, as in the patent in suit. Every function set out in the claim sued on is performed in the Daniel structure by the same agency respectively named in said claim. Inasmuch a^, a change of location of an element in a combination, without change of function, does not affect the identity of the combination (Dane v. Manufacturing Co., 3 Biss. 374, Fed. Cas. No. 3,558), the Daniel structure, if subsequent, would be an infringement on the claim sued on, were the latter valid; but ‘what would infringe a patent, if later, will defeat a patent, if earlier.’ (Knapp v. Morss, 150 U. S. 229, 14 Sup. Ct. 81.)”
Tbe device of this Daniel patent belongs to tLe harrow or broadcast-seeder family. The three disks constituting the gang on one side of this device are on a single axle. The two axles are set, by means of a frame above the disks, at an angle to each other, so that by the mutual opposition of the two gangs of disks the machine may be drawn over the prepared field in a direct line of travel. There is over each gang a separate seed box, set at a considerable elevation above the disks. If one of the gangs with its seed box should be detached from -the other, and fastened to the rear of a plow, or should itself, ás a single implement, be drawn over ground already prepared, its course would be zigzag, or at least uncertain. Its disks would not co-operate to keep it in the line of travel. If, on the other hand, the disks be set so that their planes of revolution are in the line of travel, then they would have no covering capacity. Moreover, if the distance between the exterior disks should be fixed at 10 or 12 inches, the machine would topple over. In this Daniel machine the adjacent disks — one on the inner end of one axle, and the other on the inner end of the other — are in the same position, relatively to each other and to the line of travel, as the disks of the patent in suit. Moreover, their angular adjustment may.be varied. Still further, in front of
The argument most persistently urged by the learned counsel for appellee goes to the proposiiion that the elements assembled in the claim in controversy are really a mere aggregation, and not a patentable combination. The seed box of the patent, for instance, considered as a hollow receptacle for holding seed, is identical with itself in other situations. But here the seed box, besides holding the mass of corn in appropriate relation to the seed measuring and delivering mechanism, is functional as an instrumentality whereby said seed measuring and delivering mechanism is held in position to receive, as its means of operation in dropping corn, a force generated by the im
“It is frequently stated in the decisions of the courts that no new combination can he produced unless its result or effect he also new. This is to he understood as referring to the effect of the combination as compared with the effect of its elements in their separate or aggregated state, not as compared with the effect of other combinations of the same or different elements. It is true that no combination can have been invented unless it is capable of producing effects beyond those resulting from the use of any or all the elements in their separated state. But it is not true that the same elements cannot be grouped into different combinations, governed by different co-operative laws, although their practical effect as arts or instruments may be the same. The decisions are to be read with this distinction in mind.”
In Reckendorfer v. Faber, 92 U. S. 357, as showing the distinction between a mere aggregation and a patentable combination, it is said:
“Another illustration may be found in the frame in a sawmill which advances the log regularly tó meet the saw, and the saw which saws the log; the two co-operate and are simultaneous in their joint action of sawing through the whole log, — or in the sewing-machine, where one part advances the cloth, and another part forms the stitches; the action being simultaneous in carrying on a continuous sewing. A stem-winding watch key is another instance. The office of the stem is to hold the watch, or hang the chain to the watch. The office of the key is to wind it. When the stem is made the key, the joint duty of. holding the chain and winding the watch is performed by the same instrument. ' A double effect is produced, or a double duty-performed, by the combined result. In these and numerous like eases the parts co-operate in producing the final effect, — sometimes simultaneously, sometimes successively. The result comes from the combined effect of the several parts, not simply from the separate action of each, and is therefore patentable.”
As before pointed out in this opinion, if tbe disks be made functionless otherwise than as wheels, — in other words, if disks be taken out and wheels put in, — then all the elements of the claim, barring the last, may combine to the one result of dropping corn in fixed charges, and at fixed intervals. But such a supposed combination is not itself a factor in this claim. The last element, namely, “means for.adjusting the-disks so as to vary their covering capaci ty,” by which we must necessarily understand, as described in the specification, disks which have the angular adjustment, as well as disks whose angular adjustment may be changed, might, when separated from the seed box and contained mechanism, or when these latter parts are functi'onless by the absence of seed from the box, cover charges of corn previously dropped by some other machine, or by hand. But in the combination of the claim the force generated by the friction or impact between the
Assuming the validity of the claim, we do noi. understand the infringement to he contested. Mr. Waterman, the inventor, was formerly an employé of the appellant corporation. In 1894 he entered the service of appellee, and has since remained in that service. While employed by appellee, and on May 21, 1895, there was issued to said Waterman, “assignor to the Bock Island Plow Company,” appellee, letiers patent No. 5:19,495. Appellant makes plows under the Waterman patent of 1892, being that in suit; appellee, under the; Waterman patent of 1895. Plows made by appellee pursuant to the specification of the last-named patent contain, unmistakably, the combination of the claim in suit. Appellant’s expert so testified. No witness has expressed any opinion to the contrary; nor, as said above, does the learned counsel even contend that the infringement is not clear if the claim be valid. There is no question here as to the utility of a machine made within the terms of the claim in comparison with the machines of Lynch or Loughry. Utility to the patentable degree is not disputed. The decree is reversed, and the cause remanded, with the direction to (he circuit court to enter a decree for an injunction and an accounting.
Dissenting Opinion
(dissenting). I am unable to see that tbe Waterman combination embodies a new conception. Its exact counterpart, it is true, bas not been found in tbe prior art; bút tbe ele ments are all old in fact, as well as in theory, and, in plows, cultivators, barrows, and seed drills, have all been in familiar use, in tbe same relations to each other, and performing tbe same functions in tbe manner shown in tbe patent in suit. It is pointed out, and emphasized by repetition, that tbe disks of this patent have functions which do not all belong to tbe disks alone, or wheels alone, of any prior device; and in this fact, as I understand tbe opinion, is recognized tbe novelty which made tbe combination patentable. “These predetermined intervals between tbe charges of grain as dropped into tbe furrow,” it is said, “are made in a degree greater or less by change in the angular adjustment of tbe disks. In other words, tbe disks, with their variable angular adjustment, are functional in the machine of the patent, in fixing tbe intervals at which the charges of seed are dropped into the furrow; and the disks themselves, apart from the matter of angular adjustment, their friction with the ground being aided by the weight of the seed box and its contents, are functional in operating mechanism whereby one charge is separated from the mass of grain, and separately carried to the upper opening of the spouts, and there dropped into the furrow.” The first of these functions, the varying of the predetermined intervals between the charges of the grain dropped by changing the adjustment of the disks, I do not find to have been pointed out in the specification, or suggested either by experts or by counsel for the appellant. The discovery, therefore, would seem to be original with the court. But that it is •genuine must be conceded, since it is manifestly true, theoretically, that a revolving disk will advance further by a single revolution on a line coincident with its own plane than if drawn forward on a line at an angle with its plane, and the greater the angle the shorter will be the forward movement, the total variation possible being the difference between the circumference of the disk and its diameter. Practically, the variation, I think, will be very much less, and probably without appreciable effect; but, whether great or small, I do not perceive that it can be a beneficial feature of the device. The contrary seems probable. The question, however, is an immaterial one. That part of the prior art which is disclosed in the opinion alone would compel me to a different conclusion on the question of patentability from that declared by the court. It is shown in the opinion that, without the means for adjusting the disks, tbe elements or factors of the claim in suit “would themselves combine to the one result of dropping the corn in fixed quantities and at fixed intervals,” but that “the disks would have merely the function of wheels”; and on this hypothesis it is conceded that the Lynch patent, which shows, in a lister plow, the combination “of a seed box, mechanism for measuring and delivering seed from the box, [wheels instead.of] disks on either side of the box which carry or support the seed box and the measuring and delivering mechanism, and which actuate the latter,” is not different in combination or result. It is also conceded that in the Loughry patent are “disks attached to a lister plow, following the subsoiler,