76 F. 807 | U.S. Circuit Court for the District of Southern Ohio | 1896
Patent No. 260,462, for separable pulley, on which this suit is based, was granted July 4, 1882, to Dodge & Phillion. Only the first and third claims are alleged to be infringed. They are as follows:
“(1) A separable pulley, whereof, when the meeting ends of the rim are in contact, the meeting faces of the spoke bar and hub are slightly separated, as described, combined with clamp bolts, G, whereby said hub is clamped upon the shaft in the manner set forth.”
“(3) A separable pulley, whereof, when the meeting ends of the rim are in contact, the meeting faces of the spoke bar are slightly separated, and clamp bolts, G, combined with a separate split thimble interposed between said shaft and pulley, substantially as set forth.”
. ■. The defendants set up and have introduced evidence tending to !jyrove' 29 instances of prior use. The complainants’ testimony and .exhibits, in chief cover 64 printed pages, the defendants’ 1350 .pages;, and the complainants’ in rebuttal 1979 pages; being in all i3393. pages, not including patents and illustrations, covering 400 or 500 pages in addition. Tais testimony is, in the main, pertinent
The defense is want of patentable novelty in claims 1 and 8; and that they are wholly void, in view of the prior state of the art, as exhibited both by prior patents and publications, and by numerous prior public uses and sales, more than two years before the date of the application for the patent in suit. Ten patents and two publications are set up and introduced in evidence as anticipations. Defendants’ expert testifies that wooden pulleys have been quite common, although pulleys are most frequently made of cast iron accurately bored to fit the shaft, and secured to it by set screws, put through the hub, and forced against the shaft, so as to pinch it with their points. Such pulleys can be shifted along the shaft (which must be put up accurately in line), between the hangers; but, if they are to be transposed or shifted beyond the hanger, the shaft must be disconnected or taken down, so that the pulleys may be stripped off to make the desired change. It is necessary also to disconnect the journal boxes of the hangers. Accordingly, journal boxes in two halves have been long in use, to avoid the necessity of taking down the hangers or stripping off the boxes. Bushes or linings to save the box from wear are also old. There have been split pulleys, and it is testified that the idea of pulley halves in contact only at the rim, and open elsewhere, so that the clamp bolts may draw the hub tightly to the shaft, is old; but examination of the patents and publications relied upon in support of this contention shows that none of them contain the combination or produce the results of the invention, discovered by the complainants’ patent. Take, for illustration, the patent of Sehellkopf (No. 168,925), of 1876, which is referred to by defendants’ expert as most closely approximating the structure of the patent in suit. That shows a wooden pulley in halves, the meeting ends of the rim not in contact; a solid iron center, not split or divided; no bushing; and the hub not held on the shaft by compression. None of the prior patents or publications anticipate the complainants’ patent.
The testimony as to prior uses is to be considered with reference to the rules of law applicable. It is a fundamental principle of the patent law that, to invalidate a patent by prior invention or use, the proof must establish the fact beyond reasonable doubt. “The burden of proof rests upon him [the defendant], and every reasonable doubt should be resolved against him.” Coffin v. Ogden, 18 Wall. 120, 124; Cantrell v. Wallick, 117 U. S. 689, 696, 6 Sup. Ct. 970; The Barbed-Wire Patent, 143 U. S. 275, 285, 12 Sup. Ct. 443, 450.
This means that “this defense must be established by proof as explicit and convincing as that required to convict a person charged with crime.” Cluett v. Claflin, 30 Fed. 921, 922 (Coxe, J.); Ross v. Railway Co., 45 Fed. 424, 425 (Knowles, J.); Lalance & Grojean Manuf’g Co. v. Habermann Manuf’g Co., 53 Fed. 375, 378.
The inherent improbability of the story is sufficient to negative the testimony of any number of witnesses. The Telephone Cases, 126 U. S. 1, 2, 8 Sup. Ct. 778.
It is hardly necessary to say that each defense must be considered independently of all the others, and, so considered, must fail, unless it be established by proof beyond a reasonable doubt.
Four alleged prior uses are located at New Orleans, — the first, of split wood pulleys, at the Feed’s Foundry, in 1876. But the spoke bars of those pulleys were straight and flush with the ends of the rim segments. The paper or leather which was wrapped about the shaft to prevent the slipping of the pulleys was not the equivalent of complainants’ bushings. The split iron pulleys testified to had their halves in contact both at the rim and hub. There were other deficiencies, but these are sufficient to show that this prior use falls short of anticipation. As to the second use, Ex-Mayor Shakespeare, of New Orleans, who was examined for defendants, testified on cross-examination that the bushings were used to fill up the difference between the size of the shaft and the size of the hole in the pulley, so as to properly center the pulley on the shaft; that set screws or keys were depended upon to keep the pulley from slipping; that, if in any case there was a space left between the two parts of the hub or rim, it was caused by sawing or splitting apart the pulleys, when in contact by reason of having been made with half patterns, and accidental; and that he never knew of an iron pulley, whole or split, to be fitted on a shaft for actual service by clamping alone, but they depended on the key or set screw to hold the pulley in place. The third alleged prior use was by Sylvanus Noyes, in 1857. Upon cross-examination it appeared that the bushings to which he referred in his testimony in chief were mere centering rings, not intended or used for compression, but used in connection with, keys or set screws; and that prior to 1884 he never knew of bushings being used for any other purpose in split iron or split wooden pulleys. It was also developed in his cross-examination that defendant’s model put in evidence to illustrate this prior use was false and misleading; that its wood bushings were obtained in 1884, from an agent, for the sale of pulleys infringing complainants’ patent. It further appeared that the so-called “bushings” in the pulley made and used in 1857 were large pieces of oak fastened to the arms of the pulley, to serve as its hub. The fourth alleged prior use at New Orleans whs by William L. Cushing, prior to 1880, and relating to bushings. It turned out that they were not bushings at all, but brass journal bearings, for use in sugar mills; and the witnesses returned to the witness stand, and, explaining how the mistake occurred, retracted their former statements. Next comes the Sibley & Ware use, at South Bend, Ind., as early as 1876, of split iron pulleys, with split iron, bushings. The pulley produced is in contact both at rim and hub, and the bushing is of iron, without any provision for it to be
The evidence of defendants’ witnesses with reference to the Strayer shop split wooden pulley is confused and contradictory, both in reference to dates and to the exhibit, which is a split-wood pulley, not bushed; and there is testimony that it has been tampered with and altered at some comparatively recent period.
The testimony for defendants relating to the “Curry, 1869, pulley,” referred to in the brief for complainants as the “Orwell defense,” is quite as unsatisfactory. The evidence of the four witnesses for defendants is contradicted and overcome by that of nine witnesses examined by complainants, corroborated by the original shaft itself, with the shingle machine [niltoy huh still remaining upon it. The next alleged prior use rests upon defendants’ exhibit, Ooher & Smith’s wooden pulleys Nos. J, 2, and 3, and their use in flouring mills at Niles, Mich., in 18T7 and 1888. Here, too, the witnesses called in support of the defense are in conflict. They are contradicted by the split wood hushing of pulley No. 2, which shows on inspection that it has never been used in a flour mill, nor clamped ón a shaft for actual service, for there is no mill dust in the open pores at its ends, hut there is on its concave surfaces, which, in use, must have been tightly clamped upon the shaft, thus absolutely preventing the access of dust. Moreover, the bushing is bored on an incline, so that, if used, the pulley would not be perpendicular or at right angles to the shaft, but upon an incline, and wabble, so as to be practically incapable of carrying a belt. Still more, the concave surface of the bushing shows that it has never been subjected to compression, and the two halves of it do not match at their edges. Half a dozen witnesses for complainants testify that no such pulleys as are desexibed by witnesses for defendants, or as are shown by the exhibit, were used in those mills until after the date of complainants’ patent. In the Fulton defense (defendants’ exhibit, Nelson Genesee Mills, at Fulton) the integrity of the witnesses called for defendants is not questioned, but that they were altogether wrong in antedating complainants’ patent was so conclusively shown as to entirely dispose of the defense. In the Aurora defense (defendants’ exhibit, Stedman & Co. invoice, 1873) the pulleys and the bushings were iron, and the pulleys were screwed to their shafts by set screws or keys. Split pulleys were never made, except on special order, and then to flt the shaft, and bushings were used only tp fill up the
■ . The Mishawaka defenses, — that is to say, the furniture company, the. Woolen, and the Bostwick, — the Allegheny defense, the Columbus, the Fairbank, the Cres'son, the Sellers, the Centennial, and the Harrington defenses, are not dwelt upon in the brief for the defendants, and they may be passed with the general finding that no one of them is sustained. This brings us to the only remaining defenses, the Taper Sleeve pulley, or Erie, and the Saginaw, which are those upon which defendants place their main reliance, and áre argued at length in their brief.
The defendants claim that it is proven “beyond the shadow of a doubt” that, continuously from 1877 to the present time, wooden ■split pulleys were made at the Taper Sleeve Pulley Works, Erie, Pa., to be clamped upon shafts, some of them by compression alone; and that the predecessor of the company operating said works had made solid wooden pulleys, held upon their shafts by compression alone, without the use of keys or set screws, from 1874 to 1877, that pulley being generally known as the “Taper Sleeve Pulley.” . Furthermore, it is claimed that this same concern at Erie made and sold, as early as 1879, metal split bushings, so that their pulleys might be transferred from shafts of larger to those of smaller diameter.
The testimony with reference to this use is too voluminous to be considered in detail. Defendants’ exhibit “Erie Split Pulley Cut” shows that the pulleys prior to 1881 were made in two solid semicircular halves, without arms or spokes, and with their meeting edges perfectly straight. It appears from testimony of defendants’ witnesses that cast-iron flanges were bolted to them at their center; that other bolts, extending from flange to flange, were provided for fastening the two halves together when on the -shaft; that dowel pins along the meeting edges kept the two halves in line with each other; that the pulley halves, held slightly apart,. were bored with an augur the size of the shaft; that.they would not come together on the shaft, but there would be an open space about an eighth of an inch wide between them throughout their entire diameter; that links were applied near the rim to prevent the two halves from flying asunder; that the pulleys were fastened to their shafts by compression alone; that they were originally intended to be fastened by compression, but a good many customers had no faith in it, and insisted upon set screws. Two of -defendants’ witnesses were silent about set screws. Until about 1884 or 1885 these pulleys were all made in the form of web ..pulleys, instead of with spoke bars, but since then they have been made with arms. From complainants’ evidence it appears that it .'was the custom to use compression and set .screws in combina
Lastly, we have what are called the “Saginaw Defenses.” Of these, the first is the use at Edward Germain’s Mill, at East Saginaw. This pulley, which is called the “Cowles Pulley,” had.its meeting edges straight and in contact. It was made solid, and sawed in two. It does not anticipate. The next is the Peige pulley. It was made with a tapering shaft hole, and could not be practically used on commercial shafting. When on a shaft of the specified size, the rims do not come together. The testimony as to dates is uncertain and unsatisfactory. This pulley cannot be recognized as an anticipation. The Gould pulley has its halves in contact throughout their entire diameter, excepting only when the bushing keeps them apart. The testimony as to the Shaw & William pulley is much of it uncertain, but, taken at its best, it shows that its meeting edges were intended to be parallel, and hence would be entirely — rim and hubs — in contact, or entirely out of contact, and not an anticipation of complainants’ pulley. Mayflower pulleys No. 1 and No. 2 do not anticipate, because the hubs and rims of No. 1 are either wholly in contact or wholly out of contact, and No. 2 is not a split pulley, and does not have its hubs separated when on the shaft. These pulleys complete the list. Taken singly or all together, they do not impair, much less do they destroy, the validity of complainants’ patent. Strongly corroborative of this view are the facts brought out in complainants’ evidence concerning the introduction of. their pulley at the New Orleans Exposition, and the subsequent demand for it, both in this country and abroad. Mr. Wallace H. Dodge, one of the inventors, took two car loads of pulleys to the New Orleans Exposition, in the winter of 1884. . He obtained a permit from the-exposition-authori
The distrust and disfavor encountered and signally overcome at the New Orleans Exposition, where were congregated skilled operators of all kinds of machinery from a great number of localities, far and near; the phenomenal growth and widely extended success of complainants’ manufacture; and the constantly increasing sales of their patented pulleys, — are facts which testify powerfully, not only to their value, but also to their novelty. The attempt to explain this away, by referring the extraordinary demand to the sudden and contemporaneous growth of the specialty manufacturing business, will hardly do, for the Taper Sleeve Pulley Company, at Erie, was in the pulley manufacturing business from 1877, and its predecessor from 1874; so> that the business of manufacturing pulleys did not spring up about the time of or after complainants’ invention, but bad been carried on many years before (ben. The evidence is clear that defendants are infringers. The decree will be against them, with costs.