75 F. 17 | 6th Cir. | 1896
(after stating the facts). The decree of the circuit court must be reversed for two reasons: First, because the Colby patent, in view of the state of the art, did not involve patentable invention; Second, even if the Colby patent can be sustained, its scope is so narrow, in view of prior inventions, that the defendants’ device is not an infringement.
The object of Colby’s device was to permit the movement of a stem-winding watch to be lifted out of the case, and freed from the stem arbor or key, by withdrawing the key from its connection with the movement back into the stem, and so securing it in both its outer and inner positions in the stem that it could not be moved from either to the other without an effort. The outer and inner positions of the key were secured by spring latches. The spring latches were effected by a spring attached either to the inside of the stem,-or to the key, the ends or shoulders of which took into or struck against annular grooves or shoulders on the other piece. It was old in the art to permit the movement of the stem-winding watch to be removed from the case by withdrawing the key back into the stem. This is shown in the Fitch patent issued October 28, 1879. It has the ordinary stem and stem arbor. The stem arbor projects into the movement, and engages the winding arbor. A spiral spring, working between a shoulder on the inner end of the stem arbor and the inner end of the pendant or stem, holds the stem arbor in engagement with the winding arbor. When the movement is to be removed, and it is desired to retract the stem arbor, the owner or operator pulls the crown of the stem arbor outward, overcomes the force of the spiral or helical spring, and withdraws the stem arbor into the stem sufficiently to permit the lifting of the movement out of the case. A similar patent granted to Fitch, with the helical spring placed inside the stem, instead of inside the case, was an earlier patent by the same inventor. The Fitch patent, it will be observed, had not the spring-latch feature of the Colby patent. The spiral spring operated merely to hold the stem arbor, by the constant force of the spring, in operation with the winding arbor; and the spring pressure had to be overcome by the operator, and continuously overcome, while the stem remained retracted. The Fitch patent does show, however, the retraction of the stem from one position to another for the purpose of releasing the movement, and it uses as an agent in maintaining one of the two positions a spiral or helical spring. It presents the same short stem arbor that we find in the Colby patent. The Lehman patent is for a stem-winding and stem-setting watch; that is, a watch in which the key in the stem extends into the movement, and may be adjusted.
The fact that for a time the defendant was a licensee of the Colby patent cannot, of course, estop the defendant from disputing its validity in a suit for infringements charged to have taken place after the license was withdrawn. Such a fact, in a doubtful case, might have considerable evidential force as an admission of the validity of the patent by the licensee. Here, however, we do not have a case involving doubt. More than this, the license embraced the Fitch and the Fisher & .Lucas patents, and the admission contained in the act of accepting the license thereby loses much of its weight.
Another ground relied upon, and strenuously pressed on the court, for holding that the Colby patent involves' invention, is the fact that it has gone into very general use. The Colby device is used chiefly in stem winding and setting watches, and not in a stem-winding watch, for which it was invented. It is used in connection with movements made under the Church patent, which we had to consider in the case of Watch Co. v. Robbins, 22 U. S. App. 601, 12 C. C. A. 174, 64 Fed. 384. The in and out movement of the stem arbor of the Colby patent was, when united with the Church patent, readily adapted to shift the winding and hand-setting train from one engagement to the other; and, as the patents were owned by the same persons, the Colby device came to be largely used with the Church movement. Its extensive use is due rather to the meritorious character of the Church invention, than to the fact that it has supplied along-felt want in the field of watchmaking. Extensive use is only an element to be considered in a case where patentability and invention are doubtful. Where, as here, the extended use can be attributed
2. Even if the Colby device is to be sustained as valid, the prior art is so close to it that its scope must be narrowly limited. The defendants’ device does not contain a spring attached either to the stem or to the key. It is attached to a hollow nut or threaded cylinder, which moves with the rotation of the key, and saves the grinding of the spring ends in the annular grooves, or against the annular shoulders, and performs the same function in a somewhat different way. Unquestionably, if the Colby patent could be held to be a pioneer patent, and one requiring a broad construction, we should hold that the latch spring contained in the Colby patent is seen in the defendants’ device. But the Colby patent must be limited to the particular form shown, and in this view there is a distinguishing difference in that the spring in the defendants’ device is not attached to either the key or the stem. It is held in position inside of the stem in a different way, — a way which enabled the inventor to prevent the friction of the spring end against the stem or the stem arbor during the rotation of the stem arbor. This is enough to escape infringement. The learned judge at the circuit held otherwise. An examination of his opinion satisfies us that he gave much too wide a scope to the object and the result of the Colby patent, and that the benefits which he pointed out are due wholly to its connection with the Church movement in a stem winding and setting watch. Of course, Colby would be entitled to any benefit which might come from the use of his device in a stem-set watch, although he might never have contemplated its use in such a watch. But the argument that his device must have novelty and invention in it because of its extensive use must fail when it is seen that the extended use finds its explanation in the novelty and utility of the Church movement, with which it is sold, and not in anything either novel or strange in the mechanism of the Colby stem. The decree is reversed, at the cost of the appellees, with instructions to dismiss the bill.
