251 F. 903 | D. Maryland | 1918
The plaintiff is the owner of three patents, one to Conradi, No. 1,129,456, February 23, 1915, and two to Kruse, namely, No. 1,081,050, December 9, 1913, and No. 1,244,056, October 23, 1917. It charges infringement of the eleventh claim of Conradi, of the second, third, fourth, and fifth of the earlier Kruse, and the second and fourth of the later. The defendant has purchased and has used the machine alleged to infringe. The case was defended by the manufacturer, the Torres Wold Company of Illinois.
The machine has at one end a hopper, into which a pile of tin blanks, cut to a proper size for making a can body, are put. Out of the other end comes the completed can. In the course of its travels, the blank is subjected to a number of processes. The pending controversy involves two of these.
“Means within the hopper for supporting the blanks at points spaced inwardly of the periphery of the blanks.”
These means are the raised ledges which he placed at the ends of his plates or shelves, or some fair equivalent for them. The defendant’s machine has nothing but flat shelves. There is neither a raised ledge nor a substitute for it. The plaintiff, however, contends that the edges of the plates fulfill the same function as Conradi’s ledges, although less perfectly. Conradi did not think so. The claim, if it means what plaintiff now says it does, would be invalid. It did not take the genius of an inventor to discover that a pile of blanks may be supported upon shelves. Conradi’s invention consisted, as he himself plainly declared, in giving to such shelves a peculiar construction, which he thought accomplished a useful purpose. For that he was entitled to a patent, but such construction is not found in defendant’s machine. It follows that the eleventh claim of the Conradi patent is valid, but that it is not infringed.
“Supporting plates in the hopper adjustable on the hopper transversely towards and away from one another, whereby the amount of the sag of tha sheets between their supported ends may be regulated.”
The plates so described differ from those of the prior art, with Conradi's ledges or without them, only in that their inner- edges may be moved towards or away from one another, so as to regulate the extent to which the nonsupported middle portion of the blanks will sag. The year of„our Tord 1913 was rather late in date to discover for the first time that,- the shorter the length of an unsupported center, the less sag there will be. There might have been difficulty in introducing into the self-feeder means for making such adjustments. If so, invention might conceivably have been exercised in overcoming it, although, in view of the innumerable adjusting devices then known to the art, it seems improbable that it would have called for anything more than the aptness of the skilled mechanic. Into that question, however, it is unnecessary to go, for the claims in suit are not limited to any special character of adjusting means, and are for that reason invalid.
Positioning Devices.
In his earlier patent, Kruse describes a machine in which gripping fingers.with a reciprocating action carry the blank forward, and on their return bring it back against stops. The second and third claims of that patent cover such a device. In his later patent he substituted, for a backward pull of the fingers, a push in the same direction, to be given by a- cam-faced bar or blade, so adjusted and shaped that at the proper moment it rises up and forces the blank back against the stops. The idea common to both is ingenious. To embody it in a working machine called for a number of adjustments, not necessarily obvious. To hit upon it and to reduce it to practice may well have been invention, always provided it was then new in the art. The defendant says that it was not, and that it was embodied in two machines built for the American Can Company, one in 1909 and the other in 1911. The filing date of the earlier Kruse patent was February, 1913. These machines are still in use. If they were originally built as they now are, they
The plaintiff argues that, even if so much be found against it, the claims in suit are not thereby invalidated. It says that the American Can Company deliberately concealed or suppressed the knowledge of its invention, and thereby subordinated its claim, in accordance, with the general policy of the law, in the protection of the public interest, to that of another and bona fide inventor, who, during the period of inaction and concealment, gave the benefit of the discovery to the public. It cites the declaration of the Court of Appeals of the District of Columbia, that, viewed in the light of the true policy of the patent laws, the later inventor is in reality the first to invent, and is therefore entitled to the reward. Dieckman v. Brune, 37 App. D. C. 399. There is no doubt that an inventor who makes up his mind not to j latent his invention at all, or not to patent it until he thinks some one else is about to invade his monopoly, forfeits all right to a patent. Macbeth-Evans Glass Co. v. General Electric Co., 246 Fed. 695, 158 C. C. A. 651. To whom does the benefit of the forfeiture inure — the public or a subsequent inventor? The question cannot arise unless the earlier inventor has kept his invention absolutely concealed until after the conception of it by the later; otherwise, the second man would not be the inventor of something not before known or used in this country. We are not in this case concerned with an invention once made, and, even if to á limited extent reduced to practice, after-wards thrown aside, a.nd its úse altogether abandoned. In such cases, the Supreme Court has likened the reinvention to a rediscovery of an old art. Gayler v. Wilder, 10 How. 477, 13 L. Ed. 504. In many cases, in which are to be found expressions relied upon by the plaintiff, there was more or less doubt whether the invention in controversy therein had ever been perfected by him who was said to be the first to make it. The evidence left it doubtful whether it had ever amounted to anything more than an unsatisfactory and abandoned experiment. The fact that it was used but for a short time, if at all,
In the case at bar, the anticipating machines have, ever since they were built, been in daily extensive and successful commercial operation. Were they so designedly hidden from the public knowledge that ‘they cannot.be held to have anticipated the subsequent invention of Kruse? If there is such exception as plaintiff claims to the rule that no patent may validly issue for anything known or used in this country before its invention by the patentee, it is one which must be confined within narrow bounds. It will not be usually easy to make sure that the first inventor or user had been successful in keeping that, which he was doing dr using an absolute- secret. In spite of all his precautions, some hint, suggestion, or rumor of it may have come indirectly, if not directly, to the second Richmond. In the instant case, the testimony shows that the very draftsman who had prepared the designs for the anticipating machine subsequently left the can company’s employ and went into that of the plaintiff, and that, too, at a time prior to the filing of the earlier of the Kruse applications. There is no evidence that he or anybody else ever told Kruse anything about the can company’s machine. Nevertheless, if he had, there would have been slight chance of the testimony developing the fact. To find out the real truth in such matters is well-nigh impossible. The second inventor may have himself forgotten, or never clearly appreciated, what originally put the inventive idea into his head, and yet it may well have been something said or suggested by one who, all unknown to him, had some information as to the earlier device. Into such inquiries it will seldom be profitable to go. They will be unnecessary, if we hold fast to the letter of the statute, which forbids the patenting of anything before known or used by others in this country, admitting such exceptions to it only as are clearly recognized and precisely defined by decisions of courts of controlling authority. It is believed that, if any such exception as that contended for by the plaintiff has been so established (and it is not intended to intimate that it has been), it is limited, so far as concerns inventions which are clearly anticipations and have been in continuous use, to cases in which (a) the first inventor had deliberately made up his mind to practice his invention secretly, because he thought he could thereby make out of a monopoly in fact more than he could obtain from one legally given by the patent laws, and (b) in which there was proved to demonstration that his efforts to keep the invention secret had been absolutely successful.
In this case there is no evidence that the American Can Company made any special effort to hide this particular invention. It is abundantly shown that it was its practice to exclude the public from its factory, but none at all that this policy was dictated by a wish to keep the construction and operation of these particular machines hid
The second and third claims of the earlier Kruse patent, and the second and fourth of the later, must accordingly be held invalid, because they are for something before known and used in this country. Six of the seven claims in suit having been held invalid, and the remaining one not infringed, the hill must be dismissed.