132 F. 758 | U.S. Circuit Court for the District of Eastern Pennsylvania | 1904
The mechanical devices which are the subject of the present suit are designed as constituent parts of machines for knitting stockings, and have to do with fashioning0 the heels and toes. Knitting machines of this character — aside from the driving parts — consist essentially of a series of vertically movable needles, surrounded by a cylinder provided with inwardly projected cams, which form a race or course, along which, when the cylinder is revolved, the needles are forced to run by the engagement of the cams with their outwardly protruding hubs or butts. In knitting the legs and feet of stockings the full circle of needles is employed; but, when a he.el or toe is to be formed, half of them must be put out of action, and they are accordingly raised to a level where they will not be affected by the cams, while the other half continue knitting, the cam cylinder being reciprocated back and forth for that purpose. The heel or toe is formed by first narrowing and then widening, and this is accomplished by throwing up a needle at each end of the active row, with each reciprocation, in the one process, and conversely by throwing down into operation, one at each end of the idle row, with each reciprocation, in the other; and when this is completed, and full knitting is to be resumed, the half of the needles at the back of the machine which were left inactive must be thrown down in a body, so as to be in position for action again. Originally the “half back” needles, as they are called, had to be “picked up” and “picked down” by hand, and the same was true of the single needles, in narrowing or widen
It is to this improvement in the art that the appliances devised by the complainant are addressed, and there can be little doubt as to their entire effectiveness for the purpose for which they were designed. The first to be brought forward was one relating to the throwing down of the needles in the process of widening. It is covered by the patent 523,111, issued to the complainant July 17, 1894, and will be first considered. The third and fifth claims, which are the ones here relied upon, are as follows:
“(3) In a knitting machine, the combination with the cam cylinder, provided with a race for the needle hubs, of pivoted arms, throwing down spring-pressed cams or levers, movable with said pivoted arms and also having separate movement thereon, and a lever for throwing said cams into and out of operative position.”
“(5) In a knitting machine, the combination with the cam cylinder, provided with a race for the needle hubs, of spring-pressed pivoted arms, a vertically movable cross-arm engaging the same, and cams pivotally connected with said pivoted arms and being movable therewith, and also having a spring-controlled movement thereon, substantially as described and for the purposes specified.”
As shown by the specifications and drawings, the so-called “droppers” which are thus described are two in number, each made up of two arms pivoted together; one being located within, and one without the cam cylinder, and each arm being independently spring-pressed into normal place. The inner arm is cam-shaped, and has a hooked end, with which to engage the needles, and when intended to operate stands squarely in their path. Each dropper in this position is so stationed and arranged as to arrest and throw down with each reciprocation of the cam cylinder the end needle of the series advancing towards it, while at the same time it permits the passage of the whole of them unaffected over it upon their return. The mechanism by which the droppers are co-ordinated and controlled consists of double cross-arms on the outside of the cam cylinder, extending from one dropper to the other, and engaging a lug on the exterior arm of each; the said cross-arms being capable of being shifted vertically upon a central pin and slot, under control of a radially projecting lever pivoted centrally between them. The operation of the lever and cross-arms was not confined in the original invention to the droppers, but extended to the throwing-up cams or lifters as well, so that as the one were thrown into operation the others were thrown out, and vice versa; and this dou
It is conceded that there is no exact counterpart to be found in the prior art for the combination which is thus brought together in these claims. But it is contended that each of its distinctive features appears there in substantially the same form and invested with the same functions, and that it involved nothing inventive or patentably novel to combine them; or, if it be conceded that a certain margin of invention was left open, it was a narrow one, calling for a strict construction, against which the defendant, who has a special mechanism of his own, does not offend. Apart from the cam cylinder, the device embodied in these claims essentially consists of the two general elements, the droppers and the mechanism for controlling them, each' of the particular character described, and the first question is as to their independent novelty. Except upon the basis suggested, this is not material, if the whole combination is novel; but the discussion is necessitated by the argument, and in any event will not be without profit.
It is contended, however, with regard to the droppers, that the complainant is estopped from asserting that they were not anticipated by the prior art, having canceled in the Patent Office, on references cited by the examiner, that part of the original application in which this feature was specifically claimed. This would no doubt be true, if effort was now being made to hold the defendant for the use of this single feature of the combination, apart from the rest. But that is not the case. The complainant charges the appropriation of the whole invention, and it is difficult to see on what principle he should be debarred from showing the novelty of its different features, if necessary in order to maintain its validity as it was finally allowed. This is not impugning, but upholding, the rulings of the Patent Office, going to show, as it does, that the patent was properly granted, upon whatever ground assailed.
Neither am I able to concur in the further contention, which is made in the same connection, with regard to the other element of the combination, that, because of the rejection of a claim for vertically movable cross-arms controlling the throwing-up cams or lifters, the complainant is estopped from claiming that he was the first to devise controlling mechanism for a “picker” of any kind, either dropper or lifter. A dropper is not a lifter, nor able by any means to be similarly treated. But, moreAhan that, the argument that there is no patentable difference between the claims with regard to the droppers, which were allowed, and those with regard
This clears the way for the consideration of the prior art, and that with respect to the droppers will-first be considered. While July, 1893, is the earliest date that can be assigned for the successful reduction to practice of the entire invention, it is claimed that the double-jointed droppers were devised in July, 1892, a year previous. It is so testified by the complainant, as well as by his son Elmer, and the original cam cylinder which is said to have been fitted with a dropper of this character is produced to further verify it. But the complainant is a highly interested witness, and his son is not much better; nor does the cam cylinder prove anything by itself, however primitive, being adaptable to whatever date may be assigned to it. The earlier date contended for rests, therefore, upon the mere say-so of the father and son, without any corroborating or convincing circumstances, which hardly fulfills the high degree of proof required when the date of an invention is material in order to escape anticipation. Clark Thread Co. v. Willimantic Linen Co., 140 U. S. 481, 11 Sup. Ct. 846, 35 L. Ed. 521; Westinghouse Electric & Mfg. Co. v. Saranac Lake Electric Eight Co. (C. C.) 108 Fed. 231.
But, if July, 1893, is to be taken as the date, not only of the whole, but of each element, of the invention, there was no particular novelty at that time in a double-jointed dropper. This cannot be predicated, however, upon the Kelly (1889), the first reference which is cited against it. This machine shows a throwing-down, spring-pressed cam, located within the cam cylinder, in the path of the incoming needles, and adapted to yield to the outgoing ones, to which extent in form and function there is a correspondence with that of the complainant. But, in place of the exterior arm of the Eck, Kelly has a slide, on which the inner arm is pivoted, a material difference, as is proved by the use which is able to be made by Eck of his outer arm in adapting the controlling mechanism. Kelly may have had the idea of a double-yielding part, the same as Eck; but each developed it differently, and the difference is distinctive. The Mayo (1891) is single-jointed, and is admittedly only brought forward because the pivoting is outside the cylinder, showing that this was not new with Eck. To a certain extent, also, as another common feature, the droppers may be said to be spring pressed into position, but only when released from the latch by which each is severally caught and locked out at each reciprocation of the cylinder. The Hirner (1892) stands about as the Mayo, the droppers being
But, if entire novelty cannot be maintained with regard to double-jointed droppers, the same is not the case as to the co-ordinated controlling mechanism, the other element of the combination. The Dippitt and Pope (1890), it is true, shows mechanism more or less intended to act co-ordinately with respect both to the lifters and the single double-acting dropper with which the machine is equipped; and if the first claim of the patent before us was in issue, where both lifters and droppers are put together, this might be pertinent. But admittedly there are specific differences between this device and that of Eck, which is now under consideration; and this is particularly so with respect to the double-acting dropper, which the controlling mechanism does not undertake to put into operation, but only to throw and latch out, which in purpose and contrivance is materially variant. The most that can be said for this reference is that it discloses a certain character of coordination, of which a centrally pivoted rocking cross-arm is a part. The Rightmire (1889) also has a cross-arm, which moves vertically; but all it effects is to shift certain springs, so that whichever one of the lifters happens to be in a certain position may be
While, therefore, it is established by this review of the references that one of the contested features of the combination is lacking to a certain extent in novelty, the other is not; nor, admittedly, is the whole. All that can be said against the invention, therefore, taking it by and large, is that the existing art has been somewhat drawn upon. But this has ■not been without new and independent treatment, nor so but that the conjoint result, both in form and function, is the inventor’s own. Eck did not simply take the double-jointed, spring-pressed dropper of the Sedmihradsky, and pivot it outside, like the Mayo or the Hirner; but with inventive skill he gave it new and more certain action, both with respect to the incoming, and particularly the outgoing, needles.
It is contended, however, that the complainant, in view of what is disclosed by the references cited, is to be confined to his own special and distinctive mechanism, and that on this the defendant does not infringe. It may be that the invention is not entitled to any great liberality of construction, but it is not cut off from the benefit of all equivalents ; neither can I see that it is restricted, to the extent of relieving the defendant, by anything in the prior art. The question is whether the inventive idea expressed in the patent has been appropriated; and, if it has, infringement is made out. Two features, at least, of the complainant’s device, have been adopted by the defendant, with hardly a shade of modification — the throwing-down cams or inner arms of the dropper, and the vertically moving lever, extending radially from the cam cylinder, by which they are moved in and out of position. These inner arms or cams are also spring-pressed, and are pivoted upon the outer arms, moving with them and having separate movement thereon; and — fulfilling the terms of the specifications, if not of the claims — the lever is held in place by friction plates. Each of these parts, moreover, performs the same function as the complainant’s, so that form and function combine to identify the two. It is only with respect to the parts intermediate between these — the exterior arm of the droppers and the cross-arms engaging the same — that there is a difference; and this is effected solely by an overelaboration, which is hardly sufficient to deceive. The single cross-arm, which is actuated by the lever and itself engages the outer arm of the dropper, is divided up into two, which are separately pivoted, but retain the same relative position and do the same work as that of which they take the place; and the outer arm of the dropper is similarly divided up and doubled, and is given an inclined axis, and made to , swing in and out through the cam cylinder, like the Himer. But with all this the operation is essentially unchanged, not only of the whole, but of each part; and that is the significant thing. Except where form is of the essence, it has little weight (Machine Co. v. Murphy, 97 U. S. 120, 24 L. Ed. 935); and departure from it does not escape infringement where identity of operation is retained (Paxton & O’Neill v. Brinton [C. C.] 107 Fed. 137), which plainly is the situation here. Without attempting to devise anything novel of his own, the defendant has appropriated all the distinctive features of the complainant’s machine, merely making certain minor changes, which do not affect their individual function or their relation to each other. This constitutes an infringement within the meaning of the law.
“(2) In a knitting-machine the combination with the cam-cylinder of two oppositely-inclined switch-cams radially movable through openings in the cylinder-wall exterior shanks on said cams provided with retraeting-springs, a rocking lever adapted to engage one or other of said cam-shanks when moved from its central position, and a vertically-arranged shaft, provided with a cam engaging said rocking lever and adapted to operate the same, substantially as set forth.”
“(5) In a knitting-machine, the combination with the cam-cylinder, and the radially-m'ovable switch-cams having shanks, of a rocking lever having its ends arranged to engage and move said shanks inward, and a cam engaging said lever and rocking the same, for the purpose specified.”
So far as its novelty is concerned, this device is in very much the same situation as that which has just been disposed of. Certain independent features of it are to be found in the prior art, but not the combination as a whole, nor anything like it. The suggestion that it is a “mere aggregation of old elements, involving no new mode of operation or result,” I will not stop to discuss. As expressed in the more specific of the two claims, the combination may be regarded, for the purposes of this discussion, as made up of three essential parts: (a) The two oppositely inclined switch cams, radially movable through openings in the cylinder walls, and having exterior shanks provided with retracting springs; (b) a rocking lever adapted to engage one or other of such shanks when moved from its central position; and (c) a vertically arranged shaft, provided with a cam engaging the rocking lever, and adapted to operate it. The references cited go to one or the other of these separate elements.
Oppositely inclined, radially movable switch cams are not new, being found in the Sedmihradsky (1892), already referred to, which also shows an exterior shank provided with a spring. This spring, however, is not a retracting one, so as to normally withdraw the switch cams out of operation, as in the complainant’s device, but is so arranged as to project them into position, except as they are positively withdrawn and locked out by the action of the operator. Having to be independently manipulated, it might easily happen, therefore, unless care is exercised, that both cams would be found in the path of the needles, to the ruin of the work in hand. In the first Denney (1894), however, this mistake is avoided; the spring being retracting, the same as in the Eck. But here, again, there is only a single cam to switch up the needles, and none to switch them down; and the same is the case in the Paxton and O’Neill (1894). It may be that by resorting to the second Denney (1895), where just the opposite is shown, double, complementary, oppositely inclined cams, fitted with retracting springs, could be made out; and it would seem to involve little, if any, inventive skill to so com
It is urged, however, that the switch-down cam of the complainant is arranged to project further into the path of the needles than the switch-up cam, a necessary provision in order to carry down all the needles at the end of widening, in a machine operating on the two and one principle, like the complainant’s, of which we shall hear more later; .and that this differentiates it. The ordinary expedient by which the switch-up cam is made to select and raise the half-back needles, and none other, is by giving these needles longer butts, the cam being projected inwardly just far enough to engage these and escape the others; and this would be sufficient, of course, to switch them down again. But in a two and one machine a short-butt needle is always left up at the end of widening, along with the half-backs, and the switch down cam must therefore be so arranged in such a machine as to carry this down with the others, which is accomplished by the complainant by projecting the cam in far enough to catch both. This arrangement cannot be claimed for the Sedmihradsky ; for, although shown in the model exhibited, it is not in the patent, with which the model to this extent does not conform. But it is to be found in the second Mayo (1891), a two and one machine, as well as in the Rightmire (1891), and is not, therefore, novel. But, more than this, however important to the operation of a two and one machine, and whatever the use made of it by the complainant in practice, not only is it not claimed in his patent, but it is not even referred to there, the only trace of it being an obscure suggestion in one of the drawings; and it is of no possible significance, therefore, in this discussion.
The attempt to draw anything from the Paxton and O’Neill, the Rightmire, or the Mayo, by way of anticipation of other parts of the complainant’s mechanism, calls for little comment. These references simply disclose exterior controlling devices of one sort or another, unsuggestive except in the remotest and most general way. A rocking lever is shown, however, in the two Denneys, similar in form to that employed by the complainant, and acting upon studs or shanks projecting through the cam cylinder. But it is applied to the control of tripping studs, for the purpose of throwing into operation either the lifters or the droppers, whichever may happen to be desired; a different function although somewhat similarly performed. Found, as it is, in another and distinct combination, it has no relevancy, except, as it is thereby shown to be an ordinary device. But the novelty of an invention is never negatived merely by proving that it is made up of old parts. The question is whether they have been newly combined, so as to effect new and useful results, and there can be little controversy with regard to that here. The defendant has asserted the novelty of the device which he has got up by having it patented, and, while that may not be conclusive, he cannot well complain if we reach the same conclusion with regard to that of the complainant, after which he has manifestly patterned.
The defendant also unquestionably has a vertically arranged shaft, provided with a cam, which engages that which takes the place of the complainant’s rocking lever, thus appropriating another feature of the combination. This shaft takes the form of a vertical screw, the cam being made a constituent part of the operating handle pivoted upon it. The whole device, moreover, is so arranged, in exact counterpart with the complainant’s, that when in extreme position in one direction one of the switch cams is thrown in, and when in extreme position in the opposite direction the other is; while intermediately, or when in central position, both are left uncontrolled, to be kept out, under the influence of their own retracting springs. With any variation whatever, it is difficult to see how much more complete identity could be found.
It is contended, however, that in no sense has the defendant a rocking lever, adapted to engage one or other of the cam shanks, when moved from its central position; the further element necessary to realize the complainant’s combination. Instead of this, as is pointed out, there is a slide block and a handled lever, provided for moving it one way or the other; the slide block acting at either end on a bell-crank lever, which in turn engages the switch cams. But this is a rocking lever in effect, if not in form, which no splitting up into separate parts can obscure. Occupying, as it does, the same relative position, and adapted and intended to accomplish the same end, unless form is to govern, instead of substance, there is a clear equivalency between the two. Neither is there anything in the prior art which protects the defendant in his attempted substitution. We might imagine such a case if the tables were somewhat turned, and the defendant Kutz were pursuing another party for infringement of the patent he holds, assuming its validity. In that case, as I conceive, if the particular mechanical contrivance which he has adopted were appropriated, except, as we will
Free narrowing cams, or lifters, in combination with two-needle widening cams, or droppers, for use in what has already been referred to as a two and one machine, is the third automatic device in controversy. This is covered by the same patent as the one just disposed of, claims 8, 9, and 14 of which are particularly relied upon, as follows:
“(8) In a knitting-machine, the combination with the cam cylinder and the fixed cams, H' H' H2 and K K, and pivoted cams, H and G G, of the throwing-down cams, having hooked ends arranged to automatically lower two needles at the end of a raised series, pivoted arms carrying said throwing-down cams, cross-arms, E, throwing-up cams arranged to re-raise orie of said lowered needles, said throwing-up cams being independent of said cross-arms and having weighted ends.
“(9) In a knitting-machine, the combination of free narrowing-cams with widening-eams constructed and arranged to throw down two needles at once.”
“(14) In a knitting-machine, the combination of the needles, narrowing-cams independent of controlling devices, and widening-cams constructed to engage two adjacent needles.”
In the first of these we have a specific combination of the customary stitch cams for straight knitting with two-armed pivoted throwing-down cams, or droppers, of the same character as those described in the first patent, except that they are arranged to throw down two adjacent needles, instead of one; similar cross-arms for co-ordinately controlling them; and throwing-up cams or lifters, independent of such control and calculated by reason of their weighted ends to fall into operative position when not otherwise raised out of it. The other two claims are broad ones, for the two single elements of narrowing cams, either free or independent of controlling devices, and two-needle widening cams; the distinction between the two, which admittedly is a narrow one, residing in the description of the narrowing cams, which, speaking subjectively, may be said to be free when they are so arranged as of themselves to be always in operative position to perform the work required of them, and to be independent df controlling devices, speaking objectively, when, differentiating them from such machines as the Mayo and others, every device of the kind for any purpose, and whether in operation or out of it, is dispensed with. While the difference between the two may seem slight, I am not prepared to say that it is not substantial, nor that both may not be necessary to protect against the possible ingenuity of infringers. Assuming the three claims to be valid,
The discovery of the complainant, which is the basis of the invention embodied in these claims, was that in a machine operated ora the two and one principle, throwing-up cams or lifters, so pivoted as to fall into operative position by their own weight, could be left free, and controlling devices such as he had made use of in his earlier patent could be discarded. As these were to be found extensively elabórated in every existing machine, this was a material advance in the direction of more complete automaticity, the recognized objective of all inventive effort in this branch of the art. The way this is worked out is most interesting. In the two and one process, the stitches along the seam or gore, which unites the two sides of the heel, are made by drawing down two needles at each end of the idle series with each reciprocation of the cylinder; but as this, without proper compensation, would lessen the number of the stitches, which must remain unchanged, one needle is thrown up again to make this good. In adopting this method of knitting the throwing-down cams or droppers are enlarged, so as to engage and carry down two needles, instead of one; and the lifters or throwing-up cams, to counteract this, are left in operation in widening, the same as narrowing. Where this is accomplished by means of free lifters, they are allowed in full knitting to ride uncontrolled on the needle butts, which hold them out of place by the unbroken front which they present. But when the point for narrowing is reached, and the half-back needles are switched up, a gap being made in the line, the lifters fall into position for appropriate action. As then the advancing series of needles encounters them, the first needle is thrown up out of operation, while the rest continue on along the stitch cams unaffected, the intervening butts preventing the lifters from falling back until all have passed; and the same is the case throughout the process of widening, the two needle droppers being simply thrown in when it is to begin. When widening is completed, and the halfback needles are thrown down by the switch cam, the gap in the line of needles being closed, the lifters ride on the butts as before. In all the three steps, therefore, of full knitting, narrowing, and widening, the lifters are self-controlled; their action being unfailingly secured simply by the manipulation of the other parts, by which the change from one process to the other is brought about. The adoption of this as the approved practice in modern automatic knitting abundantly attests its utility and value as a material contribution to the art.
It is strenuously contended, however, that the complainant was not the original or first inventor; this honor being claimed for J. A. Burleigh, who was associated with C. E. Boyden and Rodolph Berry in the Providence Knitting Machine Company, of Providence, R. I. This company was organized by Burleigh some time in the summer of 1894 for exploiting a knitting machine called the “Victor,” in which semi-automatic heads furnished by the Boss Knitting Machine Company under the first patent in suit were used; and it is asserted that free lifters, in a two and one machine, were devised by him and put into operation at the company’s works in November or December of the
To relieve from the stress of this, it is urged that Burleigh did not withdraw after the facts had been developed by testimony and an adverse adjudication made against him, but before anything of this kind had taken place, and by way of compromise. In proof of this it is pointed out that, while Rowe took out a license for which he paid $300, the Providence Knitting Machine Company, with whom Burleigh was associated, received as a consideration for his disclaimer a free license to make, use, and sell machines in accordance with the invention within the United States during the full life of the patent, and to authorize others to do so; the only restriction being that there should be no sub-licensing. Undoubtedly this makes the withdrawal less significant than if it had been purely voluntary, the rights secured to the Providence Knitting Machine Company being almost equivalent to a divided ownership, and the case does not present the features, therefore, to be found in Shoemaker v. Merrow, 61 Fed. 945, 10 C. C. A. 181, on which reliance is placed. But, if the battle was somewhat of a drawn one, the honors were with the complainant; priority of invention being conceded, whatever he had to part with to obtain it. He may have bought peace at a large price, but not without a distinct and unqualified admission that he was the real inventor, the effect of which must be faced.
How-far, then, has the result of the interference proceedings been overcome? The date assigned to the invention by Burleigh, as already stated, is November or December, 1894, when cam cylinders with free lifters and two-needle droppers are said to have been constructed at the works of the Providence Knitting Machine Company. Several parties who were in the employ of the company at that time testify that this was done, and particularly Kimball, Wiggin, and Jones; the first two producing the cam cylinders which they claim to have so changed. There are some discrepancies in their stories, but it is made clear by other evidence that by the last of January, 1895, at least, the Providence Knitting Machine Company had developed cylinder heads of this character ; and, as such things are not made in a day, credence is thus given
“We narrow up our needles in the usual way. * * * Then we throw the throwing-down cams into action, and widen by throwing down two needles at a time; and after we have thrown down two needles we raise one, the throwing-up cams being always in action.”
Here is unimpeachable documentary proof of the complete realization of the invention in a commercial machine, and it requires but little in the face of it to convince one that the parties were possessed of it, as they claim, in November or December, a month or two previous. On the strength of it we may also properly accept the statement that it is this that is referred to in the letter of January 21 to the Boss Knitting Machine Company, dictated by Burleigh, in which he declares that they had overcome the trouble with the dropping of stitches at the heel and toe, as well as cheapened the cams; and that the call for unhardened droppers, which appears in the letters of January 21, 26, and 29 had also to do with the same matter; it being shown by Kimball and others that, after various experiments, two-needle droppers were found to be best made by obtaining them in that condition, filing them out so they would take two needles, and then hardening them.
The conclusion which is so reached renders it unnecessary to discuss at any great length the Deininger incident on the one hand, and the alleged communication to Eck of Burleigh’s invention on the other; a part of the case which is the subject of much controversy. With regard to Deininger, I am not convinced that he was anything more than a self-constituted spy, and that is evidently all that Eck thought him, being content to resume relations with the Providence people, notwithstanding they had been in communication with him. It is no credit to the members of that company that they were ready to avail themselves of Deininger’s offer to sell the information which he claimed to have as to certain improvements which Eck had in contemplation. And it is undisputed that they paid him money and took him to their patent solicitor at Washington, while he was in Eck’s employ and confidence; nor can the odium be shouldered altogether onto Burleigh. But whether they repented of it, or whether Deininger — impostor as well as informer — had little or nothing to disclose, particularly after Eck had found him out and discharged him, they threw him over in the end, and made a clean breast of the matter to Eck, to whom Deininger also meanwhile had confessed. While, as it turned out, the incident is without significance, such an attempted theft of the ideas of another as is indisputably shown would warrant the most extreme presumptions, if there was occasion to apply them.
But, whatever the burden cast upon the complainant, in my judgment it has been fully met. It is clear that as early as July, 1891, Eck had a complete conception of his present device, substantially as it is now asserted, reducing it, also, to practical form; and although, for reasons of his own, he let the matter rest for upwards of three years, there was no abandonment of his ideas, which he put into still more exact shape in September, 1894, some two months prior to the earliest date assigned to the discovery by Burleigh. The attempt is made to charge Eck with having got his original impulse from Kelly, with whom he had some dealings, in the effort to exploit a joint cylinder head, and to a limited extent this may be true. Kelly says that in 1885 he had a two and one machine, and disclosed in 1889 to Eck his experiments with it, with which Eck was carried away, and thought he ought to apply for a patent. But, whatever Kelly had, he abandoned it as impracticable, and if Eck got any ideas from him he made them his own. The earliest form in which they took definite shape was in July, 1891, as already stated, when Eck rigged up one of the Eck-Kelly heads, which he had, with lifters and droppers. The lifters in- this device were so arranged as to be without control, except as they were drawn down into place by exterior set springs, being thus always in operative position; and the droppers were enlarged, so as to take down two needles, instead of one. The head in this shape was put into a machine and stockings
It is said, however, that the idea, such as it was, was given away to Yocum, who made use of it in his mills for a number of years, and that all that there was of patentable invention thus became public property. It seems that after Eck had shown to Yocum the machine which he had, and had told him that the two and one method was the remedy for preventing dropped stitches in the heel and toe, Yocum put it in practice on one of his machines, making use of the automatic lifters with which it was fitted to raise the one needle, and throwing down the two by hand, and that this was kept up until a few years ago, when it was supplanted by the present machines. But this, at the best, was nothing but a crude and imperfect use of the two and one method, admittedly old, aided by automatic lifters. And while it is true that these must have been left in operation in widening as well as narrowing, the significant thing is that in no sense were they uncontrolled. In addition, therefore, to the circumstance that no droppers were used, it falls far short of realizing the complainant’s invention, or any part of it. The public had nothing when they had it all.
But it is said that whatever was accomplished by the complainant in 1891 was not followed up, and must therefore be regarded as an unsuccessful and abandoned experiment. It is no doubt the case that little further was done with the subject of free lifters until some three years later; the complainant being occupied meanwhile with the affairs of the Boss Knitting Machine Works, which he organized at Reading in September, 1891, and which was taxed to its full capacity from the start in turning out the so-called “Boss Machine,” fitted up with lifters, but -no droppers. The fact,, also, is that Eck was hampered for want of a satisfactory dropper, and until he had produced one his ideas could
But in that month Eck attended a knitting exhibition at Blood Bros. & Jackson’s, at Philadelphia, to which Burleigh had brought two attempted full-automatic Victor machines. These machines, instead of the customary weight, had a sinker top to feed off the knitting; but according to Eck they made bad work on the heel and toe, this arrangement not being particularly effective, except in a two and one machine. For this, however, he had a remedy, and the opportunity for developing his dormant ideas seemed at last to be at hand. Returning to Reading, he set to work again on a machine which should combine the advantages he had seen with those which he himself was able to contribute, and he soon produced the desired result. Taking a cam cylinder, such as the Boss Knitting Machine Company was then putting out, he cut off 4he heels of the lifters, leaving them free and uncontrolled, and replacing the droppers with others having a larger lip, which would take down two needles, instead of one. By these changes, slight though they were, a new character of machine was produced. The original has been hunted up and put in evidence, and bears out all that is said of it. In October, 1894, Eck showed it to his son, Edwin H. Eck, who had returned to Reading and gone into the employ of the Boss Knitting Machine Works, the date of which, as fixed by the books of the company, was September 25; and a few weeks later Edwin showed it to his brother Elmer, without his father’s knowledge. It was not shown to the defendant, Kutz, however. A controversy having arisen between him and Eck with regard to the payment of royalty to the latter on his earlier patent, which Kutz did not like, and the difficulty by this time having become acute, Eck concluded to keep things to himself. The reason why Kutz did not discover the machine was probably because it was kept covered in a box in a corner. If it seems odd that nothing was said about the invention to Miss Diefenderfer, a relative and business associate, and yet that it was confided to Deininger, an entire stranger, idiosyncrasies of that kind do not necessarily have
It is manifest, from this detailed review, not only that the complainant was the real author of the invention, but that nothing can be made out of his failure to make use of.it for three years after the original conception. Except the mere fact that he let it lie dormant, there is nothing to show that he intended to abandon it, and the sequel abundantly proves that he did not. He simply waited for a proper opportunity, and when it came he seized it. An inventor, if he keeps his ideas to himself, can take his own time to develop and perfect them, subject only to the risk that others meanwhile may become independently possessed of the same. Bates v. Coe, 98 U. S. 31, 25 L. Ed. 68; Consolidated Fruit Jar Co. v. Wright, 94 U. S. 92, 24 L. Ed. 68. To obviate this, howéver, he is held to the exercise of reasonable diligence; but the neglect of it goes merely to the question whether he should be given a patent as against another, who is seeking it for the same device, or whether, having obtained it, he is entitled to assert it against intervening rights. It has no bearing on the question whether he was the original and real inventor, which is the issue here; nor, it may be added, is abandonment to be predicated on mere delay. Mast, Foos & Co. v. Dempster Mill Mfg. Co., 82 Fed. 327, 27 C. C. A. 191.
In whatever way we look at it, therefore, the complainant is entitled to maintain his own priority. Not only is his invention carried back by satisfactory evidence to the earliest date assigned for it, in July, 1891, and due diligence under all the circumstances established therefrom ; but, even if this were not so, and the question of diligence were material, by the second reduction to practice in the summer of 1894 he anticipated by a sufficient margin his immediate competitor, Burleigh, and still retained his lead. If it be said that the proof of the latter depends on the testimony of the complainant and his two sons, mindful of what has been ruled above, it may be answered that, not only do they tell a consistent and convincing story, but, in view of what was accomplished by Eck in his earlier efforts in the same direction, it naturally requires much less evidence to persuade the candid mind of its truth. Material corroboration is also to be found in the changes which were made in Nolde & Horst’s mill in the latter part of 1894 or first of 1895, which the defendant himself has proved; for, allowing a suitable interval prior to that for the development of the invention before it was put into actual use, for which two or three months would seem none too much, practically the same result is reached.
It is further urged, however, that according to the recitals of the patent in suit the present invention is merely an improvement on the prior one, and that this not only discredits the pretensions of the complainant, by which he seeks to carry it back of that, but that, in accepting the patent in that form, he bound himself to this as an essential condition of the grant, which estops him from asserting anything to the contrary. But no such result necessarily follows. Even if the invention, by reason of the recitals referred to, is compelled to take its place in the art as an improvement, there is nothing in this which precludes the complainant from establishing, if he can, that the inventive idea of which it is the embodiment was antecedent to that. He did not have to put all his ideas into the prior patent, at the risk of losing them; and while the fact that nothing was there brought forward such as is now contended for may furnish an argument against its existence, based on the probability that he would be, likely to make use of what he had at the earliest opportunity, it goes no further. Undoubtedly, with respect to the former machine, 'the present device is an improvement; but the relation, and the conception of the idea, are two separate and distinct things, and the inventor cannot be said, in the recitals as to the one, to have made any representation or avowal as to how or when he became possessed of the other.
Accepting, then, the conclusion, which, as shown by this discussion, is sustained by the decided weight of the evidence, that Eck was the original and real inventor, the further question remains whether anything patentably novel is to be found in the claims under consideration. There was nothing new, of course, in the use of the two and one process 'of knitting. Mayo employed it successfully, with the same co-operation between lifters and droppers by which one put up one needle as the other threw down two. But in the Mayo machine the lifters and dropoers, as we have already seen, were successively -thrown and latched
Neither can it be successfully said that lifters, uncontrolled, except by springs or their own weighted ends, such as the complainant himself makes use of, were old in the art, and that novelty is therefore made to depend on the mere circumstance that the lifters are left in operation during widening as well as narrowing, which is effectively met by the Mayo. It is true that in the references relied on for this position — the Kelly, Hirner, Paxton and O’Neill, Reid and Stevenson, Breaithwaite and Heprvorth, and prior Boss machines — the lifters are so arranged that they fall or are projected into operative place when the influence of the devices by which they are controlled is withdrawn. But these devices are present in each, and are potential factors which cannot.be put out of the account. Eck’s discovery was that they could be, and the lifters be left to take care of themselves during every part of knitting, provided the two and one process was used; thus differentiating from every other machine which had preceded him in the art, the Mayo as well as the rest.
It is said, however, that the patent nowhere suggests that the lifters are to ride free on the needle butts in full knitting, about which so much is made. It is true that nothing is specifically said upon this subject, but the omission is not material. The operation of the lifters, as affected by the passing needles in the process of narrowing and widening, is given at large in the specifications; and where, as in claim 14, they are to be independent of controlling devices, the other is necessarily implied. It is well established that an inventor is entitled to everything clearly residing in his invention, which is not lost to him be
It is further contended, however, with respect to the eighth claim, that the combination which there appears is identical with that which is to be found in the first Eck patent, excepting certain slight structural changes made necessary to adapt it to two and one fashioning. But the distinction between the two is not to be slurred over in that way. It is true that in general character the two combinations are alike; but the changes from one to the other, though slight in extent, are significant in effect, being nothing less than the freeing of the lifters from control, whereby the automaticity of the machine is sensibly increased and a material advance in the art attained.
The effort is also made, by an involved and somewhat refined argument, to dispose of the claims under consideration, by first impressing upon them separately a certain construction and then offsetting them the one against the other, in this shape, so as to make them mutually destructive. It is said, for instance, that, in order to distinguish and save claims 8 and 9 from claim 14, they have to be made broad enough to cover a machine in which the lifters do not ride freely during full knitting, but, on the contrary, at some stage, require direction by the operator, or by the machine itself (other than that effected by the needle butts); or, in other words, a machine in which full knitting is not taken into account; thus carrying the claims beyond the scope of the invention, from which, according to the complainant, the action of the lifters during full knitting cannot be left out. On the other hand, with respect to claim 14, it is charged that, dealing on its face as it does solely with narrowing and widening, the only independence of controlling devices material to that combination is independence during the process of fashioning, to which the qualifying description of the lifters must consequently be understood to refer. Novelty, as it is said, cannot be predicated upon anything outside of this, such as that the lifters ride freely on the needle butts during full knitting; this being nothing which results from the co-operation of the elements combined. In function and mode of operation, according to this, claim 14 is the same as claim 9, and to make it otherwise you have got to import into it something which is not of the essence of the invention and is not specified as stich in the patent; and the proposed construction that “independent of controlling devices” means independent at all times, whether in operation or out of it, thus not only carries the claim outside of the process to which in terms it relates, but also beyond anything to which the patent itself lays claim. By this line of argument, as it will be noted, claim 9 and claim 14 are both held bad upon the same ground, to wit, that, according to the construction required to be severally given them, each is carried beyond the bounds of the invention. It is curious to observe, however, that in order to effect this the invention is made to shift; being extended in the one instance to include full knitting, which, quoting the complainant, it is said cannot be left out of the account; and in the other being confined to fashioning, with the right to consider full knitting denied. All this, in the effort to distinguish the two claims, so that one peradventure may be saved. But it is manifest that on no true and consistent basis of
Finally, it does not detract from the invention that certain operatives in Nolde &.Horst’s mill, using the earlier Eck machine, allowed the lifters to go uncontrolled in full knitting, if that was in fact the case. At most this was merely an accidental and unappreciated use of one feature of the invention. The lever controlling the lifters and droppers, as a matter of supposed handiness, was simply left down until widening was reached. The result, of course, was that the lifters rode on the needle butts during full knitting; but they had eventually to be thrown out, and were therefore in no sense free or uncontrolled. The invention was thus far from realized, nor was anything of benefit contributed to the art. The only thing that can be made of the incident is the argument that there was nothing of invention in what Eck did; the possibility and advantage of allowing the lifters to ride free on the needle butts being shown to be obvious to persons of ordinary ability. But the answer is not far to find. Jepsen, although supposed to be entitled to the merit of the discovery that this could be done, and skillful as he undoubtedly was beyond the average, saw nothing further in it until his eyes were opened, but realized at once, when they were, how valuable the use which Eck had made of the idea was for the knitting art. Whatever the possibilities, therefore, it required the insight of inventive genius to recognize them and carry, them forward into new and useful relations, which were by no means obvious to the ordinary mechanical mind.
Convinced, therefore, as I am that, notwithstanding all that has been said against them, these claims, as well as the others in suit, are valid and have been infringed, and the complainant being thereby shown to be entitled to recovery upon all the issues raised, the bill is sustained, and the defendant directed to account.
Specially assigned.