244 F. 463 | E.D. Pa. | 1917
The discussion of the merits of this cause has taken such a wide range and there have been brought into it so many and such various features that there is danger of the mind being swamped by the mass of details. It is further, because of this, difficult to get a firm grasp of the features which present the points really in controversy. The fact that there are three patents involved (one of which has been surrendered and reissued), and that the device as manufactured and used by neither the plaintiff nor the defendant embodies all the patented features of all the different patents, adds to the difficulties of an adequate presentation in small compass of the dispute. The fact is that the device as used is not the device patented by any one of the patents, nor even described in the application except in so far as it is the device described in the third patent application, some features of which are patented. These patented features do not lend themselves to conj oint use in any proper sense of the term.
Neither of the parties to this litigation are in a position to deny the broad fact that the devices with which we are concerned called for invention, because we find each of them successfully asserted before the Patent Office inventive merit in their respective constructions. The question presented is the narrow one of whether the device of the plaintiff was anticipated by prior patents or prior use or whether each of these devices is in possession of a limited field upon which the other does not encroach. The original of the first Ellett patent was No. 982,042, applied for May 27, 1910, and issued January 17, 1911; reissue applied for October 28, 1911, and granted April 15, 1913, No. 13,554. The claims in issue are 1, 4, and 5. These are all combination claims. As in motorcycles the engine shaft is independent of the wheel shaft, engine power locomotion is imparted to the vehicle by the locking of the two shafts. It is, however, at times necessary that one may be running when the other is not, or that each may be running at the same time in entirely independent rotation. This necessity calls for a third member by which the two may be coupled at the will of the driver of the vehicle. To afford the proper control, this third member must not revolve with either of the others when they are not revolving in unison. The driver must be able to engage or disengage the clutch at will and graduate the completeness of the interlocking of the two rotary members. This is accomplished by a screw and nut or screw cam. An instant complete interlocking of the two members when one was rotating at high speed would obviously be objectionable, as would a like instant complete disconnection. To overcome the difficulties
The second Ellett patent applied for February 16, 1911, is No. 1,018,890, issued February 27, 1912. The claims’ in issue are 1, 8, 9, 11, and 12. These are likewise all combination claims. The designed dutch which the patentee had in mind was one substantially like the design shown in the Ellett first clutch, but embodied the idea, of an advancement, in that instead of the interlocking pressure being applied by the operator up to the maximum, this maximum was normally applied by means of springs, and the pressure was graduated by the operator through a releasing act. The mechanical difference in construction is that the screw cam mechanism in the place of being used to directly exert pressure of disc on disc is used to press back the action of the spring so as to' release the pressure which the spring would otherwise cause to exist between the. discs. This second patent discloses two ways of accomplishing this improvement. The advancement thought is made clear by an understanding of either.
Next in chronological order of application and issue is the Harley patent under which the defendants manufacture and justify. The date of the application is October 9, 1911; the number of the patent 1,020,199, and the issue date March 12, 1912. The claims of this patent are very limited, and admittedly protect only special forms of construction.
The third Ellett patent was applied for April 15, 1912; bears the number 1,071,992, and was granted September 2, 1913. The only claim in issue is claim 1. This as all the others is a combination claim. The file wrapper discloses the fact that this claim was rejected on the patent to Harley. The objection was met by an affidavit carrying the date of the invention back to a date prior to October 9, 1911, the date of the Harley application. Incidentally there would seem to be an error in defendants’ paper book which gives the Harley application the date of April 9, 1911. Without going into any discussion of the differences of construction between the respective devices of the plaintiff and defendant, or between that of the defendant and the design of the devices disclosed by the Ellett first and second patents, but, leaving this where it is left by the experts upon the one side and the other, supplemented by the arguments of counsel, we content our
Our further conclusion is that [here is no substantial ^identity of combination use of what was described by the prior art in the device of the defendant and the devices disclosed by either the Ellett first or second patent. Each inventor did what he had the right to do. He went to what the prior art had in store, making his own selections therefrom and adding any improvements of his own devising which would cement tire combination he had formed. This combination became his exclusive property as a combination unless its substantial like had been before found. The conclusion above stated results in a finding of no infringement of either of these patents. Neither this conclusion, nor the resultant finding, applies to the first claim of the third patent. There is in the device the design of which is disclosed in the Harley and the third Ellett patent a more than substantial likeness. These conclusions are consistent with and find some confirmation in the Patent Office experiences of the several applications. The claims of the Harley patent were allowed without the suggestion of an interference or other claim of conflict with the patents before granted to Ellett. Claim 1 of the third patent was rejected because of the existence of the Harley patent. The respects in which the conception of the device which was in the mind of Ellett as described in his application for his third patent was an advancement upon the prior art were that 'without sacrificing the superimposition of the rotary members, the clutch as an entirety was mounted upon a stationary shaft) and the arrangement of the springs afforded easy access for adjustment purposes.
The point made that the allowance of the Harley claims upon an application pending at the same time as the Ellett reissue and second meul is an adjudication of the question, and a prima facie finding in favor of the defendants is more seeming than real, because the mere issue of the patent is consistent with the allowance of a very narrow claim. We do have, however, the prima facie finding that the claims of ihe Harl'ey patent and claim 1 of the Ellett third patent are in conflict, nor is the plaintiff in a very strong position to deny the propriety of the allowance of this claim. On the face of the patent, situation the Harley invention is prior in time. In supporting his claim to priority of invention in fact Ellett, unfortunately for himself, has created an obstacle to a finding of the validity of his patent. His proofs disclose the invention to have been perfected and the device put into use, not only before the Harley filing date, but so long before his own application that the time given him within which to apply that he pri-ma facie has lost his right to a patent. Abandonment to the public, or such dedication to be inferred from public commercial use, is inconsistent with the claim of an exclusive proprietary right, and is sufficient ground for the denial of the grant of a patent. When more than two years elapse after the invention is made, the inventor must assume the burden of excusing the delay and overcoming the presumption of dedication from commercial use. The duty of making clear ihe right is emphasized when the rights of others have intervened. One who with free access to the prior art, including what is in public use, invents an improvement and promptly follows this up with an application for a patent cannot, without clear proofs of a prior right in another, be deprived of the rights thus acquired, nor by a belated pat
The bill of complaint is accordingly dismissed with costs.