Eldred v. Kessler

106 F. 509 | 7th Cir. | 1900

SEAMAN, District Judge,

after making the foregoing statement, delivered the opinion of the court.

The charge of infringement in this case rests mainly, if not wholly, on the Chambers patent, No. 492,913, which was granted March 7, 1893, upon an application filed November 21, 1892; and the art in question relates only to cigar lighters for the use of smokers at stands or places where cigars are sold. Aside from the use of matches, this want' has long been supplied for1 all practical purposes by the use of a minute gas jet or other constant flame, with various forms of taper or torch for lighting; and when gas was used a simple mechanism increased the flame as required, or with the aid of electricity the lighting was instantaneous and no constant flame was necessary. Improvement of means for this purpose, except by way of attractive designs, would not seem to afford a wide field for useful invention. Nevertheless, the smoker was not left dependent upon primitive means for lighting his cigar at the counter, and 13 patents for improvements in cigar lighters are in evidence here by way of showing the prior art, —all issued during the several years preceding the Chambers' application, all involving the use of electricity, and each purporting to be an improvement in such lighters. The experts on one side and the other classify these prior devices in conformity with their different theories of the Chambers invention, — on the part of the appellant as (1) gas burners, (2) incandescent wire burners, both igniting and extinguishing automatically, and (3) fluid burners, subdivided as non-automatic, for igniting or extinguishing, and automatic, for ignition only; on the part of the appellee as (1) torch lighters, (2) swinging lighters, (3) fixed base lighters, and (4) incandescent lighters.

The Chambers device in .question is a fluid burner, and the drawings show a base containing the battery and induction coil; a post or standard mounted thereon, with a lamp at the top; a spring lever arm "in pivotal relation therewith, carrying an extinguisher in hood form”; a crank for moving the arm manually, so that the extinguisher is moved to and from the projecting wick of the lamp, one electrode is formed at the wick, and the other in the extinguisher hood. In normal position, the hood covers and partially incloses the wick or burner. When a light is wanted, the hood is moved from the wick, contact of the electrodes is made and broken, and a spark produced which lights the burner. Release of the crank returns the hood to position over the wick and wipes out or smothers the flame. Except in certain details of construction not involved in this controversy, no novelty appears in this device, in view of the prior patents and devices, unless it can be found in the dual feature of extinguishing and igniting the flame, automatically. Upon this feature alone the claim - is made on behalf of the appellant that Chambers made a discovery of such character'in the art as, applied to fluid-burning lighters, that his invention was primary, and that the claims of his patent were entitled to broad construction and to the corresponding range of equivalents as a “pioneer invention.” For interpretation in that view it is asserted in the brief of counsel for the appellant that this invention was, broadly, “an electrically ignited fluid burning lighter, having its members pivotally connected, so that it ignited and was extinguished automatically when grasped for use and released.” If this contention is sustained, the claims of the patent are correspondingly broad and general in their terms, and it is plain that the appellee’s device in its generic features is within their scope, though it differs in appearance and structure and presents the more attractive and convenient cigar lighter. The court below construed the Chambers patent otherwise and dismissed the bill, finding no infringement for reasons thus stated:

“In view of the prior art, the claims alleged to be infringed must receive a narrow construction. Any other construction would render them void, as claims for what was old in art. Giving the patent a narrow construction, the defendant’s device does not infringe.”

The issne, therefore, depends for solution upon the inquiry whether the Chambers invention was primary in character and entitled to generic claims, or was one of mere details of construction for improving a prior device “which was capable ol“ accomplishing the same general result” (Machine Co. v. Lancaster, 129 U. S. 263, 273, 9 Sup. Ct. 299, 32 L. Ed. 715), and so limited to specific claims and narrow construction. Ins! anees are frequent of complication and difficulty in such inquiry; but it is simplified in the present case, both by the clear showing of the prior art, and by its analysis in the brief of counsel for the appellant, and by this concession of its effect in narrowing the claim of invention:

“Automatic ignition and extinguishing had theretofore been accomplished in gas-burning lighters, and in incandescent wire lighters the current had been automatically turned on and off in the act of bringing the instrument inio use and releasing it. This had not been accomplished in fluid-burning lighters. In one out of five earlier attempts of record, automatic ignition had been secured, but automatic extinguishing had not.”

In other words, the contention is (1) that the fluid burner must be segregated from the other types of cigar lighters, because it presented a different problem for extinguishing the flame, requiring means to wipe out or smother it, instead of cutting off the supply for the burner, and (2) that in the prior device, there'referred to as an instance of a fluid-burning lighter which was ignited automatically by electricity (Hen & Weinmann’s patent, No. 382,231, May 1, 1888), the flame was extinguished by the manual operation of replacing the wick in its socket; thus leaving the field open for Chambers to make a “pioneer invention” when he accomplished with the sanie element both automatic extinguishing and igniting. To furnish the burner for a cigar lighter where there is no gas supply, and where electricity alone is not' desired, oil or fluid is the natural means, and burners so provided have long been used as a common species of the generic cigar lighter. Whether improvement of this species in the same direction in which the gas burner and electric burner have been improved for like purpose may possibly constitute primary invention, in the sense of the patent law, is an abstract question which does not call for consideration, in view of the undisputed facts in this record. Treating the fluid-burning lighter as a distinct class, we are of opinion that Chambers' invention was neither primary in its character, when compared with its predecessors of like class, nor an advance of great utility or-value in the art, to authorize generic claims in the patent or broad construction. The prior cigar lighter of this class “accomplished the same general result” with analogous means, including the use of electricity, and in one instance, at least, ignition was automatic; the means for extinguishing the flame being convenient and effective, but not automatic. The problem for improvement of the lighter was not, apparently, in the direction of labor saving or safety, but to make it more attractive or serviceable; and, when it seemed desirable to provide for extinguishing the flame, automatically generic means for the purpose were clearly pointed out, both in the same art and in analogous devices, in the old cap or cover for the wick, operated by the lever and spring or gravity. Electricity had long served for lighting in connection with similar devices to open and close the gas valve for like purpose, and both of these old devices were thus utilized by Chambers; his extinguisher being moved to and from the lamp wick.

Moreover, he was not even the first to adopt this conception for the fluid burner. The Eastman patent, No. 481,692, was granted August 80, 1892, for an “electric cigar-lighting lamp,” and shows a fluid-burning device which differs in-form from that of Chambers, but is equally automatic in lighting and extinguishing by electricity,— closely resembling the Hen & Weinmann device, except for this dual feature. The application for the Chambers patent was filed November 21, 1892, and testimony was offered on the part of the appellant to carry the date of invention back of the Eastman grant; but it consists of the uncorroborated testimony of a single witness and is too indefinite ánd unsatisfactory to defeat the presumption raised by the earlier patent. We are of opinion, therefore, that the invention of Chambers was in no sense generic, and confers nó monopoly to bar the old pathway against other improvers seeking the same end with other devices which are not mere colorable evasions; that the claims in question were rightly construed in the court below, and that, broadly interpreted, such claims would be anticipated by the prior devices; and, thus limited to the device substantially as shown and-•specified, of which the special feature is the pivoted arm carrying at its Upper end the electrode, the appellee does not infringe. His lighter is of a different type, of the suspended order. The lamp is contained in a handle, which is a weighted body, suspended by a flexible cord carrying the conducting wires. Movement of the handle in the act of lighting the cigar operates the device through one electrode for igniting the wick, and the light is extinguished by the hood when the handle is released and drops into place. It differs materially from the Chambers, is lighter in form, structure, and method of operation, and is adopted from the prior art, as particularly shown in forms of the gas lighter of which the Tag & Smith patent, No. 399,168, is a prototype.

The remaining patent of which infringement is alleged is No. 522,934, granted to Eberhard & Schimkatt. This is of the suspended -order, and an adaptation in general form of the patents of Rouillion (No. 170,303), Tag & Smith (No. 399,168), and Kronenberg (No. 399,-416), and in dot nils of Russell and Russell (No. 499,596) and Struble (No. 506,347). If- is well conceded in the brief of counsel for the appellant that this ¡talent “is of limited scope,” and whatever of novelty there may be in iis structural features, in view of the patents referred to, including the “inclined extinguisher plate” taken from the Chambers device, the appellee does not infringe under the conslnietion thus applicable to the claims. In so far as identity of structure appears, both improvers take such feature in common from the prior art in like relation.

The decree of dismissal of the bill for want of equity is accordingly affirmed.