282 F. 502 | 6th Cir. | 1922
This was the usual infringement suit, brought in the court below by the Corona Company against the Eox Company, based upon 8 different patents for typewriters, combining the standard keyboard and type-bar construction, with the capacity for folding into small space, so as to be easily packed and carried. Under the 8 patents, 46 claims were specified and relied upon. Of these 27 were held valid and infringed; 12 valid, but not infringed; and 7 invalid. Both parties appealed, affecting 7 patents and 35 claims. The patents now involved are the following:
Rose, reissue 13,934, filed May 22, 1915, issued June 22, 1915, upon original 754,242, filed February 11, 1903, issued March 8, 1904; Rose, reissue 13,935, filed May 22, 1915, issued June 22, 1915, original 948,553, filed April 18, 1905, issued February 18, 1910; Hazen, 1,121,-094, filed June 23, 1908, issued December 15, 1914; Hazen, 1,121,097, filed June 3, 1909, issued December 15, 1914 (upon a divisional application under last-named patent); Petermann, 1,064,372, filed April 3, 1911, issued June 10, 1913; Petermann, reissue 14,599, filed December 1, 1916, issued February 25, 1919, upon original 1,121,034, filed September 15, 1910, issued December 15, 1914; Latta, reissue 14,495, filed May 24, 1918, issued July 23, 1918, upon original 1,222,-550, filed November 2, 1911, issued April 10, 1917. These different patents and their several claims involved will be considered consecutively, and without regard to which party succeeded below.
The first Rose reissue, No. 13,934, presents the broadest claim of invention, and one which has been the subject of much litigation. The original patent was before the Second Circuit Court of Appeals in Standard Typewriter Co. v. Standard Folding Typewriter Sales Co., 181 Fed. 500, 104 C. C. A. 248, on an appeal from an order granting a preliminary injunction. The order was sustained upon the theory that there was patentability at least in the method of folding, by which the carriage was made to overhang the keyboard, and this feature was used by the defendant. The case came on for final hearing before Judge Hand, who held that the claims were anticipated by the earlier Carmona patents. The decision of the Court of Appeals on the second appeal is found in 223 Fed. 779, 139 C. C. A. 599. Judge Hand’s conclusion that the Carmona patent anticipated was upheld, and his decree affirmed. The owners of the Rose patent then surrendered it and procured a reissue. Their substantial ground was that the claims had been drawn in ignorance of the existence of the Carmona, and it was desired to confine them to Rose’s invention as it could be distinguished from Carmona—in other words, to narrow the claims, so that they would no longer be anticipated. This resulted in the reissue patent now in suit.
There has been much discussion as to whether Carmona disclosed a workable machine, so that it should be included in the prior art. Upon superficial inspection of the Carmona patent, it seems to involve all necessary separability, and that would be the inference from the decisions in the Second circuit, and the action of the patentee in surrendering the first Rose patent for reissue looks toward an admission that Carmona anticipated. On the hearing in the court below, the plaintiff presented a machine built in exact accordance with the
The specification and drawings of the first Rose patent did not disclose the details of the key-to-platen chain of mechanism. It says that the rack bar is to be operated by a suitable escapement mechanism, but that, as the mechanism does not form any part of tire invention, it is not considered necessary to illustrate or describe it in detail. Since this separability is absolutely essential to make the Rose device work, the patent is either invalid because it does not disclose an operative structure, or else it must be taken as including and calling for any suitable and familiar means for providing this separability. The latter seems to us the more reasonable alternative, in view both of the' face of die patent and the constant insistence by plaintiff that it was valid; and while the language of the claims does not literally include this element, it is not inconsistent with such inclusion. Each claim necessarily calls for a typewriter, having the carriage foldable, and still continuing to be an operative typewriter, and thereby necessarily requires that the escapement mechanism shall be separable. Any attempt to apply the claims to a structure which did not have that feature must fail. The patentee would have been the first to say that, of course, a suitable separable escapement was implied in his claims, and a contrary holding would have been very harsh and technical.
This conclusion is fortified by the fact that suitable separability in just such an escapement and for just such a general purpose was well known. The patent to Sholes of September 29, 1896, disclosed the same general key-to-platen chain as was shown by the second Rose patent. Sholes showed a carriage hinged at one side and which could be turned up out of normal position, thereby breaking the escapement mechanism, which was restored on the dropping of the carriage. This Sholes mechanism must he taken as typical of that “suitable escapement” to which Rose refers. It could have been incorporated in the first Rose structure, and only in that or some equivalent way could the implied calls of the claims have been satisfied.
The result of this view is that the claim in suit of the first patent was for the combination of the folding feature with any separable escapement, and that the broad claims of the second patent are for the combination of a separable escapement with any folding feature— precisely the same thing. This is double patenting. It is not an instance of basic and improvement patents, nor of copending or divisional applications. The result of sustaining the second patent would be to extend for nearly six years the monopoly granted by the first patent, covering any foldability in combination with any separable escapement. The claims of the second patent which have this broad aspect are invalid. We think claims 19, 20, 22, and 23 either call for or imply any suitable separable escapement in connection with the folding feature claimed and shown in the first patent, and are therefore within this condemnation. The structure of these claims would
Claim 19 is limited to this construction quite specifically. Claims 23 and 41 are less specifically limited, but they refer to the same general construction, and call for the means of accomplishment, rather than for the mere conception of separability. We think they should be considered valid.
We must consider claim 25 as too broad, because it reads upon a structure having no key-to-ribbon separability, independent of or in addition to the breaking which Rose and Sholes had shown. We classify claims 22, 38, and 56 with 25. They have nothing patentable, in view of Rose, Sholes, and Hammond. They do not successfully meet the test of invention which we must here apply, viz. confinement to a separable key-to-ribbon chain, as distinguished from a previously known key-to-platen chain. As to this patent, the bill should be dismissed as to claims 22, 25, 38, and 56, and there should be the usual decree for injunction and accounting as to claims 19, 23, and 41.
In reaching this result, we do not give any controlling effect to the mere fact that his construction, like defendant’s, permitted the platen and carriage to be lowered into compact position while remaining substantially horizontal; that is, right side up. It may be, as defendant urges, that this is not a particularly valuable result, nor alone a sufficent basis for the claim of meritorious invention; but we may well consider it rather as incidental to the general plan of withdrawing one frame within the other, whenever the pivoting is so located that this result will follow.
The defendant departs from Latta’s specific construction, and many of the claims are not infringed; but the court below thought that 12 of them were. The defendant has a main or stationary frame; its carriage and platen bed is carried upon four links, two parallel ones at each end, which are pivoted respectively to the front and rear corners of this bed and to the main frame at the lower ends of the links, respectively near the front and about midway of the lower edge of the main frame. They can be locked to the main frame when In their topmost position, and while thus rigidly maintained the platen is in operative position with reference to the keys. When released from the lock which holds the links up, the carriage bed will swing upon them backward and downward, until it rests level with the bottom of the main frame and close to the rear thereof. We may take Latta’s claim 51 as presenting in a fairly typical way the question of infringement. It reads:
“In a typewriting machine, the combination of type carriers, a keyboard therefor, a platen, and means which enable the machine to be contracted into a smaller space than that which it occupies when in use; said means comprising a frame having relatively movable sections carrying the working parts of the machine, said sections being adapted to fit one within the other,*512 and means which enable the type carriers and platen to be adjusted bodily, relatively one to the other, into and out of co-operative relation.”
The side links of defendant’s machine constitute a “movable section,” which carries one portion of the working parts of the machine, and the main frame and the links are frame sections, which fit one within the other, when the relative movability is called into action. We think it should be said that defendant’s machine has the characteristic quasi telescopic fold or compacting which was Latta’s invention. Other claims, like 50, undoubtedly read upon the defendant’s device, unless defendant’s links ought not to be thought of as a frame; but we think that, when they are elevated and locked they do, in a proper sense, constitute a frame or a frame section, which holds the carriage and platen in operative position.
As to the Latta patent, the decree should be affirmed. Most of the claims held infringed gain patentability from express or implied inclusion of the two-part collapsing frame. As to some of them, this inclusion would be a matter of close construction and differentiation, and the resulting validity or invalidity would be immaterial as to injunction, accounting, costs, or modification of device. We therefore let the affirmance upon this patent be general.
On Application for Rehearing.
Both parties have asked for a partial rehearing. In every respect, save one, the matters presented were considered before the opinion in the case was filed, and we see no occasion for reopening.
It is now made clear that in our discussion of the matter of infringement of the second Hazen patent, No. 1,121,097, by the Fox typewriter, we misapprehended the construction of the defendant’s machine, as shown in the drawing “Plaintiff’s Exhibit 6A.” This drawing represents the machine that was offered and received as the evidence of infringement. Upon correcting this misapprehension, it is clear that this machine did not infringe this patent, according to the construction of the patent and the criterion of infringement laid down in the opinion.
We are asked also to reconsider our conclusion that claims 22, 25, 38, and 56 are too broad to be valid. We can make no differentiating interpretation of these claims which is perfectly satisfactory to us; but we are not satisfied that our previous conclusion as to them was erroneous.
The decree below should he as directed in the former opinion, except that it should specify that the infringement of the second Hazen patent was by virtue only of the so-called second form of the defendant’s machine, models of which were filed in this court.
In all other respects, both applications for rehearing are denied.
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