191 F. 579 | 6th Cir. | 1911
In the court below, Herman brought an infringement suit based upon three patents issued to him, being, respectively, No. 721,041, dated February 17, 1903, No. 743,160, dated November 3, 1903, and No. 777,096, dated December 13, 1904; and all having reference to apparatus for making blue prints. The last-named patent, No. 777,096, was issued upon the application of
The structures involved, both complainant’s and defendant’s, consist essentially of a frame, carrying an open-ended, vertical cylinder which has transparent sides surrounded by opaque wrappings. The • negatives or tracings are placed in contact with the outside of the glass cylinder. The sensitized paper is placed next, and the wrappings are then applied so as to hold the tracings and the paper firmly in position.
• Then an electric light, suspended from the frame and hanging over the cylinder, is automatically lowered into the cylinder, resulting in printing the image upon the p*aper. After a predetermined time, the electric current is automatically cut out, thus ending the exposure, the lamp is manually raised from the cylinder, and the wrappings and prints are removed. This type of apparatus has proved very effective, and has, for all large uses, superseded the old plan of sun exposure in fiat printing frames.
The first apparatus of this type is found in the German patent to Kratzengtein, published in 1890. He had the vertical glass cylinder and the hanging light to be lowered into it. The operation of raising and lowering was manual, and the illustrated lamp was not electric. British patent No. 569, of 1896, to Hall, described, in the provisional specification, an apparatus of this character in combination with an arc lamp to be passed inside of the cylinder for its entire length, with regulated motion controlled by a clock-work escapement; and by the complete specification and drawings it elaborated this idea, showing a pendulum and escapement permitting an electric light gradually to descend within the glass cylinder.. Pullman, by United States application antedating, in its filing, Herman’s application, showed.a complete and elaborate apparatus of the Hall type, using the same pendulum and escapement movement, but containing an aiitomatic cut-out for the light.
Herman’s claimed broad invention and to which claims 12 and 13 (hereafter quoted)’of patent 777,096 are directed, consisted in combining, with the glass cylinder and the vertically moving lamp, a hydraulic cylinder, for the purpose of controlling the downward motion of the light. To this end, he employed a closed, vertical cylindrical case containing a liquid, and having a moving piston carried on a hollow piston rod. Through the piston were comparatively large ports, closed on the upper side by ordinary flap valves. In the side of the hollow rod and above the piston was a comparatively small opening, the size of which could be regulated by a sliding valve filling the interior of the hollow rod, and operated longitudinally by a stem passing out through a threaded engagement at the upper end of the rod, and turned by an attached thumb nut or wheel. This piston could be lowered rapidly, the liquid passing easily and swiftly from the lower to the upper side of the piston. The same power would raise it slowly, because the passage of the liquid from the upper to the lower side of the piston must be through the small opening into the hollow
The problem was to interpose against the weight of the falling lamp a resistance which should insure a steady, uniform motion of the lamp, at the same speed in all its parts, and with a smoothness which should not interfere with the perfection of the light, and with an environment such that the speed and length of exposure could be determined in advance, and could then be automatically regulated, and such that the electric current could be applied and controlled. In the door check the resulting control of the motion is uneven. The leverage, and, therefore, the power, vary in different parts of the swing; the apparatus is rough; approximate results are sufficient; and there is little delicacy in operation. The only substantial function is to check. The elevator involves a large structure and the manipulation of great power. Its motion is not steady, but varying. Its weight, and so the required resistance, vary constantly with its load. An elevator, which must move smoothly and automatically from top to bottom of the shaft without stop, would be useless. The railroad block-signal device does, it is true, provide for a continuous, regular, even motion, but the mechanism and the operation are rough, not delicate. The railroad signal post and the photo printing frame are in fields far away from each other. Considering these things, the chief difficulty which we have in finding invention results from the statements in Flail’s complete specification in his patent of 1896 that:
*583 “The lamp may be lowered into ibe cylinder B by hand, or a dash-pot, clock-work or other escapement, or any other suitable, mechanical means may be adopted for controlling and regulating the motion of the lamp into the cylinder and for passing it from top to bottom thereof by gradual and continuous motion.”
The hydraulic cylinder of Herman is said to he a dash-pot, and, if so, the above extract tends to show that the substitution of cylinder for clock-work would occur to one skilled in the art. However, the hydraulic cylinder, as adapted by Herman, is much more than a mere dash-pot. This reference is, at the best, only a suggestion. Hall did not show any such construction in this patent, and the next year, in a succeeding patent, he abandoned even the idea. As a suggestion, it is a ‘‘long shot.” (Judge, now Mr. Justice, Lurton, 163 Fed. at page 258, 91 C. C. A. 114.) Abel in 1898, and Shaw in 1899, obtained British patents upon this type of apparatus, and did not use a hydraulic cylinder or anything else that could be called a dash-pot. Fullman, also, in 1901, adhered to the clock-work, and Schildliauer in 1901 used an electric motor. . The problems of construction involved in the application of the dash-pot idea might have seemed, to those who observed Hall’s suggestion, to make it impracticable. Certainly no one adopted it, and Hall’s abandonment of it in his next patent indicates that he did not regard it as important, and goes far to neutralize his first reference. Considering the vagueness of this suggestion, the modifications, and adjustments required for its application to this art, the fact that no one else in the intervening years attempted to make such application, the very considerable utility it appears to have and the burden resting on defendant to establish invalidity, we con-chide that H erman is entitled to credit for more than skill, and that an invention existed.
‘‘12. In a printing apparatus, the combination of a printing cylinder suitably mounted, an electric lamp, electrical connections with said lamp, a liquid cylinder, a hollow piston rod operating in said liquid cylinder, and means whereby the hollow piston rod is automatically raised by the counterbalance-weight of the lamp, substantially as described.”
This claim embodies the essential parts of the combination we have been discussing. It is criticised as a basis for an infringement decree, in two respects: (1) The printing cylinder of the patent is mounted on horizontal trunnions so that the cylinder may be tilted from a vertical to a horizontal position. No other mounting is referred to in the specification, and it is said that the words “suitably mounted” import into the claim a necessity for this substantial construction; while defendant’s cylinder is carried upon a vertical axial standard upon which the cylinder rotates without tilting. Wie see no reason for confining the permissible “suitable mounting” to the form shown in the specification. The mounting has nothing to do with the essential invention of the claim, except to provide an operative environment, and the defendant’s mounting accomplishes the same result. Either one is “suitable.” (2) One of the elements of the claim is “a hollow piston rod! operating,” etc., but no piston is mentioned; so the claim is said to be for an inoperative combination. We think
With this construction of the claim infringement is not denied, save for the suggestions' that defendant’s hydraulic cylinder is mounted other end up, so that the advancing piston rod lowering the lamp falls, instead of rises, and that defendant has no hollow piston rod, because only the lower portion is hollow. These differences are immaterial. The substituted forms would be equivalents, within even a narrower definition than is appropriate to this case.
Claim 13 is as follows:
“13. In a printing apparatus, a suitably mounted printing cylinder, an electric lamp, connections to said lamp, an independent connection with the lamp, a suitably supported liquid cylinder, a hollow piston rod in the cylinder and provided with ports communicating with said cylinder, a piston in said hollow piston rod, a flap-valve carried by said piston, and connections between the independent connection of the lamp and cylinder, substantially as described.”
Another reason sometimes advanced for supposing that the structure of the second) does not infringe the claim of the first patent is that the Patent Office has declared that a patentable difference exists. The premise is sound, but not the conclusion. In examining the second application, the Patent Office has no concern with the scope of the claim of the first, and does not and must not pay any attention thereto. It is concerned only with the early disclosure by the specification and drawings. Patentable difference does not of itself tend to negative infringement. It may just as well be based upon infringe- . ment, plus improvement; and improvement may lie in addition, simplification, or variance. This is well illustrated! by this Wagenhorst patent. The drawings show, and the specifications describe, a structure generally similar to Herman’s, but each one of thé 10 claims is found to be confined to some modification and supposed improvement added to the underlying combinations of the earlier art.
As the necessary result of the fundamental principles, it seems that the existence of the later patent can have no tendency to disprove infringement, unless, for other reasons, we have first reached the conclusion that the earlier patent is, as to the later structure, specific, and not generic. If we have reached that conclusion and the correlative conclusion that the earlier patent is entitled only to a narrow range of equivalents, and if we find that the claims of the later patent embody no improvement feature whatever, we will then find our conclusion fortified by the Patent Office declaration that the two structures are different species of the same genus; but, before we can so interpret the Patent Office action, we must have given to the earlier patent a construction which will of itself probably determine the question of infringement, and it is difficult to see how in deciding the underlying question material aid can be had from such Patent Office declaration.
We find no authoritative decisions which go beyond the limits we have indicated. Corning v. Burden, 15 How. 252, 270, 14 L. Ed. 683, seems to be the basis of the later rulings. Its language is general. The report does not show the two patents fully enough to indicate any inconsistency with the ideas we have formulated; and the opinion antedates the Patent Office practice in force while all now existing patents were issued. Blanchard v. Putnam, 8 Wall. 420, 425, 19 L. Ed. 433, also in general language and with reference to peculiar facts, tends to limit, if not overrule, Corning v. Burden. The remark of Mr. Justice Jackson in Miller v. Eagle Co., 151 U. S. 186, 208, 14 Sup. Ct. 310, 38 L. Ed. 121, refers to patentable difference, not-to non-infringement, and the case to which he refers (Duff v. Sterling, 107 U. S. 636, 2 Sup. Ct. 487, 27 L. Ed. 517) did not involve the evidential force of the junior patent. In Boyd v. Janesville, etc., Co., 158 U. S. 260, 15 Sup. Ct. 837, 39 L. Ed. 973, the court reaches the conclusion that the Boyd patent is specific, and then, in referring to defendant’s patent, considers the structural differences which put the two patents in two specific classes. The sentence quoted with ap
“Tn a printing apparatus a printing cylinder, an electric lamp, electric connections with the lamp, and means including differential pulleys for controlling the descent of the lamp into the cylinder, as and for the purpose described.”
There is no theory of validity in this claim, as compared with several earlier devices, except as due to the presence of the “differential means,” whereby the rate oí motion of the falling lamp may be made different from the rate of motion of the primary controller. The earlier patents in this art indicate that they used differential means for this purpose; but, however that may be, the interposition of differential pulleys between two moving parts is so common and obvious an expedient that upon it invention cannot be predicated. These claims are invalid.
“Tn a printing apparatus, a priniing cylinder, an electrical lamp mounted within the cylinder, an electrical circuit in connection with said lamp, a rotary circuit connector in said, circuit, and means for automatically breaking the circuit at a predetermined time, substantially as described.”
The specification of this patent shows a vertical cylinder mounted on horizontal trunnions and carrjing a lamp permanently mounted and held centrally within the cylinder. The sole method of regulating the exposure is to turn on and off the electric current. We do not decide whether there was invention in this combination in the form of structure so described. In order to reach the defendant's machine, the claim must be construed broadly enough to include the old type of construction in which the lamp is suspended above the cylinder and lowered into it: and, if so, it confessedly involves no validity, except as dependent on adding to existing combinations the rotary circuit connector which maintains the circuit when the cylinder is tilted on the trunnions. There would be no invention in the claim so considered. A rotary circuit connector is essential in any electric apparatus where, the current is to be transmitted between a stationary and a rotating part. Instances of such application are shown in the record, and are familiar to every one. filie mere addition of such a device to an existing structure could not be invention.
It follows that validity and infringement are found as to claims 12 and 13 of patent 777,096. and that the complainant is entitled to the usual interlocutory decree on these claims, and that, as to the remaining claims sued upon, the bill was rightly dismissed.
Appellant will recover costs of this court. In the court below neither party should have costs, as to patent 777,096, but defendant should, as to both the other patents. This result can be approximated by directing that defendant recover, in the court below, one-half its costs on the entire record; and it will be so ordered.