248 F. 499 | E.D. Pa. | 1918
The conclusions reached in this case are:
1. The patent of the plaintiff is valid (thus including a finding of utility), hut the claims, in view of the prior art, are to be so read as to restrict all proprietary rights to the specific structure described.
2. The structural differences between the defendant’s device and that described in plaintiff’s patent are so real, or at least the doubt of their being merely formal and the differences being only in the use of mechanical equivalents, is so great, as, in view of the patent of the plaintiff being a mere paper patent, to justify a firiding of no infringement.
3. In any event, in view of all the equitable considerations involved, the interference of a chancellor is not justified.
These are relatively short texts for a very long sermon. It would facilitate the trial and final disposition of cases in patent litigation if counsel were more fully in accord with the spirit of the new equity rules, requiring trials to be had as at law, by doing, as trial lawyers have found it well to do, avoid contesting every possible controvertible point, and select what they believe to be the turning point of the case. Eitigants and their counsel, however, who in good faith and with earnestness present for discussion features of the case which they
The defendant, on the other hand, draws from the fact of this non-use, and other features which enter into the present controversy, the inference that the nonuse was due to the worthlessness of the patent, because of its recognized invalidity by reason (among others) of the inutility of the device as described in the application and claims. The scope of the rights of the plaintiff, with which we would be impressed as prima facie springing from the grant of letters, is restricted by a general understanding of the state of the prior art and of the experiences of the application in the Patent’ Office as disclosed by the file wrapper.
The patented device, although constituting an important part of the works of a watch, relates to one part only of the works, being that part which is directly associated with and under control of the mainspring. The part of the works of a watch which incloses or within which the mainspring is confined is called the “barrel.” The motive force which drives the machinery of the watch is’the unwinding of the mainspring, and this barrel rotates as the spring unwinds. To' enable the mainspring to supply this power, it must be wound up, and this is accomplished by the inside end of the metal ribbon, which constitutes the mainspring, being connected with a mechanism which is actuated by the stem winder. By the means indicated the mainspring is wound up and the end of it held to its position, with the re-
The experience of every one who carries a watch has brought home to him knowledge of the fact that the parts of the watch mechanism referred to require frequent attention, and prepares him to give ready belief to the necessity of having them so made as that the parts may be readily disassembled and reassembled to facilitate the cleaning of the watch and its repair, because of a broken mainspring or otherwise. This thought has an important bearing upon the common sense of the claim to inventive merit which is put forth on behalf of the plaintiff, and invites our attention to what advance the inventor himself thought he had made over the prior art, and to -what limits, if any, he had set to his claim. The application very clearly discloses this. He makes no claim to novelty, and none to an increase in the efficiency of his device over others known-to the art, beyond what was involved in the gain in simplicity of construction and in the facility with which the parts of the watch, as he would have it constructed, were disassembled. He frankly' acknowledges the similarity of his construction with the constructions already in use, and asserts no difference in results beyond a difference in degree in operative efficiency. There is an admission of simplicity of construction and facility in the taking apart and putting together of the mechanism in the then known constructions; but the inventor claims for his own a greater simplicity and a greater facility, and that only. In order to accomplish this relative value in results, he describes what he claims to be a somewhat different, and to this extent novel, construction of special parts of the watch, and a somewhat different, and to this extent new, arrangement of parts, or, to quote his own language:
"To this end [i. e., in order to get greater simplicity and increased facility] my invention consists in the novel construction, arrangement, and combination of tlie parts” shown and described in the application.
The impression is thus made, which the very able and forcible argument addressed to us by counsel for the plaintiff has not removed, that the language of the claims must be read with the general thought above outlined in mind, and that this results in narrowing the claims to a special form of mechanism meaning or a special combination of mechanisms. This truth should not blind us, however, to the other truth, an analogue for which we may borrow from the military art. When the fighting is in the open and over a wide terrain, a gain of miles may be of no real value, while the gain of a few yards in trench fighting may be of the utmost, and indeed of vital, importance. So in every highly developed art, any advance, even if it he one merely in simplicity or cost of construction, as it becomes increasingly difficult, takes on an increasing value.
The impression thus made by reading the application is deepened by a perusal of the file wrapper. Some only of the prior aft devices were cited for reference in the Patent Office. None of these were found to deny the right of the applicant to his patent, when his claims had been brought within ' the limits to which he was confined. The line of thought which led to this conclusion can easily be followed. When it
■ These propositions would direct our minds to the defendant’s construction in our search for the proper, ruling in this case, or, in other words, to the question of infringement. The.defendant, however, has introduced two other defenses, which may first be stated. One is in effect that, whatever may be the legal rights of the plaintiff, the conditions of the present case as presented demand that the plaintiff be left to the assertion of his legal rights and of their enforcement through and by his legal remedies, without recourse to' equitable remedies or the aid which-a chancellor might otherwise accord him.
One basis for this branch of the defense is the averred laches of the plaintiff, both in the bringing of his action and his conduct of the proceeding since the action was brought, particularly in view of the circumstances under which he acquired title to the patent. In the first place, the patent has been a dead letter from the date of its issue; no attempt having been made to manufacture under it. The patent had nearly reached the fifteenth year of its age before any ¡rights under it were asserted. This proceeding, after having been brought, was' permitted to drag itself out to such length as that the' patent will have expired in all probability before the final ruling in the case is had, if either party resorts to his appellate rights. Moreover,' the defendant, although a well-known watchmaker and' extensively engaged in the •manufacture of watches and putting out well-known and widely distributed makes of watches, made and put out the watch now averred to be an infringement of the plaintiff’s patent for more than a third of a score of years before complaint was made by the plaintiff.
"Another feature of the defense-is that there can in no event be any successful charge of infringement, unless the claims áre given a sufficiently wide scope to' include the barrel mechanism of the defendant, and that, if the claims are given as broad a meaning as this, the claims are invalid, because the mechanisms embraced therein would themselves be an infringement upon the claims of the prior art. The position of the defendant nearly, if not quite, is that, if the meaning of the claims is such as that the defendant’s structure could be found to be an infringement, the claims are invalid, and that if a meaning is given to the claims so as to embrace only special construction of parts and special arrangement or combination of the parts, in order to take away their conflict with the prior art, then the defendant has not trespassed upon the rights of the plaintiff, and, in any event, if the
The prima facie validity of a patent of this general character is strengthened by the fact that the right to a patent was challenged and allowed by the Patent Office on the strength of what may, in the absence of a better term, be called the mechanical merits of plaintiff’s construction. The claim of the patentee to inventive merit may therefore be well said to have passed the ordeal of the test of inspection hy experts. With this finding we do not disagree, and except in a clear case would yield to the weight of such expert opinion the deference which it commands. In accordance with this attitude, all that remains for consideration is that part of the prior art which was not before the Patent Office examiners. This is reduced substantially to the Potter watch. The Patent Office had before it the Potter patent, but not the form of watch mechanism which some makes of the watch disclose. This latter is said to be an anticipation of the plaintiff’s invention. One part of the proofs of such a mechanism being in existence was what is known to this record as the Peaseley watch. This fact and the the date, of its existence was proven by the deposition of Peaseley. This went into the record by stipulation. Really all he knew and all he would be expected to know was that he had the watch. Pie did not know the mechanical details of its construction. Plaintiff, after the time limit of his rebuttal proofs had closed, took the deposition of Peaseley (as under cross-examination) to elicit the fact that he did not know the construction of the works of his watch and that it had been repaired.
Defendant refused to re-examin'e the witness, on the ground that this as rebuttal proof was too late. The admission or rejection of this supplemental deposition was withheld, to be disposed of as a trial question. This was because the court was impressed with the thought that the supplement to the stipulated Peaseley deposition was of no evidentiary value. We find the fact of the prior existence of Potter watches, embodying works construction as shown, with or without this additional evidence. To formally dispose of the point we might reject the Peaseley deposition offered hy the plaintiff as too late in time, and as conflicting with the stipulation of what the testimony of this witness was agreed to be; but we admit it in order that the plaintiff may have the benefit of this testimony, but find the fact to he that the watch antedates the invention of the patentee and that it originally was as it now is. The differences between the Potter
This difference may found a claim to invention. Globe Kniting Works v. Segal, 248 Fed. 495, - C. C. A. - (Court of Appeals, Third Circuit). There invention was found in a combination, including an elastic insert in a part of a union garment, as contrasted with one found in a garment not of the union type. By the same token there may be invention in a combination of parts by which a thin or other style of watch, for which a commercial demand exists, is produced, which would not be negatived by an essential element being found in another combination which produced a clock, but lacked those elements in the combination which would produce a thin watch.
There was, it is true, in the cited case a feature, hereinafter referred to as having a bearing upon the question of infringement, which probably was controlling there, which is wholly absent from the instant case. There the assertion was made that the patent rights had been sold for a sum which, in view of the character of the invention, was impressively large. This was followed with evidence of large sales, indicating an appreciative reception of the invention by users. If the sale was credited as a real sale at its face value figure, and was not merely a sale by the patentee to himself in the guise of a corporattion in which he was largely interested, and if the sales were due to the invention, and were larger in volume than they would have been, had another make of garment been pushed by the same commercial methods, this recognition of the value of the invention and of the merits of the thing invented would turn the scale, if in doubtful balance, in favor of the inventor, and it was in the cited case so held.
Notwithstanding the absence of this feature’ here, we think the prima facie right accorded by the grant of letters patent is not overcome by the evidence of anticipatión or by the attack upon the utility of the patented device.' This, so far as concerns this court, disposes of this branch of the defense. .
The fact that the defendant was permitted for so long to make use of its device, and that the plaintiff made no use of his own is evidence to found the finding that it was recognized by the plaintiff himself that he had a property right only in his special construction with which the device of the defendant did not conflict, and that the need for his special construction was so slight as to give it no commercial value.
We therefore read the claims of this patent in the light of the prior art and of its experiences in'the Patent Office as limited in their scope to a claim to a specific construction which is not infringed by the defendant’s barrel. Whatever room there may be for a difference of opinion in respect to the latter finding we think is closed to the plaintiff by the characterization of his right as one not to a patented thing hut to a lawsuit. This finding and that which follows has supporting authority in many adjudged cases, to which General Electric v. Yost (D. C.) 208 Fed. 719, is a sufficient reference.
The actions of neither of these parties have been such as to make this phase of the case as clear as it might be. There is proof of the writing and mailing of letters (which is evidence of their receipt) offering this patent for sale, and some evidence that such a letter was sent to the defendant, and also of a reply requesting a model. This was in January or February, 1906. In 1916 the manager of the defendant company testified (among other things) to his opinion that
Notwithstanding this, the plaintiff does not invite criticism for putting his own interpretation upon the facts above stated, even if we do not share his suspicions. When we turn to the acts of the plaintiff, we find things done which may also have significance. Another patentee, who had with the plaintiff an interest in the McIntyre Company, wrote him a highly suggestive letter, mentioning the Thalhofer patent and that the defendant might be found to have infringed it. The defendant answered that he had known for “some time” of the infringement. This correspondence was in 1913. The plaintiff in his testimony gives the “some time” the date of 1912, when he was considering the purchasé of the assets of the McIntyre Company, among which was this patent. Late in 1914 a letter was received by the plaintiff from a watchmaker, in which the writer posed as a would-be purchaser of the patent, and mentioned as one of its elements of .value that it was being infringed by the defendant, a rival watchmaker. To this the plaintiff replied, thanking the writer for calling plaintiff’s “attention” to the infringement, and further stating that he “had investigated” the charge and found it to be well founded. This meant, if it meant anything, that he had not before known of it. This was followed by a formal warning to the defendant to desist. Here again the explanation doubtless is that the thoughts of the plaintiff were on some way of saving something out of his investment in the "McIntyre Company, and that his memory was not strongly impressed with anything relating to this patent which was. only one among the
There is, therefore, an absence in this case of the element of sale value which was present in the Globe Knitting Company Case. It is not surprising to find the defendant drawing the inference from these facts that the plaintiff had fished this patent from a rubbish heap, which had come to him along with the real assets of the McIntyre Company, and to view his warning against infringement as purely in te.rrorem, in the hope of inducing the settlement of a prospective lawsuit. Indeed, this purpose is almost, if not fully, avowed by plaintiff in the paper book submitted. Here, again, the real situation doubtless is that the plaintiff, being properly desirous of reducing the loss from his investment in the McIntyre Company, is seeking to test out, as he has the right to do, the value of this patent. The question before us is whether lie can claim the aid of a chancellor. We have room for no more than a statement of our conclusion that his appeal should not be regarded, and of one consideration on which this conclusion may be based. The plaintiff made no use of his patented device. The defendant has most industriously promoted the sale of the alleged infringement device by advertising and otherwise, so as to build up a large and valuable trade. To enjoin the defendant (if there was time for an injunction to operate) from an enjoyment of this trade is to turn it over to the plaintiff. He would thus get, along with the proprietary right which belongs to him, a valuable trade which does not. If he had moved promptly to assert his rights, the persistence of defendant in the infringement would most surely not deprive the plaintiff of anything; but no patentee can be permitted, much less encouraged, to lie in ambush, with undisclosed rights, until a valuable trade has been built up in his patented device, and then appropriate the trade.
As has before been observed, there are other elements besides the merit of an invention which give value to a patented device. The owner of one which is untried, and whose practical working and commercial value is unknown and more or less doubtful, cannot wait until a market lias been created for it before he moves to protect his patent. Ignorance of the infringement would exculpate him from the charge of laches; but it is to be supposed that a make of watch which had been on the market for years, and which had been put out by a well-known watchmaker, would be known to his competitors. Hull credence is given to the statement of the plaintiff that he personally did not know of the infringement until 1912, because he is a lawyer and not a watchmaker; but this by no means proves that his predecessor in title, who was a watchmaker, did not know of it, and he bought only such rights as this predecessor had. The fact that the patent had been offered this defendant adds to the strength of the
The bill is dismissed, without costs.