207 F. 85 | W.D. Mo. | 1913
Complainant, a New York corporation, is the owner of letters patent No. 637,444, issued November 21, 1899, to John E. Borsch, and of letters patent No. 876,-933, issued January 21, 1908, to John L,.. Borsch, Jr.; both for new and useful improvements in bifocal lenses. It alleges that the inventions and improvements set forth in said letters patent, respectively, are capable of conjoint use in one and the same bifocal lens, and that complainant and its licensees make, use, and sell bifocal lenses embodying the conjoint use of said inventions and improvements. It charges infringement on the part of defendant, and prays injunction, accounting, and damages.
To the bill the defendant, a Missouri corporation located at Kansas City, Mo., interposes the following defenses: (1) That both patents in suit are void for want of patentable novelty. (2) That both patents in suit are void for want of patentable invention. (3) That defendant has not infringed either patent. (4) That the patents in suit are not capable of conjoint use, and the defendant has not infringed said patents conjointly. (5) That complainant is not a bona fide corporation and was not incorporated in good faith and for a lawful purpose; that its organizers are engaged in unlawful combination in restraint of trade; and that it does not come into court with clean hands. Incidentally to these defenses, it is claimed that the alleged' inventions and discoveries of the patents in suit were all anticipated in the prior art by patent and publication; and a prior use fatal to the second patent in suit is likewise asserted. The first patent contains but a single claim. In the second patent claims 1, 2, 3, 7, and 8 are the only ones in issue, and of these claim 3 has been selected as typical of the group of claims in said patent.
At the outset it may be said that, if the patents are valid and susceptible of conjoint use, it cannot be doubted that defendant’s device constitutes an infringement, because, for the purposes of this case, the two lenses are practically identical. The defense of unlawful combination in restraint of trade may likewise be disregarded. There is no
The defense of prior use may be dismissed with brief mention. It rests mainly upon the testimony of orfe Hoffman, an optician, of Minneapolis, Minn., who states that within a.somewhat indefinite period, approximating the date of the Borsch, Jr., experiments, he made a very few pair of fused bifocal lenses, which he sold to customers. His testimony is uncertain and indefinite as to time and essential detail. In itself, as well as in its attempted corroboration, it is unsatisfactory and unconvincing. The record persuades me that Borsch, Jr., was the first to conceive this specific improvement, and that he prosecuted his experiments to final completeness and patent with reasonable diligence.
The first patent in suit, No. 637,444, recited that:
‘■Heretofore bifocal lenses have been frequently formed by matching and uniting edge to edge two pieces of lens glass, each constituting but part of a complete ions, and respectively suitably ground, the one for distant and the other for near vision, and various forms have by different constructors been given to the respective elements or sections of the lens; the only fixed requirement as to such sections being that they should when united present-as to their combined outer edges the usual oval outline of a lens.”
“In whatever forms the respective independent sections or elements of a bifocal Ions of this character have been made, however, they have been united by bringing the respective edges of said sections or elements Into contact and cementing the abutting edges by any suitable balsam or uniting medium or maintaining them in their assembled position by an inclosing lens frame.”
The aim of the proposed patent is thus stated:
“This construction has been objectionable, however, by reason of the fact that, however carefully- the sections are assembled and cemented, a minute cement-filled space exists between the abutting edges, and the cement which is present of course on both surfaces of the lens in time becomes slightly worn away under the action of heat and the attrition to which it is subjected in the cleaning of the lens, with the result that the permanence of the union between the elements or sections is impaired; furthermore the line of connectioñ between the two sections of a bifocal lens as heretofore constructed as described is always visible and not only detracts from the appearance of the lens but is an annoyance to the wearer.”
“Broadly stated, it is the object of my invention to produce a bifocal lens of an attractive efficient, and durable character, in which the objections herein-before stated to the existing forms of such lenses shall be obviated.”
The claim declared was as follows:
“A bifocal lens formed of two pieces of glass of dissimilar index and size placed and secured face to face, tbe smaller of said lenses being mounted in a recess in tbe larger of said lenses, and exposed upon one face of tbe latter, substantially as set forth.”
The essential novelty and invention claimed for this patent is that it for the first time discloses the use of glass of different indices of refraction in such combination as to permit a completed integral bifocal structure of the same thickness and uniformity of surface as a lens composed of but one kind of glass and having a single focal point. In this way the unsightliness, instability, and other infirmities pointed out as existing in former structures were either entirely removed or reduced to a more desirable minimum. If this device presents novelty and invention, its utility and desirability can hardly be disputed; but defendant contends that it presents neither the one nor the other.
In support of the defense of anticipation, something like 27 patents are cited as references. A number of these exhibit the development of the bifocal eyeglass or spectacle from its crude origin up to the application of the first patent in suit; others have to do with globes, lamp chimneys, photographic camera lenses, reflectors, and other articles of remote analogy. Others deal with achromatic lenses intended for the elimination of chromatic aberration caused by the dispersion of rays of light into their component colors. We are, however, relieved of any extended consideration of the greater number of these cited references, because it was conceded at the hearing that the defendant relied for substantial anticipation of the first patent in suit upon the British patent issued to Henry Edward Newton in .1866 for improvements in optical instruments; that to Nathan Lazarus in 1881 for improvements in the manufacture of achromatic lenses; ■ and letters patent No. 392,053 issued to August Morck, Jr., in 1888 for improvements in spectacles or eyeglasses. With respect to the first two, it is sufficient to state that they concededly recognize the use of two kinds of glass, crown and flint, in the manufacture of lenses; as their titles indicate, they concern eyeglasses either incidentally or remotely ‘and bifocals not .at all. . It is upon the Morck patent that defendant mainly relies for its defense of anticipation of the first patent in suit; and, if the claimed invention of the latter is not disclosed by the Morck patent, then it is not anticipated by any of the other references cited.
“consists in securing upon the lower surface of the selected far-vision lens a spherically-ground lens of about one-fourth to one-third of the surface of the larger lens, and which is selected with a view to near-vision purposes, and when combined with the larger lens in the manner stated produces a glass adapted for rise for both close and distant range. When the two lenses are united, as stated, the larger or far-vision lens extends to the lower rim of the inclosing frame on both sides of the near-vision lens. * * * It will be seen that the near-vision lens 8. while having its edge bounded by a curved line of which every part is equally distant from a center, which is preferably just outside of the rim at the lower side of the frame, is made to taper to a feather edge along the segmental line, and therefore the lens 8 has its thickest part along the lower edge. This construction obliterates the surface line 9 to the sight, while giving a perfectly defined area of near vision. It avoids the objection of a horizontal straight projecting ledge, which forms a shelf for the collection of dirt and dust when such near-visio'n lens is formed thickest at such straight line; and it makes the change from a far-vision to a near-vision lens gradual as the eye crosses the segmental line at its highest point on the surface of the far-seeing lens.”
When the first patent in suit was originally presented to the patent office, it was rejected by the examiner in the following language;
“The claims of the above-entitled application are rejected in view of patent to Morck, Jr., No. 392,053, October 30, 1888, optics, eyeglasses.”
Thereupon the applicant made the following amendments: He erased the word “preferably,” as used in the specification describing the minor lens, making it described as “formed of flint glass” and of “glass of different index” instead of as “preferably formed of flint glass” and “preferably glass of different index.” He also erased claims 2 and 3; there being three claims in the patent as originally filed. Original claim 1 was left without a numeral as the sole claim of the patent. Defendant contends that the use of the word “preferably” in the original specification indicated that Borsch did not then have in mind the use of glass of different index inbedded in a recess as the central idea of his invention. I think, however, that the specification as a whole clearly indicates that he had such structure in mind, and that the word “preferably” was erased in order that there might be no doubt respecting it, also to exclude any claimed interference with the Morck patent which might be predicated upon the use of projecting glass of the same index.
“A bifocal lens consisting of a major lens embodying a recess in one face and. a minor lens conformed to said recess and mounted and secured in place therein; said lenses being of glass of different index, substantially as set forth.”
A comparison of this claim with the remaining claim of the first patent in suit, heretofore quoted, will disclose that in all particulars substantial to this controversy they are the same. This being true, the
“Tire fact that Morck constructs both elements of glass of the same index, while applicant constructs his two elements of glass of dissimilar index, constitutes a distinction between Morck’s structure and applicant’s structure, which is fundamental and vital.”
“By the use of glass of different index, applicant is enabled to provide a construction of bifocal lens in which both faces are, so to speak, smooth; that is to say, a construction in which the small minor lens does not project beyond the plane of the surface of the major lens.”
“This construction, which is a very desirable and valuable one in the optician’s art, would not be possible were both pieces of glass of the same index, as in such construction the result would be the same as though the whole lens were formed of one integral piece of glass throughout and there would not be two distinct focal points.”
To this the examiner replied as follows:
“The present claim has been considered in connection with applicant’s argument. It appears that the terms of the claim cover all of the views shown, but it is believed that the only construction illustrated which would be operative for use in a bifocal spectacle lens is that shown in figures 1 and 2, inasmuch as the difference in refractive power between glass of the lowest refractive power known and glass, or quartz, of the highest power known would not be sufficient to make a practical bifocal lens wherein the difference in magnifying power were dependent wholly upon the different indices of refraction of the glass. Therefore it is believed that applicant would be compelled to-depend upon the difference of curvature of the major and minor lenses for ali practical effect. Furthermore it is not considered invention merely to make a bifocal lens wherein the major lens is of a different kind of glass from the-minor lens, in view of the fact that the difference in power secured thereby would be inappreciable.”
“It is believed that applicant might be entitled to a patent if he were the first to insert in the concavity of a major lens a small or minor lens, and thereby obtain greater security in the junction of the two lenses so that they would be less likely to be displaced by the friction of spectacle wipers or of' accidental contact with surrounding objects. But the Morck patent, cited,, shows a small lens inserted in a concavity in a larger lens, the two combined forming a bifocal lens, and having, so far as the firmness of union is concerned, exactly the same advantages as are obtained by the construction of applicant. To make the two parts of different kinds of glass, having different refractive powers, is believed not to be invention in view of the common knowledge among opticians of the uses of the different kinds of glass, and particularly inasmuch as it is believed that in a spectacle the difference in refractive power would be practically insufficient to produce any appreciable difference of focus. It is thought, therefore, that the claim should be rejected.”
There is no hint in this that the examiner thought that Morck was using glass of dissimilar index. There is every indication that he thought just the opposite in so far as the essentials of the invention are concerned, because he doubts the effectiveness of the combination when the minor lens is reduced so much in size. He does think that
Now, from all this, counsel for defendant argue that complainant, because of this reference and the views expressed by the examiner, is estopped from claiming anything disclosed by the Morck patent and contend that the Morck patent teaches not only the use of a recess, but also the employment of different kinds of glass having different refractive power. It is doubtful if this contention should be sustained. The patentee firmly stood upon his specification and claim without change. The examiner receded and allowed the patent. It may well be doubted whether any of his objections can operate to narrow the import of either specification or claim. Certainly they could have no such effect upon the use of glass of different index. If such •a limitation can be raised, it must be from the disclosures of the patent itself, independently of anything said or done in the Patent Office. Defendant’s experts and its counsel then attempt by elaborate and ingenious argumentation to make the Morck patent disclose not only a recess in which the minor lens is imbedded, but the necessary employment of different kinds of glass of different index of refraction. In my opinion, this effort fails utterly. Neither in specification nor claim is any reference made to such a use, and the inventor must necessarily have considered it of prime importance; if he had it in mind at all. The entire argument is based upon the alleged formation of figure 4 of the Morck patent; and, to make their theory, consistent, experts and counsel are compelled to reconstruct the entire drawing. They first discover a depression where it has at least doubtful existence; and then, to make this depression pertinent, they are compelled to pare away an obvious excrescence upon the face of the same figure of the drawing. Thus they argue that the minor lens, according to this reconstructed drawing, is wholly imbedded in a recess in the major lens; and as it would then be inoperative, unless made of glass .of different index from that of the major lens, why, of necessity, they saj", glass of different index must have been used. This is not only in defiance of the drawing itself but of -the spirit of the specification as well. The latter specifically seeks to get rid of the sharp horizontal line of separation existing in prior structures. It therefore describes the minor leus as segmental instead of horizontal in outline and makes it taper to a so-called feather edge at its upper point of contact; its
“When it is sought to ascertain the state of the art by means of prior patents, nothing can be used except what is disclosed on the face of those patents. They cannot be reconstructed in the light of the invention in suit and then used as a part of the prior art.” Naylor et al. v. Alsop Process Co. (C. C. A.) 168 Fed. 911-920, 94 C. C. A. 815, 324.
“A prior publication, referred to as an anticipation, must be given effect in accordance with what it actually communicates to the public, and expert testimony cannot be received for the purpose of showing that statements therein made were erroneous, and to give it the effect it would have if reconstructed so as to disclose matters which it might or should have stated,*93 but which it in fact did not.” Badische Anilin & Soda Fabrilt v. Kalle & Co., et al. (C. C. A.) 101 Fed. 802, 44 C. C. A. 201; American Thermos Bottle Co. v. Vacuum Specialty Co. (C. C. A.) 178 Fed. 552, 101 C. C. A. 232.
The disclosures of the Morck patent, as interpreted by defendant, are at least vague and uncertain, and skilled experts differ radically as to their import.
Let us now consider the defense of anticipation as applied to the second patent in suit. In this discussion we may disregard all the cited references but three. The defendant avowedly relies upon the Newton and Lazarus patents heretofore referred to and upon that issued to Leon Kokocinski July 28, 1896, for improvements in spectacle lenses. This patent had to do with welding together two sheets of glass, one colored or shaded and the other transparent, so that the upper portion of the lens might protect the eye from light. All that can be claimed for these three patents, cited against the Borsch, Jr., invention, is that they refer to the union of different pieces of glass by
“It constitutes no anticipation and no defense to a claim of infringement that one or more elements of a patented combination, or one or more parts of a patented improvement, may be found in one old patent or publication, and others in another, and still others in a third. It is indispensable that all of them, or their mechanical equivalents, be found in the same description or machine, where they do substantially the same work by substantially the same means.” Owens Co. v. Twin City Separator Co. (C. C. A.) 168 Fed. 259, 93 C. C. A. 561; National Hollow B. B. Co. v. Interchangeable B. B. Co. (C. C. A.) 106 Fed. 693-706, 45 C. C. A. 544; Eldred v. Kirkland (C. C. A.) 130 Fed. 342, 64 C. C. A. 588; Knickerbocker Co. v. Rogers et al. (C. C.) 61 Fed. 297; Parks v. Booth, 102 U. S. 96, 26 L. Ed. 54; Potts v. Creager, 155 Ü. S. 597, 15 Sup. Ct. 194, 39 L. Ed. 275.
It remains only to consider whether these patents are capable of conjoint use, and whether the complainant can maintain its suit "upon the bill tendered. Defendant contends that the two patents are inconsistent in that the first calls for two separate pieces of glass, while this element is absent from the Borsch, Jr., patent, as well as from defendant’s structure. Each patent is invoked only to the extent that it discloses a distinct step of improvement; that of the first patent narrowed, as contended by complainant, and as conceded for the purposes of this argument, is the employment of glass of different indices of refraction in the combination described. The Borsch, Jr., patent adds the element of fusion as an advance over cement. The complainant owns both features, and it can avail itself of both in the same structure without inconsistency. The first Borsch patent describes a bifocal lens formed of two pieces of glass secured face to face by cement; the second Borsch patent a bifocal lens consisting of a body of glass or similar substance of any refractive power, and a portion of glass or similar substance of different refractive power secured by fusion to the said body of glass or similar substance. Here again two kinds of glass enter into the composition of the lens, the two being made integral by fusion. The one patent supplements the other; the two may be and actually are used in conjunction, and so used aré infringed by defendant’s structure.
The injunction and accounting prayed will be granted.
