120 F. 267 | 6th Cir. | 1902
These two cases were argued and submitted together. In each the appellant complained of the infringement of patent No. 462,563, belonging to- it by assignment from Isaac W. Lamb, the patentee, who is also one of the defendants and appellees in the first of the cases above entitled. The patent is for a glove, and bears date November 3, 1891. The defendant in each case, other than the corporations named, are officers thereof; Lamb-being the president of the one named as defendant in the first-entitled cause. In each case the defendants, except Lamb, by their answers-disputed the validity of the patent, and all denied infringement. The causes were heard upon pleadings and proofs, and the bills in both cases were dismissed upon the ground that the patent was void for lack of invention, except with respect to the defendant Lamb, and as to him because it was not shown that he infringed.
The patent was issued to Lamb for a glove constructed from two-blanks, one for the thumb and the other for the rest of the hand, including finger pieces. The specification describes these blanks as being fabrics knitted upon a machine, and then joined and put into-form by sewing or crocheting. The method of making the blanks-upon the machine is specified with such minuteness that a skilled operator could make them without further direction, and display's-a good deal of ingenuity. The claims of the patent are as follows:
“(1) A glove formed of two blanks, tbe hand blank having finger pieces formed thereon, and narrowed at the point where the thumb is attached, and of a uniform width from the thumb to the wrist, and the thumb blank having, its upper portion knit goring, substantially as described. (2) A glove composed of a main blank having finger pieces narrowed at the bases, said blank being narrowed at the point where the thumb is attached, and having its-upper portion of uniform width, and a thumb blank secured to the main-blank at the point of narrowing, substantially as described. (3) A glove-comprising a main blank having the fingers thereof composed of seven pieces, six of which are narrowed at the bases, and a thumb blank suitably secured! to the main blank, substantially as described.”
The drawings are shown below in another connection.
A question of some difficulty meets us at the outset, which is not noticed in the briefs, nor was it commented upon in the argument. It will be noticed that the specification describes a glove made up of knitted blanks. The claims are for a glove made up of blanks constructed in the forms described, but there is nothing in them which expressly requires that they shall be knitted blanks, except that in the first claim there is a requirement that the thumb blank shall be knitted; and the question is: Are the claims to be construed as lim
A number of patents on knitting machines are shown by the record, containing directions for their use. They describe how a blank with thumb and finger pieces can be knit on them, but none describes-the method of the patent in suit of knitting the blank for the hand and the finger pieces in a single structure. In fact, those patents with their specifications fall far short of anything furnishing instruction for making the glove of the Lamb patent, and none of them pretended to do so. All that can be said of them is that the machines were capable of knitting circular work, and flat work also, which could thereafter be sewed up by hand. The nearest approach made by any previous patent to that of the Lamb patent was that of a patent to Wakeman in 1881, — No. 241,458, — the main object of which was to show a knit mitten in which the fabric was widened on knitting up from the wrist into the thumb, but having the rows of stitches parallel; and also showing the rows of stitches to be continuous in the main fabric and in the thumb. But this was round work. Stitches were thrown off at the base of the thumb so as to provide a square end. A cut was made into one side of the mitten where the thumb was to- be knitted on by pricking out the threads across enough of the rows so that with those dropped there should be enough left on which to continue the thumb. The patent being for a mitten, showed no finger pieces. It is obvious that it contained very little of the characteristics of the patent in suit. There-is -an English patent to Upsdale for knitted fabrics, but it is still more remote, and hardly furnishes a basis for comparison. Then there is the oral testimony of the witness Phelps, ,who is a son-in-law of the defendant Lamb, who swears that he himself at one time, pre
The defendants also contend that the patented glove is simply the product or result of the operation of the patented machine, and so is not of itself patentable. This might be so if it was the only thing that could be made on the machine ; but the machine is adapted to knitting of various fabrics, and it would seem that the instruction of this invention is necessary to enable the workman to construct the glove .on the machine. It is also urged that the patent shows “simply a good, average, well-fitting glove,” and that these are the advantages claimed for it; but that it really fits no better and looks no better than other gloves. We cannot say how this is. No doubt, however, is expressed of its utility. The defendants are engaged in the business of manufacturing and selling something very similar to it, and this must be accepted as very cogent evidence for the purposes of the case. Lehnbeuter v. Holthaus, 105 U. S. 94, 96, 26 L. Ed. 939; Gandy v. Belting Co., 143 U. S. 587, 595, 12 Sup. Ct. 598, 36 L. Ed. 272. It may be more or less useful than other gloves. That is unimportant. If it is a useful article, and is new, it is the proper subject of a patent, provided it involved invention to produce it. Gibbs v. Hoefner (C. C.) 19 Fed. 323; La Rue v. Electric Co. (C. C.) 31 Fed. 82; Seymour v. Osborne, 11 Wall. 516, 549, 20 L. Ed. 33. We think these conditions existed, and that the patent is valid.
Upon the question of infringement, the glove manufactured and sold by the defendant in No. 1,103 (the Michigan Knitting Company) is identical, or so nearly so that we are unable to distinguish it in any essential particular from the glove of the complainant. All three of the claims are infringed. The glove of the defendants in the other case shows substantially the same characteristics as those of the first and second claims of the patent, with some slight variations, which, however, furnish only a frail foundation for distinguishing them. It is conceded that the third claim is not infringed by these defendants. It looks to us as though the defendant Lamb had claimed to carry over into his new company more of what he had invented than was consistent with the rights of his former associates. This, perhaps, was not altogether unnatural, for this art was what he had made it. And wp think also that he must be held responsible with his corporation for the infringement. He states in his answer that the gloves manufactured by the defendant corporation are made by a “new and improved” method invented by his skill expressly for that purpose. The answer of the corporation says the same thing. Both answers seem to found théir denial of infringement upon their contention that their product is something different from that of the complainant. We can have no doubt, if there is infringement, that Lamb should be held to be a contributor to it. The
Another matter remains to be considered. When these appeals were taken, counsel for the respective parties agreed upon the parts of the record which they would require to be embodied in the transcripts in the respective cases, being all such parts as they deemed essential for the purposes of revision in this court. Written stipulations containing this agreement were filed with the clerk of the circuit court, and he was requested to proceed accordingly. The clerk declined to recognize the stipulations, being of opinion, as we infer, that his duty required him to return the whole record, and that the stipulation of the counsel would not justify him in doing less, and he made complete transcripts in both cases. We are of opinion that the clerk erred in this. The proper course was for him to observe the agreement of counsel, and leave the parties to abide the consequences. His certificate to the transcript would, of course, be according to the fact, and state 'that the transcript was a copy of so much of the record as counsel had required him to include in the transcript. If it should be found by this court that the transcript did not contain all that was necessary to a proper determination of the case, and that justice required a further return, this court would make an order therefor, and in the end make the proper order in regard to costs. The endeavor of counsel to eliminate matter which has been found to be superfluous and unnecessary to a review in the appellate court is one to be encouraged. It mitigates the costs to the parties, and facilitates the labor of the court. The supreme court has on several occasions complained of the neglect of counsel to perform this duty, and our own experience has been such as to impress us with the justice of reproof in such cases. The duty which devolves upon counsel in this respect cannot be performed if the clerk who makes out the transcript refuses to be governed by their directions.
Entertaining these views, we must direct that in the taxation of costs only such costs in respect to the making of the transcript as are due for so much as was included in the stipulations shall be considered or taxed.