155 F. 535 | U.S. Circuit Court for the District of Oregon | 1907
(after stating the facts as above). The defendant has interposed four defenses to the bill of complaint, which, briefly stated, are as follows: First, that the Maunula patent anticipates the Haataja invention, and therefore that the patent for the latter is void; second, that defendant’s machine does not comprise all the elements of the combination as specified in the alleged Haataja letters patent, and therefore that defendant does not infringe such letters patent; third, that the third claim of the Haataja letters patent sets forth a subcombination of parts not supported by anything contained in the specifications; and, fourth, that defendant’s machine does not
I think it may be safely premised that the Maunula machine exhibited novelty and invention. This becomes at once apparent by a consideration of the state of the art prior to the time when the invention was evolved. As disclosed by the testimony, the manner of leading cord prior to that time was to wrap the lead about it and make it secure by hand, no other method being known to the art. Were it not, therefore, for this invention, the patent for which has become extinct because of its existence for more than 17 years, there could be' no question that the Haataja patent possesses the quality of novelty. So we come naturally to the question whether the Maunula letters patent anticipate the Haataja machine.
The claim of the plaintiff is that the Haataja letters patent cover a combination of old elements, producing an old result, but in a more facile, economical, and efficient way; therefore, that the device is new, and the result of inventive genius and power. If the machine is of this character, it was patentable. The rule is comprehensively stated by Sanborn, Circuit Judge, sitting in the Court of Appeals, Eighth Circuit, as follows:
“The second claim of the first patent to Hien is for a combination of old mechanical elements in a new way. It is not for new elements, but for a new method of combining old elements; and a new combination of old elements, whereby a new and useful result is produced, or an old result is attained in a more facile, economical, and efficient way, may be protected by patent as securely as a new machine or composition of matter.” National Hollow B. B. Co. v. Interchangeable B. B. Co., 106 Fed. 693, 706, 45 C. C. A. 544.
And recognized by Morrow, Circuit Judge, in the case of Moore v. Schaw (C. C.) 118 Fed. 602, 606, which affords apt illustration as well:
“All of these results appear to have been accomplished by the complainant’s device, and in the art of riveting it is certainly a new and useful result to produce a device which will accomplish several times as much work in a given time as any mechanism before in use, and requiring less expensive labor to operate it; and the adaptation of old elements to this new use required, in my judgment, the exercise of the inventive faculty.”
See, also, Seymour v. Osborne, 11 Wall. 516, 20 L. Ed. 33; Rees v. Gould, 15 Wall. 187, 21 L. Ed. 39; Ide v. Trorlicht, Duncker & Renard Carpet Co., 115 Fed. 137, 53 C. C. A. 341.
That the combination is new is manifest from the different arrangement of the mold-blocks, the substitution of the guides and bars for the reel, and the wide dissimilarity in the manner of operating the machine. But it is urged that this is not the result of inventive genius, but of mechanical skill only. It is unquestioned that the Haataja machine is of superior utility to that of the Maunula patent. The latter was cumbersome, slow, and tedious of operation. The Haataja machine may be operated with much greater facility, and is productive of largely increased results. It is a fact in evidence that the Maunula machine was scarcely used at all, while, upon the production of the present invention, its utility was at once appreciated by the public, and a demand, for its manufacture became importunate. While the new
In avoidance of this conclusion, defendant insists that his machine, that is, the one constructed by him and inveighed against by the bill of complaint, does not impinge upon the Haataja patent because it does not combine all of the elements of the patented combination. The most important of the elements which it is claimed are not combined in his machine are the closure-strips, removably attached to the mold-blocks, the manner of the adaptation of the cut-off, and the arrangement and adaptability of the guides and pin-bars. Other alleged dissimilar ingredients are enumerated, but these are sufficient for a determination of the principle governing all.
Mechanical equivalents are not patentable, and their employment in combination with other elements of the patented device does not avoid infringement. A mechanical equivalent is defined by Mr. Walker, in his work on Patents, fourth edition, section 354, “as a tiling which performs the same function, and performs that function in substantially the same manner, as the thing of which it is alleged to be an equivalent.”
Applying the definition, it is said in National Hollow B. B. Co. v. Interchangeable B. B. Co., supra:
“Mere changes of the form of a device or of some of the mechanical elements of a combination secured by patent will not avoid infringement, where the principle or mode of operation is adopted, unless the form of the machine or of the elements changed is the distinguishing characteristic of the invention.”
And, as illustrative, Circuit Judge Townsend applies the principle in New Departure Bell Co. v. Bevin Bros. Mfg. Co. (C. C.) 64 Fed. 859, 864, as follows:
“It is true that in the patent in suit the base plate is stationary, while in the defendant’s device it is caused to rotate, and that the levers are differently arranged in the two devices. But in each case the different parts operate to perform the same functions in substantially the same way, and the alleged differences of operation are merely such colorable and formal ones as result from the use of mechanical equivalents.”
To the same purpose see National Typographic Co. v. New York Typograph Co. (C. C.) 46 Fed. 114, Columbus Watch Co. v. Robbins, 64 Fed. 384, 12 C. C. A. 174, Ide v. Trorlicht, Duncker & Renard
The principle thus stated and elaborated has pertinent application as it respects all the ingredients or elements enumerated above in their relation to the Haataja patent. The function of the closure-strips-is to form the apertures through which the cord is to pass when laid' through the molds, which apertures are to be of size adapted to press-closely upon the cord so as to prevent the escape of the molten lead. Now, the molds devised in the mold-blocks of defendant’s machine-are provided with like apertures (but contained in the solid pieces), which press the cord and prevent escape in identically the same way. So that the function to be performed is the same as it respects both devices, and it is performed in substantially the same manner by compressing the cord and thereby forming a perfect mold. True, the closure-strips are removable, so that others may be substituted with-apertures adaptable to the size of the cord to be leaded; but these are-of little utility, as experience has demonstrated that different sized molds are required for different sized cord, because the heavier cord1 needs the heavier sinker to carry it down. The closure-strips, therefore, in combination with the mold-blocks, perform identically the same function as the mold-blocks constructed by the defendant for his machine, which is an alleged infringement upon the Haataja patent; and, vice versa, the mold-blocks of defendant’s machine are a mechanical equivalent for the molds-secured by the Haataja patent. It is a rule in patent law that the mere making of a device in one piece formerly constructed in two parts mechanically attached is not invention. Standard Caster & Wheel Co. v. Caster Socket Co., 113 Fed. 162, 51 C. C. A. 109. So the court says, in Howard v. Detroit Stove Works, 150 U. S. 164, 170, 14 Sup. Ct. 68, 70, 37 L. Ed. 1039, 1041: “It involves no invention to cast in one piece an article which has formerly been cast in two pieces and put together.”
Replying to this application of the principle, counsel for defendant say that then the Haataja patent as it respects this device was anticipated by the Maunula patent, and I think they are right. But the argument overlooks the theory, which is well founded, that the Haataja patent is a combination of old elements producing more efficient and expeditious results. The inventor of a combination is himself entitled to apply and adapt the equivalents for his own use. Indeed, his patent covers the equivalents as fully and effectively as it does the invention. Thus, where the alterations- are formal but are adapted to perform the same function, in substantially the same manner, the patentee is guaranteed the exclusive right to their employment for his sole benefit, and, if any one assumes to utilize such alterations in combination with the patentee’s combination, he becomes an infringer as certainly as if he had adopted the entire patented device. The change or new adaptation must be one of substance, and not a mere form, to avoid infringement. In other words, the substitute for the omitted ingredient must be a new one, or must be adapted to the performance of a substantially different function, or else it will inure to the right of the patentee. Rees v. Gould, supra, is a very instructive decision upon
What has been said as to the closure-strips applies in the main to the-cut-off and the new arrangement of the guides and pin-bars. They perform identically the same functions as the old, and in practically the same manner. Instead of cutting the leads by rotary action, the defendant’s machine cuts them by longitudinal process; but they are-cut, nevertheless, at the same juncture, and the result is the severance of the neck from the molded product, all without a particle of functional difference. So with the guides and the pin-bars. The latter are adjusted upon the former by means of holes and notches therein, in place of the slides, and both pin-bars are rotary; but they perform no different function whatever, and they perform the function in substantially the same way. The purpose of the rotary action in the pin-bars is to secure and release the cord with facility and bring about uniformity in the product. But a rotary motion in one bar while the other remains stationary answers the same purpose, so that the same function is performed whether one or both are rotatable. So I conclude that as to these features, and others pointed out but of similar character, they are but mechanical equivalents, and the adaptation of them by the defendant constitutes an infringement of the Haataja patent, now owned and controlled by the plaintiff.
I have not overlooked the contention of defendant that the Haatajapatent evidences an improvement and not a pioneer in the way of invention, and therefore that a strict construction should be applied in the ascertainment of equivalents, and that no device will impinge-unless it is practically of identical construction and operation. As-it pertains to pioneer inventions, a broad and liberal rule obtains in the ascertainment of'what contrivances and devices are to be deemed equivalents, which is for the adequate protection of the inventor who ■has successfully employed his faculties in producing a novel and, at the same time, a useful piece of mechanism. Not so with a mere improvement which, added to another person’s invention, performs practically the same function as the prior device. In such a case, the rule as to equivalents is greatly narrowed, and to infringe means to produce and adapt nearly the exact device claimed for the improvement. But between these two rules there is a range of flexibility that has relation to the state of the art and the vitality and importance of the advancement made therein by the improvement. If the improvement is of great utility and denotes a marked and signal advance in the state of the art, although not entitled to be denominated a pioneer, the law accords to the inventor a larger latitude of equivalents than it does where the improvement is of lesser or minor importance. Each case, therefore, is largely to be determined by its own peculiar features; it being of paramount importance that the inventor be protected against encroachment upon the output of his genius, according as his merits shall suggest. Miller v. Eagle Manufacturing Co., 151 U. S. 186, 207, 14 Sup. Ct. 310, 38 L. Ed. 121; Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 561, 18 Sup. Ct. 707, 42 L. Ed. 1136; Cimiotti Unhairing Co. v. American Fur Refining Co., 198 U. S. 399, 406,
In this relation should be considered the further objection which is the basis of defendant’s fourth defense. It is insisted that, by reason of the setting of the pins in relation to the pin-bars in defendant’s machine, being curved in line with the bars rather than laterally, they are suited to a more ready release of the cord without rotation of the bars. But this partakes more of the application of venius to avoid infringement than to invent or construct something really new or novel. The functional difference between the two contrivances is not appreciable.
The third objection relates to claim 3 as contained in the Haataja letters patent, which reads as follows:
“In a net-leader, the combination with a series of molds, of rotatably-mounted bars provided with pins, adjustable relative to said molds, substantially as described.”.
The specific objection is that it does not accurately describe the device, as it speaks of rotatably-mounted bars, when by reference to the specifications and drawings but one bar is so mounted. The rule seems to be that the claims are construed in connection with the drawings and specifications, and assuredly would this be so where reference thereto is made in the claim by the use of the qualifying words “substantially as described.” There was possibly a mistake in drafting the claim, as but one bar was designed to be rotatably-mounted, but by reference to the drawings and specifications there can be no doubt as to the patentee’s intention, and I am not inclined to permit a mere technicality to defeat the patent. If the word “rotatably” had been omitted, the claim would have been technically suffeient. no doubt; but, when reference is made to the description of the invention, there can be no cavil as to what was designed to be claimed, and the claim is not rendered void by the discrepancy. Further than this, specific statements in subsequently enumerated claims show that one of such bars is fixedly attached while the other is rotatably attached. By reference to the nine claims exhibited by the letters patent it will be seen that each particular element of the patentee’s device is claimed separately and in combination; and it is made perfectly clear from a reading of the claims alone, without reference to the description, that the device consists, among other elements, of one fixedly and one rotatably attached bar, not two rotatably attached bars.
Two principles tersely stated by Sanborn, Circuit Judge, in National Hollow B. B. Co. v. Interchangeable B. B. Co., supra, are applicable here:
“When the intention of the parties is manifest, it should control, regardless of inapt expressions and teehnieal rules. In cases of doubtful validity or of ambiguous terms, that construction should he adopted which sustains and vitalizes the agreement, rather than that which destroys or paralyzes it.”
And so Coxe, District Tudge, pertinently says, in Gaisman v. Gallert (C. C.) 105 Fed. 955, 958:
*543 “When forced to choose between a construction which destroys and one that saves the patent the court should not hesitate to adopt the latter.”
Thus it is plain that, if this were a case of doubtful intendment as it respects the claim, that construction should be adopted which would lend support to the patent. However, looking through all the claims, the description, and the drawings and specifications, the intention of the claimant becomes perfectly manifest. So that the patent is not rendered invalid by the incongruity of statement in claim 3.
It results from these considerations that the injunction against infringement should be made permanent as prayed, and a decree will be entered accordingly.
