Mayer v. Mutschler

248 F. 911 | 2d Cir. | 1918

HOUGH, Circuit Judge

(after stating the facts as above). [1] Claims 47-49 seem to us to have been recognized as valid by inadvertence, for as to them we agree with plaintiff’s very distinguished expert, who frankly said that, since the relative positioning of rolls and equalizer was not made a positive element in these claims, “some of the references of the prior art read directly on” them, unless the court could “read into” them the relative positioning aforesaid as “producing a definite result.” We know no method by which one claim or set of claims can be helped out, by judicial incorporation therein of oilier claims or any part thereof; nor in this instance is it doubtful that the subject-matter of 47-49 is quite different from that of tlie others in suit. Since they are proved as anticipated by plaintiff’s own evidence, we need pursue the matter no further.

[2] As to the other claims, we cannot doubt, nor is it denied, that whatever inventive tlioiight is in them lies in bringing nearer together the coating and smoothing rolls, and interposing a scraper into that minimized space. How much nearer these old tools of many prior art machines were brought by Mayer we cannot know from the specification; and this implied criticism on the sufficiency of the disclosure is sought to be avoided by saying (as do plaintiff’s expert and counsel) that what the patentee did was to abolish the “cold zone” —i. e., the distance between edge of dope pan and axis of smoothing roll — by reducing said distance to about 11 inches, thereby ironing out (so to speak) the coated paper before, either by atmospheric exposure or contact with other rollers, any substantial change could take place in the physical or chemical condition of what had been applied to the paper. “Cold zone” is one of those advertising phrases, unknown to the patent, and invented to aid it, of which we have spoken before. Sundh, etc., Co. v. General Electric Co., 244 Fed. 169, 156 C. C. A. 591. What is patented here is not a condition or result, nor even a method or process, but a machine; i. e., the means of making something. And the question of invention is just this — was it of patentable novelty to reposition the old parts of a well-known machine, if the change produced either a new or an improved result? The answer to this query depends on whether the result is new or merely an improvement, whether the difference obtained is one of kind or of degree. Seymour v. Osborne, 11 Wall. 516, 20 L. Ed. 33; Railroad, etc., Co. v. Elyria Iron, etc., Co., 244 U. S. 285, 37 Sup. Ct. 502, 61 L. Ed. 1136. This question of fact we shall not attempt to resolve, and have stated it only to emphasize the definition of whatever invention can be claimed.

There are two points on which we feel constrained to differ with the court below, each of them dispositive of this case:

[3,4] 1. Mayer has long made coating machines; indeed, this is not his first patent. In 1907 he sold several machines to a company managed by one Archbald, who is still in business, and is himself a mechanic, if not an inventor. Archbald had and has machines of makes other than Mayer, and experimented in changing and adapting his stock of tools. He made and still has what in this record is called the “18-in. machine,” because that is the size of paper for which it is designed, and we find that that apparatus was finished and used by August, 1908; has coating and smoothing rolls close together, with scraper (and nothing else) interposed, so that the paper is not touched by any other object in its journey from dope roll to scraper, and scraper to the next adjacent roll.

The rules as to prior use are severe, and rightly so, and Archbald is a witness hostile to plaintiff; but the existence of the machine is not denied, its date of erection proved by other testimony than Arch-bald’s, as also is its unchanged condition, and still another witness swears that it was in 1911 as it is now.

Certainty beyond reasonable doubt is reached by quality of evidence, and much depends on the nature of the thing sworn to. One witness may suffice (Tompkins v. N. Y. Woven Wire, etc., Co., 159 Fed. 133, 86 C. C. A. 323) if the surrounding circumstances are confirmatory; here are more witnesses than one, and we regard the circumstances as highly corroborative. The machine in question was designed for small work (it is also called the “little” machine in the record), and it is to us a most natural thing, in such a device, to abolish for lighter work idlers and guides used in larger apparatus, and compress the whole mechanism. Nor is the matter complex or difficult of statement, nor easily confused in memory. The machine* is simple, and its simplicity strongly assists belief in the statements that it has been what it is now since a date more than two years before Mayer’s application.

[5, 6] 2. The patentee made in 1908 a machine for production of carbon paper, known in this record as the “Stull machine.” The coating and smoothing rolls were apparently nearer together than in Mayer’s earlier machines, and there were interposed two equalizers, and an adjustable guide roll, functioning exactly as does the idler of defendants’ apparatus. The testimony is vague, but we may adopt as most favorable to plaintiff the statement of his expert that the distance from “double scraper” to smoothing roll was 10 to 15 inches.

It is too plain, to require more than statement, that, if this machine is prior art, there was no invention in abolishing one scraper and the guide roll, and making the remainder more compact by moving slightly closer coating and smoothing rolls. But, if greater importance be. attributed to the suppression of guide roll, then it will not lie in plaintiff’s mouth to allege infringement against defendants, who have that very thing.

We think the obviousness of the foregoing is the reason why the contest at trial was not over the similarities or differences of the Stull machine and that of the patent, but on the question as to whether that device was anything more than an experimental use within the rule of Elizabeth v. Pavement Co., 97 U. S. 126, 24 L. Ed. 1000.

That Mayer was experimenting and seeking to improve his product, whether of machines or paper, is not doubted, and it is admitted that the machine described in the patent is an improvement upon many earlier Mayer machines, including the so-called Stull apparatus. The patentee took, doubtless, one step at a time, and kept his machine's secret as much as possible; but, of course, he could not sell even what he reminiscently calls an experimental machine without making whatever the thing sold contained known to the public. One sale is a public use of whatever is parted with (Delemater v. Heath, 58 Fed. 414, 7 C. C. A. 279; Covert v. Covert [C. C.] 106 Fed. 183, affirmed 115 Fed. 493, 53 C. C. A. 225; Toch v. Zibell, etc., Co., 231 Fed. 716, 145 C. C. A. 597), even though what the purchaser got was imperfect, and subsequently greatly improved on (Star, etc., Co. v. Crescent, etc., Co., 179 Fed. at 859, 103 C. C. A. 342). We assume that the embodiment of the patent in suit is a much better machine than what Ma.yer made in 1908 ; but since that earlier machine would, if later, have infringed as plainly as does defendants’, and for the same reasons, in respect of the narrow range of claims here in suit, the sole question is whether what occurred amounted in law to a sale.

In 1908, Mayer was impecunious, and apparently harassed by “supplementary proceedings” under the New York practice, something which justifies the assumption that he was a judgment debtor. Stull was a member of the bar, who had loaned Mayer money and had an agreement with him by which Mayer was to make carbon for Stull, presumably on the “Stull machine,” and perhaps others. Mayer liad also obtained money from his wife, and in September, 1908, executed a chattel mortgage to her, which covered what is known herein as the Stull machine. In the following November Mayer gave Stull a formal written transfer or bill of sale of the same machine, subject to his wife’s mortgage, and she contemporaneously released the machine from the lien thereof. Five months later Stull as owner and in writing leased said machine to Mrs. Mayer, and she undoubtedly permitted her husband to malee coated paper upon it,, which was sold.

Plaintiff now contends that this tangled web was no more than a device to secure Stull for loan:;; that in effect he was but a mortgagee. As between the parties this may be true, though we do not so find. The point is immate dal, because what decides is the legal effect of the contractual acts of the parties and the resulting rights of the public. Stull became in 1908 the owner of this machine, of which the test is this: Any creditor of Stull could have levied on it, ánd Mayer would have been helpless; therefore the transaction was in law a sale — i. e., a transfer of title and property. Though- relating to a chattel, we need not inquire whether there was a change of possession, for the law of New York was complied with by the papers executed and delivered. Quite probably part of the reason for this apparatus of documents was to prevent Mayer’s creditors from reaching the property; but, just as ihe parties could not have turned the transaction into a mortgage to defeat Stull’s creditors, so they cannot now do it to defeat the rights accruing to the public by the formal sale to Stull.

Therefore there was, by the Stull sale, public use, as that term is interpreted, of a machine which would infringe the claims in suit, if later than the patent; the act occurred more than two years before application, and the claims are thereby invalidated.

Accordingly the decree is reversed, and case remanded, with directions to dismiss the bill, with costs in both courts.