143 F. 342 | U.S. Circuit Court for the District of New Jersey | 1906
The bill of complaint charges the defendant with infringement of letters patent No. 398,625, issued February 26, 1889, to William Koch, and duly assigned to the complainant, for a cash indicator and recorder, and asks for the usual relief in such cases. The answer denied the validity of the complainant’s patent for want of invention, and also denies infringement. The only claim involved is No. 3 which is as follows:
“(3) The combination, in a cash-indicating machine, of two or more groups of keys, a series of two or more indicating wheels, each bearing numbers or characters, corresponding with the keys in one of said groups, and which are mounted to be read in their normal order from left to right at the front of the machine, and a second series of duplicate wheels mounted to be read in similar order from left to right at the rear of the machine, the corresponding wheels in the two series being geared to move in unison and to be actuated simultaneously by the movement of the one key appropriate thereto, substantially in the manner and for the purpose herein set forth.”
The defendant claims that its machine does not infringe this claim, because it has no keys, and because, even if it has what may be called keys, it does not have two or more groups of keys as called for by claim 3 of the complainant’s patent. It will be instructive at this point to examine the file wrapper of the patent in suit to learn the history of claim 3. As originally presented, it was known as claim 4, and was in the following form:
“(4) In a cash-indicating machine, duplicate indicating wheels, geared to move in unison and display simultaneously the same number or characters at the front and rear of the machine, substantially in the manner and for the purpose herein set forth.”
The claim in this form was rejected by the patent examiner in a letter dated June 30, 1888, citing patents of McCulley and Taylor, numbered respectively, 200,076 and 380,831. Koch thereupon, on July 16, 1888, struck out claim 4, and substituted therefor a new claim, numbered 3, expressed as follows:
‘‘(3) In a cash-indicating machine, a duplicate series severally embracing two or more indicating wheels all geared to move in unison, and display simultaneously both at the front and rear of the machine, a duplicate series of two or more numbers or characters to be read alike in the same order from left to right in both series, substantially in the manner and for the purpose herein set forth.”
This claim was likewise rejected July 27, 1888, for lack of clearness in expression, and for the further reason, using the language of the examiner, that “the subject-matter of this claim, is, however, fully met in the Taylor patent of record.” After this rejection, and on July 30, 1888, Koch canceled the amended claim, and substituted .a new claim 3, which is the one involved in this suit, whereupon the patent was allowed. He furthermore, on July 16, 1888, while his application was pending, amended his specification in several respects, •one of which amendments reads as follows:
*344 “Nor do I claim broadly duplicate indicating wheels geared to move in unison and display simultaneously the same numbers at front and rear of the machine; my invention' consisting in the novel combination and arrangement of a duplicate series at front and rear of the machine, each comprising two or more wheels geared and arranged to be simultaneously operated, so that the several numbers in both series shall simultaneously read correctly in the same order from left to right.”
The defendant insists that the amendments thus made by the patentee to his claim necessarily narrowed it, so that the only novelty shown, and that upon which the Patent Office allowed the claim,, consisted in the two or more groups of keys with their differential action. Whether Koch intended such limitation or not, or whether he incorporated the matter relating to the keys, their character and manipulation, in order to show novelty or not, the fact remains that they are included in the claim in such a way as to constitute them an element of the combination, and their presence cannot be ignored. Water Meter Co. v. Desper, 101 U. S. 332, 337, 25 L. Ed. 1024; Fay et al. v. Cordesman, 109 U. S. 408, 420, 3 Sup. Ct. 236, 27 L. Ed. 979.
Complainant’s expert has testified that the matter pertaining to the group of keys was inserted, not to overcome the Taylor patent, but to confine the claim to the cash register art. In tffis, however, he is clearly mistaken, as the claim was thus confined from the beginning and continued to be so confined when the amendment referred to was-made. If, then, in the combination disclosed by claim 3, any device which is not the equivalent of the two or more groups of keys called for by the claim has béen substituted by the defendant, such substitution does not constitute infringement. Koch’s whole device consists in the corresponding wheels in the two series being geared to-move in unison and be actuated simultaneously for the purpose expressed by the movement of one appropriate key; this one key thus-moved being a single key of one of the groups of keys called for by the claim. Considering the amendments made to the claim while it was under consideration by the examiner, and the disclaimer made by the patentee, it seems to me that the claim is restricted and should' be narrowly construed and limited to substantially the devices claimed.
The defendant maintains that its machine is not an infringement of the plaintiff’s, because it does not have keys at all, least of all groups of keys. The keys of the Koch patent are individual keys,, like those of a piano or typewriter, and are independently actuated. They appear in groups of nine, each key of a group representing only a part of the value or denomination represented by the entire group. Each key moves independently of every other key in its group and independently of every key in every other group. These keys, while operating independently and having the same length of stroke, nevertheless operate differentially, through other mechanism, the appropriate indicating wheels. A key, when moved, moves the corresponding indicating wheels the same distance; that is, if key 5 is struck, the corresponding indicating wheel will move the requisite distance to-disclose the figure 5. For keys, the defendant has substituted what are called “segmental levers,” which move upward and downward through
In the defendant’s machine the differential effect is not produced by mechanism at all, but entirely by the manual act of. the operator, who moves by his hand and at his pleasure the segmental lever a greater or less distance, while in the Koch patent the differential is produced entirely by mechanism. If the operator upon the Koch machine desired to disclose upon the indicating wheels the figure 5, he must depress key 5, and that key only; while upon the defendant’s machine, to accomplish the same result, he need not necessarily touch handle 5, but he may use any other handle, or the segmental lever itself, but in using the latter he will be required, for reasons already stated, to exercise more care. The handles are unnecessary. Their function could be as readily obtained by a notch in the side of the lever, or even by a mark upon its face; hence, while the handles are a convenient, and possibly the most convenient, guide, they are nothing
Considerable stress has been laid by counsel upon the appropriate name wherewith to characterize what we have called “handles” or “segments.” Their terminology is, however, of small importance. It matters little whether they are called “keys,” or “segments.” or “guides,” or “handles,” since, by whatever term they are called, the real question remains: Do they employ the same means, operating in the same way, to effect the same result, that is produced by .the keys of the Koch patent? For it may be admitted that the keys or handles and segmental levers of the defendant’s machine produce substantially the same result as the keys produce in the complainant’s patent, without admitting that the defendant is infringing upon the complainant’s device. They may attain the same result, and yet accomplish it by radically different mechanism. To constitute infringement, the two devices must perform the same function in substantially the same way. The complainant’s expert claims that there are 36 keys in the defendant’s machine and that they are arranged in four groups. He evidently reaches this conclusion by calling each segmental lever, with its handles, a group of keys. I think it has been satisfactorily shown, however, that the segmental levers with the numbers thereon, are not, when taken either collectively or singly, the equivalent of the keys referred to in the patent in suit. This is not only the opinion of defendant’s expert, but a close examination of the two devices seems to sustain him. It is true that the parts of the defendant’s segmental levers, which have been called “handles” or “segments,” were, at the commencement of their manufacture, in a comparatively few instances, and for a short time, called “keys” by the defendant’s predecessors in business. This fact, however, is quite unimportant, and has, moreover, been satisfactorily explained. In the cash register art, they are generally otherwise known and designated. In this connection it may be added incidentally that the complainant in its business, in referring to the defendant’s device, has, as will be referred to later, called the segmental lever and handles of the defendant’s machine a “ladder.” It seems unnecessary, however, to discuss the matter further. I have reached the conclusion that the defendant’s machine does not infringe the complainant’s, since it does not use two or more groups of keys operated by a single key, as required by claim 3 of the complainant’s patent.
It is furthermore urged by counsel for the defendant that the complainant should not be permitted to prosecute this suit further because of its delay in instituting it. Laches is a defense which need not be pleaded. It may be raised upon the argument, or the court may, when it appears, be passive and refuse relief. Sullivan v. Portland R. R. Co., 94 U. S. 806, 811, 24 L. Ed. 324; Woodmanse & Hewitt Mfg. Co. v. Williams, 68 Fed. 489, 493, 15 C. C. A. 520; Westinghouse Air Brake Co. v. New York Air Brake Co. (C. C.) 111 Fed. 741. It appears in the case at bar, and is not denied, that the defendant’s prede
In the case of McLaughlin v. People’s Railway Co. et al. (C. C.) 21 Fed. 574, a demurrer was sustained for 13 years of laches. In Edison Electric Light Co. v. Equitable Life Assurance Co. (Fed.) 55 Fed. 478, the fact that the patent in suit had been infringed for 11 years was set up by a plea, and the plea was allowed. In the case of Kittle v. Hall (C. C.) 29 Fed. 508, the court, after stating that the case was not free from doubt, declined to dismiss a bill for 7 years’ delay in bringing suit; such delay having been partially accounted for and excused. Where a patent had laid dormant for 15 years, having been infringed by the defendant with complainant’s knowledge for 7 years without protest, the bill was dismissed. Westinghouse Air Brake Co. v. New York Air Brake Co., supra. See, also, Covert v. Travers Bros. Co. (C. C.) 96 Fed. 568; Meyrowitz Mfg. Co. v. Eccleston et al. (C. C.) 98 Fed. 437; Richardson v. D. M. Osborne & Co. et al., 93 Fed. 828, 36 C. C. A. 610; Woodmanse & Hewitt Mfg. Co. v. Williams et al., supra; Calhoun v. Southern Cotton Oil Co., 121 Fed. 1018, 57 C. C. A. 327. Under the authority
The view which I have taken of this case renders it unnecessary for me to pass upon the validity of the complainant’s patent. Under the evidence, however, it is a grave question whether, because of the prior art, its patent could be upheld.
