72 F. 185 | U.S. Circuit Court for the District of Connecticut | 1896
At this final hearing upon a bill in equity, complainant prays for an injunction and accounting, alleging infringement of letters patent No. 447,791, granted March 10, 1891, to James B. Osterhout, assignor to complainant. The record in this very complicated' case has the refreshing merit of exclusion of irrelevant matter, and inclusion of all necessary evidence. The questions at issue have been exhaustively presented in admirable briefs, and by lucid and thorough oral arguments.
The patented device is for an improvement in machines for cutting and stitching buttonholes. The specification states that:
“One general object of this invention is to provide buttonhole sewing machines with practically successful cutting mechanisms, -which shall automatically cut a buttonhole only when the machine is stitching at a predetermined Xiortion, 'part, or point in the periphery of the buttonhole.”
The patent covers a novel machine, comprising patentable improvements upon previously existing devices, whereby new and useful results were produced. The defense is denial of infringement. Prior to the invention embodied in the patent in suit, and in certain patents relied upon by defendant, — notably, that to Egge in 1885,— no practical, automatic buttonhole attachments for sewing machines had been devised, which would both stitch and cut the buttonhole automatically. The problem presented was to provide a cutter which should not only automatically cut by a single stroke, at the proper time and in the proper place, but should be prevented from thereafter continuing the cutting operation. Defendant admits that Osterhout so far solved this problem by an inventive act that his device was capable of practical operation in the hands of an expert operator. And defendant further admits that the patents upon which it relies, and under which it manufactures, depend for their operation upon a finger or pin on a feed wheel such as is found in complainant’s patent. But they deny infringement, on the ground that this finger was well known in the prior art; that the claims in suit do not cover it, except in combination with other elements not used by defendant; and, further,because defendant’s machine shows invention, by the solution of the problem presented, upon a different principle, producing the same results in a different way. The
Buttonhole machines of the class in question comprise a stitch-forming mechanism, a work-moving mechanism, and a cutting mechanism. This litigation is concerned with the latter mechanism only. In this is included a cutter, a cutter carrier moving relatively to the plane of the work, a depressor to force the cutter through the fabric, and a cutter controller to cause the engagement of the cutter carrier and depressor. The claims alleged to have been infringed are the following:
•‘(1) In a buttonhole sowing machine, the combination, with its stitch-forming and work-moving mechanisms, of a 'work cutter and its carrier, normally elevated; a depressor, which ordinarily does not depress the cutter carrier and cutter; a cutter controller connected to and moving with the said work-moving mechanisms; and connections between the said cutter controller, cutter carrier, and depressor, whereby the latter is temporarily caused to depress the cutter carrier and cutter,--substantially as set forth. (2) In a buttonhole sewing machine, tlie combination, with its stitch-forming and work-moving mechanisms, of a work cutter and its carrier, normally elevated; a depressor, which is operated hy tlie needle-actuating mechanism of the sewing machine, and which ordinarily does not depress the cutter carrier and cutter; a cutter controller connected to and moving with the said work-moving mechanism; and connections between the said cutter controller, cutter carrier, and depressor, whereby the latter is temporarily caused to depress the cutter carrier and cutter, — substantially as set forth.” “(4) In a buttonhole sewing machine, tlie combination, with its stitch-forming mechanism, work clamps, and mechanism, including a rotary feed device lor operating the work clamp, of a work cutter and its carrier, normally elevated; a depressor, which ordinarily does not depress tlie milter carrier and cutter; a cutter controller connected to and rotating with the said rotary feed device; and connections between the said cutter controller, cutter carrier, and depressor, whereby the said depressor is temporarily caused to depress tlie cutter carrier and cutter, —substantially as set forth. (5) In a buttonhole sewing machine, the combination. with a stitcli-forming mechanism, a work clamp, and mechanism, including a rotary feed device for operating the work clamp, of a work cutter and its carrier, normally elevated; a depressor, operated by the needle-actuating mechanism of the sewing machine; a cutter controller connected to and rotating with the said rotary feed device; and connections between the said cutter controller, cutter carrier, and depressor, whereby the cutter carrier and cutter are temporarily depressed by tlie said depressor, — substantially as set forth.” “(7) In a buttonhole sewing machine, the combination, witli a stitch-forming mechanism, a work clamp, and mechanism for operating the work clamp, of a depressor, operated hy tlie actuating mechanism'of the sewing machine; a work cutter; its carrier; means to elevate the cutter carrier, and means to support it when elevated and disconnected from said depressor; a cutter controller connected to and moving with the mechanism operating tlie-work clamp; and connections between the said cutter controller,*188 cutter carrier, and depressor, whereby the cutter carrier is temporarily connected with and depressed by the said depressor, and is thereupon elevated and disconnected from the depressor, — substantially as described.” “(15) In a buttonhole sewing machine, the combination, with a stitch-forming mechanism, a work clamp, and mechanism for operating the work clamp, of a cutter carrier, normally elevated, and an attached cutter of suitable length to cut a buttonhole at one insertion; a depressor operated by actuating mechanism of the sewing machine, a cutter controller connected to and moving with the mechanism for operating the work clamp; and connections between the said cutter controller, cutter carrier, and depressor, the same being constructed and arranged so as to cause the cutter carrier and cutter to be depressed by the said depressor to cut a buttonhole when the sewing machine is stitching at or near one and part of one side of the buttonhole, — substantially as set forth.” “(21) In a machine for stitching buttonholes, the combination, with a stitck-formin'g mechanism, a work clamp, and mechanism for operating the latter, of a cutter, a cutter carrier or bar, a depressor operated by the needle-bar actuating mechanism, a cam or device rotating in unison with the clamp-operating cam or disk, and connections between the said rotating cam or device and depressor, whereby the cutter is thrown into action. (22) In a machine for stitching buttonholes, and combination with a stitch-forming mechanism, a work clamp, and mechanism for operating the latter, of a cutter bar sliding vertically in the head of the machine, and entirely disconnected from the needle bar thereof; a cutter of suitable length to cut an entire buttonhole at a single stroke; a slotted throat plate, through which the said cutter can descend; a depressor operated by the needle bar actuating mechanism to cause a descent of the cutter bar and cutter as a buttonhole is being completed; a cam or device rotating in unison with the feed cam or disk for the clamp; and connections between the said rotating cam or device and depressor, whereby the latter is thrown into action to operate the cutter.” “(28) The combination, with a buttonhole sewing machine, of a cutter, a cutter carrier, a cam from which motion is transmitted to the cutter carrier to depress the cutter, and mechanism whereby the depression of the cutter from the cam will be produced but once, and after the stitching of the greater part of the buttonhole, substantially as specified.”
The invention claimed in this patent consists of a cutter normally elevated, and out of engagement with the other parts of said machine, but which may be so connected with the work-moving and feeding mechanism that, at the appropriate time in the stitching of the buttonhole, it is caused to be positively and unyieldingly operated by the needle-actuating mechanism of the machine, so as to cut the buttonhole, and immediately thereupon to be again disengaged, and return to its normal position. In the stitch-forming mechanism of this class of machines, the needle does not move over the cloth, but reciprocates constantly in one position, while the work-moving mechanism imparts to the fabric a jogging movement for each stitch, and a progressive feed movement, whereby the cloth is so moved as to produce the required buttonhole.
A question which has been much discussed is whether the complainant’s cutter controller, as claimed, covers only a controller which necessarily controls the cutting during the entire period from the time'when it is automatically put into engagement, until the cutting operation is terminated, or whether it may also cover merely the means whereby it is put into engagement, without reference to the length of the engagement. The accompanying illustrations will serve to show the distinction between the two machines:
The defendant’s machine is constructed substantially in accordance with the Tebbetts & Doggett patent. The drawing on sheet 1 of said patent shows said cutter in operative combination with a Wheeler & Wilson buttonhole sewing machine. It also comprises a circular feed wheel attached to a Wheeler & Wilson machine, and having a laterally projecting finger or controller, like that of the patent in suit, operated in the same way. As the feed wheel revolves, a pin on said finger strikes an arm of a bell crank lever, causing said lever to slightly rotate and bring a latch into engagement with a catch on a collar on a needle bar rocker shaft. This latch is fastened by means of screws to a cutter bar rocker shaft. At the extremity of said cutter bar rocker shaft is an arm which operates the cutter carrier. On said cutter bar rocker shaft is a collar with a projection or finger thereon. The upper short arm of said bell crank lever is pressed against said finger when the lower arm is brought into engagement with the controller or finger on the feed wheel; 'thus causing a slight rotary movement of the cutter bar rocker shaft, sufficient to bring the latch into engagement, as above stated, with the catch on the collar carried by the needle bar rocker shaft. The rotary movement of the needle bar rocker shaft, communicated by said engagement to the cutter bar rocker shaft, causes a jaw or clutch at the extemity of said arm, connected with and operated by said cutter bar rocker shaft, to descend, and, in descending, to depress a finger, with which it is in engagement, on the cutter carrier, and thus to depress the cutter which cuts the buttonhole. While the cutter is thus being depressed the movement of said cutter bar rocker shaft causes a releasing, snail-shaped cam thereon to press against the top of said bell crank lever, thus releasing the arm of said lever from engagement with the controller on the feed wheel. Defendant claims that this releasing operation accomplishes what the patentees of said machine state as the main object of their invention, — a single automatic descent of the cutter, and the prevention
Prior to the invention of the patent in suit, fingers or projections on the feed wheel had been used to bring some independent or auxiliary device into operation at a predetermined point. Thus, in patent No. 1-103,453, granted to F. W. Ostrom August 12, 1884, a pin on the feed wheel released certain cording mechanism, so that it was operated by a spring, and also released certain brake; mechanism. This device did not suit. While it set a train of mechanism in motion, it did not throw it out of operation. In patent No. 240,540, granted April 20, 1881, to John Keece, for an automatic buttonhole; stitching and cutting machine, a cutter-actuating cam on the feed wheel, acting upon the cutter lever, caused the depressor of the cutter to cut the fabric, and thereafter permitted its release. This device was combined with a sewing machine having two needles, — one to make the edge stitch, and the other the depth stitch, — so that there was no jogging movement therein, and it furnished no suggestion for adaptation to machines having such movement. Ostrom patent, No. 303,454, is for a buttonhole cutter operated by hand. It was incapable of automatic operation. Allen patent, No. 246,859, is for an attachment for trimming the edges of fabrics. The trimmer descends and cuts at each descent of the needle; thus illustrating the step by step cutter, as compared with the single-stroke cutter. Its operation is controlled by hand, and, while it might be used in a two-needle machine, it is not adapted for use in a machine having a jogging motion. Patent No. 337,273, granted March 2, 1886, to J. W. Lufkin, shows a cutter in which an arm, operating upon the cutter lever every second time that the needle descends, causes it to cut the buttonhole during the operation of the stitching, but only at the time when the needle is making the edge stitch, it differs from tin; stitching mechanisms here in controversy in that, while in the latter the cutter is brought into operation by means of a finger on tin; clamp-feed mechanism, and only descends at a certain predetermined portion of the stitching operation, the Lufkin machine operates step by step, and continuously, by alternate descents, during the entire
“There is no disclosure or suggestion in the Felber patent of a cutter controller, moving with the work-feeding mechanism, a cutter carrier and depressor, and, between the cutter* carrier, depressor, and cutter controller, a train of connections susceptible of being so affected by the cutter controller as to bring about a single actuation of the cutter at any prescribed stage in the stitching of the buttonhole. Nor is there in the Felber patent any suggestion*193 or disclosure of tlio employment of a wide cutter to cut the buttonhole slit at one stroke. Hence the Felber patent does not show or disclose the invention of said claims of the patent in suit.”
Much testimony has been taken upon the question whether one Egge or Osterhont was the prior inventor of an automatic buttonhole cutter. The evidence as to the original Egge machine, of 1879, for stitching buttonholes, and as to the cutter mechanism attempted to be used therewith, is not directly material, as the proposed cutter attachment never went into practical use, and was a mere abandoned experiment, and also because Egge has failed to show reasonable diligence in reducing to practice, or any excuse for his long delay. He admits that he knew of no sewing-machine head on which this cutter attachment could be used; that he left it out of his application for a patent for the automatic buttonhole stitching device; that, in his crude suggestion of a cutter capable of being used therein, he stated that he preferred to cut the buttonhole in the usual manner, after it was made; and that he never attempted to introduce or sell or reproduce said cutting mechanism. But in January of 188.7 Egge again began experiments in the construction of a buttonhole stitching and cutting machine; and in the latter part of February, 1885, he constructed and operated a practical machine, containing a cutting mechanism, for which on July 13, 188C, he obtained patent Ho. 345,419. The machine féeds at every vibration of the needle bar, and a lug or trip on the feed bar, contacting with or pressing against the crosspiece, keeps the cutter elevated until after one side of the stitch and the barring stitchings are completed. Then, as the feed bar commences to move backward, said lug permits certain pawls to come into vertical alignment, and the cutter is depressed by the upward movement of said crosspiece. The operator then shifts the feed plate to make the barring stitches, and thereby determines the cutting operation. It will thus be seen that the Egge 1885 machine was not strictly an automatic cutter, as applied to the then existing machines. Irrespective'of the objections to its practical operation, it was constructed upon a different principle from that embodied in the device of the patent in suit. It did not comprise a rotary cutter controller, nor any device capable of automatically cutting a buttonhole slit, by a single stroke of the cutter at a predetermined point in the sewing operation. The mechanism for forming the complete buttonhole was necessarily shifted by hand. The machine of the Egge patent, therefore, is so differentiated from that of the patent in suit that at most, if it be prior in conception and reduction to practice, it can only affect the claim of the patent in suit as a pioneer patent.
This review practically covers the devices introduced as anticipations which are earlier than the invention of the patent in suit, and the Egge 1885 machine. An examination of the patents and models, and a consideration of the expert evidence and of the arguments of counsel, have failed to satisfy me that any of the devices materially detract from the evidence of inventive skill shown in the Oster-hout patent. Some of the machines were failures. Others worked imperfectly. The Felber and Egge devices, which gave the best re-
■ Ih December, 1884, Osterhout, the patentee of the patent in suit, commenced to reduce to practice a cutter attachment which he claims to have conceived and disclosed as early as 1881. He claims that he completed the first machine in the latter part of February, 1885, and that he completed a second machine in March, 1885. Thus, it will be seen that each of these inventors, Osterhout and Egge, claims to have reduced his conception to practice at the same time. It has already been shown that Egge’s earlier experiments were abandoned. I do not feel satisfied as to which of these inventors is entitled to priority. But, in view of the radical differences between the Egge and Osterhout constructions, already stated, and in view of the decision of the patent office as to Tebbetts & Doggett, this evidence is not very material.
In this art, as already stated, two kinds of cutters are recognized: First, the step by step cutter; second, the single-stroke cutter. In the former a small knife is used, and the cutting is effected by imparting several distinct movements to the cutter. In the single-stroke cutter a knife of the size required to cut the particular buttonhole is used, and only a single cut is necessary. The defendant claims that Osterhout first attempted to use the principle of the single-stroke cutter, and afterwards abandoned it, and, having got the idea Of using the step by step cutter from the subsequent invention of other persons, he finally secured a patent upon the principle of an automatic, step by step cutter, while the defendant’s patentees were the first inventors of a machine covering the principle of the single-stroke cutter, arranged to operate automatically. I think defendant has failed to prove this point. While the conflicting evidence cannot be satisfactorily reconciled, it is sufficiently shown that Osterhout was engaged in attempts to develop both the single-stroke and the multiple cútter, and that he finally claimed both forms of his invention in the original application for the patent in suit. He says:
“In applying my invention to various buttonhole sewing machines. I either have the cutter, i, wide enough to cut the whole length of a buttonhole at one stroke, or at a few strokes, and the cam part, P, so short, and the part, e, of the bar or lever, L, so narrow, as to cause the cutter carrier to be engaged with and depressed by the needle carrier only once, or a few times, while the cam, P, is passing the part, e; or I have the cutter of any desired less width, and the parts, e, and P, or one of them, of corresponding greater extent, as illustrated by the drawings, so that the cutter carrier will be engaged with and depressed by the needle carrier a greater number of times to progressively cut the work while the part, P, is passing the part, e.”
“In Pigs. 33, 49, 53 and 57 the cutter, i, is broad enough to cut the whole length of a moderately short buttonhole at one stroke, and such a broad cutter can be secured to and used with each cutter carrier shown in the other figures. When such a broad cutter is used, the part, e, of the bar or lever, L, and the cam or part, P, should each be reduced to a suitable size or tooth.”
But in further support of this contention the defendant claims that three things are essential to the operation of the Osterhout device, namely, the to and fro or jogging motion of the feed-wheel
It is further claimed by counsel for defendant that, in the train of mechanism between the operation of the sewing machine and the cutter controller, a frictional element, essential to the operation of complainant's machine, caused a slip, by reason of the friction-driving device on the feed wheel, and necessitated a rearrangement of the relative position of the parts in order to prevent an additional cutting operation. I do not understand why, in this respect, there is any difference in the operation of the two machines, and I therefore do not give any weight to this latter claim.
Complainant argues that its original device, which was confessedly an operative machine, is not limited to a controller which controls the operation of the device throughout the cutting operation, but that, as is shown by claims 21 and 22, it also covers a
These claims were put in interference with the Tebbetts & Dog-gett patent, and the applicants for the latter made default, whereupon the patent office awarded said claims priority over Tebbetts & Doggett. Counsel for complainant argues that defendant thereby conceded patentability of its invention, and that defendant’s patent infringed said claims. I do not so understand the law. The object of the interference proceedings is to determine priority, not patentability; and, while the decision in interference proceedings may be res adjudicatá as to this question, it does not preclude
The considerations already suggested apply to defendant’s argument that the application was improperly enlarged during its pendency in the patent officii. That the invention infringed by defendant was disclosed in the original application, and covered in its claims, and that it yvas not limited to a dependence upon the jogging movement, is clear from the language thereof. That claims 21 and 22 were not inserted to subordinate defendant’s prior machine, has been adjudicated by the patent office. It has not been proved that Egge was prior to Osterhout. Irrespective of the fact that his machine was defective and nonautomatic, its construction was so unlike the combination covered by claims 21 and 22 that there tvas manifestly no enlargement to cover it.
But, in further support of the defense of noninfringement of any of the claims, defendant contends that the original Osterhout application contemplated a cutter actuated only when the finger is thrown into coaction with its follower: that the snail cam on defendant's device positively throws its vertical rocker shaft out of engagement with the starting pin as soon as the cutting operation is set in motion; that Osterhout, in his patent, says, “I control by a controller on the feed wheel,” while Tebbetts & Doggett say, “We do not control by a controller on the feed wheel, but merely push the button so as to put the controller in engagement with (he train of operative mechanism and subsequent operations, and eliminate all control from the pin or controller on said wheel;” that, in •the present operative machine of complainant, it has been obliged to take away the control of the cutting operation from the controller, in order to get the best results; and that although a machine can be devised which shall be operative, as already stated, in the hands of an expert or skillful operator, when constructed on the principle of the original Osterhout machine, yet that it requires such nice adjustment as not to be capable of use in the ordinary factory, as shown by the patent granted to said Osterhout and one Hallenbeck, as joint inventors. And finally counsel for defendant insist that, if
The machines now used by complainant are manufactured in accordance with said Osterhout & Hallenbeck patent. This has a lug or controller, called in the patent a “trip,” which is similar to the controller of the original Osterhout machine. But, when said' lug engages with said lever, it causes another vertical lever to rock and permit a parallel bar to engage with an oscillating stud or follower for the purpose of connecting the two members of the clutch device upon the needle bar and cutter bar, respectively. Thereupon the descent of the needle bar causes a descent of the cutter. The backward movement of the switch cam on the main shaft causes a movement of the parallel bar, which disengages the clutch, and thus the bar is caused to ride up an incline of an auxiliary lever attached to said vertical lever, thus positively preventing any further connection with or operation of the cutter. When the lug on the feed-wheel disk passes out of engagement with the primary lever, the vertical lever assumes its normal position. Assuming that complainant’s original device was somewhat defective, yet it is admitted that it was capable of continuous, successful, practical operation. Osterhout & Hallenbeck have made improvements on it in one way, and have obtained a patent therefor. Tebbetts & Doggett have made and patented other improvements. But, notwithstanding the doubts cast upon some of Osterhout’s early experiments, the evidence strongly confirms the view that he first disclosed the combination and certain valuable features thereof described in his original application. So far as said combination is concerned, I concur with complainant’s expert, in his statement that:
“It is clear from the records of both parties that Osterhout was the first man to produce a buttonhole stitching- and cutting machine which had a cutter normally elevated, and out of use; a depressor for positively and unyieldingly forcing the cutter through the work; a controller for effecting the engagement of the depressor with the cutter carrier; and connections intermediate the controller and the cutter carrier for engaging the latter with the depressor.”
The distinctive features of the Osterhout & Hallenbeck machine, already stated, show that it embodies specific and distinct devices
In Miller v. Manufacturing Co., supra, it appears, from the opinion of the-court and the disclaimer of the patent, that the court had before it a comparatively narrow and limited invention; and it found that the entire invention, including the part or function claimed in the second patent, was described and claimed in the first patent. The court says, “The broad idea sought to be reserved is (unbodied in identically the same mechanical device constituting the invention, and covered by the first patent.” The question of identity of invention depends upon the scope of the claims. Mr. Walker, in the last edition of his work on Patents, tersely and accurately states the rule deductible from the Miller v. Manufacturing Co. case, and applicable herein, as follows:
•'Claims aro coextensive which specify tiie samo combination, of (lio same number, of the same parts, with the same features, though the functions which are mentioned in the claims áre not coextensive. That was held to be tiie character of the respective claims of two patents to the same inventor in the case of Miller v. Manufacturing Co., and therefore the second of these patents was held to have been granted for the same invention as the first, and to be void. But two claims are not coextensive which specify different combina! ions of parts of a process, machine, or manufacture, even where some of those parts are in each of the combinations.”
The inventions here claimed are distinct, aud are distinctly patentable. But defendant further urges that the effect of sustaining these claims would be to prolong the monopoly of the Osterhout & Hallenbeek patent beyond the statutory period of 17 years. In several recent cases in this court, in which Miller v. Manufacturing Co. has been died, this argument has been pressed as a ground for extending the scope of said case beyond the actual decision of the court, and for declaring a new interpretation of the law. But this would not only he violative of the express declaration of the supreme court that its decision therein was in accordance with the rule settled hv its previous decisions, but such a construction would amount to judicial legislation. It is not the duty of the court to thus change the law, but only to interpret it as it exists. Refrigerating Co. v. Sulzberger, 157 U. S. 1, 15 Sup. Ct. 508. The same questions as are involved herein were carefuly considered by me in the case of Thomson-Houston Electric Co. v. Winchester Ave. R. Co., 71 Fed. 192. The material facts bearing on this issue are practically the same, except that in that case both patents were granted to the same inventor. The application for the patent in suit herein was filed in December, 1885. While this application was delayed by interferences, the Osterhout & Hallenbeek application was filed. Even if it be admitted, as defendant contends, that the same rules are applicable in the present case, where the subsequent patent issued to joint inventors, I see no reason to modify the following language of my former opinion:
“This patent for this specific combination, adapted and claimed only for this specific purpose, applied for October 22. 1888, after the original application had been allowed, but before the patent thereon was granted, was earlier in*200 the date of issue. The original application was delayed by Interference proceedings in the patent office. Whatever may be the rule as to cases where the application for the generic patent was filed subsequent to the application for the specific patent, I do not think the patentee should be deprived of his broad patent where the application for such patent was made first, and was delayed in the patent office through no fault of the inventor. Such a ruling would be a reproach to the law.”
It is not necessary for the decision of this case to extend the principle of said decision in said case of Thomson-Houston Electric Co. v. Winchester Ave. R. Co., namely, that, when a prior application for a generic patent has been delayed in the patent office without the fault of the applicant, the grant of a subsequent patent for a specific, distinct, and separate improvement upon the principal patent will not invalidate a patent subsequently issued upon the original application. Let a decree be entered for an injunction and accounting as to claims 21 and 22 of the patent in suit.
