64 F. 859 | U.S. Circuit Court for the District of Connecticut | 1894
This is a bill in equity for an injunction and accounting by reason of the alleged infringement of patents No. 456,002, dated July 14, 1891, and Nos. 471,982 and
The single claim of patent No. 456,062 is as follows:
“A bell striker having a central aperture for loosely pivoting it to a rotating hand, and various striking points or surfaces around its exterior, and adapted to he rotated on its pivot by each blow to bring to bear a new striking surface, substantially as set forth.”
It appears from the specification that the object of the patentee was to produce a more effective and more durable device for gongs and alarm bells. He states that the objection to previous devices “has been that the striker would become by constant use worn in places, so that the bell would either refuse to sound at all or sound imperfectly,” and that the object of his invention is “to produce a striker which, on account if its peculiar construction, will wear evenly, and for that reason obviate the difficulty named.” The patentee further says:
“My invention belongs to that class of bells in which the strikers are loosely carried on a revolving part, and are thrown against the side of the adjacent gong by the revolution of the part to which they are attached.”
The complainant’s exhibit “Complainant’s Bicycle Bell” comprises a circular base plate, a raised stationary plate, a gong provided with a lug, and a centrally mounted revolving arm or striker bar, with a gear adapted to receive rotary motion from a pinion with, which it meshes. This arm extends nearly across the diameter of the gong, and carries metal strikers loosely held in place by pivots extending vertically through central apertures in said strikers. In said bell the striker arm is centrally mounted, and is connected with a lever and spring adapted to rotate it in opposite directions. But in patent No. 456,062 the arrangement shown is that of a striker aim supported at one side of the center, and a gong without a lug, and the means by which rotary motion is imparted to said striker aim through the gearing is not stated. The evidence as to the state of the art prior to the date of this patent shows several patents for devices-which produced a similar sound in such bells. Patent No. 365,241, granted to Comstock & Buxton, June 21, 18*27, shows a device wherein a pivoted hammer strikes the gong. And in patent No. 386,632, granted to Victor Germain, July 24, 1888, a similar hammer strikes a lug on the side of the gong. Patent No. 428,198, granted to Allen & Goulden, May 20, 1890, shows a hammer loosely pivoted upon the striker arm so as to permit a recoil upon striking the gong. In these structures there is no provision whereby the hammer or striker is caused instantly both to rebound and rotate on its pivot so as to present a new striking surface. It may be assumed, so far as the evidence jn this case shows, that
•‘It is necessary for the perfect operation of my machine to- have the strikers thrown by centrifugal force against the inside of the gong and to fly hack instantly. A space should, therefore he provided between the pivot pin of the striker and the arbor, within which the striker may retreat out of the way of the gong.”
Thu defendant claims that this does not recite an advantage or object of the invention, but a necessity, which is a limitation or restriction, and without which the strikers would not be whirled upon their pivots; and that such rebounding stroke was not new, and was not claimed as new, in the art. Complainant strenuously contends that this rebound was one of the features of the invention, and that it was new in the art. He claims that the distinction between the operation of prior devices and that of the patent in suit is that the former strike a dragging and glancing blow like that of a Hail, while in the latter the blow is a direct one, with an instant rebound. This is true as to the pivoted hammers of the Comstock & Buxton and Germain patents, but not as to the said Allen & Goulden patent, in which the hammer is so loosely riveted as to permit the striker to rebound upon coming in contact with the gong. Another patent, — No. 174,754, — granted March 14, 1876, to Allen & Lathrop, shows said feature of blow and rebound, and may be fairly claimed to also embody in its operation the rotation upon a pivot, whereby new striking surfaces are presented. But, as neither the Allen & Goulden nor the Allen & Lathrop bell belongs to the class under consideration, or embodies the mechanism herein, and as the device of complainant is an improvement thereon, neither of them anticipates this patent. The striker of defendant is held in place on a revoluble striker bar by pins extending horizontally from opposite sides of the striker itself, and which move in spaces cut in the upturned edges of the striker bar. There are no central apertures in the strikers, and no means for adapting them to be rotated on their pivots. Centrifugal force causes the strikers to slide out on the striker arm. The complainant claims that this device was ingeniously contrived to secure the benefit of the Rockwell invention by the use of a mechanical equivalent. It will be apparent upon inspection of the exhibit of defendant's bell, and is practically admitted by Hie expert for complainant, that whenever, by reason of centrifugal force, the striker is at the extreme limit of its outward movement, it will ordinarily present the same point on its surface to the gong, and that, it cannot, by reason of its construction, revolve upon its pivot. The language of the specification and claim shows that the chief object of the pat-entee was to secure different striking surfaces, so as to avoid the wear on the striker. This result is not accomplished by defendant’s device. The question, then, arises whether the claim of this patent should be allowed such broad construction as to cover the means-bv which the direct blow rather than the glancing blow is produced.
There is nothing in the language of the claim itself which can refer to this operation, except the words •‘substantially as set forth.”
It is next claimed that defendant has infringed the second claim of complainant’s patent FTo. 471,982. Said claim is as follows:
“The combination, with a base plate, of a revoluble striker bar, spring-actuated in one direction, a lever operatively connected therewith, and adapted to rotate the striker bar in opposition to the force of the spring, and a gong, substantially as set forth.”
The gist of the invention claimed in this case is a combination of base plate, striker bar, lever, spring, and gong, so related to each other as to operate in a certain way, and to secure a certain result. These elements would manifestly not produce the desired result without other mechanism for rotating the striker bar. Such combination is stated by the patentee to be especially designed and adapted for a bicycle bell. A geared pivoted lever is connected with a spring and revoluble striker, and extends beyond the base plate,
The defendant has introduced a mass of exhibits in support of the claim of anticipation. Several of the patents, especially those of Kirtner, Serrell, Allen & Lathrop, Eddy & Nichols, and the exhibit “Starr Bros. Bell of March, 1890,” have no relevancy in support of this defense. The Comstock & Buxton, Germain, and the second Allen & Goulden patents, contain some of the elements of the claimed combination, but no one of them embraces the same organization of elements, or shows the same mode of operation as that covered by the claim of the patent in suit. The patent of Allen & Goulden of 1890 is the only device which has a spring for driving the bar in the opposite direction. None of the patents, except that to Serrell, show devices adapted for use on bicycles. Some of them are designed to be turned by the thumb and fingers, others by pulling upon a wire, neither of which operations would be practicable in the case of a rider upon a bicycle. The device which most nearly resembles that of complainant is British patent No. 2,425, granted to Alfred Bennett, June 22,1877, for a call bell. This patent shows a revoluble striker bar, spring actuated in one direction, and a lever connected with a horizontally movable rod. These elements are so differently combined and operated, and are adapted to such different uses and ■purposes, and are so incapable of use in connection with a bicycle bell, that the combination does not anticipate said patent. It falls within the rule that where a device is neither intended nor adapted • nor actually used for the performance of certain functions, it is not sufficient to constitute anticipation that it might be so modified as to accomplish such function. Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ct. 825; Walk. Pat. p. 54. “If an old device or process be put to a new use, which is not analogous to the old one, and the adaptation of such process to the new use is of such a character as to require the exercise of inventive skill to produce it, such new use will not be denied the merit of patentability.” Ansonia Brass & Copper Co. v. Electrical Supply Co., 144 U. S. 11, 12 Sup. Ct. 601. The great number of patents introduced into this case, all issued since the British patent, shows the amount of inventive skill which has been brought to bear upon this class of inventions. If the changes necessary to adapt this call bell to a bicycle bell were such as would occur to the ordinary mechanic skilled in the art, it would seem as though it must have occurred to some one during the 14 years of the life of said patent. A comparison of the bell with the “Starr Bros, bell of March, 1890,” and the “Bevin Bros. Manufacturing Company’s bicycle bell of December 9, 1890,” previously manufactured by defendant, shows how crude and imperfect were the latest devices of the prior art, and furnishes additional evidence in support of the claim of patentable novelty and of utility, which latter claim is abundantly established by undisputed evidence. This device of complainant does not belong to the class referred to in Mill Co. v. Walker, 138 U. S. 124, 11 Sup. Ct. 292, and in Duer v. Lock Co., 149 U. S. 216,
The single claim of patent No. 471,933 is as follows:
“In bell mechanism, the combination, with a frame and gong and lug upon the gong, of a centrally pivoted pinion loosely mounted on a central post on the frame, and having an arm upon one side, strikers upon the arm, and mechanism for communicating motion to it through the pinion, substantially ¡is set forth.”
The object of the invention was “to produce an improved bell that can be operated without the use of springs of any kind, and can be caused to emit a continuous ringing sound resembling that of an electric bell.” Complainant’s exhibit “Complainant’s Door Bell,” constructed in accordance with the specifications of said patent, shows a knob with a square shank secured within an escutcheon on the outside of an object, such as a door, and connected with a spindle on the inside of such door. Upon this spindle is'a cogwheel, by which motion is communicated to a centrally mounted revoluble striker arm carrying loosely pivoted strikers. There is also a gong provided with a lug. The device may be operated in either direction by a turn of the knob. It will be seen that tjiis construction
Various suggestions are made in support of the claim of novelty in the centrally pivoted swinging arm. Thus it is said that the arm must extend almost across the inside of the gong, and be adapted to swing around its entire diameter. But the Bennett patent shows the arm swinging around the entire diameter of the gong, and ii. surely would not require invention to duplicate said arm by extending it in the same way on the opposite side. The Bennett strikers, if is true, are different, but the specific striker described in this patent is not, and could not be, therein claimed, because it had been already described and claimed in 45(5,0(52. The fact that the arms are differently mounted does not affect the practical identity in construction and similarity in function and operation. The conclusion reached from these considerations is that, the defendant has not Infringed patent No. 471,983.
It sufficiently appears that Rockwell was the first inventor of valuable improvements in bell mechanism described in the patents in suit. That his device is useful is admitted; that ii marked a decided advance in the art is proved. And it may be fairly assumed that a former employd of complainant, — Hathaway,—having’ acquired a knowledge of the inventions covered by complainant’s patents, has inequitably attempted to appropriate them for the benefit, of defendant. But the determination of the questions involved in the interpretation of the specifications and claims of the patents in suit, depends upon settled principles of law. The public has an in terest not merely in the result of tins litigation, but it has a right
“When one inventor makes a generic invention, and also subordinate specific inventions, and presents the whole series in a set of contemporaneous applications, the patentee must not be enabled, by an ingenious use of-general terms, to enlarge the boundaries of each invention to extend each into the borders of another, and obtain a series of overlapping patents.”
I am not unmindful of the principle already referred to and applied in the consideration of patent No. 471,982, upon the assumption that the invention of the patentee is in a certain sense of a primary character, and therefore the claims of the patent should have a liberal construction. “This just principle is one that is well recognized, but another principle is at the present stage of the patent law of equal force, which is that the construction of the patent must be in conformity with the self-imposed limitations which are contained in the claims.” Groth v. Supply Co., 9 C. C. A. 507, 61 Fed. 284, 287; Judd v. Fowler, 10 C. C. A. 100, 61 Fed. 321.
In regard to patent No. 471,982, which is held to be valid, and to have been infringed, it is claimed that no damages can be recovered, because the bill of complaint fails to allege — First, any sale of the infringing goods; or, second, that the complainant’s bells were marked “Patented,” or that defendant had notice that they were patented. Inasmuch as the evidence shows the sale of the infringing goods, and before the hearing an amendment was offered containing an averment of sale, it does not seem that any injustice would be done to the defendant if the court, in its discretion, should permit such amendment. The defendant cites the recent case of Dunlap v. Schofield, 152 U. S. 244, 14 Sup. Ct. 576, to support its second claim. The answer contains no averment of want of knowledge. The defendant “who relies upon a want of knowledge upon his part of the actual existence of the patent should aver the same in.his answer.” Sessions v. Romadka, 145 U. S. 29, 12 Sup. Ct. 799; Winchester Repeating Anns Co. v. American Buckle & Cartridge Co., 54 Fed., at page 711. The proceedings between Rockwell and Holaday and the correspondence between the parties show actual knowledge of the patents on the part of defendant, and notice of the claim of infringement. The complainant, therefore, has the right to amend. Let the allegations of the bill be amended in accordance with the facts found upon this point, with leave to the defendant to be heard thereon, if it so desires, within two weeks from the date of the filing of the opinion. If the defendant does not wish to be heard, let a decree be entered for an injunction against the infringement of patent No. 471,982, and for an accounting.