New York Scaffolding Co. v. Liebel-Binney Const. Co.

243 F. 577 | 3rd Cir. | 1917

WOOLLEY, Circuit Judge.

This is a suit for infringement of Letters Patent No. 959,008, issued to E. H. Henderson, May 24, 1910, and is here on the plaintiff’s appeal from a decree of the District Court dismissing the bill on the ground of invalidity of the patent.

The patent is for scaffold-supporting means. The claims in issue are 1 and 3. The alleged infringing scaffold used by the defendant was known as the Whitney scaffolding device, manufactured and leased by Egbert Whitney under a junior patent. (Letters Patent No. 998,270 to Whitney.)

In the erection of modern steel frame structures, contractors have found it more economical to rent scaffolds than to buy them. This suit is a part of a controversy between rival scaffold renting con-corns. In other litigation instituted by this plaintiff against another defendant, involving the validity of the same claims of the Henderson patent and infringement by the same device of the Whitney patent, the Circuit Court of Appeals for the Eighth Circuit, reversing the District Court for the District of Nebraska, held the claims valid and infringed. New York Scaffolding Co. v. Whitney, 224 Fed. 452, 140 C. C. A. 138. In reaching a.n opposite conclusion in this case upon precisely the same issues and upon substantially the same facts, the learned District Judge hesitated, as do we, in disturbing the force of a decision of a court of coordinate jurisdiction and in preventing uniformity of decision by yielding to his own convictions. Yet we feel this is a case where comity, being a rule of convenience intended to persuade, not to command (Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485, 488, 20 Sup. Ct. 708, 44 L. Ed. 856), should not prevail against an opposite judgment when based upon dear conviction.

The matters which induced the District Court to its judgment, holding invalid a patent previously declared valid by another court, are fully set forth in its opinion, supra. These appeal to us with like convincing force. We shall consider them briefly.

In determining whether Henderson’s device was a contribution to the art, involving invention, though narrow, or was merely a departure from the art by formal changes in prior devices, we must inquire what Henderson did and what problem he solved.

Scaffolds are as old as buildings; and scaffolds of different types have conformed time out of mind to the types of buildings upon which they were used. When buildings were low, scaffolds likewise were low, and were constructed along lines of greatest convenience, namely from the ground up. When structures increased in height, scaffolds likewise increased in height to a point where the elements of cost and danger induced a change. Then instead of being built from the ground upward they were suspended from the roof downward. When this change was found expedient, the art went for information to other arts in which scaffolds, by reason of their peculiar uses, had never been built upon the ground but bad always been suspended from above. Among these was the seaman’s art, in which was found the boatswain’s chair, a simple contrivance made of a board with ropes through each cud after the manner of a child’s swing, which converge toward and are connected with a main rope slung from the mast-head or cross-tree, and passed through an overhead block and returned to the operator, by which he raised or lowered his position along the mast. Then there was the painter’s stage or hanger, which is nothing more than a longer hoard, the ends of which are attached to ropes suspended from the ship’s rail, capable of being raised and lowered from above or by blocks from below, and used by sailors when painting the ship’s sides. The painter’s stage was brought to land and conveniently used upon buildings. It consisted of a plank or planks used as a platform resting on cross-bars, the ends of which were held by ropes passed through blocks, which in turn were suspended from large metal hooks so shaped as to securely grasp the roof of the building. This platform was readily adjusted by block and fall to any elevation.

This crude but much used device was improved by Bowyer and Casperson in their Patent No. 388,252 (1888) by arranging in one structure an enlarged cross-bar or putlog and a drum by which to operate the overhead block and fall and elevate and lower the platform, which extended from one putlog to the other.

Platforms of both the crude and improved types were sufficiently steady for sailors and painters who did their work while sitting, but they were not sufficiently firm and steady for the heavier and more active work of bricklayers. As the demand for overhanging scaffolds increased with the increasing height of modem buildings, Clark (Betters Patent No. 673,384—1901) disclosed a mason’s platform for such buildings by hanging perforated metal ribbons or strips in pairs from projected out-riggers, attaching putlogs to each pair, and suspending platforms on the putlogs. The platform was adjusted by pinning the putlogs at different positions in the perforations. Foster secured a patent (No. 763,274—1904) for substituting steel cables for the metal ribbons and bolt clamps for the pin fastenings of Clark, which, though held invalid by this court for want of patentable invention (American Safety Device Co. v. Liebel-Binney Construction Co., 242 Fed. -, - C. C. A. -), was a scaffold in the art prior to Henderson. Scaffolds made like Clark and Foster in multiple pairs were found to possess rigidity, but they were adjustable only by changing the putlog sustaining bolts and pins, with loss of time and risk of injury. Cavanaugh overcame these difficulties by a patented device (No. 796,807—1905) for elevating scaffolds of this type by drums positioned on the out-riggers but operated by chains suspending loosely to the platform. Murray (No. 854,959—1907) improved upon Cavanaugh by changing the position of the drums from the projecting out-riggers to the platform. The hoisting mechanism of Murray consists of a drum with bearings mounted in upright arms of a rectangular metal frame connected and stiffened at the top and bottom by metal rods. The metal frame serves the double purpose of holding the drum in position and of affording a place for engagement with a putlog. To the lower part of the metal frame is rigidly attached one end of a putlog, the other end being similarly attached to the metal frame of another like hoisting mechanism. The drums in pairs are then connected with the pairs of steel cable of Foster. The platform extending from putlog to putlog may then be raised or lowered by winding or unwinding the drums in pairs. In this arrangement the drum frames are placed edgewise the building. This is to be noted because it is the principal thing, which, it is claimed, distinguishes Murray from the patent in suit.

This was the art when Henderson entered it. Henderson took the drum of Murray, positioned it in a drum frame in the same way and for the same purpose, but he made the frame U-shaped instead of rectangular, and changed the position of the frame and drum from edge to tire building to flat with the building, thereby permitting a putlog to be loosely placed and held within the bend of the U. 'Much stress has been laid in this and other litigation on this difference in position of the drum and manner of engagement of the putlog. In this difference patentable invention is claimed, and has been found. 224 Fed. 452, 140 C. C. A. 138. This is the only difference we discern between Murray and Henderson. We arc not satisfied that by this difference Henderson made any improvement, patentable or otherwise. Tie providecí a loose and unfastened putlog in place of the fixed and fastened putlog of Murray, and lessened the fixity and rigidity of the whole platform, thereby correspondingly lessening the security of the workmen, which is just the opposite of what was pressed throughout the argument as the important consideration to induce masons to work with heavy materials upon swinging platforms. But however that may be, the evidence is that although Henderson followed Murray and claims to have improved upon his device, the Patent Scaffolding Company advertises only the Murray device, and seventy per cent, of the scaffolds it'puts out and rents are the Murray device.

We do not see what problem was presented to and solved by Henderson. lie did what Murray had already done, but did it in a different way. Patentable invention does not reside in mere difference, either of construction or result. The difference in construction is small indeed, involving nothing more than mechanical skill. The difference in result is a small saving of space upon the platform. This saving does not appear to have been demanded before the patent or valued after it. Finding no new problem presented or solved and no real improvement made, we cannot conceive patentable invention in Henderson’s formal changes from the prior art. We are therefore of opinion that Claims 1 and 3 of the patent are void for want of patentable invention.

The decree below is affirmed.