84 F. 659 | U.S. Circuit Court for the District of Northern Ohio | 1897
This is a bill filed under section 4918 of the lie vised Statutes. That section provides that:
“Whenever there are interfering patents, any person interested in any one of them, or in the working of the invention claimed under either of them, may have relief against (the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court, on notice to the adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void in whole or in part, or inoperative, or invalid in any particular part of the United States, according to the interest of the parties in the paient or invention patented. But no such judgment or adjudication shall affect the right of any person except Hie parlies to the suit and those deriving title under Them subsequent to the rendition of such judgment.”
The complainant company is the assignee of patent No. 493,220, issued March 7, 1893, to John P. Palmer, for “a new and useful improvement in fabrics.” The defendant is the assignee of patent No. 539,224, issued May 14, 1895, to Roudolph W. Huss, for “a new and useful improvement in fabrics.” The only claims of the Huss patent are literal copies of the three first claims of the Palmer patent. The Huss patent was issued upon an application filed October 9, 1893, or seven months after the Palmer patent had issued. The specifications of the Huss application were also, for the most part, but
This bill presents no other issue than that of priority. It charges that.the patents are interfering patents, and that they are for substantially the same improvement. The answer concedes this to be the case, and neither bill or answer so much as suggests that the subject-matter of the patents is not patentable for any reason. Neither does the bill assail the Huss patent as void or voidable for any reason other than that Palmer was the first inventor, and had properly received the only valid patent. But, aside from this state of the pleadings, the better opinion seems to be that a proceeding under section 4918 involves no other question than that of priority between interfering patents. Sawyer v. Massey, 25 Fed. 144; Pentlarge v. Pentlarge, 19 Fed. 817; Lockwood v. Cleveland, 20 Fed. 164; American Clay-Bird Co. v. Ligowski Clay-Pigeon Co., 31 Fed. 466; Electrical Accumulator Co. v. Brush Electric Co., 44 Fed. 602-608. The last two cases cited were decided in this circuit, — one by Judge Sage, and the other by Judge (now Justice) Brown. In Foster v. Lindsay, Fed. Cas. No. 4,976, a contrary view was announced by Judge Treat. That case has been considered in each of the five cases we have cited, and repudiated as an unsound construction of the statute. The proceeding permitted by section 4915, where a patent has been refused, necessarily involves patentability, and every other reason for which a patent might be refused. The construction of that section in Hill v. Wooster, 132 U. S. 693, 10 Sup. Ct. 228, and by other cases cited by counsel, seems to have no proper application to such a bill as that now under consideration. Entertaining this view of the scope of a bill under section 4918, I shall not consider the questions argued
In approaching thé question of priority of invention, it is essential that a clear understanding shall be had of what it is that both Palmer and Huss claim to have invented. This involves, collaterally, tbe utility of the material, and the object each had in view in the experiments they each rely upon' as evidence of first conception and production. The fiber which is the subject of this controversy is primarily and chiefly useful in the construction of the tires of bicycles, and is well described by the interference issue framed by the commissioner of patents. That issue may be profitably restated. It was in these words:
“A fabric made of elastic and impervious material, suck as rubber, haring imbeclded within the surface, threads, substantially out of contact with each other.”
The interfering claims of each patent are in identical words, and are as follows:
“(1) A fabric made of elastic and impervious material, such as rubber, having imbedded within, the surface, threads, substantially out of contact with each oiher, substantially as described. (2) A fabric made of elastic and impervious material, having imbedded and vulcanized therein substantially parallel fibrous threads, substantially as described. (3) A fabric made of vulcanized, elastic, and impervious material, having embedded and vulcanized therein substantially parallel fibrous and nonextensible threads, substantially as described.”
Both Palmer and Huss were poor men, working for others upon meager salaries. Neither knew anything of the rubber business, and neither had been engaged in tbe making of bicycles. Both were experts in the use, and familiar with the structure and mechanism, of such machines. Both knew of the defects in the original form and structure of bicycle tires, and each, before the date of conception of the present invention, had given much thought to the improvement of tires, and each had theretofore either obtained or applied for patents covering improvements upon pneumatic tires. The particular attention of both had been especially directed to strengthening the cover protecting the air tube on the tires of bicycles against punctures, which, while not adding to- the weight, would increase resilience and avoid vibration as much as possible when passing over obstacles in its patb. It was conceived that it was desirable to avoid any prolonged depression of the tire caused by such obstructions, by producing a tire which would yield readily at the point of immediate contact with such obstacles. If the cover was so constructed as to be strengthened against lateral extension or expansion, and yet easily extensible longitudinally, it was conceived that resilience would be increased, and vibration of the wheel diminished, in passing over an obstruction. This condition, it was believed, would result if the fabric used in the construction of such tires could be made substantially nonstretching in one direction, while capable of considérable elasticity in another. It was old, in the rubber art, to incorporate a woven or braided fabric in sheets
Having in mind the object which each of these inventors had in view, we come to the consideration of what each did in order to obtain the desired fabric. Here we are at once struck with the striking similarity of the methods employed, and of the fabrics first produced. The first actual reduction to practice óf a conception touching the desired fabric was made by Huss. This was in March, 1892. What Huss then did was this: Obtaining access to the factory of the Chicago Rubber Works, he caused a layer of linen threads to he closely wound around a tube having a diameter of Sc-inches and a length of 25 feet. These threads were laid on this tube smoothly, and in close lateral contact with each other. He then spread over this layer of threads a heavy coating of rubber in solution. Upon this was then placed a thin sheet of unvulcanized rubber, which was rolled down upon the threads so covered with rubber in solution with a heavy iron hand roller, such as used in rubber-factories for that purpose. The effect of this operation was to imbed the threads, to a certain extent, in the solvent rubber, and to cause a uniting of the threads in the solvent rubber and the rubber sheet. Tliis fabric was then split across the threads, and lengthwise with the tube, and removed therefrom. The result was a sheet of uuvulcanized rubber, io which a layer of threads was united, which ran transversely across the sheet. In length and width, it was adapted to he cut into two strips suitable for bicycle tires. Cue of (hose strips was thereupon placed around an iron ring or core, after which a strip of linen, having wood imbedded in its edges, was placed on the outer periphery of the core, in order to fill up the mold properly into which the core or ring was placed. The mold was then taken to a heated hydraulic press, and subjected to a high pressure, in which it remained until the rubber was vulcanized. The result of the eniire operation v/as to incorporate the threads and rubber sheet into one mass, the rubber being forced between the threads in such way as to almost completely immerse them in the rubber. This fabric was al once used in the construction of several bicycle tires, which proved, after use, to possess every advantage which it was the object of the invention to secure. Palmer’s reduction to practice was later. In July or August, 1892, he obtained access to certain rubber works at Akron, Ohio. What he did was this: He took a thin sheet of un-vulcanized rubber. Upon this he placed linen threads after they had been immersed in a solution of pure rubber. These threads were laid parallel to each other, and separated by a space about equal to the diameter of each thread. Another coating of the rubber solution was put on, and allowed to dry. These threads were rolled with an ordi
“After tlie whole had dried, the threads were rolled down with an ordinary iron hand roller, to insure close adhesion. 'After this was done, another coat of solution was applied with a brush, and, I think, a' third one. After the whole had dried, the piece of rubber, with the threads adhering to it, in length about twelve feet and in width about seven inches, was divided, longitudinally of the threads, in the middle, leaving each strip about three and one-half inches wide by twelve feet in length. An ordinary unvulcanized air tube was placed upon a straight, round mandrel, and, the two strips of fabric or material I have mentioned wound thereon spirally; the threads in one strip running at an angle opposite to the threads in the other, as shown in Fig. 2 of my patent 489,714; the whole being rolled with the small iron roller, to secure close adhesion between the several layers. Upon tlie last layer of thread was superimposed a layer of rubber, the same being rolled down as before. The tube was then cut to a proper length (about six feet nine inches), an airtight joint made in the inner tube, and a joint made in (he threads by intermingling the opposing ends; they having been freed from the solution for the purpose. The joint was then covered with a piece of sheet rubber corresponding in thickness with the last layer applied to the tube, and the tire placed upon a ring-shaped mandrel of a section shown in Fig. 3 of my patent No. 489,714, wrapped thereon by a spiral winding of muslin, and then vulcanized.”
Tbe covers thus made were used upon bicycles, and found to satisfactorily answer the conditions required, and tbe objects sought to be attained by Palmer.
It is not at all disputed that Huss’ reduction to practice antedated that of Palmer. Tbe contention is that Palmer first conceived tbe invention, made a drawing, and disclosed it to others in February or March, 1891, though he did not produce the fabric until July or August, 1892. This issue was the one to which the evidence was chiefly directed on the interference trial, and upon which the decision was adverse to Palmer. Palmer produces a drawing dated March 21,1891, signed by him, and witnessed by H. J. Hughes and Milton Mill. This exhibit does not show the distinctive idea of a fabric having threads parallel to each other'. Upon the contrary, it shows, in the most unequivocal way, a sectional view of a tire in which the threads are woven or braided. Palmer’s explanation of this drawing and of the then state of his mind is not at all satisfactory, and the evidence of the witnesses who signed it is equally unconvincing. Whatever idea Palmer then had in his mind of a rubber sheet in which should be incorporated threads out of contact with each other, and substantially parallel, was evidently a dim intellectual notion, which had taken no form, and was abandoned, as shown by his drawing, in favor of a woven or braided fabric incorporated in, or united with, rubber sheets. His alleged conception of the advantages of threads parallel with one another found no expression in his drawing, which clearly shows a woven or braided fabric united with the rubber sheets. The sawing action of crossing threads was not guarded against. Neither was it possible, if his drawing is evidence of the then state of his mind, to see how, from a woven or braided envelope for his inner tube, he was to get a fabric nonextensible in one direction, and stretchable in another. I entirely agree with the opinion of the patent office that Palmer has failed to produce such evidence of conception earlier than his reduction to practice as to justify a holding that his invention
But it is said that Huss is not entitled to priority of invention unless the fabric which he made in March, 1892, is identical with the fabric described and claimed by the Palmer patent, and that as the question of priority depends upon Huss’ earlier reduction to practice, the question of identity of the fabric first made by him with that described and claimed in the Palmer patent is pertinent. The question thus presented must turn primarily upon the proper meaning and reasonable limitation of the claims of the Palmer patent For the Palmer patent, it has been most strenuously urged that the first claim covers an unvulcanized fabric, elastic and impervious, “having imbedded within the surface threads substantially out of contact with each other, as described,” and that the second and third claims cover the same fabric vulcanized. It is urged that complete and entire imbedment of the threads within the surface of the rubber sheet is essential to constitute the fabric described by these claims. The first three claims of the Palmer patent were rejected by the primary examiner upon a reference to the Mayall patent of April 13,1869, Crone patent of June 4, 1882, and the Jones patent of August 28, 1883. Upon an appeal to the board of examiners this action was reversed, and those claims allowed, upon the ground that the Orone and Jones patents were not for an elastic and impervious material, but for a fabric of paper, and that the Mayall fabric did not have threads “imbedded within the surface,” “or imbedded and vulcanized within the material,” as called for by the first three claims of the Palmer application. It is now urged that this ruling of the'patent office operates as a construction and limitation of the claims in question, and limits the Palmer patent to a fabric in which parallel threads are completely, buried or immersed within the surface of a single sheet of elastic and impervious material. We cannot accept the opinion of the patent office as to the legal construction of the claims allowed Palmer as a conclusive determination of their scope. These claims had been rejected because the examiner regarded these earlier patents as covering the same invention. The board of examiners did not agree with this conclusion, and distinguished the claims in question from those of the patents supposed to interferí;; The question involved was a mixed question of law and fact, and is one for judicial determination. Andrews v. Hovey, 124 U. S. 694, 717, 718, 8 Sup. Ct. 676. It is not a case where an applicant was compelled, as a condition to receiving a patent, to abandon claims, or make changes operating to narrow their scope. There is no estoppel growing out of the opinion entertained by the patent office as to the legal effect of the language emploved by applicants, either in their specification or claims, nor as to the scope and meaning of earlier patents. It is undoubtedly the duty of the patent office to allow or disallow applications, as it may deem the matter patentable or not, and for this purpose to inquire into the state of the art, and compare with patents supposed to interfere. But we are not aware that the conclusions of the patent office operate as an estoppel upon the patentees, except in cases where the applicant is required to aban
Was the fabric produced by Huss in March, 1892, the fabric described by the identical claims of both patents? In answering tMs, it is proper-to bear in mind that these claims are not for a process, nor for a design, but for a fabric. There may be many ways for producing the fabric, and it is immaterial as to the method, provided the result is the manufacture or article described and protected by the patent. We have already seen that the object of both patents was the same. Both had in mind a fabric primarily useful in bicycle tires, — -a fabric wMeh should take the place of the canvas and rubber fabric theretofore used in such tires. What each wished was a fabric which should be substantially nonstretchable in one direction, and capable of stretching in another. The material conditions of such a fabric are all found in that made by Huss in March, 1892. The threads were united, and, to a degree, imbedded in an unvulcanized sheet of rubber. They were so far incorporatéd with the rubber, as a result of the application of rubber in solution, and pressure applied by hand, as that the threads were securely held in position parallel to each other. The fabric thus produced was soft and tackey, and, so far as the evidence shows, unfit for any particular use until after vulcanization. But this is also true of the fabric described by Palmer’s first claim. 'Vulcanization further imbedded the layer of threads, hardened the fabric, and retained it in the form given to it before vulcanization, still leaving it resilient. Both before and after vulcanization the parallel position of the threads, whether laterallv in contact or not, prevented the sawing or cutting incident to the incorporation of a woven or braided fabric with a. sheet of rubber. It is now sought to differentiate the fabric thus produced by Huss from that described by the claims of the Palmer patent. To do this, great stress is laid upon the degree of imbedment of the threads in the unvulcánized fabric of the first claim. This contention is a very narrow one. So far as it is rested upon t%e interpretation placed on Palmer’s claims by the board of examiners when considering the reference to the Mayall patent, it is
“In determining -about similarities and differences, courts of justice are not governed merely by the names of things, but they look at the machines and their devices in the light of. what they do, or what office or function they perform, and how they perform it, and find that a thing is substantially the same as another if it performs substantially the same function or office in substantially the same way, to obtain substantially the same result, and that devices are substantially different when they perform different duties in a substantially different way, or produce substantially a different result.”
It is said that the method of production stated by Huss in his specification is inoperative, and results in a fabric not answering to the description of his claims. It is doubtful whether an objection to the sufficiency of description in specifications will lie, in the absence of an averment in the pleadings that the description was ambiguous and defective, with intent to deceive the public. Loom Co. v. Higgins, 105 U. S. 580. Huss claims, as he may well do, that his fabric is protected without regard to method of production. He maltes no claim to process. Touching the way in which the fabric may be made, he says:
“In order to produce tbe within-described fabric, I may employ any suitable means for laying the threads, and for causing the same to be incorporated within the sheet of rubber.”
The expert evidence shows no less than seven different ways in which this might be done, all well known to persons skilled in the rubber art. As an example of one such way, Huss says:
“I have arranged a layer of thread and a layer of rubber upon a large, Straight rod or mandrel, and imbedded or incorporated the thread within the sheet of rubber by pressure and vulcanization.”
It is said that this method permits the use of neither heat nor cement, and that without one or the other there can be no such degree of imbedment of the threads within the rubber from cold pressure as will hold the threads parallel with each other, or united to the rub