169 F. 641 | U.S. Circuit Court for the District of Northern West Virginia | 1909
(after stating the facts as above). Unusual as the statement may be in cases of this character, it does not seem to me that this controversy involves any great degree of difficulty in its determination. So far as the question of infringement is concerned, it is very clear that the motors manufactured by defendants are identical with those manufactured by complainants under their reissued patent, except that defendants have substituted flat or leaf springs attached to the cylinder heads for the coil ones carried on the stems of the exhaust and inlet valves in complainants’ motors. The thing to be accomplished in both is precisely the same—to impart the final movement to the -valves after said valves have been given their initial movement by contact with the cylinder heads. Simply expressed, this is done in the one case by a spring attached to the valve striking the plain cylinder head, in the other case by the plain valve striking the spring attached to the same cylinder head; the only difference being in the form and location of the spring. It is impossible for me to see what advantage can be derived by either the changed form or location of the spring adopted by the defendants under the conditions existing. It is a clear case of substitution of a mechanical equivalent designed to perform the same -function, and in substantially the same way. “The substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself; so that if two devices do the same work, in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.” Union Paper Bag M. Co. v. Murphy, 97 U. S. 126, 24 L. Ed. 935; Morley S. M. Co. v. Lancaster, 129 U. S. 263, 9 Sup. Ct. 299, 32 L. Ed. 715. I, therefore, have no trouble in determining that the motors constructed by defendants under the Spears patents are clear infringements of complainants’ reissued patent as to both claims oí the latter.
Nor, after examination of the prior art patents, do I have trouble in reaching the same conclusion arrived at by the Board of Appeals in the Patent Office, that Coffield, the patentee, was the first to use, in connection with the elements of the mechanism, springs which complete the stroke of the valve, and that, taken as a whole, the device
As to the technical defenses touching alleged irregularities in the Patent Office in the issuing of the original and reissue patents without proper affidavits and evidence of inadvertence, accident, or mistake, it is to be remembered that no such irregularities will be assumed to have occurred, but, on the contrary, the granting of the patent is prima facie evidence that the law has been complied with, and fatal irregularities in the Patent Office must not only be aptly pleaded but shown by full and satisfactory proof. In case the original patent has been surrendered and a reissued one has been granted, it has been held . that such office proceedings can only be impeached for fraud. Stimpson v. Railroad Co., 4 How. 380, 11 L. Ed. 1020; Battin v. Taggart, 17 How. 77, 15 L. Ed. 37; Seymour v. Osborne, 11 Wall. 516, 20 L. Ed. 33. In this case the allegations of the answer are not sufficient to put in issue any such defense. The third paragraph thereof substantially denies, instead of charging, such irregularities in the issue of the original patent as are now relied upon in argument, and the mere expression of opinion by an expert witness, based solely upon an examination of the file wrapper, that such irregularities may have existed, is wholly insufficient evidence to support any such charge.
Finally, the main contention of the defendants that the reissued patent to Coffield was an unwarranted expansion of the original one, and therefore invalid so far as it affected the intervening rights of defendants, is not, in my judgment, tenable, because, as I have heretofore indicated, I regard the substitution of the flat or leaf springs attached to the cylinder heads adopted by the defendants to be nothing more than a mechanical equivalent for complainants’ coil springs carried on the stems of the exhaust and inlet valves, and therefore no legal “intervening rights” of defendants have been affected by this reissue. But if I am wrong in this conclusion, and if the reissue does broaden the original by any additional claim, I am very clear that the conditions here are such as not only to warrant but even require me to uphold such reissue, under the well-settled rules laid down in such cases as Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ct. 825, 36 L. Ed. 658, Fay v. Mason (C. C.) 120 Fed. 506, and United Blue-Flame Oil Stove Co. v. Glazier, 119 Fed. 157, 55 C. C. A. 553. There can be no laches charged against the plaintiffs in making the application. The original patent bears date December 12, 1905, and the application for reissue was made less than eight months thereafter on July 28, 1906, before defendants had manufactured a single motor, and when the contract of agency existing between complainants and defendants was still existing, it having been terminated by notice as of August 1. 1906. It therefore would seem that defendants are in no
Let the injunction issue and an accounting be directed.
