Quinn v. J. H. Faw, Inc.

235 F. 166 | S.D.N.Y. | 1916

LEARNED HAND, District Judge

(after stating the facts as above). Whether it would have been invention to combine the bulb reflector of Sachs, 1,069,035, or Miller, 486,729, with a large reflector, is an academic question, in view of the file wrapper, as I shall show; but it is important to observe that Miller actually disclosed the whole combination as used by the defendant in lines 54-56 o-f his patent, which reads as follows:

“By this moans I can use any style of globe reflector upon the fixture with my improved shade, without one interfering with the other.”

Miller’s shade was especially arranged to be shifted about by hand to any radial angle. It is true that Miller speaks of a “globular reflector,” but there is nothing in the patent which confines it to parabolic reflectors, and indeed the section shown in the diagram is of a globular reflector. I can hardly see anything in the patent, if the disclosed means of adjustment be omitted, except a new use for the combination disclosed by Miller, and I think it would be invalid.

. However, as I have said, this consideration is academic, because, whether the reference in Miller’s specifications was enough to anticipate the invention so construed, it is clear that the examiner thought the combination of Sachs (and Miller was in fact even a better reference) with an ordinary reflector did not constitute invention. This he said in the action of Februaary 13, 1914. This position of the examiner was answered on March 5, 1914, by the suggestion that Sachs’ bulb reflector was a separate piece, and the applicant made appropriate changes in the claims to confine them to bulb reflectors which were inseparable. From that time on the examiner abandoned reference to Sachs, obviously upon the understanding that the changes in the claims had limited them to' a form in which the bulb reflector was not of the Sachs type.

This is, in itself enough to put the defendant’s bulb reflector out of the claims. Judge Killitts held, and I agree with him, that the word “silvered,” in claims 1 and 4, was intended literally, especially when used in apparent distinction with the term “fixed therewith”; but possibly he had not before him the file wrapper, from which it appeared that “fixed therewith” was also used to avoid exactly the kind of device employed by the defendant. In any case I cannot doubt that this was its purpose; indeed, it was implied to be the purpose in the applicant’s own letter of March 5, 1914, as already quoted.

The patent did not issue, however, even then. The examiner still thought that the mere combination of a silvered bulb (e. g., Waters, 265,475) with a large reflector (such as Hewling, 984,480) was not invention. He did allow, however, claims 2, 3, 4, and 5, which contained as an element means of adjustment, and disallowed a claim which was just the same, except for the omission of the means for adjusting tire reflectors relatively to each other. This shows conclusively, especially when coupled with his comments, that he did not mean to allow the patent, except when the adjusting means was added. This conclusion is, indeed, fortified, if necessary, by his allowance of the disallowed claim when the adjustment was added.

Thus we see that the element of adjustability was in the examiner’s mind necessary to the invention as granted. Now the patentee seeks to supply that element in the defendant’s device by 'suggesting that the ability to shift the bulb reflector by hand makes it adjustable. In so doing he seeks to avoid the first limitation which he accepted; i. e., that the bulb reflector must be fixed to the bulb. Not until he assented to that limitation would the examiner abandon his .position that Sachs was a good anticipation. After he had, then the examiner, confining himself to Waters, a silvered bulb, suggested new difficulties, which were finally overcome. The necessary result is that the patent accepted both limitations: First, that the bulb reflector should be fixed; second, that it should be adjustable. The invention patented is therefore shown to be exactly what the words of the claim would normally mean; i. e., a bulb reflector integrally connected with the bulb, yet capable of adjustment with the large reflector. That the defendant has not. This is not a harsh interpretation of the patent, because it is precisely the scope to which the patentee by degrees chose to limit it in order to get a patent at all. There is no injustice in holding him to his deliberate bargain.

The case is the common one in which the applicant assents to conditions imposed in the Patent Office, and then, having got his patent, tries to expand it to cover exactly what he agreed it should not. Such a game of hide and seek the courts have always refused to allow. lie had his remedy by appeal, and only by appeal, if the examiner was wrong.

Bill dismissed, with costs, for noninfringement.