S. S. Stafford, Inc. v. Thaddeus Davids Ink Co., 264 F. 111

264 F. 111 | 2d Cir. | 1920

HOUGH, Circuit Judge

(after stating the facts as above). [1] Viewed in perspective, Deppermann’s difficulties in the office are easy of understanding. His specification never changed; what he had achieved was and is, as a visible, mechanical thing, both plain and simple; but he insisted on claims which usually defined the thing in terms (as his solicitor put it) of function, or, as it seems to us, of result. The seventh claim defined the means by which result was reached, and was therefore properly allowed.

The patentee’s addition to human knowledge is this: Ink is a fluid subject to evaporation and corrosive of metal; it is therefore desirable to keep the bottle, when not in use, tightly stopped, and to pour, through some nonmetallic substance, a thin stream. His device belongs to an old class of “pour-outs,” wherein what may be called the bottle “cork” is perforated with an air passage and an ink passage, which register with similar pasages in a relatively rotatable spout; when in register, ink will flow out on proper tipping; when out of register, the bottle is tight.

There is another commercially desirable thing which is effected by this device. Ink makers wish to sell as many ink bottles as possible ; therefore, if a “pour-out” is put on the full bottle, which cannot be replaced, if removed, the “non-refillable” bottle is produced. This was old, through the device of not inserting the stopper into the bottle neck, but of binding it to the bottle top by a tight metal band external to and uniting stopper and bottle top.

Deppermann’s “embracing ring,” “annular fastening member,” or “two-part ring” is a metal band, of which the lower part holds firmly together the perforated stopper and the bottle mouth, while the upper portion — of reduced diameter — holds the registering “pour-out” in loose, and therefore rotatable, relation to the firmly fixed stopper. Thi's “embracing ring” was a new idea; it made the stopper embody a new combination, and we agree with the court below that it displays patentable invention.

Silverthorne arrives at confessedly the same result, by securing to a “pour-out,” or spout (old, as is Deppermann’s), rotation relative to the stopper, by a “retaining ring” which fits loosely over the “pour-out” base. But this device, as just indicated, and claimed in the quotation (supra) from Silverthome’s patent, will not fasten to a bottle by anything described; but (says the specification)’ it may be “fastened thereto by any conventional ferrule fastening device,” and accordingly, in the actual thing complained of, it is secured to the ink bottle by a metal band, which grips both bottle mouth and “retaining ring” and makes all tight whenever the spout is out of register.

Whether this identity of result is reached in the same way depends on finding first the inventive thought that vitalizes the patent, next asking whether the means of applying that thought have been appropriately defined in the claim, and then inquiring whether defendant’s means are within whatever range of equivalents patentee is entitled to.

[2] Deppermann’s one inventive thought was to put into a structure, unitary when affixed to a bottle, the stopper, registering spout, and embracing ring; he did appropriately define that thought in claim 7, and did it long before Silverthorne; and he thereby made something new, ingenious, and apt for commercial success. Such an invention, like all others, is entitled to a range of equivalents commensurate with the novelty exhibited; and here the novelty is not great, hut considerable.

Defendant has sold a device which only transfers the loose spout retention element of Deppermann from his integral extension of the outside ring to a separate ring, which fits inside of the outer ring defendant actually uses. It has split one of Deppermann’s elements in two; but the two parts are and must be joined in work, and when so joined do the same thing in the same way as does Deppermann’s. It has been easier to describe what it complained of in terms of Silver-thorne’s patent; but that is mere convenience. We are concerned only with what defendant has sold; the later patent does not vary the legal problem.

We therefore agree with the court below that infringement exists as to the seventh claim.

[3] As for the rest the plain effort of plaintiff to “lick into shape” some new claims that would read directly on what a competitor had just put out, is not attractive, and justly leads any court to scan closely claims so composed. Lyon, etc., Co. v. Hartford (D. C.) 247 Led. 524, affirmed 250 Fed. 1021, 162 C. C. A. 664.

Claims 2 to 6 of this patent are to be read in the light of the facts, and strictly construed; but the procedure was within the letter of the statute, and they cannot be cast out, if they do naturally grow out of the specification. We think they do, if “two-part ring” and annular “fastening member” be taken to mean no more than the “embracing ring” of claim 7. Nevertheless infringement remains, because what defendant does is, even within a narrow range, the plain equivalent of the one vitalizing element of Deppermann’s invention.

Decree affirmed, with costs.