222 F. 906 | 8th Cir. | 1915
In June, 1912, the Russell Grader Manufacturing Company, a corporation, sued Charles K. Stotkland, doing business under the name of the Stockland Manufacturing Company, for infringement of claims 2, 3, 6, 11, 16, and 17 of letters patent of
The defendant by its answer admits the issuance of the patents and the assignments thereof to plaintiff as alleged, but denies their validity and its infringement of them. The hearing resulted in a decree sustaining claims 2 and 17 of the Clemons patent and that both of said claims were infringed by defendant, with the usual order for an accounting of profits and the assessment of damages, and dismissing the bill as to the other claims of that patent and the several claims of the Wold patent, because not infringed by the defendant. The case is here upon appeal by defendant from the decree against it upon claims 2 and 17 of the Clemons patent.
The road-grading machine of the plaintiff is so arranged that the moldboard, or scraper blade, as it is called, is carried upon a frame supported by wheels or trucks in the rear and in front of the blade, with mechanism by which the blade may be controlled in the operation of the machine in cither direction along the road or grade upon which it is used. The patentee in his specifications describes the machine and its mechanism and mode of operation by appropriate reference to the drawings, and distinctly claims as his invention, among' others, claims 2 and 17, which read in this way:
2. “In a road-grading machine, the combination with a pair of wheels connected to a pair of swinging oscillating brackets pivotally attached to a bladc, with means for holding said swinging brackets where set, substantially as described.”
17. “In a road-grading machine, the combination with a scraper blade of supporting wheels at the front and rear of said blade, crank axles connected to said blade with freedom tor both lateral and vertical swinging .movements,, and to the rear portions of which crank axles the said rear wheels are jour-naled, independent devices for vertically adjusting said crank axles, and means holding the said crank axles for parallel lateral swinging movements, substantially as described.”
The contention that the 'machine of the Clemons patent in suit is •inoperative, and the patent therefore invalid, rests chiefly upon the ■testimony of the patentee, Clemons, who testified in effect, as a witness in behalf of the defendant, that he had made two or three machines according to the specifications and drawings of that patent and that ■they proved inoperative; that he finally abandoned the attempt to make an operative machine and made machines upon other principles of construction which worked quite satisfactorily. The weight of the testimony of this witness is much lessened by the fact that upon 'advertising circulars of the machines that proved satisfactory were placed the words, “Patented June 15, 1909,” and that he intended by this to convey the idea that they were covered by the patent to him in suit of that date, which he afterwards sold to the plaintiff; that before he so sold it he wrote the plaintiff that its “Simplex” machine, under which name .the plaintiff sold its Clemons commercial •machine, was an infringement of his patent that he afterwards sold to plaintiff. At the time the witness testified he was employed as manager (not as an officer) of a company that was a competitor of the plaintiff in selling road-grading machines. Having procured the patent upon the specifications and drawings originally filed by him in the Patent Office, and sold it to the plaintiff presumably for a fair consideration, he should not be heard to say in his own behalf, or for a competitor of his assignee of the patent, that a machine made according to its disclosures was inoperative and the patent therefor of no value; nor should it be held invalid, in favor of alleged infringers of the patent in the hands of his assignee, upon such testimony. Besides, it is not entirely clear from the testimony of Clemons that the changes in the construction of the machine which he says proved satisfactory were other than mere matters of detail. The specifications and drawings of a patent are intended only to enable one skilled .in the art to make the machine therefrom, and the efficiency of the machine as an operative device depends very much,- if not wholly, upon the skill of the mechanic who makes it. Ives v. Hamilton, 92 U. S. 426, 431, 23 L. Ed. 494. The defense of the invalidity of the •patent because the machine of its disclosures was inoperative cannot be sustained.
The defendant pleaded and offered in evidence some 15 patents of the prior art, and contends that some of them at least anticipate .'the Clemons patent. The one chiefly relied upon is that to Menden-hall of May 13, 1884, No. 298,604. In this patent the supporting ■wheels are rigidly attached to a side beam G (of the drawings) and ■always move with it. They can have no movement independent of the beam, which also moves with the drawbar. In the Clemons machine the wheels are independent in their oscillating movement, both of the beam 26 and of the drawbar' 15 of the drawings of that ma■chine; and they can be held in position in which they may be set with reference to the beam and drawbar by means of the alignment bar 6 and the collars and stops connected therewith. The Clemons
“Q. Now, what patent of Uto prior art offered in evidence comes the nearest to embodying the structure and mode of operation of the machine shown and dwrihod in the Clemons patent in suit, No. 924,966? A. I think the Menden-hall machine, patent No. 298,604, embodies the most of those features. Q. What, one comes next? A. I think the Farmer machine, patent No. 151,606. <},. Those two, you think, come nearest of all in this lot to embodying all of the features and mode of operation of the Clemons patent? A. No; the Clemons machine has one operation that neither one of us has. Q. Well, X am asking you which of these patents of the prior art comes the nearest to embodying all of the features of the Clemons machine; and I understand you to say the Mendenhall and the Farmer come the nearest — is that right? A. Those are two of them; yes, I think so. Q. Now, if there are any others that in your judgment come close to the Clemons, I wish you would mention those. A. The Dague machine, patent No. 2.13,117; the Aldrich machine, patent No. 703,977; the Skinner machine, patent No. 364,1X5; the Maxey machine, patent No. 610,550; the Mina rd machine, patent No. 370,077; the Van Voorhis machine, patent No. 113,950; and the Evoringham machine, patent No. 360,380. Q. You don’t find in any one of these prior patents all of the features of the machine of the Clemons patent in suit, do you? A. In these old patents? Q. Yes. A. Not all the features; no.”
Does the defendant infringe the plaintiff’s machine? The complainant corporation was organized in 1906; the defendant Stockland was an officer of that corporation from its organization until the fall of 1910, when he sold his stock therein and withdrew from the company. During his connection with the plaintiff he was superintendent of its factory. An “original” Clemons machine, as it is called, was built in the plaintiff’s factory during the fall of 1907, while the defendant was plaintiff’s superintendent, and he was familiar with its construction. It did not prove a complete success. In 1908 the plaintiff made and put upon the market its commercial machine under the name of “Simplex,” in which some changes in detail of construction were made. It went into immediate use; its sales increased year by year, until they amounted to upwards of 2,200 prior to the commencement of this suit. The defendant Stockland was entirely familiar with this machine before he left the plaintiff company.
“In determining the question of infringement, the court or jury, as the case may be, are not to judge about similarities or differences by the names of things, but are to look at the machines or their several devices or elements in the light of what they do, or what office or function they perform, and how they perform it, and to find that one thing is substantially the same as another, if it performs substantially the same function in substantially the same way to obtain the same result,' always bearing in mind that devices in a patented machine are different in the sense of the patent law when they perform different functions, or in a different way, or produce a substantially different result, * * * as it is necessary in every such investigation to look at the mode of operation or the way the device works, and at the result, as well as at the means by which the result is attained. Inquiries of this kind are often attended with difficulty; hut if special attention is given to such portions of'a given device as really does the work, so as not to give undue importance to other parts of the same which are only used as a convenient mode of constructing the entire device, the difficulty attending the investigation will be greatly diminished, if not entirely overcome.”
The decree is affirmed.