75 F. 301 | 3rd Cir. | 1896
This is an appeal from the decree of the United States circuit court for the district of Xew Jersey, made
“The characteristic feature of my present invention is a supporting tube which is flexibly mounted with relation to the spindle rail, and contains the step and bolster bearings for the spindle, so that the latter and said tube may move together laterally in all directions during the self-adjustment of the spindle, while carrying an unequally balanced bobbin and its yam, instead of relying upon the movement of the spindle and its bearings within, and independently of, the supporting tube, as heretofore in this class of spindles. By reason of my improvement, the means whereby fhe movable capacity or flexibility of the spindle is afforded are rendered openly accessible, and more easily renewed, if need be, than heretofore; and, further, elastic materials may be successfully employed, which would be liable to injury, and rendered inelastic, by oil, if located within the supporting tube, as heretofore. I am also enabled to readily graduate the degree of flexibility of the spindle with relation to'the spindle rail, so as to accommodate the self-adjusting capacity of the spindle to the various conditions incident to its use in working with bobbins materially differing in size and weight. All of these advantages are due to the novel, characteristic feature before referred to.”
The claims in issue are tliese:
“(3) The combination, substantially as hereinbefore described, of a spindle rail of a spinning machine, a spindle, and a supporting tube flexibly mounted with relation to the spindle rail, aud containing step and bolster bearings.
“(41 The combination, substantially as hereinbefore described, of a spindle rail, a spindle, a supporting tube containing step and bolster bearings, flexible connections between said tube and the spindle rail, and adjusting devices for varying the degree of flexibility of the supijorting tube and spindle' therein.
“(51 The combination of the spindle rail, the spindle, the supporting tube, loosely mounted with relation to the rail, and containing the step and bolster bearings for the spindle, the spring, and the nut for compressing it, substan- • tially as described.”
Tke validity of. tke complainants’ title is admitted. The first defense to the suit is that of laches, which was urged with much earnestness, and is made on the ground that the complainants had deprived themselves of relief in a court of equity by neglecting to prosecute any one for infringement until more than seven years after the date of the patent, and that the defendant had no notice of their claims until more than ten years after that date. It is alleged that the complainants permitted the manufacture and sale of the spindles complained of to be carried on for many years by men who were ignorant of their claim, and allowed the persons composing the defendant corporation to purchase the business without giving them notice; that spindles mounted flexibly, like those now complained of, were made and sold by the Cooke Locomotive & Machine Company, continuously and to a large extent, from August, 1881, until they sold the business to Mr. Taylor, Mr. Shaw, and Mr.
It 1ms never been held that mere laches, unaccompanied by circumstances which amount to an equitable estoppel, shut out a party from all relief in a, court of equity. Knowledge of and long-continued acquiescence by a complainant in an infringement may, in special cases, be fatal on a motion for a preliminary injunction, but will not, on a final hearing, prevent the court from granting such relief as may be just and equitable. This is the general rule which is recognized in the authorities which are cited in the briefs of counsel. There is a, want of satisfactory proof that the defendant acted in ignorance of the rights of the complainants, or that the latter had always had full knowledge1 of the alleged infringement. 'Notice was given to the public at large that the spindles were patented, and the defendant could not have been blind to the fact that the new spindles had gout; into extensive use. The testimony of Mr. Taylor, of (he defendant corporation, liad reference to a time prior to the issue of the patent, when, as he says, Mr. Atwood saw the infringing spindles, or ones just like them, in operation in Paterson, and made no claim that the invention was his; but it is not pretended that Taylor, Shaw, and Cocker, or either of them, at the date of their incorporation, in March, 1891, did not know of the complainants’ claims, for the suit against the Morrison Company had then been pending for more than a year. In Kittle v. Hall, 29 Fed. 508, it was held that, while long- acquiescence might defeat a bill for infringement, no precedent had been discovered for the dismissal of a bill for so short a period as seven years, and that the defendants had not been misled, but knew of the plaintiff’s rights. In McLean v. Fleming, 96 U. S. 245, the court said:
*304 “Equity courts will not, in general, refuse an injunction on account of delay in seeking relief, where the proof of infringement is clear, even though this délas' may be such as to preclude the parts' from any right to an account for past profits.”
To the same effect are the cases of Menendez v. Holt, 128 U. S. 514, 9 Sup. Ct. 143; Price v. Steel Co., 46 Fed. 107; New York Grape-Sugar Co. v. Buffalo Grape-Sugar Co., 18 Fed. 638; Gilmore v. Anderson, 38 Fed. 846; Brush Electric Co. v. Electric Imp. Co., 45 Fed. 241. In the last-cited case the court remarked that the doctrine of laches is generally applicable to preliminary injunctions only. In Menendez v. Holt, supra, the court, in discussing the question of laches, said:
“Mere delay or acquiescence cannot defeat the remedy by injunction in support of the legal right, unless it has been continued so.long, and under such circumstances, as to defeat the right, itself. Hence, upon an application to stay waste, relief will not be refused on the ground that, as the defendant had been allowed to cut down half the trees upon the complainants’ land, he had acquired by that negligence the right to cut down the remainder [citing Attorney General v. Eastlake, 11 Hare, 205]. * * * Acquiescence, to avail, must be such as to create a new right in the defendant. Where consent by the owner * * * is to be inferred from his knowledge and silence merely, it lasts no longer than the silence from which it springs. It is in reality' no more than a revocable license.”
The defendant asserts that the complainants are not entitled to an accounting for profits; but the decree of the circuit court orders an accounting only from the date of the defendants’ incorporation, from and after which time there were no laches, as complainants had already begun their suit against the Morrison Company. This was sufficient notice to the defendant that the validity of the patent was in litigation, and thus takes away the excuse of ignorance for continuing the infringement. There is no proof of nonuser or abandonment by the complainants, nor of any act or omission of theirs which could have induced the defendant to believe that it would not be held liable for manufacturing and selling the infringing articles. The evidence falls far short of proving an estoppel, or of proving such delay or acquiescence on the part of the complainants as should defeat the present suit.
Infringement is not seriously disputed; the defense on this point being that, if the patent is sustained at all, it must be confined to the precise form described and shown in the specifications and drawings. The specifications state:
“The spindle chosen to illustrate my invention is of that well-known variety which is constructed with a sleeve attached to the spindle blade, extending downwardly so as to encompass a support containing the bolster bearing, and which has a driving whirl located at or near the base of such sleeve. Such spindles have their foot rests in the base or closed end of the bolster support, and the spinning frame therefore requires only one spindle rail. As shown in all the figures of the drawings, A represents the spindle; B, the sleeve; and b, the whirl thereon. As shown in Fig. 2, the spindle is mounted in a supporting tube, G, which extends both above and below the spindle rail, H, and furnishes an upper or bolster bearing for the spindle in its portion, c, and a lower step bearing in its portion, c'. The supporting piece or tube, 0, containing as it does the bolster and step bearings for the spindle, constitutes a combined bolster and step, which moves laterally with the spindle, in all directions, during its self-adjustment.
*305 
*306 • “In order to permit the supporting tube, 0, to move with the spindle as described, the spindle .rail, 0, has a circular' opening, as at d (X^igs. 1 and 2), which has a diameter slightly greater than the diameter of the lower portion, c', of the tube, 0; so that between their coincident surfaces an ample annular space is afforded to allow of the desired lateral movement of said tube, and the spindle therein. For so securing the supporting tube and its spindle to the rail, 0, that they will nevertheless be capable of the requisite lateral movement incident to the self-adjustment of the spindle, the lower end of the tube, c', is screw-threaded, and provided with a nut, E. A strong spiral spring, F, the tension of which may be variably regulated by said nut, surrounds said portion of the supporting tube between the nut and the under side of the rail; and the base or flange portion, c, of said tube is seated upon a washer or annulus, (X, of flexible or elastic material, placed between said base and the top of the rail.”
The defendant’s spindle is almost identical with the Atwood spindle, differing only in form, but containing all the elements, or their equivalents, of the latter. The differences between the two are immaterial. In defendant’s spindle a collar and set screw are substituted for the nut below the spring, and the- whirl is attached directly to the shaft of the spindle; the supporting tube being made in two parts, and then rigidly fastened together by two arms, which bridge over the whirl, thus practically malting one tube for the step and bolster bearings. The defendant has adopted the essential elements of the Atwood combination, namely,, the flexibly mounted supporting tube, containing both step and bolster bearings, which is connected with the rail by a strong spiral spring and an adjusting nut. The defenses chiefly relied on are want of invention (as distinguished from mechanical skill) anticipation, and because the claims are inoperative and void. Atwood had invented his spindle, and put it into use, as early as July, 1878, although he did not make application for a patent until February 27, 1880. Prior to his invention, spindles had been run in rigid bearings; and their speed wás limited on account of their tendency, under a high rate of revolution, to gyrate and cause severe pressure on the bearings, developing friction, and throwing off the bobbins. The production of a spinning frame is in direct ratio to the speed of the spindles, and every increase in speed at which the spindle can be practically run makes a proportionate increase in the' production; and thus it was that inventors had long been endeavoring to mount a spindle in such a way as to obtain a greater rate of speed than was possible with the then existing machines.. Numerous patents had been granted for improvements in these machines, but none of them contained the dévice of Atwood, who was the first to combine the step and bolster bearings of the supporting tube with a flexibly mounted spindle, whose rotary speed was only limited by relation to other parts of the machinery. Invention and patentability, however, are denied on the ground that Atwood’s combination is only a new arrangement of well-known parts, which had already been combined to accomplish the same result, and that its only novelty consists in the location of the yielding attachments between the supporting tube and the rail, and the use of adjusting devices for varying the degree of flexibility, — in substance, nothing more than putting- a cushion or spring of some kind between the journal box of a revolving shaft and the fixed base of support, and therefore showing only mechanical
“Indeed, it oi'ten requires as acute a perception of the relations between cause and effect, and as much of the peculiar inventive genius which is a characteristic of great inventors, to grasp the idea that a device used in one art may be made available in another, as would be necessary to create the*309 device de novo. And this is not the less true if, after the thing had heen doin', it appears to the ordinary mind so simple as to excite wonder that it was not thought of before; but the decisive answer is that with dozens, and perhaps hundreds, of others laboring in the same field, it had never occurred to any one before. * * * As a result of the authorities upon the subject, it may be said that, if the new use be so nearly analogous to the former one that the applicability of the device to its new use would occur to a person of ordinary mechanical skill, it is only a case of double use; but if the relations between them he remote, and especially if the use of the old device produce a new result, it may at least involve an exercise of the inventive faculty.”
' To the same effect are Du Bois v. Kirk, 158 U. S. 58, 15 Sup. Ct. 729. and Tannage Patent Co. v. Kahn, 17 C. C. A. 552, 70 Fed. 1003. In Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ct. 825, the court held it—
“not sufficient, In order to constitute an anticipation of a patented invention, that the device relied upon might, by modification, be made to accomplish the function performed by that invention, if it were not designed by its maker, nor adapted, nor actually used, for the performance of such function.”
As a further defense it is contended that the claims sued on must be construed as containing the sleeve whirl, in which case they are not infringed, because (he defendant does not use the latter, or else they have no operative mechanism, and are void. The law on this subject is too well settled to be open for discussion. A patentee is not required to claim the entire machine in each claim. Each of the claims at issue is for a complete combination of the spindle and its supporting tube and devices, and there was no necessity for expressing in terms the devices for revolving the spindle. Any appropriate means for operating it will be understood. The omission of the sleeve whirl does not affect the validity of either one of the claims, which belong to that class where reference may be made to the specifications to supply in a claim what it is plain, to any one skilled in the art. is a necessary incident. Reece Buttonhole Mach. Co. v. Globe Buttonhole Mach. Co.. 10 C. C. A. 194, 61 Fed. 970; Deering v. Harvester Works, 155 U. S. 286, 15 Sup. Ct. 118. The decree of the circuit court is affirmed.
