96 F. 238 | 2d Cir. | 1899
Lead Opinion
A brief recital of the litigation which has arisen upon this patent, with references to former opinions, will make it unnecessary to enter into any elaborate analysis of the invention covered by it, since the record now before the court does not present any important variances from that considered on the former appeal. The specification sets forth that the — -
“Invention relates to certain novel and useful improvements in saws, but more especially to that class of saws used in cutting metal and other hard substances, and lias for its object to furnish a saw which, while hard as to its teeth, so as to insure a durable cutting edge, shall he of such temper as to its body as to pre-ven! its breaking when subjected to sudden cross strain or twist; and, with lhe?e ends in view, my invention consists in the article of manufacture hereinafter described, and then specifically designated by the claims.”
The specification then proceeds to set forth in detail the patentee’s method of construction, and concludes with two claims, as follows:
“(1) As a new article of manufacture, a saw as described, made from tough, pliable steel, and having the teeth thereof hardened to a high temper down to their base line, or line of juncture with the body of the blade, substantially as described. (2) A saw, as described, of a single piece of metal, with a soft back, and high-tempered, hard teeth, as specified.”
No litigation seems to have arisen upon the patent until a suit was begun by the present plaintiffs, then the owners, against one Jennings and another, for alleged infringement. That suit came on for final hearing in the circuit court, Southern district of New York; and on May 25, 1894, that court filed an opinion, which will be found reported as Thompson v. Jennings, 68 Fed. 57. A somewhat full synopsis of that opinion will be necessary to a proper appreciation of the precise questions presented upon this appeal. After referring to the four classes of saws to which the patent refers (those used for cutting metal), viz. circular, back, hack, and band saws, the opinion proceeds to a discussion of the prior state of the art. It states that both circular saws and back saws had been made prior to the patent with the cutting teeth and the adjacent strip hard, and the body soft, with the distinct purpose of preventing breakages, and thus strengthening the saw. The same evidence as to circular saws and bade saws is in the present record, and also some additional evidence, showing that in the prior art hack saws
“The first claim is for a saw as described, made from tough, pliable steel, and having the teeth thereof hardened to a high temper down to their base line, or line of juncture with the body of the blade, substantially as described. Inasmuch as such a saw appears by the testimony to present features of novelty and utility not found in the prior saws, which were either tempered uniformly, or else so tempered that not only the teeth themselves, but adjacent strips of the blade, were hardened, this first claim is sustained.”
The complainants in the Jennings Case contended further that under the second claim they were entitled to cover saws which also have a strip of the. metal adjacent to the teeth tempered as they are. The circuit court in that case repudiated any such proposition as broadly stated, finding it to be wholly inconsistent with the pre
“The ideal saw of the x>«tenl would consist of a tough, soft, pliable body or back, with a series of hard teeth grafted or applied, so to speak, upon one of its edges; each tooth being virtually separated from its neighbors by an infinitesimal joint of soft metal.”
Nevertheless, recognizing the practical difficulty of locating the temper line so that it would be mathematically coincident with the bases of the teeth, the court reached the conclusion that the pat-entee was entitled to include, under the second claim, blades where the temper line extended some unappreciable distance into the blade beyond the bases of some or all of the teeth; sue!) trivial variance being apparently not detrimental to the usefulness of the saw. The distance beyond the bases of the teeth to which such temper might extend without departing from the blade of the patent was not precisely defined; but it was noted that in the prior art the tempered strip below the teeth had been found, in some instances, to be as narrow as tiro depth of the teeth, from which it was concluded that blades in which the tempered strip was wider than the depth of the teeth were not within the patent. It appearing that the defendants’ saws in the Jennings Case had teeth somewhat less than í/»¡¡ of an inch in depth, and a high temper extending into the blade 4/ss below the bases of the teeth, the circuit court held that there was no infringement, and dismissed the bill. The Jennings Case was appealed to this court, which on May 28, 1895 (21 C. C. A. 486, 75 Fed. 572), affirmed the decree of the circuit court. No opinion was written, the court stating that it was deemed unnecessary to add anything to the opinion of the circuit judge; but it was intimated that the patent could he sustained only if limited to hack saws and band saws. Acting upon this suggestion, the owners of the patent on July 18, 1895, filed a disclaimer in the patent office “of so much of said claims as covers circular saws and back saws, leaving said claims to include only back saws and hand saws.” Thereafter they brought this suit, and upon proof that defendants had sold some saw blades that in the opinion of the court were “either hardened to the base line of the teeth, or so near it that the variance from the distinctive fractional tempering of the patent was trivial,” the circuit court entered an interlocutory decree for injunction and accounting, from which decree this appeal is taken.
The appellant contends that the disclaimer is not a proper one, and is therefore void. The theory of this contention is that there is no separate invention, and that, inasmuch as the different kinds of metal saws known to the art are distinguished from each other by their particular kind of mounting, a restriction of the claim to any one kind of saw is practically adding to the claim a new element, to wit, the kind of mounting. Reference is made to Machine Co. v. Searle, 8 C. C. A. 476, 60 Fed. 82, and to Hailes v. Stove Co., 123 U. S. 582, 8 Sup. Ct. 262, where it is held that disclaimer cannot he availed of when “it requires an amended specification or supplemental descrip
There is no force in the contention that there has been any unreasonable delay in filing the disclaimer. Defendant insists that tlie owners of the patent should have realized the necessity of so doing when the evidence as to prior use of a narrow tempered strip in circular saws and back saws was introduced in the Jennings Case (November 28, 1892). But the circuit court in that case, with such evidence before it, did not consider disclaimer necessary. It was only, when the decision of this court was filed, May 28, 1895, that the owners of the patent were apprised of the necessity of disclaimer, and they filed it in July, 1895. They certainly acted with reasonable promptness.
As already indicated, the evidence taken in this cause does not differ materially from that which was before this court in the Jennings Case. There was some testimony as to prior use of a tempered strip extending a little below the bases of the teeth in hack saws. The circuit court in Connecticut apparently discredited this proof, but it really makes little difference whether it be accepted or not. There was abundant proof in the Jennings Case that such a strip was a part of the prior art in circular saws and back saws. The circuit court in that case held-that such proof made it necessary to restrict the patent to saw blades where the line of temper is practically coincident with the bases of the teeth, or at' most does not extend more than their own depth below; and the court of appeals sustained that conclusion. One of the additional witnesses testifies, without much positiveness, that the temper of saw blades was sometimes confined to the teeth; but the other witnesses to the work in the same shops put the line of temper, as did the witnesses in the Jennings Case, who told of circular and back saws, at about, or more than, the depth of the teeth below their bases. To this limit, in our opinion, the
That some few of defendants’ blades, out of a package which complainants claimed to infringe, did not disclose any hard temper beyond Y32 of an inch below the bases of the teeth, is hardly controverted. Tt: is urged that they were accidentally made and unintentionally sold. But the owner of a patent is entitled to protection against the repetition of accidental infringements. Upon this point the judge who heard this cause in the circuit court says, “If, as they now' contend, the saw of the patent in suit is impracticable, and the flexibility which results from the invention of the patent in suit is a disadvantage, the defendant will not suffer from the effect of an injunction which will operate to prevent its making such defective saws in the future accidentally or otherwise,” — an expression of opinion in which we fully concur. Except as to a modification of the proviso as indicated above, the decree of the circuit court is affirmed.
Dissenting Opinion
(dissenting). When this cause was previously before this court, it came before us upon an appeal from a decree dismissing the bill because infringement had not been established. It was unnecessary then to pass upon the question of the novelty of the alleged invention, and this court affirmed the decree below without discussing the question. I cannot concur in the opinion of the court now delivered, because I think there was no patentable novelty in Fowler’s alleged improvements in saws, as defined by the second claim of the patent. It was well known in the prior art that there were advantages in having the body of a saw soft, and the teeth hardened to a high temper; and circular saws and hack saws were made in that way, the object being to. prevent breakages of the whole saw from twist or shock, and confine (item to the teeth or the hard-tempered adjacent area. The purpose of the present invention was to accomplish the same object so that the teeth can be used until worn away, while the body of the, saw will yield to bend or twist, and be sufficiently pliable not to be broken in use. The description of the invention contains two inconsistent statements. The patentee first states that, in constructing the saw, care is to be taken “that the hard temper is confined to the teeth alone, and does not extend at all Into the body of the saw.” Subsequently he states that, while able to temper the blade so that the temper line may he at any point in the width of the blade, “I preferably fix upon the base line of the teeth as the best and most advantageous point.” The first claim is by its
As it is not pretended that the first claim of the patent is infringed, there should be a reversal, instead of a modification, of the decree of the court below.
