131 F. 257 | U.S. Circuit Court for the District of Southern New York | 1904
This is a bill in equity to recover damages for infringement of United States letters patent issued to John Moffet, No. 369,120, granted August 30, 1887, and to restrain infringement of claims 1 and 2 of said patent, of which complainant Timolat is the assignee, and the complainant corporation sole licensee. The patent is for a portable drilling machine. Its motive power is a rotary engine operated by steam or compressed air, compactly united and inclosed in a light cylindrical case, adapted to be used by the hand of the operator. The specification calling attention to the manner in which holes were formerly bored in metal parts connected and placed in position says:
“This has commonly been accomplished by the use of a suitable clamping device applied to the parts in which the hole was to be bored, and boring the same by the means of the ordinary ratchet-drill manipulated by the hand of the artisan, which is a very slow and fatiguing process.”
The object of the invention is to supply the workman with a portable drill, with motive power, having a boring device suitably adapted for being changed from place to place as the operator desires. The engine is attached to the frame which carries the boring spindle and other parts connected with the boring device. Claims 1 and 2 only are involved. They read as follows:
“(1) In a portable boring machine, the combination of the boring spindle with a rotary engine, upon the cylinder of which is formed the journal bearing for the boring spindle, as set forth.
“(2) In a portable boring machine, the combination of the boring spindle,*258 the rotary engine, with its cylinder, upon which is formed the journal hearing for the boring spindle, the gear connecting the boring spindle and engine shaft, and the feed screw and sleeve nut adapted to turn and force forward the boring tool, as set forth.” ;
Claim 1 is for a combination of elements, namely, a rotary engine and boring spindle, and the journal bearing formed upon the cylinder of the engine. Claim 2 has all the elements of claim 1, and, in addition thereto, includes gearing between the engine shaft and the shank of the boring spindle and a force screw and sleeve nut. The answer denies the novelty and utility of the Moffet patent; avers prior knowledge and use by others, anticipation by earlier patents and prior publications, and noninfringement. The Moifet patent is apparently well known to the Circuit Courts and Circuit Court of Appeals in this circuit, for it has been considered in one aspect or another at least five times at final hearing and on motions for injunctions pendente lite. A summary of the litigation in which this patent has been involved follows: At final hearing, Timolat v. Manning (C. C.) 110 Fed. 206. On motion for temporary injunction, Timolat v. Fairbanks; no opinion written. On motion for temporary injunction, Timolat et al. v. Franklin Boiler Works Co.; no opinion reported. On appeal from order granting temporary injunction, Timolat v. Franklin Co., 58 C. C. A. 405, 122 Fed. 69. Motion for preliminary injunction in the case at bar, 118 Fed. 852. Motion to dissolve injunction, Id., 123 Fed. 899. In the Manning Case, Judge Coxe, in his comprehensive opinion, after considering the Allen, No. 306,375, dated October 14, 1884, Fullman, No. 67,284, dated July 30, 1867, Noteman, No. 273,136, dated February 27, 1883, Whitcomb, No. 249,130, dated November 1, 1881, and Jones & Wild, dated December 22, 1881, patents, which were claimed by the defendant to anticipate the patent in suit, accorded to the inventor great credit for having been the first to conceive a highly meritorious and successful portable power drill for heavy boring. He also concluded from the evidence in that case that the patentee reduced the drilling device to practice several years prior to the date of the application, which was filed December 24, 1886, and accordingly decided that the date of the invention was before September 27, 1883. In the Franklin Boiler Works Co. Case, the Circuit Court of Appeals, after considering the patents before Judge Coxe, the Higginson and Mead English patents, and the Sharpneck and Leach (first) American patents, modified the injunction pendente lite granted by Judge Coxe as to claims 1, 3, and 4 of the patent, and continued the injunction as to claim 2. The reason for the modification, as announced by the court, was owing to proof of certain devices not before the Circuit Court in the Manning Case. The Court of Appeals gave no intimation as to the force and effect of such new evidence upon the validity or construction of said claim, “otherwise than to raise doubts which should preclude a decision upon affidavits alone.” Such, then, was the practical status of the patent in suit, as declared at final hearing by the Circuit Court, and substantially as qualified on appeal in the Franklin Boiler Case, at the time this suit was instituted. In explanation of a vigorous defense in the case at bar and a voluminous record, it is contended that new evidence is disclosed, strongly supported by prior patents, showing indisputably that
A description of the constructions, as found in the specification, follows:
“C is the engine cylinder. * * * This cylinder, 0, is provided at diametrically opposite points with the tubular connections, a. * * * Upon the underside of the cylinder, C, is a projection, E, preferably integral therewith. This projection forms a sleeve or long journal bearing, in which the boring spindle, F, is carried. This spindle is provided at one end with a suitable socket to receive a drill or other boring tool, d, and has firmly secured to its opposite ends the gear wheel, c, which engages with the pinions, c, keyed upon the projecting end of the engine shaft, e. As the wheel, c, is much larger than the pinion upon the engine shaft, it follows that the revolutions of the latter will be greatly in excess of those of the boring spindle, and that there will be a consequent increase of power in the latter, with a corresponding decrease of speed, thus enabling a very small swiftly running engine to furnish all the power needed for operating the drill, without increasing the weight of the machine to such an extent as to render it unwieldy.
“Firmly secured to one end of the cylinder, C, is a frame, G, having an opening which receives the gear wheel, c, and an additional opening, in which the collar, h, upon the inner end of the feed screw, s, is placed. This feed screw is thus attached and extends outwardly from the frame, G, and is received into the sleeve nut. n, which is provided at its outer extremity with a pivoted joint, n, upon which it turns when revolved by the handles, o, or other suitable means. The point, n, has a bearing in tlie upright of the clamping frame, B, and forms the point of resistance for the drill in its forward motion.”
It is perfectly true that nearly all the elements of the combination, taken separately, are old. The art of drilling metal was familiar when the patent was conceived. There were different ways and means in which such holes in metals were bored; the dimensions of tlie metal, and size of the holes desired, controlling the means employed. A breast drill was ordinarily used, and a jackscrew or brace as a force feed was very common. These earlier devices, imperfect in view of later improvements, could not accomplish the objects and purposes of the invention in suit. According to the defendant, the combination of ele
“The best reference offered by the defendants is unquestionably the patent granted to John F. Allen, October 14, 1884, for a portable drilling machine. The application was filed December 3, 1883, and there is no satisfactory testimony establishing the date of the construction of the Allen machine prior to the date of the application.” i
This brings me to a consideration of the defendant’s asserted new evidence to establish the prior use of the Allen device. It is attempted to be shown that in the autumn of 1882 and in the spring of 1883, prior to the date to which the patent in suit was antedated, Allen built and successfully operated a portable drill embodying the combination of claims 1 and 2. An identical construction is not produced. A model made according to the Allen patent by Mr. Keller, patentee of the infringing drill, as an exhibit, is in evidence. The invention of Allen does not appear to have gone into general use. I have carefully read the testimony upon which it is claimed that the date of the Allen construction is prior to the date of the application. I am not favorably impressed by the testimony of Allen upon this point. Considered in connection with his former testimony and the testimony of his father in the Manning Case, it has not the weight claimed for it. A witness who has had ample opportunity to narrate his connection with a transaction, and apparently fully relates the same, and thereafter, in another litigation, gives a different narrative in relation thereto, or one from which an entirely different inference may be- drawn, is not usually to be depended upon for accuracy of statement. The testimony of such a witness should be carefully scrutinized before it is accepted as true. Even where it is uncontradicted, it should not be accepted if there are reasonable grounds for believing that it is unreliable or mistaken. It may be that the testimony of Allen does not come within the range of testimony which is thus characterized and described by the courts. Certainly the testimony of one who concededly withheld material and important testimony upon a former trial ought to be convincingly supported by other satisfactory evidence before such testimony first offered at a later trial involving the same issue is accepted. The rule in such case imposes upon the defendant the burden of proving the earlier device, and also to establish prior use and invention by proofs clear, satisfactory, and beyond a reasonable doubt. Barbed Wire Patent, 143 U. S. 284, 12 Sup. Ct. 443, 36 L. Ed. 154. In the Manning Case, defendant’s exhibit No. 7 was called to the attention of the witness Allen, and, in reply to questions put to him, he said that the drill was made in his father’s shop, but he could not tell positively when it was made. Upon this subject the following is a portion of his examination:
“Q. I call your attention to defendants’ Exhibit No. 7, Allen rotary drill. Do you recognize this exhibit? A. I do. * * * Q. State, if you know, when drills of the same type were made? A. I know positively that drills of that type were made in the latter part of December, 1885. Q. How do you fix this date? A. I fix the date by the timebook. Q. Please examine said time-book, and read the entries referring to this or similar drills? A. ‘Monday, 28th, three rotary drills; Tuesday, 29th, ten rotary drills; Wednesday, 30th, five rotary; Thursday, 31st, two and one-half rotary.’ That ended that book. I have not got any of the books which followed that. Q. How do you fix the*264 year in which these entries were made? A. By the date in front of the time-book, ‘1885.’ ”
The witness gave other testimony giving reasons for knowing the month and the year in which the entries were made in the timebook. In respect to this subject he further testified on cross-examination as follows:
“Q. You are not able to say just when the rest of the work on that drill was done? A. Some of it was done in January, 188G. Q. But just when the Inst work was done on that drill you are unable to say, are you? A. I am not able to say just when. Q. What has become of the timebook which would show that? A. I don’t know what has become of it. I have tried to find it, but can’t. It is lost, as far as I know. Q. Has this timebook been in your possession from the date of the entries to the present time? A. Yes; at the works.”
John F. Allen, the inventor of the Allen drill, and father of the preceding witness, was also called as a witness in the Manning Case, and these questions were put to him.
“Q. State whether or not you ever made a drill constructed in accordance with said patent? A. Yes. Q. When? A. I made at least two in 1883.”
He was asked to give a brief general history of what he did in the manufacture of drilling machines up to 1888. Nowhere in his testimony is found an intimation that the drill described in the patent was completed prior to the date of application, or that it was in prior public use. It further appears in this case from the testimony of Mr. Allen, son of the patentee, that rotary drills were made in 1882 and 1883 in his father’s factory, and the dates thereof, as heretofore stated, are again fixed by timebooks which were then used. Though by such timebooks it appears that work on rotary engines for drills was done during the period stated, it nevertheless is not entirely clear that such labor was performed upon a portable drilling machine. The record in the Manning Case and the interrogatories and replies above mentioned show that both the witness and the patentee had in that case full and free opportunity to state the facts with reference to an earlier period of invention than that stated in the patent. No claim was then made by any one that a perfected portable drilling machine was completed in the year 1882, early in 1883, or prior thereto. It is true that other evidence is found in the record tending to corroborate the earlier conception of the Allen invention and its practical usefulness. Such evidence, however, is based wholly upon the unaided recollections of the witnesses. It does not conform to the strict rule that evidence to carry back the date of the invention shall be clear, satisfactory, and beyond a reasonable doubt. My conclusion is that the involved claims are entitled to the breadth of scope and construction heretofore given them in the Manning Case, and substantially concurred in by the Circuit Court of Appeals in the Franklin Boiler Works Co. Case. Claims 1 and 2 are not limited to the specific structure shown in the patent. The journal bearing in the defendant’s drill extends beneath the engine cylinder; being attached to the cylinder, and operated identically with the Moffet journal bearing, which, as has been stated, projects from the side of the cylinder, and is integral therewith. In both devices under consideration, the boring spindle is united with the engine shaft by gearing, practically the same. The defendant also uses a feed screw
Let a decree be drawn in the usual form, sustaining the claims of the patent and directing an accounting.