24 F. Cas. 35 | U.S. Circuit Court for the District of Northern New York | 1865
[The bill, in this case, is founded upon two patents, alleged to be for new and useful improvements in rotary knitting machines. The first was issued to Daniel Tainter, of Worcester, Massachusetts, November 30, 1852, and on February 12, 1860, was by him assigned to the present complainant, who is now the owner of the same. The second patent was issued to Clark Tompkins, the present complainant, and John Johnson, of Troy, New York, September 18, 1855,. and surrendered and reissued to them May 15, .1860. On the 18th of the last named month, Johnson assigned his interest therein to the complainant, who is now the sole owner.]
The inventions alleged to be covered toy these patents are of great utility and value. The bill charges the defendants with infringing both of them. As it is not my .purpose to go, in detail, into the discussion of the evidence upon which the questions of fact in this controversy depend, it is important to set forth, as clearly as the subject-matter will admit, my construction of the patents, in order that the grounds upon which the decision rests may distinctly appear. This is especially necessary, inasmuch as there does not appear to have been any prior litigation of the questions involved, in which any judicial construction has been put upon the patents.
And, first, as to the construction of the Tainter patent There are, in the specification of this patent, what purport to be two distinct claims, in the construction of which the parties materially differ. The first claim, as I understand it, is for a combination consisting of three distinct parts, and limited to them. These are, the peculiar mechanism for forming the stitches, described in the specification — the draft and take-up roller revolved by mechanism on its axis — and the mechanism so connecting the draft and take-up roller with the peculiar knitting device, that the two shall rotate coincidentally, or in unison. These" three distinct members, in combination, form the organized mechanism embraced, in the first claim. The second claim is, in its legal aspect, not materially different from the first. It is fuller, inasmuch as it embraces, substantially, a brief description of the particular manner in which the three parts are combined and made effective in producing the intended result. I, therefore, regard the invention as being embraced in both claims, though more fully described in the second one. The attempt to separate the invention into two distinct parts has certainly failed. The same invention described in the first claim is found in the second, and no other invention is found there. In the first it is called a combination, in the second an arrangement.
The defendants insist, however, that the fact that a single invention is made the subject of two distinct claims in the same specification — in other words, is claimed twice — renders the patent void. This objection to the validity of the patent is placed
The utility of the invention is conceded, and its «infringement by the defendants, under this construction of the patent, is not denied.
The only remaining question arising under this patent is, whether or not Daniel Tainter is the original and first inventor. On this point, the burden of proof is on the defendants. ,The patent is strengthened, in this feature, by the testimony of Clark and Sand-ford. and I do not think that the proofs offered by the plaintiff are overcome by the evidence adduced by the defendants. It is not enough that the latter raise a doubt on this question. They must show, by satisfactory and preponderating evidence, that they antedate the invention set forth in the patent After a careful comparison of the whole evidence on this point I think they have failed to show that any combination substantially like the one described in the Tainter patent existed prior to his invention.
So 'far as the re-issued patent to Tompkins., and Johnson is concerned, the defendants' are charged with infringing the second claim only. This claim, when read by itself, is simply for revolving the shaping plates by a positive motion with, and at the same velocity as, the take-up motion, substantially as described. The object of this arrangement is to secure, by the lower and circular plate, an even pull of the fabric as it comes from the circular row of needles below, keeping the threads at uniform angles, and thus securing its uniform elasticity. The upper plate is oval, so as to pass the web in a partially flattened state to the rod or cloth spreader. The only difficulty with the claim is, that it is not so full and specific as it should have been. But, when read in the light of the preceding and descriptive parts of the specification, it must be understood to embrace the connection .of the moving plates with the take-up mechanism, and their operation together in the peculiar manner set forth. This is the only construction which leaves any intelligent meaning in the claim. This peculiar arrangement. of the plates and take-up mechanism, is not found in the Whitehead machine; nor is there satisfactory evidence that it existed in any other prior to the invention of Tompkins and Johnson.
As to the infringement, the only important difference between the arrangement and operation of these plates in the plaintiff’s-and the defendants’ machines is, that, in the former, they are fixed to the rod or spindle, and are revolved by the gear which carries it, while, in the latter, the spindle to which they are attached turns freely and without gearing. This difference, in the judgment of the court, is not material, but is only a mechanical equivalent, as the arrangement is, in all other respects, nearly identical, and accomplishes the same result in essentially the .same manner. . .
It is,.however, objected by the defendants, that the specification points out no means by which this arrangement can be made to operate successfully in a machine where the spindle carrying the plates runs free, instead of being driven by gear. This point is not free from difficulty. But, on the whole, I conclude that the patentees had a right to' assume that those who desired to understand all the conditions under which their invention could be operated, were acquainted with the preceding state of the art immediately connected with this particular subject-matter. A mere glance at the Tainter machine, with which all persons acquainted with this branch of business must be presumed to be familiar, and which is referred to by name ‘n the specification, would at once show that it is immaterial, so far as the function and arrangement of these plates are concerned, whether they are carried round by force of gear applied to the spindle, or on a free spindle, by force of the web acting on the plates. Indeed, the patent itself says, that it is not essential that the plates should be .immovably fastened to the spindle.
It is insisted, however, by the defendants, that this is an after-thought; inserted in the reissued patent after the patentees had seen the defendants’ machines, and for the purpose of covering what was not embraced in the original patent. But the court has no means of judging of the force of this objection, as the original patent is not in evidence. As no comparison can be made between that and the reissued patent, no inference of this character can be drawn against the latter.
It follows, from these views, that an injunction must issue against the use of the invention described in the Tainter patent, and also against the use of the one described in the second claim of the Tompkins and Johnson patent.
Before dismissing this case, I deem it proper to express, in explicit terms, the disapprobation, by this court, of the loose manner in which the specifications of patents are very often drawn up. I am well aware that sometimes it may be difficult to clearly and exactly
[From 2 Fish. Fat. Cas. 577.]