| U.S. Circuit Court for the District of Minnesota | May 15, 1887
Tbis is a suit in equity brought by the complainant against the defendant charging the infringement of two letters patent, — ■ one (reissue No. 5,487) dated July 15, 1878, to Alexander Rodgers as assignee of Essau Tarrant; and the olher (granted to John Orm, No. 168,898,) dated May 18, 1875. The complainant owns both patents, and the bill charges the infringement of the second claim in the Tarrant reissue and the first claim of the Orm patent. The answer contains several defenses. It denies infringement, and alleges that the second claim of the Tarrant reissue is void because the reissue has been unlawfully enlarged; and that both the second claim of the Tarrant reissue and the first claim of the Orm patent are void for want of patentability.
Before touching the question of infringement, J will first examine the defense of the invalidity of the patents as charged.
'Tarrant Patent. Essau Tarrant took out letters patent, August 25, 1868, “for a new and improved machine for rolling saw-logs.” As described in the specification, the apparatus rotated a log upon its axis upon the log carriage of a saw-mill, and the knees on the carriage were effective and essential to the operation. As stated by him, his invention had for its object “to furnish an improved device for turning or rolling logs upon the carriage of * * * sawmills, * * * .and it consists in the construction and combination of the various parts, as hereinafter more fully described.” The first claim of the patent was for a combination as follows:
“The tooth-bar, C, pivoted at its lower end between the blocks, E, which are adapted to slide in vertical grooves formed in posts, .D, whereby the said bar, C, is rendered vertically movable and capable oí: adjustment to suit logs ol different sizes, substantially as herein sot forth and shown.”
This bar, moving up and down by the side of the log on the carriage, rotated it upon its axis. The lower end of the bar being pivoted to and between blocks which moved in the grooves of upright posts — substantially a cross-head- — -allowed a horizontal movement — would move back and forth to adjust itself to the log upon the carriage. The power is applied to a projecting arm at the rear side of the lower end of the bar and moves it up and down and presses it forward so that the teeth shall take a firm hold of the log, and the knees against which the log is pressed holds it in place and forms part of the means by which it is rotated.
In the reissue the invention is declared to be a new and improved machine for turning logs, and it is described in the specification as an invention having for its object “ to furnish an improved device for turning and rolling logs to or upon a log carriage of saw-mills, and it consists in the application for that purpose of a tooth-bar connected with means for giving it the necessary movement, and further in the construction and combination of the various parts, as hereinafter more fully described,” and an additional claim was added to-wit: “I claim, first, the tooth-bar
The second claim in the reissue, therefore, being for a combination of elements, to-wit: “The tooth-bar, C, pivoted at its lower end between the blocks, E, which are adapted to slide in vertical grooves formed in posts, D, whereby the said bar, C, is rendered vertically movable and capable of adj ustment to suit logs of different si zes substantially as herein set forth, ” does not enlarge the scope of the patent, but corresjjpnds with the body of the specification, after effect is given to the disclaimer as I interpret it. The defendant’s counsel concedes the right to disclaim, and limit the description in the specification -of a patent and also the corresponding claim; and authorities are not wanting for such right. There is, then, described in the reissue an invention which is novel and original and of
The defendant insists that the second claim in tho reissue, as a combination claim, is limited to the peculiar and specific form of the devices mentioned in it, and described in the specification as operating in a particular manner. The doctrine relating to mechanical equivalents, as he states it, is not applicable to this invention. Tho Tarrant patent, as the pioneer invention, is entitled to a more liberal application of the doctrine of mechanical equivalents; and if the defendant has substantially made use of the patentee’s invention, by employing well-known mechanical equivalents to accomplish the samo result as the Tarrant combination dijes, it is an infringer. The defendant uses a machine which has an upright tooth-bar, with two arms or branches; one in front and one in the rear at its lower end, which makes it forked. Two steam-cylinders sitting on trunnions arc placed under it, one smaller than the other, and each arm of the tooth-bar is hinged to the outer end of the piston-rods of these cylinders. The front end is pivoted to a radius bar, the other end of which is hinged to the frame of the saw-mill. When the log is upon the carriage to be rotated, steam power is applied to the piston of tho largor cylinder, to which the rear arm is attached, and tho tooth-bar moves up causing its teeth to take hold of the log; at tho same time the piston-rod of tho smaller cylinder moves up, and the end of the radius bar pivoted to the front arm of the tooth-bar allows it to adjust it soli' to the log upon the carriage. The piston-rod, to which tho power is applied as it moves the tooth-bar vertically, also presses the log against the knees of the carriage, when the teeth engage it, and by these movements the log is rotated. If it is necessary to press tho log more closely to the knees, steam is admitted to the top of the smaller cylinder, which would tend to stop the upward movement of the tooth-bar, and draw, by this piston-rod, the bar more firmly to the log. Other operations are performed in the defendant’s machine, but only tho movements described are necessary for my purpose. The machine used is called the “Hill machine.” It is seen at a glance that if the radius bar used in the Hill machine is equivalent to the cross-heads and posts in tho Tarrant machine, and serves tho purpose for which Tarrant used them, the defendant’s machine, in the operation of turning a log, invades the invention owned by complainant. The radius bar in the Hill machine guides the lower end of the tooth-bar, and permits it to adjust itself to' the diameter and inequalities of a log, when tho power is applied to the rear arm or branch
It is shown by the evidence that radius bars were in common use as the full equivalent for cross-heads and guide posts, when the movement is to be guided in the direction and as described in the Tarrant reissue. In the Hill machine, then, I find a tooth-bar pivoted at its lower end, and guided so that the bar is rendered vertically movable and capable of adjustment to suit logs of different sizes, and this combination of elements performs the same office as the combination of corresponding elements in the Tarrant invention. So far, then, as this combination exists in the Hill machine, and the practical operation of the elements of the combination to rotate a log upon its axis upon a carriage is the same in both machines, the -defendant infringes the complainant’s invention. Tarrant was the first in the field, and.Hill follows his leading ideas as set forth in his patent.
Orm Patent. The defendant insists that the first claim of the Orm patent is void for want of patentable novelty.
This claim is in the following language:
' “In a log-turning device, tlie spike-bar, F, having spikes, F', in combination with the piston-rod, T>", and the piston-head, W", of a steam-cylinder, A, constructed and operating substantially as and for the purposes described.”
In the year 1871 or 1872, John Orm, seeing at Muskegon, Michigan, a Tarrant machine in operation, working, as he thought, too slow, and having previously seen a steam freight-hoisting apparatus on a steamer, which consisted of a platform upon which the freight was placed and hoisted from deck to deck by a steam-cylinder, conceived the idea that the tooth-bar could be operated by steam; and he built what he called a steam-cylinder log-canting machine, which consisted of two cylinders five feet long and eight inches in diameter, with trunnions on each for oscillating, and bolted together with a steam-joint. It formed really but one cylinder,'with piston-heads as usual in steam-engines, and with a short piston-rod connecting with it, to which was attached a tooth or spike bar. There -was a pressure roller at the back of this spike-bar, to hold the bar up to the log. This machine he afterwards made with a single cylinder, the tooth-bar being attached rigidly to the piston-rod, and used a pressure roller. This -was the machine patented. The cylinder, being on trunnions, allowed horizontal motion to the bar, but the resistance of the knees would throw the bar back when it was moved vertically, and the teeth engaged the log. . Unless there was a pressure roller to hold it up, the bar would fall back clear o'f the log, and would not turn it at all. Such is the testimony of defendant’s, expert, Bates. John Orm saw this, and his patent provides for a pressure roller permanently attached to the frame of the mill, and, to secure its operation to hold the tooth-bar up to the log, he has an oscillating bar nearly upright, pivoted to the frame of the mill, and near its top, and at right angles an arm extends towards the tooth-bar, and at the end of this arm is securely attached a pressure roller, which bears upon the rear of the tooth-bar.
The conclusion arrived at is that the complainant is only entitled lo a decree, as prayed in his bill, for an infringement of the second claim in the Tarrant reissue, and it is so ordered.