Western Telephone Mfg. Co. v. American Electric Telephone Co., No. 976

No. 976 | 7th Cir. | Apr 12, 1904

BAKER, Circuit Judge."

The main divide in'this case, as presented in argument, lies along the line whether, as appellees insist, Fisk intended the operator to use the plug as a tool with which to restore the drop while the operator was moving the plug to the mouth of the jack, or, as appellant contends, he conceived the idea of having the plug automatically and inevitably restore the drop by the plug’s insertion into the jack. The expressions in the patent, “the drop * * * is lifted by the plug as it is inserted in the jack,” “the drop * * * is raised by the entrance of the connecting plug [into the jack],” “the drop * * * to hang in front of the jack and be lifted by the plug as it is thrust into the jack, [and be held by] a trigger or arm * * * when so raised,” leave no doubt in our minds that Fisk contemplated automatic restoration of the drop by the action of the plug during its insertion into the jack.

Did he disclose a practicable means for carrying this idea into effect ? “Plug K” of the patent is nowhere specifically described or pictured. This omission and a comparison of the size of the jack opening with the distance through which the drop must be raised to reach the catch as exhibited in Figure 1, have led appellees to assert that the patent shows no way of restoring the drop through the action of the plug except by using the end of the plug to poke (as one might with his finger) the drop into its latched position before inserting the plug into the mouth of the jack. But the drawings are not required to be working plans. They must be read in connection with the description and claims, and any inferences arising from omissions or inconsistencies in the drawings must yield to a legally sufficient specification. “Many material objects and operations,” says Robinson (vol. 2, § 491), “are so familiar to the inventor and his readers that their specific description, or even an allusion to them, would be superfluous. The law recognizes these difficulties in the way of an absolutely complete description, and overlooks the defects which they occasion, * * * though it omits appliances, modifications, or processes which persons skilled in the art would know were necessary and would themselves supply. Though it fails to describe implements and materials that are common in use, or methods of construction generally practiced in the arts, it may be complete enough to put before the already trained and informed intelligence of the reader an accurate and entire picture of the invention, from which he can understand it, construct it, and use it as easily as if all these familiar acts and objects were particularly described.” The specification calls for a plug of such a form in relation to the form and location of the drop and jack that the mere act of inserting the plug into the jack will restore the drop to its latched position. Plugs with hafts to limit the thrust were common. It seems clear to us that any one who was familiar with existing switch boards and plugs, and who, on reading Fisk’s patent, desired to embody the invention in the specific form of Figure 1, would see that the blade of the plug as it was thrust into the jack would not lift the drop into its latched position unless the bent portion of the drop were extended to equal the distance between the latch and the mouth of the jack, and that, if the drop were not so extended, the haft of the plug should be of a form and size to lift the drop into its latched position. That is, it would be purely a matter of the particular builder’s choice whether he used the extension on the drop or on the plug or on both.

It is not denied that Fisk’s device is useful and novel, and that the exercise of the inventive faculty was required in its production. The reference patents are claimed by appellees to limit the scope of the invention so as to save their device from infringing. Inasmuch as Fisk was the originator of the principle of restoring the drop by the contact therewith of the plug as it enters the associated jack, and the deviser of a practical embodiment of that principle, we deem the prior exhibitions of automatic restorations of the drop when dissociated from the jack, and accomplished by means dissimilar to the contact of the plug with the drop as the plug enters the jack, to be utterly irrelevant to the question of infringement, as they are confessedly insufficient as anticipations. If appellees are using Fisk’s invention as it is defined in the patent, it is immaterial how much of the prior art they also employ. Appellees’ drop is restored from a horizontal to a vertical position ; Fisk’s from a vertical to a horizontal, according to Figure 1 of the drawings. But in the description and claims there is no limitation upon the position of the drop except that it must be in front of the jack to the extent that the plug will lift it to its latched position as the plug enters the jack. Appellees’ drop contacts with the plug through the cam projection on the drop. We have already stated that we regard it as immaterial whether the contact is effected through having the plug reach up or the drop reach down or both. We therefore find that appellees’ device responds to the claims of the Fisk patent as we read it.

That Overshiner improved upon Fisk, and, indeed, developed an idea that never occurred to Fisk, is no warrant for using appellant’s property without leave.

The decree is reversed, with the direction to enter a decree in appellant’s favor for an injunction and an accounting.