*1 830 views, held as these he clearance, ease must
only 13
it is conceivable
inches
of the Su
been controlled
the later decisions
might be
to have
to me that this act
held
there,
duty required preme
danger
here,
Court.
negligent toward those whose
omnipresent during
operations, and
moving
switching
ears
them to
sides
cited,
those
already
the decisions
(see
Pac. Co.
dissenting opinion
Southern
in other
after the
Berkshire,
419,
Ct.
eases which
decided
415,
v.
41 S.
254 U. S.
Rogers Case, classify
operating
obvious
these
was not
162,
335);
plaintiff
65 L. Ed.
but the
injury
dangers as among
it was to
those
risk of
injured.
duty
so
To those whose
from which is assumed.
v. Southern
switch,
observable
Jacobs
the situation was
throw
Ry.
588,
Co.,
229,
60
company had
241 U. S.
36 S. Ct.
L.
glance.
Prom
(hoarding moving train);
Ed. 970
Boldt v.
self-protection.
right
expect
Chesa
Pennsylvania
441,
218,
Co., 245
R.
U.
38 S. Ct.
Nixon,
v.
271 U. S.
S.
peake & R. Co.
O.
139,
Pennsylvania
ears);
62 L.
(going
Ed. 385
between
914;
495,
46
70 L. Ed.
S. Ct.
York,
(C.
McDougall,
C. A.
Lutton,
F.(2d)
29
689
New
& L. R.
v.
R. Co. v.
C. St.
Co.
supra (brakeman
open
struck
overhead
6).
low
Because the situation was
bridge). Compare also Hallstein
Penn
can
v.
obvious,
location of the stand
the mere
sylvania
(C.
F.(2d)
R.
A.
594
6)
Co.
C.
30
negligent
been
toward
not be said to bave
(falling
tipple);
&
them,
coal
Norfolk W.
and,
plaintiff’s
because of
Ry.
v.
(decided,
6,
Co. Kratzer
be
C. A.
experience,
him to
C.
failure
warn
January 24, 1930)
F.(2d)
(employee
522
category.
overhang
the same
ware
yards).
opin
struck
train in
nor
am of the
location
stand
I
Prom neither
ion the
directing
company
right
failure warn could the
Court was
District
gen
verdict.
consequences of a
reasonably expected
injurious
em
erally
experienced
nature
ele
ployees operating
is an
the switch. This
mentary
negligence,
test
the existence
only a
of that
plaintiff
claim
breach
can
employees of
class
owing to
duty which is
REBOUNDS
al.
SAR
WI
PATENTS CO. et
v.
aeting
injured.
I
when
find
he was
AUTOMATIC
ANAC
MACH.
CORPORATION.
duty.
v. Balti
Randall
no breach
such
t
322,
Co.,
478,
3 S.
& O. R.
U.
Ct.
more
Appeals,
Circuit Cour of
Sixth Circuit.
Knappen, Judge, dissenting. Circuit organized machine involved and dis- use the method of the third closed the and, well, the use of the subordi-- partial apparatus nate and of the first. logical ap- the most method of seems to us pat- consider first proach, to merits, validity issues of ent on its patentees just infringement, as if attempted pro- no further and different S32
teetion; Lavenberg and if that is found valid In June, 1904, Inwood infringed, next consider what workholder, complete their devised their effect, any, should other ma- and their method. The ’ , controversy. chine and very into soon went *3 general use, relatively and in a time short validity patent, As of the adopted were by many under manu- license An- clearly one invention. the issue is of parts country. facturers in different ticipation, that word to differen- is used There is no doubt that created a new invention, tiate is not claimed. from lack of industry wirebound box business. The —the were wirebound wooden boxes Before long and delayed, issue was They top, bottom, two comprised common. litigation ownership; there was as to but rigid- give sides and two To endwise ends. the record shows in 1921 were by ity strength, supported and were plants 70 licensed manufacturing an annual Sup- such frame members as were desired. total 25,000,000 After these boxes.2 laterally strength port box and around the established, the title was infringe- such given series of cleats were two or more appeared ments had stopped, had been top, bottom and —four in a series —for litigation adjustment, until defend- that, These cleats beveled so sides. were machines; in began ant this ease make its together, they square and, frame set made efforts, after some unsuccessful it built an they kept while together, tacked their form machine, effective was about Suit Thereupon on. the four sides were nailed promptly against brought Gibbons; a user, outside, oppo- run wires were around and, pending suit, was through eleats, stapled the sides and site brought. This work was done manu- cleats. ally, all at once or at different times as and happens As often with so an invention needed. practice, which revolutionizes commercial step patentees advance made over early (Hamilton, 373,828), as 1887 As prior simple and, art at was looked thought that be commercial was there would subsequent experience light and selling a wire- value in plau- knowledge, its inventive character is shipped blank which could be bound box challenged. sibly that, at record shows up by the How- flat form and set user. time, rep- the Rosbaek machines critical (1891 473,479) developed use enstine — art; highest development in the resented the staples in knock of wire and down comparison and with thém should be made. early (Knutson as 1894 cleats. As traveling had a belt or Rosbaek endless ob- Uhri, 518,038), before, if not was They conveyer pair conveyer chains. machine for mak- served that automatic of a were fed forward over the surface get pro- in order ing such blanks mass suitably spaced Upon conveyer, table. duction, Greenstreet was desideratum.1 placed lumber, apart, strips were idea, had similar but (1897 579,574) — to foxunthe two series of destined eleats provided no Rosbaek elaborate used cleats. strips sides the box. The were four (1898 608,796 purpose machines — length cleats. long as the total of the four day drawings); —14 on the same sheets ma- Upon placed the eleats was the side later (608,917 sheets); and two weeks —16 terial, desired, which form was sheets); later (609,638 —11 preferably of thin was a continuous sheet year (614,348 Healy, sheets); lat- 9 —with wood, materi- like veneer. side Above 623,258 (step-mitering, in 1899 er —14 al, strips, placed and over the cleat was on 630,303 636,- (625,958 sheets); and the con- a continuous wire. As side sheets). again Uhri had 068—with tried veyer advanced, passed un- (608,809 sheets, figures). was material —27 placed device, recounting, three other efforts der a wire which Without them staples straddling wire, before 1904. It and drove machines made such failures, into the cleat. through that all these efforts were material is clear side conveyer engaged had built no machines means Suitable it for- box blanks eould made at a of this material drove wirebound the rear conveyer. patented along with the When profit. The various machines were ward stage finished, tried was thus preliminary built or were and aban- either never doned. machine, making 24" 12" boxes One figures 12,000 nearly (for Oats) 1 It took 66 to de out four words turned Quaker 18" per minute; another, per scribe this machine. hour. boxes Later, he length, This not successful. rigid throughout the blank machine was spent employed time was Uhri and some machine, Rosbaek took it another ma- experimenting Uhri properly saws, with one spaced had cutters experi- points chines. four laterally, that, moved it so at the After some by Stephens, rigid box, mental and unsuccessful work tended for comers of the below, being re- the boxes success- strip cleat never able to make was cut Healy the business. sulting severing strip fully, into Mr. into came pieces beveling four the This was 1894. Thereafter he stockholder corners, president, manager, and chief lower when the blank companies endeavored points severance, folded at the bev- different After the Uhri proper develop miter a machine. eled ends of the cleats made and Uhri machines joint. The was also severed and the Knutson side material *4 abandoned, experimented it with and partly through or cut that would bend been so Healy Rosbaek, expert me- employed an employed at the Rosbaek suc- comers. shop in Chi- who had diminishing size which chanic and inventor cession of cutters of continued over sev- produced step cago; then his efforts were miters. The blank was years successive ready shipped. Laven- and he built several Inwood and eral Eventually to berg plan, they and went back machines. were all dis- discarded this art, begin again thrown the manual to the search carded as failures and dismantled or They satisfactory yard. Healy brought took automatic result. out Rosback’s every preformed cleats, expert al- the so-called another mechanic —Flora. He always which, turn, carpenter developed had used in wood- so was a machine They en boxes. beveled ends of these so machines built abandoned. various joint. patented that the final result would a miter Rosbaek and Flora were They preformed patents assembled these cleats— shown in the record became usually eight, Healy’s company. (Flora each —with property two rows of four was edges spaced apart 775,622 Case.) record, beveled down Gibbons —1904—see trifle, desired, assembling Uhri, Rosbaek, in an hold- All this work ing they frame machines had been with reference workholder, called a Flora they placed type box; on which also the four sides position the bent veneer material, might sheet of ve- be a continu- were made of one continuous side strip ous might comers, of veneer sep- neer, four which would bend around the arate might by cutting suitable sheets. The workholder thus bending and the be aided placed upon laden way was then part through. type endless car- the sheet rier, and, being supplied, many wire approved was fed box useful and was stapling under a mechanism, trials, and the bank but could not be profit made at a delivered as a product. finished competition and in ordinary as- with the wood sembled elements box, thus received it eould treatment in unless be turned out auto- a single automatic machine, while machinery. Rosbaek matic All these machines over had submitted assembly them after years to two all these were of — n type Rosbaek processes successive machine in they accomplished sci far as that. machines. purpose they at all, single used rigid four- length cleat until the side material was If reference were to be had attached, and then severed the cleats. art, paper showing the machines above men- tioned, might, purpose of this time, At about this in another effort opinion (although we prepared are not to succeed, again employed by Rosbaek was do so otherwise), patent- assume that Healy, resurrected some of the machines ees’ combination old material feed- brought from his yard, shop them to the ing, feeding wire stapling mechanism doing Healy’s work, spent some months preformed with the old cleats, would not in- with failed, mitering them. This also invention; volve but in this ease junked, machines were undisputed history of practical art blank machine Up dismantled. stage, which, in our judgment, makes that conclu- Healy, Mr. since in, he came had impossible. sion spent of his efforts and $62,000 money About Henry of his Stephens (as well as began capital whatever try to make wirebound furnished), boxes. This others had and no was un- machine had der a machine which Howenstine day had built able to run for a ever been such a to make the patented Howenstine way make boxes boxes. as to that could be sold at Stephens, Elora,3 type Uhri, Eosback, and profit. A hundred of this few boxes sold, they Inwood, had been indeed for had made and seen been but time always from what they after came is now ob- “tinkered hand” said 'to have product itself be- vious. more Their conduct is far convinc- machine —the ing Healy’s re- than imperfect. present opinion expert, Mr. total of some too $42.31; of who turn and the failure thinks that not have been so had been he would stupid. demon- all these machines and changes improve- strated, unless vital say It is a new simile could, ments be made. progress along a an art travel road. al., When Eosback, Uhri, et as road build- In- Early Healy Mr. interested ers, saw that an machine was automatic wood, plant came to the and undertook who point pre- reach, must familiar practical Inwood as- make formed eleats, in connection some tem- contract Lavenberg with him. The sociated porary assembling presented di- means, Healy and Inwood relations between terminal, rect road to that take that important. Healy believed still not now thought road must been the first great open, field was a that there every traveler; they all believed some of he could control this direct obstructed as to road existing patents, plus claims of make And so passage impracticable, Lav- Inwood and necessary improvements. *5 which,they detour, undertook a troublesome and, in betterments enberg devised certain improv- did and opening never succeed shop order for 1904, placed a machine May, travel, ing. public The would They type. the Eosback a machine of new. years 10 Eor whole road remained unused. contemplated single rigid cleat, to still the develop detour, to the their builders tried to by opera- and be severed second Then these good road, make it a but failed. connection, they In both testi- tion. though patentees effective, simple, found an testimony is not undis- fied-—and the obstacle, overcoming opened means of considerably puted but confirmed —that direct the detour was road, and aban- they that certain could observed difficulties doned. It a bold critic who would would be preformed using old avoided say that were incom- all the older builders they eleats, attempt but concluded that an way petent, because the to clear road bring greater do so would than difficulties always had been obvious. benefits into manufacture and that They impracticable. adhered was therefore practical advantages change few later, old form. A weeks preformed that were the cleats could be preformed that idea cleats could quantities very cheaply; that and short and temporarily and assembled held in a former used; pieces otherwise could be waste that permanent ap- fastenings while the were eleats, operation mitering the second They plied developed to them. occurred avoided; with all expense, and was time drawings into this idea a definite form. that other than miters union forms could be They practica- satisfied that it was (as became tenon); and and used mortise ble, shop June directed the inventors also avoided one of the chief changes make in the existing machines, order troubles of viz. in' the old necessary preliminary to construct step-mitering solid the ends from the cleat partially slitting completed workholder. was continuous October, sheet, continually 1904, cutting and delivered found were was knives through spots successfully, cutting the sheet into to work were at wires, injuring dulling applied growth once for. The commercial saving per the knives. There was 75 By 1908, began. output 2,000,- cent, in lumber for cleats, the cost of the boxes, 4,000,000 in 1909, 000 6,000,000 savings in this, time, labor, with the in 1910. large and repairs, successful created busi a record Seldom does show such dem- years 10 ness out what been for practical value of what onstration» seems like failing struggle. are convinced We simple change. preformed step patentees these advance taken there, were various cleats workholders assembly 3 temporary were familiar to all me- just 1904, even after before and Inwood spent brought Healy $1,200 building in, chanics, things and these had been at hand trouble. Flora Flora’s solution of the adhered yet time; during all this ten of ef- -single idea, long cleat but discarded even by capitalists fort and inventors and the opposite using “pusher,” the one instead feed expenditure large money, amounts of rollers.
885 patentabili pushing well of all came over into field of function. The same fa ty, leading eases, too cleats follow defined machine would size, ap citation, proper spacing miliar for and as these three exhaustive were of traveling plied but to a new association of old elements had no connection with the chain; leading See, g., g., dropped to a Wash e. in from above. new result. e. were They Mfg. primarily positioners; push- All burn & Moen Co. v. Beat ’Em Case) ing 143 (Barbed they function is incidental Barbed-Wire Co. Wire 154; 283, 12 443, 36 positioning Krem the travel- U. S. S. Ct. L. Ed. function inherent; Case) necessarily (Collar entz Button and is not v. S. Cottle Co. chain 558; 719, positioning, 13 37 L. Ed. are essential 560, U. Ct. S. S. variety of pushing York v. Con be done in a Diamond Rubber Co. of New could ways. to'adjust Tire (Grant altered solidated As the device is Rubber Tire sides, 55 L. Ed. all Case) to a box of wider or narrower U. S. (Flota changed Hyde except the first are 527; Separation v. devices Minerals They firmly Case) accordingly. cleats, Ct. hold the tion U. S. Ed.) tendency, 286; (6th against any Patents in their L. Ed. backward Walker They proper place other. relation to each § pertain develop thought to and most serious impresses us as the What preformed inventors that the cleats can be patentability is the claim challenge to position during assembled and held applying tested when the They stapling operation. an ex- giving to defendant’s it the .machine thought upon the Rosback crescence single long necessary an in- to make out construction When, in the cleat. Rosback fringement, patentees we see all machine, cleats later came into the four did Rosback machine and take the already severing, existence By pushers.” extra “add some stapling, positioned the wire machine used meant the Rosback *6 pushing operation had been finished. We conveyor chains; parallel that each of these any during that at time can now see lug, projection carried a or which chains might et al. have long efforts, Rosbaek long un- against the rear end of the rested preformed cleats and assembled used the cleat, pushed the cleats severed and so upon pushing, chains these them through ma- material the attached side holding blocks; spacing, art but chine; final form and that defendant’s stationary years, all no one stood these while it machine has used these chains and put on “some more saw solution. To this pushers, and in these addition has positioners them pushers,” and utilize as chain, locations, serted selected eleats, very simple preformed after these blocks, project adjustable up which between way; pointed inventors had but that preformed whereby cleats, ends of and, point out, de- persuasive, later we not push each block serves to the cleat which holdbacks, as fendant has added well also immediately ahead of it. pushers. “adding If this statement about some reaching patentabil conclusion of correct, pushers” were and were the extra giving publie ity, and reasonable force to the unanswerable; truth, it would be but whole creation of a indus acceptance and the new complete. think neither exact nor try, overlook the doubtless substan we do not pusher a pusher Rosback was The patent played part another which tial posi- nothing else; it had no substantial This was the so-called result. commercial function; long tioning cleat did not 1905, covering patent September, product positioned secondary have for a overlapping edges, blank box with a positioned way; it was with reference could be constructed which this machine by moving stapler the chains. The de- including certain details. when Until after fendant’s machine uses side five the time when the machine invention was these devices which push- counsel now call broadly complete and the order for its con They all ers. movable the chains given, patentees, struction had been these positioning purposes. like one, The rear them, positions preceded planning while it all had been rightly the rear cleat who with reference which is to a box having fol- the manufacture of for its side low, may directly to have, be said or indi- sheet veneer, material continuous rectly, pushing function right exercised folded corners would turn at the an parts bend, ahead of it. might all of The next gles three with a be accelerated devices no necessary pushing slitting; have by partial but later observed 8B6 produce important perhaps that the machine could be used to method is a vital entirely separate sides,4 part concept box blank four with of the machine invention. precedes that when it was so could so used which underlies and space the sides and cleats when the blank independently patent- or not involve an edges overlap, was folded with one method; ma- able either event alike the edge adjacent side, according flush patentable. chine practice building the universal wooden product Nor can invalidate specification ap boxes. The machine patenting double or plication might might shows or any analogy theory. monopolies to that produce this result.5 At the same time came granted by the two were not coextens application patent upon for a this patent pertains ive.6 The machine as product; blank a box which would sembling preformed holding cleats and them machine, provided ar built this it was proper relationship while side material overlapping ranged separate sheets with binding this, wire are attached —and no mat edges side. This instead continuous ter whether the side material is a continuous difficulty, application went without slit, both, plu sheet or or is a to be folded or reissued in 1905 and was issued rality boards, sheets or whose 1907, expiring in 1922. It was sustained edges overlap, or boards which do over litigations. Undoubtedly, for most in various lap edge contact but leave either an comer purposes, overlapping edge box was an comer, slightly open or is boards or sheets improvement over the continuous side box. come the comer slats which do not near The.public favor which has been mentioned produce can be made crate; all these forms measure, due, in to this some was doubtless been, in machine; most of have on the them overlapping edge Non feature. constat words, quantities. In other substantial accepted the older form would not patent pertains cleat treatment. that the on the market with favor. clear product patent pertains to. the selection overlapping edge box could not have been material, and treatment of side covers product market unless it had been success protects only several forms of machine, which enabled it to of an automatic Plainly, of the machine. the ma for suc cheaply. give To the credit made underlying thing, was the invention chine product and preferred form of the cess to quasi generic; product patent is a side manufacture, ignore means of its quasi specific. issue, patents rela Even with possible, is an made the success means alone tively completely generic specific, Perhaps reach. which we cannot inference circuit, established, at least in this rule is *7 enough divided; remains credit should be the generic patent applied for that the earlier in the machine. persuasive of invention will be neither invalidated limited the nor specific patent applied copend for and later disclosure suggested that the It been has ing, though application even later devel the patent left no room for by method made the ops into the earlier issue. Much less will sug This patent". invention limitation, there avoidance or when be force, patents gestion cannot be of since the patents the are so far from coextensive two prior as copending and is not art one may infringed in that either one be without they against other, had not both the even fringing the other. day. See cases infra. been issued on the same (cid:127) generally carefully To consider and pri more suggestion is meant that the If the patent (as upon a later issued effect and that the mary thought in method lit was issued, of an earlier simultane- machine) make a ma was needed to tle no invention (as ously applied for, copending patent and conceived, chine, method had been once Clearly monopolies product): if the true; cannot militate may but that be they identical, granted patents in the two are patent validity against the years and there more than 17 would cover simultaneous, practically two are when the and the later patenting would be double concept in the involved ease the for in such 6 typical product patent is: A claim of the 4 cleat ends beveled seem that with It would comprising blank, foldable a wirebound “A impossible lap are cleats unless the corner is a plurality edged sheets, straight secured wires edges; unequal side while from the distances connecting sheets, cleats secured to and said and lap step ends, inevi is corner .mitered with edges sheets, to terminate short said table. equal of a thickness the latter a distance sheet, right-angle, whereby, It shows both the continuous sheet sides "folded at when a adjacent separate sides, overlaps of an as alternative. It does end the end the four of one sheet patent, corner, dearly lap Compare disclose mention nor sheet.” claim of adjustment particularly adapted
an
to that result.
infra.
patentee
same
for the same
sec-
invention the
invalid.
when
are not
would
Even
patent
ond
(or
was void-for the reason that the
identical,
tbe small
earlier
field
tbe
patent-
prolong
mo-
new or later
larger
tbe
later) is included
tbe
field of
beyond
nopoly
period
law.
allowed
(or earlier),
later
as
small
to this
there
* * *
words,
In other
the division
field,
grant
monopoly
exten
a double
original application
patents
into
though
Here
two
practically,
not in form.
sion—
attempt
patent, as
relatively
nothing more than an
generic
are to be classified
inventions,
device
the same
specific,
machine, process
aswell
those
*
* *
discharging
when
different
product patents
overlap,
functions.
thought
propositions
it follows from the
above
part only.
another, but
has been
Hence
quoted
pat
opinion
from
Miller
ease of
that in
cases thus classified the later
Manufacturing
patent
ge-
the v.
Co. that
invalid,
is
ent
at least to
extent
invention is
the fact that
Language
neric
not avoided
monopoly is
is to
extended..
prior
issued
Eagle Mfg.
[patent]
S.
invention
has
in Miller v.
151 U.
found
improvement
invention,
for a
on that
186, 14
Ct.
L. Ed.
distinct
for, provided always
ap-
conclusion,
language
support
that the
claimed
argued
plication for
stated,
patent
the first
and the circum-
the facts
it could bo
later, gen
filing
specific;
stances
it are not such as to dedicate
the earlier
them;
generic
public.
regard
The case
eric.
the court did not so
invention to the
But
Eagle
therefore,
Manufacturing Co.,
v.
Miller v.
of Miller
no such construction of
it, is
Mfg.
open
early
sustaining
us.
the stead
claim made for
Co. now
As
C.)
distinctly
contrary.”
(C.
authority
second
F.
Julien
Case
Judge
pointed
that, though
one
Coxe
out
pages
Judge
F.,
On
and 727 of 80
claim
may seem to have broad
considered,
argu
merits,
Taft had
on its
specific
same
based on the
another
claim
because
ment that
later
invalid
yet analysis
there
disclosure,
show that
monopoly,
disposed
of it
extended the
really
scope of
such difference but the
no
by saying
minds,
our
this conclusion
—“To-
same; hence,
each is
invalid.
ad
reduetio
absurdum.”
very principle
developed
applied
Thompson-Ohio
These
Cases have been
Eagle
Mr. Justice Jackson Miller v.
frequently followed and applied, and we
Mfg.
Accordingly
Co.
it was held in the
universally
think the rule is
accepted
now
(New York) Thompson
Case, 71
Co.-OhioCo.
typical
properly
separable
F.
(C.
Wallace,
C. A. 2.
J.),C.
where
generic
specific patents,
the incidental ex
generic
inventions
monopoly
tension
smaller
does not af
structure,
may,
option
at the
validity
patent.
Century
fect the
of either
patentee,
by separate
patents,
secured
Westinghouse
Electric Co. v.
Mfg.&
Electric
Judge
(71
and both are valid.
says
Wallace
(C.
8)
350, 353,
Co.
C.
Judge
A.
191 F.
San-
F. 405):
says:
born
“Some observations in Miller v. Manufac-
“His
option
is the
[the
to se-
inventor’s]
turing
[Eagle]
seemto
created some
cure all these
single
inventions
patent,
*8
misapprehension
scope
of the
deci-
that
of
by many
or
patents, and the fact
de-
that he
part
sion on the
of
profession,
the
the
but
of
application
scribes all
them in his
speci-
or
principles
opinion
enunciated in the
are so
for an
patent
fication
earlier
one or
secure
plainly stated that
observations,
those
when
them,
more of
does not
invalidate
subse-
application
considered
to the case be-
quent patent
himto
for those inventions there
court, ought
fore the
not
misconceived.
*
“*
described but not claimed.
The
The court decided in that ease that the two.
sum the whole matter is
that while
ear-
patents Wright
were in fact for the same
patent
patent
lier
avoids a later
same
the
invention, and consequently
patent
the later
patentee for the invention claimed
se-
and
was void.”
cured
the
does
by
former it
not invalidate a
In the Ohio
case
the same title which
patent
later
him
a distinct,
different
reported
reached this court and was
in 80 E.
separable
generic
and
invention whether
or
712,
727, 728,
page
Justice,
Chief
the
specific,
original
proc-
whether an
machine or
speaking
court,
for this
said:
both,
ess,
improvement
or
or an
thereon which
**
*
actually
is
not
claimed
ear-
the
upon
“The case
counsel for
which
defend-
patent.”
lier
chiefly
ant
relies
support
argument
his
is
Manufacturing
Miller
[Eagle],
subject
v.
151 U.
court further discussed
the
310,
Dayton
S. 186,14
121,
Ct.
38 L. Ed.
it
applied
S.
where
and
the rule in
West
Co. v.
Co.,
562, 573;
when
patents
inghouse
held that
issued
the
118 F.
and
Cleveland
182, is
product patent will
the ticular ease cannot invalidate an otherwise
valid
be
uct
see Walker
thus, in a
to the
product
patentable.
tinction
Co.,
issues
or
the latest
tension is
got
neric
product,
the
product patent,
makes
effect of
between the
cial sense. If
tension of
tending the
because, in the former
ally, or
that
gerford
suit.
scribed
entable,
extension
ease of
point.
Eagle Mfg.
control of the
are
Co. v. Detroit
date
Second C. C.
so;
double
Mosler
constructed
“The defense
claims are identical
it
less
That there
cheaply enough to be
127 U. S.
So far
Calkins
of issue
patent..
claims,
equivalent
Judge
during
first.”
* *
[*]
no
cited
and that it
same,
“
plausible
Brass &
makes the defense
an earlier
for the continuous
inventor and the
more
difference
of the smaller
inevitable, while
one
patenting,
applications is that made
another
Safe Co. v.
commercial
as there is lack
inventor for the
*
claimed,
patent;
(6th
to
generic patents, resulting in
monopoly is
ease
Learned
earlier and
separate
gets protection
the existence
of an
A. in Traitel Co. v. U.
and
monopoly
made.
applicant, the
the effect that an earlier
Co., 131 F.
may well be
or
is
product
will
resulting,
is essential to make the
Ed.)
is
he
Copper
no double
less
machine,
It
supra,
happens
another
good only
machine, machine
product
application is
view the fact
invalidate a later
gets
will
but this
extend the
says:
§
S. Ct.
Hand, speaking of the ent for the formed
class, the
probable
inventions, separately
discussion in
sense,
Mosler,
also
in
turn
it from the
earlier
latter class of
or the
Co., 22
monopoly,
later
indeed,
disregarded,
of the
process, or manu
language
substantial
to
or
resulting
process by
edged
marketable,
patenting
chance of
perfect
out
when the
the latter
be
process,
double
said,
really
new
other,
monopoly ex
machine
a later
in a commer
monopoly
858. One
and the
Bahmann &
applications
later
so in
F.(2d)
original
beyond the
quite
more
strip.
32 L. Ed.
particular
claims in
Miller v.
T. Hun
that
analogy
defense
patent
of this
patent
issued
claims
one
an ex
issued
unless
which so
as de
effect,
prod
cases,
page
class
later
than
*9
par
pat
true
dis
can
ge-
He
the
ex-
of 361 of
it
can be made
product ly
not result in the
gets a
pen,
the claimed
than
would not
result and
Mosler
method
principles which
erwise
the method could
produced only by method,
can it
in the
prior
upon its conclusion
will
side blank or crate
sistent with
now
ruled
this were
result
Office,
tioned that the method was
result
tirely
applications
on the
clear
relied
patentably new, and it was
ably
process
safe frames. There were involved the
process
process described,
sis
cal
specifically
approved
opinion,
ents
901)
dismissed the bill
by
hand
appealing in
366, 29
;
As noted
unpatented open
for one. So
patented
use of
make
unquestioned rule that
was an
new in the
as it
but
by
upon analysis
art
clear
hand, or
practical
as
had found that
upon.
fact
is
under
earlier
construed,
Case
ease
feeding
and then added
Expanded
intended to
thought
ease
true,
did
result,
the claimed
bending
that the
U.
stating
permit
patented machine. The
angle
must
against
product
therefore is not
above, may
form. The
ought
here,
patented
filed
S.,
process,
invalid. The
market
process patent.
were not
the same
construed,
patented product,
adopted
to
its
which
for,
therefore,
that the result
as
application
it is
produce only
8 Ct.
bar
practice
subject-matter
the Rosbaek
that the
process
its
the
it
and
product
patented
by
Co. v.
another.
S.
comer
to both
could
angle bar,
can
if
be
blank. The
bent
reason for
not.
this
monopoly
the two
that the Circuit Court
angle
lap
so,
Circuit
the
placed.
justification
for two
inventor
be made otherwise
the Circuit Court
be taken
L.
be
so
for use
Bradford, 214 U.
referred
blank,
machine, or
occasionally hap-
among eopending
it would be over
specific patent
conflict with
product
corner
purely mechani
product
features that it
patents,
application,
pertinent
Indeed,
facts stated this
patent
Ed. 1034.
result
Supreme
nothing patent-
bar to
obvious
machine.
patents.
of the settled
opinion
now
been
think, depend
patents,
machines,
may may
Court
It is
bent
depends up
is
holding
of the
continuous
inventions,
It is men
and where
one
especially'
blank,
patented
patented
could
disclosed
to;
clarified,
machine
the sub-
was not
produce
for the
without
for the
not
Patent
where
(22 F.
is not
whol-
Court
is so
con-
pat
oth-
pat
Nor
ba
the
en
or
if
jeet
feeding
matter,
generic patent
work-controlling
means
fas-
and that the
longer
securing
practical
tener-applying
will extend
mo-
term
mechanism
said
nopoly;
binding
is an
intervals
evil—sometimes
means across the
between
spaced
together
remedy
and sometimes not —the
is said
secure
be
cleats to
them
Clearly,
spaced
Congress,
with
with
their
form a foldable
not
the courts.
relations to
during
blank.”
all
interval between the machine
patent
issue
invention in 1904 and the
of the
The mechanical difference between the
public had
thereon in
unrestricted
drawings
form shown in the
and de-
right
machine, excepting
to
make
use the
to
patentees
form,
fendant’s
as-
third
is that
edge box, and,
ex-
overlapping
since the
positioned
sembled their cleats and
them in
piration
product patent in
of that
independent
the workholder, which was
of the
right
public
make
unrestricted
to
has
moving conveyer,
put
holder on
except
any
box, by
machine or method
conveyer
along.7
to be moved
sub-
patented
one.
stance this workholder consists on each side
four
pockets,
in each of which
entirely
prod-
cleat fits
plain
It seems to us
that the
closely enough
position
be held in
valid-
true
immaterial
to the
uct
ity
must be
overlying
while the
side
eleat and
material
patent, unless
former
passed
stapler.
The defendant
under
prior
patent-
was double
art or the latter
conveyer
has united its
into
workholder
;
plain
neither condition
equally
by attaching
one structure.
It does this
exists.
conveyer chain,
spots,
up-
at selected
five
any
confusion
Nor should there
standing
outstanding blocks. The
con-
long delay
prejudice
on account
veyer
walls,
chain
side channel
runs between
Patent
After
Office.
correspond
patented
which
sides of the
diligent prosecution (in which
blocks therefore divide
workholder. These
Office),it
delay
mostly by the
Patent
pockets,
space
that channel
into four
each of
Brown,
with
and this
went into interference
eleat,
positions
holds and
its
due
be
its
course
interference went
under
sta-
the side material are advanced
all
It is
fore
tribunals.
the Patent Office
plaintiff’s
pler.
place
we
side
side
If
de
suggested
substantial
that there
conveyer and
workholder
defend-
lay
patentees
responsible.
which the
conveyer
pockets
four
thus
ant’s
with its
The final decision in their favor
the Court
formed,
passing under
just
each
before
Appeals
of the District was
1912. The
stapler,
no substantial distinction
see
prosecution
further
thereafter
issue was
only
operation, and
one distinction
form or in
reasonably
ordinary
and was at least
form
merits
is,
pat-
notice. This
unusually
(diligent
again,
so.
Here
—if
dividing partitions posi-
ented machine the
delays resulting
from interference or oth
tively position
both-directions,
the cleats
Office,
adversary proceedings in the
er
Patent
partition
against
bears
the cleat
only
evil which can
remedied
ahead;
behind
as well
the one
while
penalized
cannot
Congress. Patentees
positive
the defendant’s structure
contact
submitting
delay
cannot
positioner
the eleat
ahead
avoid,
any obligation
under
nor are
it;of
there
no direct contact between this
re
diligent
more
the statute and rules
than
positioning
following
block
cleat.
Bell
quire.
American
Tel.
U. S. v.
adapted
This device is
for mortise and tenon
809,
not be earliest, until, involve the method spec- may paragraph of the reached, cite a issued. after the method margin.8 quoted in the is here ification which operating apparatus understood that this inven otherwise. shown wish “We carriages described, the use of removable limited to or formers not to be tion is described, carriages after or formers such as other fed into manner machine adjuncts applicable necessity stopping in the nature which are to obviate Any stitching feeding machine. after each blank stitched. In this the wire separate parts positioning way, chain of cleat and sheet holders means for an endless proper relation, broadly thereon, positioners, de the material blank-material claims, may pass bed substituted between the frame fined in the formers, be caused carriages described, working devices, keep re whether replaceable capacity.” machine, movable to its fullest *11 controversy between Split- necessary settle the plainly is not within the case any proba- by par- parties these in its or it, either rule, as we understand dorf may suggest the form, counsel Defendant modified analogy. ble strict allelism give it attention. necessity ma- and will analogy, that the we out, general points as public use had method chine and involving against Gibbons, ease In the patentees, applicants, became who lap-corner box patents and the these three more than them, all for licenses from under patent, dismissed District Court Illinois application 'divisional years before opinion. Court bill Circuit without is remem- When it This is true. was filed. affirmed Appeals F.(2d) of [25 364] is nor- application the divisional bered that insists Appellant’s counsel now this decree. original benefit of the mally to the entitled original opinion that reading of public use easy see how date, is filing not considered court demonstrates that the court can amount applicants from the under license copending— lap comer —later filed rights which adverse under to that laches prior art, supporting part as a apply can Splitdorf rule arise; or how the its conclusion the machine invention appear- public delay after the unless the analysis by counsel patentable. This claimant, or, perhaps, an adverse of ance original may may correct; but the not be find claimant; we an adverse who be rehearing opinion per upon and the curiam unnecessary question. to decide of together the conclusion demonstrate that claims) (from the apparent further finally un based noninvention was between question patenting, as of double opinions, disputed prior art. As we read the be- the same as product and method is not substi thought, do, as we that the that court also that product; and tween patentees of the one-machine tution are con- method, if the claims whether this preformed cleats assembly treatment of broadly enough separa- to make them strued com one-cleat, two-machine for the Rosbaek machine, operation from in- ble of possessed inventive character bination the true any patentable invention, volves debata- lap- ; merit 9 but it allocated this question; and, ble if must be confined patent, out to comer which turned practiced to a method which can be popular product resulting form again the machine or its equivalent, doubt at change in indicat the machine. haveWe least arises. thinking ed the dominat our reasons Coming to the patent, workholder we meet result, gave new character inventive question. a similar If it is to be construed is of ma to be found the new combination broadly enough to reach the defendant’s permitted chine elements which the automatic structures, and is to be disassociated from its box, production any kind of a wirebound part status as an essential particular rather form of than patent, presence patentable invention proved box to be the best seller.' Con forcefully 'can challenged. We see no oc- right view, vinced as we are that this deciding questions casion for these of valid- to reach a we find ourselves constrained dif ity validity the method adopted ferent conclusion from that infringement patent. of the workholder So eourse, Seventh Circuit. Of this is not to observe, far pointed as has been out or we deny lap-eomer blank, pat that the box likely there has not been and is any specific form, specific patent ented commercially important infringement ei- but, merit; able even patents, ther in- does not also erroneously sustained, that error would not fringe patent. They were all is- justify another. day sued on expire the same very points Out of the numerous other Questions accounting, time. far as we appellee’s pages briefs, made we see, are the same under claim 25 of ma- requiring find discussion. none further patent, it, chine as we un- have construed reversed, The decree below will be der claims of pat- other that or the other in- instructions enter usual decree for ents; theoretically right and while junction accounting, based claim injunction might important, we see no patent, bill, to dismiss of the machine practical value, dication that will be- prejudice, as to method and work- without cause other methods would cost too much. In patents. claims ma- holder other frequently this situation declined to questions prac- enter difficult which are patentees’ funda said: “It court tically misjudge situation, moot. If we assembly mental difference the order and our further consideration of the other of construction that contributed methods most any patent reasonably claims in suit under Eosback.” their invention over *12 842 m'erely vious, of and involved the exercise patent ignored in decree.
chine the ordinary skill”; in and as stated ap- mechanical largely in this Appellant has succeeded page F.(2d) per opinion, curiam 25 at peal, large part We award it in has not. of culmination 366: “It was the this half in Costs below to [the reissue] costs this court. efforts, lies the [patentees’] and therein their discretionary in Wheth- time are that court. invention, as story of entire disposition here furnishes er our of them Upon opinion.” original stated in the analogy that helpful as to costs below court eo- question of theory opinion, of that will decide. in- prior not application as art is pending Judge (dissenting). KNAPPEN, Circuit validity impressed Nor am that volved. I agree of the am unable to in the I conclusion rule patent governed of machine majority the decree opinion, which reverses may, at generic inventions ma- found the (which Court of District by sep- secured option patentee, be of the patent 1,128,145 invalid, chine controlling objection is patents. arate —No. — directs decree fringed by defendant), and patenting, but been double not that there has pat- accounting on that injunction based in invention that there is lack of preju- ent, bill without and dismissal of the Court by the Circuit patent. As stated patents. workholder dice as the method and Circuit, F.(2d) at 25 Appeals Seventh of the opinion page 366: agree with the am I constrained Appeals of the Sev- Court of the Circuit long cleat “The moment was discarded F.(2d) Case, 25 in the Gibbons enth Circuit supplanted ones,10 with short the work- inclusive, which holds 363 to readily appeared holder and machine as the method (as workholder patent well as the logical prob- solution of the mechanic lack of invention. patents) invalid for confronting him. We lem cannot believe that Cir- logic of the and the statement reasons achieved, in invention was this situation Circuit Seventh Appeals of the cuit Court of anything me- more than the exercise of invalid, as stat- patents both finding in those Novelty util- chanical skill involved. 364-365) original opinion (pages ined ity did not until a in the combination arrive opinion (pages 365- per curiam and in the made, pre- improvement was further convincing. 366), seem to me arranging forming the side materials and so unnecessary for me to dis overlap. step This makes it This them last Lavenberg, prior pat- to Inwood accomplished improvement, cuss art ’boxes say except improve- that while combination, ent for pre by hand, preformed separate sheets and ment, us sustained.” pat used before the mitered had been cleats important Nor is asserted, for, they were applied in suit had been ents workholder and machine inventions man regarded practicable for machine were conceived earlier than the reissue box and Lav Inwood ufacture. It remained for patent; previous because to the invention of enberg pre discover that the use of patent the other two inventions were premitered sheets and cleats formed impracticable. wholly After that invention practicable. manufacture was useful, only by became hut virtue there- preformed separate sheets and use of. all premitered cleats runs the four In view what is above stated as to the patents. The contrast between the method of validity patent, question of the machine manufacturing boxes wirebound under the validity patent (No. 1,128, of method present plainly patent and the then method perhaps very 252) important is up 12,275. set the reissue No. developed sue review. drawings patent, in connection with the say enough that, my opin would seem language specifications, clearly indicate ion, the method is invalid for the fur employed making process process ther reason that it is for the product patent. The claims of the re which is results covered plainly me issue seem to to indicate patent. Mosler Safe & Lock v. reissue process in the art the to be em one skilled Mosler, & 8 Bahmann U. S. original opinion ployed. As concluded 182; Mfg. Eagle 32 L. Ed. Miller v. Ct. Appeals Court of the Sev the Circuit 186, 187, L. Co., 151 U. S. Case, F.(2d) Circuit in the Gibbons enth forbidding prior Nor does the rule Ed. story appel page 364: “The entire applications apply ity eopending case of patent, in this reissue invention told lee’s Indeed, & in Mosler Safe to this defense. problems dem solutions three onstrated other were ob- Italics mine. *13 was Hylton Judge. supra, DENISON, Mosler, Circuit Lock v. Bahmann & Co. from Knoxville running to ending. ques freight engineer cop The a applications were Knox- readily Between Southern. presented in case is west on the tion as the instant whieh gang,” of Westing a “steel distinguishable Century v. ville Clinton from relay- engaged in et seq. foreman, was (C. Majors 8)A. was house Co. C. 191 F. his Hylton with working in rails, west. the method conclusion that mile- gang between suggested this encountered valid for the reason herein train other Knoxville; from 14 west unnecessary posts the correct makes it consider en- condition; holding unsafe was in an Judge Raymond’s that track ness of killed. filing Hylton was delay derailed, gine was by reason of is invalid damages upon recover brought effeet application; nor the This action was divisional issue MacGregor left the death; court below for his that defense our decision plaintiff; isNor for Co., F.(2d) jury; a verdict Grip 655. to the it found Co. v. Yaco Em- upon of in the Federal question planted was necessary The action to consider 51-59), Liability (45 USCA patent. ployers’ §§ either Aet as to fringement by appellees contributory was negligence that us is question presented bar. should have defendant whether verdict for t been instructed. negligence, is al- defendant’s whieh by proof, thought supported leged and be v. HYLTON. SOUTHERN RY. CO. defendant, is that it the custom of safety of com- trackmen Appeals, Sixth Circuit. Court Circuit foreman, ing trains, gang the traek January track unsafe whenever he No. 5258. point might curves be hidden might approaching, should a train which be up flag enough far traek to send out a stop- such would before insure that train reaching spot. unsafe was un- Since it required, by questionably cus- rule interpretation, in its fore- tom traek flag man should send some warning up give distance the track to notice approaching trainmen that working gang, steel and since here compliance unquestionable rule and custom, particular flag, the absence of negligence, was counted flag. the second As second called to this flag custom, theory plaintiff it is the intermittent, operation was “when a out,” flag sent, such a and, rail was ready,” the rail was “when it would not be. here progress the work Since was a con- operation, substituting new, longer, tinuous heavier rails many for the old ones over miles, and since the track was therefore al- ways passing, except unsafe for as the track- Smith, Tenn., Knoxville, H. Charles put temporary it in men order whenever Susong, Greeneville, (H. and A. J. Tenn. coming, a train was knew custom at Cooper, Washington, C., D. and J. O’B. best, unintelligible. confused Wheth- Susong, Greeneville, Tenn., A. on the custom, applicable er there was such to these appellant. brief), for events, sueh Hylton and of might extent Knoxville, (S. F. Fowler, of Tenn. A. J. presumed to have relied its observ- Fowler, & all-of Knox- Fowler Fowler, and ance, questions as to whieh it brief), appellee. Tenn., on the ville, whether the evidence support doubtful proof reaches the character of substantial DENISON, distinguished from scintilla. However, MOORMAN, Before HICKENLOOPER, Judges. purposes opinion, of this Circuit we assume