·EWTON V. FURST" BRADLEY IU.NUJ"a 00.

4.61S

NEWTON t1. FURST

&

BRADLEY MANUF'a

CO. and others.CLAn!:.

(Oircuit Court, N. D. nUMB. November 29, 1882.)

1.

PATlIlNTS POR INVENTIONS-REI88UE-ExpANSION 011'

Where the claim of the original patent did not cover the device used by the defendant, and a reissue was necessary to expand or explain the patent in order to cover defendant's plow, such reissue is void.
2.

S.um-WHAT MUST BE SHOWN.

It is incumbent on the owner ofa patent, when a reiBSue is taken long after the date of the original, to show that there was some mistake or inadvertence in the original issue, which made a reissue necessary to cover all the patentee had .

Coburn <t Thatcher, for complainant. West tt Bond,for defendant. BLdDGETT, D. J. This is a bill to enjoin an alleged infringement of a patent originally issued on the ninth of October, 1866, to F. S. Davenport, for an improvement in "gang plows," !lnd reissued December 2, 1879, to the complainant, as assignee of Davenport. The original patent, as shown, covered nearly all the elements which enter into the organization of It "gang plow," and contained eight claims, covering the several specific devices which were combined to form the complete mechanism. One of the features of the original patent was a brake arranged to act upon one of the ground or carrying wheels, by means of which the forward ends of the plow-beams were raised, so that the plows, when in motion, would be lifted or thrown out of the ground by the power of the team; and this feature was specifically covered by the first claim. The reissue contains only thl'eeclaims, all intended to cover the brake, or, as it is called in the reissue, "the clutch mechanism," by which the plows are lifted from the ground. The defenses set up by the defendant are-First, that they do not infringe the complainant's patent; second, that the reissued patent is void, for the reason that it is for 80 different invention than that described in the original, and has been unwarrantably expanded from the original. It appears from the proof. that after the issue of the original patent 80 few plows were made embodying the general features of the patent as a whole, but after a short experiment in offering this plow to the public, the owner of the patent, and those operating under it, introduced material changes in the general structure of toe machine, and only . retained so much of the original device as embraced the mode of lin·
*Affirmed. See 7 Sup. Ct. Rep. 869-

v.14,no.8-30

466

FED1j:RAL

ing the forward ends of the plow-beams from the ground by means of the brake applied to the periphery of ,thewheel. In 1874 the defendant company took a license from Mr. Newton, who was then the owner of the Davenport patent, and up to 1879 continued to make and sell "wheel plows" containing the Davenport brake attachment for lifting them out of the ground. As early as 1876 the defendant, in order to meet competition from other manufacturers, began the manufacture of the "wheeled iron" or "sulky plow," which is now charged to be an infringement of complainant's patent, but continued to make plows with the Davenport brake attachment until the fall of 1879, and to pay royalties to complainant therefor under the terms of its license. In the fall of 1879 the complainant insisted that the defendant's new iron plow infringed. the Davenport patent, and demanded royalties thereon under the license, which the defendant refused to pay. The complainant then obtained this reisl>ue of the Davenport patent, and this suit is brought to determine whether the new iron plow of the defendant infringes the Davenport p8ltent as it now stands reissued. The complainant's patent shows a plank or board 10 Or 12 inohes wide, to each end· of which spindles are attached for the ground or carrying wheels to run on,-this is called in the specifica,tions "the hinged board,G, "-and to it the forward ends of the plow-beams are a.tta.ched by joints., so that when this board-axle or hinged .board lies flat or horizontal, the plows are fastened to the rear or back edge of this board or broad, axle; and when the axle is turned upon. edge, or vertically, the ends of the plow-bea,ms are lifted to a height equ(l,l to the width of the or axle from its center. The brake mechanism is so arranged -that when the brake is made to engage with one of the ca,rrying wheels in motion, this axle is turned up edgewise, and the plows thereby. lifted out of the ground. The first claim otthe original patent was in these words: "I claim as new, and desire to secure by letters patent, (1) the: lever, p, rod, q, and brake, -r, .arranged. 'a,nd' opera.ting as and for the purposes described." claims in the reissue a.re as follows :'
"(I) In a WhMlplow com bination with a swinging axle and ground or carrying wheel of a friction clutch mechanism, and means to engage and dhJ· engflge the latt·er with· the ground or carrying wheels, said parts being constructed and .the plow by locking tbe swing;. iaxle to the. carrying wheel by frjction engagement, and raise the by the dl'aft power 6f' tlie tea:m; shbstantially as set forth. (2) In a wheel' plow .

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NEWTON V. <FURST'&!: BRADLEY':w.NUl1"G 00.

467

the cdmbinatlon with a ground wheel and swing axle,'and a plow-beam connected to the latter, of clutch mechanism connected to the axle, and adapted by engagement with the wheel to utilize the draft of the team in turning the sw!ng axle in .an upright position, and the,reby raise the plow-beams, subsblntially as set forth. (3) In a wheel plow; the combination with a ground wheel and swing axle and a plow-beam, connected to the latter, of a friction clutch, connected to the axle, and adapted by cOntact "'ith the wheel to turn the axle into an upright position, and thereby raise the plow-beam by aid of the draft of the team, substantially as set forth."

The defendant's machine is a wheel or sulky plow, with a bent or cranked iron axle, upon which the plow-beams are pivoted at about two-thirds of the distance from the forward end to the coulter; so that the plow is nearly balanced upon the axle onmink, and the arrangement of the mechanism i8 such that when the plow is running or operating the ground, the crank partis in a horizontal position, and when it is desired to raise the plows out of the ground, the crank is turned upwards towards a. vertical position, whereby the forward ends of the beams are raised until thepomt of' the plow runs out of tne ground. After the forward end of the beam has risen to a certain point it strikes a stop, so taat when the crank has assumed a position the plow' is balanced acroSs the crank part of the axle, thus sustaining the plow at the height above the ground of the crank when in avertica.I position. This turning of the crank axle so as to lift the plow is accomplished' by a friction band, or brake, which is made to engage with an hiner e:rtension' of the hub of one of the carrying wheelS, so that. as the wheel moves forward it caUSiS the crank axle to turn upwards fronr a horizontal to a vertical position. Is this friction band, encircling the extension of the hub ot the carrying wheel in the defendant's plow, an irifringement of the Davenport patent? Both these devices utilize the power of the team which draws the p:ow to raise the plow i out of ihe ground. The purpose of each is substantially the same. The Davenport device applies the brake to the periphery of the carryi.ng wheel. The defend· ant applies 8 friction band to the hub of the wheel. It must be conceded that these devices, in their mode of operation and effect, are very much alike; and if the state of the art was such, when Davenport entered the field, as to entitle him to a' broad claim for any device by which the plow is lifted from the ground by the power of the team through ti brake or clutch mechanism, I Ilhould have little hesitation in holding that the defendant's ma.chine infringes that of the

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46-8

FEDERAL

It therefore booomes necessary to examine, in the light of the evidence in this oase, the state of the art at the time Davenport made his invention. The proof shows that in April, 1858, G. F. Anderson, of New Hampshire, obtained a United States patent for So seed-drill, or corn-planter, which, in addition to the apparatus for dropping, carried plowshares for the purpose of covering the seed. l'his is a wheel and shows an axle with cams or eccentrics, and a clutch mechanism, whereby the axle is to be connected with one of the car· rying wheels, so that the axle will rotate with the wheel, and the eccentr:c thereby raise the plow and seed-tubes off the ground to the one-fourth a revol.Ition of the cams. This axle, at' axle with eccentrics affixed to it, operates for the purpose of raising the plows out of the grqundprecisely like a crank axle, and the plows are raised by the draft or power of the team. It is also noticea· ble that this Anderson clutch mechanism is arranged to engage with the. end of tho hub of one of the wheels, therein closely resembling the device o(the defendant in most respects, except that it is not a "frictiOJ,l ,dutch." . ' The 'United States patent of H. H. Bakel', issued in December, 1860, for a "wpgel plow," shows a clutch mechanism made to engage with a pin in the rim of one of the carrying wheels, whereby the plows were raised and caused to run out of the ground. 'rhis machine shows no crank axle, but it shows a rock shaft, extending transversely aeross the frame, which, for the purposes of the function of raising the plows from the ground, takes the place of the cammed axle of Ander'SOl1, or the hinged board, G, of Davenport. After describing his dein his specifications, BakElr makes a specific claim for "raising the plows 1 anq f? vertically at by the of the bearing wheel through the. aid of mechanism substantially as Sl:lt forth." Here WE' have an who not only shows a clutch mechanism arranged to 6-agage with the ,bearing wheel and thereby raise the plows from the groun1 by the motion oUhe wheel, but that as his pa,rticular invention. The United States patElntof H. R. Huie, issued in August, 1863, f,or a "wheel plow," crank in combination with a plowhe am for the oiraising the plowfrom the ground, but he mechani!3m, and does not utilize the, power of,the team uses no, .to, liJt the plows. . 'Talso iiila that a clutch mechanism a.rranged to engage with one or both of the carrying wheels was a common device for raising the
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NEWTON V. FURST & BRADLEY l\IANUF'G 00.

.4:69

teeth of a horse hay-rake from t4e, ground long before the Davenport And in the United States patent to G. H. Daily and Robert M. Treat, issued in November, 1862, a crank axle is shown with brakes arranged to engage with the periphery of the .wheel for the purpose of raising the rake teeth. This friction clutch or brake operated directly in combination with a crank or swing axle, and is 80 similar to the Davenport device for raising his plows that you have only to substitute a plow in place of a.rake tooth and you have almost an exact reproduction of Davenport's mechanism for raising the forward end of his plow-bea:ms. I might, if I deemed it .necessary to do so, refer to other proof in the case, but think it is already apparent that, at the date of Mr. Davenport's pa.tcnt, older inventors had shown devices in wheel plows lor utilizing the motion of the carrying wheel to raise the plow from the groun4, to such an extent, and so nearly embodying the same instrumentalities adopted by Davenport, as to limit his claims as an inventor to his specific devices.: It is true that some of the machines to which I have refened. ;were organized as plows, but their uses are so l1nalogous to that of. plows, and with a knowledge of these machines which Davenport be presumed to have had, it was so easy to adapt these old and horse-rake devices to a plow mechanism, that I deem them pertinent upon the questioIt of the state of the art. . After a careful study of eomplainant and defendant, I find that the of the Davenport patent, w:hich was arranged t.O engage with the or periphery of the bearing wheel forthe purpose of raising the pIOWB, is not identical with the friction band of the defendant's plow, which is arranged to engage with. the ex.tendf-dhub of one of the ca.n;ying.wheels; for although the result of the operation of each is the I ,do not. think ban.d said to be t9,e "mell:If,s for engaging or disengaging the axle. and carrying wheel,;' !lQas to raise the plow or plows, as brake, r. : , It wiUbe borne in mind ,that, in tqeoriginal patent, this}levlcefor raising is aB p,rod,q, arranged and operating," etc, while in .the ;!llairns are of,a ,swing axle.plQWrReam, cltrrying wheel, broadly for tp raise the plow by)pcking and friction clutch to tp.e parrying W,hAel. This cannot pecon.strued, to Include any apd all awing axles, an<lany, and all fric,tion and but it.IDust he such a ·swingaxle,

470
friction clutch. carrying wheel, and plow-beam as are shown in the complainant's· device. ·Referring then to the complainant's patent, we see that he does not describe a swing axle at all, but describes a hinged board, G, and although this may have many of the characteristics of a swing or crank axle, it was something more than that in the complainant's organization. So the complainant's friction clutch can only operate to raisd the plows when the team is moving forward, while the defendant's friction band is so arranged, in connection with the hub extension, that defendant's plow can be lifted from the ground when at rest. I am therefore of opinion that the defendant's friction band does not infringe the friction clutch shown in the complainant's mechanism, and that the complainant, upon the state of the art, had no right to claim broadly any friction clutch whereby the crank axle should be locked to the wheel, but is confined to the friction clutch shown in his specifications and drawings. As to the question raised in regard to the validity of the reissue,I do not deem it necessary to say more than that, under the recent decision of the supreme court with regard to reissued patents, the owner of this patent had no right, 13 years after the issue of the original, to expand the claims of the original patent so as to make it cover the combination of the friction brake with the other parts of the machine which were, perhaps, needed to make it operative, but which Davenport; at the time he took his patent, 'did not deem was any part of his invention. Both the evidence of the state of the art at the time Davenport took his patent, and the history of the uses to which this. patent has been applied, all show that Davenport had no broad right to claim the combination of clutch mechanism, and cranked or cammed axles, which are the same, for thepui'pose of raising the plow out of the ground by the power of the te8im, for Anderson had done this in his combined seeder and plow, and the analogous device of the horse rake would certainly suggest how this might be done, if not instruct as to the mode of doing it, and this expansion of the complainant's patent was evidently made after the defendant's iron plow had been brought ont, and for the purpose of covering the device of raising the plow which is there shown. . Clearly, if the claim of the originaJpatent did not cover thE device used by the defElndan.t, and if a 'reis8ue was neee8saTY to expand or explain the patent in order to cover the dMeridarit's plow, then such reissue in the'light of the case of Miller -v. Bridgeport Bra,s 00. 104U. S. 350; and Campbell 'v. James, 104 U. S. 356. It certainly

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4:71

seems to me ineumbent on: the oWrferof lJo,patent, when a il taken so long after the date of the orig4J.al, to show that there walsome mistake or inadvertence in original issue, which made a le-. issue necessary to cover all patentee had invented; but th& most that can be said in support of this reissue is that, perhaps, if Davenclaims when he took hisorigport had a.sked for these inal patent, they might have been allowed at that time, but this does not show that after waiting 18 yea.rs, and till others have used the combination, he can now be. allowed by a reissue to take all the combination claims which might been conceded to him at the issue of his original, and thereby prevent pthers from reaping' the 1;lenefit of improvements they haveJ;l:lade in his mechanism, and whioh he negleoted to claim in apt time to prevent others from using what he had abandoned. I therefore find-Firat, that Mfenda.nts do not infringe the complainant's patent as charged; secona, that the is void by reapo.'" son of the expansion of the claiJIls beyond those of the ent. The bill is therefore dismissed fOfwant of equity.

IIUBBELL

(Oif'cu"

and others ".' DB LAND.

November 6, 1882.)

u_t, E.D.

P.lTENTS FOR INvEN'l'IOl!fs-PLEADING-BnCIAL

PLE4.

The validity of the reissued patents questioned, on'the ground that it l\ppean by comparison'of the original and reissue that the latter patent was for one thing and the former for another; that the claim in.the reissue WBIl unla wfully after expanded 80 as to embrace improvements covered by other patents the issuance of the plaintifrs' original patent, and before the reissue, and that therefore the reissue is void :Hetd, matter of defense that may be prasented by specJial plea.

Duell et Hey, fOf complainants., Finches, Lynde et Miller, for defendants. ., DYEn, D. J. On the day of April, 1869, letters paten' No. 88,830, for animprovementin the manu,facture.of were issued to J. W. Andrews. ,and', N.'1. of.th.e sta.te of ;New ,York· ... . , , On the: third da.yof .reissue patent No.. 6, 117 were)ssued; to HubbeU"as tbe mesne assign,

In Equity. On motion to strike plea

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