V. PREBLE, Adm'x.
(Oircuit Oourt. N. D. Illinois. December 4, 1882,)
PATENT FOR INVENTION-ExpANDED CLAU!S IN REISSUE.
Where the true and only allowable const,ruction of complainant's patent for an improvement in planing machines requires that the pressure rollers sh'all be used in combination with independent sw illgillg arms, as described in the specifications, he cannot by a reissue be permitted to expand the claims so as tl) cover all divided or broken pressme rollers; and where defendant does not use thl' SWinging arms, nor complainant's combination of those arms, with his pressure rollers, there is no infringement.
Parkinson <t,Parkinson, for complainant. Geo. P. Barton, for defendant. BLODGETT. D. J. This is.a bill for an injunction and account h; reason of the alleged infringement of a patent issued by the Unite(' States to James. Goodrich and Henry J. Colburn, bearing date Feb, ruary 7,)871, and numbered a.nd reissued on the first 0' October, 1878, to the said Goodrich and Colburn, assignors of W. H Doane, the reissue being No. 8,438, for "an improvement in planin)., machines. ", . The defense relied on is (1) that the reissued paten! is void, for the reason that iUs for a differen.t invention than that covered by the, original patent; and (2) that the defendant does not infringe. The feature of the original patent brought in question by this suit is a device by which the lumber to be planed is held or pressed down to t4e traveling bed of the planing machine by means of two or more pressure rollers placed in a line across the bed of the machine so that united length I3hall reach across the bed. ' The original device, as, patented b.y Goodrich and Colburn, contained several features seemed to think of much more merit than the ,which the special feature .in in this suit, and those elements or features formed the &ubjeet of thetiret, three claimS of t:he patent. There is no.proof in the. record :that, machine embodying all the distinctive features of the original patent was ever made and operated for planing lumber, and the opinions of several witnesses of much experience in the working of this class of machinery are given in proof to the effect that a useful planing machine could not be made by following the specifications and drawings shown in the patent. It also appears from the proof that in the year of 1877 the complainant company and another manufacturer of plan.
ing machines made and put upon the market machines containing, among other features, divided or broken pressure rollers. These machines proved useful and acceptable to the trade, and in August, 1878, undoubtedly for the purpose of securing to this complainant the exclusive right or monopoly in the market for this class of mao chines, Mr. Doane, president of the oomplainant company, secured from Goodrich and Colburn an assignment of their original patent, and obtained the reissue now before the court. The original patent contained four claims, the first three of which relate to features not involved in this· suit, and the fourth claim was intended to cover so much of the device as related to the divided or broken pressure rollers. The reissued patent contains eight olaims, the first four being substantially the four claims of the original patent; and the fifth, sixtli, seventh, and eighth all relate to the divided pressure rollers, and are intended to claim and cover mOre fully and particularly this charaoteristio of the machine. The fourth claim of the original and reissued patent, in substance, is for "the combination of the springs, E4, E4, with the yokes, E3, E3, the frames, E2, E2, E1, E1, and the rollers, E, E, as herein described, and for the purposes set forth." The new claims in the reissue· state more miriutely the operation of the tnachine and the combination of these parts with the traveling bed and other part,s of the maohine. If these new claims are intended to be and are an expansion of j;he claims of the original patent so as to enable the present owners of the patent to olaim elements which the original patentees did. not see fit to claim, then they are undoubtedly void under the rule estab. lished by the supreme court in Miller v. Brass Co. 104, U. 8.350, and Cmnpbell v. James, 104 U. 8. 356; while if these new claims are only restatements of the functions and mode of operation oftheele. ments of the fourth claim in combination with the other parts of,the machine, then they are' but another mode of formulating thE}' old fourth claim. The original fourth claim was for the rollers, frl:j,mes, yokes, and springs, as shown ahd desoribed in the specification, acting, of course, through and with the other parts of the mechaniem to make an operative machine; and, in my estimation, a olaim of'a combination of those eiements of the old fourth claim with the ,other parts of the machine does not add anything to that old fourth claim, becatlsetbe operation of those elements with the other pa.rts of the machine, like the traveling bed or eutter-heads, wasimplwd or understood in the original fourth claim. I shall, therefore, confine myself
to the question whether the maohine made by the defendant infringes the fourth claim Qf the .feissued patent. In the specification of· the reissue this feature of the patent is described as follows:
" The pressure rollers, E, E, figures 2;3. and 4. are connected to independent swinging arms, El, El, E2. E2, so that they are free to follow the surface of the article to be planed; the journals of the rollers having boxes so arranged that this action can take place. E3, E3, figure 4, are yok£ls, the ends of which rest upon the arms, El, EI, E2, E2. 'Upon the middle of these, yokes E4, E4, pre'lsed, so that the arms EI, El, E2, E2, are pressed constantly downward against the work,",
It will be seen from this description that the independent swinging arms which carry upon their forward ends the pressure rollers are a distinctive feature or element of the device. The function and mode of operation of these swinging arms is such that either end of the roller may rise without raising the opposite end, thus giving to these rollers an adjustable element which enables them to adaptthemse,lves to the surface of the lumber on which they are to operate. The defendant's machine contains a divided roller, or two rollers, the united length of which reaches across the bed of, the machine; but these rollers are fixed on rigid frames which have only a vertical motion, and the rollers cannot be tilted or one end raiserl, while the other remains stationary or is not raised so much. There is nothing in defendant's machine which corresponds to these swinging arms in complainant's machine, or which can he deemed the equivalent of these arms. The characteristic which these arms impart to complainant's device is not found in defendant's machine. The defendant's rollers must rise vertically in a line parallel to the bed of the machine. Ucomplainant, by the new claims in the reissue, intends to cover ,all divided rollers or machines where transverse pressure rollers are used in sections or parts; then the proof shows that more is claimed than can be allowed by the state of the art when these patentees enteredthe field, beoausethe English patent to Gracie clearly shows several pressure rollers acting indepe)?dentlyacross the bed of a planing machine; and, the same feature is also shown in several other English patent8whichflore in proof, although not so nearly identical in mode of operation and effect as those shown in the Gracie patent.
I am, therefore, of opinion that the true and only allowable struction of complainant'apatent .requires that the rollers shall be used in combina.tionwith the independent swinging arms which are described in the specifications, and that complainant 'cannot by the reissue, be permitted to expand the claims of the patent so as to cover all divided or broken pressure rollers; and inasmuch as defendant does not use the swinging arms nor the complainant's combination of those arms with his pressure rollers, there is no infringement. The bill is dismissed for want of equity.
and othere v.
(Circuf" Cowrt,8· .D.
ohio. w. D.
JAnuary 3, 1883.)
PATENTS-PRACTICE ON REFERENCE-PnQDUCTION OF BOOKS ON TION.
Upon a referenceot a patent cause to a master to take an account of damages, etc., one of the c()mplainfW,ta Wstifled as tothe cost of manufacturing and selling the patented article in contrllversy. the number manufactured and sold by his firm, etc. Held, that defendant, upon is entitledto the production of the books of witness' firm, bnt complainants may, if they so elect, withdraw the witness and his testirnonr as far as giveu. '
In Equity. Stem ct Peck, for complainants. Parkinson &; Parkinson, for defendants:. BAXTER, C. J. In this case-which was a suit inequity to enjoin an infringement of the patent therein mentioned, .and for an .account of damages, etc., for alleged part t,hereof-a decree was rendered in complainants' favor, and a master ordered to take alid state the account. John W. Stoddard, one of thecomphdtiants,· appeared before the master and was examined in his own hehalf. After stating that he had been engaged for a long time in manufacturing hay-rakes in accordance with the patent alleged to have been infringed, etc., he proceeded to state what it costs to manufacture and put them on the market, the number manufactured and Bold by his firm during and after defendants' infringement, and the obtained for them. This evidence, it is said, tends to show the extent of defendants' gains and profits, and furnish a basis for esti.Ucported by J. C. Harper, Esq. of the Cincinnati liar.