, lIILI.V.SAWYER :,
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..,-NOVEJ;,.n-. .. .
P.l'/6'U!'York. June 17,1887.)
2. BAlI:il::"":OoMBi'N'ATIQlf-CoNsTRucTloN, '
,Let\ers No. 186.862 were gfallted January 2; 1877, to Benjamin B. HUl, fo,," an, impl''Ovement in the object oftbe'invention being the' proiluctlon 'of schaap hand-stamp in which the year, month. and day might 'be printed to represent any given date. The invention consisted ofa BtI\W,Pthl!' of wa,s JIlade in two .A series of rolls were arranged Within the 'case. and there was a fixed bridge at the lower end. Endless tubber bands passed :&1!ound these rolls, and ,also/around and over the By turning: the rolls inoue ,dlrectip!!, the letters upon the bands were successively brQught'tnto pOSitIOn for prmting, and supported there by the square edge at the'1X>ttom of the bridge·. The inventIOn also, rolls, wheretheJ>\londs had their consisted of ,an:annularracl\ss bearing, tWll,d, with, a liubstancll "lllcJ;! wOj1ld.adhere..to'theOands, an.d thus increasetractron,prllvent slipping, alld aid in bringmg the characters upon the roUs'into, the'proper for: printing. It appeared that ,each ele-, ment of tbe cOlQbinatiQn W&$ 1qliown in t,he prior to the invention, but the, combilj1llotlPn inqu,estion, in its entirety, had never been produced. It also' appeared that the Invllntion had been 'received by the d.·ade- .as a patented artICle, and l1ad l1een Jprevioualy recognized as such by the, defendant, who wall contestil,lg .Held, patent was not void,: for want of pat· ; ,. " , "
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'Whereall'!tIle' "Of acomblhstion are' old ini art,buts patent is grantedfOf the of. which depends , upon noyeltyQf, s1Jch patent!le will pe confined striCtly to tl;le, combmatlOn described. and'clll.imed by hun. .'
Where several' Jpatenta exietforcom,pfnations, all producing the Bll,me re, I ,l!)llts, but in Of .pombination, the doctrine of equivalents no apphcatlOn, and be filvoked by one patentee to suppress 'the combination of'another. ' ";.'. 'j' , , ' ,
The said Hill patent is not infringed by the manufacture of stamps under letters patent granted October 28, 1883, to Willard W. Sawyer, wherein endless rubber' printing bands were used in a combination in wbichthe frame was not madefn two parts. and in which there wel,'e toothed wheels near the ., i bottom of the frame for turning the bands in a method differing from that of the Hill patent.. ' , ,
·"F'redericH. ,Betf.cl and J. E. IRndon Hyde, for complainant. Arthur v. Briesenarid Manuel A; KUTsheedt. for defendants.
. J. ''J,'his'1s an eqtiity action for infringement founded uport letters patent Nq: 18Ir,862, granted to the complainant January 2, in dating-stamps. The objectof the inventor is to provide II cheap' hand-stamp with which the year, month, and day may be printed td any given date. The 'inveUtiDl1 consists ofa stamp the of which is ma\lein two parts. Aireries of rolls are"ar.:. ranged within the case; and brillge at its lower end. Endless rqbbe;bands pass around these rolls, and also around or over the rallk in one direction, the figures dr letters upon the bands will be successively brought into position' forpriIiting, and
supported there by .edge at the bottom of' the bridge. ',l'he invention also consists 'of, an annular recess around the' rolls, where the bands have their bearing, filled with any which will adhere to the bands, and thus increase,trMtion, preve,nt aid in bringingthe characters upon the rolls int<> the proper for printing. The only claim involved is as follows: "(1) The combination of a series of endless rubber printing bands, acorrespQnding series ofrevolving and a bearing,H, .tosupport the type when. being moved and used to print, all substantially as and for the purpose: described." The defenses are-First, that the patent is void. for lack of novelty and invention;, second,' that one.R. H. Smith, 'and,not the patentee, was the inven.tor; third, that the defendants do not infril)Ke. Without entering minntelyinto the prior art, it may be said, generally ,that .at the date oEthe invention, in the fall of1875, endless printing bands, having raised lettets. thereon, passing around a tractiop wheel at the top and a fixed bearing at the bottom, having a series rubber printing bandse.xtending around a: centralelliptical core,the lower end of which has a squar.e edge, and operates as a fixed beat1-ng, and' hand-stamps having endless rubber bands passing around twotollers:so arranged that in printing the lower roller is held stationary,'weTe all old. So were hand-stamps with rubber strips 'attached to spools, upon which they are wound and unwound over a fixed bridge, where the chara<1teJ,"s ,are. brought into pdSition for printiI;lg. Various' hand-stamps,employing metal type upon wheels and chains, ,were also .well known. In fact it may be fairly stated that each element ,of the combination of the first claim is found in the prior art. Sometiu;Jes, also, two of:them are found combined in analogous situations. ]]01' instance, had Dorman introduced the Davis traction wheel to advance each of the bands around the fixed bearing at the bottom of his. cOrEl" he would have anticipated the complainant's invention. It must be admitted, ho.wever, that the combination in question is not found in its entirety in any oBhe references; and although it did not requiJ;,e a high order of genius to produce it,yet sufficient .inventive lectua! dexterity are found there to rescue the patent from the no,cusation that it is void for want of patentable novelty. Especially is this true in view of its reception by the .trade, and the markedirecognitiQn of its validity by the defendant Sawyer. Narfh, American, ,fran- W01# Vi. Fiske, 30 Fed. Rep. 622 ; Wilcox Y. Boo1cwalter, 39 ,0. G.1200, 224; Smith v. Dental Vulcanit6Co., 93 U. S. 495; LindBay v. Stein, 10 Fed. Rep. 907. The defense that the invention in question was ml\de by Smith rather than the patentee is hardly sustained by the proofs. 'l'he testimony of the defendants in this behalf is euccessfully met by th,at of the complain'ant, the latter being sllpportedby the very strong presumptio'1 arising from thepa.tent itself. If Smith were the inventor, it is hardlyprobahIe tbaf,;he 'Would have permitted the complainant to take o.ut a patent withontstromger prote.stthan the record discloses. At.least, he have required some tangible a.J:!,d definite llck;nQwledg;tll.ent of his rights.
Do the defendants infringe? This question is a perplexing one, and the solution of it is surrounded"hy unusual difficulties. An examinaiion of the authorities in analog0trs, cases, however, has confirmed and strengthened the impression formed 'at the argument that the defendants do not infringe. The constl.'uctionplaced upon the claim, in view of the restricted theater of Dperation, must necessarily be a narrow one. The defendants contend that it is necessary to include the frame as an implied element of the combination, not only because the prior art limits the invention to the precise forin' described, but also because the patentee himself so limits, it by the' minute and, careful description of the frame in theispecifica.tion,and the specifio reference in the claim to the bearing, H, which, as a part oHne frame, is cast intrwohalves, and in that form is '"not, found in the defeltdants' stamp. There are many authciritieswhioh seem to justify even so limited a construction. In Bragg v. Fitch,39 O. G. 829, 7 Sup. Ct. Rep. 978, at pa.ge 981, the supreme court says: ·'It is obviollsfrom the foregoing review of prior patents' that the invention of Bristol,ifhis snap-book contains a ,patentable invention, is but one in a series of improvements all having the same general'object and purpose; and that in construing the claims of his patent they must be restricted to the precise form and arrangement of parts described in his specification, and to the purpose indicated therein." , ' ' See, also,Sharpv. Rieswner, 119 U. S. 631,7 Sup. Ct,:Rep. 417; Gage v. Herring, 107 U. S. 640.2 Sup. Ct. Rep. 819j Railmad Co. v. Mellon, 104 U. S. 112; Sncrw v. Lake Shore Ry; 39 O. G. 1081, 18 ,Fed. Rep. 602,. Although the construction urged by the defendants is, perhaps, unnecessarily severe, it is quite clear that a broad 'construction is impossibl&, and that the patentee must, at least, be confined strictly to the combination, the elements of which, and their mode of operation, are 'specifically described and distinctly claimed by him. The defendants' 'stamps are, made under letters patent granted to .the defendant Sawyer, October 23 1 1883. The bands are 'moved around andnpon a support;.. 'iog frame or core, the bottom of which forms a fixed' bearing. At the top of the frame are'three small'tollers, whose function is to relieve the .friction of the bands passing oV'er the top of the core. These rollers 'are 'Dot found in the Sawyer patent. The bands are turned by three toothed :wheels, placed near the bottom of the frame, which bear against the bands, and press them into the concavities of the core. The cogs on these wheels catch the projecting characters on the bands, and, as the wheels turn, the bands are fed around, and the letters and figures are brought into the desired position beneath the frame to make the imprint. The upper, or anti-friction, rollers do not operate to feed the bands ll.i'ound,-they have not sufficienttractionfor that purpose,-nor is their presence necessary to hold the' bands. up tightly against the bearing at the bottom of the core. Clearly these Bre not the rolls of the patent. The action of the toothed WheelS is that of the rack and pinion. The bands are not held in tension; which is essential to the proper action of
En.L fl. SA:WYEB. '.
the'complainant's device, but are comparatively tbe core. If the adhesive function of the complainant's drumswere removed, so bands could be moved easily and withou.t friction, and between the drums and the bridge a spur-wheel were introduced, the. cogs of which would .engage the thus force the bands along, it would be the defendants' apparatus. But would it then be the patented apparatus? , Would it not rather be the Dorman device, plus the cog,wheel!!? the 90urt. lose sight of the able. and, persuasive argument of .tbe counsel for the complainant that the stamp contains a series, of rubber printing bands, a fixed bearing over which they and,which supports the characters in a for printing, and a series of three toothed wheels, which operate to revolve, and,W some extent support, the bands, .the cogs being but an exaggerated ness for producing traction. Nevertheless the defendants' roUs are not' the rolls of the patent, and, although they produce similar results, they cannot be regarded as equivalents. This case, it is thought, belongs to that class, of inventions where the doctrine of equivalents cannot be invoked to suppress improyements. on a wel,l-known, machine. Where change of form or combination only is involved, each inventor must be content with the structure described and claimed by him. McCormick v. Talcott, 20 How. 402 j . Burr v Duryee, 1 Wall. 531;' Railway Co. v. Sayles,
rights of those who have improved the hand-stamp are d;el;1¢ribed '. by the patentee himself in a 'circular put out by hiIll in :ariswedo,wbat be regarded as the unfounded claims of Dorman. He says: is entitled to' his special combilwtion of endless bands device claimed in his patent, and On the same ground am I entitled to the combination of endless bands with the device shown in my invention." And he might have added: "Sawyer is entitled to the endless bands combined with the device.sshown by him." The.idea'is,with even, greater clearness, expressed by the expert witness of the complainant as follows: '. ' "Most of the great inventions of the day are brought about by a series of steps. One inventor may have 'conceived a new style of jmplement, but with,Ptltpllttingoit hi such a form as to be a practically operative device. Another .inventor.g<?tls a step further,and another inventor further still, and so on through Ij, of steps, until some inventor devises the idea, and embodies it in sUQli as to make what was before an impracticable one. Thil;l last 'inventor may not have devi$ed any radically new element, or added to the imachine anything'ofitself novel, but he may have so combined old elements in 'such a novel way as to produce a great improvement on the st8.te of the art existing bllfore his invention. This appears to me to be the. case of the Hill patent under consideration. Each of the elements he introduced into stamp.¥! old,separately considered, but 1 do not )inderstand it to be nec'e$sary in order to make an invention that any single element or a combination shall be broadly new." . It of :this class of that the supreme ClOurt in Railway Co. v.Saylea,8'iJlpa, at page 556, says:' , ,
step, so'Wa:tno one can claim tpe complete whole, ual, and tbeli'eacliis entitled only to the speciftcdorm of he 'and every other inventor is entitled to his' own specific form, so: long SSlt dlf.fersfrom those of his competitors, and does not include. theirs. " " TheooIribination of thedefeIidants'isnot the combinati()n ofthe first claim of the patent, and it must, be that they do not infringe. ·Broo"ksv. FiBke. 15 How. 221; CalifOrnia Paving (h.v. Schalicke, 119 U. 'So 401, '7 sup. Ct. Rep. 391; v. Saginaw Barrel Co., 119 U. Ct. Rep. 421;:GM.'v; Wilt, 38 O. 7 Sup. Ct. ·Rep.718; Ne:wton v. PurBt Bradlq Co., 119 U. S. 373, 7 Sup. Ct. Rep.
, "If one InvenfiQr.precedes alltber,ellt,uIj.d atrlkes cJud!'!ssndunderlies all thattheyprod"c!l, ,a. monopoly, jects .$eJ;ll W .. ,But if tOwal'ds the tbingd«tBired' is grad-
869. . , It follows that the bill must 1?e dismissed.
Booir 'Co. ".
(Ot'focuit OOU'l't, D, Hains. ,June 2, 1887.)
PATENTS FOR INvENTIONS-SUCCESSIVE AsSIGNMENTS-PIuORITY-TRUST--CONVEYANCE, , . . . '
One who procures from: an inventor repords an assignment of hiflinterest in the invention, 'With knowl!3dgeof a prior unrecorded assignment, and thereupon procures the patent'to be issued. in his own name, will be deemed to hold the title in trust fori thE! first assignee, and the latter may compel a conveyance: ,In such case the prior assignee is not sufficiently protected Without a conveyance; sin.ce his rights depend upon notice, to which the record of the can show nothing. '
In Equity. On demurrer to the prayer for relief. Wells W. Leggett and William L. Putnam, for complainant. Livernwre Fiah, for respondent.,.. .'
WEBB, J., shows the following facts: Prior to January 13, 1885,Samuel G. Alexander, claiming to be the inventor of anhnprovement in felt boots, with the intention of procuringa plttent therefor, caused speCifications and an application to be prepared; filing them on the date meutioned, ,he assigned'all,hia right and interest in his invention to C. E. Wakeman & Co. In the assignment was a request that the letters patent should be granted and 'issued to the assignee., January14, 1885, Wakeman & Co:. 'assigned all thet'ights and interest thus acquired to' the complainant. Through misunderstanding ,of inadvertence, the 'assigmnent to Wakeman & was not recorded until Mllrch 4, and that. to the complainant till March 18,1886. The application, with necessary specifications,was filed on or about January 27, 1885. Before any patent was granted, an interference was declared /:letween this application and