UNION NEEDLE CO.
t1. UNION NEEDLE
(Oirooit Go'Urt, 8. D. Nt/U) York. February 23,1885.)
P.l.TENTS FOR INVENTIONS-NEEDLE-MACHINE-8UBSEQUENT PATENT OF NEBDLE
The patentee of a machine, capable of producing needles of a superior qual· ity, subsequently obtained a patent upon the product of such machine. Held, that the latter patent was void, as an attempt to patent the function of the machine, and thus extend the monopoly of the invention beyond the time allowed by law, and that an action could not be maintained against one manufacturingthe same kind of needles by the use of the machine after the expiration of the patent thereon, when the right to use it had become vested in the . public. In Equity. Solomon J. Gordon, for plaintiff. James E. Maynadier, for defendant.
WALLACE, J. Hopson an!l Brooks were the inventors of a machine for articles of metal in dies, and letters patent therefor were granted to them August 9, 1864, and reissued December 12, 1865. The specification, among other things, states: "Our invention has for its object the compressing of metal to a smooth, round form, corresponding to the shape of the dies, and consists in a divided die, that is forced together two or more times during each revolution around the article to ba formed, and, by a series of compressions upon the sides of such article, reduces the same to the size and shape of the opening or caVity of the dies, and giVes to the article great density, as well as a smooth, round, and uniform shape, and there is no loss of material like there is in the turning, milling, and grinding operations heretofore pursued, and which do not harden or render the metal dense and strong, and there are no burrs, angles, projections, or roughness on the surface, as heretofore usual with articles struck up in dies." The specification then describes a shaft, a longitudinal jaw, cams, and dies, and screws, and proceeds: "The mode ,of operatiJ;lg, this machine is as follows: The end of the piece of metal t,o be pointed or otherwise shaped is entered between the dies, i, i, and pressed into them, which slightly opens said dies. The revolution of the shaft, B, brings the projection, 0, of the jaw, D, into contact with the end of one of the cams, K, which cam is adjusted so that it will close the dies, i, i, and, in so doing, compress the wire or metal, and these operations are repeated, the end of the wire or piece of metal being pressed in a little further each time the jaw is relieved and allowed to slightly open, until the same is perfectly form!!!! or given the shape of the opening in the die, and the metal is compressed and extended without any burr or projection being formed on the same, and the metal is rendered much more dense by this compressing action than it would be if the metal was filed or ground away to the required shape. The screw, G, regulating the extent to which the metal can open the die each time, prevents injury to the machinery by too great reduction at once. The mechanism herein set forth may be employed for shaping, in a circularform, the point of a pin, or any other article to which it may be adapted. It will be evident that there is no waste of material, as the metal is compressed and
elongated, thus effecting a saving of stock over the methods heretofore pursued, and making a much better article." . . The first qlltim is asfollQws:
a Series'of compressions upon the article to be formed; to give to such .article a smooth, round shape, corresponding to the shape of the dies, as set forth." . ,',
..A divided die, fitted and actuated substantially as specified, and operating,
There are two other claims, covering various PllrtS'ofthe machine in combination, . . In using this machine, Hopson and Brooks employed dies of various kinds,includillg those of proper form for swaging pins, buckle tongues, and similar articles, and also for swaging needles for sewing-machines. In December, 1864, they employed Mr. Mandeville to assist them in improving the surface of the wearing parts, and ,in il1(Jreasing the power of the machine, and on February 6,1866, a patent was granted to Hopson and Brooks, assignees of Hopson and Brooks and Mandeville, for of this patent the form of dies these improvements., In .the fOf forming sewing-machine needles is pointed out as being "of the shape of the needle or bther article to be formed," but is il'otmade ill any way a constituent ofthe claims. On August 11, 1866, Hopson and Brooks made application for another patent, which wasgmnted to them July 4, 1871, ror"an improvement in needles." The present suit is brought upon this patent. The specification is as follows: "The needlE\s for sewing-machines are formed with a shank that is of larger diameter than the needle itself. This enables the needles to be secured into the machine. In order to reduce the needle itself from the size of wire reqUired for the shank, various devices have been employed, such as milling.tools, or grinding-wheels, and also turning-tools, that reduce the wire to the size which the parts may be adjusted to produce; but; in consequence of the wear upon the tools. there is no reliability in the sizes of the needle blanks. Besides this, it is well known that a steel bar or wire is not entirely homogeneous; that the cOJJ?pl·ession in drljowing the wire .makes more dense than the core; hence the turnIng or milling removes the best portion of the metal, leaving the needle of an inferior quality. In order to Iba-nufacture our improved needles we make use of a compressing die, closed or pressed together rapidly around the steel wire as said wire or the dies are revolved. Thereby there is a series of corupressionsand a gradual extension of the steel, which brings the same down to the proper size for the needle. The machines which we prefer to use for this purpose are similar to those patented by us 9, }864. reissued December 12. 1865. and by us, as assignees, February 6, 1866. Needles made by our machine or method possess properties not heretofore found in seWing-machine needles, and are hence new and much more useful and durable than others heretofore made. '. The peeu)iar properties of our needleS may" be set fprth as follows:· The, needles are ofl a uniform density and size. They are free from flaws, hard specks, and inequalities, always exist"rng in steel that is turned or ground down from a drawn wire. They are very tough. and cannot be easily broken. They have asurface that is very dense and perfectly smooth, requiring no polishing by hand. They ean be ·grooved 'with uniformity, being themselves of a'regular size; and .the steel, :by'llhe compression, is more uniform, and the groovlng-too}s will wear much .longer thlttiin grooving ordinary needles. The needles' are not injured in
EXCELSIOR NEEDLE CO. 17. UNION NEEDLE CO.
the hardening and tempering. as less heat is l'equired to bring the needles to the required spring. hardness, or temper. ", The claim is as follows: "A sewing.machine needle P9saessing the peculiarities specified, and forming a new article After the expiration of the two. patents for the machines, the ants used such machines, or machines substantially like them, for manufacturing'swaged sewing-machine needles. Upon these facts, the patent for the needles, now owned by the complainant; must be held to be void. The real invention of Hopson and Brooks was a machine for swaging metal, and any novelty which exists in the articles made by that machine is the result of the functions of the machine. It is explicitly stated in the specification of the patent that the" needles 'made by our machine or method possess properties not heretofQre found in sewing-machine needles, and are hence new and heretofore made." The patmuch more useful and durable than ent is an attempt to appropriate a function of the machine, and thus to extend the monopoly of the invention beyond the term allowed by law. If successful, it would result in charging as infringers the defendants and all others who, at the expiration of the machine patent, were entitled to avail themselves of the invention, which had become public property. There was no invention in applying the means provided by the machine to the making of the needles or other articles for which the machine was adapted. Any'mechanic skilled in the art could do this as well as the inventors of the machine. The patent of 1866 is not deemed of any importance in this view. ThefiJ;'st covers the whole invention, so far as it relates to the product patent, and any change in the form of the dies, introduced after the first patent was obtained, was merely a,matter of mechanical adaptation, and not substantive invention. ' It does not aid the complainant's case to concede that Hopson and Brooks might ha'Ve claimed in their first patent both the apparatus and the product or article made byit. If they were the inventors of a new manufacture,--a needle whichwas not only commercially new, but new in the Sense ofthe patent law.:;-they might have claimed both.the machine and the product. according to the language of Mr. J ustice SWAYNE in Rubber Co. v. Goodyear, 9 Wall. 788. It is to be remarked,however, that in that the product of a process wns the subject of the patent, and not the product of a machine. The distinction between a patent for the product of a process and one for the product of a machine is pointed out in Corning v.Bv;rden, 15 How. 252, 268, by Mr. Justice (}RIER, as follows: "But the term 'process' is often usecl in a m9re vague sense, inwhicbit cannot bathe subject of a patent. Thus 'Ye say t.hat a board is undergoing the process of being planeq; grain,of being ground; iron, of being hammered orrolled. .Here the term is uiled subjectively or passively, as applied to the material upon, and not to the method or mode of producing that op.. eration; 'which is by mechanical means, or the use of a machine asdistingtiisbedfrom a process. In this use of the it represents the function of
not do so'; and, if the failure to do so was owing to mistake or inadvertthey should have resorted in due season to a reissue, to correct the patent. The decisions which adjudge that an inventor may have a patent for an invention described in the prior patent, but not claimed, when he h!ls not lost his rights by unreasonable delay, have no application to a case like this. Here the real invention was claimed in the prior patent) but the patentees now seek, by claiming another invention, to deprive the public of that which became theirs when the patent ex· pired. The improvements in the needles themselves all fall within the category of degree, and the invention was not the manufacture but the machine. Smith v. Nicho18,21 Wall. 112; W008ter v. CalhO'1Jlll, 11 Blatchf. 215. The bill is dismissed.
a machine, or theefiect prodqced by it on the material subjected to the action ()f the machine. But it is well settled that a man cannot have a for the function or abstract effect of Ii machine, but only for the machine which produces it." If patentees might havEl claimed the product originally, they did
WOODRUFF '11. CARR.
(Otrcuit Oourt, D. Minn88ota. October
PATENTS FOR INVENTIONS-BUCXI.ES-LETTE:BS PATENT No. 8,541-ANTICIPATION.
The second, third, and fourth claims of reissued letters patent No. 8,541, of January 14,1879, to Henry S. Woodruff for an "improvement in buckle's" for a buckle frame provided with a loose loop and having a rigid tongue projecting outward on the outer face of its forward cross-bar, and the combinatIOn of the frame, loop, and tongue. The improvement has for its object the relief of the tug at the point where the tongue enters it, and this is accomplished by the loop pinching the tug and holding it firmly to the frame when draught is applied. In the Cole buckle (lettets patent No. 69,181, of September 24, 1867, to E. Cole) the plate or cross-bar of the loop is broader than in the Woodruff, and the construction is different, but the service performed by it is substantially the same. In both buckles the loops are loose. Held, that the Woodruff patent was anticipated by the Cole patent.
In Equity. Offield, Towle & Phelps and John W. Sale, for complainant. P. lI. Gunckel, for defendant.
NELSON, J. This suit is brought by the complainant against the defendant Carr, charging an infringement of letters patent. reissue No. 8,541, dated January 14, 1879, for "improvement in buckles." The original letters patj3nt are dated January 9, 1872, and the object of the lnvention as stated by the patentee is "to relieve a trace, strap, or belt from the strain at the point where it is perforated for a buckle tongue." The defendant is manufacturing a buckle which is constructed upon the same principle as the complainant's buckle, and operates substantially