BOYER fl. SCHULT1: BELTING 00.
hides, .. and 8ay8 that it is necessary to make use of a preparation substantially as described, in order to render raw hide fit for use. The olaim was amended 80 as to conform to above on suggestion from the patent-office that a claim for preparing raw hides by the fulling and bendiJig operation and the preserving mixture was not patentable. HeW, that the claim must be limited to the whole process described, and the patent was not infringed by a variation in the method of m.aking belting leather; BS..l. by liming, instead of sweating, green hides. Following RO'j/er v. Ooupe, 88 ,tt'ed. Rep. 113. ,
plainant. O. H. Krum, for defendants.
Broadhead &: HaeuB8ler,Wm. M. Ecdes, and M. A. Wheaton,for com-
On bilHor infringement of patent.
THAYER, of. The testimony in this case does not sustain the charge of infringement, unless the claIm of Royer's patent, No. 149.954, be construed'as covering broadly the method of making belting leather out of prepared raw hide, by stuffing the hide, by means of a fulling-machine, with a mixture composed of tallow, wood-tar, and resin. In the case of Royer v. Coupe, 38 Fed. Rep. 113, it was held that the claim did not'admit of such a liberal interpretation; that, if the claim was given such a broad scope, the patent would necessarily fall in view of the prior state of the art of tanning, a.nd hence that the claim in question must be limited to the entire process described in the specification, consisting of (8) successive steps, whereby raw or green hides are first' denuded of their hair' by means of a "sweating process," then "dried hard," and subsequently stuffed in a fulling-machine, with a preserving mixture consisting of tallow, wood-tar, and resin. In that case it was held that the patent was not infringed, unless the process was used in its entirety; and, inasmuch as the defendant in that case removed the hair from green hides by a liming process, instead of by sweating, the bill was dismissed. In the case at the testimollyshows that the sweating process mentioned in the Royer patent is not used by the defendants. It also appears that by the defendants' method ,of treatment the hides are "limed" and ·bated," and that they are alsopartially tanned. In each of these respects defendants' process varies from the Royer process, and the patent is not infringed, unless this court gives a broader scope to the claim than was accorded to it in Royer Cottpe. This the court must decline-to do. The epecification and claim of Royer's patent is so worded, as'\vas well shown by Judge,CoLT, as to leave it ina great measure uncertain whether the patentee intended to claim' the entire process described, of removing the hair from ,hides by sweating, llnd drying them,and then stuffing them, by means of a fulling-machine, with a preserving mixture, or whether he intended to claim only those steps of the process by whichapllrticular preserving mixture was worked into the fiber of prepared raw hide, by means of a fulling-machine. The doubt which arises from the language of the specification as to the proper construction of the claim. is in itself sufficient to warrant the court in adopting the conafter full consideration, in the first circuit, struction 'on. the 'ground of comity" 'But, in addition-to that view of themattElr,
i1i'is proper to add that Judge COLT states as one of the grounds of his iiecision, that the file-wrapper in the pl;l.tent-office shows that when Royer's application for a patent was pending, the patentee modified his original which as drawn, was so worded as to cover the stuffing pro<less with a preserving mixture, and cast the claim in its present form solely in view of a communication from the patent-office to the effect that the whole method described in his specification of making belting leather out of green hides might be patentable, whereas that portion of the process which consisted merely in lituffing prepared raw hide with a preserving mixture such as was described, by means of a fulling-ma<lhine, was not patentable. The fact thus adverted to, that Royer cast his claim in its present form in compliance with a suggestion from the patent-office that the whole process by him described was perhaps patentable, while a part of it was not, ought to settle the construction of the claim,no matter what view might otherwise be taken of the same. Admitting the rule to be that a claim in a patent is to be construed with 'reference to the specification, yet, when the claim, considered with referto the specification, is ambiguous, special significance should be attached to correspondence between the patentee and the officials of the patent-office, showing how the latter construed it, ,and what was the extent of the monopoly intended to be granted. This court accordingly that Royer's adopts the construction given in Royer v. Coupe, claim must be limited to the whole process in his specification, and that the patent is not infringed by one who varies the method of green hides making belting leather in a material respect, as by to remove the hair, in place of sweating them. The bill is accordingly dismissed. .
RoYER 'V. SCHULTZ BELTING
Co. 6t ale
(Otrcu,it Oourt,E. D. Mi880tlll'f., E. D. Ootober 26,1889.)
PATENTS FOlt INVENTIONS-BELT-SHIFTING DBVICB.
The claim of certain letters-patent granted to Herman Royer was, "in combination with the drum of a raw-hide fulling-machine operating to twist the leather alternately in one direction and the other,'a shifting device for the purpose of making the operationl'utomatio and continuous." The belt-shifting device had long before been used in with the roller of a washing-machine for the same purpose, and could obViously be used in oombination with many maohines, to impart revetlse motion. It appeared that it was first applied to the patentee's machine by a meohanic, who was not shown to have worked under the patentee's direction. Hew.. that the combination was not patentable, and, if it was, that the patentee was not a sole inventor. Following ROYfJr v. Manu!acturling 00., 20 Fed. Rep. 853.
In Equity. On bill forinfringement of patents. Broadhead & Haeu88ler, WiUiam M. Eccles, and M. plainant. Oh&Jter H. Krum. for defendants.
Wheaton, for com-
THAYER,.J. The patent involved in this case was held to be invalid in the case of Royer v. Manufacturing G>., 20 Fed. Rep. 858. In the case
.,. SCHULTZ BEL'l'I,NG CQ.
at bar it is sbenuclusly insisted that thelearned,judgewho decided. thai,. the fact that the patent in, question was for a combina- I case, tion of a belt-shifting deviCe, with the' drum of a raw-hide fulling-maupon the theory.that chine, and that he erroneously decided the patent only covered the shifting device,. and was void because device wa$ old, or because the patentee had merely applied such old device to a new use. There is some language in the decision that no doubt furnishes ground for such contention, but in view of all that was said it appears, I think, that the. court in fact held the patent to be void, on the ground that the combination described and claimed was not a patentable combination, in view of state of the art; and in that view I concur. " The single claim contained in this patent is no doubt a combination claim. 'II claim," says the patentee, "in combination with the drum ofa raw-hide fulling-machine operating to twist the leather alternately in one direction and the other, a shifting device. for the purpose9f making the operation automatic and'continuous, substantially as des9ribed." In the case at bar the testimony shows without contradiction that long' prior to the tl}at the patentee claims to have Combined the beltshifting device with the drum of a fulling-machine, it had been used in combination with the roller of a washing-machine, thatwas designed to t11rn first in 011e direction and then in the other r 'for the purpose of makingthat operation automatic. The same proof seems to have been tendered in the case above cited, decided by Judge DRUMMOND. The beltshifting device in question isnothing more than a device to shift a driving-belt from one pulley to another, the two pulleys being located side by side or in close proximit¥ to each other, and being keyed to different driving-shafts. is communicated to the belt-shifter by a belt passing over a pulley keyed to It revolving shaft, and, when thus set in motion, it operates automatically to push the drivinK-belt of a machine from one pulley to another by' a species of mechanism not necessary to be described, because not involved in this case; and in this manner, by giving the driving-shafts to which the pulleys fire keyed a bearing on opposite sides of a wheel or roller to be turned, its motion is reversed at intervals; From the brief description here giveh it is obvious, that the belt-RhiftinK device in question is susceptible of being used in combination with a great many mac}lines, for the purpose of impartinK reverse m'otion; and it is admitted to be an old device.. Complainant claims to have placed it in combination with the drwn of a fullillg-machine., to make it revolve in diflerent·directions at intervals, 'and upon this claim his patent is based. Prior to that time, however, Peter F. Clerc combined it with the roller of a to reVerse the motion of the roller periodically; and it goes without saying that it might be Gombined with the driving wheel or shaft of any. machine In. such manner as to reverse its motion automatically, and that' each particular combination could be claimed as if complainant's patent yalid. The application or adaptation ofthe device toa chine appears to the court to have invo.lved an exercise of ordiV.40F. no. 3-11 . , . . ,.
. fact . the .device was old,aQd had placed It m combmatIOn wIth the of a for the, purpose of making its action automatiq. ..This view iftstrongly,et\forced by the testimony showing how patentable,' c0jnbination happened t(). be made. It appears tbQ.t Royer, the referred to ,C!erc asa person who knew how to lIS the device was tben, termed; he appli,ed'to to make a 'reverser for his fulling-ma- ' chine, and gave hilll a plan of the saine, and that Clerc accordingly made one adap,ted, to qpestion, and that it' worked well the first time it was ti'ied,and same device that Clerc had previ0llsly ,applied to a washing-IJ;lachine. , It does not appear thllt. Royer' gll:ve, Clerc, any directioIls/as, to ,the cOt;lstruction of the reverser, pr· mode of to a fulling-machine,.or that the latter 'worked under Royer'!! supervision.' Clercwlls applied to as a mechanic whokhew how to understood how to adap'fthem to mac:ihines of a tl)" . for the qf.,imparting reverse ,action automattn the light of thistestimmiy it appears to theco,utt that the combination of the belt-shiiter with the drumo! a ,fulling-machine was a patentable combination, and it was, the allegedpatenteejs but tha:t Inventor. meItJ1er event be dIsmIssed; ,and It 1S so " . ," '
'MC:BRIDE:,..G:R.A:Nb DEToUR PLOW Co. et al. ,:' '. . '" ; ."1
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A corporation of' another state; defendant in a suit hi' a federal conrtwhichhas +I'; jurisdiction i)f thesubjedt-matllel'Jbyappsal.'1ng, filingaDswer, and taking: testi',' .'W3ives to, !l.u h,ear!ng that it C&Ij. P6aul\d ill the cij"t.rictof
, its'rEisidence only. .
II. . ".,: Letters paoob1lNo·.284,OO6,issned'to Jolin· H.: McBrIde 'fora "riding att&ehmeni '. ,: fo,t:PIOWSll.,w. W: r a comb'nation 9 the driver 0.t., plowiiwhile seateq.,on it, dth !,nd depth of fUiTow. It aPlleared on bi 'for infringement , thereof' palients hiMl been; graillted for SImilar IiJ1ventions, but it Wl'S not tllat, complainant's oombioatioJl"was nqtnew. Held, that the prima farM case of valiq,it:f of the patent arising from· its issue wa$ ,Dot overcome. '
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iii. notlilfii. Eidb,t plows manufactured patent '! liI'O. S53.2Si. ilfllqqd;to 'Charles S. 23, 1886, which attains tl1e 8ame .. objects\ different of the parts, as complainan1;'s »atent does . f "'not applY to parts, they having been preViously used. '
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of patent. c<;>mplalb!lnt. fdl"de1entJarits'. ,. ,