(01.rcuitOou7'4 D. Mallflachmetts..liovember 10.1891.)
Letters· patent Nil·. il;SUlld. .AugUilt 12, .1879, to tb,e Shaw Stocking Coxq.. pli.1iy, all assignee of Benjamin F. Shawj'f9r improvements in web-holding mechanism ',f9r!,kn,ittJng.mach.in.8ll>,:th"lI,CIRim,b6in g ,.il.mong other thingll; for we,b·holderll with "iiownwardly cll,rved taij-pieces," is not. infringed by a macbine in some respects similar, but baving web-bolders straill:ht tail-pieces. So SUB-AMENDING CUIlol-WAIVBR. ' '. When a broad claim Js.r,ejected ,b, tllepatent,ofllce because ,of anticipation by certain otherpatentB, and! thereupon tbe applicant amends his Ilpeci1lcation and '. )clalm,&nd accepts apai:.ent there,on, he waives the broad invention, and cannot afJ'er.wards, in an action for infrIngelDent, claim that bis invention was really made the anticipating, patei/,tli . -issued. w.ere ; . . . .· , ,I:' '
I+ederick P. Fish, for complamant·.
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PU8f/!}, .for defendant. 'L . .' ..,
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ThisbiUjJl equity-is :found,ed upon' the' .alleged infringement.of,lAtt,ers 'pllotent.No.. 218,4!30,:.granted August 12, 1879, to the asassigI),oo ,of Berijalnin;F.. Shaw, (ot improvements in UlEl':hanismfor ,For a number of yearlJ Shaw;was mgnged: in uctlqDd)f. knitting seamless a,J;ld his by several patents. The pat,. irI,. for apar:t. of this. and.relaws:to devices for ho)dillg. 4.own. the fabrio during tJil,eo.peration of the needles.. In the,old ciroq1a:r the. J:eqUisite tension. waa 'brought to bear on the Wl;}l:dlYnleanS weightlil hanging upon it, and these .answered the purposQlforplain tubulAr work. In,;the production Qf the heel ofa it.if! UeQeSS8ry to 'rul'Hll)lyapartof the needles'f "MIa the r,est,rewfl,in Under these ,conditions, the weights might on tbe side of the web where the needles at: rejlt"hut..theywoUld not produce the proper tension during the widening'llnd narrow41goperation on the side of the web which is being 'l'o:llleetthia substituted what he calls l' io. place, of the· weights; The web-holder is· made of a thin,.·a,t,strip>ofmetllltdl.nd it has. aturnedd.owo at its forward;·.end,i.ndan ovetbanging.hQOkor finger 00 its upper side. The tail-pief.l(ds, dpwnwardly'cu1'vedormade blunt, so that it may not pene,()f,hpld ihe web as it is moved A>ver the end of the tail, and through the;hqllowne:edle-bed ol'i ;cylinder.. A web-holdel' is. inserted between eaQh paler pf needles. always:remain in the rear tbeneed!tmj·;near.the..iUpperedge of the· web, where .the knitting takes press place, and the projecting fingers, co-operating with upon the edge of the web, and hold it down during the operation of knitting.
SBAW STOCXING CO. 11. PEARSON.
These web-holders hl1ve a forward and . back caused by lugs upon their under side engaging with a rotary cam, and they are fitted in radial grooves in an annular web-holder bed attached to the upper part of the needle-bed.. As the needles rise through the fabric, the web-holders move forward, their downwardly curved tail-pieces bearing upon the fabric, undthe web-holders continue to advance until fingers on the top engage with the edge of the web on the each side of the needle. By. this mellns also the loop held on the needle is drawn back away from the open or latch side of the needle, thus insuring that the needle shall carry its shank through the loop in its up;ward passage, instead of permitting it to slip off the latch side, as it' might if not so held back. As-the needle continues its upward movement through the loop, preparatory to taking the yarn for anew loop, it tends to lilt the fabric with it, owing to friction, but the overhanging fingers of the web-holders rest above the edge of the web on each side of the needle, and thus prevent it from being lifted up by the needle. About the time the needle has reached its descent,or before it begins to ascend, the web-holders are retracted or moved outward, so that they may be again mOl'ed inward to eugage with the web andeo-operate witb the needle. The specification declares that the invention has special referenceto a combination, and the elements of thecorabination are se.t forth in the claim of the patent, as follows: "In a circular knitting machine. a cylindrical. hollow.uDobstructed needlecylinder. adapted to permit the free passage down thr()ugh It of a web and a series of latched needles. a separate web-holdinitbed provided wi.th radial grooves. and a web-holder operating cam, combined with longitudinallyreciprocating web-holders placed and movable within the grooves of. the web-holder bed. the said web-holders being provided with points, g. and downwardly curved tail.pieces. h. adapted to remain always within and at the rear of the series of needles. and to prt'ss 81o(ainst, but not penetrate. the web 8S it is drawn over the said web·holdel's and out through the hollow· cylinder. the cam to. move the web-holders being shaped to optlrate as and for the purpose described." . This case turns upon the construction which should be 'given totbe claim,nud especially to the words, "downwardly curved as applied to the web-holder. It is important in this connection 'to aamine the file-wrapper and contents of the palent. In his first application Shaw claimed broadly the combination of a seriesof inliependently acting web-holders with a series of independently acting needles adapted to co-opemte together to knit the web, and hold itdqwn; also a series of web-holders notched to hold the web down, in combination with a. serieiJ of needles adapted to be actuated independently, and with a cam to retain the web-holders forward during the time that the needles riS& and fall adjacent to the web-hoMers. This application was rejected by 'by the the Patent Office on the ground thatthe invention was Burson and Nelson patent of November 30, 1875, the Hollen pat,ent.'of October 10, 1876, and the English patents granted to White, 1.1a:'16.
1$63, to Mellor, November 7, ,Shaw thereupon amended his specifiPJition and claims, but, the ,patent was again refused. After further amendments, the patent was, finally allowed in its present form. By proceedings Shaw waived the broad invention covered by the claims in his first application, and limited his invention tp the combination of elements found in the claim of the patent. I am aware that the complainant seeks to cut under to a great extent the prior art, as exhibited in thelile patents, by proving that Shaw made his invention in 1867, or 10 years before he filed his application. The difficulty with this p()siHon is that, having acquiesced in the decision of the Patent Office, and, obtaining his patent on that condition, it is now too late to try and broaden its scope by showing that his invention antedated some of the patents ,cited by the examiner. Whatever the date of the invention, itmust be with the limitations imposed by the Patent Office cO!1p.ition o(tOO gr&nt, or, in other words, it must be limited to the combination set .forth in the claim of the patent; and, so interpreted, I with the statement of complainant's expert, Mr. Livermore, that composing the claim of the Shaw. patent were old at the the, ,patent, and that the only new and patentable feature lies in construction of some of those elements." , the defepdant:s machine embody this comhination? '1he defendant uses a wllb-holderl;1a,ving a straight rounded at the end, but not downwardly curved. If the downwardly cU1'\red lfeature" of the 'shaiw :tail-piece is immaterial, so far as the successis concerned, SO by betllat court should conSIder the defendant's tmlof Shaw's, and so within the patent; but if it should. ,turn" out that this peculiar construction of the tail-piece was necessar,..tothepractical operation of the Shaw machine as organized, and wasso'regarded hy the inventor, then the absence of this feature in tlie'd'e,feq'daht'sweb-llOlder has a very important o'f'infringeIirent, especially in view of the scope of the Shaw patent as shown by the file-wrapper and contents. "TU(pWg, ito "the recm;d' in this case. we find in the affidavit of Henry J;>. mechanic who built,the first machine covering this inventiq:n :!loder: the direction ofShaw,) filed in the Patent Office in conntlction, with the Shaw application, the following language:
is appul'erit similarity in outline. the omission in the EngHshdevice'ofthat which in Mr. ShaW'S constitutes the difference between thllm (posltiGil and modes of operation being not considered) is of the utmost i'for, the drooping edge constituting what is called the' tail' of tbft"weil-bQ1ElIlI!ill indispensable tlil its use as a practical device for holding the of knitting."
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,To application:', 1, ' . ,' ":_ ", ,.' I.J
the s?licitors of in,.a to the commISsIOner of parents pendmg hIS
SHAW STOCKING CO. fI, PEARSON.
'"The particular construction,of tbe is, in practice, a matter of very great importance,- the perfect operation of the machi,ne largely depends upon it, and such novel web-holder and is certainly patentable."
Further, Hardy testifies in this case, and it is not denied, that the web-holder first tried in the Shaw machine had a straight tail-piece rounded at the end, ana that it did not work well because the end would penetrate the fabric, and sometimes tear a hole in it, and that, therefore, Shaw suggested to make the web-holders with a downwardly curved tail to keep the points from penetrating the web -and making torn work, and that by so doing, the machine worked first-rate. These facts explain why Shaw was so particular to state in the specification and claim of his patent that the be downw:ttdly curved. In Ws view, as demonstrated by actnal'experiment, the machine would not produce a merchantable product without this specific feature, and was 'ilierefore:worthless. It results from this that Sbaw'hasmade the peculiady tail-piece a material' and 'necessary of the com" binationclaim of his patent.' , , , ' ,' ' Butthe"question may' be asked, how does iV'happen that,if Shaw could fio1l l produce satisfMtory work on atnachine having a web-holder it' on hismacnine? -with a straight tail-piece>, the defendant answeriles, 1 thinkl in'the somewhat different organization of the two machines. In the defendant's maehine:the call1''is so constructed: that the' web.:hbldersare backJromthe'kriitting bperationjustas ;the needles begin to descend, and consequently the web hangs loosely or is not drawn down taut in front of the web-holder as it advances on the rising of the needle, and so the end of the tail-piece will push the web away rather than penetrate it. In the Shaw machine tho web-holder remains in its advanced position upon the web, thereby keeping it taut, until the needle has about completed its descent, when the holder is withdrawn only to be immediately advanced again as the needle begins to rise. The degree of the e1'ect produced upon the looseness of the web at the end of the advancing tail-piece, owing to this difference be-, tween the two machines, I do not know, because the complainant has not introduced in evidence any model of the Shaw machine; but, whatever this difference may be, an inspection of the working model of the defendant's machine in evidence shows that the fabric hangs loosely in front of the end of the tail of the advancing web-holder, and that, therefore, there is little danger from penetration; and this position is fortified by the successful operation in the presence of the court of one of defendant's machines, in which a portion of the tail-pieces have a round end, another portion a square end, and another portion a beveled end. It is urged by the complainant that the Shaw tail-piece is narrow, while that used in defendant's machine is broader, and that consequently one would penetrate the web while the other would not. There may be some truth in this, but it only goes to show another difference in the organization and construction of the two machines. Upon the descent of the needle in the Shaw machine, as the web-holders are still in their
advanced position, the IOq}>' camedby the needle is drawnacrosa the wider:paftt"-uf 'the 'web-holder or back' of the overhanging finger; and therefot'e:'tne loop would be too long except for coarse work,tltlless the narrowiwhile in tbe,defendant's machine, o1Ving.to the earlier retraction of the web-holder, the loop on the descending needle is drawn ,Qver the, tail-piece. and ,this, ,enables the. defendant to :use ,a ,broader injQr,iously affecting the size of the loop. I UO'J;lot think there is'$ooy infringement in thiscase,-FlirBt, hecause the downwll<rdly curved tail-piece of tbfl web·hollier is:qlade and fundamental part of the combinatiQn, described in the first claim of the S.haw :pntent·. without whioh the machine would be praptically inoperativej:and"econd, because:ithedefendant has so changed. the organization of some, ,the parts in q.a machine as to ,permit of the successful working of a straight As to tbe.aecond defeos8,of public USe, I need only say. that, in my opinion. it. il!l nntmade Qntuponthe evidence, The Shaw knittingmachine, made in 1877, was never put into public use, oritsproducts sold, that .defective. It was not until about 10 years later that a.. :working nlllchint. :was completed, and all previous efforts were exlong delay largely caused by the pecuniary beforeth,e, machine was it does J10t appeafitbat he ever ahandoned the invention·.· Upon the ground of non-infringeD1eJ;lt, 809: lor· the re&$Qns given,. I must dismiss the bill.
DR. SaVAGE PIIYSICAL
(Circuit Qourt. B.'.D. Nm»
Novembln'NT,1891.) , r :' .
Where a bill for infrinlifinga pateh1. for an iniJlrovement iilwalking tracks for gymnasiums propounds mterrogatories as to whether defendant is using. a track ot a particular construction, and, if not, of what, colllltr.llctJ.on, they must be answered by stating the facts, and a general denial jOf-. infriilgeD1ent is insuft1cient.
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In Equity. Bill by William L. Coop and others against the Dr. SavDevelQpment Institute,. Limited, for of a ,patent. " On,exceptions to' answer. Exceptionll .' . F'cruif,ir It Pawler and OM:rle8 N.!rud8on, for plaintifl8. ' Kiddle, " , .
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.,this ,s#it lshr9Qght upon
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Of a'·pii.r:ticular coristniCti,:)[i,and, .if any
'whatother, cdnstructiQn,were anrlexed. to, the
hemada"and of that, of t9 be An,.
ally,without otherwise'aoswenng'the interrogatories, and the answerjs for this laQk., r he!1 rd .,1'he popproved on hellrd by J udge MAN'. ' O¢p v 47 Fed: ReP. 899:'. The deni$l.ofipfringement 'is a' cOllcI sion, and'not an of factij ;ftom Whtch'it is ' Thb may foilow factawhen'.giveIl, whethei'it 'd()es riot in tbecas'e. The plaintiffs eiiiitledJo the andn9t to' b.Y'the wI1chiSion, or comeit.'· .''', , , " . , ' ,'" . , ' '.,
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THE PROGRESBO. STREET
et al. "'.
(Dfstrk:t Ccrunt, E. D. Pennsylvania. September 21, 1891.)
WITNESSES-FEES AND MILEAGE IN ADMIRALTY CASES.
In admiralty causes in the eastern district of Pennsylvania, mUeage will not be allowed to witnessea from beyond the district, as to 100 miles of the distance.
AND MILEAGE 011' PARTY.
A party is not entitled to either witnesa fees or mileage when bill presence has Dot been required by the opposite party.