NEW DEPARTykEBELL co. V; BEVIN BROS. MANUF'G CO.
NEW DEPARTURE BELL CO. v. BEVIN· B.ROS. MANUF'G CO. (Circuit Court, D. Connecticut. November 16, 1894.)
STRIKER-LIMITATION OF CLAIM.
SAME-CONSTUUCTIO:'i OF CLAIM.
Such claim is infringed by a device which, though not identical in structure, contains all the elements claimed, and operates to perform the same function in substantially the same way, the lllleged differences of operation being merely such colorable and formal ones as result from the use of mechanical equivalents. National Typographic Co. v. New York TYP\lgraph Co., 46 Fed. 114.
The Rockwell patent, No. 471,983, for a bell having a striker arm with free rotary movement in eitha- direction, is limited by the previous art to the precise construction described and claimed, and is not infringed by a device which cannot be rotated ill either direction at will. Where an· inventor divides up his invention so as to present certain eiaments in different patents, he is thereby "limited W a more strict and narrow construction than might otherwise have been necessary" (Electrical Accumulator Co. v. Brush Electric Co., 2 C. C.IA. 682, 695, 52 ll'ed. 130), and the construction of the patents must be in conformity with the selfimposed limitations which are contained in the claims (Groth v. Supply Co., 9 C. C. A. 507, 61 Fed. 284, 287; Judd v. Fowler, 10 C. C. A. 100. 61 Fed. 821). A bill of complaint failed to allege any sale of the infringing goods, or that the infringed goods were marked "Patented," or that the defendant had notice that they were patented, but the evidence showed the sale of the infringing goods. An amendment had been offered before the hearing, containing an averment of the sale, the answer containing no averment of, want of knowledge, and it appeared that the defendant had actual knowledge of the patents and notice of the claim of infringement. Held. that the bill may be amended in accordance with these facts after issue tried and infringement declared.
,li. SAME-DIVISIO:'i 01<' INVEN'fIONS-CONSTUUCTIOK.
This was a bill in equity by the New Departure Bell Company .against the Bevin Bros. Manufacturing Company to l'estl'ain the infringement of certain letters patent, and for an accounting. Newell & Jennings, for complainant. C. L. Burdett, for defendant. TOWNSEND, District Judge. This is a bill in equity for an injunction' and accounting by reason of the alleged infringement of patents 456,062, dated July 14, I8n, and Nos. 471,982 and
March 29, 1892, and all granted to E. D. Rockwell, the 'manager of and OBsignor to the complainant corporation, all of said being for improvements in bells. They relate specifically to the 'striking mechanism in the class of bells which give forth a continuous ring, thus producing a sound resembling that of an bell. The defendant's bell is adapted for use as an alarm on bicycles. The defenses interposed are wantof patentability and denial of infringement. single .claim of patent No. 456,062 is as follows:
having aperture for loosely pivoting it to a rotating hand, and various striking points or surfaces around its exterior, and adapted to be rotated on its pivot by each blow to bring to bear a new striking suras set fortp." .
It appeaI'$ from thespeciftcation, that the object of,the patentee was' to produce a more effective and more durable device for gongs and alarm bells. He states that the objection to previous devices "has been that the striker would become by constant use worn in that, the .bell wOuld ,either refuse to sound at all or sound and that object of. his invention is. "to produce a striker. which, on account if its peculiar construction, ,will wear evenly, and for that reason obviate the difficulty named." The patentee further says:
belongs to thatcl;l;lss of bens in which the strikers are loosely carried,;OlIarevolving part, an4 are thrown against the side of the adjacent gong by the revolutioJl of the part to which they are attached."
The complainant's exhibit "Complainant's Bicycle Bell" comprises a circular base plate, a raised stationary plate, a gong provided with a. lug, and a centrally mounted revolving arm or striker bar, with a gear adapted to receive rotary motion from a pinion with This afIIl extends nearly across the diameter of which it the gong, and carries metal strikers loosely held in. place by pivots extending vertically through central apertures in said strikers. In said bell the striker arm is centrally mounted, and is connected with a lever and spring adapted to rotate it in opposite directions. But in patent No. 456,062 the arrangement shown is that of a striker arm supported at one side of the center, and a gong without a lug, and the means by which rotary motion is imparted to said striker arm through the gearing is not stated. The evidence as to the state of the art prior to the date of this patent shows several patents for devices whicll produced a similar sound in such bells. Patent No. 365,241, granted to Comstock & Buxton, June 21, 1887, shows a device wherein a pivoted hammer strikes the gong. And in patent No. 386,632, granted to Victor Germain, July 24, 1888, a similar hammer strikes a lug on the side of the gong. Patent No. 428,198, granted to Allen & Goulden, May 20, 1890, shows a hammer loosely pivoted upon the striker arm so as to permit a recoil upon striking the gong. In these structures there is no provision 'wbereby the hammer or striker is caused instantly both to rebound and rotate on its pivot so as, to present a new striking surface. It may be assumed, so far as the evidence in this case shows, that
NEW DEPARTURE BELL CO. 'V. BEVIN BROS. MANUF'G CO.
this result is new and useful and involved invention. entee further says, in his specification, as follows:
"It is necessary for the perfect operation of my machine to have the strikers thrown by centrifugal force against the inside of the gong and to lly back instantly. A space should therefore be provided between the pivot pin of the striker .and the arbor, within which the striker may retreat out of the way ot the gong."
The defendant claims that this does not recite an advantage or object of the invention, but a necessity, which is a limitation or restriction, and without which the strikers would not be whirled upon their pivots; and that such rebounding stroke was not new, and was not claimed as new, in the art. Complainant strenuously contends that this rebound was one of the features of the invention, and that it was new in the art. He claims that the distinction between the operation of prior devices and that of the patent in suit is that the former strike a dragging and glancing blow like that of a flail, while in the latter the blow is a direct one, with an instant rebound. This is true as to the pivoted hammers of the Comstock & Buxton and Germain patents, but not as to the said Allen & Goulden patent, in which the hammer is so loosely riveted as to permit the striker to rebound upon coming in contact with the gong. Another patent,-No. 174,754,-granted March 14, 1876, to Allen & Lathrop, shows said feature of blow and rebound, and may be fairly claimed to also embody in its operation the rotation upon a pivot, Whereby new striking surfaces are presented. But, as neither the Allen & Goulden nor the Allen & Lathrop bell belongs to the cla.ss under consideration, or embodies the mechanism herein, and as the device of complainant is an improvement thereon, neither of them anticipates this patent. The striker of defendant is held in place on a revoluble striker bar by pins extending horizontally from opposite sides of the striker itself, and which move in spaces cut in the upturned edges of the striker bar. There are no central apertures in the strikers, and no means for adapting them to be rotated on their pivots. Centrifugal force causes the strikers to slide out on the striker arm. The complainant claims that this device was ingeniously contrived to secure the benefit of the Rockwell invention by the use of a mechanical equivalent. It will be apparent upon inspection of the exhibit of defendant's and is practically admitted by the expert for complainant, that whenever, by reason of centrifugal force, the striker is at the extreme limit of its outward movement, it will ordinarily present the same point on its surface to the gong, and that it cannot, by reason of its construction, revolve upon its pivot. The language of the specification and claim shows that the chief object of the patentee was to secure different striking surfaces, so as to avoid the wear on the striker. This result is not accomplished by defendant'8 device. The question, then, arises whether the claim of this patent should be allowed such broad construction as to cover the means by which the direct blow rather than the glancing blow is produced. There is nothing in the language of the claim itself which can refer to this operation, except the words "substantially as set forth."
Tbe evfCl'enC(fshows that the so-oalledf ·"electdcnl effect" in :such bells was not new. If the patentee believed tllat' such- pri6rstrikers werendef#otiveby reason' of glancing! or dragging. e11oots, and that he"ha'Abiventeda means to obviate·is'lJ.chdefects,orthat!he hall, produced a ,WOUld otli:emae b'ave been possible, or the saine result· by' a 'new striking device, liluch result, and means w0.!1ld naturally have heen .referred 'and distinctly It Is,t'tUe that the to uses of his invention, whether speeilftcltlfy'claimed bthim or nbt: . Manufacturing CO; v. Robert· son; 904, Iarid cases citeG'.. II.'· But in. the' construction of tlle'jj!lfen.t:,it is imp()rta,nt,t6 deter:tnLne what o1:>jecl the inventor lle sought specification cert;ainly indicates' that 'the patentee, whlfu l lJ5!e Proposed to produce a more effective and> more durable R$stateq by hi;m, "that the striker woultFbeeome, : use, worn in places; 8oth!!t the bell would,eiltherrefuse to "El'ound at alJ, or sound imperfectly,". and that obviltte'ltby a'stIiker operated supstantially as '.· · In\lsmuch·as:looselypi>fofed.;bell strikers: are not new, the pateri'teetimst be lim.ited to the 'construction' claimed' by him. the al:ready suggested,if he intended toemnra¥ an old result, natp,eIY,an electrical sop-na, indicated'w:hat was the new it;A,hammeror Striker which shOtileJ HYhack instf!.D,tly:'was old iinthe art. The, patentee in his speciftcatibhrefei's to the class as old, .statelifthat the objection, which he proposed to obviate was sound byreasori,of the 'wear of the striker in particular places"a:IJd confines hi,mself, in this claim, to a specific construction wherebt,ai striker, ha.ving a central aperture, was. adapted to be so rotated on its pivot, by each blow,as to bring to bear a new striking-surface; Inasmuch as the striker of defendant's device has not rotate, and does not by each blow bring anewstrildng surface, it does not embody the inven· tion cla;im,ed in said patent, and is not an infringement thereof. Manufacturing 00. v. Weeks,.9 C. C. 555, 61 Fed. 405. It is:ne'ttclaimed that defendant has, infringed the second claim of complaihfl,nt's patent No. 471,982, Said claim is as follows: "The cOlnb'tnatIon, wIth a base plate, of a revolublestriker bar, spring.
I I I I
actuated fil onE! 'direction, a lever operatively connected therewith, and adapted to l'otatethe striker bar In opposition to the force of the spring, and a gong, substantially: as set forth."
The gist bf!t:Iie invention ctaimedin this case is a combination of base' plate; i striker bar,'leYer, spritig, and gong, so related to each 'othel'as'to -Upemte in'a' 'certain way, and to secure 11 certain result. These e1emen'tswould"manifestly not produce the desired result without othel' mechanism for rotlitingthe striker bar. Such com· bi!ia.tion by thepatentea'to be especially designed and , adapted f6rablcycle bell. A gear-ed:pivoted level'.tsconnected with a spring' and oovoluble striker, and extends beyond the base plate,
NEW DEPARTURE BELL
'lI; BKVIN BROS.
so as to be operated by the thumb or finger of the bicycle rider. In the operation of this bell the pressure upon the thumb piece causes the striker arm to reTolve in one directi1n, and, when the pressure is relaxed, the spring causes it to revolve in the opposite direction. The defendant has introduced a mass of exhibits in support of the claim of anticipation. Severai of the patents, especially those of Kirtner,Serrell, Allen & I.Jathrop, Eddy & Nichols, and the exhibit "Starr Bros. Bell of March, 1890," have no relevancy in support of this defense. The Comstock & Buxton, Germain,. and the second Allen & Goulden patents, contain some of the elements of the claimed combination, but no one of them embraces the same organization of elements, or shows the same mod,e of operation as that covered by the claim of the patent in suit The patent of Allen & Goulden of 1890 is the only device which' has a spring for driving the bar in the opposite direction. None of the patents, except that to Serrel}, show devices adapted for use on bicycles. SOIDP of them are designed to be turned by the thumb and fingers, others by pulling upon a wire, neither of which operations would be practicable in the case of a rider upon a bicycle. The device which most nearly resembles that of complainant is British patent No. 2,425, granted to Alfred Bennett, June 22,1877, for a call bell. This patent shows a revoluble striker bar, spring actuated in one direotion, and a lever connected with a horizontally movable rod. These elements are so differently combined and operated, and are adapted to such different uses and purposes, and are so incapable of lIse in connection with a bicycle bell, that the combination does not anticipate said patent. It falls within the rule that where a device is neither intended nor adapted nor actually used for the performance of certain functions, it is not sufficient to constitute anticipation that it might be so modified aI! to accomplish such function. Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ct 825; Walk. Pat. p. 54. "If an old device or process be put to a new use, which is Dot analogous to the old one, and the adaptation of such process to the new use is of such a character as to require the exercise of inventive skill to produce it, such new use will not be denied the merit of patentability." Ansonia Brass & Copper Co. v. Electrical Supply Co., 144 U. S. 11, 12 Sup. Ct. 601. The great num· bel' of patents introduced into this case, all issued since the British patent, shows the amount of inventive skill which has been brought to bear upon this class of inventions. If the changes necessary to adapt this call bell to a bicycle bell were such as would occur to the ordinary mechanic skilled in the art, it would seem as though it must have occurred to some one during the 14 years of the life of said patent. A comparison of the bell with the Bros. bell of March, 1890," and the "Bevin Bros. Manufacturing Company's bicycle bell of December 9, 1890," previously manufactured by defendant, shows how crude and imperfect were the latest devices of the prior art, and furnishes additional evidence in support of the claim of patentable novelty and of utility, which latter claim is abundantly established by undisputed evidence. This device of complainant does not belong to the cUrss referred to in :Mill eo: v. Walker, 138 U. S. 124, 11 Sup. Ct. 292, and in Duel' v. Lock yo.,. 149 U. S. 2161,
the,patentee, by the exercise of the skill of has produc,eda better than these which preceded i:/; .or has, by caflJi,ng forward· original conceptions, produced a greater degreeof.lmPfQvement; nor does it belong to,the class referred to in Knappv. YQrss, 150 U. S. 221, 14 Sup. Ct.8I, and cases therecited,and in Trimmer Co. v. Stevens, 137 U. S., at page 433, and U Ct., at page 150, where the demand for new devices, by reaapn Qfthe developmeniliofa certain art or manufacture,has been met by the adaptation of old and well-known principles'and devices of the to a new use. 'l'he mass of evidence offered shows thaMhe desired results have been accomplished, futile attempts on the part of others, by a device whitlU',iiQp«)n defendant's own showing, is only anticipated by the e!'trlie!rtpf· all the Bennett British patent of 1877 for a door. bell. Under suchcireumstances the courts not inclined narrow construction to thp. patent as will be fatal to it. ¥itnUfacturing Co. v. Adams, 151 ,U. S. 139,144, 14 Sup. Ct. 295; Millevy; ManUfacturing Co., 151 U.S. 186, 14 Sup. Ct. 310; Reece :auttonrHQlelfach. Co. v. Globe Button-Hole Mach. Co., 10 C. C. A. Fed. 958, 962; Smead Warming & Ventilating Co. v. Fuller & Warren:Oo., 6 C. C. A.481, 485, 57 Fed. 626. Even if complainant's Pl:!-tent should be .limited to the construction shown, including the other devices, and as applied to a bicycle bell, it is infringed by defendant. The ·defendant's device embodies all the elements ,of the combination covered by the second claim of said patent. It is true that in the patent in suit the base plate is stationary, w.hilei in the defendant's device it is caused to rotate, and that the levers are differently arranged in the two devices. 'But in each case the different parts operate to perform the same functions in substantially the same way, and the alleged differences of operation are merely such colorable andforinal ones as result from the use of mechanical equivalents. National Typographic Co. v. New York Typograph Co., 46 Fed. 114. The single claim of patent No. 471,933 is as follows:
Ot. 850, where
"In bell mech:;tn,lsm, the combination, with a frame and gong and lug upon the gong, of a centrally pivoted pinion loosely mounted on a central post on the frame, and. having an arm upon one side, strikers upon the arm, and mechanism for communicating motion toft through the pinion, substantially as set forth."
The object of the invention was "to produce an improved bell that ean be operated without the use of springs ()f any kind, and can be caused to emit a continuous ringing sound resembling that of an electric bell." Complainant's exhibit "Complainant's Door Bell," constructed in accordance with the specifications of said patent, shows a knob with a square shank secured within an escutcheon on the outside of an object, such as a door, and connected with a spindle on the inside of such door. Upon this spindle is a cogwheel, by which: motion is communicated to a centrally mounted revoluble striker arm carrying loosely pivoted strikers. There is also a gong provided with a lug. The device may be operated in either direction by a turn of the knob. It will be seen that this construction
BROS. MANUF'G 00.
shows the loosely pivoted strikers claimed in patent No. 456,062, and the centrally mounted revoluble striker arm described, but not claimed, in patent No. 471,982, and substitutes, for the lever and spring therein claimed, mechanism which dispenses with said spring device. Similar mechanism, similarly operated, is shown in patent No. 460,347, granted to Allen & Goulden, April 14, 1891, for door bells. The Bennett patent for door bells, already considered, shows such a centrally mounted revoluble striker arm. The spring, however, in the Bennett device, prevents its being operated in either direction at will. The striker arm of the 'said Allen & Goulden patent may be revolved in either direction at will, but it is not centrally mounted. The state of the art, therefore, requires that the patentee be limited to the precise construction described and claimed, and which includes the free rotary movement of the striker arm in either direction, and the mechanism for communicating such motion to the striker through the pinion. The defendant's device cannot be rotated in either direction at Will; it is only adapted to bicycle bells; it is operated by means of a lever and spring device copied from that claimed in patent No. 471,982; and, except for its adaptation to a bicycle bell by the infringement of 471,982, it more nearly resembles the Bennett device than that of complainant. Patent No. 471,983 is intended for and is adapted to stationary bells to be used on doors. It is specially designed so as to dispense with the necessity of using the device claimed in No. 471,982. Westinghouse v. Air-Brake Co., 59 Fed. 581,607. Various suggestions are made in support of the claim of novelty in the centrally pivoted swinging arm. Thus it is said that the arm must extend almost across the inside of the gong, and be adapted to swing around its entire diameter. But the Bennett patent shows the arm swinging around the entire diameter of the gong, and it surely would not require invention to duplicate said arm by extending it in the same way on the opposite side. The Bennett strikers, it is true, are different, but the specific striker described in this patent is not, and could not be, therein claimed, because it had been already described and claimed in 456,062. The fact that the arms are differently mounted does not affect the practical identity in construction and similarity in function and operation. The conclusion reached from these considerations is that the defendant has not infringed patent No. 471,983. It sufficiently appears that Rockwell was the first inventor of valuable improvements in bell mechanism described in the patents in suit. That his device is useful is admitted; that it marked a decided advance in the art is proved. And it may be fairly assumed that a former employe of complainant,-Hathaway,-having acquired a knowledge of the inventions covered by complainant's pat· ents, has inequitably attempted to appropriate them for the benefit of defendant. But the determination of the questions involved in the interpretation of the specifications and claims of the patents in suit depends upon settled principles of law. The public has an interest not merely in the result of this litigation, but it has a right
inventor/makes a geneJ;i<: invention, and!11so. subordinate the. whole series in a set of contemporaneous appUcatfons, the patentee mtist not be enabled, by an ingenious use of general terms,to enlarg.e the boUndaries of each mvention to extend each into the bord$'$; ando9;train a series ot overlapping patents."
shaH by,unittumlprinciples.The inventions covered by said patents em· body t\W:r(lbination whil.}h comprises certain new devices and certain old in novel,eombinations, litnd adapted to new purposes. has,spdivided upllis invention as to present only of tb,e combination ·ipeach patent, and is therefore lim,ite4to r a more strict and narrow' construction than might other:hayebeeJ1,necessary., As was said by the circuit court of appeaJ§ in..th.e ' Electrical "-:ccum,ulator Co. v. Brush Electric CO·'lf·Q· 9"A;. 68.. ;Fed. 130 j I, . .'
unmindtnlbf the prineiplealready refenred to and applied 'in the consideratitltl. 471,982, upon tlie assumption thattheinvention of/the patentee, isdn a certain sense of: a primary character,: and therefore the claims of. the patent should have a liberW'C0Dstruction."This just principle is one that is well recognized,butanotherprinciple is at the present stage of the patent law of equid force, which is that the construction of the patent must be in conformity with the' which are contained in the 6111.ims." Groth v. Supply Co:.j9 C. C. A:507, 61 Fed. 284, 287; Juddv. FOWler, 10 C; O.A.l00, 61 Fed: 321. In regard to patent No. 471,982, which is held to be valid, and to haiVebeeninfringed; itisclaimed that no damages can be recovered, because the bill of complaint fails to allege-..;First, any sale of the infringing goods; or,.: second, that the complainant's bells were marked "Patented," or that defendant nad notice that they were patented. Inasmuch as the evidence shows the $ale' of the infringing goods, and before the hearing an amendment was offered containing an averment of sale, it does not seem that any.injustice would be done to the defendant if the court, in its discretion, should permit such' amendment. Tl}e defendant cites the recent case of Dunlap v. Schofield, 152 U. S.244, 14 Sup.. Ot. 576, to support its second claim... rJibe answer contains no averment of want of knowledge. Thedefep.dant "who upon a want of knowledge upon his part of the actual existence of the patent. should aver the same in his answer." Sessions v. Romadka, 145'0. S. 29, 12 Sup. Ot. 799; Wincheliter Co. v. American Buckle & Cartridge Co., at page 711. The proceedings between Rockwell and Holaday:\anq tile cOl,'respondence between the parties show actual knowledge, of the pateIltl'l on the part of defendant, and notice of the claim.. Qt t.Il.'b.i,n.geme.:nt-iT.he. comPlain.:wt, .therefore, has the right to · . amend." the of be amended in accordance with tll,.e·,facts'foundnB<?:n this point, with leave.to the defendant to be heard thereon, if,., it ,8,li> desires, withIn. twoweeJF.s from the date of the filing of the Rpipio:p.. If, the defendant does not wish to be heard, let a be entered for an injunction against the infringement of .. 471,982, and for, an accounting.
· THE GUILDHALL.
THE GUILDHALL. PETERSON et al. v. (Circuit Court of'Appeals, Seeond Circuit. No. 14.
BILL OF LADING-EXEMPTION FROM LIABILITy-PERSONAL NEGLIGENCE.
et aL December 3, 1894.)
Claimants' steamship was in collision, of!' the' English coast, with another vessel, and proceeded to London for repairs, which were made under the supervision of her owners.. While making repairs it was found that part of the cargo in the fore-bold bad been damaged by the sbock of the collision, and required reconditioning. No examination of cargo in the after-hold was made, but the steamship proceeded on her voyage across the Atlantic. The packages of a part of the cargo in the after-hold were so damaged by the collision that their contents were lost during the voyage across the Atlantic. Held, that the owners, having had charge of the repairs, were personally negligent. in 'failing to examine the cargo in the after,hold while making the repairs, and were liable for its loss, notwithstanding a clause in the bill of lading exempting them from liability for neglect of their servants, collision, and other dangers, but saying nothing about personal negligence. .
Appeal from the District CQurt of the United States for the Southern Districtof New York. This was a libel by Paul Schulze-Berge and others against the steamship Guildhall (Peterson, Tate & Co., claimants) for damages to a part of the cargo of the steamship, consigned to libelants. .The district court rendered a decree for the libelants for $961.21. 58 Fed. 796. Olaimants appeal. J. Parker Kirlin, for appellants. Wilhelmus Mynderse, for appellees. Before WAIJLACE, IJAOOMBE, and SHIPMAN, Circuit Judges. LAOOMBE, Circuit Judge. The libelants are consignees of 250 barrels of alizarine, shipped from Rotterdam by the Guildhall. The shipment was stowed in the between-decks of No. 4 hatch, which was one of the after-hatches of the vessel, and came within 18 inches of the upper deck Some 20 or 30 bales of straw were stowed on top of them. The Guildhall was a British steamship, hailing from Sunderland, England. She sailed from Rotterdam, October 15, 1892, with a miscellaneous cargo, bound on a voyage to New York. At about 5 a. m. of October 16th she was in collision with the English steamer Mira, about four miles to the westward of Dungeness. The claimants concede that the Guildhall was in fault for the collision. Her captain had joined the vessel at Sunderland, before she sailed thence to Rotterdam, and from that day until he fell overboard, on October 17th, and was drowned, he was, except for a few hours, continuously intoxicated. The Guildhall was da.maged about the bow, so that her fore peak filled with water, and she put into London, October 17th, for repairs. It was found possible to effect these without going into dry dock, by discharging about half the cargo in the No.1 and No.2 holds, so that the bow rose out of water. It was