84 FEDERAL REPORTER.
PALMER et al. v. JOHN E. BROWN MFG. CO. (Circuit Court, D. Massachusetts. December 13, 1897.) No. 589.
A subsequent patent to the same patentee, which Involves nothing more than the application of an invention, covered by an earlier patent, to a special art for which It was peculiarly adapted, is void.
SAME-INFRINGEMENT SUITS-PUBLIC ACQUIESCENCE.
Public acqUiescence, founded presumably upon two patents to the same inventor taken together, does not necessarily avail to support the later patent when sued on alone. 'The Palmer patent, No. 308,981, for q "machine for sewing or quiltIng fabrics," is void, as being a mere app1ication to an appropriate use of what was covered by claim 7 of patent No. 304,550 to the same inventor.
SAME-MACHINES FOR SEWING OR QUILTING FABRICS.
This was a suit in equity by Frank L. Palmer and others against the John E. Brown Manufacturing Company for alleged infringement of letters patent No. 308,981, issued December 9, 1884, to Frank L. Palmer, for a "machine for sewing or quilting fabrics." Edwin H. Brown, for complainants. James E. Maynadier, for defendant. PUTXAM, Circuit Judge. The patent in suit was issued on Decembel' 9, 1884, and is described as for a machine for sewing or quilting fabrics. The original application also covered what the inventor and the patent office designated a "mechanical movement," but, on the requirement of the office, the application was divided, and a patent was issued to the inventor on 'September 2, 1884, for what also was therein described as a "mechanical movement"; and it is this patent of earlier date which creates the only substantial difficulty the court finds in the case. Claim 24 requires, however, independent consideration. It seems too indefinite. The Incandescent Lamp Patent, 159 U. S. 465, 16 Sup. Ct. 75. However this may be, the claim, if it can be properly interpreted, will be found either too broad to be sustained, or only a variation of what is covered by the other claims, in which latter event it must fall with them. The underlying principle of the invention, and its application to a quilting machine, are made plain by the following extracts from the specification of the patent in suit:
"My invention relates more particularly to machines for quilting bed comfortables and other articles composed of several thicknesses of material; but such machines may be employed for sewing upon various fabrics in one or several thicknesses. The principal objects of my invention are to enable fabrics ·of comparatively large size-such as quilts and bed comfortables-to be quilted by a sewing machine while held In an extended or stretched condition upon suitable supports, and to produce such changes in the relative position of tbe fabric and sewing-machine needle by a universal movement in any and all directions, under control of a pattern, that quilting in large and elaborate patterns of artistic design may be quickly and automatically produced. The invention consists In various novel combinations, which are hereinafter described, and referred to In the claims. In order tllat the invention may be more readily understood, I will first give a brief description of the
PALMER V. JOHN E. BROWN MFG. CO.
princIpal parts of· the machine whIch I have chosen to illustrate the Invention. The fabric to be sewed or quilted is extended on a frame, which constitutes a holder or supporting carrier for the fabric, and the sewing machine has a long arm, to enable its needle to operate on all parts of the fabric which it is desired to quilt. Two carriages are employed, which are movable in directions transverse to each other, and one of which is supported upon the otLer. The lower carriage, whIch has only a simple movement, I term thl' 'first carriage,' and the other or upper carriage, which moves with as well as upon the first carriage, I term the 'second carriage.' The second carriage, therefore, has a compound movement, and controls the relative position o! the fabric and sewing-machine needle. The fabric frame or fabric holder is supported by or suspended from this second carriage. Neither of the two carriages has a determined and invariable movement, but the speed and direction of movement of either carriage may be varied or changed relatively to the speed and direction of the other to any degree and at any point within the whole range of movement of the carriages. The speed of each carriag6 is increased or diminished inversely as the speed of the other is increased or diminished, and hence the change in relative position of the fabric and needle is always made at uniform speed in any direction. The fabric frame or holder is supported or suspended, preferably, by converging arms or hangers of rIgid material, and these arms or hangers are connected with a single central support, which consists of an upright shaft or bar having a bearing in the second carriage. The movements of the carriages and fabric frame or holder are controlled by a pattern consisting of a guide or guiding slot arranged in pattern form, with which the aforesaid upright shaft or bar engages, and along which it is moved, and the movement of the fabric under the sewingmachine needle conforms to the movement of the aforesaid shaft or bar along the pattern. 'fhe fabric frame or holder is moved in any and all directions along the pattern or former, and the carriages serve simpiy as supports for the !abric frame, and permit such movement. The pattern or former· preferably consists, in addition to the guide or slot before mentioned, of a rack or track also arranged in pattern form, and adjacent to the guide or slot. and the fabric frame and its central supporting shaft or bar are made to follow the rack or track by a pinion or wheel loosely mounted on the shaft or bar. and gearing with the rack or trade '1'he pinion or wheel Is or may be rotated by an endless band or chain, and by Its rotation It travels along the pattern rack or track, and carries with It the fabric frame, its supporting shaft or bar, and the ,two carriages. Of course, as the pinion or wheel moves along the pattern rack or track, more or less of the driving band or chain Is taken up, and I employ means for taldng up the slack in the said band or chain and idler pulleys around which it passes. Tile end of the shaft or bar on which the said pinion or wheel is arranged enters the above-mentioned guide or slot, which' is In pattern form. and thereby holds the pinion or wheel in engagement with the pattern rack or track."
These patents gave a monopoly of a valuable and important manufacture, which monopoly has been acquiesced in by the public until the late attempts of the respondent to disturb it. Therefore, if the. entire invention described in the patent in suit was cm'ered by it, these facts would give it so much support. and the underlying principle would be so broad, that the whole case, with reference alike to patentability and infringement, would be easily disposed of by the application of the rules stated by the circuit court of appeals for this circuit in Reece Buttonhole 00. v. Globe Buttonhole 00., 10 O. O. A. 194, 61 Fed. 958, and Heap v. Suffolk Mills, 82 Fed. 449. The respondent relies especially on patent No. 185,954. issued to Frank L. Palmer on January 2, 1877, as anticipatory. The device covered by that patent did, indeed, make use of the germ of the invention before the court for quilting a narrow range of patterns; but it lacked the "universal movement in any and all directions" which
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now appears. The present invention unfettered the thought made use of in the earlier device, and to unfetter thought is one of the prerogatives of great intellectual power and of genius. This fact has been so often applied practically in determining what is and what is not invention as not to need elaboration here. We come, therefore, to the difficulty which arises from the issue of the patent No. 304,550, on September 2, 1884, to the same patentee to whom the patent in suit issued. As already said, the earlier patent assumes to cover a ''mechanical movement," but it is safer to look directly at its essence than to attempt to settle the meaning of this phraseology and its application to this particular topic. Its seventh claim is as follows:
"(7) The combination, with a rack or track in pattern form and a positively operating engaging device acting thereon and capable of bodily movement relative thereto, of carriages supporting said device, movable in directions transverse to each other, and one mounted upon the other, whereby provision is afforded for the movement of said engaging device along the rack or track by its engagement therewith, substantially as herein described."
However the subject-matter of this claim may be designated, it contains much more than the elements necessary to complete the mechanical movement which underlies the invention, and it enumerates all the working details of a concrete mechanism, needing only the additions of power, and of well-known special parts, to convert it into a useful machine. The complainants, on inquiry by the court, declined to admit that the patent of September 2, 1884, is void; so that the question necessarily arises whether the additions of power and of special working parts, as shown and claimed in the patent in suit, involved patentable invention. Since, under the circumstances, the patent of September 2, 1884, cannot be regarded as anticipatory in the ordinary sense, the answer to the ql,lestion just stated must determine the suit. It is plain that any quilting machine which used the elements of the seventh claim of the patent of September 2, 1884, would infringe that patent, whether or not it employed the additional elements set out in the later patent. So that, if those additional elements involve no patentable invention, and, nevertheless, the later patent should be sustained, the monopoly of the earlier patent would be extended in violation of the statute, and it would be wholly immaterial in law whether the extension covered years, or only months. All this involves such a clear rule of law, and has been so many times decided, that it need not be elaborated. The case was ordered reargued in order that the complainants might point out to the court, in detail or in general, the elements of patentable invention found in the later patent, and not in the earlier one. We are unable to perceive that they have done so, unless by referring the court to the following citations from Reece Buttonhole Co. v. Globe Buttonhole Co. (C. C. A.) 61 Fed, 958, 970:
"The essential feature of this claim Is the so-called .'compound movement' given the needle bar, the result of simultaneous longitUdinal and lateral motions. This alone was, of course, old and common in the arts; yet the suggestion of its application to this purpose, combined with the mechanism
PALMER V. JOHN E. BROWN Ml+'G. CO.
devised therefor, constitute a patentable invention of a fundamental character, highly meritorious, and one to be protected by a liberal construction."
The complainants, seeking to apply these expressions to the case at bar, maintain that the patent of September 2, 1884, was only for a mechanical movement, namely, the "universal movement"; that the invention in the patent in issue consisted in applying this movement to a quilting machine; that in this respect the case corresponds to the application in Reece Buttonhole Co. v. Globe Buttonhole Co. of the "compound movement" to making buttonholes; and that it is immaterial whether the movement was adapted from an earlier pat· ent, as the complainants claim they did, or from the common art, as Reece did. This may be true as a rule, but the error is in the appli· cation of it. The patent in issue found in the earlier patent much more than Reece found in the earlier art, because it found in the seventh claim, which we have cited, not only the "universal movement," but all the parts and mechanism needed to guide the engaging device in the rack or track which develops the pattern in the practical work of quilting as done by the complainants. Neither is the complainants' case aided by the rules discussed and applied in Electric Co. v. La Rue, 139 U. S. 601, 11 Sup. Ct. 670, Potts & Co. v. Creager, 155 U. S. 597, 15 Sup. Ct. 194, and National Cash-Register Co. v. Boston Cash Indicator & Recorder Co., 156 U. S. 502, 515, 15 Sup. Ct. 434; because it is not a question of applying to a new art what is covered by the seventh claim cited, but of applying what was on its face expressly intended for all the arts to a special art for which it was peculiarly adapted. On the whole, the respondent maintains that what is claimed in the patent in suit was simply an application to an appropriate use of what was claimed in the earlier patent, without the development of the inventive faculty in making the application. We think this proposition must prevail. It seems proper to add that the result is not a result rendered necessary by the law, looking at Palmer's whole invention, but of his own option in accepting two patents, followed by resting complainants' suit on the later patent alone. We must also add that, in this suit, the public acquiescence to which we have referred does not avail, as it presumably relates to the two patents combined, and not to the later one alone, and it cannot be apportioned in its behalf. The respondent maintains that in the patent of September 2, 1884, the. patentee disclaimed what is now set up under the patent in suit, but we think the case in that respect falls within The Barbed-Wire Patent, 143 U. S. 275, 280, 281. 12 Sup. Ct. 443, 450, and not within Underwood v. Gerber, 149 U. S. 224, 230, 13 Sup. Ct. 854; yet, for ·the reasons stated, the complainants cannot prevail. Let there be a decree, as provided in rule 21, dismissing the bill, with costs for the respondent.
EASTMAN CO. v. GETZ et al. (Circuit Court of Appeals, Second Circuit. No.13.
PATENTS-MACHINES FOR COATING PHOTOGRAPHIC PAPER.
January 7, 1898.)
The Eastman & Walker patent, No. 358,848, for a machine tor manufacturing sensitive photog,aphic films, was anticipated by the Saroney & Johnson machine, for making carbon paper (English patent of May 18, 1878), as tQ claim 3, which is a broad one, covering a combination of driven smooth-faced rolls, a suitable hang-up machine, and a coating mechanism. consistIng of a smooth-faced roll partly SUbmerged in the coating material, arranged at such a distance from the hang-up machine as to allOW the gelatinous coating to set before it reaches the looping slat. 77 Fed. 412, affirmed.
The Eastman & Walker patents, Nos. 370,110 and 370,111, for processes of coating photographic paper, were anticipated by the method used in the Sarony & Johnson English machine. A large mass ot testimony introduced into a patent case, merely in response to a remark by one of plaintiff's witnesses as to the inferiority of the defendants' product, and having no bearing on the real Issues, together with nearly 100 pages of printed testimony by an expert witness, consisting mainly of argumentative matter, comments, and criticisms, mingled with opin:1ons, beliefs, and hearsay, held to have been Improperly Introduced into the record, so that no costs of either court should be allowed therefor.
8. SAME-SUPPRESSION OF TESTIMONy-COSTS.
Appea.l from the Circuit Court of the United States for the Northern District of New York.
The complainant's bill in equity in the circuit court for the Northern district of New York alleged the infringement by the defendants of claim 3 of letters patent No. 358,848, dated March 8, 1887, for apparatus fo-r manufacturing sensitive photographic films, and of the four claims of letters patent No. 370,110, and of claim 3 of patent No. 370,111, each dated September 20, 1887, and each for a process ad' coating photographic paper, the three patents having been granted to William H. Walker and George Eastman, and having been assigned to the complainant. The original application for Nos. 358,848 and 370,110 was filed October 25, 1884. It was divided, and an application for Nos. 370,110 and 370,111 was filed March 5, 1887, which was also divided. and the application for 370,111 was filed August 20, 1887. The circuit court dismissed the biil (77 Fed. 412), -and the complainant appealed to this court.
'V. A. Jenner, for appellees.
1\'1. H. Phelps and M. B. Phillipp, for appellant.
Before WALLAOE, LACOMBE, and SHIPMAN, Circuit Judges. SHIPMAN, Circuit Judge (after stating the facts). Bromide paper, which is chiefly used for making photographs of life size, was discovered in or about the year 1873. The photographic is finely divided l!romide of silver, and the paper is coated with a gelatino bromide emulsion, the gelatine being the vehicle by which the bromide is conveyed to the paper. A uniform distribution of the silver is necessary in order to produce good photographic results. The coated paper must be free from streaks or bubbles or specks of dust, and must be preseI'ved from inequalities of expansion which cause unevenness, and therefore coating by hand was