OTT V. BARTH.
89
If any inventive genius was called into exercise in a modification of the mechanical means which employ the simple principle which Nile§ introduced, the patent for such modification must be strictly confined to those details of construction which were the result of invention. The Parker device was a more simple and I economical one than the Niles attachment, but the only thing which cOllld make it patentable was the method of construction of the hollow shank, by which the full-sized spindle was permitted easily to enter the shank, and. pass beyond the pin in its side, and which consisted in the enlargement or cut-away portion at the end of the hollow shank opposite the pin. If the pin was to be in the 'hollow shank, there must naturally be an enlargement at the end of the opening, the only question being as to the place of the enlargement, so that it cannot be thnt the claims include any enlargement of the spindle. The Parker device required that the full-sized spindle should pass beyond the pin, and then be. made to engage with it, and a cut-away portion of the shank opposite the pin was a convenient way of effecting the desired method of construction. The patent is limited to a device in which the enlargement is opposite the pin. The Beebe device is a simple one. Its spindle is provided at one or both ends with a locking hook, and its knob necks have at their free ends a locking hook, which, by elevating the knob end of said neck or ,necks is slipped over the spindle hook. The knob neck, on .the side containing its locking hook, is enlarged, which enlargement permits the entrance of the spindle hook. There is no infringement, and the bill is dismissed.
OTT '/I. BARTH.
(Circuit (Jourt, N. D. Illinois. July 5, 1887.) PATENTS FOB INVENTIONS-IMPROVEMENTS IN SOFA BEDSTEADS-INFRINGEMENT.
The second .claim of a patent issued to William Ott, on the twenty-third January, 1887, for an "improvement in sofa bedsteads," which is as follows: "In combination with the sections, A and B, the folding rods, F, F, and head· boards, ,D and E, supporting .the latter when extended to sustain the bolster, substantially as setforth:" held not to be infringed by a device which makes the folding rods rest upon the end-pieces of the lounge-frame, instead of upon head-boards, which are dispensed with. .
O. P. Jacobs and Dyrenforth « Dyrenforth, for complainant. William Zimmerman, fOf defendant. BLODGETT, J. This is a bill in equity for an injunction and accounting by reason of the alleged infringement of a patent issued to the complainant on the twenty-third day of January, 1877, for an "improvement in sofa bedsteads." The improvement covered by this patent has reference to that class of sofas or lounges which may be opened or extended
90',
rEDERAL REPORTEU.
so as to form a bed, and embraces two features: Fi;-st, an adjustllble head-piece,-that is,an arrangement whereby the, head-piece 'of the lounge or sofa' can be rllised or lowered, within certain limits,at the will of the person using it; and,Becmtdly, folding rests for the pillows or bolsters, when the lounge is used as a bed. The controversy in this case has reference solely to the latter feature, and does not: involve in any way the adjustable head-piece. Infringementis only charged in this case as to the second claim of the patent, which is in the following words: "In combination with' the sections, A and B, the folding rods, F, F, and head-boards, D and E, supporting the latter, when extended to sustain the bolster. sUbstantially as set forth,." The lounge or Bofa, pnder this patent, is constructed'in two sections, the fixed section resting upon legs, and a folding section hinged to it so as to turn over in such manner that the under-side of the folding section should rest upon the top of the fixed section; and the folding rods, F, as they are called, consisting of iron rods bent U-shaped, the lower ends of' which are pivoted to the sides of the frames of the respective sections, so that they can be folded down into the inside of the frames when the seetions are closed' tOgether, for the purpose: of forming a sofa or lounge, and folded outwardly when thEdounge is to be used for abed, so as to form a rest fotthe 'bolster or pillows used, with the bed ; one of the utili. ties, if Mt the main one, of these folding bolster rests, being to extend somewhat the length of the bed beyond the length of the sofa, as these-, folding rods, F, extend beyond the head of.the sofll or lounge. ' The defenses set up are (1) non-infringement; (2) that the patent is void for want of novelty. The proof shows a large number, comparatively speaking, of prior devices for folding sofa beds, in which folding head-boards or head-pieces are shown; so that it may be ,assumed, as one of the established facts in this case, that folding bolster-rests or pillow-rests, for this class of beds, were not new with this inventor. In connection with the adjustable head-piece of this lounge, the patentee uses what he calls the head-boards, D and E, whi{)hare boards fastened to the head end oftha lounge, side of and' to the end-pieces of the frames of the respective sections; and in describing the use of the folding rods,F, F, he says they may be turned up out oftherecesses in the sections where they rest, when the sections are closed so as to rest on the head-boards, to sustain the bolster as shown in Fig. 1 of the drawin'gs; and the illustration of this operation of these bolster-rests shows these folding rods resting upon the head-boards, D and E, extending beyond 'the head of the lounge, so that the bolster and pillows would be even with, if not beyond, the end-pieces of the lounge. The makes a lounge in which he U8es folding-rods constructed and 6pdrnting precisely like the folding-rods in the complain. ant's patent,eXcept that instead of resting upon the head-boards, as shownin the confplainant's patent, they rest upon the end-pieces of the lounge-frame; the only object of their resting upon the or lounge frame being to hold these rods at' the proper angle to sustain the
"
V. BARTH.
91
pillows or .bolstfl1' in comfortable. position for the occupant of the bed. It is obviol1,s that the end-piecee (If the defendant's .lounge perform the same function in his mec1Utnisrnas do the head-boards in the complainant's device. In both ca,sesthe head-boards or end-pieces are only rests or fulcrums to hold the folding-rods at the proper angle. But the difficulty iuthis case-and it seems to me an insuperable one-is that the complainant has made these head-boards, D and E, elements in the claim of which it is alleged the defenda!lt infringes. This claim covers three elements: First, the sections, A and B, which are the fold· second, the folding-r(lds,F,. F; and, third, the ingsections of the D and Ej an.a thefunction of the.head-boards of this claim is to $pport the folding-rods when extended to sustain the bolster. It i$8o well settled that it hardly requires authorities at this time that the omission of one ingredient of a combination covered by any claim of a patent averte any charge ofinfringement based on that claim. Walker, Pat. § 349; ltj$,true. as already stated, that the end-pieces of the defendant's loungEl perforn) the same office with reference to these folding-rods that is performed by the complainant's head-board; but the complainant has seen fit to make these head-boards elements of his patent. He has brought them into his ,combination as essential partE! of it; and the defendant has merely left out these head-boardsjand constructed his bed, by pivoting these folding-rods upon the sides of the frames of the sections,. dropping them slightly lower down than the complainant's cpnstruction shows, and resting them upon the end-pieces of his frame. In other words, he has wholly dispensed with the head-boards shown in the complainant's patent. He has not substituted what is an equivalent for the head-boards in the complainant's combination, but has dispensed whQlly with the head-board, and has used the end-pieces, Which are not only' in: the complainant's lounge, but probably all other lounges, as the fulcrum on which his folding-rods rest; so that the defendant cannot be said, it seems to me, to use the combination by this second · claim because he does not use the head-boards, but accomplishes the same result without their use. He throws the head-boards of complainant's. patent away , and uses the portions of the structure which are left, without substituting anything in the place of the head-board which he has rejected. As is sa"idin Water-Meter Co. v. Dctper, 101 U. S. 335: "ItieR well-known doctrine of patent law that the claim of a combination is not'infringed if any of the material parts of the combination are omitted. It is equally well k,nown. if: any one of the parts is only formally omitted. and and is supplied by a mechanical equivalent performing the same office and producing the same result. the patent is infringed.'> Here the defendant omits one of the elements of the com"plainant's combination, and substitutes nothing for it, only using what.he found in the complainant's lounge, and in other lounges with these head-boards left out. It seems to me, therefore, the end-pieces of these loungeframes are not to be considered as the equivalent of the head-boards in this claim of complainant's patent. Oomplainant saw fit to make
92
FEDERAL BEPOnnm.
these head-boards an element in his combination. They were in his lowlgefor' other purposes, and he saw fit to appropriate them to the purpose of these folding-rods, and has a patent upon that in combina.. tion with the other parts of this lounge; and, having elected to make these .head-boards an element in his combination, he cart only claim an infringement when the head.board, Or some colorable substitute for them, is used.' It is, perhaps, unfortunate for this patentee that he did not see that at the proper angle was just any rest which would hold the as useful as the head-boards, and it would hardly seem possible that a mechanic looking at a drawing ol"model of his lounge cOuln have escaped the observation that the folding-rods might rest just as well upon the end-pieces of the frames as upon the head-boards; lind therefore he might, if he had seen fit to do so, have covered the idea of resting the folding-rods upon either the head-boards or end-pieces of his frame. In other words', any rest which would hold the folding-rods at the required angle might have been properly considered as his invention, if he had claimed it; but complainant saw fit to take his patent, so far as this feature of his device is concerned, upon the head-boards as an essential element olhis structure, and the court can only protect him in what he has so claimed. I am therefore reluctantly impelled to the conclusion that this defendant does 'not use the complainant's patent, so far as it is covered by the second claim. The bill is therefore dismissed for want of equity.
AUSABLJll nORSE-NAIL CO. SAME
tJ.'
NEW HAVEN HORSE-NAIL
CO. and othel'll.
v.
NEW HAVEN NAIL Co.
and others.
(Oircuit Oourt, D. Oonnecticut. August 22, 1887.) 1. PATENTS FOR INVENTION-}IANUFAOTURE OF HORSESHOE NAILs-RESTRICTION OF CLAnI-COMBINATIONS, . ..
In an action for infringement of claim 1 of letters patent No. 189,332, granted the National Horse·Nail Company, as Rssignee of Robert Ross, May 27.1873, for an improved machine for beveling and trimming horseshoe nails, con· sisting of a constantly revolving feed·screw, with a continuous and non·in· termittent motion, held that, in view of the prior state of the art and the language of the specifications, the claim must be restricted to the particular elements of the combination therein, and that this claim was not infringed by a device for beveling and trimming horseshoe nails, which required an intermittent feed. 2. SAllIE. .
In an action for infringement of claim 2 of letters patent No. 177,237. granted Nelson W. Goodrich. Mill' 9, 1876. for an improved machine for bev· elingand trimming horseshoe nails. consisting of a horizontal and intermit· tent carrier ring. operating on a stationary ring. and provided with teeth prodownward below its lower surface, serving to retain it in place, as well also f(jr carrying and holding the nail blanks to the dies, held that. in view of tile prior state of the art, and the language of the specifications, the
