SCHLICHT &: FIELD CO. tJ. CHICAGO SEWING-MACHINE
co.
685
SCHLICHT
&
FIELD
Co.V.
CHICAGO SEWING-MACHINE CO.
et ale
(Circuit CO'Uri, N. D. lllinoi8.
November 5,1888.)
1.
PATENTS FOR INVENTIONS-NoVELTY-LETTER·FILES.
Letters patent No. 217,909, issued July'29, 1879, to Frederick W. Sml.th arid James b. Shannon, for an improvement in paper-holders, cover a novel and patentable device, and are valid. Following Bhannon v. Printing Co., 9 Fe!!. Rep. 205. Said patent is infringed by defendants' device, which is in all respects similar, except that the function of movement is transferred from the vibrating wires to the receiving wires, a merely colorable change, which any mechanic . might easily make. The testimony of one of two joint patentees, and alleged joint inventoril, thnt he was in fact the sole inventor, IS neutralized by his former oath, taken for the purpose of obtaining the patent.
2.
SAME-INFRINGEMENT-COLORABLE CHANGES.
3.
SAME-WHO ENTITLED To-ESTOPPEL.
In Equity. Bill for infringement of patent. .' This bill was brought by the Schlicht & Field Company against th'e Chicago Sewing-Machine Company, Luke L. Miller, and Daniel H. ISeminger. Banning et' Banning et' Payson, ,for complainant. M. W. Robinaon and O. M. Hardy, for defendants. BLODGETT, J. The bill in this case asks for an injunction and an counting by reason of the alleged infringement of patent No. 217;909, granted July 29, 1879, to Frederick W. Smith and James S. Shannon, for an "improvement in paper-holders," The invention covered by 'this patent is described by the patentees in their specifications as follows: , "Our invention relates to that class of paper-files or temporary bindel's adapted, by separable uniting wires, to allow of the withdrawal of any one of many papers thereon held, or the insertion of papers between those already on the file, without disturbing the order in which the others are placed. The object of our invention is to provide a file more prompt and positive in its action, less calculated to tear the papers filed.thereon, more convenient of manipulation, and adapted, in its double form, especially, to serve as a writing tablt't for the lap ordesk. ItConsists-li'irst. in a paper.holder, withduplex: parallel hinged transfer wires made from one piece; second, in a papetholder haVing the fixed wires and movable wires secured to the same connecting plate, whereby those parts lDay be separately packed and attached to· any desired base-board: third, in the structure of the puncturing wire; fourth, in .the felt or plush covering for the bottom of the base-board; fifth, in the stop to limit the movement of the hinged wires."
ae..
This patent was before this court in the case of Shannon v. PrintingCbI, reported in 9 Fed. Rep. 205, in which the validity of the patent was sustained, and nothing shown in the record in the present case induces me to, in any degree, modify or change the conclusions there arrived at. Infringement is charged in this case of the first, second, third, fourth, fifth, and seventh claims of the patent, which are:
556
FEDERAL ,REPORTER.
"(1) The combination, in a paper-holder, of a base-board, two parallel fixed punctur).ugwires. and two parallel hinged transfer wires, made in a single piece;'arranged thereon as shown, to form two plml11el rings, adapted to be opened and closed at pleasure, substantially as and for the purposes set forth. (2) In combination with the duplex file or paper-holder. substantially as shown. a rigid connecting part, joining the hinged wires, so that both may be rotated or held by applying force for the purpose to either, substantially as set forth. ·(3) In combination with the fixed wires, T, and the moveable wires, H, the plate, P, constructed to give hinged' support toH at h, h, and to have the c!'ntral spring, S, all and adapted to operate substantially as deseribed. (4) The combination, with the fixed wires. 'f, and hinged wires; H, of the plate, P, having the hinge-arms, R, and the spring-t.ongue. S, and supporting said wires. T and H. in working position, whereby the working parts of the file or are adapted, to be applied to any tabl!'t by screws, a, a. substantially as and for the purposes specified. (5) In a. paper-holder haVing a tubular puncturing wir!', sharpened by having its end beveled from one side to the other" nnd a seeond wire entering the tube to serve as a transfer wire. the in wardlybentorcurved form of the beveled point of the tube. whereby the said point may lie clost' to the transfer wirt', substantially as described, and for the purpose set forth." "(7) In com bination with the hinged wires, H. and a spring operating them, as described. a stop. 8, or stops. 8 and 8', arranged ·to. the throw of the wires, H, substantiall>' as and for the purpose set ,forth." . , ,J )" Defendants deny infringement of the patent, and also attack the validity of the patent upon the ground:that Smith, one. of the patentees, has testified in this case,. that he was the only of the. devices covered by the patent, and that Shannon, the other patentee and alleged n()thing to do with the invention. . i . ..,In regard tQ the seqon,d matter of. defense, which was not considered inth(dormercase, I will merely say that Smith, hllving applied for a as,tl}ejoint invention of himself and SbannOli, should be estopped, as against any bona fide owner of the patent, from n.ow defeating it by proof tending to show that he took a false oath, or imposed upon the ,patent-offiyEl for the purpose of obtaining the patent. Proof that Smith was the sole inventor is undoubtedly admissible to defeat the patent, but it must come from some one else than himself; because he has ·given the patentJife by one oath, and cannot now be heard to destroy 'Ubi another oath. Certainly, as much faith must be placed in the affidavit which the law required him to make at the time he applied for the ,p/l.t{lnt, sbowing that the device "covered by the application was the jointinvent;ion of himself and Shannon, as should now be given to his deposition in this case wherein he claims to be the sole inventor. ·So' that it may be said, for the purposes of this question of fact, that the testimony of Smith is neutralized by his conduct in applying for and obtaining a patent; and this leaves the question, as to whether or nol;Smith was the sole inventor, to the testimony of Blades, the other w:itnWls C3.lled by the defense upon this point, and Blades' testimony goes ,toshqw that Shannon and Smith were consulting together and acting together in perfecting and completing the invention. Smith was tllmeQhanic" llnd it would seem, both from his own testimony and that of Blades, that he was attempting to a letter-file, and that what
SCHLICHT & FIELD CO· .". SHERWOOD LETTER-J.<'ILE CO.
587
he was doing was done under the "constant supervision and criticiblll of Shannon, and from the testimony it would seem that suggestions were made from time to time by Shannon; and the court at this time, and in the light of the testimony before it, cannot see but what the. ideas embodied in the machine were as essentially those of Shannon as of Smith. Hence the defense that the patent is void, because of Smith's being the sole inventor, is not sustained. The defendants manufacture and sell a letter-file consisting of receiving wires, upon which the papers to be filed are strung, and arched wires adapted to come in contact with the receiving wires, so as--to form, With the receiving wires, a continuous ring or arch, up<m which the papers may be turned for the purpose of inspection or examination, the same as is provided for in the complainant's patent, but in the defendant's devide the receiving wires are so arranged that they rock forward from out of contact with the arched wires. This seems to me to be merely a colorable change in the construction of the device; the transfer of the function of movement from the vibrating wires to the receiving wires is merely such a change as, with the complainant's patent before him, any mechanic might readily make, and is but an attempt at an evasion of the idea covered by the complainant's patent. The case seems to me to corne closely within the principle announced in Adams v. Manufacturing Co., 3 Ban. & A. 1, where it was said: "Changing the position of a part of a machine does not avert infringement, where the part transposed performs the same function as before." I therefore find that the complainant's patent is valid, and that the defendant's infringe, and a decree may be prepared accordingly.
Co.
V. SHERWOOD LETTER-FILE
(Oircuit Oourt, No D. Illinoi8. November 5, 1888.) PATENTS FOR INVENTJONS-NoVELTY-LETTER-Fu,ES.
Claim 1 of letters patent No. 254.847. granted March 14.1882. to James S. Shannon for a paper-file. in which the invention claimed is an ordinarv pnnch attached to the base of the file. "adapted to simultaneously punch two hole. in the paper. in position and of size to admit the receiving wires," is void for want of patentability in the device. .
In Equity.
On bill for infriugement of patent.
Banning &; Banning &; Payson, for complainant.
Dyreriforth &; Dyrenforth, for defendant.
BWDGETT, J. The bill in this case charges the defendant with the infringement of letters patent No. 254,847, March 14, 1882, to James S. Shannon, fora paper-file; and asks for an injuncti,on .and accounting for damages. In his specifications the patentee says: .. .
588
FEDERAL REPORTER.
"This invention relates to paper.flIes having receiving wires; and it con· sists. in providing a punch attached to the file base or tablet. adapted to simultaneouslypunchas many holes in the papers to be flied as there are receiving wires on the file, and to punch them somewhat larger than, and in proper position to admit, said receiving wires. By this means the papers may lie closer and smoother on the file. They may be shifted more freely on the wires, and the apertures therein are not torn out or enlarged in filing or shifting them. It is more particularly intended as an improvement on the files described in letters patent of the United states Nos. 217.907 and 217,909, dated July 29, 1879, wherein the receiving wires are sharpened to puncture the papers, and wherein transferring wires are employed in connection with the receiving wires. In the use of said files the papers are often shifted from one pair of wires to the other, and itis found that in such frequent transfers the apertures made by the puncturing wires are apt to be torn out or enlarged. Moreover, in the act of tiling. by thrusting the papers down upon the wires, the edges of the apertures so made are ragged; a burr, so to speak. is formed about the holes in the paper; and in pressing the papers down; and in shift· ing them, the burrs of one sheet enter the holes in the adjacent sheet above it, so that the sheets are not readily separable without inconvenience or tearing.By providing on the tile a punch adapt.ed by a single motion to cut cleanedged holes in the papers corresponding with the number and position of the receiving wires, and a little targer than the wires, the papers so punched may bemore expeditiously filed; they will be flat and comp,.wt upon the tablet; they may be freely transferred froID the receiVing to the transfer wires, and back again;, ,and in no ordinarily careful handling are they liable to be torn." No claim is made in this case upon the form of construction embodied iJ;lthe punch, but the patent covers simply and only the idea of affixing toa letter-file tablet a punch for the purpose of perforating the papersto be filed, so that they may be more readily manipulated upon the receiving wires of the letter-file. Infringement in this case is charged only as to the first claim of the patent, which is: "(1) The paper-file described, consisting of a base, A, and two parallel receiving wires, B,B, provided with a double punch mounted upon the same base, and adapted to simultaneonsly punch two holes in the paper in position, and of size to admit the receiving wires, substantially as set forth." The defenses set up are (1) non-patentability of the device; and (2) that defendants do not infringe. }l'he defendant manufactures and sells a letter-file containing receiving arid vibrating wireE\yoperating substantially like those shown in thecomp'ainant's patent,with a punch located under the arch of the vibrating wires, so that the papers to be filed are passed through the space between the ends of the receiving and vibrating wires to the punch, where they are perforated; when they may be retracted or drawn back, and passed over the receiving wires, upon the file. The defendant's punch is attached to the tablet, and in that respect is like the complainant's, although, in the exhibits of the complainant's and defendant's tablets ofin evi(lence, the defendant's punch is located at a different place {(mnthe location of the punch on the complainant's tablet; but, as there s{!ecific place designated in the complainant's patent as to where the punch shall be 10cated,I do .not know that.this.differenceis in any
SCHLICHT &: FIELD CO. V. SHERWOOD LETTER-FILE CO.
589
epecial degree material in the consideration ofthis case; so that the case t'iimply presents this question: Is it patentable to locate any kind oia punch upon a paper-file so that the papers to be filed thereon may be punctured by the punch, to enable them to be more readily passed upon the receiving-wires of the file? It is obvious that the punch perfonns no new function, by reason of its being attached to ll:tablet, from what it. would if it were attached to a table, window-sill, or any other location, where it could be used readily in connection with the tablet; and a patent, therefore, merely for this attachment, seems to me to come entirely within the principle laid down by the supreme court in Hailes v. Van Wormer, 20 Wall. 353, and Reekendorfer v. Faber, 92 U. 8. 347. In the latter case the patent was for the idea of attaching a piece ofrubber to the end of a lead-pencil, so that the rubber could be used readily to erMa pencil-marks. In that case the rubber performed no new function by being attached to the pencil. It was undoubtedly a convenient arrangement, whereby the rubber was readIly at hand to erase orporrect any mistakes made in the use of the pencil, but it was still nothing·· but au eraser attached to the pencil. And court in its opinion "This c9mbination consists only of the application ofa piece <?f rubber to It is· as if a one end of the same piece of wood WhICh makes a patent should be gran ted for an article, or a manufacture, as the patentee prefers to term it, consisting of a stick twelve inches long, on one end'of'wh'ich is an ordinary hammer, and on the other end IS a. screw-driver or a tackdrawer. or, what you will see in ua.e.inevery retail shop, a one end of which is a steel pen. It is the case of a garden rake, on the handle lilod of which should lJe placed a hoe, or on the other. side of the same. end of of' which should be placed a hoe. In all these cases there might be the advantageof' carrying about one instrument instead of two, or of avoiditlg,tM liability to loss or misplacing of separate The instruments placed ilpon: the same rod might be more convenient for use then when used separately·. Each, however, continues to perform its own duty, and nothing else. No fect is produced, no result follows, from the joint use of the two. A bundle in common'-,-a joint handle,-does. not create a or combined opepitiOl:t. rfhe handle for the pencIl does not create or aid tl;l,e. handle for the eraser. rfhe handle for the eraser does not create or aid tbe handle for the pencil. Each has and each requires a handle the same as it had and required, l'eference to what is at the other end of the iustrument; and the operatilW ;oJ the handle of and for each is preCIsely the same, whether. the new ll.l'ti'cl(isor is not at the other end of it. In tIllS and the caRessupposed you haVe)Llt!l rake, a hoc. a hammer, a pencIl, or an eraser, when you are done, .The Ia.W requires more than a change of form, or juxtaposition of parts, or of the. ex· ternal arrangell1entofthings, or of the order in Which they are used. :to give patentabilIty. "
,
80 here the punch performs no new or function by being at.tached to the tablet. It is still nothing but a ptmch, and, as the proof' shows, is often attached toa table, or some other permlment fixture, so as to. be convenient for use in connection with several tablelB·. ·. I ihereiore think that this is but an aggregation of parts, and, as such, doesnoi come within .the field of invention. In Pickering,v. Me Oulrlough, 104 U. S. the supreme court, speaking by Mr. J.ustice MATlrlIEWS"said:, , .
5.9<t "In the:pa;fjeptable comhination, of old elements, all' tbe(Jonstituents must. se;> cnterinto.it as that each,qualifies,every other. ... ** It must form either a ne.wmachine ola disti'nct cnaracter andfunctjoIi.orproduce a result due to the joint co-operating action of all the elements; it is not the mere addinK together of separate con tribu " . . For these reasons I consider the'defense of non-patentability is fully made out, and the bill is dismissed for want of equity.
:1 SCHLICHT
& FIELD
Co. ". SIiERwoonLETTER-FILE
(OirOltit Oourt. N. D. lllinoi,.
November 0, 1888.)
PATE:trra POR INVENTJo1fs-NoVELTY-LETTER-FiLEs.
.
Gsim 1 of letters patent No. 217.907. granted July 29.1879. to James S. Shan· non for an "improvement in temporary binders. " the invention claimed consistingof the use of vertlcal·and vibrllot,ing wires in pairs for filing papers. is. void for want of novelty. The Bussey patent. issued January 8. 1878. antici· pates the combi.nation ofa single vibrating wire with a fixed vertical wire. isno invention in the wires;
. Banning & Banning & Payson, for complainant. 'lJyre»,forth & Dyrcnforth, for defendant.
bill for infringement of patent·
J. By the bill in this case the nefendnnt ischnrged with illfringe'ment of letters patent No. 217,907, granted July 29, 1879, James S. Shannon, for an "impro:vement in temporary binders." and an injunction and accounting for damages are asked for. The patentee in his specifications says: "My invt;lntionrelat.'s to a construction in temporllry binders of the class having fixed. receiving wires. :md hingl'dor vihrating transfer wires; andconsists'-.:First. in 'giving movement to the lattflr on a "eltical axis. for the Purllose'of SWinging their frep ends towards III' from the fl'l'e ends of the fixed wires; secondly. in Illeans. providerl and arranged suhstantially as h(,l'eln shOWn and described" whereby the vertically Vibrating wires are held stationary. eith¢r in contact With or remO' ed from the fixed wires; and. thi1'dly. in the two SWinging wires of a'double tHe, so that in rotating one theotlkr is also operated." '.'. , . :·. ' v .·. . " . Th£l,p,-telltcontains four claims. hut infringement is here charged only as to the first, which is in the following words: "(1) In combination with the fixed wirl'. B. and the bllse, A, the arc!l('d vibrating wii-e. C, having a positivl' rotary movement.in tlteaxis of its vertical pvrtilm. :w.bereb.y itllfree end ma;r be swung. mto contact with Of away from t)lefree \'lnq of the fixed wire, substantially as descri The complainant· has filed a. disclaimer, which is in the following \Voros-v: .· . . ;petitioner Is aware that in the patent to WiIliamC. Bussey, No; Januluy fh 187l), fOl' all. improvt:Il}-ent in lJill·files, snarl·Ruga.:
SCHLICHT &: FIELD CO. 'lI. SHERWOOD LETTER-FILE CO.
591
ment of a base-plate, one 'fixed wire, and one arched vibrating wire areBhown, but in .that .and Ilimilllr arrangements, where onlyonewire is used, there is Dothing to steady the papers, and prevent them from turning to one side or the .. Your petitioner, therefore, limits the first claim of said patent to a comhinationwith the fixed wire, B, and the base, A, onhe arched vibrating wire, '0" having a positive rotary movement i·n the axis of its vertical portion, when the fixed and vibrating wires are used in pairs, whethf'r operating · simultaneously, .or each separately, as shown and described in said patent." So that by this disclaimer the complainant limits this first claim to the use of the vertical and vibrating wires in pairs. The patent shows devices whereby the vertically vibrating wires are held stationary, in contact with or removed from the fixed wires; and also 9. device " .the two vibrating wires are rotated simultaneously by pressure . upon either one. But these two devices for holding the wires station'ary, either in contact with or away from the fixed wires, and for operating both wires simultaneously, are not involved in this suit. The,defenseS interposed are (1) that the patent, as shown by this first claim, is void for want of novelty; (2) that defendant does not infringe. " . The disclaimer filed by the c()mplainant admits that the BusseypateI;l.t <of January 8,1878, anticipates the combination of a single vibrating Qr ·:arched wire with a fixed vertical wire, as shown by the first claim of complainant's patent; but complainant has attempted, by the c;lisclaimer ;hereiI;l., to obviate the effect of the Bussey patent; by limiting the · -complainimt's ·device to a tablet or letter-file contatning at least a: pair of J,wires; so, t!l/lot :we now have to.deal with cornplainant'spatent, as amended or limited by the disclaimer, as cop,sieting Q;f two and two vibrating wires, each vibrating wire" co-acting with one of the vertical wires to form a continuous arch or ring, so that the papers upon the file may be passed over from the spindle onto the transfer or vibrating wire for the purpose of removing the letter or paper from the file, without disturbing the relations of the other papers UpOll the file, and the vibrating wires having a free movement on their vertical axis, so as to admit swinging of the free. ends into contact with.or away from the ends of the fixed wires; and the question now is, it being conceded that the Bussey patent showed a single vertical or vibrating wirecOcllcting with a fixed vertical wire, precisely like the single vertical and vi.brating and fixed wires described in the first claim of the is any invention in duplicating these wires so as to hang the papers to be filed upon two spindles instead of one? That there may be some advantage in holding the papers by two points of suspension or 'attachment to the letter-file or temporary binder, as it is called irithis patent, is probable; but, when Bussey had shown the method of making a file with one set of wires, could there be any invention in simply making a letter-file with two such sets, so as to have two points of attachment of the papers to the letter-file, thereby, in the language of the -disclaimer; : steadying the papers, and preventing them from: turning 10 one side or the other?" It does not seem to me that this mere duplication of parts calls for the exercise of inventive talent. Thereisno :more invention :in fastening papers to a hy two points ofat(l
592
tachment, instead of one, than there would be in fastening a board to a piece of studding or beam by two nails instead of one. In Dunbar v. Myer8, 94 187, the patent was for putting deflecting plates on both sides of a circular saw for cutting veneers. It was conceded that the use of a deflecting plate on one side of the saw was old, and the court said, at page 195: "Grant that two such plates are in certain cases better than one used alone; , still the question arises whether it involves any invention to add the second plate to a machiu!'l already constructed with one plate. Beyond doubt, every . ,operator, w,ho.had used a machine baving one deflecting plate. knew full well .lwhat the function was that the deflecting plate was designed to accomplish, 'and the re::tsons for placing it at the side of saw are obvious to the understanding of .every one who ever witnessed the operation of a circular saw. , Ordinary mechanics know how to use bolts, rivets, and screws, and it is obvious that anyone knowing how to use such devices would know how to arrange , a deflectin,gplate at one side of a circular saw which had such a device properlyarranged on the other side-it being conceded that both deflecting plates , are constructed and arranged precisely alike, except that one is placed on one side of the 'saw, and the other on the opposite side. Both are attached to the frame in tbesamemanner; nor is itshown, either in the specification or drawings, that there is anytbingpeculiar in the means employed for arranging the tiefiectingplates at the sides of the saw. 01' in attaching the same to'the frame. "
"And the 'same rule was followed in MiUner v. V088,4 Hughes, 262. I am therefore of opinion that. in the light of the Bussey patent, the complainant has gained nothing by the attempt to limit this patent to the use of the wires in pairs; and I must therefore find that this patent is void for want of novelty.
JOEL ". GESSWEIN.
(Circuit Court, B.
n.
York. Sovember 10,1888.)
PATENTS FOR INVENTIONS-NOVELTY-STONE SETTINGS.
Letters patent No. 819,095 granted to'Samuel Joel, June 2,1885, for an Improvewent in holders for the settings of stones, the object being to provide a convenient tool to hold the metallic setting firmly while it is being manipulatedby the workman prior to the reception of the stone, are void for want of novelty.
'InEquity. Bill for infringement ofletters patent No. 319,095. filed by Samuel Joel against Frederick W. Gesswein. Jvli'tl;$ J. Fra'f!k, for complainant. Henry a.Atwater, for defendant.
Co:u, J. On the 2d ofJune, 1885, letters patent No. 319,095 were ,granted to the complainant for an improvement in holders for the settings of stones. The object of the' patentee was to provide a convenient tool to hold the metallic setting firmly while it is being manipulated by