WATSON II. STEVENS.
WATSON V. STEVENS
et al. MAo HINES.
(Circuit Court of Appeals, First Circuit. September 6,1892.) 1. PATENTS FOR INVENTIONS-ANTICIPATION-SlUNK STIFFENER
In letters patent No. 367,484, issued August 2, 1887, to Jeremiah M. Watson, claim 1 is for a machine for compressing shank stiffeners, having "two rotating dia or compressing rollers, the meeting- faces of which are formed to present a recess, having one straight and one curved face or side, to thereby curve trausversely one face of the stiffener, "etc. Claim 6 is for a method of finishing the edges of shank stiffeners, consisting "in cutting out a blank from a sheet of material, leaving the same with beveled edges and obtuse.angled corners, and thereafter passing the same between rolls having dies with rounded edges or margins, in order to round the obtuse angles and beveled portions as cut." Held, that the pate.nt was not an· ticipated by either the "calendering- process machine" of the American Shoe Shank Company or the Blake or Tripp machines. In view of the fact that the patented machine is the only one thus far disco\"ered operating- with efficiency, rapidity, and economy, and of the other circumstances stated in the opinion, it cannot be held,that the patent is void for want of. invention over the prior machines having reciprocating instead of rotating dies, although ordinarily the one is only the mechanical equivalent of the other. 47 Fed. Rep. 11'1, reversed. Loom 00. v. Higgins, 105 U. S. 580, applied.
.2. SAME-".-INVENTION-EQUIVALENTS.
Appeal from the Circuit Court of the United States for the District of Massachusetts. In Equity. Bill by Jeremiah M. Watson against George H. Stevens :md others for infringement of letters patent No. 367,484, issued Au· 2, 1887, to the com plainant for the" methqd" of, and apparatus for, .l:ompressing shank stiffeners. The circuit held that the allegedinven· lion consisted only of the mechanical adaptation of well·known mao chines and processes to a new use, and dismissed the bill. 47 Fed..Rep. 117. Complainant appeals. Reversed. In his specifications the patentee makes the following statements: . "Shank stiffeners. as now commonly made, are cut from leather or leather -board or eqUivalent material, so as to lpave beveled edges; but previousLo ap· plying the same to a boot or shoe it is customary to somewhat shave off or eurve the beveled edges at each side of the stiffener, and also to impart a Ion. gltudinal curve to the stiffener. This invention IHts for its object to devise a of the method of and apparatus for rounding off or curving the beveled ,hank stiffeners, and also to give to the same a longitudinal curve before apil1ying the same toa last or shoe. In out this invention a shank stiffener of suitable shape, cut from a sheet of leather board or other material, so.asto leave its.sides and one end to present beveled edges, the bevel ·of ·the edges occupying such relation to the, 'plain surface of the material as is subto form obtuse.angled corners, and thereafter the blank so jected to the action of cOrlJpressing or die rollers, one of which is cut away or recessed to conform in cross section to the shape it is desired to give to the ;tiffener, the second roll acting to force the stiffener into the said recessed or .cut-away part of the other roller, so as to cause the said beveled edges..and obtuse-anglpd (lorners to be broken down into a round or curve, as will be described. The machine herein shown has two rotating die or compressing rollers, combined with feeding devices for feeding the shank stiffeners to the .die or compressing rollers. The parts are aU preferabl.v made adjustable, and. if desired' for different-sized shank stiffeners, the recessed roller may be .removed, and-another s:ubstituted for it haVing a recess of a differllnt size or
I'EDERAL REPORTER. vol.
51.
shape. * * ... The shank stiffener compressed as described is very stiff, liS the material which is ordinarily offand',thrown away is pressed into the main part of the shank stiffener." " The first and sixth claims, which are herein issne, read 8S follows: 8 machine for compressing shank stiffeners, two rotating die or "(1) cOll)preBsiJilg rollers, the meetingtac,es Of which are formed to present a recess having one straight IHtd one cUl'ved face or side, to curve transverselyone face of the stiffener. combined with means for rotating the said die rOllers, and a lifting' plate to assist in curving the said shank longitudillally,subslantially as described." "(6) The herein described method of finishing tbe edges of sbank stiffenel'S, which consists in cutting out 1\ blank from a sheet of material, leaving the same with beveled 'edges and obtuse-angled comers, and thereafter passing the saine between rollers baving dies with rounded edges or margins. in ol'der to round the obtuse angles and beveled portions as cut, substlUlLially as described."
In
Frederick P. Fish and William K.Richard8on, for appellant. Willimn A. Macleod, for appellees. , Before GRAY,
Justice, and COLT and
PurNAM,
Circuit Judges.
PuTNAM, Circuit Judge. This suit relates to the first and sixth claims of complainant's pattnt. The first is for a combination cOl1stituting a machine fQr cornpressing shank stiffeners, and the other is for the "mptt!od II that machine. Two defenses are set up,-anticipation by certain patents put in evidence, and lack of invention. None of the devices in Use for forminll; shank stifteners, shown in the case, anticipatecl the complainant's invention. This is plainly apparent as toaB, unless it be the, calendering process machiue ori/!;inating with the American Shoe Shank Company, the Blake or Tripp machines, or those with reciprocntingdies. The calendering process was devised before shanks were made from leather, board, tor finishing up shanks molded from wet substances. This machine in no way contemplated the use of the power required to etiectually mold dry and compact substances like leather bolird. The purpose of the original Blake machine ""as to iorm shanks by skiving. Although possibly it might have been strengthened. and its forms then used as stamping dies, yet it contained no suggestion' of any such purl>0se. Topliff v. Topliff, 145 U. S.156, 161,12 Sup. Ct. Rep. 825. The Tripp machine was designed originally for shaping and smoothing sales of boots and shoes. By changing its molds, it was in lact a lapted to shanks, yet this was SUbsequent to the com invention; and its complicated parts, with its slow productipn,polltaip8l{ no suggestion of his simple and rapid mechanism. The prior use of reciprocll.ting dillS is clearly proved. That portion of the first claim which relates to the lifting plate clearly does Dot require the attention of the court; and the case, therefore, cbtl)es down to the ofa patentable difference bptween machines operated for forruing from leather hoard,and perhaps from1ike f:lubl'!tances, by the, use of direct pressure, and those using reciprocating dies. If itcalil that, priQr to the complainant's
of
WATSON V. STEVENS. .
759
alleged invention, reciprocating and' rotating dies were for very many purposes substitutes for each other, well knowl,l in the mechanical arts, so that ordinarily no substantial novelty could be involved in interposing one for the other, this is sufficiently proven by the testimony of Joseph P. Livermore, as follows: "Both of these modes of operation of dies intended to compress, mold, or shape materials or articles similar in their nature to shank stiffeners, [that is, using rolling dies and using reciprocating dies,] were emph>yed in machines long prior to the time of the Watson patent. and are, in my opinion, well-known substitutes, the one for the other." The result is that, if the court finds any patentable invention. in the complainant's machine or "method," it must be in the face of the fact that the like had been in prior use for making shank stiffeners, except only the substitution for this specific purpose of rotating for reciprocating dies, each being ordinarily equivalents for the other. The following are among the latest expressions of the supreme court on this topic: "The elements combined to form the alll'ged invention merely constituted an of old dl'vices, t:ach working out itsowll effect, without prodUCiriglinything noveljand such an assemblage or bringing together of old devices, Without securing some new and useful result as the joi'nt product of the combination,-something more than a mere aggregation of old results,does not,constitnte a patentable invention'." AdatM 'I. Stamping 00., 141 U. S. 539, 542, 12 Sup. Ct. Rep. 66. "While the promotion of an old device, such, for ,instance, as a torsional spring, to a' new sphl're of aetion, in which it performs anew function, involves invention, the trallsfer or adaptation of the same device to a similar sphere of action, where it performs substantially the Hame function, dol'S not involve invention." Western Electric 00. v. La Rue, 139 U. S. 601, 606, 11 Sup. Ct. Rep. 670.
Ansonia. 0>. v. Electrical Supply Co., 144 U. S. 11, 12 Sup. Ct. Rep. 601, cites and approves (page 18) the language of the Locomotive Truck Co. Case, 110 U. S. 490, 4 Sup. Ct. Rep. 220, now a leading one, as follows: "The application of an old process or machine to a similar or analogous subject, with no change in the manner of applicaUon and no result substantially distinct in its nature, will not sl\stain a patent,even if the new form of result had not before been contemplated." . The supreme court, however, has given a caution that no general statement of rules relating to this topic can be followed with safety, unless its limitations and practical application are tested by the special facts of the cases in which used, and also of those into which it is to be imported: "The truth is the word [meaning "invention"] cannot be defined in such manner as tl) afford any substantial aid in determining whether a particular device involves an exercise of the in ventive faculty or not. In a given case we Ulay be able to say that there is prei!ellt invention of a very high order. In another we can see that there is lacking'that impalpable something which distinj{uishes invention from simple mechanical skill. Courts, adopting fixed prin ;iples as a guide, have by a process of exclusion determined that certain varJati.ODs in old devices do or do not involve in ventionj but whether the
I'EDERAL BEPORTER,
vol. 51.
T,ariation'relied upon ina particular: case is anything sklllis a qflestion be answered by applying the test definition." McClain v. Ortmayer. 141 U. S. 419. 427. 12 Sup. Ct. 'Rep. 76. . ' , "In'ioom Co. v. Higgins, 105 U. S. 580,the supreme court determined ip favor of a certain "new result" arising from an aggregation of oldelements,as suffipient to sustaip patentability, although there was in that case function," no "new sphere ofaction," and no "substantially distinct result;" as each olthese expressions might sometimes well be understood. The court said (page 591) as follows: "It 'was certainly & new and usefultesult to make a loom produce fift)' yards a day when, it ,neVer before' lIl\d produced more than forty; and we think ,that tbe of elf'ments by which this was effllcted. even if those elements were sepal1ately known before, was invention sufficient to forin " the basis of & In thiscf.ise the conclusion was aided by the line of reasoning on page 591, as follows: "It i$;furttJer. argue!l.hQwever, that, supposi ng the devices to l:>e Bufllciently ,thlly,do IlQt shpw any invention; and that the combination set 1;ortb inthe,fi;fth clatm: i,.,&, mere aggregation of old devices. already well known. and thereforE! patentable. This argllment would be sound if the combination WebsterwRsan obvious one fOJ:' attaining the Il.d\'antages I,which ,wouIll occur to any mechaQic skilled ill the art. But it is plain from the from t,he, very that it was. not -adopte\ii:an4 \lSed. that it dill not. tor years. occur, inJhis light to Rven the rnp&k'ilkill£ulpersoos. It .1Iluyhave been undertheh, veryeyeB; they may a},mO/.lt b:e said tobave sturn bled over it; but certainly failed to see it. to estimaJ;e its value. and to bring. it into notice. II This last Citati6n, and the deteniiiriatioll in Loom Co. V.'Higgi'lls,are repeated and approved as late as in The Barbed- Wire Pateill, (Washburn & Moen Manuf'g v.Beat 'Em AU Barbed- Wire Co.,) 143 U, S. 275, 283, 12 Sup. Ct. Rep; While the supreme court givesto the fact of the mere salability of a product very little weight, if any, on thequeHtion of invention, (Magowan v. Belting, etc., Co., 141 U. S. 332, 12 DUP. Ct. Rep. 71: MCOlaVnv..;Ortmayf!l', 'Ubi supra; Adams v. Stamping 00., 'Ubi supra,) yEit in Smithv.Vulcanitl1 Co., 93U. S. 486,495, it used, with other ex· pressionsin-the Satne direction, the following: " "We do not say, the single fact that a device has gone into general use. and bas displaced other devices which had previously been employed for analogous uses. establishes in all cases that the latter device involves, a _patentable invention. It, may. however. always be considered; and·. when the other facts in the:cas,e.leave the question in dOllbt. it is sufficient to: turn the scale." This was,tepeated in The Barbed-Wire Patent, page. 284, 143 U. ·S.j and page 447, 12 Sup. Ct. Rep.; and is therefore the latestexpressronof the supretne COlut on this particular topic. The.satne class of 'facts jnLJom Co. v. Higgins, and Smith v. Vulcanite .QQ. recognized weight in The. Wire. Patent, Bupra, and also v. BeltiJng Co., 143 U. S. 587, 12 Sup. Ct. Rep. 598,andPopU.ffv. Tcpli,ff', 145 :U. 8.'156, 164, 12 Sup. Ct. Rep.
WATSON t1. STEVENS.
761
We conclude,therefore, that in applying to cases of doubt the primary rules touching what constitutes invention, and the secondary rules touching what is a "new and useful result," a "new function," or a "new sphere of action," we may be influenced by the facts that the improvement in question, although desired for years, was not secured until brought out by the patentee; that the product of the improved machine or process went into general use by the manufacturers for whom it was. intended,and displaced wholly or in a very large degree prior products; and that, while all prior products had been unsuitable, either through lack of cheapness or adaptation, the new product answered all reas.Onable requirements. . Prior to the first use ofleather board, about 1869, S. P. Rogers &Co. had made shanks from the wet stock of that substance as it came from the paper machines, running it through the calendering process of the American Shoe Shank Company, already referred to. This operation required several different steps, namely, cutting the wet stock into blanks; molding them into form by the "hammer machine;" drying, during which they shrank and curled; and calendering them in the molds of the machine of the American Shoe Shank Company. This was a complicated, slow, and expensive process, and there is evidence that the product lacked uniformity. Certain it is that after 1878 this was abandoned, and was succeeded by the working of leather board, first with skiving machines, and then with reciprocating dies. The evidence is that these later products Were not satisfactory to thp. trade, and the processes were slow. The complainant his testimony on this point is in harmony with the entire he continued the reciprocating dies until 1886, only because he knew of no better method. He further teson this point he was not contradicted-that in 1885 the demand for better and m'ore uniform shanks led him to experiment with rotary molds, and that this resulted in a complete sllccess. On this he based his patent, built at first one machine and then others, and at the time of giving his testimony was producing several hundred thou$and shanks weekly, mainly from these machines, although to some extent, for special reasons, he was still using reciprocating dies. He further testified that he knew of no method of producing shanks demanded by the trade except this, and the record sustains him. It appears that the respondents since this bill was filed commenced again using reciprocating dies; but, without accepting certain refinements and theoriesLioterpolated by the witnesses for the complainant, the case is clear that his· machines are the only ones so far discovered operating with efficiency, rapidity, and economy. It is evident the case is closely balanced; bilt we have weighed the circumstances preceding and attending the production of the complainant's machine,and the results which have followed it, in the light of Loom Co. v. Higgins, supra, and of other cases in which its line of reasoning has been recognized or approved; and we have concluded that thecitcumstances and results referred to prohibit us from depriving the patentee of the presumption arising from the fact
FEDEBALREPOR'l'D i l
ttint the patent,offi6e NCognited him'as an inventor ,And isslle,dhitn a ': . , Stlinding by:,tbemselves, the complainant's c1ahnsaretoo oroad to be sugtainedj"ont.. by reading into them ,lIis specifications, they are limited leather board, ,leath,er, or like material. 1?he i only question raised intbia case, or, indeed, by the present limit our constate :ofit!he's.rt; relates 110 leather board; and cl'usionBtoitlrlli! ,without inquiring leather or other leather board or " ", , ' , , The'dtlereeof ,the :circtiit court, is ,rtwersed, first and sixth claims ofcompIaillant's patent are sustained for use in producing shank stiffeners fronl'leallhef, boord,and:thecase is l1'emanded to the circuit court, wHb instructions1loenter &'decree forthe:complainantfol:&n accounting and for" agninst making, vending, ,or using, for produ<ling shank stiffeners from leather board, any machine or method infringingthe-fustor sixth claims,and for other proceeding$ in conforn;lity with thisopiriioh t the oomplainantto'recover hiscosta:in this and ,the circuit courtt. );}
JOHNsON" ,t
. . ·
Co. ". PACIFIC !tOLI,ING
MILLs
Co.
(Oi7'¢Uii
Court Of .appeatB. Nintll. ,Circuit. JUly 18, 1892.) '81.
PATBNlJos Mlwniol'l'ioNs-PATliNTABtLITY.-..,INV1IlNTION. ,,' , " issued february 20, ,',l'0m L. Jobnson tor a street railroad rail, oombinmg the prlp,cfpal features lit the tram and T ralls, but ,'''with B ui:fferent dUpositionj of' metal.and'oombination of pa"ts, 60 as to allow the , fish plating,are ,voiitfor want of Patentable invention, as the cnang,eln, fOrDlwas 'merely the result 'of mechanical skill." 47 Fed. Rep. 586, , drIlled;"" ,' ' ,, " ' :', '
,.AppealfronJ.the Circuit Court of the United States ,for the ;District ofCillifornia., , i,' In Equity. These are two suits brought by the Johnson Company (aga.inst the PaCific::RolliDg Mills 06mpany and the Sptter Street RailWl1Y Company" respectively, for infringement' of letters patent No. 272,554, isStledFebruary20, 1883, to Tomb. Johnson railroad rails. The circuitcourtdismiesed the bills I holding was no infringement,and that the patent was void: for want of invention. See 47 Fed. ,Rep. 586, statement of tbMacts will be found.in the, opinion :delivered'bY HA.WLEY"J; COTIlplainant appeals. Affirmed. I)j,GeOrge:HardJiJT!g, ,George J. HCLrding; and Wm,. F. 13oo,tIl, for appellant. MJ LM. KfJ.Uoch, and F. :J. Kwce, for appellee. :'Before McKlilNNAand GILBJl::RT:, Judges, and DEADY t JJ(ldge. ", I
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