ILLINOIS WATCH CO. ti.' :aonBl'NB.

:216

(cCrcuit

Own of .AppeaZl,

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Sevmth OWcwU. ,October

No. 82.

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PATENTS ':FOR

In reissued letters patent No. 10,681, granted August 4,1885, to Duane H. Church, for an improvement in stem·winding ;watches, consisting in a combination of a short stem arbor. and a winding and hands-setting train, having no positive connection therewith, each claim,behig couched in general terms, and concluding With the words, "liS and for the purposes specified, "is to be construed as lIuch devices lind combinatIon IIhown in the specifications as, are necessary to meet t!l.e requirements of its gaMral term" and the chl.Uns must be limited to thil elttent. Corn Planter Patent, 23 Will. 181, applied.
to Charles F.Woerd. and patent No. 206,674, to Hoyt, there was no invention in,the

OJ' Ot.AmS-STIm-WnmING WATCEll8.

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In vieVI' Of the prior ltate of the art as shown by,the patent of February 9, 1881,

ART.

mere introdlIctioD tile mechanisIlIfor effecting the Winding ,andha.ndeengl\ieItl.ent, in order to avoid liability of injuring the wheels by the foros of thei'ulili OrpuU upon the short stem IIrbor; but the claims are valid as coverinlt a new an'd utleful combination, the peculiar 'usefulne8ll consistingprincipaUy in rendering watohell audcu61 interchangeable. 50 Fed. Rep. li42, modified.
:8. BlltE-'INJ'RINGBMBNTo'-Ml!:oHAlirIOAL AilmAflolir.
1888, to ThomaaF. Sheridan, No., 876,OUi, and reissuEld August 5, 1890, No. 11,U1O;

The Churoh patentil infringed by watches, made uncler the patent of Jl\J1UIU7,8,

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for,alt1l9ulfh there il a plaindifferenco in the operation of the springs which produce'tbl! mndingand bands-lletting engagement in eacb watch, thatdifferenceil ptodUCedibya simple meohanical ohange, and the other dUlerences ariee from the use 01 equivall\ntl.
4,BAMlIl. .:

A certain lever in defendatit'swatch movement could when the works were out of the wattlh case, be adjusted' to produce normal Winding engagement, but in a stelri·iletwatch; when tbe works are in the case, it is'always held adjusted in suoh manner,'" to produce Dormalllettingengagement. Held, .that suell aconstructiolJl in stelll-setwatches, is to be regarded as operating on the principle 01 engagenu;int, and ali not different in that respect from theconstruotion oitha ChnrCh watoh;' , ,.:. .

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.of a winding :bai"or key., and normally iu positionto,l>pllrate the. bauds, ::Whocebyapositive'congectionbetw6entbe,moveInl!nt and w,iadillg bar

Appeal '!fom, the Circuit'Courfof:the Unlted States for the Norlhem Divisionof,the Northern..Dietrict of IllillOis.' . . In Equity. Bill by: Royal E. Robbins and ThomaSM.Averyagainllt the Illinois Watch Comp!l-uy for infringement of patent. Decree for complainants.50 Fed. 542. Defendant appeals.' Affirmed. Statement 'by WOODS' Circuit Judge: By the decree of the court the appellant was held to have'infringed the 1st,. 3d, 4tl;1, 5th, l'+nd 6th claims of,reis8ued No. 10,631, issued August 4, 1886,. to theitppellees, the original letters No. 280,709, granted July 3, 1883, to Duane H. Church. Here, as in the <lourt below, the"appellant,' besides denying infringement, disputes both the validjtyof'the:reissueand the novelty of the olaims.' Only the first and secOIid Claims of the original patent are relevant to the question filf the validity of the reissue, and they are all follows: "(I) In a pendant windi'ngand setting watch. a movement .b.ving .windendwise movement Ing and setting 'mechanism, adapted to be operated by.

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pmmAt, REP0R'rER, vol.

52.

is bvoided, as set forth. (2) In a pendant winding and watch, a movement having winding mechanism normall,r In position to operate the hands, a winding bar Or key having no positive connection with said mechanis/ll,anda 100S6 or sliding device, adapted to communicate the in· ward end thrust of the bar to the devices for engaging the Winding portion of !laid mechanism with the main Winding-wheel, as set forth." The following are the reissued claims: . jn stem winding and setting watches, a winding train; whion is adapted to be placed ,in engagement with by the longitudinal movement of a stem ;arbol'tbat,hasnoposithe.Qpnnectioll with said train, substantially as and , 11<. (3)Afj an wind· and tram, IS adapted to be p1aced in engagement ,With the or the dial wheels by the longitudinal movement of a stem arbor, and lsnorma]ly in engagement with purpose .set'forth. (4) As an in stem windingalld settingwatohes, a windingaud hands-setis dial combi-:[email protected], aro,tlltable that hilS connection with said $I'ahl,;anddsadapted to within case stem, to cause stitll1Wi1iding And lJa:ntllj"settingtraln:toengage'with thewinding wheel, and. to be simultaneously disen.gaged fro.m said dial substantially as and shoWflllnd' dellcribei:t.'(5). As an improvement in stem winding and hands-setting train. Which is wheels, in with a rotatablelMgitUdinally that bas no positivecpnnectlon with the watch movement, and, when moved longitudinally to,thll'inner limit of and trai,n to be disengaged from SIlJd'j,bl\l,wJ;leels. and WIth wheel,and, when moved .1ongit<Jil1lUly to the outer limit of its motion. will. permit acid train to be said windin'lnvheel andengHged with said dial wheels, sub· sta;utiiYtj; ..and for p,!Jrpose specified. (6) As an improvement in stem winding and setting watctaes, the combination of awindillg and hands-setting train, which is normally in engagement with the dial wheels, a stem arbol' and. an intermediate device which 111 !iMpted to commtinicatj! the inner movement of said stem arbor. to sa.id winding train, and cause'tl\e same to engage with the Winding wheeH /substantially as :and for the purpose shown and described."

!IU)tW

The contained th.is "My invention has for its object to obviate a positive connection between the winding bar and theiqtermediatll J;l1ecb,anism in of the clal;ls above named, and tltereby Olake ;the movements and cases fteely interchangeable, wjthout special adaptl;1ti'on bhny any 'case; TO this end. my in· 'vimtionconsistsin makirlg;the:iutermedilite mechanism above referred to nor· 'mally in position to operate thlo! hands,' sO 'that only an .inward movement of the windingllal", ."",illbe required to change .thecopnection· of said intermediate onlyt«> pressure against Il;\id no therewith." . The reissue contains,<tHe;following: i "The ·object. of my inventi0n Is to rendel" watich,movemeDts,and cases readily interchangeable, to said inven,tion consists princlpal!j as an im. provement in stem ·windihg /,Ind setting- watches, in a wi,ndi!1g and handsseL.lng traln,which iifadapted;to be placed iini engagement witl.! the. winding

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wheel or the dial wheels by the longitudinal movement of a stem arbor that has no positive connection with said train, substantially as and for the purpose hereinafter specified." And besides this there are added statements of what the invention con" sists in, substantially in the language ofthe several claims respectively. The illustrative cuts, letters indicating parts, and the explanations of the respective uses of the parts are not essentially different in the two instruments. In deciding this case the judge below reaffirmed his own ruling and opinion in the case of Same Plaintiffs against Aurora Watch Co., 43 Fed. Rep. 521; and as a convenient mode of presenting clearly and comprehensively the questions to be considered we quote at length from ,that opinion: "The improvement covered by the Church patent is applicable to the class of watches where the watch is wound and the hands set 'by means of the stem, and consists of an oscillating yoke, carrying upon its under side, pi voted at or near its longitUdinal center. a pinion, which is so set as to engage with smaller pinions carried at each eM 'of the yoke; this central wheel or pinion having beveled cogs on the under side thereof, which engage with the beveled"pinion, which is set in the line afthe stem, and into which the inner end of the stem arbor enters a short distance,' by a square or octagonal opening.' so that this beveled pinion can be rotated by the stem arbor. By rotating the stem arbor, motion is imparted to the central pinion of the yoke, wherebysucb motion is communicated to the two pinions at the end of the yoke. Passingthe small beveled pinion with which the stem arbor engages is a loose sliding block or bar, which meets the inner end of the stem arbor. for the purpose of a thrust or push motion the stem ""rbor, and acts 8S an extension'or prolongation of the' stem arbor. By pressing the stem arbortnward. this sliding bar acts upon a spring, which throws the stem winding and setting train into engagement with the Winding wheel, which is done by SWinging the yoke so as to bring the pinion on one end of it into contact with the winding wheel. when, by rotating the stem arbor, the watch can be wound up, there being a latch in the sheath or case of the stem, which is arranged to hold the stem arbor at the extreme of its in ward movement,' whereby the Winding wheels are kept in winding engagement; while, wben it is desired to set the hands, t.he stem is drawn outwardly,' \"hich allows a spring arranged for that pl\rposeto swing the yoke out of winding'and into setting engagement. It will be seen that a latch or catch iJ:ithe stem, which shall hold the stem arbor safely at the points of its extreme inward and outward movement, is necessary to the stem-winding and stem hands-setting device, and the patent shows a latch or retaining device in the stem to lock the arbor in either the winding or setting position, of which Church claimed to be the inventor, and for which claims were lowed him in his otiginf\1 patent; hut on the application for a reissue an interference was declarell between himself and Colby as to these claims, on the hearing of which Colby was decided to be the prior inventor of the locking device in the stem, and Church's claims for that part of his device were disallowed, and the for that feature awarded to Colby. The Church patent, therefore, while it contains a description of the latch or retaining device in the stemsheath, has no claims covering it, but the stem-winding and stemsetting devices of his patent are adapted to be used only with some deVice for locking ,the stem arbor in its inward and outward positions; and perhaps this comment will hold true as to all practical stem-winding and stem-setting watches. Infringement is charged in this case of the first; third, fourth, fifth, and sixth claims of the reissued patent, wlUoh'are as follows, [given above:]

of

leIltim&sued, ,upon Btar-:tOOi ··i) describ,e (3) that, with sufficient certainty the device by which the "', '" ,<' i r : ,." ,,' l ' .. , Clhtichdevice winding and ba'rids-setting' not effected by the;dhect'foree of the push lipijriiihe !whichlsobjelitionable.; because the force, of the blind of ,appHeel. is liable'toJ:nju11e mechanisms which are thus forced into contact with each other. These winding lanll; 8!j>out by ments <If bdllg iutoaction springs, ar£9 carries the winding and se£tiq.gtrains. For' as'ord'ina-rily;carriedlii tfiepocket, ahvaysiIiwlndihg Is !et¥ectHt by;pushi:ng the stem wardly., to the limit of its movement in that direction, when it is caught and held by. the, latch, in the "TIli!! mO,veWfnt. stem,arbor carries invtar.11 (tbft lo0EK\sUJ:J.j:ij;gl bijJ; or 9\9ck" i is called hi w.ith andll\yings inwardly an arm), Wl1iell!Pfl.·. spring to 1,Jpon theel1.d 9t.:the )(oij,e the ,WM!,;·.'d,/B,g "t,',ral,U' "a, t.,herebY,brm,gS .. " tbe winding' pin,ion' with ,the w;\l}dlng whee1 ,of the Thisspdngbeing HUt cogs o,f or do not meslt;they teat,in, :j:eyolved. when its cogs CQtil)eat.once btto with,thElcogs wlien they are So at its Whent1m frorqits inward movement, the anp 4PQll bar.; N, has been i>rought. whlChSWlngs the yoke out of ,the. 'Winding, ; carrying the hands-settingpinion into .cont!$ct:withthe dial wheels, :andt/le ..cogs of the respectiVI! happentomeetinthe!.proper relation, and, if not, they are retained in QOntactuDtil, i the !>fthe piniop,s bring the cogs int.o 6ngagement.:, " " " " ' " 'C J' . . wil!ba ft:ot1\ have. mad\, that the engagementsofthe.P1PIQOsuH.1;lisyoke Winding alld dhd wheels are by theoperatiml,otS{lrings,\yhich aTe brollght into operation by inward :and,outwardt1\ovelJ"i,nts of: arbor. It is because these a,M, P9t constl'ainj!d, when the parts are spllinglU1'6 in, in the :haQd-selltlng .engl:\geme.nlis, that. says · tbat the ting tlj.e the mecbapill,l1l.' It is, not claimed that Church WAS the; first tomakea,.9,tem-winding and stem set1iingdevice f.or a ,Rawnt shown in this case, granted 101844, to Adolphe NicQle,:shows a device for winding a watch anq.setting its bands by, the stem arbor,J;qe in aN",-shaped lmetnlpilltew,ith a lj.ear its cogs or tel'th 011 its outer and beveled cogs on thl;l undel' pfits rim. The beveled cogs tl1e beveled pinilj>ll attached to the end of wise movement. ,.ThisV-shaped metal plate the stem arl>or; w,hich' .· l\ll,r,g,e centralPin-. carries upon its., PO,int"a,fWl,,.ll"l,LPinio,n. Vl'hiCh g, s !item llrbor ,tq this. small ion, 110 that ' This V;-shapE'd metll1 is to the nim,!which holdstbe Qilov:ementa.t itsrighlrband col'ller'ulsu<:h)l position thllttpe the wi\1ding and dial wheels" pf tbe and., by.pressipg on.: the, stem arb,qr this smalLpinion :into C¥>T\tiWp:.with the winding wb'ileJ, while, .when the stem arbor is with the dial

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Here; then. IllSftOW,n a devicefoT winding and setting the. hands of the watch byalongitudinalmovementof:tbe stem arbor, and the V-sbaped plat$ shown operates substantially, in the·,aame manner as the oscillating yoke in the Church patent. But the stell arbor was positively connected with the winding:and setting train. and thl'se two engagements for winding and setting were brought about by the direct pull and push oHhe operator upon the stem arbor, whiCh was liable' to fnjure the delicate structure of the small wheels. if they happened to come in contact:in such a way: as not to'direCtly or mesh into each ,other. In the Lehman Ameriean patent of July, 1866. a stem-winding and stem bands-setting device is shown. in which a rotating and longitudinally moving stem arbor is. made to work the winding and hands-setting mechanism without the oscillating yoke or plate; the winding and bands-setting engagements being brought about by clutches arranged upon the stem arbor within a movement, 'so that this stem arbor husa pQsitive connection with the movement or: works of the watch, and with the hands-setting and Winding train. The engagements of the winding and hands-setting train arealao effected by thepuil and push oUhe stem arbor, which makes the mechanism liable to be injured in bringing about these engagements.asI have already described. These two patents seem to me to be fair' representative types of the different classes of stem-setting and stemwinding watches, which are shown in the art. from .the proofs in the case. The Carnahan patent of October, 1881, shows an oscillating yoke, carrying the wheels at each end, which are respectively brought into engagement with the Winding and setting wheels by longitudinal movements of the stem arbor. The patent granted to Charles V. Woerd, February 9,1883. also shows an oscillating yoke, carrying, a winding pinion at one end,. and the hands-setting pinion at the other end, by meuns of which the Winding and hands-setting engagements are obtained through the Instrumentality of a longitudinally moving stem arbor; but in both the latter devices, as in the Nicole patent. the force of the pull or push to effect these engagements is expended upon the wheels. and is therefore liable to injure the wheels in the manner which has been described; so that Church seems to have been first in the art to obtain the winding and setting engagements by means of springs. which were brought into action by the inward and outward movements of the stem arbor, thereby avoiding the liability to injure the wheels. "It is true there is but little difference, mechanically speaking, between the operations of the Carnahan and Woerd devices and the device of Church. Both Carnahan and Woerd show the winding engagement as the normal condition of their watch. and the hands-setting engagement to be the exceptional or constrained condition. But. as I have already said. their mechanism and arrangement of opprative parts are such that the pull and push upon the stem arbor Is transmitted directly to the wheels which are to be brought into engagement, and therein they differ from the Church device. The advantages claimed for the Church device are (1) that the movement can be removed from the case of the watch without taking the movement apart so as to remove the stem arbor; (2) that there is no liability to injure the wheels in effecting either the setting or winding engagements. II As to the first ad vantage insisted upon, it appears clearly from the proof that Church was by no means the first tosbow a device whereby the movement could be taken from the watch without removing the stem arbor or disturbing the same. It is shown in the Bre?: patent of July, 187&, in the Fitch patent in the Eisen of December, 1880. and ill tWe Woerd patent, wllichI have already cited. besides in several other patents which appear in 'evidence in the case, and which it is unnecessary to refer to. But I find in nor.o of the patents «ited any mechanism which effects the 'Vinding llnd setting engagements by means of'springs which are brougbt

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FEDERAL REPORTER,

vol. 52.

a Inanner as to relieve the wheels from the direct force of the'{11SUandpush upon the stem arbor.. As I have said, Church did not invent'1tbtFShort stem arbor. which allowed of the removal of the mo"ement· fromtMcase Of the watch. nor did he invent the latch or lock. in the sheatb of th6stem arbor. by means of which the sttm arbor is retained at the limit of its'l!8'wardand outward movement; but he has adjusted and attached what he'did invent to be used with such a stem arbor, and 1 therefore think he haSth'eright to claim that bis winding and hands-setting train has no positive cO:Ar.eetion with the' stem arbor. as he has, by means of his sliding block.N, withtnthemovement. secured all the results which would be ac· compllflhed by, a longer stem arbor; this sliding block or bar, while it has no positive'connection with tbestem arbor,:being so arranged in 'connection with the stem arbor that it ispusbed inwardly by the inward movement of the stem, and follows the stem arbor outwardly when the stemis withdrawn to (from) its tnward limit, by reason ofithe action of the springs belonging to the winding and bands-setting trains. . .. As to the criticism that the claims of the plaintiff's patent are too broad. and include results r.ather tha,n devices, I: will merely say it is One of the settled canons for the construction of the claims of a patent that they mustb6' so construed, if possible, as to uphold the patent; and in the light of this rule, 'wben tbe ·flrst' claim is, in terms, for a winding and band-setting train that is adapted to be. placed inoogagementwith the Winding and dial wheels of the watch bya longitudinal'movement of the stem arbor that has no positive connection with the train, ,the ,claim cannot be held to mean any kind of a winding and hands-slltting'train, but auch a,one as is shown in the specificationsatld;,drawings of the 'patent. If tbe: claim is held to mean any winding and setting train adapted to be put into Winning and setting engagement by a Iongitudiflal movement of the stem arbor, which has no positive connection with the train, then it would, manifestly be anticipated by the Woerd and Carnahaa patents, and perhaps otherin*entors who show Winding and setting trainRMapted to be plaoed in winding and setting engagements by endwlsemo\'ements·of· stem -Ilrbors'that ,have no positiv1 connection with such e :And' this explanation, applies.to all the, claims. If they are to be rllad in the btoadest 'lJenseof' wbich their language is capable of being understood, then they are obnoxiOUS to the criticism that theyal'e claims for results and not deviCeik:Bot"the"words ·snbstantially Bsandf()r the purpose shown,' ta'ke,us ba0k draWings, and bring the dev·ices there shown into claims, and I 'construe the: claims as for the devices there shown.' Therefore,whBethese claims are broad, I think they can besustarnl'd as fortihe ,devices which 'are described.CO'l"'T/; Planter Patent, 23 Wall. 218.1 oti , * *" In resPlilct,tp in tMs the, court below, after giving a list·ofpatents,inproof,which had not beeu- adduced in the Aurora

Oompany O18e',said,:

. II A careful study of these additioMlpatellts, as well as a re-examination of those considered in the former case, has 'failed to cMnge the conclusion announcedin that case as to the novelty and validity of the device covered by the Churchpl\t'ent as There, is therefore no question left in this case A compartson of the Church patent with the dtlfeMantsl shown. in evidence, and Ii of the expert in'the' me that the' defendantll' 'watches embody all of the'Ohurchwatch, as covered by thIs reissued patent. a pivoted yoke to effect the engagement of the winding and setting Both ;W:llel'ls. ,111'6ac1l case this ypke is acted upon by two opposing springs, one to:obtaintbe Winding, and the othel' the setting, engagement. In both the

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spring producing the setting engagement is the stronger of the two; hence. when they are eqnally free to act, this stronger spring controls the action of the train,-antotnatically puts it into setting engagement. In other words, the watch would normally be in settinK engagement if Lhese two springs were left to the operation of their respective forces. In each watch the winding engagement is effected b)' restraining the action of the stronger spring, and allowing the weaker one only to act without restraint. In both watches this stronger spring is held out of action by pressing the stem arbor inward, and locking it at the innermost positi<)n. In both the restraininJt force upon the stronger spring is applied by means of a short pin or nib upon the sliding stem arbor, and in each the inward movement of the stem arbor bends and holds the strong spring from its normal work, and the withdrawal of the slem arbor releases this spring, so that it at once brings the train into setting engagement. It is true that in defendants' watch there are some slight changes in the shape and location of the operative parts, and by reason of these changes intermediate levers and pins are interposed at some points and dispensed with at others, to effect the connections and movements of the operative parts, which, as I think, is quite tersely stated by the complainants in their brief: · The operative parts of each watch receive power from the same source, under the same conditions, transmit it to the same destination for the s'ame purpose, and with the same result.'" The Church patent has been upheld by Judge SAGE of the sixth circuit in a case of Same Plaintiffs against ColumbU8 Watch Company, reported in 50 Fed. Rep. 545. In respect to the question of infringement the appellant insists that the evidence establishes the following propositions: First, that the normal engagement of appellant's shifting train is with the winding wheels, instead of with the dial wheElIs, as in Church's; second, that the 'Stem arbor has no thrust operation in a winding connection, the Church has; third, that it has the improvement for preserving the.leeth on both sides of the walch, as stated by Hoyt to be the object of his improvement, which Church does· not, mention, and has only on one side: fourth, appellant overcomes a weak spring by a stronger one, while Church overspring bya hand thrust on the knob or crown of the comes stem j fifth, 'th.at appellant's shifting spring acts directly on the yoke, while the single Church spring acts on one ann of the four-pronged rock shaft; sixth, that appellant's train has no block, N, as the Church has; seventh, that appellant does not have the four-armed rock shaft that Church has; eighth, that appellant does not have the three-wheeled yoke which is essential to the Church combinatiQns; ninth, that appellant's combinations are new, and radically different from the Church· . Bond, Ada,ms & Pickard, for appellant. Goo. S. Prindle and Lysandm- Hill, for appellees. Before HARLAN, Circuit Justice, WOODS, "'ircuit Judge, and JENKINS, District Judge. WOODS, Circuit Judge, (after making the foregoing statement.) In conformity with the ruling of the supreme court in the case of Corn Planter Patent, 23 Wall. 181, 218, it was right, we think, to construe the claims of the ·patent in question as embracing the devices shown in thaspecf:fications, each claim btling regarded as jncluding such devices

222
heceSsarY' to ·rueetthe. requirements Qf. it'.'!s'e)t'preMed.·' Rl'eS(1
,IS

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. .ng .. of t.hat '.'.',Th. . .Its . cg,mbmatlpI1 of parts machme, aiDdooone can basaid,toinfringe!!¥ who doesnQt.use tbe ..entire combinatil!lni'l. This, of'course, the.do.ctrine of equivalents, ekplicit terms to· reserve' the benefit. I' W '. tl::ie" ruay' Q)e BiwsRf34 9thEW, the <ltd we do ltpeGessary now It.maybe that there IS no essentiabdiffel'OOC6, since the reference. in all is to same devices as ar" rangtl'd"i:n'a single combination. . ". 'devicesandcombitiation. desoribed ill the reissued letters are not i asthe.corresJ)ol1ding 9,!IPAlS. (jf Roth regarded liriiiteq by the we do not thatlP. any pi there. or is asserted an invention different fromol'whicl:ds6xpanded beyond ,what was origiqalJN: claiJ;ned,:, There is reason for pronouncing the reissue invalid. . ..... . ' . ..... .. In: respect to Church's invention and its advantages, the court below .· its, cbliltJ,'acterisHc" to be that)he winding and not effected by the direct force of the push BIl<!·,puU up<;>n,tpe. stem ar'9or "that Church seems to have been t<> t4e wifldipg engagements by . were, into .actioJl by the inward and .of·thestem arpor:, thereby avoiding the liability to injure thl;tt.,'w.hiIe Chprch, ,<lid not invent the short stem arbor, [adapted] what to ,96u,se<i suph. stem arhOl:, ltnd . * * * has winding, has no posithe rigM tive the stem arbor, as he has. by means of his sliding \>lock,;:N, .the all the results which would be accomplisp.edbya longer stem arbor;;'. . ".'.' After' a careful of the.p8.tellts exhibited in proof of the prior ltr:t, and especially in view of tb,e Woerd patent, .which, it is con. littler, wechania,J.l1y" the ,Church, We are not ablH to see that in the broad,stWlile was the first to obtain the winding and setting engagements of springs, or so as to avoid liability of injury to the \'V,heds. IIi :the Woerd watch the winding or pormal engagement is, efl;ected ?f a.spdng, e, and the sallie spring is in some measure effective, manifestly, to' prevent injury to the wheels when the opposite engagement is accomplished, as it must lie, by an.o.utwardpull '()f the stem arbor;:wbereby the lever,'f, is pressed upon the ,arm,!, of the ,plate,. b, pushing it inwardly, and swinging the yoke" V" so. as tmeffect ,the setting engagement. . As it is here used, the spring plays an important .partin .respect to both engagements, being the active.force .thatprodnces qne,anda resisting force which tends to
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....:o ..f.eit.,?!i.,.:;9f.!t. .·.

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pMveIit undue and sudden violence to the injury of the wheels in the production of the other. Besides, there being one spring in the device, whereby one of the effected, withal1the',advantages of that modeM opel'ation,' it requires no invention to introduce into that device anothel.'spring to subserve the same ends in 'respect to the other engagement.' 'Snchaspringmight be located at some point between the end of thErle-ver, T, and'the yoke, V, in connection:witb, or perhaps without, some ()f the parts shown; but, what is simpler still, the lever itself mightbe:so reduced in thickness as to become a spring, more or less strong, but:riotso but that with the resisting force of the spring, e, the meshing of the hand-setting wbeelswouldoccur'wit1?!out shock or injury. Tuming to Hoyt's patent No.. 206,674, we find two springs in use foretrectingthe respeetiveengagements, one of which acts automatically, and the other under the pressure of a lever: There is, therefore, as it seems to us, no element of invention in the mere introduction of springs into the Ohurch device, nor was any new USEI or new kind of ad..' vantage in' watch construction obtained thereby. Church's!inveIition, however, has superiority over Woerd's, Hoyt's, Carnahan's, or any other whioh has 'come under our notice, resulting, not from any partioular }!lartorelement of the device, but rather from the combinationand 'arrangementoHhe parts as a whole. That combination is Dew and useful, and its peculiar usefulness consists, as we think, not so muchinthespringEl and consequent protection of the wheels, as in the faot that tJie ,declared object of the namely, "to render watch movements. and cases' readily interchangeable," is better accomplished than by any preoeding construction. By transfp,mngCarnahan's lever from tbeworks to the case, Woerd achieved a short stem arbor, and made the movements and cases' interchangeable; but, to say nothing of other differences,the placing of the lever, which is one of the movement devices, .in the case, is a marked disadvantage,sinceit requires a special formoi case, and that, too, of awkward and unmechanical arrangement. One of the features of the Church patent, expressly mentioned in' all the claims but the first, and implied, perhaps, in· that, is that the winding and setting train is normally in engagementwithtbe dinl wheel; and it is to be ob. served that· iii the. patents of Woerd, Carnahan, and others, which show the closest approximation in construction to Church's device, the normal winding wheel. It is, of course, easy, and does engagement is with not involve' invention, to change'such engagements, if nothing more than the change is sought, and in some of the in evidence normal setwatches, of which. ting engagements. are found, but the1are:in the Wheeler is an example; and whi,Ch, as the evidence shows, may readily be construoted with the normal engagementin one wheel or the other; but in stem-winding.and stem-setting watches it is not so, and as an element· in the combination shown in Church's claims the normal hands-setti,ngengagementplays an impoliant and indispensable part. In'respect to the question .6f infringement, a number of propositions are pressed upon our consideration. In the com parison made ofthe two devicea,:b, the court below, it is asserted or assumed that of the two

sptings !ibeach,the str0ngeri engagement, and resultiug, isimilarities of construction and operation are pointed out. It is now insisted that: Church's. paoout does 110t show or describe a. weaker and a strongerspnng; that there is only one spring in his and: that the restrainibgof the llctiondf a stronger spring, and therellyallowing the weaker one only to nct without restraillt, .are shown in the Hoyt and Wheel&1rpatents, which both belong to the appelllmt,and are older than the appellees' patent. this respect the court fell verbal inaccuracy," ,but not, we think, into material error. There are certainly two springfjin.Church's which are brought into action in producing the ,They are,dewribed as springs, and designated "K" alld'.'i'i", K, When, unrestrained, effecting the setting engagement, and the other, when brought into action, asSt must be, bytbe inward thrust of the stem arbor, effecting the winding engagement... They were not iin properly called "opposing!springs," because K resists the movement of the stem arbor, which brings i. s into operation. Butron the other hand, 'is does not resist the counteraction of K,when the s.tem arbor is drawn out. Whether or not one of these springs is stronger than the other is not stl,tted,and need not be considered, because the ,normal operation of K is not resisted by the other spring. In the defendan.t'swatch, it is true, the tw'o ,springs are in cOnstant and direot opposition, and consequently the one. producing normalrengagement is and must be, the stronger. It wdnld be more accurate, instead of the corresponding expressioIlsin·tiheopinion quof.eq, t6 say that in" both watches the spring producingr tbe:setting. engagement is not controlled in its action by the other sprin'giand,. when otherwise linrestrained,.puts thetl'ain into that engagement; '?,andthat "in each watch the'winding engagement is effected by restnaining rtheaction of one spring andallowingot causing the other alone'teJ act; the spring: so ,restrained- in' both .watchesbeingheld out of aetiall ofthe stem arbor, locked at its innerinost position." .Thete is;. as 'stated, a plain difference in the operation of the two. springs whicheff"ectthe winding.·engagements in,the respective devices. In Church1s. watch ,that spring is forceddntooperation by the pressure of the stem arbol',on an arm Of the rock shaft of which the spring itself is a1lOtherarm, while in the defendant's watch the spring is automatic,' effucting the engagement· by its own force, whenever the opposing· strength of the other jspring is overcome by the pressure of the stem arbor. : Is this an'essential difference in construction or operation? We thinknnot. Starting,with the Church it requires only ordinary sk:ill..and" certainly not :invention; to effect the change. It is neceesaryonly to sever the spring, is, framthe rock shaft, and attach it to the plate, A, in Buch position as that it shall constantly press on the same end of th'e yoke, E, as now, in order to produce a complete correspondence'between the two, devices in respect to the location, character, and operation springs. This simple mechanical change, requiring no, other alteration whatever, in the Church device to make it operative, would entirely elimin!litethedifferences, whether 'of :construction or operation, mentioned 1in:appellant's2d, 3d, 4th, 5th"and,7th proposi,.

ILUNOISWATCH CO.

f).

ROBBINS.

225.

tions; and with that alteration there would remain of the mechanism between the stem arbor and the winding and hands-setting train in the Church construction a three-pronged rock shaft, which, for all its functions, finds a full equivalent in the defendant's slide bar. i, with its projecting arm and pin, as they are shown in the Sheridan patent, under which the defendant's watch is made. Another projection or end, as it is called, of that slide. bar, is a plain substitute for the movable block. N, of the Church combination. Instead of the three-wheeled yoke of Church, the defendant employs a yoke with two wheels, one of which meshes with either the winding or setting wheels as the yoke oscillates. It is one of "the well-known forms of intermediate mechanism," which Church said lIlight be substituted for the mechanism shown in his

But the first and chief difference insisted upon is that the normal engagement of appellant's shifting train is with the winding wheels, and not with the dial wheels, as in Church's patell!. There is only a semblaqce of truth in this. In the defendant's stem-setting and stem-winding watch the normal engagement is really with the dial wheels. The assertion to the contrary is specious. It is based on the fact that in the Sheridlin patent there is introduced a setting lever, ll, so arranged that it maybe put in engagement with the end of the spring, l, which is thereby placed under tension, and by reason of its greater strength overeomes the opposing spring, and produces the setting engagement; but when the lever.P, is thrown out of engagement, the spring, l, swings freely upon its pivot, without tension, and leaves the opposing spring to produce the winding engagement, which is described as normal. But when the device is placed in a'!\tem-winding and stem-setting case, the lever, P, cannot be shifted, but is kept unchangeably in engagement with the spring, l, holding it firmly in the position of tension, and causing it to act exactly Whatever, therefore, may as does the spring, K, in Church's be the uses and effect of that lever in other forms of construction, in a stem-winding· and stem-setting watch it serves no purpose except to fix the spring in the position of tension, and that spring, when left to act as freely as it can act in that position, produces the stem-setting engagement. In that form of construction, therefore, that is the normal engagement, and the two devices are not different in that respect. The necessary conclusion is that the appellant's watch, though made in conformity with the Sheridan patent, is modeled after the device of Church, and contains substantially the same combination of parts or well-known equivalents, arranged to aecomplish the same result by the same mode of operation. The decree of the circuit court is therefore affirmed. v.52F.no.2-15

226:,:

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Co.

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II.

and tnellieenlleewbOi1f8 Ueel!lse conveyslllJ!, exc!usiV(I'1nonOpOly.' i , : j'.,.... ,': ,': , ' " ,:;, A liollDse ito manufalltl1rei\me, glass chimnE\Ys under a, patent, by the patehj;ee, with "otliers;ao,1l8 J1dt"estoP th,.e licensee, fro. m, bbJec,ting that SUCh, other: . partiea cannot be paf,eJ;ltee rlll' an ItCtion ,against the licensee for in

8.

Where, in a joint complaint by two or more parties. the facts stated do not show ., ':. ofa,ctlon in, them. a demurrer., On thegr0ll,u!i th,at thec()mplaint does " not'state' facts sufficient to Qon,titute a cause of action; m:ust 'be sustained·

.II.,

".'!h JEquity. Suit by George W.131air and! said .', :Bla.irassociatedwith' PaliIZiIrttDhatt,pa:rtl'lersaa Dithridge &Co.,agairist the Lippincott Glass Company, apatent.iHeard on demurrer to" bill. ' Dernurrer'sustained. . , . " W.-Bdkewelt &rSi>naand W. A. Van Buren, for complainants:lihtnk O. Lovelatnd, ,4hr defendants.' .

,,]hedemurrer of the ,respondent to the complainants! 'of<lomplaint'/presellts the sole question in ;this case. The sufficiency. of the COplpllliIitl'hinges()n the question whether a suit in equity for the infringement ,OL.a patent right is maintainable jointly by the patentee and alioens6e, whose license, no exclusive monopoly. An exclusive license, to ,the extentof the interest gran"ted, is construed to bean! 'equitable assignment,andclotqes:. the licensee with an interest, ;1RJ1J·mvdo, in ,the monopoly. ":The which can carry ,the monopoly isthat ,of 'an!exclusiva right. or of an undivided interest in the exclusive right to practice ,the invention, including theexclusi¥e right to make, thEiexclusive right to use, and: the to sell,the patented invention;'l ' · The inventor ofa new and usef\lHmjlrnvementhas no exclusiv.e right to it until ,he obtains a patent. This right is created by, tae statute and seClared by the patent, and, no suit ,call :b&maintained ,by, the: inventor against anyone for using it bef.ore,theipatent is issued. The ldisoo;v,orer has a mere inchoate .stat-. utoryrignt, waiah he may perfect and :make absolQW by proceeding in the m8JIlI16l'w.hich.theJawpr,.esori:bes.: ,Beevea v.Corning, 51 Fed. Rep. 774. The monopoly secured to the patentee if:h:fQl" one entire thing. It is the right of makioDgjusing, awv.ending tootbel!Sto be used,the improvement he has invented, and for which the": patent is granted, to the exclusion of all others. The monopoly did not exist at common law, and the rights which may be exercised under it must be regulated by the law of its creation. It is created by the act of congress, and no rights can be acquired in it unless' authorized by statute, and in the manner therein prescribed. Gayler v. Wilder, 10 How. 477. The stat-