F&DEBA;r. REPORTER, voI.37.
be willing to actnpop weighty and important matters ,relating to .your afflj.irs! you have no doubt." If, in view of the evidence and 'charge of the court, you believe defendant guilty of murder, you will 6,nd him guilty as charged in the .indictment. If, however, you find that he is guilty of manslaughter, your verdict will be: "We the jury find the defendant Ddt guilty of murder, but guilty of manslaughter." But if you find that he is not guilty of either offense, murder or manslaughter, you will simply find him guilty. Verdict OI gum;)' ot manSlaughter.
RoDEBAUGH
etal.'D.
JACKSON
,et ale
(OI,rcuit Court.E. D.Midhigan, February 23,1889.) 1. PATENTS FOR INVENTION8+-CoNS'i'RUCTION. Though a patentee of a combination, whose originlLl claim was rejected in view of the prior state, of the art, is to be held stri!:tly to the combination des'cribed 'in hlsmodifted claim, he is entitled to the benefit of the doctrine of equivlLlonts. " .' . SUlE7P4'I::lIlN'1'-&,;BILITy:-.-SAW-Mu.(I, DO.Gs.
Claim 1 of letters patent No. 196,102, October 16, 1877, to George W. Rode,for an improvement in saw-mill dogs, is for the combination of an eccentric' lever, pivoted to the standard, with a cflnnecting strap articulated to ap ,ot tp.e carrying the dog-head, the parts being so ,arranged that. a downward movement of the leverw,ill imbed i?ti> the and lock It there, the leverassUlJiing a perpendicUlar posltlOnagamst the standard, out of: the way. Held, that the use of such eccentric lever in place of the "T"leverused in prior invention, described in tlIe Craney patent, the, operation of the twobemg the same, and the, alleged difference, that .the eccentrlo le'Veris not affected by back pressure, being strongly denied, and it being alwaY'S hitended that lever shaH be locked or held in place' by a weight,.is nota patentable improvement. : The arrangement by which the lever is perpendicular to the standard when the dogislocked, if an fO,r a lever ",hich hIcks is anthe Oraney device, and, if a patentable improvement. is not inticipated " fringed by aefendant'ii combination, which does Dot Use it. I
..
8. SAME.
APPLICATION FOR REHEARING.
4. SAME. ' . . ." The deVIce was anticipated also by the Ely patent, No. 168,809, May 18, 1875; for a head-block, which was a combination of an eccentric lever work· ingwith a cam, and operating .on th,e vertically reciprocating bar carrying the dog, and' capable of locking the bar in any position; the being carried upon a cylinder in substantially the same manner. ' ' fj.SAJolE-.-CONSTRUCTION OF Cr,AD[.
, .' '}.'he origillal claim was the ,eccentric lever and connecting strap;combined ,with the vertical shaft the dog-head, substantially, etc.. and was reto the Ely patent. Held, that claim 1 of the patent must .fected on be limited to the'speciflc device described, and is not infringed by a device in which the lever has its greatest locking capacity when in a horizontal positioll', and losing its locking capacity when perpendicular. .
"""ltO);>EBAUGH
f).
JACKSON.
"j
$83
In Equity: This was a bill inequity 'to recover damages for the infringement of the first claim of letters patent No. 196,102, issued October 16, 1877, to George W. Rodebaugh, for an improvement in saw-mill dogs. The claim alleged to .be infringed read as follows: "(1) The combination of the eccentric lever, E, El, pivoted to the standard, B. at 0, With the connecting strap, F. articulated to the arm, G. of the reciprocat.ory shaft, D, carrying the dog-head, the parts so arranged that a downward movement of the lever will imbed the dog into the log, and lock it there; the lever assuming a perpendicular position against the standard, out of the way, substantially as
The defense was anticiplltion and non-infringement. 'CharleS J. Hunt, for plaintiffs. . C'Oulter& Griffin, (Harry E. Knight, of for defendants.
B.aOWN, J. A dog is an instmment for holding a log. in position while it is being sawed into boards or planks. Formerly the log was supported On the ends of the carriage, llnd was held firmly down, and secured against lateral displacement by iron dogs hinged to the carriage, and havinK teeth, which were driven into the ends of the]og. When the circular saw came into use the form of the carriage was changed. Instead of supporting the log at the end, it was laid so that its side rested on the. side rail of the carriage, and was supported its entire length. To hold it in position, two or more movable supports, called "knees," were placed upon the carriage ,behind the log. To prevent the rolling of the log, tw;o or more pieces. of iron were hinged or hung to the cross-pieces of the carriage, having at their free ends a right-angled hook, which was driven into the log. These were also called "dogs." After a time, this arrangement was followed by teeth attached to the knees, and operated in various ways. Some were driven down into the timber byblows,and some by Jl}ElRnS of levers of various shapes. In some cases the teeth mov:ed simultaneously in an upward and downward direction,-that is, into the .upper and under of the log or cant,-and in others the action was separate. These teeth were not often locked in place, but in. a few cases the adjustment of the lever locked them in position. These teeth were also called "dogs," but the term was also applied to the whole device, .which was placed on the knee of the carriage, and included all .the mechanism for protruding and retracting the teeth. Under this state ofthe .acr:t: tPe patent this suit was issued. The patentee, Rodebaugh, clailIls an in these dogs, consisting of an eccentric lever, pivoted W the standard upon which the dog slides, the office of which is to raise and lower the reciprocating shaft, which carries tqe dog-head by means of a connecting strap between the eccentric lever and reciprocatingshaft. By. the useQf this device the teeth of the dog are forced into and withdrawn from. log at pleasure. In. order to ascertain the full scopeQf Rodebaugh'sinvention it is necessary. to advert for a mo,. JI;lent, to the first claim of.bisoriginal a{>plication. It read as
884
FEDERAL REPOItTER,
vol. 37.
"(1) The eccentric lever, E, EI, connecting strap, F, combined with the ver· tical shaft or bat, D, carrying the dog-head, substantially as described for the purpose specified." Thisvvas a broad claim for the use of an eccentric lever and connecting strap, combined with a shaft carrying the dog-head, for the purpose of raising and lowering the teeth, and was rejected by the patent-office upon the ground that it had been substantially anticipated by patent 163,309; issued to O. R. Ely, for a head-block. This was a combination of a lever working with a cam, the object of which was to elevate and depress the dog-head, which wllscarried upon a cylinder in much the same manner as Rodebaugh's. The ground of the rejection is not stated, but it is obvious that it must have been upon the theory that the eccentric lever of Rodebaugh was a substantial equivalent for the weighted lever and cam of the Ely patent. The operation of the ,two is admitted to be substantially identical; and" in our opinion, the action of the examiner in holding that there was no invention in substituting the one for the other was correct. Uponthisintiination from the patent-office, Rodebaugh amended his claim, and restricted himself to the combination of the eccentric lever pivoted to a standard, with a connecting strap articulated to an arm of the reciprocating shaft carrying the the parts being so arranged that a downward movement oithe lever will imbed the dog into the log,and lock it there, the lever assuming a perpendicular against the standard, out of the way. Defendants'theory is that Rodebaugh, having assented to the rejection of his original claim, and havi'ng substituted another, is bound by the literalism of his new claim; and, inasmuch as in the defendants'device the lever when locked does not assume a perpendicular position, as required by Rodebaugh's claim. there is no infringement. If it be broadly true that a patentee who has reformed his claim under instructions from the patent-office is thereby debarred from the benefit of the doctrine of equivalents, his position is correct. It is true. there is an intimation in the case of Sargent v. Hall, 114 U. S. 86, 5 Sup. Ot.Rep. 1021, that the limitations introduced into an application after it was persisteutly rejected, must be strictly construed against the inventor, and in favor of the public, and looked upon as in the nature of disclaimers; but, on a careful consideration of this and other cases. we think nothing more is meant than that where, under the state of the art and the action of the office, a patentee of a combination has modified and limited his claim, he shall be held strictly to the combination as he has described it. Thus, in Leggett v. At'ery, 101 U. S.259, it is intimated that if an applicant, in order to obtain the issue ofa patent, acquires in the rejection of a claim thereto, Ii reissue containing such claim is invalid. But there is no suggestion that the patentee of such reissue is not entitled to the benefit of the doctrine of equivalents. So, in Vulcanite Co. v DllvifJ, 102 U. S. 222, 227 ,after disclaiming an assertion that the correspondence between the applicant for a patent and the commissioner of patents can be allowed to enlarge, diminish, or vary the language of a patent after it is issued, iUs said that a patent, like any other written instrument, is to
"BODEJ;lAUGH ". JACKSON.
885
be interpreted by its own terms. "But when a patent bears on its face a. particular construction, inasmuch as the specification and claim are in the words of the patentee, it is reasonable to hold that such a construction may be confirmed by what the patentee said when he was making his application. The understanding of the parties to a contract has always been regarded as of some importance in its interpretation." So, all that was said in Fay v. Cordesman, 109 U. S. 420, 3 Sup. Ct. Rep. 236, is thnt, if the patentee specifies any element as entering into the combination, he makes such element material, and the court cannot declare it to be immaterial. It is his province to make his own claim, and his privilege to restrict it. If it be a claim to a combination, and be restricted to specified elements, all must be regarded as material, leaving ()pen only .the question whether an omitted part is filled by an equivalent device or instrumentality. There is nothing in any of these cases inconsistent with what had been previously regarded as well settled. or to lead one to believe that it the intention of the court to debar the patentee from his right to pursue an infringer, who has endeavored to avoid his patent by use of a well-recognized mechanical equivalent. We think. therefore, that we are bound to look to the state of the art at tirpe .this patent. was applied for to determine the limitations upon the claim in question. . Under the first clause of plaintiffs' patent as amended, there are none ()fthe sO-.called "anticipatioI;ls" which are worthy of serious consideration, e::ccept that of Craney, which undoubtedly resem bles Rodebaugh's device it; all its inwortant particulars. There is a fixed standard, A, corre.sponding to plaintiffs' standard, B, a guide-bar, B, answering to the reciprocating shaft, D, and the same lever, E, though in one it is a "T" lever .and in the other an eccentric; a connecting bar, D, performing substantially the same functions as the connecting strap, F, of the Rodebaugh patent, and a projecting or horizontal arm, C, which answers the purpose {)f plaintiffs' arm, G, projecting from the upper end of the reciprocating :shaft. All these elements perform substantially the same functions as the corresponding elements of the Rodepaugh patent. There are, how.ever, three diE'tinctions in the two devices which it becomes necessary to notice before determining finally the question of anticipation: ,1. In the use of a "T" lever, instead of an eccentric. This fact is re1ied upon by the plaintiffs as constituting the improvement which disiinguishes the Rodebaugh patent, not only from that of Craney, but from .all the otners which are claimed as anticipations. But the testimony, ..even of plaintiffs' expert. indicates very strongly that for the purpose of .driving the teeth of the dog into tbe log, a "T" lever performs the same function, and in as effectual a manner, as an eccentric. The operation ·of the two is precisely the same. Indeed, a model was exhibited in which an eccentric and a "T" lever were used to move coincidentally -the same connecting rod, and their operation was shown to be practically identical. The one difference suggested is that eccentrics are not affected by back pressure,"':"a'dis,tinction which is strenuously denied by defend:ants'experts,":"'while the lever may be moved backward and forward,