"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,
I
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FEDERAL
REPORTER, vol. 37.
unless it ;is locked; however, is of no imparlance, .as it is always intended that the lever operating the dog shall either be locked or held in place by a weight upon the end of the lever. We are clear in our opinion that there is no invElntion in substituting one for the other. 2. There is: in the Rodebaugh patenta rearrangement of the entire combination of the Craney patent, by placing the lever and locking device midway' between the upper and lower ends of the standard, instead of at the bottom, and using it to depress the upper dog, instead of raising the lower dog into the log. Wedo not understand, however, that the rearrangement ofan old combination, where each element of the combination operates practically as before, is patentable, unless anew or greatly improved result is gained. Woodward v. Dinsmore, .4 Fish. Pat. Cas. 163, 169. The variations of the Rodebaugh patent from that of Craney are scarcely greater than those of defendants' device from that of Rodebaugh,and it is entirely clear to our mind that defenoants' device differs from that of Rodebaugh only in the reallfangement of the combination, by which a Tod, operated by a thrust, andarticu.laling with themovil:ble shaft at the bottotn,is substituted for the connecting strap, F:,.operatihg by tension, and articulated with the reciprocating shaft at the top by means of the arm, G. In this particular the case is much like that of Iva v. Hamilton, 92 U. S. 426. 3. The feature of the Rodebaugh patent,by which the leve:r, when the dog is locked, assumes a perpendicular position against the standard, out of the way, is not found in the Craney patent, and- is probably the novel arrangement which obtained from the patent-office the allowance of his first claim as amended. Now, this is either a mechanical equivalent for a lever which locks horizontally, or it is not. If it be such an equivalent, then it is anticipated by the Craney patent, but if it be not such equiValent, anu be a patentable improvement upon the Craney patent, theQ it is not infringed by the defendants, since they do not use this feature of thecla,im. There was undoubtedly considerable mechanical ingenuity shown by Rodebaugh in readjusting the various elements of . the Craney combination,ilnd perhaps some improvement in its mechanical operation, and we think his device approaches very near the border line of invention; but upon the point which has been most earnestly pressed upon()ur attention, that the eccentric is aplltentable improvement overtl1e"T" lever,-and the plaintiffs' case was practically put upon this ground,-we have notheen able to adopt their view.
ON APPLICATION FOR REHEARING.
JACKSON, J.
(March 1B, 1889.)
I concur fully in the conclusion reached by the district judge, patont of October 16, 1877 ,-letteriq:latent No. 196,102, was anticipated by 'the patent issued to Thomas Crlmey,-No.. 150;534.-:dated May 5, 1874; that 'in' so far as the Rodebaugh improvementdiffer!;f1om·that of the Craney patent nothing niore tha.n mechan-
BOY!>". JANESVILLE HAY TOOL CO.
887
",kill waeinvolved and exercised. lam 'further of the opinion that said Rodebaugh patent was anticipated by the patent of ElY,-No.163,309,-dated May 18, 1875. 2. If the Rodebaugh patent could be held valid, it would, in view of the action of the department, as shown .by the file-wrapper and contents, have to be limited to the precise mechanism and construction therein de,scribed, and, as thus limited, it is not infringed by the machine used by . defendants. Rodebaugh's original claim was broad enough to have covered the machine as used by defendants. It was "(1) the eccentric lever, E, Et, and connecting strap, F, combined with the vertical· shaft or the dog-head, substantially as described, and for the purpose specified." This claim was rejected by the patent-office on reference to said Ely patent, No. 163,309, in which is found an eccentric on the vertically reciprocating bar, which carries the lever dog, andCltpable oflocking the bar in any position it may be set. Upon the rejectiqn of this broad claim Rodebaugh was compelled to present the claim. now shown in. claim 1 of the letters patent issued to him, .whichQl).nnot. by any construction, or. under any rule of doctrine of equivalents, be Mlargedso as to cover, or embrace.what was previously It must manifestly be limited to the specific device therein described, in which the dog-head is locked when the eccentric lever has been moved of the circle, of its action, and through the half circle, or 180 brought into a perpendicular position with the standard or shaft. The defendant's lever is differently its greatest locking capacity when in a horizontal position, and losing this locking capacity entirely when carried. tQtbe position of the, perpendicular at which the Rodebaugh lever makes its most effective lock. I am clearly of the opinion that the.appIication for.·rehearing should be denied, that· oom.p!ainanta" bill should be with,.costs. . .
HOYD 11. JANESVILLE HA'Y TOOL
00. t 9. 1888.)
(Oircuit OoUrt:',W. D. Wisconsin.
1. 2.
PATENTS FOR INVENTlONS.,...AN'TICIPATION-HAY ElJEVATOB.
Letters patent to John M. Boyd, N0.800,687, dated June 17, 1884, are.vofd for want of, nQvelty, being. anticipated by prior patents. . .
·Mere differences of form and mechanics, which do not involve il).vention, are 'not patentablo. (SyUaous oy (lie Oour'.)
SAlIIE.,...PATENTABILITY·
In Equity. This was ahiil forinfringement of letters patent of the United States No. 300,687, to Jot hay The defendant manI
Fubijcatlon delayed by failure to obtaiIl copy of opinioo at time of delivery.