.lfeJ;lQaJ;lt'!'! cap There; no originality in the .uoltcap,and the complainant's hillm,nat be dismissed. Decreed ac" (lOrdingly. i..'
REEnet al. E. 1.' ,
fl. S14lTH
et aI. '
p. Michiu!MJ-. 'January 6,1$00.) CLAIM-HARROWS.
!l1he first claim ofpateutllUInbered 2011\14,6, to De Witt C. Reed. for an improve;ment in harrows, covers the combination of a harrow frame anll harrow tooth 86, cunld therein, SO as to be IbngltUdinally adjusted, and a fastening clip, constructed , w.lt.h,twQ ,biting :edges,bearing ,against tooth, th,e object of which:is to bold it JX\ore, roridly in than would be l'0ssible if the pressure were uniformlyu, ' thewholeWldtb cUp.' : " ' , " ,the patentee'Boriginal <!latml tne secOnd $llaim iSreBtricted toth& eombination With,. ,:ha'i'MW provided Witn a curvecl aeat, of a ourved tooth, anll suob a clip ': ,: ,dealrrjbed In the first
,,', '" In y1ew 9f the state, pfthe al't, anel of, thQ limitations put by;t11e l'atent-ofiloo upon , ' :' 1
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The use ofa ourv:edtootb resting upon a curved seat had previously existed m.. the,appUqatiqll of to a ha.rrQ:Wi,a not,invention. , :
the Reed'Patent, olip was fiat, and the seat was not curved, y!lt it was he14 that,giv!ng the patentee ,; . full ofmlll/hllol1i,Cll101 eSluivalentB, the. tnree straight ,lines , 'tlSed'by tne defendants f,o 'fOrm the B1'O 'of II: Cirele were the equIvalent of the curved " ·J Hne:.', III order, that, the workiug end of tib..& be.,rrow to,oth be:raill64 or dep!"6S!!ed,,' it r d.sr thlj.ttJ;1e end oe \;UrY'e<1" an4itJs desirable, tbatit should rest, )lJlOD biore or lesB" c\itfed; but whemllil"th18 .seat be a literal curve, or a i series of ;atraight lines,: the, e1leot of w.hiQ\l is iii O):\l've, ill of ,no iI/J.p,ozrtanoo!' He,ld, i obtalDell full benellt oj, the ourved clip 'by the peculiar confor. . ' ibatlon of the seat 'tWo shOUlders; wbfuhperforinild :the,same funotion .as tbe i ObJtibg edges of the'o11p. 'J ',;:,' " " '" ,:' ;' 'J:
pBtElntls otthecllp; and It makes biting edges 'are' uBedaS8 seat. wIth a straight clip ..on the 0p,Po\lite. -surface,and .betwelln them, Or whetl1el' 8 curved seat Is · " l1s!ldoonforming to the shape of tbe tooth, Bnd the biting edge clip on the opposite " ;:. 'Bid&.' 'Held; theliecond olaim' was infringed by ,the defendants. ',. '(81Illaha byth.eCom1.). ", ;, no vahiable
tbe · t<;l Doe so to ,p.ortjon of ingQnr
an novel
. ,.,Q80.
seatl.Bec.W'ing it thereto by ac}ip,pr ;its'Elquivalent. in non-infringement! ' The to ;th e,. cour.t)1. . . fQr
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at length as anticipations, anq precludethe possibility of our holding that there is not a patentable elty in the invention. It would have been more satisfactory if some of these opinions had been reduced to writing, 'as we could then have learned exactly what was, decided, and upon what state of facts each decision was made. As it is, we are compelled to compare the patent with the infringing devices in each case; and, while this may afford a satistactory for4etermining the exact question decided, we are left to conjecture, to a certain extent, the reasons which prompted the decision, and the evideJ,we upon which it was based. While we are bound to hold this to bea valid patent, which we do, not only out of deference to these adjudications, but from our own examination of the Case, we do not feel ourselves debarred from looking into the sbite of the art, and the proceedingsin the patent-:office, for the purpose of gi\'ing a. construction to this patent, and ascertaining the SGOpe of the invention. A comparison of the claims as originally ,made with those allowed by the demonstl'at.es, we think, that Reed considered himself, ,0r wished to, bl" considered, as'a pibneer,in the of adjusting curved when, in fact, such adjustment, as teeth 10ngitQdinallyupon their applied to hlly':raJtes, had,beell known long before., While it may have added very to the practical value of the spring-tooth harrow, in view of .the ,simillnuse and operation of the two instruments,it does not seem to us,ina legalll;spect, to involve invention, or anything more than mechanicalskiH,to adapt the adJustment of rake teeth to the teeth Q{ a barrow. The object is the same in each ca!!e, viz., to bring the' teeth back int<) line when their proper alignment has been destroyed by their beconiing bent or broken, in being 'brought into contact with obstructions,. rhis view adopted by the patentQ,tfice,as. is evident by t1:le action taken \i pon Reecl's original claims. In his oriw.nalspecifications he states his invention to' consist "in a novel means fora'djustinl( the said tooth soasta give to its point a greater or -less depth of crit, which is effected by making that portion of the tooth which is'adjacent tQ the, frathe curved, and resting on a curved stlat,and secure it thereto by a clip, or its equivalent, by the loosening of which the tooth. may be throwtl forward, or pushed back, beneath its fastening, thus lowering or' raising Its' point, as will be hereinatter set forth and claimed." Further on he states tha:t "the cross-b:u or loop portion of the clip is preferably formed concave' upon its under side, and' with a concavity greater than the corresponding portion of the harrow tooth; 'so that, when brought';down to a firm bearing upon the tooth, thisoross portion of the clip will find a firm bearing at its edges upon the tooth, and hold it and. rigi'dly upon its curved seat." In his drawings he presents several'alternative forms of bars or clips; all of whiCh, however, with possibly'one exception, are made. concave, so as to hold the 'tooth ngidl'y against·thefrarne ',by two biting edges, instead of a, flat surface. In his specifications he states other variations" and says ,that rest,upon . the pTinclpalftilUnre ofhisinvention is "that the "a'eurved sellt', and be capable of being adjUsted lOD'gitudiually through
8ft its said seat, and thereby either elevate 'or depress its working And again: . . U is not absolutely essential that tht'l under su rface of that portion of the It clip or plate that presses.upon the tooth liIhould be concaved, though it is pref. erable. Nor is it necessary that it should bear only upon the tooth at the edges of the plate, though it is preferable that it should be constructed to bear at its tw;o edges upon the tooth." He then proceeds to claim: U(l) The combinationwith the frame, A, of a cUrYed harrow tooth, made adjustable longitudinally its seat,.for the purpose of raising or lowering its working point, sUbstantially as and for the purposes described." . This is broadly a' claim for every f()rm of longitudinal adjustment of a curved tooth uponits seat.' , U(2)'.('he. with a harrow frame provided with a curved seat, of a curved harrow tooth l IDllde,adj ustable longitudinally upon the said curved seat, whereby its 'working point maybe raised or lowered, sUbstantially a$ and for the purposes " . , This claim 9pjy)r(its limitittionto seat. Both these claIms were r:eJected upoIireferellC!l to patents of Paq.dock and HoUingswor,th for imprqvtlments in "The Pad· a ,and held 10 pIltcElPY abolt,or clampmg h<?,pk, one end pf whIch is curved in a, V tooth,aIld' the other' eI).dof which the axle, 'to which it is securwl' by a nut:·, . The Hollingsworth also$hows a.curve4tooth, held·4pon a curved seat by a 'set-screw, to rigidly to the 'bearing, .and to'adt:nito, forward or backward adjustment of the tooth.. " , ... , . " ,.. ' .'!(S) harrow:p'll,meandbarrow toot-h, cih clip. or its eq,ujvalent. tooth to frame, llIade to bear at. its edges upoil the harrow torlth,substant.ially as arid for the purposes described;" Thiscla:im seems to construed by the patent-oflice.as claim fora clip, or its for,sttcuring the tooth to the frame, :although it was limited to a. clip made to hear at its edges upon the hatTOW tooth, and was reJoo,t;ed UPOIl reference. to the. Eqgar patent, wllich ,shows the teeth of secured to the 9foss-bar by or ;baf similar to a clip, does. not .. ';Ci "(4) The combination, with a harrow provided with ,a cur.vedseat, /'Of a curved tooth and clip,. or ,its eq\livalent.,P, supstantially as ana.; Jor the <purposes described." '. . " ..
a
to stand,and ·became the eecpnq 6llii:lp .;Some question was made upon ,theargun.ent with regl!-rd wthe 'proper position of. the letterD; thinkjt should have .",We -elip,D, or its equivalent,":as in the specifica.tions"D" is. as "'a clip whereby the tOQth.issecuredupon its In ,o(t,h,e first . three claims was, substituted the .following" ,Which ,was allowed. ¥>' stand :asthe first claim of the patent: . . "The combination, WIth a hatlrow frame and barrow tooth secured tht'reon, i soaBto longitudinally cUp, {oIlpeEi¥
c'. 'This claim was
BEED". SMITH.
885
whereby only its transverse edges have bearing against the tooth, substantially as set forth." Both of these claim" are alleged to be infringed by the defendants. It is clear the first claim is fora fastening clip, constructed with two biting edges bearing against a tooth, the object of which is to hold it more rigidly in position than would be possible if the pressure were uniformly exerted over the whole width of the clip. This was the construction put upon it by Judge SEvERENsin the case of Reed v.NelsDn,(unreported,) and is obviously correct. The second claim, broadly construed, covers a curved seat and curved tooth and clip, or its equivalent. Plaintiffs claim the clip need not be curved, and that the language of the claim is satisfied by a clip ofany shape by which a ctlrved tooth is fastened t9, a curved seat; but in view of the state of the art, as disclosed by the Paddock patent, we find it impossible to give it this construction. The drawings annexed tothispiltent exhjbit very clearly a curved rake tqoth,held in place u'pon a curved seat by a¢Iip 'running through the axll;':;and ,bolted to it. As·before observed, while the adaptation of this device.to a harrow was undoubtedly -a happy thought, and appears, to have been the one thing insure the popularity and general use: of the spring-tooth hlurow, we do not think it belongs to that class ofconceptions'which 'the li", J>y the name of "Invention." Indeed; e;:p,ersonco-bld har,dlf look at the Paddock device without noticing 'at once how easy it would be to adapt it to a harrow, and, if the patentee had seen or known ofthis device,such adaptation,would probably have occurred to him long before. While he may have eVOlved his device of a curved tooth resting upon a curved seat from his own brain, if, in fact, the same dev,ice pre.. "\'iouslyexisted in a similllf form, and had been applie4.to,aninstr,ument bearing such a close resembhmce to a harrow as a horse-rake does, hot at liberty to credit ·him with the invention.;We find 'it impossible to escf.\.pe the conclusion that the clip. which lies at thefoqndatiQD of the plaintiff's patent" is limited toacurved clip.with bitillg edg l\, designed to hold the tooth. rigidly· in itsj;leat. Thisseetns to have been th¢ view of the patentee himself, as showtl, not the drawings annexed. to his patent, but from his action in consenting to theer!l$ure (If the.}Vord "preferably" from his specifications, leaving them to read. "the or loop portion of the clip is formed concave upon)ts under sidej"and also from his erasing the clause in which it was slj,id.not to be absolutely essential that ttleunder surface.of;the clip should be ,cQncaved, The testimony of the blacksmith in whose shop the work was done, indicatEls that, with a, flat piece for .soJDe Mr. Reed came backto his shop "with the piece of harrow and tooth to fix it over, i.twas not tight enough, and co.uld not hold it." Then he "Mr. Reed went andtooj{ a little (more off .of the wood, and had me to make an,other plate, a littlehell.vierand little hollow, .so that the edges ofthe ,plate would bear onto theJooth." 'Oonstruil1g the second limite<ito the .D, deg,c);ii:>ed in the specilicatioI)s and in the.firstclaimj do; the, defen<,laqts ipfrmge th,eir'cUp is :tlat, iP,is
886
P"EDERAL'
'vol. 40.
is n<>t curved j but,'witb:aIF that; 'managed to te there is of value it} this,device. Considering the of this invenHon asbearin:g l.rporlthe utility of the harrow, and the restriction!! we are',bOh{\d 9Y law to tput upon these claims, we think that, so far as they' aI'evalid, we are bound to interpret. them liberally, and to give the patentee the full of the doctrine! of mechanical equivalents. Now,the. general shape of the seat usedhy defendants is a curve, and it only escapes being a by the fact that three 8traightliries are oiled" instead of the ,curved Une, to forin the arc of a drcle.We had oCCasidn, many ago, in the case of IVe8 V. Ha.milton, which wil.Scarried to the supreme (court', and is reported inQ2 U. S. 426, to hold a. similar evtlsionasappliedtotheripright gUides of It saw-mill to be an infringement. ' In this 'the supreme courraays: the crooked bya'?rokenUne, instead ot l\' curved line. is too transpll.tent an imitation to need a moment's considetatlO'n. A curve itself is often treated. eVeD In matlkmatical science. , as consisting ofa succession of very Ilhort, straight linea. or alr<me broken line, were evolved constantly'changing its direction; and many ,beautiful by the early mathematieians, on this ,hypot:beilis. At all inmeehanics, wben, a,broken line is instead of a regl,1Jar curve. being dedected,&t, O,oe or more points by aV,ery angle.a:qd: precisely the salDe office as a curve Ilimilarlyllittiated, the one i$ clearly the equi valent of the 'Other."" : , ' : 'JI / ,-
aU
In ordell' that thewbrking' end of the harrow tooth be raised or depressed,it is necessllry that ,the other end be curved, and it is desirable that it should rest upOn.' a $eatmol'e' or less curved ;:but whether this seat be a:1iteral 1curve,or a series of straight lines, the general effect of ' which is a curve, is of no sort of itnportance. The chiM'difficulty in this Case :lies in the defendants'· clip, which is flat. It will be observM,however,that they obtain the full benefit of the curved clit)' 'by thepooaliar conformation of the seat with the two "houlders, which perform substantially the same functions as the biting the edges of the: clip; and, in connectiollwith a ,flat clip tooth midway'betweeI1 the two shoulders, holds it rigidly in position. Now, as before ooserved;thevaluablefeature in this ' patent is the two biting edges of'the clipjand itseems'.'tous to maktNio'practieal difference whethet thepany seeking to avoid' the patent uses these biling edges &s a seat on whichto rest the tooth with 8i : band or straight clip bearing upon the opposite surface tlfthe to6th,.betweell: the edges,or whether he uses acurvetl Beat made to conform to the shape of thetooth, and a biting edge clip beatingupori'the 'opposite surface to hold it in Such a reversal or interchailgeof' functions is .immaterial. The '0 bject in either ease is to dbtaina firmer grip'upon the:tooth'by cbncentrating the pressure upon tiwo or three poin:t&than is possible by distribUting it uniformly over theerttite'surface ofthe clip.tInlthis respect it is possible that defendants' aevice is superior to the plaintiffs', ,but We' cannot say that it is not aninfttil.'lgement of their paten.t.. ,Did we feel any doubt regarditig'this queation of infringement t we"8notild' feel ,bound to resolve those
BOBBIE
JENNISON.
887
doubts in favor, of the plaintiffs, in view of the large number of devices offered in evidence, all of which have been adjudged by different courts to be.infringements ,of their invention, and some of "hich bear a much more distant resemblance to theirs than does the device used by the defendants here., ,Our' conclQsion upon the whole case is that the ants hate infringed thesecoud claim of plaintiffs' patent, and there must :bea decree in their favor for an with the usuall'eftlrence to a master to assess their damages.
HOaBIE
et
0),. 1'· .TENNISON.
(OirC'!Lit Oourt, E. D. Michigan. 'March," '1S89.)
Piuwft Pelt mBNTIoNs-IN1'RINGEMENT-YIOLATION 01' 'rBUITORIAL RIGBTlI. , , Tht! sale of a patel1ted. article by an aSlligqee of the patent within his own terri· '(St/lZabusbt/.·'fh,e Ooun.)
tOry carries the right'to 118e it whhin territory owned by another, though l1i be known to both parties' that a use out6ide 1ihe.,vendor'sterritory is intended.,
action ofletters patept No. 45,201, issued to orie Wyckoff, November 22,1864, for ,proveJllellt in gaB 811dr pipes. .1'h<:l cp.se W8jl before the court of facts:, .' .}?laintiffs were thel\;f;lupon suPs,tantially 'signeElS Qf the patent fQrNew York, New and l,llLthe stAtes:tlorth of.the CarqIine.s,and canied,()n business as manufacturers .o{thepa.tented N. Y., with,suffilfienl facilities for supply.ing the market.iJ;lI.all. tlle territof)<owned 'hi them.' Defendant's of llimselfan4 one, Ayra\llt, was the ll,ssignee ,firm, which .had -for ,the. of,MichigaIl and othetaVJ.tes, the . ,at :aay Qjty"in firm ,did business qq.ring thel/;rf:jater part ,*e firm &: Co., whi,cr .' at the years 1,877, 187.8. ,anq 1879.: Ayrault, J'enD.!i&.Qp. & Co. were in turp. succeeded, , P/!-I:t of .188h by, a ,cqrporation located at and,. 9"'nJog naHle qf ,the MIChIgan PIpe Company. Two suits have cimieqtprough to by . ,}}resent as.. territorial. owners of the .. Pfttent, , fo,r to, charged in this. of the firm ofAYl'ault, Smith, & Co., and tq"e o,ther against the s)lits, were in. the porthe.ru.liisYork, qecided by Judge COXE, whose decision.is JriQt o( N:o; question was in this case "ith _ tlIe title. of n4?r the validity of the patent, b:ut t4e)egality of a,certQ.in sale. of pipe made by the < 1.6;tb ,ofApJ,'il, J880, AnqrflW Harvey & Son, ,@fJ ;wrote tl;1eAef'¥lQp.nts closed a; cdn,tract:to ,w;th pipe,.