E. C. ATKINS & CO. V. PARKE.
953
150 U. S. 47, 50, 14 Sup. Ct. 32, to the effect that while certain prior patents may not strictly anticipate, yet they may aid to cr:eate such a state or condition of the art as to require the restriction of a subsequent patent "closely to the devices and methods claimed" by it, I could not concur in any opinion sustaining the validity of either of these patents. But apparently the trend of this court, an shown in Folding Bed Co. v. Osgood, 7 C. C. A. 382, 58 Fed. 583, and in Herrick v. Leveller Co., 8 C. C. A. 475, 60 Fed. 80, precludes me from following my own views as above expressed. Therefore, I concur in .so much of the opinion of the court as gives a broad support to Noyes' first patent. It seems to me, however, that his second patent must have been taken out as a matter only of greater caution, through fear that, by some possible interpretation of the claims of the first, every method of using the electric currents would not be covered. To my mind, this was unnecessary; and, unless the patents are to be limited to details, the claims of the first patent cover every form of current changes particularized in either. I think, therefore, that undel' Leggett v. Oil Co., 149 U. S. 287,13 Sup. Ct. 902, and more particularly and clearly under Miller v. Manufacturing Co., 151 U. S. 186, 14 Sup. Ct. 310, the second patent is void. Most assuredly has there been no infringement of the fourth claim of the second patent, which expressly unites in the combination two receivers. On so much as relates to the second patent; I know of no decision of this court which precludes my judgment. On the question of infringement I agree fully with the conclusions of the court. For the reasons stated, I concur touching the first patent, but dis sent touching the second. E. C. ATKINS & CO. v. PARKE et at (Circuit Court of Appeals, Sixth Circuit. No. 118.
May 8, 1894.)
1.
PATENTS-AsSIGNMENT-\)ANCELLATION.
A clause in an assignment of a patent that, if the assignee fall to make certain statements and payments within a certain time after the same become due, the assignors shall have the right, by giving notice, to cancel the exclusive privilege and grant conferred, does not authorize a cancellation by notice given at a time when no money is due. On a bill by the assignee of a patent against the assignors for infringement, praying for an accounting, defaults of the assignee in not complying with conditions of the assignment and other wrongs on his part, which do not authorize a forfeitnre by the terms of the contract, are not grounds for a cross bill by the assignors to cancel the assignment, or to remove the cloud on their title to the patent arising therefrom, or for other affirmative relief, where all the matters complained of may be pleaded as defenses to the original bill, and damages therefor may be considered on the accounting.
2.
SAME-SUIT BY ASSIGNEES FOR INFRINGEMENT-CROSS BILL BY ASSIGNORS.
Appeal from the Circuit Court of the United States for the Eastern District of Michigan.
954
\'01.
61. ,
ThIs 1$ by E. O. Atkins a corporation created and -Organized UD<ier the state of Indblna,agalnst Amos S. Parke and Sarah A. Parj.t.e,residents of Bay Oity, In the state of MicJligan, for: infringement of letters patent No. 333,540, issued to Sarah A. Parke, January 5, 1886, for swaging and for an accounting for profits and damages. The billavefS ,that on the 30th of ;r/Lnuary, 1886, the patentee constituted l;ler true and lawful attorney, to sell saw swaging machines. and transfertC!n'itorlal rights to manUfacture and sell the same. On February 2, '1886, the bill avers that said Amos S. Parke, as SUch agent, sold and conveyed ,to the plaintiff the right to make and sell said machines throughout the United States, excepting the states ot California and Oregon, and the territory Of Washington; that all interestfn sajd patent, excepting in said states and territory, was thereby transferred and conveyed to the plaintiff. The bill further avers that the defendants, without the consent or license of the plain· tiff,lmdnotwithstanding said granLto sell, have infringed the plaintiff's rights1)y qlaking, at Bay City, Mich., saw swaging machines according to the inventiOn of said patent, and have refused to desist from such manufacture or account' 'for' their profits and damages. The bill' prays for an injunction and for 'an account. The answer admits that the plaintiff is a corporation;, that Sarah A. Parke is the, true inventor of the patent named; that s4e made Amos S. Parke hel' true and lawful attorney; but denies that said attorney did grant and convey to plaintiff, or its representatives or assigns, tbe exclusive right to make and sell said machine according to said invention. But defendants admit that on said 2d of February, 1886,they did enter into a certain contract in relation to the manufacture and, sale of the improvements mentioned in said letters patent, and that a copy o'f ,said contract is attached to the answer. The defendants deny that the plaintiff has substantially complied with the tern1sof said contract, and deny that, by a substantial compliance with the material conditions thereof, all,l'lght and title to said letters patent is vested in the complainant. The defendants deny that they have infringed by manufacturiIlg said saw swaging machines, or that the plaintiff had any right or title ina.nd to said improvements described in said letters patent at the time said bill was filed, and, at that time, deny the plaintiff had any interest in the profits of said machines, made under said- patent, and deny that the plaintiff had any right to make and vend such machines. The defendants admit that said Amos S. Parke, after the termination of the contract marked "Exhibit A," as her.einafter stated, on or about the 29th day of January, 1889, did begin to make at Bay City saw swaging machines, and has made about 60 of such machJnes, but deny that they were unlawfully made in violation of the plaintiff's rights. (1) Defendants claim that said contract of February 2, 1886, was not an unconditional sale or transfer of the defendants' title, but was only a conditional sale, liable to be terminated by default of the plaintiff, at the election of the defendants. (2) That said plaintiff was in default by falling to comply the stipulations in said contract, and same was not in force at the time of the wrongs complained of. (3) That plaintiff has failed to comply with the condition of said contract by neglecting to fill orders for said machines; that, on the day said contract was made, said de'fendants gave an order to the plaintiff for twenty-five of said machines, but plaintiff failed to fill said order until about July 8th, following, , when ten of said new swages were sent; that repeated orders were sent for said machines, bl1-t riot filled; and that the defendants thereby lost sales of the same, as they had contracts for the sale of the same. (4) That plaintiff failed to manufacture said machines as fast as the demands of trade required, and as it agreed to do. (5) That from F,ebruary 2, 1886, to January 26, 1888, plaIntiff had made and put qn the market not to exceed 60 of said machines, and had not sent to dewas ready sale and an active demand fendants to exceed 30, though for the same. (6) That, by said plaintiff's failure to make and place saId machines on the market, lost the sale of a large number, and the profits on the same.
E.C. ATKIXS & CO.
v.
PARKE.
955
(1) That the plaintiff made what machInes were manufactured in a defective and unworkmanlike manner, so as to injure the sale of the same, and, of the 30 sent to defendants, 10 were so defective that they could not be sold, and were returned to the plaintiff; that, out of the 60 machines made and put on the market, 42 were returned, as appeared by the plaintiff's letter (marked "Exhibit B"), and the defendants charge they were returned because of defective make; that from February 2, 1886, to January 26, 1888, the defendants had orders for machines which would have been filled by machines reo turned if they had been well made. (8) That plaintiff failed to promote sales by refusing to advertise; that defendants furnished cuts which were not used; that portions of said invention which related to swaging band saws' teeth were wholly omitted; that, though the plaintiff manufactured various articles in lumber and working of wood, and advertised largely, in none of said advertisements is sald improvements shown. (9) PlaIntiff was interested in the Hinkly machine, used for similar purpose. and therefore did not work in good faith under said contract, but made in· ferior machines to retard their sale. (10) That plaintiff has forfeited its rights, failed to make reports and pay royalties; that from the 2d of February, 1886, no report of sales was made until March 17, 1887. (11) That on the 26th of January, 1888, the plaintiff having forfeited its rights under said contract, defendants elected and did declare the contract forfeited, by written notice served on the plaintiff. (12) Defendants charge that plaintiff was interested In another saw swaging machine, and entered into a contract to control the machines made under the Parke patent for the purpose of preventing saId machine from being put on the market, and that said contract was a fraud on its part. (13) That, since the making of said contract, plaintiff has caused to be made and put on the market other saw swaging machines, and did all in its power to prevent the Parke machines coming onto the market. (14) Defendants claim the patent described in No. 333,540 to be of great value and use to the public, and, if manufactur.ed and sold, would be a source of great revenue to the defendants and benefit to the pUblic, and, If complainant is permitted to prevent the manufacture and sale, defendants will be irreparably injured. Defendants submit the plaintiff is entitled to no relief, and pray for the same benefit by their answer, as though they had filed a cross bill or a demurrer.
Chester Bradford, for appellant. James Van Kleeck, for appellees. Before TAFT and LURTON, Circuit Judges, and RICKS, District Judge. RICKS, District Judge, after stating the case as above, delivered the opinion of the court. This case was first heard upon the pleadings and evidence by Circuit Justice Brown, while district judge for the eastern district of Michigan. In an oral opinion, which we find printed in the record, he held that the written instrument of February 2, 1886, set forth in the bill, was an assignment of the patent, and vested the legal title thereto in the assignee, which is the plaintiff corporation, described as E. C. Atkins & Co. He further proceeded to consider whether, without a reassignment or a cancellation of the agreement by a judicial decree, the assignors could claim that they were ex· onerated from liability as infringers. His conclusion was that: "Where a patentee contracts for the use or sale of the patented article upon the payment of certain royalties, that he cannot, as against such liceusee,
956
FEDERAL REPORTER,
vol. 61.
maIntain a suIt tor Infringement simpl1 nponthe ground that the lfcensee has faUed to pay the agreed snm. It was said.ill Hartell v. Tilghman, 99 U. S. 547-555, that in such cases the pl!-tentee can establish his royalty, and sue at law, and recover every month or every yea.r for what is due. He may also file a bill in chancery to have the license annulled or set aside, because of the difficulties placed in the way of its fair execution by the defendant. It was held, however, that'he could not abandon the contract, treat it as a nullity, and charge the defendants as infringers liable as trespassers under the act of congress. 'We do not agree,' says Mr. Justice Miller, 'that either party can,of his own volition, declare the contract rescinded, a.nd proceed precisely as If nothing had been done under it. If it is to be rescinded, it can only be done by a mutual agreement, or by the decree of a court of justice. If either party'disregards it; it can be specifically enforced, against him, or damages can be recovered for its violation; ,but, until so rescinded or set aside, it is a subsisting agreement, which, whatever it is or may be shown to be, must govern ,the rights of these parties in the use of complainant's process, and must: be the foundation of any relief given by a court of equity.' * * * These authorities demonstrate that, if this had been a mere license to the plainWf, the defendants could not have treated it as a nUllity, by reason of the faUw-eof the plaintifr to make reports or to conform to the contract in other particulars, and treat it as an infringer. Much less could it do so where it conV'eyed the legal title to the party by assignment tp the plaintiff, since such breach would not operate in any way to revest the legal title in the defendants, or enable them to maintain suit upon the patent."
The learned judge then expressed a doubt w}:J.ether, in view of the breaches of the agreement made by the assignee, and after written notice, of a cancellation given by the assignors, the former could maintain: a suit for infringement against the patentee. Having such doubt, and desiring to afford the assignors all rights and relief to which they were entitled under the contract and the law, he mad,eanorder staying proceedings in the pending case for 30 days, anda,Uowing the defendant to file a cross bill. Thereupon such a cross bill was filed. In it all the material averments set out in the answer were repeated, and additional allegations made charging the defendant with default in not complying with the conditions of said contract, and that, because of such default, the complainants elected to and did terminate and cancel said contract; and further charging that the defendant, E. C. Atkins & Co., had lost all right, patent under said assignment, betitle, and interest to cause of their breach of its conditions. To this cross bill the defendant corporation made very full and explicit answer to the charge of want of energy on the part of the defendant in manufacturing said machines, and placing the same upon the market. The defendant avers that the complainants WeTe fully aware of the manner in which said business was being prosecuted, and that one of the complainants, Amos S. Parke, spent a considerable period of time at the defendant's works, and expressed himself as substantially satisfied with the manner in which the con· tract was being carried out; that they employed parties selected by the invenby complainants/ to manufacture the swages tion; and that, said. employment and skill, the complainants, through A. S. Parke, expressed themselves as satisfied. The defendant denies all charges of giving preference to other swage machines and being interested in the same, and avers tllat it acted in good faith in making and putting upon the market said machines.
E. C. ATKINS & CO. 'D. PARKE.
957
The defendant further claims that all royalties and reports were made in substantial compliance with the contract, and that, if there were any informalities in such reports, or delay in making the same, objections thereto were waived by the acceptance of such royalties and reports by the complainants. The defendant further avers that such royalties and reports were accepted after notice of the can· cellation of said contract by complainants. Defendant avers that said contract is still in full force, and was not canceled or rescinded by complainants' pretended notice of January 26, 1888. Replication was duly filed. The parties stipulated to submit the case upon the pleadings under the cross bill, and upon the evidence taken under the original bill and answer. The case came to a final hearing before Judge Swan, whose opin· ion is set forth in the record. In the opinion of Judge Brown, from which we have quoted, in that part ordering a stay of proceed· ings and allowing the defendants to file a cross bill, he stated that the evidence showed that "the plaintiff [the assignee under the patent] has been guilty of a breach of the very agreement under which he claims title to the patent," and therefore expresses doubt as to his right to maintain the suit for an infringement against the patentee. Judge Swan says: "This conclusion, reached upon the same proofs which are here presented, it will be unseemly to disre· gard or overrule. It practically leaves nothing for decision." We do not understand Judge Brown to have intended, by the remark quoted, to pass definitely upon the evidence relating to that issue presented by the pleadings. The evidence on that subject was so voluminous, and the conclusion to be reached from it so impor· tant, that it is not to be supposed that he would so summarily have disposed of it. No facts are stated and no reasons given to support the conclusion. He had previously stated in the most positive terms, that the title to a patent conveyed by a written assignment, such as that exhibited to the answer, could not be revested in the assignor by a breach of the contract on the part of the assignee, so as to enable the former to maintain a suit upon the patent. He had quoted approvingly the opinion of Mr. Justice Miller in Hartell v. Tilghman, in 99 U. S. 547, that the only way to rescind such a con· tract was by a mutual agreement, or by the decree of a court of justice; and that, until so rescinded or set aside, it is a subsisting agreement, which, whatever it is or may be shown to be, must gOY' ern the rights of the parties, and must be the foundation of any relief given by a court of equity. Considering the opinion in all its parts, we are therefore justified in concluding that, by the remark quoted, the learned justice did not intend to decide that there had been such a breach of the contract by the assignee as authorized its cancellation by mere notice of rescission by the assignors. The evidence would not support such a conclusion. The sixth clause of the agreement, under which the assignors claim the power to rescind, provides that, if the assignee shall fail to make the statements and payments called for by a pre· ceding cJJ.l,11seof the contract within 10 days from the time the same shall become due, then the assignors shall have the right to cancel
958
the exclusiY"eprivllege and grant .conferred, by giving notice of such intent.. This· is a clause providing for the forfeiture of title, and the condition' upon which the forfeiture is to accrue must, of course, be strictly ct,mstrued in favor of the assignee. The condition precedent 1» forfeiture could not be fulfilled unless there was a failure to make b6th the reports and the payment within the time required. The evidence conclusively shows that when the assignors attempted to cancel the contract, in January, no money was due from the assignee. . Whatever the delinquency as to reports, therefore, the condition of forfeiture was not fulfilled. The other Wrongs complained of in the cross bill are not made conditions authorizing or working a forfeiture by the terms of the Contract. They are all wrongs which the complainants, in the cross bill, have pleaded as matters of defense to the original bill, or which may be so pleaded if they ask to be permitted to do so. The original bill prays for an accounting, and in such accounting, before, the master, all damages claimed for the wrongs alleged can be consid· ered, and the proper relief allowed, if covered by the proof. They are not ofacharacter to entitle complainants to affirmative relief by a crossbill. IIi the court below, it was held by Judge Swan that the cross bill could l:!e sustained, in order to relieve complainants from the cloud upon their title to theletters patent. Inasmuch as we have already found that the evidence did not show that the condi· tions named in clause 6 had been broken as claimed, it follows that there is no cloud upon the title to be removed. Various other errors are assigned by the appellant, not necessary to consider in view of the conclusion already stated. For the reasons given, the decreeof the circuit court must be reversed, the cross bill be dismissed, the injunction now in force be dissolved,· and the case be remanded for further proceedings under the original bill. REEOE BUTTON-HOLE MA. 00. v. GLOBE BUTTON-HOLE MA.00. et aI. (Oircuit Court of Appeals, First Oircuit. April 20, 1894.) No. 72.
Where the essence of an invention in respect to buttonhole machines Is the production of an automatic relative motion between the stitching mechanism and the plate, whereby the buttonhole is stitched along one side, and then about the eye and along the other side, which constitutes a broad and meritorious invention, the fact that the specifications and claims speak ()f a movement or traveling of the stitching mechanism only will not prevent the application of the doctrine of equivalents, so as to cover a machine which accomplishes the same resuit by moving the plate while the stitching mechanism remains stationary. 54 Fed. 884, reversed.Wlnans v. Denmead, 15 now. 330, applied. The rejection of a claIm and Its amendment, where there Is no direct issue of Dc>yelty or invention, and the amendment comes in incidentally and In reference to an incidental matter, does not necessarily exclude a liberal tilterpretatlon Qr the appliCation of the doctrine of equivalents, when the invention Is a broad one. 54 Fed. 884, reversed.
S.
SAME-El"tr:ll:OT OF AMENDING CLAIMS.
BEBCB BUTTON-ROLE XI.. CO. tI. GLOBE BUTTON-ROLE 141.. CO.
959
8. S....ME-VALIDITY-INFRINGEMENT-BuTTONHOLE MACHINES. The Reece patent, No. 240,546, for improvements in buttonhole machines, construed, and claims 5, 11, 12, 13, and 18 held valid, and infringed. 54 Fed. 884, reversed.
Appeal from the Circuit Court of the Uuited States for the. District of Massachusetts. This was an action by the Reece Buttonhole Machine Company against the Globe Buttonhole Machine Company and others for infringement of letters patent Nos. 240,546 and 349,359, to John Reece, for buttonhole sewing machines. The latter patent was withdrawn in the court below before the hearing. The circuit court dismissed the bill (54: Fed. 884:), and the complainant appealed. The claims of patent No. 240,546, which were in controversy, are as follows: 5. In a buttonhole sewing machine, a framework for the needle bar and looper, and a bedplate to hold the material, combined with two cams and with mechanism between the said cams and framework, whereby the needle bar, by the movements imparted to it longitudinally and laterally of a buttonhole by the said frame, is caused to travel backward in a substantially straight line until near the eye of a buttonhole, then backward and outward and inward, then forward and inward, to follow the contour of the edge of the enlarged eye part of the buttonhole, and then forward substantially in a straight line along the other side of the buttonhole, as set forth. . 11. In a buttonhole sewing machine, a clamp and bedplate to hold the material, the framework, a, the buttonhole cutting device connected therewith, combined with a cam disk to operate the said buttonhole cutter, to cut a slit in the material held by the clamp, and then to move said framework longitudinally upon said bedplate to remove the blade of the cutter from above the clamp, substantially as described. 12. The framework, a, and bedplate, a r , and the cloth-clamping mechanism, movably connected with the bedplate, combined with the cutting bed anll means for moving the cutting bed and frame longitudinally with relation th", cloth-clamping mechanism, the said cutting bed being provided with inclines or projections to act upon the clamp and spread the buttonhole as the relative positions of the bedplate and framework are changed longitudinally, SUbstantially as described. 13. The main shaft, a", the belt pulley loose on the said main shaft, the disk or pulley, 1", fixed to sald shaft, and means to connect it with or disconnect it from the loose pulley, the stopping-levers and its spring, the movable framework, which carries the needle and looper mechanisms, and means to move the said framework, in combination with the controlllng bar, whereby the belt pulley is disengaged from the fixed pulley,1", to enable the shaft, a', to remain at rest while the belt pulley continues to run loosely on the said shaft, substantially as and for the purposes set forth. 18. The frame of a sewing machine constructed with two arms, one arm carrying above the cloth plate a reciprocating needle bar having a periodical rotary motion, and the other arm carrying below the cloth plate a looping mechanism having a rotary motion in unison with that of the needle bar, substantially as described.
Lange & Roberts and Fish, Richardson & Storrow, for appellant. Clarke & Raymond, Chauncey Smith, and Charles E. Mitchell, for appellees. Before COLT and PUTNAM, Circuit Judges, and NELSON, District Judge. PUTNAM, Circuit Judge. The bill in this case was framed with reference to two patents, but one was withdrawn before the hear-
960
, ,I'
n:b:ERAL lmJ:iOBTER,
mg, in the court below, so thapallwe now have
are claims 5, 11, 18, and 18 24:0,54:6, issued to' Reece, April 26, 1881. The main questIOn relates to the proposition that this patent can i.:n,no eventcove,r a machine of which the frame is stationary and the plate moves. It grows out of the tact that in specifications and claims are many expressions indicating that the ffame moves and the plate is fixed. A part of the preamble is as ,follows: "This invention relates to sewing machines for stitching bv.ttonholes, and is an improvement upon that class of the said machines wherein the stitching mechanism is made to travel first along one side of the buttonhole slit, then about the eye, and along 'the other side of the slit."
The fifth claim also contains the following: "Whereby the nee· dIe bar, by the movements imparted to it longitudinally and laterally of a buttonhole by the said frame, is caused to travel back' ward." Other expressions of lile character appear, with more or less positiveness and fullness, in nearly all the other claims, and'in various parts of the specifications; and nowhere throughout the patent is found any indicating that the frame might be fixed and the plate movable. Theoretically, an inventor, in taking out a patent under the statutes. of the United States, subtracts and adds nothing from or to his actual invention. The proceedings recognize his incipient own· ership, and theoretically they constitute only a division of time, by which there is carved out of the entire estate a holding for a period of years for the inventor, and the fee is left to the public. Thus his patent is not at all akin to the king's grant, which mnst be expressed, "ex speciali gratia, certa scientia, et mero motu regis," or be interpreted against the.subject who receives it. Except for the provisions which, for public interests, require in a patent a descriptionand claim, the same unrestricted rules of the common law would protect an inventor's statute right as are relied, on to support a trade-mark or business good will. Nevertheless, with reference to patents, the courts are necessarily subject to the restraints arising from the incorporation into them of the description and claim which the statutes require. , In interpreting these, however, the rule must be accepted that it is to be presumed the inventor did not intend to split up his invention. This is only an application of the ordinary rule of interpretation that transactions are to be constroed in the light of all the circumstances and of the apparent purposes of the parties to them. Specifications and claims have not yet fallen into such settled forms as to enable the courts to construe them, in any considerable part, with such certainty as they construe many words and phrases in formal instruments at the common law; but, on the whole, the entire SUbject-matter must be tal;:en together for effectuating the true purpose of the transaction, as contracts and wills, which are so frequently drawn informally, are usually construed. The ordinary rule that if by a literal construction an instroment would be rendered frivolous and ineffectual, and its ap, parent object frustrated, a different exposition will be applied if it can be supported by anything in it, requires that words which re--
REECE BUTTON-HOLE MA. CO.
GLOBE BUTTON-HOLE MA. CO.
961
late .towhat may be' held nOQessentlals, however much, multiplied, shall not be permitted unnecessarily'to control the sense. For the most part, such words are merely illustrative, or i are used through inadvertence. On the other hand,it is true that words and phrases which might have been omitted on the presumption that they relate to nonessentials, may be introduced in such direct and positive manner as to leave the courts no option except to regard them as affecting the objects and limitations of the instrument in question. Especially may this be so when words which otherwise might be regarded as unimportant are introduced by the way of amendment. This is a common rule, which perhaps has been illustrated more frequently with marine insurance policies than elsewhere. There is no doubt that if into an instrument which has been prepared and submitted additional words are subsequently introduced by mutual consent, greater effect may sometimes be attributed to such words than otherwise would be given them; for they then become the immediate language selected by the parties, and may be assumed to have been especially within their intention. The leading rule which we have given has been constantly restated by the text writers and the courts as having full' application to patents. They make use of such expressions as "ut res magis valeat quam pereat;" that "a patent should be construed in a liberal spirit, sustaining the just claims of the inventor;" that the titles by which patents are held "should not be overthrown upon doubts or objections, capable of a reasonable and just solution in favor of their validity;" that "in construing a patent the court will remember that the and claims are often unskillfully drawn;" and that "the claim shall be construed, if possible, to sustain the patentee's right to all that he has invented." It is true the general rules we have stated include the subordinate principle, which applies everywhere, that they are not to be "carried so far as to exclude what is in the patent, or to interpolate anything which it does not contain." It is impossible, however, to carry this to the extent of applying to patents as fully as it is applied to instruments in general, thema:Xim. ''Enumeratio unius exclusio alterius." With the aid of the doctrine of eqUivalents, the courts are cOQstantly engrafting on specifications and claims what they do not contain in the same sense in which the letter of ordinary instrume'nts is required to contain matter on which the parties rely. To extend, in disregard of this fact, the rule against interpolations to any particular case, requires either that the patent relate to such mere matters of form or detail that lnterpretation by exclusion becomes just and reasonable, or that the specifications and claims be so phrased as in fact to contain a clearly intended exclusion, or the equivalent thereof. In the opinion of the court, the ingenious presentation of the defense in this case overlooks this last principle. The defense claims, that, on account of the numerous expressions to which we have referred, the patentee was limited to machines in which the frame travels and the plate remains at rest. It must be conceded that, taking these specifications and the claims as a whole, they show that Reece had present v.61F.no.9-"-61
962;
.0)
In hi. ()1fIl:imlnd, ,at the,thneof his application, a machine .with a frame and a fixed ,plate. But, if this is all there is of it, and iftbis is .sufficient to establish the defense, the question arises, doctrine of ,equivalents come in? where The most ilnportant parts of the case at bar are within the four corners'9f'.theprinciples' we have stated. The court has no doubt that Reeee:was·,the inventor.of nearl, everything, if not everything, demandell by the Reece Buttonhole Machine Company in the case at barland was entitled to a patent therefor; andthe question is whether,' by reason of the ipeculiar phraseology of· hisspecifications and claim,@as .first drawn, or by reason of the making of certain amendmebtsduring the progress of his application through the patentoftiQe, Reece, notwithstanding. the rules of interpretation entitle :him to a favorableconstr.'uction, has lirniteil himself to a lsi0l' whether, if he has thus mechaniiUn:in which the. frame trav' expresae4 th:e literal terms· of his patent, he has further so limited himself· as to deprive himself of the ,benefit of the law of equivalents. withrefel'ence to a machine in. aU respects a copy of his actual invention aSl!lhown in hir!t!patent, except as to the nonessential characteristic that the frame remains at . rest, and motion is given to' the plate, There may be reasons for finding that Reece was the in, ventoI' ()f the entire machine, with numerous functions, in somewhat the same way in which Morley 'was such inventor, as determined inJ3ewing Mach. 00. v. Lancaster, 129 U. S. 263, 9 Sup. Ct. 299. It is, however, so clear that Reece's claims do not cover the machine aea whole, but,only varionsparts of it, that all the propositionsmade in his.behalf:h'Rving a different aspect fall to assist us. Yet Reece was clearly far in advance of those who preceded him, and entitled to the full benefit of whatever may be deduced from that fact In Manufacturing Co. v. Adams, 151 U. S. 139,'144, 14 Sup. Ct. 295, the court said: "But When, in a class of machines so widely· used as those in question, it is made to appear tllat at last,after repeated and futile attempts, a machine has been contrived whicb accomplishes the resvlt desired, and when the patent office bas granted a patent to the successtillinventor, the court should not be readt to adopt a narrow or astute construCtlon,fatal to the grant."
'rhis .applies directly. to' facts· of the case at bar. In Mlller v. Manufacturing Co., 151U. S. 186,14Sup. Ct. 310, the court, in laying down the ,latest,l:plq, to our t4i;nking, the best, expression used the following of the rule touching so-called "pioneer language: "The range of .equivalents depends upon. th.e extent and nature of the' invention. If the invention ,Is broad, or primary In its character, the range of elJulvalents wUl be brqad,. under the llbe,al construction to such inventions." . . which the
'The practical 'effect ot,: tMs defense is to ,in substance, that the entire novelty 9tReece's fifth claim, whic,h we will use for .that the plate is fixed and the frame illustration, turns on' moves. In other Reece sta.ndanobetter, practically, on the construction put by the defense on this claim, than if he had found
KDeE BUTTON-HOLE MA. co. t1. GLOBE' BUTTON-HOLE MA. CO.
968
a stitchin'g mechanism in all respects the &ame as that invented by him, with all the elements which go into it, but anticipating him, and had combinM it with a fixed plate. As the principle of his stitching mechanism is clearly such that the relative movements between it and the plate are essential, while the absolute movements-that is, whether the plate moves or the frame moves-are nonessential, the proposition of the defense, if maintained, destroys, through the phraseology of the application and claims touching matters thus nonessential, the entire value of this most important, useful, and hitherto profitable invention. A suggestion of such triviality·· as is involved in a construction which will produce such a result cannot be well accepted. Among all the cases brought to our attention we have seen none that goes to this extent with reference to the class of inventions described in the extract from Miller v. Manufacturing Co., ubi supra. The citations which we have made from Manufacturing Co. v. Adams, ubi supra, and Miller v. Manufacturing Co., ubi supra, and others which we will hereafter make use of, ought plainly to layout of the case all rules of interpretation found in the decisions of the courts or in text-books which appertain solely to inventions plainly and essentially narrow, and ought thus to sift out easily, and render it unnecessary for us to examine, a considerable number of the authorities brought to our attention. We lay aside at this stage all decisions growing out of the fact that amendments were made in the application on its passage through the patent office. This includes Union Metallic Cartridge Co. v. U. S. Cartridge Co., 112 U. S. 624, 5 Sup. Ct. 475, and all others of that character. We do not mean by this, however, to I'eject, in considering this first question, what was thus made new; but we take the specifications and claims as they now stand, without reference to the fact that they were changed at any stage. We also lay aside all those in which the court, after all, with the aid of the entire case, came down to the essence of the invention, and held in substance that the claims covered it fully. Among othere of this class appear to be Brooks v. Fisk, 15 How. 212; Klein v. Russell, 19 Wall. 433; Vulcanite 00. v. Davis, 102 U. S.222; Bene v. Jeantet, 129 U. S. 683, 9 Sup. Ct. 428; and Gordon v. Warder; 150 U. S. 47, 14 Sup. Ot. 32. This sifting leaves, however, a number of cases which, if they stood alone, might be regarded as carrying 80 far the effect of a literal construction of specifications and claims as would compel us to find for the defense on the proposition in question. Those on which the defense relies which use the most striking expressions are Keystone Bridge 00. v. Phoenix Iron 00., 95 U. S. 274; Fay v. Oordesman, 109 U. S. 408, 3 Sup. Ct. 236; Manufacturing Co. v. Sargent, 117 U. S. 373, 6 Sup. Ct. 931; and Dryfoos v. Wiese, 124 U. S. 32, 8 Sup. Ct. 354. And we may also add Burns v. Meyer, 100 U. S. 671, and Huber v. Manufacturing Co., 148 U. S. 270, 13 Sup. ct. 603. Another extreme case of the same character is Brown v. Manufacturing Co., 6 C. C. A. 528, 57 Fed. 731, decided by the court of appeals in the sixth circuit. Against these cases it is sufficient to put Winans v. Denmead. J,Q
;964
.,' !
REPORTER.
'"
'i,
is stiR
ease at law, ,IS, appa:r,enit from the, that ,It IS t1.ted, withOut a'lBilpprof'al of any'part in Sewell v.Jones, 91 U. S. 171, 183; ,EMyv. Dennis" 95 U.S.)>6Q, 569; Werner v. King, 96 U. 230; 'Electric.Q6: v. La Rue" ;139 U. S. 601, 606, 11 Sup. Cte 670jaD:(1):{oyt,\;. Horne,J415 V. s.. 302\c309, 12 923. In Werner v. !l0l1le it is and acceptep. with reference to. the ",ery pith ,tilfttters ,which we are' nQw considering. will ,'1lot\ced tli# v. J;>enmead is thus reaffirmed at later dates on which the defense relies, and thatit comes to, the anyone (of tpeJU is too apparent to need'iuiy explanation length. I,n .fact, the, analogy is as close as in any <;ases whatever. Winans v. 'relatea to ihe,'pecllliarconstruction of ,cars for the an,d the was granted in 1847, after of the existence or re-enact· ment of whIch the can rely on. Railroad Co. v. Mellon. 104 U.s. n2, 118. 'l'he ,specifications in Winans v. Denmead scribed, 'only ,'frl: ,'corl1calform, and the claim (page 342) was, by its letter, strictlyJifuitedto frustrmp. of a, 'cone. There was nothing ,whateve;t'it;l t;he patent, 'show thu,t the patentee ever had in his except ',I.'he alleged ¥ifl'ingement was mind, by u.li!e of t.he form. the court the clear distinction on 843, .
so
or
at
may be cases In which the letters-patent<io include only Davis v.Palmer,2 Brock. 309, the partlculfiJ1!orw,' Fed. Cas. ;r.fo., 3,645, seems been OJile of those cases. ,But they are in entire accordari.ce with whll.t"ls'above stated.' ,The reason why such a patent covers only one 'goorhetrlcal f()tm 'Is not that the patentee has described and Alaim,ed that (ol1m only; it'l.' because that, form only Is capable of embodying Is not copied, the invention.ls his not used. Wb,ere aJ;I.4s;ubstance are m,separable, It Is to look at the form only': W:here theytt're separable,where the whole substance of the tn"ention may be copied In a l1Uferent form, It Is the duty 0'1 courts and juries .to look through the form for, the substanCe of the that which entitled the iny-entor to his,: patent, and which', the patent was designed to secure. Wl:1ere tlJ,at Is founa, there Is an Infringement; and It Is not a delense that It IseIJ;l.bodled lJl a form not desCribed, and In terms claimed by the 'patentee." '
The court further to the case
Is a general rule, applicable
"Patentees sotnetimes add to their claims an express declaration to the efl'ect that the claIm extends to the thing patented, however Its form or proportions may be varied. But this Is unnecessary. The law so Interprets the claim without the addition of these words."
It is not necessary for us to reconcile case by case the expressions relied on by the defense, which, as interpreted by it, are not in harmony with the conclusions or the expressions in Winans v. Den· lnead. Very likely they, can all be harmonized by following out the made by us in our references to Manufacturing Co. v. Adams, tibf', \9llpra, and Miller v,, Manufacturing Co., ubi. supra, and by noting 'the 'peculiar circumstances of each case. In fact, :we thirik there'll!l nothing to be deduced from any ot the decisions
REECE BUTTON.,..HOLE MA. CO. t1. GLOBE BUTTON-HOLE MA. CO.
965
which goes beyond the illustrative paragraph in Walker on Patents (2d Ed. § 350), as follows: "But where a patentee states in his specification that a particular part of his invention is to be constructed of a particular material, and states or ImpIles that he does not contemplate any other material as being suitable for the purpose, it is not certain that any other material will be treated by a court as an equivalent of the one recommended in the patent."
However this may be, Winans v. Denmead leaves sufficient room for the application to the case at bar of the general rules of construction, and those relatiI1g to equivalents, which we have stated. Some of the most important inventions in special arts have come from persons unskilled in those arts, and who, therefore, had no knowledge of the possible equivalents; so that it would involve improbability to assume that they had present in ,their own minds, at the time of the application, any matters of form except those incorporated in it. The rules cited from Winans v. Denmead, ubi supra, are needed to protect not only this class, but all others ,who have made valuable inventions, and who, through their ownignorance, or for any other reason, have not understood, or have overlooked, possible equivalents. Without attempting the unnecessary discussion of case by case, it is enough that almost every patent in which this question can arise lies between the expressions in Winans v. Denmead, ubi supra, on the one hand, and those relied on by the defense on the other. Winans v. Denmead clearly goes as far in its direction as the case at bar. Applying the principles of construction and the law of equivalents already stated in the way in which we are bound to apply them, there is not sufficient in any or all of the expressions in the patent at bar relied on by the defense to justify us in holding that they amount to such a positive eXclusion, arising either from the nature of the invention or from the necessary force of the words themselves, as will defeat a charge of infringement of all the claims in controversy, merely on account of a change in the method of producing relative movements of the parts, involving in itself no invention and producing no result essentially new. Some of the cases relied on by the defense strengthen these conclusions by the reflex light of the distinctions they make. Snow v. Railway Co., 121 U. S. 617, 7 Sup. Ct. 1343, held the patentee strictly to the details of his combination in question, because, as shown on page 630, 121 U. S., and page 1343, 7 Sup. Ct., those details, for the reasons there stated, were essential parts. Sargent v. Lock Co., 114 U. S. 63, 5 Sup. Ct. 1021, runs back, so far as this point is concerned, to Water-Meter Co. v. Desper, 101 U. S. 332; and so, also, does Fay v. Cordesman, 109 U. S. 408, 3 Sup. Ct. 236, already cited. In Water-Meter Co. v. Desper, page 336, the court stated, touching a certain crank shaft which was in question, that it could not say that it was an immaterial part ot the combination, and continued:
"The patent, as it standS, occupies very narrow ground. It reqUires the presence of everyone of the elements specified in the combination secured by It."
On page 335 this rule of interpretation is applied generally to com· binations, and in this form the rule i8 traced through to the latest
966
I'EDERAL. REPORTER.
Case ,.What by the word "combinauon," here and in Fay v. Cordesman, may not be easily determined; ,but j.t is very invented something more than a mere combination a,s it existed in those C8.Ses.: The Qorn.PlanterPatent, 23 also supports the conclur;ion which have reached., .Tlle court 88:id (page 221): . ''The oJ;lly pretense on which It"-that Is, the alleged infringing machine"can to be different Is that the'{rameworkof which it Is constructed!.: not the kind of framework· described by Brown In his specification. name1y,,'wJtb,out gearing, witbojlt spoked, wheels. and otber expensive fixtures, and, reijell1bllng a.drag or, sled. more than it ,does a or wagon in its main qr genl!i'al construction,' , By this Brown was evidently attemptlng to show how simply and' cheaply the thing could be made, not that it was to be confined to that specific form.'tt'wight as well beicontended that to confine his lnveJ;ltion to wOQd, and tbat a machine made of iron or otb,1!!' metal, though made, in tbe same form, would not be an infrlngelnent, because it woUld not have tbe same quality of cheapness and , simplicity which' be describes,"
Hoyt 145 U. S.302, 12 Sup.Ct, 922, is still more striking. The words in the claim in that case, "consisting in circulating the' fibrous material and liqUid in vertical planes" (page 304, 145 U. S., and page 922, 12 Sup. Ct.), refer back to the improvement itself, limit it gra.mmatically and literally, and, 80 far as the mere letter of the claim is .concerned, 'Were apparently quite as material a part of it as the words in question in at bar. Yet (page 308, 145 U. S., and page 922, 12 Sup. Ot.) the court rejected them, for the reasons thereatated, and .which need J;lot be rfcited in this opinion. The preamble of the patent, already cited, has been brought especially to the attention of the court, in that it specifically points out the invention as relating to the class of machines "wherein the stitching .mechanism is made to travel," etc. There is ground for maintaining that. this word "travel," in this connection, had in mind the relative Illotions, aait is frequently thus used by persons accustoilled to' riiechanical operations; and also that this part of the preamble had in mind a,c1a,ssification of machines as between those in which tM"material is held firmly to the plate and the relative movementlil,are automatic, aided by a. reciprocating needle bar, and those in which' the material is turned by the hand. It is, however, not necessary to determine this. The preamble states that Reece's invention was an improvement on the class of. machines which it names, whatever that clEi,ss may be; but this does not exclude the truth that it would ,be an improvement on every other class of machines to which it could be applied. Still keeping in mind the distinction between a broad invention and a narrow one, it does not follow thatbeeause the iJi!.ventor, if his invention was· of the former dass, declared it to be for a, certain use or machine, and had preilent in mind only that specific use or machine, it might be taken by others,. withollt .restrictioD1for other uses or other machines. On the other hand, the rule.is clear that ordinarily a patentee who is first to make an invention is entitled to his claim for all the uses and all the advantages which belong to it, so far as the new application does not itself involve further invention. Roberts v. Ryer,91 U. S. 150, 157; Stow v. Chicago, 104: U. S. 547, 550;
REECE BU'fTON-HOLE
V. GLOBE BUTTON-HOl,F. MA. CO.
967
Miller v; Manufacturing Co., 151 U. S. 186,201, 14 Sup.Ot. 310. The rule was laid down clearly, although perhaps as a dictum, in Electric Co. v. La Rue, 139 U. S. 601, 11 Sup. Ct. 670, already referred to. On page 606, 139 U. S., and page 670, 11 Sup. Ct., the court', nectionwith a reference to Winans v. Denmead, said that a certain expression in it, which the court quotes, "amounts toa declaration that the application of the patented device to another use, where such new application does not involve the exercise of the inventive faculty, is as much an infringement as though the new machine were an exact copy of the old" Indeed, the whole of the case at bar, so far as we have gone, might, on sound principles, be put on the single proposition of what is known as the "rule of double use," so far as it can be availed of to protect the patentee of a broad invention. We now come to the effect of the fact that the claims and specifications were amended during the progress of the application through the patent office. It must be admitted, as already said, that what is thus done may have a special weight beyond the effect of the same words appearing in the application as originally drawn, because, whatever may be inserted or stricken out under such circumstances may ordinarily be regarded as especially selected by the parties to the transaction. It is as though by agreement the phrases thus made were emphasized. Nevertheless it defeats the very essence of this rule to extend it to what was Inserted inadvertently, or to push the construction of what was thus inserted in one direction, when it is plain from the whole transaction that the parties inserting were looking in another. There is a further consideration which cannot be overlooked. In transactions between private parties, and, indeed, in ordinary transactions between the public authorities and private parties resulting in contracts or grants, the rules of equity may be invoked, on a proper judicial issue, to correct or supply what is erroneous, or was omitted through inadvertence; but if the position of the defense is correct, and the decisions of the supreme court touching this point lay down so rigid a rule as the defense maintains, a patent cannot be relieved on this account and in this particular, except it be by application for a reissue, which is not a judicial proceeding, nor in any of its phases as far-reaching as the relief granted in equity with reference to other matters. Courts ought, therefore, to be the more careful, under cir!;umstances like those at bar, to give a patentee the benefit of all the equities which can be raised in his behalf, by any reasonable implication, from what appears on the face of the amendments, or from the transaction as it passed through the patent office. The case shows numerous amendments at various stages, but we have no occasion to consider any of them except the following: The first claim, at one stage, contained the words, "and means to change the relative positions of the bedplate and framework longitudinally." These were objected to by the examiner for the following specific reason, given by him: "As no means is shown and described for moving the bedplate relatively to the framework, as the claw would seem to imply." Thereupon the words objected to were
·
J\EDERAL R>EI'ORTER>,.VOI.
61.
strieKen out, and1:hose, appear,d'aJ1dmeans to. illbve such' framework longitil(iinlilly. upon said bedplate." For the samespeeified'reason a similar chl:l!tlgewas made'in the eleventh claim. The twelfth claim was also,required to be by including means for moving the cutting bed and frame longitudinally, on ,the "ground, specified by the examiner, that otherwise the combinationcoveredby the claim would be inoperative; and incapable of accomplishing any l1seful result or function. thirteenth daim,'whieh was objected to by the 'examiner as being for an inwhich complete combination, was largely mOdified, the now 'appears touching movable framework" being inserted, witltothers.The fifth claim wRsamended only by inserting the wordsr"bla buttonhole" where they appear after the word "laterally." The eighteenth claim is entirely new. Whatever other amendments there were need not be noticed. The patent office record shows no reason for requiring these amendments, so far as concerns the effect of the question we are now discussing, except those already stated. The specifications did show one method of putting the invention and all its parts into practicaloperation.The theory.iof the examiner was that the clliims must be limited to correspond with the form of operation explained. The extracts which we have made from WinanS v. Denmead, 15 How. 330, and otlier citations which might be made, establish the well-known rule that this was erroneous, unless as a mere matter of detail in the practice of the patent office, depending on the varying judgments of different examiners as to the clearness with operation of machines should be set out. 'No question of novelty was made, and ,no other issue which brought to the, attention of thein.ve.ntor any, ,matter of substance. In Ball & ,Socket Fastener OO.'V,l Ball 00., 7 O. C. A. 498, 58 Fed. 818,: thiscourt,in considedng the principle now, under consideration,said: "The 'rUle' t6uching the 'effectof such amendments has been several times laid dOWIl>1lY' the supreme court in patent causes, although it is only a peculiar application of the general principles of law relative to the interpretation of inf!Wllments. .,w, the case at bar the relate to the very pith and W!U'l'ow o( the alleged tqUCll directly the question. of novelty, and were understandingly and deliberately assented to; so that the nl1e of interpretation referred to undoubtedly applies."
We do not l!Iee that the law requires us at present t,o go any further" or. to qUalify this statement of the rule; although, of course, its applieation,. where the invention is in mere matters of form or detail. would be more freely made than where it is of a broad chaJ;'3.cter. The, following cases" we believe, ,are all where this rule has come before the supreme court, the first being Leggett v. Avery, 101 U. S. 256, decided October term; 1879, and the last. Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U. S; 425, 14 Sup. Ot. 627. Leggett v. Avery, so far as it appertains to this contains only dicta, as in that case there had been an actualdil!lclaimer, on an application for a reiss.ue, of the whole. ·of
REECE BUTTON-HOLE MA. CO. V. GLOBE BUTTON-HOLE MA. CO.
969
five claims in the original patent, and the case turned on the effect of that express disclaimer. In Sargent v. Lock Co., 114 U. S. 63, 5 Sup. Ct. 1021; Shepard v. Carrigan, 116 U. 8.593, 6 Sup. Ct. 493; Sutter v. Robinson, 119 U. 8. 530,7 Sup. Ct. 376; Crawford v. Heysinger, 123 U. 8. 589, 8 Sup. Ct. 399; Watson v. Railway Co., 132 U. S. 161, 10 Sup. Ct. 45; Roemer v. Peddie, 132 U. S. 313, 10 Sup. Ct. 98; Caster Co. v. Spiegel, 133 U. 8. 360, 10 Sup. Ct. 409; Yale Lock Manuf'g Co. v. Berkshire Nat. Bank, 135 U. S. 342, 10 Sup. Ct. 884; Dobson v. Lees, 137 U. S. 258, 11 Sup. Ct. 71; Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U. S. 38, 14 Sup. Ct. 28; Knapp v. Morss, 150 U. 8. 221,14 Sup. Ct. 81; and the latest case, Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co.,-there were direct issues of novelty, or of interference,based on specifio prior patents or pending applications, to which the inventor yielded. Therefore, in each of these cases there was a fair issue, formulated and understood by the applicant for the patent, requiring 'him clearly to· yield directly a portion of what he claimed; and the effect of his yielding could not be mistaken. In Union Metallic Cartridge Co. v. U. 8. Cartridge Co., 112 U. 8. 624, 5 Sup. Ct. 475, the issue was no less distinct, although it came in a different form. n appeared that the patentee had applied on a reissue for the same subjp.ct-matter which was disallowed him by the supreme court, but the point was diEtinctly made by the commissioner that it involved "a substantially new and different invention" from anything embraced in the original patent. In Vulcanite Co. v. Davis; 102 U. S. 222, which ·was decided with express reference to Leggett v. Avery, ubi supra, it appeared (page 228) that the subject of controversy at the patent office was distinctly as to what the invention covered, and as to what claim should be allowed. The court said there could be no doubt what the patentee understood he had pat· ented, and that both he and the commissioner regarded it to be "for a manufacture made exclusively of vulcanites." The issue was plain, formal, and essential; yet the court did not rest the case wholly on that proposition, but mainly on the ground that what occurred at the patent office tended to confirm the conclusions to which the court had otherwise arrived in interpreting the patent. In Royer v. Coupe, 146 U. S. 524, 13 8up. Ct. 166, an entire claim was rejected, and the rejection acquiesced in. This was also apparently put on the ground of want of novelty; but, however that may have been, the essence of the transaction was plainly the same as though there had been a formal disclaimer after a patent had been obtained, as was the case in Leggett v. Avery, ubi supra. In no place has the rule been thoroughly discussed by the supreme court, and its modifications, limitations, and practical application determined. It has grown up without much discussion from Leggett v.Avery, ubi supra, which was a case on a reissue, and, as already said, in· volved a formal disclaimer of five specific and entire claims. Under all the circumstances, the case at bar is clearly distinguishable, in that it presented no direct issue of novelty or invention, and the amendments came in only incidentally, andm reference to an incidental matter. .
FEDERAL REPORTER,1vo1.61.
; "Xneonclusion, thElrefore, touching· all: which appears on the face of the patent with to the movability of the frame and the 1lxedntl$$of the plate, including whatever .emphasis can be by reaSOn of the Mquiescence of Reece in the amendments proposed at the ,patent Qffice, we do not find' enough to require us to refuse. to: give him. the benefit of ,the favorable rules we have explained.. We now come to the especial consideration of the several claims. The fifth. claim was ;the successful conclusion of numerous and expensive .efforts to stitch' automatically a buttonhole in the. form in which it is ordinarily desired,-that is, with an eye. This had never been acoomplished.'lfuose machines whose work in stitching were automatic were unable to form the eye, and those which formed the eye accomplished thiaonly with the aid of the .clumsy and slow 'operatlon:Qf turning the material with the hand. We do not think itnecel5sary, either with reference, to this claim or any other, to proceed at, length on the question of novelty. The single fact that so v:aluable: a patent astbis, where so large interestswere at stake, andsueh,heavy expenditures had Qeen made in vain, as is shown by theretlQl'd; for accomplishing what. Reece accomplished, had raceivedtoo,cOIltinuousand tinifOl'Inacquiescence of the public and the trade fora period bfnearly 10 years, and until the efforts of the respondents 'below, affords sufficient reason fot not prolonging this opinion:: by an analysis of the alleged anticipatory matters, or by detailed explanations in snpportof our conclusions that none of them in! faet anticipated Reece; This line of defense has been pressed, ,mainly against the fifth· claim, but clearly the device to which it relates accomplished what none of the' older buttonhole machines p.ccomplished, and it, its method of operation, and its purpose lie in a different field .frOm the invention of Bonnaz, and from aU the other earlier mechanisms except those appropriate to the stitching of buttonholes. The essential feature of this claim is the so-called "compound movement" given the needle bar, the result of ...simultaneous longitUdinal and lateral motions. Tllis alone was,of course, old and common in the arts; yet the suggestion .of its applieation to thls.purpose, combined with the mechanism devised therefor, constitute a patentable invention of a fundamental character,highly meritorious, and one to be protected by a liberal .construction. So far as this claim is concerned, we have no doubt that the rules which we have laid down fully apply, and that Reece is entitled to the benefit of the i4vention, without reference to the changed method shown in the case of producing the relative movements between the frame and the plate. The elem.ents specified in the fifth cla.im do not constitute an operative mechanism without the aid of a reciprocating needle bar, or aomething which will supply its need, and perhaps also not without the spreader. The eighteenth claim covers 'a reciprocating needle bar, and the twelfth a spreader, and each are fully explained in the specifications.. The fifth claim falls within that class where reference maybe made to the apecifications to supply in a claim what it .is plain to everyone skilled in the art is a necessary incident.
971
Seymour v. Osborne, 11 Wall. 516,547; Day v. Railway Co., 132 U. S. 98, 102, 10 Sup. Ct. 11. However, no question was raised on this account, and we refer to the matter simply in or<ler to make clear our conception of the scope of the claim. Infringement of the fifth claim is hardly contested, except on the ground of the propositions touching its construction and effect which we have rejected; and, so far as concerns it, we must order a decree for the complainant below. The eleventh, twelfth, and thirteenth claims relate to the cutting and spreading mechanisms, and the "stop" devices. Each is undoubtedly to be construed as in combination with a stitcher in a buttonhole machine; and Reece was the first to combine any of these in such way that all its elements should be operated in their proper order, by mere mechanical power. The defense urged against these claims is mainly the same as that urged against the fifth. Having disposed of what could be raised by that defense, the court considers the alleged structural differences between Reece's and the infringing machines not material. The majority of the court are of the opinion that Reece has made these operations of cutting, spreading, and stopping automatic in combination with the machine as a whole, and that his invention in that respect is so fundamental and meritorious as to require the application to the eleventh, twelfth, and thirteenth claims of the same rules which we have applied to the fifth. In view of the state of the art, the eighteenth claim cannot be broadly construed, and it must be held to be fully limited by the words, "substantially as described." This limitation, howewr, re-. lates to what concerns this particular device. I.lake Shore & M. S. Ry. Co. v. National Car-Brake Shoe Co., 110 U. S. 229, 235, 4 Sup. Ct. 33. Therefore we find nothing in these words which restricts this claim to a machine in which the frame moves. To give such. an effect to the word "carries" as is claimed is more for the· pundit than the courts. It is as commonly used in all kindred matters to mean supporting without movement as supporting with it. We are not required to give it a narrow interpretation for the 'purpose of depriving the inventor of any part of his. invention. Nor are. we constrained by any. well-settled or just rule of construction· to import phraseology from other claims for the same purpose. Except in the particulars covered by these propositions, we do not understand that there is any question of infringement of this claim, even when narrowly construed. Decree of the circuit court reversed. Case remanded to that court, with instructions to enter a decree for an injunction, aqd an account on claims 5, 11, 12, 13, and 18 of appellant's patent, 240,546, issued to John Reece, April 26, 1881, and for further proceedings in accordance with law.
QPERi\.L REfORi1l111,
xol. 61.
,.1 ... '
,' . p
BROWN ?ONuF'G cd.Gv; DEIJJREet aI. ' SAME v.:HiVJ::p BRADLEY ?dANUF'G 00. Court ot APpeatls, May 1, 1894.) . Nos. 88 and 89. OLAIM.
vators; consisting of a tube or pipe bo;i: turning loosely on the horizontal ends of the crank aXle, connected with a head to which the forward ends ottbeplow beams are bolted, and provided with means for turning it against the grllvity of the cultivator in the rear, the first claim, for "the pipe bq:X;"Il;ovided with lI.projection a,dapted to co-operate with a spring, to rock the said pille box against or with the weight, of the rear <!ttltIvators' or plows," cannot be construed as for a combInation of ,the pipe box described with' other parts of a cultivator named in, ,tile claim ,or specificlltion. and must be limited to tile particular forms .,ql ot the pipe box 61 Fed. llfIlrmed.
4, tpe . :atoW1l patent, No. 190,816, to!: an improved coupling for culti-
APPeals 'from the Circp1t' Courtd( ,. the United States for the Northern Distrl:ct of illinois. ' .. ' ,.: 'two. SUits, by. the Bro'YI\, obe Co., and the otheragamst the DaVId Bradley .of a patent. The ,drcuit<!ourt 'deei4ed in favbr of complainant (21 Fed. 709), but. upon a reht:!aring oil. its own motion, rendererl' decreeS in: both cases for defendants. '51 Fed. 226; Id. 229. Complainant appealed. These suits each brought to obtain an Ilccounting and an injunction against' infringement of the first claim of letters patent No. 190,816, which read, as folloW!!!:: , "Be it kn0vvn tilaq, William P. Brown, of Zanesville,'ln the county of Muskhigu'm, and. state ,of Ohio, have invented a new and improved coupling for cuItivator;and I do hereby. declare tilat following is a full, clear, and exact description of the same, reference being haa to the accompanying drawing, forBJing part of this' specification, in whicb· Fig. 1 is a perspective view of the for II1 of cultiVator to which my coupllng is to be applied; Fig. 2 is a side view of oneo! the coupliI)gS,looking in a line with the axle; Fig. 8 is,a front view of one of the couplings; looking at right angles to the axle; Fig. 4, an enlarged transverse section through line, x, X, Fig. 3. invention relates to an improved form of coupling for fastening the beams plows or the axle of a wheeled culticonsists in the particular construction and arrangevator. The ment of a tube' or' pipe box turning looiSelY' upon the ends of the crank axle, and connected,through anadjnstable stirrup or sleeve and brllcket, with a head having along bearing at'right angles to the pipe box, to. WlJich head forward ends Qf the plo:", beams are bolted, while the pipe bOx Is provided with .means for turning it the graVity of the attached culti'Vator in the' tear, whereby the said cultivators are manipulated with greater ease, as hereinafter more fully described. !',{q the drawing, A represents' the longitudinal bill'S, extending forward to f<\l:W\thetoilglle, ,apdconstitutlng. the,mlj.ip,p;.ame of a Wb.eeled cultivator, to my inven.tion is applied,. which. bars ,are arranged npoll. the elevated cra'i:tk axle" n, impJ;>0rtedupqn 0., liP.'on.. the, hOl;izontlj.1 parts of said axie, between' the uprlgni portions' arid the wheels, are arranged my couplings, which secure tile beams of the p'lows 'or gangs,:D; 'These couplings axe constructed as follows: E are tubes or pipe boxes, which embrace tile axle, B, and turn freely thereon. G Is a stirrup, which is held to the pipe box, E, by means of a loop, s, and is made to rigidly connect with said pipe box by means of longitudinal ribs upon the stltTup, which engage with corresponding ribs upon the pipe box. The stirrup, however, instead of having a loop, s, may be constructed in form of a sleeve, and made to embrace pipe box,