BEACH ". AMERICAN BOX-MACHINE CO.
597
raised is a serious one, but we do not deem it to be necessary to eon· sider it, inasmuch as the views we have expressed upon the other branch of the case are decisive. The decree of the court below is reversed, and the cause is remanded, with directions to enter a decree dismissing the bill of complaint, with costs. BEACH v. AMERICAN BOX-MACHINE CO. et a.L (Circuit Court, N. D. New York. No. 6,170. October 15, 1894.)
1.
PATENTS-ANTICIPATION-TESTS OF INVENTION-MECHANICAL SKILL.
Whether it required more than mechanical skill to change an alleged anticipating machine into the machine of the patent is to be determined by the inquiry whether a mere mechanic would de,rive from the prior machine the suggestion which w.ould lead him to make the change. Apparently slight changes producing a new combination and a new and beneficial result raise presumption of invention. Reissue is warranted by mistake in drawings which renders the machine inoperative in part only. '
2. 8.
SAME-INVENTION-COMBINATION-NEW RESULTS. '
SAME-VALIDITY OF REISSUE-MISTAKE IN DRAWINGS.
A claim may be made more full and complete, by amendment, without new oath, if no new invention is claimed, and the old claim is not materially broadened. 5. SAME-INFRINGEMENT-PAPER Box MACHINE. Where the two machines perform the same work in substantially the same way, infringement is not avoided by the fact that one part of defendant's machine does a little more, and the other a little less, than corresponding parts in complainant's machine. 6. SAME-PARTICULAR PATENT. · The Beach reissue. No. 11,167. for a machine for attaching stays to the comers of paper or strawboard boxes, sustaIned and declared infringed.
4. SAME-AMPLIFICATION OF DESCRIPTION AND CLAIMS.
This was a suit in eqnity by Fred H. Beach against the Ameri· can Box·Machine Company and Horace Inman and others for the infringement of a patent. On final hearing. Benjamin F. Lee and John Dane,Jr., for complainant. Edmund Wetmore and William A. Redding, for defendants. COXE, District Judge. This action is founded upon reissued letters patent No. 11,167, granted to the complainant May' 26, 1891, for a machine for attaching stays to the corners of paper or strawboard boxes. The application for the original was filed June 10, 1885. The original, No. 41,7,225, was dated February 24, 1891. The application for the reissue :was filed April 9, 1891. Prior to the invention it had been customary, says the patentee, to apply the fastening strips over the joints at the corners of the boxes, and paste them there, by hand. This work is now done by the patented machine. The claims involved are as follows: "(1) The combinatioIii with opposing clamping dies having diverging working .faces, of a feeding mechanism constructed to deliver stay strips between
· \:
FEDERAL REPORTER,
vol. ,63:
said u'{>6n scribed. i
for rendering. adhesive dies being to co-operll.te, in pressmg 'eorners 'the adhesive' stay strips, sUbsta:n,tially as de-
a
opposing clamping dies having di'terging working faces. said Hlfunping (iies being to co-operate pressing .adhesive fastening strIPS upon interposed box corners. a feedmg' mecbamsm constructed to feed forward a continuous fastening strip, and a cutter for severing the said continuous strip iiItostay strips of suitable lengths, substantially as de.scribed. "(3) The combination,with opposing cfairipin'g dies having diverging working faces, said clalllplng dies being arrangep. to co-operate in pressing an adhesive fastening strip 'upon the 'corner' 'Of an interposed' box. a feeding mechanism constructed to feed between the dies a continuous fastening strip, a pasting mechanism for applying adhesive substance to the strip, and a cutter for seVering tbe strip iutostay strips of suitable lengths, substantially aadeBcribCd. , I , ' ,,' " , " '
ingfaces, said, clamping dies being constructed to co-operate in pressing an adhesive striP upon an interposeU bOxcorner,ofa movable plunger or strip bender constructed to bend downW'ardly Qr inwardly a, projecting enl19,f ,13trip!.that oneof,the,clazPping dies whiCh enga:geathe inner surface of the box corner w,ovable into ,and out of its usual working carry maida of the box corner the said position, whereby it may projecting elld of the Ils de\,!cribed. ,' .1(5) Tbecombinatio:O, with opposing clarnp/.J:lg dies having divergingworking faces, said clamping dies being constructed to in pressing an adhesive fastening strip upon an corner, of a movllrple plunger or 6tri!? bender' constructed to or inWardly a projecting end "of' the stay St11p,that orll:l' ot said clalbping dies vr4lCh lmgages the inner surface of the box corner having A re<1procatory motion in, a direction the parallel with the box corner,ao astocari'1 inward insitle()f the box corner the'slUd projecting end of the ,!itaY strl!!, substantially lIB described." ," . . ',', ' . , :' , The combination, with opposing working faces, said clamping dIes being arranged to co-operate in pressing an adhesive fastening strip upon an interposed box corner, of,l1 feedIng mechan- ' ism cons:trueted, to, feed forward' a, c6ntimioUs 'fastening strip,a cutter 1:01' sc'fEl1'iIlg·:thestrip into suitable lengths, and' amovable part or plung-er whIch bends downwardly or inwardly the projecting end of the fastening strip, that one of the clamping dies which engages the inside of the boX corner bei\llg .constrlicted a direction parallel with the box corner, as descriped." . " :
"(4) Thecoql,bJna.tion, with opposing clamping dies having diverging work-
in
It will be observed that the fit-st;seeofid and third claims cover combinations designed only to fasten :a'stay strip over the joints on the of the box, while the fourth, fifth and seventh claims .cover the additional feature whereby the stay. strip is over the edge of the pox: and pasted on the inside as well asqn the corner. , Tbe,e:lementsof the combination o(Jp,e ,first <;1l::\im, , q.re: First. Opposing clamping dies having di'vEtrging and constructed to co·operate in pressing staystJips: upon an interposed box corner. Second. A mechan.slD;: deliver the, s.tay ,strips bE\tween said clamping" dies. Third. A ,pasting mechanism for rendering adhesive the strips, tJ:4e f:lecoJ;ldclaim omits the pasting mechanism of. the sUhstantiaitly, the remaining elements adds thereto a cutter for severing the conof the first tinuous strip )pto stay strips o,tsuitable, length to,be ,applied to the' box corner to be stayed., The third claim is,' in' substance,.
BEACHV. AM,EHICAN BOX-MACHINE CO.
599
a combination of all the elements of the two preceding claims. The elements of the combination of the fourth efaim are: First. 'I'he opposing clamping dies of 'the preceding claims. Second. A movable plunger or strip bender to bend downwardly or inwardly the projecting end of the stay strip. 'rhird. The anvil die, movable out of and into its usual worldng position so that it may engage and carry inside of the box corner the projecting end of the stay strip. The fifth claim is substantially the :'lame as the fourth, the only difference being that the anvil die is described as having "a reciprocatory motion in a direction parallel with the box corner." The seventh claim adds to the combination of the fourth and fifth claims the feeding mechanism of the first three claims and the cutter of the second and third claims. The defenses are, lack of novelty and invention; noninfringement of the fourth, fifth and seventh claims; unlawful expansion of claims in the patent office by amendment; invalidity of the reissue as such, it being the same, in all important respects, as the original; and failure to prove infringement, except as to the defendant Horace Inman. The applicatioli was nearly six years in the patent office. Although placed in interference with five different claimants who contested the complainant's right with unusual pertinacity, he was successful over them all, at every stage of the controversy. Not content with the adverse decision of the patent office officials two of the contestants, one of them, a defendant here, sought to have the complainant's patent canceled and awarded to them through the instrumentality of a court of equity. They were again defeated. -What the machine of the patent does is this: an ordinary pasteboard blank is inserted between the clamping dies and it emerges a completed box, its corners being stayed by strips which have been firmly pasted to the box on the outside, the projecting end being then neatly folded over and attached to the inside also. The corners of the box are adjusted in the dies by the operatorall else is automatic. The box thus made is properly shaped, its corners are reinforced and made strong, and much heavier material is used, owing to the greater force which is applied, than is possible in a hand-stayed box. The machine is much more rapid than the hand process; it increases the production from four to ten fold. It does cheaper, cleaner, stronger, straighter and smoother work than that done by hand. Less material is used, the boxes are more uniform, artistic and symmetrical and are delivered from the machine ready for immediate use. The Beach machine, or one embodying the principle of b,is invention with some minor improvements added, aJt once became popular and ousted the hand process and the wire stapling method in many of the larger establishments. It has taken the market, become almost indispento the weight of testimony, has sable to the trade and, made successful competition well-nigh impossible. This evidence is objected to because it is said that the machine to which the witnesses chiefly referred was the Knowlton and Beach machine,
606 ,: .. ' "J ' . ,
FEDERAL REPORTER, vol. 63. " .:' '. "
Which' contains 'improvements made by Knowlton. I am convinced that this, niachine is an, improvement upon the original, it contains tlJ:e oasic idea of the Beach structure, and it is this, and not the subsequent, changes, whicl,i. makes It popular. It ,would be illogical, in such cases, to attribute success to the and not to, the 'essential, features. Cochrane v. Deener, 94 U. S. 780, 787; Merg,enthaler Linotype Co. v. Press Pub. Co., 57 Fed. 502, 505,506. . , ' But without the proof of the, popularity of the machine there is ample evidence in the reC9rd to sustain the invention. The inventor does not pretend to b,e first who attached stays of paper or muslin to the corners of paper boxes. The patent expressly ad· mits that, this had previp1,IslY been done by hand. He does insist that he was the first to do thls by machinery and asks only for a construction broad enough to prevent others from using his mao chine, or its equivalent. ij:e asks nothing more. This statement of the c()mplainant's positi()n disposes of a large number of the exhibits offered by the defendants. These would be of value if a constJ:'Uction were soughtc()vering the entire art of box-making, but such is not the case. The defendants have introduced 47 patents showing improvements in machines for ill!1king boxes, for inserting wire staples, for flanging boiler plates, for sticking labels and stamps, for oending stiffeners for the heels of shoes and for applJ1.ng shoe-button fasteners, It is conceded, by the defendant's expert that none Of these anticipates, counsel for the complainant admittell at the argument that the elements of the combinations, considered separately, were all old, the discussion is narrowed down to the considerat,ion ()f two or three prior patents only. As I understand the defendants' position the infringement three claims is not denied. 'l'he defense as to these of the daimsls that they are vold for of patentability. In approaching this. subject it should be remembered at the outset that no one to box corners before Beach had attached' adhesive staying by machinery. No machines in the box-making art, or any other art, would do this. Beach was the first to accomplish this result. His waSllot al?road invention. His operations were con· fined to the, improvement. of a single Sitep in the art of making and,'in that limited sense, is a pioneer. paper boxeS. ,He The question is, whether in view of what is shown, it required more than mechanical skill to, produce the machine of the first three claims. Tlle" patent No. '303,992, granted to Dennis and York, August 19, 1884, for improvements in addressing machines, is un· reference. The i.mprovements questionably tb,e defendants' "in which a 'strip of paper':Vith the addresses relate to printed thereon' is run ,through the machine, the. addresses being cut off in slips and automatically aflh:ed to the newspapers, envelopes, or other .articlesby a descendhig knife and platen." The machine has a feeding and pasting mechanism, a vertically recip;I?rovided at its ,lower end with a knife to cut off the rocating addresses, and 'a platen by which they are carried down and fastened
BEACH V.AMERICAN BOX-MACHINE 00.
601
to the newspapers or envelopes. The bed on which the papers rest, and which is the only part of the machine which bears the slightest resemblance to the lower die of the Beach patent is called "a follower." Instead of being rigid this "follower," as the name implies, is supported upon light coiled springs and by lever action, so that it will move up and down freely and produce "just enough pressure under all circumstances to receive the pasted slip upon the upper sheet." The impact of the platen and plunger resembles the pat given to a freshly applied postage stamp. Being designed to do this light work the machine is lightly constructed and differs in many minor particulars from the Beach machine. The defendants insist that a mere mechanic could construct the Beach machine from the Dennis and York machine, and, to illustrate this contention, they have produced a model of the Dennis and York structure so altered that, experimentally, it will, in a crude and awkward way, attach stay strips to boxes. The principal alteration is the removal of the platen and follower and the substitution therefor of the clamping dies of the Beach patent, the lower die being firmly fixed, or comparatively so. It is argued that a mechanic could do this. Possibly he might after having seen the Beach· machine. But is this a fair criterion? There is hardly a patent that could stand such a test. The question is not whether a mechanic, having seen a box-staying machine, could alter the Dennis and York device into such a machine; not whether a mechanic, if he were told that such a box-staying machine was needed, could construct such a machine, although he had never seen one, from the Dennis and York device. The question is whether a mechanic, before anyone had thought of pasting stay strips to the corners of boxes by machinery, would construct the Beach machine after seeing the labeling machine. Would the'latter suggest the idea and the embodiment of the idea? Would the thought enter the mind of the skilled mechanic with the Dennis aud York device before him on his work bench; and if it did, would it not be a crea· tive thought whose presence would convert the mechanic into an inventor? The language of Mr. Justice Brown in Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ct. 825, is applicable to the present situation. At page 161, 145 U. S., and page 825, 12 Sup. Ct., he says: "While it is possible that the Stringfellow and Surles patent might, by a slight modification, be made to perform the function of equalizing the $prings which it was the object of the Augur patent to secure. that was evidently not in the mind of the patentees, and the patent is inoperative for that purpose. Their device evidently approached very near the idea of an eqUalizer, but this idea did not apparently dawn upon them, nor was there anything in their patent which would have suggested it to a mechanic of ordinary intelligence unless he were examining it for that purpose. It is not sufficient to constitute an anticipation that the device relied upon might, by modification, be made to accomplish the function performed by the patent in question, if it were not designed by its maker, nor adapted. nor actually used, for the performance of such functions."
The ability to conceive and carry out such changes as were here necessary is not found in the mere routine plodder no matter how skillfully he may handle his tools. Mechanics by the hundred had
602 seen the DenniS and York and king,N!Q,liItru<;tureljl,;. lYO,rlunen by the hundred ,had stlcking $tay ililtxips tQ PQiX corners with and yet no one; of ,theij};;al1 pad pit upon the Beach device.. ' The advantages of a JltPor to .machinery areobviousr the idea, wJJ,ie;h sai<LJQ.· be neve.L',.entered the Dlin<t Qfa single,one of this, large army of methe art, unlesssom.eoUhose whO,cll;timed to be prior inventors in tb,e patent office hadlilupplied the want,wPll,ld be in t.he pri;l;Uitiye .state that it was before,1S85. No other Dl,MPinecould tMe The fingers of women .and cll.ildren be doing the ;work of the "opposing. clamping dies." Has art been materially.advanced by t.b.econtdbution of ;proposition cannot be main""hieh hlffirevolutionized this tained that: brauch of/the tradeis onlytl),e,prpduct of mechanical skill. ".In the defendaIIts'brief i theprQposition.is :bluntly sta,te(l folIows: "Surely it cannot be COD tended that the substitution of augular dies for ,the Dennis and maehineamountlil to iuvention.'" Of COlll'Se tl;Lis isnoj the ques;tion presented by the record, but if it were, Jheconrt iE!, by no means certain that .the change su,ggested"considering all that it hl1,$ l;tccompli,shed, would ,uot illvolve invention, even if this were ,aU. Illfinitely. less were the Changes required in substituting a ,wire barb fol,' .one cut from an iron plate; inpla,cing a rubber upon the packing for stuffing or fill,t springs boxes; insubstitutillga ·tW:sional spring, for in a telegraph l'1l1)b«;lr, in lieu of mate. rials for a plate for' holding artifi.cial teeth. And, yet, the supreme court has decided, to do these things required invention. Case, 143.,1{, S.275, 12 Sup. Ct443, 450; Magowan v. Co., 141 U. S. 332, 12 Sup. Ct. 71; Electric Co. v.! La Rue, 139 :D. S. 601, 11 Sup. Ct. 67(); Smith v; Vulcanite Co., 93 U. S. 486. A 'VerY llltel'3,tion in an edstingstructure will often yield theuu::.st,,,stonishing J;esults.. If the product of the change is a new and a benenQial .result never attajned before, it is safe that .its author: .is an inventor. The five applicants, including,the active defendant, Horace Inman, who disputed in the so vigorously with the complainant, f()r the honor of being the. inventor of the patented. machine, evidently, at that time, more than wechanical skill was iuvolved. Indeed, the ¢onrt ,might almost adopt as its own the language of the defendants in rdescribing: ,the geniulil,andability necessary to ad· vance condition., .. A catalogue issued by one Art1:erican BQ;x:-;Machine Company-contains of the l ' ' of Amsterdam, N. Y., recommends to .. of. this country,: ,their new No. 6 corner star machIne, fo:r staying the . of boxes lI.n'd turning .the stay in at the same time. The demand for', just' such a 'machine is now met. First the Wire. came in anp answered the purpose because nothing better coul\i "be' halt After,,·ards we got machine, which put the stay: {jn'the fiat, sutfaceof the corner. This was a great improvement, but dld,nQt' meet the full wants and of the box·making public. "The
BEA 'V·. AMERICAN BOX-MACHINE CO. ::iI
603
"Tbey wanted a machine that would put the stay ,on the corner, and turn' It under the same as· the old hand method.. wasa·very dij;lic1,11t' thing to do, but we have fully accomplished all·-and more than we anticipated."
It is not necessary to examine the other patents introduced by the defendants. If the Dennis and York patent does not invalidate the Beach patent none of the others does. The Orr and Wright patents, Nos. 58,466 and 67,669, and the Munroe .patents, Nos. 244,919 and 298,879, relate to the covering of boxes by winding paper around them. There is nothing in the machines Beach machine. The other described and shown to suggest patents are still fur1her remote. The foregoing applies with even greater force to the combinations of the fourth, fifth and seventh claims. I am not quite ·convinced after reading the defendants' brief whether it is con· tended that these claims are void for lack of invention. The defendants' expert expressly concedes patentability as I under· his deposition. However, it is unnecessary to discuss the matter; as it is manifest that·· if the first three claims are valid these claims are also valid. The patent was reissued three months after the original to corThe defendants contend :rect a mistake in one of that the law does not permit a reissue to correct inconsequential mistakes. The defense is wholly technical. No one but the patentee was in any way harmed by the reissue. The defense is without tnerits and does not appeal to a court of equity, which should hesitate long before destroying a valuable patent upon a mere abo straction. No authority is cited to susitain the defendants' theory and it is thought that no tribunal will ever take the harsh and narrow view contended for; certainly this court will not be the first to do so. It appears from the original patent, assuming it tb be properly in evidence, that there was a clear mistake in the drawings. Though this mistake did not render the patent wholly inoperative it was of such a character that a machine in accordance with the drawings would have been inoperative for some purposes which the inventor was entitled to cover by his claims. It is doubtful whether a mechanic following the drawings would have made the machine which the inventor intended to describe; By the terms of the statute (section 4916) it is not necessary that the patent should be wholly inoperative. If inoperative in part it is sufficient. Hartshorn v. Roller Co., 18 Fed. 90. This question was submitted to the commissioner and his decision is entitled to weight and will not be reviewed unless error is manifest from the record. Machine Co. v. Frame, 24 Fed. 596; Topliff v. Topliff, 145 U. S. 156, 171, 12 Sup. Ct. Thel'e is nothing in the l'ecord to ovel'come the presumption of validity arising 11'0m the patent itself. As I understand the defendants' position regarding the unlawful expansion of the claims it is that the amendment, qated Novemuer 7, 1800, was unauthoI'ized and unlawful fol' the reason that the first three claims wel'e broadened and no new oath was required. The new description and claims are undoubtedly more full and complete
604
FEDERAL
63.
than the original, but I cannot 1lndthat a new invention is claimed or that the old in.ventionis materially broadened. The only paragraph which introduced new matter was corrected by order of the examiner. It !3hould be remembered that for years the patentee was powerless to act by reason of the persistent manner in which his right to the invention was contested by others. When at last he had triumphed overall adversaries it is safe to assume<that he was a wiser man. He had learned I some things during the long controversy. That he was entitled to a patent which fUlly protected his there can be no doubt. If the invention as patented is different from the invention as described in 1885 the court has' been unable to discover it. There can be no dispute that an inventor is entitled so to amend his specification that it will employ perspicuous and artistic language and enable him to hold all that, he has invented. This specification ddee nothing more. In the language of the·attorneys who filed the, amendment, "care> has been used to include nothing in the drawings or specification which was not contained in the same originally filed." Is there one of the claims that could not have been ingraftedon the original description? If so, which one? Genel'al accusations are made, but no feature is pointed out which is not found in the original specification. Grant th{lt the description Is not ,so clear, the fact cannot be disputed that every element of the combinations in dispute is found in the first description filed There is no doubt about the rule of law laid down in Railway Co. v. Sayles, 97 U. S. 554, and the numerous authorities which follow it. The difficulty here is with the facts. If it could be 'shown that the scope of the original had been enlarged so as to enable Beach to appropriate other inventions the rule would apply. But this has not been shown. A new oath was not necessary because the amendments introduced no new invention. Nothing in the rules of practice of the patent office or the law required it. The grant of the paten.t .is prima facie evidence that the necessary conditions precedent were complied with. Crompton v. Belknap Mills, 3 Fish. Pat. Cas. 536, Fed. Cas. No. 3,406; Whittemore v.Cutter, 1 Gall. 429, Fed. Cas. No. 17,600; Hartshorn v. Roller Co., 18 Fed. 90, and cases cited; Walk. Pat § 122. Infringement Of the first three claims is, practically, conceded. The complainant's expert says regarding these claims that the defendants' machine is a copy of the :Beach machine. I do not find this statement anywhere contradicted, except, ,perhaps, in a qualified way in the testimony takeu September 11, 1894, and from the examination which I,have given the two machines it certaiIlly seems to be borne out by ilie facts. The combinations of have, unquestionably, been appropriated. The rule applicable to the infringement of the other claims is clearly stated by Mr. Justice Blatchford. He says: "Where ,an invention is one of a primary character, and the mechanical functions performed by the machine are, as a whole, entirely new, all subsequent machines Which employ SUbstantially the same means to accompliSh the. same result are infringements, although the subsequent machine
BEACH V. AMERICAN BOX-MACHINE CO.
605
may contain. improvements In the separate mechanisms which go to make up the machine." Sewing-Mach. Co. v. Lancaster, 129 U. S. 263, 273, 9 Sup. Ct. 299, and cases cited.
In Proctor v. Bennis, 36 Ch. Div. 740, Lord .Justice Bowen said: "The mere fact that there is an addition, or the mere fact that there is an omission, does n()t enable you to take the substance of the plaintiff's patent. The question is not whether the addition Is material, or whether the omission is material, but whether what has been taken is the substance and essence of the invention."
There is no doubt that the defendants' machine operates to paste the stay on the outside of the box, turn it downwardly and inwardly, and paste it on the inside of the corner also. In other words, it does the precise. work that the Beach .machine does and it does it by parts so nearly identical that even the experts find it difficult to state, not the differences of form, for these undoubtedly exist, but the differences in function and principle. The chief points of dissimilarity are-first, the alleged absence of the strip bender, and, second, the absence from the lower clamping die of the feature of"being movable into and out of its usual working position." There is a part in the infringing machine which corresponds exactly to the strip bender and is capable of performing the identical work. The defendants maintain that when the machine is properly adjusted the strip bender only operates to press the strip down upon the outer surface of the box corner and that it does not descend below the plane of that surface. The complainant insists, on the contrary, that, though the machine may be so adjusted, this is not the proper adjustment, not the one which the defendants intended, not the one which a sensible mechanic would adopt. That when the machine is properly adjusted its action in this respect is identical with the Beach machine. In confirmation of the latter contention it may be said that if this part performs no function additional to the pressing action of the upper die it is not easy to understand why it was placed in the machine at all. But even if the defendants are right upon this point there can be no doubt that the part in question forces, or bends, the projecting end of the stay strip downwardly. It can bend it in no other direction. True, it does not bend it down as far as the Beach strip bender, but it does bend it far enough, so that it is caught by the reciprocating lower die, or tucking finger, and carried inside of the box corner. The defendants' strip bender may do less work and their tucking finger more work than the complainant's, but it is perfectly plain that the two parts toget4er perform the identical work that the corresponding parts perform in the Beach machine. Their action may not be synchronal, there may be structural differences, the defendants may have introduced improvements, and yet the fact stands out clear and indisputable, that the defendants' machine does the same work as the complainant's machine, if not by the same, certainly by equivalent means. Assuming that the complainant needs to invoke the doctrine of equivalents, surely it is not carrying that doctrine too far to hold the defendants' device an infringement when it is remembered that no one pretends that the
'6'06
,'PiiDERA:r..nEPoRTER, vol.
.ftftll' sevenW "The range of eqUIvalents depends upon and nature of the invention.". }((iller v;. CQ., 151, U. S. 186__207, 14 Sup. CltrSl(). : ' ',," , ' " : ' .'.', , ,.· AtiI:.t():tM,otherpoint it is,tl'uethat thelower:elamping die; as a : in structure; m:o,ve out of and into die' about half · its, thereof remains stationary and the other half, moves into and out "of ,R with the . box c.0rher,'accompIi§ldng result as, ,the lower die in the " of. the two is, somewhat different. mdveson whilethedefendants'tucker 1:\, time, in the are of a circle, but when it does its work itnroW$ same su!Jstantjally, as the Beach tucke.r. The 'are' immaterial. The'defendants'mechanism performs the' labor and, :,the same;: result in Jtan.tially : the.same, way as the .The former. IS the eqUIvalent of the latter; ',' Patents would be ofhttle value If they , can be av'6ided by ,.1t1:achine 00.' v:. Thfurphy,91 U. S. ,.,120, 125i Oantrell 11711, S. 689,.6 Sup. Ct 970; Winans v. Denn;..ea(}, ,15 How. 330; 'Sargenfv.:(.Jarned, 2 Ou.rt. 340, Fed. Cas. No., .,'1.'he, law notinte,nd' that one who has' taken ,the invention,' its, entiret,y,who has appropriated 'the inventoFsidea and the ,bi'?ad whi.ch1the struGture.operates em· bodies 'tliat' idea, shaIl.¢$cape inrringement.lYecause 'he' practices the inten.tion ina form from that showil"ip.the patent.,.The'.law, in such cases, 'deals with'substance and not with form;lt from the infringer and exhibits him in his trUe ,To adoptthe langmfge of Mr. Justice Grier in Blanch·,ard v. Reeves, 1 Fish. Pat. Cas." 103. :Fed. Cas. No. 1,515:' ,
saliie,':
·
"It the specification machine, which effects fts'.result bya combination of lateral and rotary motion, to form , a helical:Course or· track in ,tlle operation of the machine. But is that of the essence Qr· substance of the inventi.on ?or is it not merely an accident Qf that form of the machine described? · .,. We cannot shut our fa,ct tha,t Ule have pirated the invention' of the " "complainant in all its esj;lllntial parts." "
As therets no by tbe · chine bill !qust bedi§lllissed as to it. The other de· · sued as c()partners, trading under, the name of the , Inman as this copartnCI'$hip is admitted in the and I).lHt,sale by one of the partners is established, it would that the proof as t,l?.them and the copartnership is , sufficient. It follows t)Iat the corqplainant is entitled to the usual aI!Itoall the except the Americll4. Box-Machine ,; r;r;he ·costscan be' upon the set· tlement of the decr.ee. .
BABCOCK V. CLARKSON·
607
. BABOOCK"
v. CLARKSON et al.1 June 23, 1894.) No.84.
(9lrcuit Court.ot Appeals, First Circuit. 1. PATENTS-,-ASSIGNMENT-EsTOf'f'EL OF ASSIGNOR.
The assignment of a patent by the patentee, for a valuable consideration, estops him, when, sued fdr infringement thereof by one deriving title under the assignment, from raising questions of novelty, utlllty, patentable in· vention, anticipatory matter, and the state of the art, except so far as the state of the art, and anticipatory matter as a part thereof, may have a bearing Qn the c()nstructlon of the patent, CAItRIAGES.
2.
SAME-LIMITATION BY PRIOR STATIll OF
In the Clarkson patent, No. 300,847, for an Improvement in jump seats, the Invention, consisting Of a combination of a falling tailboard and two seatS, .80 'connected by levers and hinges that the movement of the tail· board 'upward will drop the rear seat out ot use, and move the front seat ba4war'd, so as to preserve the proper center of graVity, is not a pioneer view of the prior state of the art, and is not infringed Invention, by Ii: combination producing a different set of movements, except that the 'rear'seat moves upward and downward, that SEat being left in use. 58 Fed. 581, a1firmed.
'Appeal:f;rom the Circuit Court of the United States for the District of Massachusetts. This was suit by Frank A. Babcock and others against Joseph T. Clarkson and others for infringement of a patent. The patent was No. 300,847, issued June 24, 1884, to defendant Clarkson, for an improvement in jump seats. Complainants claimed title under assignments from Clarkson. The circuit court dismissed the bill, and a decree for defendants was entered thereon. 58 Fed. 583. Complainants appealed. Edward P. Payson, for complainants. Thomas W; Porter, for defendants. Before COLT and PUTNAl\f, Circuit Judges, and NELSON, District Judge.
PUTNAM, Circuit Judge. Joseph T. Clarkson, one of the respondents below, was the original patentee, and the title of complainants is derived under assignments from him for a pecuniary consideration, valuable in law, though said to be small. Consequently, an estoppel operates against him. The precise nature of this estoppel does not seem to have been always clearly apprehended. It is, in effect, that, when one has parted with a thing for a valuable consideration, he shall not, so long as he retains the consideration, set up his own fraud, falsehood, error, or mistake to impair the value of what he has thus parted with. As applied to the specifications of a 'patent, the vendor patentee is as much barred from setting up that his allegations therein were merely erroneous as that. they were willfully false. This is as much in harmony wlth sound morals as with the fundamental rules of equity law. The estoppel is not technically by record; nor is it the usual estoppel 1
Rehearing denied August 1, 1894.