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In National Hollow B. B. Co. v. Interchangeable B. B. Co., 106 Fed. 693, 45 C. C. A. 544, it was held:

“One who invents and secures a patent for a machine or combination which first performs a useful function is protected thereby against all machines or combinations which perform the same function by equivalent mechanical devices; but one who merely makes and secures a patent for a slight improvement on an old device or combination, which performs the same function before as after the improvement, is protected against those only who use the very device or improvement he describes and claims, or colorable evasions thereof. The term 'mechanical equivalent,' when applied to the interpretation of a pioneer patent, has a broad and generous signification. When applied to a slight and almost immaterial improvement, it has a very narrow and limited meaning. When applied to that great majority of inventions which falls between these two extremes, its significance is proportioned to the character of the advance or invention under consideration, and it is so interpreted by the courts as to protect the inventor against piracy and the public against unauthorized monopoly."

We come then directly to the question whether or not defendant in making brushes uses the whole of complainant's method or process as described in his claim, for, as held in National Hollow B. B. Co. v. Interchangeable B. B. Co., 106 Fed. 693, 45 C. C. A. 544, while the description in a specification or drawing of the details which are not claimed to be essential elements of the patented device or combination, and are not such, is the mere pointing out of the better method of using it, and does not limit it to those details, “a reference in a claim of a patent to a letter or figure used on the drawing and in the specification to describe a device or an element of a combination does not limit the claim to the specific form of that device or element there shown, unless that particular form was essential to, or embodied the principle of, the improvement claimed.” Still it is also true that 'the absence from a device that is alleged to infringe a patented combination of a single element of that combination is fatal to the claim of infringement.”

Complainant's method for holding the completed and hardened brush-head in place in the chamber of the brush-back or brush-frame is to somewhat contract the upper edges of the frame about the aperture into the chamber, called in the claim the “face aperture.” If unbroken the brush-head will not fall out if it becomes wholly detached from the sides and bottom of the chamber, and fails to adhere thereto, for, the aperture being smaller than the brush-head in surface area and both length and width, it is impossible for it to pass through. In the defendants' brush, if the brush-head becomes wholly detached from the sides and bottom of the grooves and the sides and top of the raised portion in the chamber which is surrounded by the grooves, and fails to adhere thereto, it will fall out, for the aperture is no smaller in any of its dimensions than the corresponding dimensions of the brush-pad. But it may be questioned whether the mode or manner of holding and retaining the brush-head within the chamber is made any part of the Morrison method. In describing the method he nowhere refers to this subject. Hence, may not it be held and retained in any known manner or by any known means? Has he limited himself in this respect? In describing his method he does not mention the office to be performed by the "contracted aperture” mentioned in the claim itself. Is it not as fair and reasonable to infer that in making brushes in which brush-frames of wood are used he intended to rely on the adhesion of the composition to the sides and bottom of the chamber as that he intended to rely on the contracted aperture into it for the purpose of retaining the composition brushpad therein? I think this is true. But still Morrison has claimed a method in which is used the brush-frame having a contracted aperture only. Hence we are brought back to the question whether or not the defendants use a brush-frame which is the substantial equivalent of complainant's as used in his method. In determining this question it seems to me we are to be guided by the office or function to be performed by the brush-frame in the method pointed out, and not by the shape or contour or size or name of the frame, or even its description. Does it perform the same function, do the same thing, in substantially the same way, and accomplish the same result; that is, to hold or retain the hardened brush-pad in the chamber or recess? The result is the same, the brush-pad is retained by the contracted aperture and adhesion in the Morrison patent and by adhesion in the other. But the holding and retaining is not done in the same way wholly. The substitution of the raised center portion, while it adds to the adhesion surfaces, and in some degree furnishes binding surfaces for that portion of the composition between it and the sides of the chamber, tends to impair the secure and permanent holding of the brush-pad within the chamber, for, as stated, if loosened wholly from the walls and bottom of the chamber and sides and top of the raised portion it will fall out. “There are two tests of equivalency: (1) Identity of function. (2) Substantial identity of way of performing that function.” Walker on Patents (4th Éd.) § 362, p. 315. "One thing to be the equivalent of another must perform the same functions as that other. If it performs the same function, the fact that it also performs another function is immaterial to any question of infringement.” Walker on Patents (4th Ed.) § 352, p. 309. “The idea covered by the patent must be completely embraced in the idea expressed in the infringement, but the latter may be far more comprehensive than the former.” 8 Robinson on Patents, $ 893, p. 47.

146 F. 34

Here we have the identity of function, and also an additional function performed by the raised portion of defendants' brush-frame which lightens the brush; but, as shown by the authorities cited in Robinson on Patents, supra, this is immaterial. Is there substantial identity in the way of performing the function? On this subject Walker on Patents (4th Ed.) § 362, pp. 315, 316, says:

“The second of these tests is somewhat elastic, because it contains the word 'substantial.' That word is allowed to condone more and more important differences in the case of a primary patert than in the case of a secondary one. In the case of a patent narrowed in construction by an extensive state of the preceding art, the word 'substantial' will give but little elasticity to the application of the doctrine. If fewer inventions preceded the one at bar, the word will have somewhat more of carrying power. When the invention at bar is strictly primary, and especially if it is extremely useful, then the word 'substantial' will be made to cover differences alike numerous and important, and even highly creditable to the infringer who invented them."

99

In the complainant's method described in claim 1 the office or function of the contraction in the aperture is not stated. The word is descriptive merely. In the specifications describing the method covered by the claim no office is assigned to this contraction of the aperture. Under general rules of patent law in all combinations of a mechanical patent, every element claimed is conclusively presumed to be material. Shepard v. Carrigan, 116 U. S. 593–598, 6 Sup. Ct. 493, 29 L. Ed. 723; Sargent v. Hall Safe & Lock Co., 114 U. S. 63–86, 5 Sup. Ct. 1021, 29 L. Ed. 67; Yale Lock Manufacturing Co. v. Sargent, 117 U. S. 373–378, 6 Sup. Ct. 931, 29 L. Ed. 950.

I see no reason why this rule should not apply in such a case as this, but still we are not to attach too much importance to the use of that particular word in determining what is a substantial equivalent for the "chambered brush-frame having a contracted aperture”-one of the things to be used in performing the method. Such a brushframe of various forms was old in the art. In a prior patent to Morrison we find the undercut recess or chamber fully described, and mentioned as “undercut.” No novelty is attributed to it in the patent in suit, but the invention resides in the method of putting the bristles into the composition to form the brush-pad, and this into the frame, and there molding and forming it and attaching it to the frame or back—all in one operation. In point of fact, the composition adheres very closely and securely to the sides of the chamber in the wooden frame, and all that was necessary, if necessary at all, and all that was done by defendants to do away with a contraction in the aperture, was to substitute additional binding and adhesive surface to the chamber. This was done by leaving, as stated, the raised portion in the chamber. Otherwise, the brush-frame of wood used by the defendants in performing or putting in operation the method and carrying it on to completion is identical with that used by complainant, and, so far as the method itself used by defendants is concerned, it is identically that described in the patent in suit. True, the defendants claim an inversion of the chambered brush-frame in putting the composition into the recess, and that in their machine or presser used for the purpose they put the composition first onto the ends of the bristles, projecting from the bristle plate, and then bring the two together, and by pressure force the composition and ends of the bristles contained therein into the chamber, and by the continued pressure mold the composition. But this is a distinction without a difference, for, even if this is what defendants do, they have united the several steps of the prior art into one, as did Morrison in the patent in suit before them, and the mode or method by which it is done is substantially that of the complainant. Such a variation in performing or carrying out the method cannot avoid infringement. I think the defendants have copied the principle or mode of operation of Morrison's patent in suit, and have therefore infringed. Winans v. Denmead, 15 How. (U. S.) 330–342, 14 L. Ed. 717; Ives et al. v. Hamilton, 92 U. S. 426, 430, 23 L. Ed. 494; Machine Company v. Murphy, 97 U. S. 120–123, 24 L. Ed. 935; Hoyt v. Horne, 145 U. S. 302, 308, 309, 12 Sup. Ct. 922, 36 L. Ed. 713; Westinghouse v. Boyden Power Brake Co., 170 U. S. 568, 18 Sup. Ct. 707, 42 L. Ed. 1136; Columbia Wire Co. v. Kokomo Steel & Wire Co. (C. C. A.) 143 Fed. 116, 122. In Westinghouse v. Boyden Power Brake Co., supra, the Supreme Court (page 568 of 170 U. S., at page 722 of 18 Sup. Ct., 42 L. Ed. 1136), said: “We have repeatedly held that a charge of infringement is sometimes made out though the letter of the claims be avoided.”

In Columbia Wire Co. v. Kokomo Steel & Wire Co., supra, the claims of the patent are found at page 119 of 143 Fed. Some of the things claimed were absent. Some in the form specifically described in the claims were absent and others substituted, but the court said:

“We are of opinion that the means thus transposed in the appellee's machine, if not within the definition of colorable evasions which infringe the patent in any view of its scope, are plain appropriations of the essence of the Bates conception by equivalent means, and infringements of the patent within the well-settled rule referred to. All the elements of the patent combination are employed with substantial identity in their use, and departure appears from the letter of the claims only, in the arrangement of these elements, without substantial difference in the principle of operation. The policy and rules of the patent law require that the patentee be protected against such evasions of the wording of a claim in form or nonessential details, when the substance of the invention is thus used, and is unmistakably shown in the specifications and claims."

In Winans v. Denmead, 15 How. (U. S.) 342, 14 L. Ed. 722, the claims of the patent read as follows:

“What I claim as my invention, and desire to secure by letters patent, is making the body of a car for the transportation of coal, etc., in the form of a frustum of a cone, substantially as herein described, whereby the force exerted by the weight of the load presses equally in all directions, and does not tend to change the form thereof, so that every part resists its equal proportion, and by which, also, the lower part is so reduced as to pass down within the truck frame and between the axles, to lower the center of gravity of the load without diminishing the capacity of the car, as described. claim extending the body of the car below the connecting pieces of the truck frame, and the line of draft, by passing the connecting bars of the truck frame and the draft bar, through the body of the car, substantially as described."

The patentee expressly claimed the “making the body of a car for the transportation of coal in the form of a frustum of a cone,” etc. The defendants made theirs in an octagonal form. The court held, reversing the court below, that defendants infringed, and said:

"It is generally true, when a patentee describes a machine, and then claims it as described, that he is understood to intend to claim, and does by law actually cover, not only the precise forms he has described, but all other forms which embody his invention; it being a familiar rule that to copy the principle or mode of operation described is an infringement, although such copy should be totally unlike the original in form or proportions. The reason why such a patent covers only one geometrical form is not that the patentee has described and claimed that form only; it is because that form only is capable of embodying his invention, and, consequently, if the form is not copied, the invention is not used. Where form and substance are inseparable, it is enough to look at the form only. Where they are separable

where the whole substance of the invention may be copied in a dif

ferent form-it is the duty of courts and juries to look through the form for the substance of the invention for that which entitled the inventor to his patent, and which the patent was designed to secure. Where that is found, there is an infringement; and it is not a defense that it is embodied in a form not described, and in terms claimed by the patentee."

In Ives et al. v. Hamilton, supra, it was held:

"Where an improvement in sawmills, for which letters patent were issued, consists of the combination of the saw with a pair of curved guides at the upper end of the saw, and a lever, connecting rod, or pitman, straight guides, pivoted cross-head, and slides or blocks and crank-pin, or their equivalents, at the opposite end, whereby the toothed edge of the saw is caused to move unequally forward and backward at its two ends while cutting. The claim is, 'giving to the saw in its downward movement a rocking or rolling motion by means of the combination of the cross-head working in the curved guides at the upper end of the saw, the lower end of which is attached to a cross-head, working in straight guides and pivoted to the pitman below the saw, with the crank-pin substantially as described,' the use by another party of guides consisting of two straight lines representing two consecutive cords of the curve of the guides of the patentee, and arranged in other respects in the same manner as this curve, is clearly the employment of a mechanical equivalent, and is an infringement of the patent.”

Here the claim was for curved guides, and they were not used. In Machine Co. v. Murphy, supra, the court said:

“Except where form is of the essence of the invention, it has but little weight in the decision of such an issue; the correct rule being that, in determining the question of infringement, the court or jury, as the case may be, are not to judge about similarities or differences by the names of things, but are to look at the machines or their several devices or elements in the light of what they do, or what office or function they perform, and how they perform it, and to find that one thing is substantially the same as another if it performs substantially the same function in substantially the same way to obtain the same result, always bearing in mind that devices in a patented machine are different in the sense of the patent law when they perform different functions or in a different way, or produce a substantially different result. Nor is it safe to give much heed to the fact that the corresponding device in two machines organized to accomplish the same result is different in shape or form the one from the other, as it is necessary in every such investigation to look at the mode of operation or the way the device works, and at the result, as well as at the means by which the result is attained.”

See, also, Tilghman v. Proctor, 102 U. S. 730–731, 26 L. Ed. 279.

I think that defendants have copied and used complainant's method as described in claim 1, and that in so far as there is a change of a thing used in carrying the method into effect the defendants use a substantial equivalent.

I have carefully examined the question of prior use, reading all the evidence, and find that defense is not sustained.

Decree for complainant.

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