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arrangement may seem simple, and a look at it from the retrospective standpoint might be suggestive that it is the result of the commonest kind of mechanical skill, yet the fact that there existed a mechanical requirement for such a utility for a long time, and that it was not discovered or applied until a later period, is highly evidentiary of inventive application and genius. So, bearing in mind that the letters patent prima facie establish inventive genius, considered in connection with the historical growth and development of the alleged improvement, I conclude that the combination is the result of inventive genius as contradistinguished from mechanical skill applied to the different arrangement of old elements. See Gandy v. Main Belting Company, 143 U. S. 587, 594; 12 Sup. Ct. 593, 36 L. Ed. 272; Krementz v. S. Cottle Co., 148 U. S. 556, 13 Sup. Ct. 719, 37 L. Ed. 558; Star Brass Works v. General Electric Co., 111 Fed. 398, 49 C. C. A. 409.
In avoidance of this conclusion, defendant insists that his machine, that is, the one constructed by him and inveighed against by the bill of complaint, does not impinge upon the Haataja patent because it does not combine all of the elements of the patented combination. The most important of the elements which it is claimed are not combined in his machine are the closure-strips, removably attached to the mold-blocks, the manner of the adaptation of the cut-off, and the arrangement and adaptability of the guides and pin-bars. Other alleged dissimilar ingredients are enumerated, but these are sufficient for a determination of the principle governing all.
Mechanical equivalents are not patentable, and their employment in combination with other elements of the patented device does not avoid infringement. A mechanical equivalent is defined by Mr. Walker, in his work on Patents, fourth edition, section 354, "as a thing which performs the same function, and performs that function in substantially the same manner, as the thing of which it is alleged to be an equivalent.”
Applying the definition, it is said in National Hollow B. B. Co. v. Interchangeable B. B. Co., supra:
"Mere changes of the form of a device or of some of the mechanical elements of a combination secured by patent will not avoid infringement, where the principle or mode of operation is adopted, unless the form of the machine or of the elements changed is the distinguishing characteristic of the invention."
And, as illustrative, Circuit Judge Townsend applies the principle in New Departure Bell Co. v. Bevin Bros. Mfg. Co. (C. C.) 64 Fed. 859, 864, as follows:
“It is true that in the patent in suit the base plate is stationary, while in the defendant's device it is caused to rotate, and that the levers are differently arranged in the two devices. But in each case the different parts operate to perform the same functions in substantially the same way, and the alleged differences of operation are merely such colorable and formal ones as result from the use of mechanical equivalents."
To the same purpose see National Typographic Co. v. New York Typograph Co. (C. C.) 46 Fed. 114, Columbus Watch Co. v. Robbins, 64 Fed. 381, 12 C. C. A. 174, Ide v. Trorlicht, Duncker & Renard
Carpet Co., 115 Fed. 137, 149, 53 C. C. A. 341, and Shelby Steel Tube
The principle thus stated and elaborate1 has pertinent application as it respects all the ingredients or elements enumerated above in their relation to the Haataja patent. The function of the clɔsure-strips is to form the apertures through which the cord is to pass when laid through the molds, which apertures are to be of size adapted to press closely upon the cord so as to prevent the escape of the molten lead. Now, the molds devised in the mold-blocks of defendant's machine are provided with like apertures (but contained in the solid pieces), which press the cord and prevent escape in identically the same way. So that the function to be performed is the same as it respects both devices, and it is performed in substantially the same manner by compressing the cord and thereby forming a perfect mold. True, the closure-strips are removable, so that others may be substituted with apertures adaptable to the size of the cord to be leaded; but these are of little utility, as experience has demonstrated that different sized molds are required for different sized cord, because the heavier cord needs the heavier sinker to carry it down. The closure-strips, therefore, in combination with the mold-blocks, perform identically the same function as the mold-blocks constructe:1 by the defendant for his machine, which is an alleged infringement upon the Haataja patent; and, vice versa, the mold-blocks of defendant's machine are a mechanical equivalent for the molds secured by the Haataja patent. It is a rule in patent law that the mere making of a device in one piece formerly constructed in two parts mechanically attached is not invention. Standard Caster & Wheel Co. v. Caster Socket Co., 113 Fed. 162, 51 C. C. A. 109. So the court says, in Howard v. Detroit Stove Works, 150 U. S. 164, 170, 14 Sup. Ct. 68, 70, 37 L. Ed. 1039, 1041: "It involves no invention to cast in one piece an article which has formerly been cast in two pieces and put together.”
Replying to this application of the principle, counsel for defendant say that then the Haataja patent as it respects this device was anticipated by the Maunula patent, and I think they are right. But the argument overlooks the theory, which is well founded, that the Haataja patent is a combination of old elements producing more efficient and expeditious results. The inventor of a combination is himself entitled to apply and adapt the equivalents for his own use. Indeed, his patent covers the equivalents as fully and effectively as it does the invention. Thus, where the alterations are formal but are adapted to perform the same function, in substantially the same manner, the patentee is guaranteed the exclusive right to their employment for his sole benefit, and, if any one assumes to utilize such alterations in combination with the patentee's combination, he becomes an infringer as certainly as if he had adopted the entire patented device. The change or new adaptation must be one of substance, and not a mere form, to avoid infringement. In other words, the substitute for the omitted ingredient must be a new one, or must be adapted to the performance of a substantially different function, or else it will inure to the right of the patentee. Rees v. Gould, supra, is a very instructive decision upon
the subject, and covers almost the entire range of the present controversy.
What has been said as to the closure-strips applies in the main to the cut-off and the new arrangement of the guides and pin-bars. They perform identically the same functions as the old, and in practically the same manner. Instead of cutting the leads by rotary action, the defendant's machine cuts them by longitudinal process; but they are cut, nevertheless, at the same juncture, and the result is the severance of the neck from the molded product, all without a particle of functional difference. So with the guides and the pin-bars. The latter are adjusted upon the former by means of holes and notches therein, in place of the slides, and both pin-bars are rotary; but they perform no different function whatever, and they perform the function in substantially the same way. The purpose of the rotary action in the pin-bars is to secure and release the cord with facility and bring about uniformity in the product. But a rotary motion in one bar while the other remains stationary answers the same purpose, so that the same function is performed whether one or both are rotatable. So I conclude that as to these features, and others pointed out but of similar character, they are but mechanical equivalents, and the adaptation of them by the defendant constitutes an infringement of the Haataja patent, now owned and controlled by the plaintiff.
I have not overlooked the contention of defendant that the Haataja patent evidences an improvement and not a pioneer in the way of invention, and therefore that a strict construction should be applied in the ascertainment of equivalents, and that no device will impinge unless it is practically of identical construction and operation. As it pertains to pioneer inventions, a broad and liberal rule obtains in the ascertainment of what contrivances and devices are to be deemed equivalents, which is for the adequate protection of the inventor who has successfully employed his faculties in producing a novel and, at the same time, a useful piece of mechanism. Not so with a mere improvement which, added to another person's invention, performs practically the same function as the prior device. In such a case, the rule as to equivalents is greatly narrowed, and to infringe means to produce and adapt nearly the exact device claimed for the improvement. But between these two rules there is a range of flexibility that has relation to the state of the art and the vitality and importance of the advancement made therein by the iniprovement. If the improvement is of great utility and denotes a marked and signal advance in the state of the art, although not entitled to be denominated a pioneer, the law accords to the inventor a larger latitude of equivalents than it does where the improvement is of lesser or minor importance. Each case, therefore, is largely to be determined by its own peculiar features; it being of paramount importance that the inventor be protected against encroachment upon the output of his genius, according as his merits shall suggest. Miller v. Eagle Manufacturing Co., 151 U. S. 186, 207, 14 Sup. Ct. 310, 38 L. Ed. 121; Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 561, 18 Sup. Ct. 707, 42 L. Ed. 1136; Cimiotti Unhairing Co. v. American Fur Refining Co., 198 U. S. 399, 406,
et seq., 25 Sup. Ct. 697, 49 L. Ed. 1100; National Hollow B. B. Co. v. Interchangeable B. B. Co., supra. The Haataja combination, to my mind, is of far greater account than a mere improvement, and the inventor should be accorded a larger protection by reason thereof.
In this relation should be considered the further objection which is the basis of defendant's fourth defense. It is insisted that, by reason of the setting of the pins in relation to the pin-bars in defendant's machine, being curved in line with the bars rather than laterally, they are suited to a more ready release of the cord without rotation of the bars. But this partakes more of the application of genius to avoid infringement than to invent or construct something really new or novel. The functional difference between the two contrivances is not appreciable.
The third objection relates to claim 3 as contained in the Haataja letters patent, which reads as follows:
"In a net-leader, the combination with a series of molds, of rotatably-mounted bars provided with pins, adjustable relative to said molds, substantially as described.”
The specific objection is that it does not accurately describe the device, as it speaks of rotatably-mounted bars, when by reference to the specifications and drawings but one bar is so mounted. The rule seems to be that the claims are construed in connection with the drawings and specifications, and assuredly would this be so where reference thereto is made in the claim by the use of the qualifying words “substantially as described.” There was possibly a mistake in drafting the claim, as but one bar was designed to be rotatably-mounted, but by reference to the drawings and specifications there can be no doubt as to the patentee's intention, and I am not inclined to permit a mere technicality to defeat the patent. If the word "rotatably" had been omitted, the claim would have been technically sufficient, no doubt; but, when reference is made to the description of the invention, there can be no cavil as to what was designed to be claimed, and the claim is not rendered void by the discrepancy. Further than this, specific statements in subsequently enumerated claims show that one of such bars is fixedly attached while the other is rotatably attached. By reference to the nine claims exhibited by the letters patent it will be seen that each particular element of the patentee's device is claimed separately and in combination; and it is made perfectly clear from a reading of the claims alone, without reference to the description, that the device consists, among other elements, of one fixedly and one rotatably attached bar, not two rotatably attached bars.
Two principles tersely stated by Sanborn, Circuit Judge, in National Hollow B. B. Co. v. Interchangeable B. B. Co., supra, are applicable here:
"When the intention of the parties is manifest, it should control, regardless of inapt expressions and technical rules. In cases of doubtful validity or of ambiguous terms, that construction should be adopted which sustains and vitalizes the agreement, rather than that which destroys or paralyzes it.”
And so Coxe, District Judge, pertinently says, in Gaisman v. Gallert (C. C.) 105 Fed. 955, 958:
"When forced to choose between a construction which destroys and one that saves the patent the court should not hesitate to adopt the latter.”
Thus it is plain that, if this were a case of doubtful intendment as it respects the claim, that construction should be adopted which would lend support to the patent. However, looking through all the claims, the description, and the drawings and specifications, the intention of the claimant becomes perfectly manifest. So that the patent is not rendered invalid by the incongruity of statement in claim 3.
It results from these considerations that the injunction against infringement should be made permanent as prayed, and a decree will be entered accordingly.
THOMSON-HOUSTON ELECTRIC CO. V. ELECTROSE MFG. CO. et al.
(Circuit Court, E. D. New York. August 16, 1907.) 1. PATENTS-SUITS FOR INFRINGEMENT_EQUITY JURISDICTION.
Where a number of suits for infringement between the same parties, each based on a different patent, are related, the patents having to do with similar subject-matter, so that, if joined, all could be tried upon the same record, the court may properly retain jurisdiction in equity, even though in some of them an adequate remedy may exist at law, be
cause of the near expiration of the patent. 2. SAME.
The fact that profits are recoverable in a suit in equity for infringement of a patent under Rev. St. § 4921 [U. S. Comp. St. 1901, p. 3395], and not in an action at law, while not in itself any basis for equitable jurisdiction, is a reason why that jurisdiction should not be relinquished
when it may be upheld on other grounds. 3. APPEARANCE-DISTRICT OF SUIT-WAIVER OF OBJECTION.
The objection that a court is without jurisdiction of a suit for infringement of a patent because not brought in the district of which defendant is an inhabitant or a district in which infringement was committed, and defendant has a regular and established place of business, if apparent on the face of the pleadings, is waived by the filing of a gen
eral demurrer or any other act which constitutes a general appearance. 4. PATENTS-DEFENSE OF LACHES.
A bill for infringement of a patent which alleges acts of infringement within six years need not specifically allege that complainant has been
diligent. 5. SAME-SUFFICIENCY OF BILL-MULTIFARIOUSNESS.
A bill for infringement against a corporation and an individual described as its president and general manager, which charges that defendants have and each of them has committed certain acts of infringement, sufficiently alleges a joint infringement, and is not demurrable for multi
fariousness. 6. COURTS-JURISDICTION-DIVERSITY OF CITIZENSHIP.
Circuit Courts of the United States being given exclusive jurisdiction of suits relating to patents by Rev. St. § 711 [U. S. Comp. St. 1901, p. 577), diversity of citizenship between the parties is not essential to such
jurisdiction. 7. PATENTS-INFRINGEMENT-PLEADING—JURISDICTIONAL ALLEGATIONS.
Under Act March 3, 1897, c. 395, 29 Stat. 695 [U. S. Comp. St. 1901, p. 589), which authorizes a suit for infringement of a patent in any district “in which the defendant *
shall have committed acts of infringement and have a regular and established place of business," it is not essential that the bill should use the words, "regular and established,"