EPPLER WELT MACH. CO. V. CAMPBELL MACH. CO.
141
could be supposed that it had not manufactured any device having means for stlcuring the protector plate to both of the adjacent segments, yet it would not· follOw that infringement had been avoided. It is obvious that, even with provision for fastening- to one of the t."'o segments omitted, the gist and substance of the Pllillips construction wollld still be present in that of the defendant,-it would still effect the same object, and by means not essentially different. The decree of the circuit court is reversed, and the cause will be remanded to the circuit court of the United States for the Western district of Pennsylvania, with direction to enter a decree in favor of the plaintiff.
= EPPLER WELT MACH. CO. v. CAMPBELL MACH. CO.1l {Circuit Court of Appeals, FIrst Circuit. No. 236. WU-THREAD SEWING MACHINES.
February 19, 1898.)
The Campbe1lpatent, No. 253,156, for improvements In wax-thread sewing machines, construed, and llmlted as to claim 19, covering a combination ot a hook needle, a thread arm, a thread eye, and operating mechanism for the arm and eye. 83 Fed. 208, reversed.
from the Circuit Court of the United States for the District of Massachusetts. This was a suit in equity by the Campbell Machine Company against the Eppler Welt Machine Company for alleged infringement of the nineteenth claim of letters patent No. 253,156, granted January 31, 1882, and of the first claim of patent No. 374,936, granted January 31, 1882, both to the complainant, as assignee of D. H. Campbell, for improvements in wax-thread sewing machines. The circuit court found that the first-mE'lltioned patent was valid, and had been infringed by defendant as to the claim in issue, and that the first claim of the second patent was invalid. 83 Fed. 208. From this decree the defendant has appealed. Frederick P. Fish and James J. Storrow, for appellant. James E. Maynadier, for appellee. Before PUTNAM, Circuit Judge, and ALDRICH and LOWELL, District Judges. PUTNAM, Circuit Judge. The patent in suit relates to "improvements" in wax-thread sewing machines, and contains 29 claims. It is, consequently, necessary in the present case, where, for some reason unknown to the court, the complainant limited its suit to one claim out of the many in the patent, to make sure that the claim in issue does not receive improper color or breadth from those not in issue. The claim in issue is as follows: "(19) The combination, substantially as hereinbefore dl'scribed, of a hook operating mechanism tor the arm oeedJe. a thread arm, a thread eye, I Rehearing denied April 28, 1898,
and eye, which causes said eye to first clllTJ!l\nd4eUvel' the, thread to the l!:rID and. deliver thread to the neeIHe'.l!-j:ld.. also arm to mereiy the thread deliverelfto, it by the eye, whereby said arm is prevell.tE\ilfrom abrading the thread, as set"forth." ,, "
The purpose to be accomplished by the ,device in the specification as follows: :
0'
thiS' claim is shown
"It is not' new to employ a swinging' thread arm with a swinging eye, but, as heretofore organized and operllted,' the arm helped .. ,thread during the movement of the eYIl, and by GOn,tinuing onward said arm carried the thread ina.:l1irection away from tlieeye and over the pressel' foot, so that the thread sUpped over the aim; and" it rs' the abraslon incident to this slipping aetlon at the arm which I have obviated by having the eye carry the thread to the arm, which merely holds iLwhil.etlle',eye next proceeds to and around the needle, and, instead of delivering the thread to the needle in a straight line eYe al1d arm, as heretofore, the thread il! delivered to, the hook in a horiiontal'bight, as clearly shown in Fig. 9, thereb'y greatly contributing of the thread bythe ,book." to an
That it was old in the art tO"deliver thread freely to the needle from both directions, and that fhus abrasion by the needle itself had been ovel'cOm,e,)lre admitteq in,tqe,specification PY referencetothii inwmtor's prior wtent, No. 231,lJH;, and are shown tOllave also anticipated that patent, and to have been ,a long time wellknQwn. Prior to the invention now in iSSMrthis' hadbeeri accomplished' by use, of a al;1, 'Yell a "vibr.atingere,.the. the thread and drawmg It out from l:he sp601; and up, When needed to tile stitch, the4Itermittent supply thus obtafned by it. ,It is daimed, in the extract we have made from the cation that. tQe arm abradedthe'tltl'ead, ahd the function of' claim 19 is to overcome this abrasion., , , ' " The also contains the 'fOllowing: , t'
"In, said prior organizations of, tbread eye and arm, the latter swung over the vtesser foot; and, in that the latter could nevt)rtheless be lifted, said foot, eye, and arm were connected together, so 'that all were rafsed or lowered together, involVing a: complication in the operative meehan. one ism of; tbe eye and arm, which I obviate by locating my arm Wholly side of the presser foot,"
It is argued, liDd seems to have been held by the court below, that this relates to some function of claim 19; hut this proposition is without ,foundation. We are re-enforced in: this by,the fact that this function is specially covered by claim 18, and also hy the illustrative fact that it would not he conceded that claim 19 might not be infringed withoutre;ference to the questjon as to the.side of the presser foot at which"iI1!'l infringing aw ,might be located. , "" ' ])uring ofthe application for this patent, the patent om,c, e,: , the a,PPl, ,can, t, to a,',m, ,d, ,th,'e, c,laim in IS,sue,' as 0, rigi,naI,ly , , drawn, by the words, whifh, now, appear therein, as fol1()ws: arm to and the thread delivered to it by the 'eye, wherehy saidarin is prevented from abrad· ing the thread, as set forth." verbal changes were made; which related, only to clearness of expression, and ,are not now of We, have no occasjon; ll.S to these amendments, to add anything to whafwas said by us'in Reece Button-Hole Mach. Co. v. i,
EPPLER WELT' MACH.' cO. ·V. CAMPBELL MACH. CO.
143
Globe Button-Hole C. O. A. 194, 61 Fed. 958: 'rhe'woro thus introduced which' has been 'principally discussed· is "merely." Whatever was the invention, and whatever 'the'patentee ought to have been allowed to incorporate into claim 19, it is clear that, under the circumstances of this case, the patentee bound himself and the court by the addition of these amendatory words. Applying the rules in Reece Button-Hole Mach. Co. v. Globe Button-Hole Mach. Co., especially those at pages 961 and 967, 61 Fed., and pages 197 and 201, 10 C. C. A., and, aside from that, applying the rules of interpretation which we have no judicial right to reject, we must give the including the word "merely," full effect. We are, however, to apply again the fundamental rules of law in construing the word "merely." These rules ,do not allow us to construe it so literally as to result in what is contrary to common sense, or so as to support what is trifling or useless. The arm, as shown in the patent, operates by being lifted on its axis to catch and retain the thread, and by depression on its axis to surrender thread to the needle. So much it must do in order to "merely retain lind release the thread"; and, on the proper construction, under the rules of law, of the words added by amendment to claim 19, this constitutes the proper action and function of the arm, and the whole of them. On a legal con· struction of this claim, anything which does not possess this function and this action, no matter to what extent in other particulars it may answer its calls, does not infringe it. The result is that it is an essential element in claim 19 that the arm shall have no positive or affirmative function in making the loop of thread to furnish a supply for the needle, as explained, and therefore the claim cannot be infringed by any device in which the arm has a proper function of that kind. Of course, it might be. in· fringed when the arm is given a movement needless to the performance of its proper function, or additional to it, because to refuse to admit this would violate the rule of construction to which we have referred, which does not allow literalness to the extent of triviality. In the complainant's device, as it is shown in the patent, the arm occupies a position, fixed at its axis or base, at some distance from the needle, so that, when the eye has traveled around it, there is necessarily laid thread sufficient, when the arm releases it, to supply the needle from a direction in effect opposite to the spool. This, however, would not be the fact if the normal position of the arm were substantially close to the perpendicular of the needle, because, in that event, the arm must make a substantial movement away from the needle in order to secure a supply of thread, even though the eye traveled about the arm as in the claim in issue. In the latter case, the armwQuld make substantially the same movement as in the old art, though not the whole of it, even if the eye did not, and therefore there could be no infringement. If, however, the movement of the arm were not functional for the purpose named, but only colorable, or purely supplemental, infringement would not be avoided. What are the facts at bar with reference to these hypotheses? If should be observed that there is nothing functionally new in
144
86 FEDERAL
,relative manner in which thellrm and the, eye approach each other in connection with the deHvery of thread to the former by the although, on the propeJ;' construction of claim 19, that would not be material to the case. In all the ,devices before the court, the relative manner of, their approach is the same, although in, the old devices the arm makes the approach, while in complainant's device it is made by the eye. Therefore, there is nothing functionally new in the fact that the complainant's arm, when receiving ,the thread, interpo$es between the eye and the needle; nor would it affect this case if it were otherwise. The old devices required an ultimate double movement across the Whole plane of operation,-the arm to the right, the eye to the left. The complainant's inventiqn reduced materially the quantum of· these move· ments, an,d ,this alone may well, have involved invention. But, as only one element in it, and thereclaim 19 is dJ,'awn, this importance in' this case. fore this fact' is not of itself Coming back to the principal question already stated, and referring to the respondent's machine, the complainant says: "In defendant's, machine the mode of operation of the thread eye and thread arm with reference to the hook needle is the mode of operation of tliose parts described in the 19th claim., The thread eye on its return stroke carries and qelivers the thread to the"thread arm,which is then in its forward position; the thread arm then moves back to engage and hold the thread, and the eye then makes its needle-threading stroke and threads the hook needle, which then draws a loop of thread through the material, aud the thread arm moves forward to release the thread as the needle draw,S the loop. The thread eye has the new function of carrying and delivering the thread to the thread arm, and the thread arm has merely to retain and release the thread delivered 'to it by the eye, In order that the two may co-operate to thread the needle with a bight of thread between the needle and the material."
His expert, referring to the respondent's expert, says: "lVIr. Cql",er totally disregards thisdiffer mce as a basis of, comparison, and bases his comparison apparently wholly upon the fact that while in defendant's machine the bight is formed by the delivery of thread by the thread eye to the thread arm," the holding of' that thread by' the thread arm, and the subsequent delivery of thread by the thread eye to the needle, the thread arm moves further than is necessary to the performance of its function In forming the bight" and that in addition to performing this function it elongates the bight." '
On the other hand, the respondent says: "In the Campbell patent in SUit, as we have pointedont, the entire share of the thread arm in the thread-drawing movement has been given to the thread eye. so that the thread arm merely retains the thread in, position to which it has bel.'n brought by the thread eye. It.is because th,e. thread arm of the patent In suit has Iio thread-drawing, but merely a thread-retaining move· ment, that the rubbing or slipping of the thread over thread arm, referred to in the specification as objectionable, is prevented. In the Campbell patent in suit not a hair's. breadth of thread is drawn down by the thread arm; the thread arm simply first retaIns the apex af the bight and. then drops it. Tlle exact amount of thread drawn do,vn relatively by the thread arm and the thread eye In the defendant:s machine varies somewhat. The thread arm and thread eye of the defendant's machine, as in all machines of tbis class, are capable of a certain amonnt of adjustment, so as to enable them to deal with Iea.ther of different thicknesses. When the defendant's machine Is ad-
145
ju,sted so as to give the least possible movement to both thread arm and thread eye, the thread eye will draw down three-sixteenths of an Inch of thread while the thread arm will draw down four-sixteenths. When both the thread arm and thread eye in the defendant's machine are adjusted to draw down the greatest amount possible of thread, the thread eye will draw down six-sixteenths of an inch of thread and the thread arm will draw down ten-sixteenths of an inch of thread."
The respondent's expert testifies as follows: "As to the defendant's machine, * * * the arm begins with a bightforming movement against the line of the standing thread, the eye moving not first. but last, and the arm and eye co-operating together, and each having a positive movement to form the bight."
We derive from the record no further substantial assistance, and have been compelled to resort to an inspection of the respondent's machine, put into the case by the complainant. Complainant also put in one of its commercial machines, which has complicated any attempt at comparison, as it clearly does not conform in construction to claim 19. The complainant's expert testifies about it and the respondent's machine as follows: "In saying that each of these two machines contains a thread arm and a thread eye operating together, after the manner described in the patent in sult, and referred to in the nineteenth claim, I have not failed to notice that in each of these two machines the thread arm has a Utile more movement than is necessary to enable it to take hold of the bight formed and delivered to it by the thread eye. The result of this excessive movement is that, after the bight has been formed by the thread eye and delivered to the thread arm, it is slightly elongated by the excessive motion of the thread arm before the thread eye begins to move towards the needle. I regard this excessive movement, however, wholly immaterial so far as concerns the practical results of the operation of the machine, and so far as concerns any question of the embodiment of the invention described in the patent in suit, and referred to in the nineteenth claim."
But an inspection of complainant's commercial machine shows that the arm has a very considerable throw, and that, so far from having only the motions shown by the patent to be necessary for retaining and releasing thread, it has a very substantial, independent, positive action, in drawing out tile supply required to feed the needle from the direction opposite to the spool. We are therefore without the advantage which would come from making a comparative inspection, and we are compelled to observe as best we can, without any practical standard with which to compare. This inspection discloses to us that, at the beginning of the series of movements which results in feeding the needle, the respondent's needle and arm are substantially in the same perpendicular, so that, as already said, the arm must presumably make a substantial movement away from the perpendicular of the needle in order to form the necessary loop; that, consequently, the arm, in forming the loop, does apparently exert a proper and necessary function by a substantial and very considerable active throw in drawing out a supply of thread; and that the respondent's eye and arm apparently cooperate in a normal manner in forming the loop, substantially alJ the loop co-operated in the old device, although approaching from different directions. Such being the apparently normal and proper 86F.-1O
146 operat1bn: ,of the respondent's tQ:oyetcome the p,resumptionagainst thecoJnplainant, arising ,thellefrom, except the hare, statement of the complainant's expert; which we have alreadyo,cited, that the arm:moves further than is'necesStlry to the performancEtof its function in forming the bight,." To accept a statement so that it gives the, court no details by which it can apply its terms, or by which it carl' jtHlge for itself the limitation to be put on tbe expression ''fu!Hher than is necessary," or by which it, whether" th(alleged excessive degree of tlirow is substantial, woul(1 be to the witness for the court. The attempted application of !!IO general a statement is ma.de all ,the more doubtful because the long ,throw of the arm in the complainant's commercial macbine shows apparently tbat the inventor's idea, that'a;bl'asion by the arm ,of the old devices was injUrious, was fanciful; 0'1' 'that it was easily overcome by properly the arm; or by somewhat changing its relative location. This is apparently all the regpondenfhas done, and it had a right to do this. We do not think thecompl'ainant has met the burden, resting on it, of proving of:61aim 19, as properly construed. The the circuIt, cO).IIi ,is reversed, and the case is remanded to that court, with direction to dismiss the bill, with costs, the appellant to recover the costs of this court.. . .I
:i .
8AFEGUARDACCOUNT CO.v. WELLINGTON.
(Circ:ult Court; P.l:lass/l.chusetts.Janulu:y Zl,1898.) 1. PATENTS-INVENTION.
The of perforated lines 111,' paper, for tbepurpose of, permitting easy ,separation, having for many,year/! been commOn in tbe arts in which paper , is used, its ll.tmlication to any particular art, or any subdivision tbereof, does not 'Invention, unless under pecUliar circumstances. The iHorne patents, Nos. 393,506 and 3{J3,507, fot-blank bOOks, considered; and tllefQrmer, which is fOl"R book having full leaves of the same width, apart of, which are longitudinally perforated near their outer edges to make removable margins, thereby, forming a long and short leaf ledger, is, nevertheless, following the analogy 01' Thomson v. Bankr 3 C. C. A. 518, 53 Fed. 250, held valid and infringed, and the latter held void, for want of invention, over the former. . BOOKS FOR LEDl;E:RS.
2.
This was a suit in equity by the Safeguard against Edward F. Wellington for alleged. infringement of letters patent No. 393,506 and 393,507, issued to John W. Horne for blank books. Clarke, Raymond &' Coale and George O. G.Coale, for complainant. RobertWr Hardie, for defendant. PUTNAM, Circuit .Judge. The earlier of the two patents in suit, No. 393;506, is the only one which requires particular consideration. It was applied for June 27.11887, and issued November 27,1888. Claim 1 is as follows: