(98 Fed. 890.)

NATIONAL MFG. CO. v. BLAKEY.

(Circuit Court of Appeals, Third Circuit. November 28, 1899.)

Nos. 15, 16.

PATENTS-INFRINGEMENT-THREAD PROTECTORS FOR IRON PIPE.

The Blakey patent No. 311,171, for a thread protector for wroughtiron pipe, which is made by rolling a flat iron bar of iron with longitudinal threads on one side, cutting the same into suitable lengths, and bending each piece into a ring or annulus with the threads on the interior surface, discloses invention, and is valid. Also held infringed by two protectors, made and sold by defendant, having rolled threads, and not infringed by a third, in which the threads are made by tapping.

Appeal from the Circuit Court of the United States for the Western District of Pennsylvania.

This was a suit in equity for infringement of a patent. Both parties appeal.

In the circuit court the following opinion was rendered by Buffington, District Judge:

In this case Mildred Blakey, by virtue of patent No. 311,171, of January 27, 1885, seeks to enjoin the manufacture and sale by the respondents of pipe protectors represented by Exhibits 1, 2, and 3. Pipe protectors have been considered by this court in Kurtz v. McDowell, No. 19, May term, 1896, and by the circuit court of appeals of this circuit, McDowell v. Kurtz, 23 C. C. A. 119, 77 Fed. 206, while this particular patent was before us in Blakey v. Kurtz, No. 7, November term, 1896. In view of these cases, and the details of the art therein stated, no general account is here needed. The invalidity of the patent and noninfringement are now relied on. As to the first defense, we see nothing in the record to successfully assail the patent. Of the various patents cited it is sufficient to say that none of them disclose Blakey's invention. He seems to have been the first to show a thread-rolled, as distinguished from a thread-tapped, ring protector. This defense, therefore, is not sustained. In Blakey v. Kurtz, supra, we had occasion to pass on a question of infringement of this patent. The alleged infringing device had two threads at the outer edge of the ring, and thus flanked an open, intermediate channel. Such channel constituted a material and functional departure from the full threadfaced device disclosed in Blakey's patent, and the device was held not to infringe. Types 2 and 3, now before us, have no such open channel or web, and therefore present a question different from the one then before the court. Whatever general language was used in discussing the then question, the present infringement was not involved, and we regard the question of infringement of said two types as still an open one. In both of them the threads are initially formed by rolling, and in neither is found what in this art is to be functionally regarded as an open web or channel. In form, it is true, they differ from the full-faced, thread-rolled annulus of the Blakey ring, in that certain threads are omitted at regular spaced distances across the entire face; but in substance they are the same. No functional difference or purpose is secured by these intermediate narrow breaks in thread continuity. The mode of initial attachment is the same. After attachment they protect the pipe in the same way. It would, therefore, seem they are left out for no purpose but to avoid literal and exact identity with Blakey's device. Such being the case, it would seem they should be adjudged to infringe, unless the patentee has so narrowly restricted his claim as to limit him to an exact, literal copy thereof. We are free to say in our opinion in Blakey v. Kurtz, supra, we made use of general language which gives countenance to such a view, but such language must be considered with reference to the question then before the court. The open web or channel, placed there for a new

functional purpose, constituted a different functional device from Blakey's invention, and we therefore held that the flanking threads on either side of a functional channel did not constitute "a series of parallel independent threads," as claimed by Blakey. But it by no means follows that an infringer who omits here and there a few threads, not for any functional purpose,-who changes exact form, but retains substantial substance,-should thereby escape. Now, it is true types 2 and 3 do not have a single, continuous thread, extending through the entire ring surface; but wherever the thread appears it is in the line of the regular spiral path, and the occasional break of thread continuity makes no difference in functional effect from that of a continuous thread; nor is it either of such size or position as to secure the functional effect of an open channel. To allow an infringer to escape infringement by such an omission would be to make substance of shadow. The addition of an outer shoulder or flange on No. 3 simply serves as a cap or lock, and in no way affects the thread function. Being of opinion, therefore, that types 2 and 3 are, in substance and effect, the Blakey ring, they will be held to infringe. Type No. 1 presents a different question. In it a strip is first rolled, having four flat-faced projections, one at each edge and two in the middle space. These projections are not rolled threads, and are not, and from their width and rectangular shape cannot be, used as threads. The strip is bent into a ring, after which it is tapped, and threads cut on the surface of the projections, viz. four threads on the outer one and two on each of the others. In form and substance this is but the full-threaded, old-styled tapped coupler of the art, with some intermediate threads left out to lessen the wear, tear, and expense of tapping. It has no threads "formed on its inner surface, substantially as and for the purpose described," as in the Blakey patent. It has no rolled threads whatever, and in no way embodies the invention disclosed by Blakey. It simply uses channeled-rolled, flat-faced, projections as seats for tapping threads. We are. therefore, of opinion the charge of infringement is not sustained in type No. 1. Let a decree be prepared in accordance with this opinion.

Marshall H. Christy, for plaintiff Mildred Blakey.

Edward A. Lawrence, for defendant National Mfg. Co.

Before ACHESON, DALLAS, and GRAY, Circuit Judges.

DALLAS, Circuit Judge. By the decree of the court below it was declared that the patent sued upon, namely, patent No. 311,171, dated January 27, 1885, issued to Mildred Blakey, for a thread protector for wrought-iron pipe, is good and valid, and it was thereby further found and adjudged that the defendants had infringed that patent by constructing and selling thread protectors for wroughtiron pipe, substantially identical, respectively, with the complainant's exhibit defendants' ring No. 2, and the complainant's exhibit defendants' ring No. 3, but that the manufacture and sale by the said defendants of thread protectors for wrought-iron pipe, substantially identical with the complainant's exhibit defendants' ring No. 1 did not constitute an infringement thereof. Accordingly the bill was sustained, and the usual relief awarded with respect to ring No. 2 and ring No. 3, but as to ring No. 1 the bill was dismissed. Thereupon the respondents appealed from so much of the decree as was adverse to them, and the complainant from so much thereof as related to complainant's exhibit defendants' ring No. 1. But after full examination of the record, and upon careful consideration of the arguments of counsel, we have reached the conclusion that the action of the court below was right in every particular; and this conclusion, we think, is sufficiently supported by

the opinion which was filed by the learned district judge. The decree of the circuit court is in all things affirmed, and it is now further ordered and decreed that the costs of the respective appeals shall in each instance be paid by the party appellant.

(98 Fed. 892.)

NUTTER et al. v. BROWN et al.

(Circuit Court of Appeals, First Circuit. January 2, 1900.)

No. 307.

1. PATENTS-INFRINGEMENT-CONSTRUCTION OF CLAIM.

Where a patentee does not show what are the real use and extent of his alleged improvements, so as to enable the court to see that they have made a substantial advance in the art, it cannot broaden the claims of the patent as to equivalents to cover anything which does not respond precisely to the form and letter of the patent.

2. SAME-COMMERCIAL SUCCESS.

Where the public use of a patented article shown relates to an indis. criminate use, rather than to use by manufacturers and other persons engaged in the art, it is not of especial value to the court in a suit upon the patent.

3. SAME-INFRINGEMENT-BICYCLE BELLS.

Claims 1 and 8 of the Ericson patent, No. 491,012, for a bicycle bell, which is sounded by bringing a friction roller into contact with the tire of the wheel, held limited, under the evidence, to the precise construction shown, and not infringed by the bell of the Barker patent, No. 608,146.

Appeal from the Circuit Court of the United States for the District of Massachusetts.

James E. & William Maynadier, for appellants.

Charles L. Burdett, for appellees.

Before COLT and PUTNAM, Circuit Judges, and WEBB, District Judge.

PUTNAM, Circuit Judge. This appeal relates to a patent issued to Lewis E. Ericson on January 31, 1893, on an application filed on April 25, 1892. Claims 1 and 8 are the only ones in issue. Claim 1 is as follows:

"In a bell for bicycles and other velocipedes, an oscillatory plate or disk mounted to turn in the rear of the gong, and complementary striking mechanism carried by said plate, and adapted by the movement thereof to be thrown into and out of action by contact with and removal from the bicycle or velocipede wheel."

As to claim 8, the complainants, now the appellants, say correctly that it is a combination of the first claim with certain other described mechanism. Therefore, if the alleged infringing device does not infringe the first claim, it cannot infringe claim 8.

There is a lack of anything in the record showing what is the pith of the alleged invention covered by claim 1, or what was the real advance in the art, if any, which it accomplished. All that ap pears in the patent about it is as follows:

"My invention relates to that class of bells for bicycles and other velocipedes in which the sounding of the bell is due to the frictional contact of the wheel of the machine with power-transmitting connections. My invention consists essentially in an oscillatory plate or disk carrying the striker and operating mechanism therefor, said plate or disk, by its movement, being adapted to throw its striker-operating mechanism into and out of engagement with the bicycle wheel, to actuate it or to allow it to remain at rest. It also consists in the novel constructions, combinations, and arrangements hereinafter fully described and specifically pointed out in the claims. The object of my invention is to provide a simple, compact, and effective bell for bicycles and other velocipedes, which can be readily adjusted to the machine, and which can be thrown into and out of action with ease and rapidity."

The appellants, at the hearing, said:

"The main novelty of the bell described in the patent in suit is that it is the only bell of its class in which the friction roller can be brought into and out of contact with the bicycle wheel by simply swinging a disk or lever, all the parts except those carried by the disk or lever being carried by the rigid bracket which is rigidly secured to the frame of the bicycle."

This, however, must relate to the device as shown by the entire patent, including all the claims. However this may be, the proposition contains nothing which, of itself, involves invention. The prior art in this class of bells, as the complainants maintain, put the movable point so as to oscillate the whole bell; the complainants changed it so that only the striking mechanism oscillated; and the respondents put it still further from the bicycle frame. Whether these changes cover anything of a substantial character, or whether they relate to mere detail of form, or to mere convenience, or to mere matter of fancy, the proofs in this record do not show. In Manufacturing Co. v. Holtzer, 15 C. C. A. 63, 67 Fed. 907, decided by us on April 16, 1895, it was said, at page 64, 15 C. C. A., and page 908, 67 Fed., that "the right to improve on prior devices, by making solid castings in lieu of constructions of attached parts, is so universal in the arts as to have become a common one, so that the burden rests on any one who sets up this improvement in any particular instance as patentable to show special reasons to support his claim." So, by parity of reasoning, it is so common in the arts to shift the movable point, when there is a movable point, that the mere statement that it is shifted will not enable the court to pronounce that there has been a substantial advance in the arts.

Therefore, so far as claim 1 is concerned, we are left without anything beyond what is presumed from the issue of the patent, in favor of either novelty or invention. Consequently, we are gov erned by the rule applied by us in Masten v. Hunt, 5 C. C. A. 42, 55 Fed. 78, and in Ball & Socket-Fastener Co. v. C. A. Edgarton Mfg. Co., 37 C. C. A. 523, 527, 96 Fed. 489, 493, as follows:

"The patentee did not show the court what were the real use and extent of his alleged improvement, and therefore the court was unable to find infringement in anything which did not respond precisely to the form and letter of the patent."

*

*

*

Applying this rule, we find, among the elements expressly stated in claim 1, "an oscillatory plate or disk, and complementary striking mechanism carried by said plate"; and it becomes impossible for us to hold that anything is an infringement which

does not strictly embody these two elements, or to broaden out the claim so as to accept as equivalents what we might have been justified in accepting, if it had been shown by the record that the improvements had made a substantial advance in the art. Instead of "an oscillatory plate or disk," carrying the striking mechanism, we find that the respondents' "plate or disk" is rigidly secured to the frame, and that all which oscillates is the friction wheel, with its incidental parts. Therefore, on any construction which we can give the claim in view of what we have said, it is impossible to hold that the respondents' device infringes.

The appellants, however, lay stress on the word "complementary,' found in the claim, and they maintain that, by force of this word, the claim is satisfied if any portion of the mechanism required to be operated in sounding the gong is mounted on an "oscillatory plate or disk"; and, further, that the oscillatory lever, which, in the respondents' device, carries the friction wheel, is such "oscillatory plate or disk." There is no doubt that the oscillatory lever might be regarded as the equivalent of the complainants' "plate or disk"; but, whatever meanings can be given to the word "complementary," no reasonable construction of claim 1, in view of the fact that it must be limited, as we have said, to the mere matters of detail shown by it, can have any relation to an "oscillatory plate or disk" which does not carry the substantial portions of the striking mechanism, but only what sets the striker in motion.

The appellants urge upon us the very common argument based on extensive public use. Public use, so far as any is shown, may have relation to other elements of their device than those covered by claim 1; and, as it relates to an indiscriminate use rather than to use by manufacturers and other persons engaged in the art, it can, in no event, be that kind of public use which the courts regard as of especial value in patent suits. This topic is disposed of by the fimitations which we have put on the application of propositions of this character in De Loriea v. Whitney, 11 C. C. A. 355, 63 Fed. 611, 621; Manufacturing Co. v. Holtzer, 15 C. C. A. 63, 67 Fed. 907, 908; Bates v. Keith (C. C.) 82 Fed. 100, 104, affirmed 28 C. C. A. 638, 84 Fed. 1014. The court below held correctly that there was no infringement as alleged in the bill.

The decree of the circuit court is affirmed, and the costs of appeal are awarded to the appellees.