454
FEDJmAL REPOBTER.
vol 49
LANE tl. PARK
et al.
(CtrouU COUrt,W. D. Pennsyltvania. February 11, 1899.)
t. PATBNm FOB INVENTIONS-INFRINGEMENT-PLOWS.
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·
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The clal.mOf, thepate'Dt in Buit was fer" the improvement herein described in the manufacture of plOWS and. cultivators;. that is to say. the D;laking of them of metal plate!l, having a center layer of soft iron or steel, with exterior layers of cast-steel, 8ubstantially JaB and for the purposes' 'described." Soft center steel plates themaelv6swere,0Id. The defendants, steel manufacturers. made the plates, and. upon orders, cut them into blan\!.,s of suitable size and shape for plow mould·boards and cultivator teeth, and sent,tlie rough blanks to the persons ordering them. who were manufacturers of pl\lwS and cultivators. Held, that the, defendants did not in· fringe. . . The were not bound to inquire w,hether or not the purchasers from them were licensed by the plaintiff to use the, and, baving dune no wrong themselves, they were not answerable for the unlawflil acts of others. '
B.
SAME.
At Law. 'Action by John Lane against Sarah Park and others for infringement of a patent. JUdgment for defendants. FINDINGS OF FACT.
In pursuar'JcEl of written stipulation, this case was tried by the court without the intervention of a jury. The following facts, therefore, are found by the court: (1) On September 15, 1868, letters patent of the United States No. 82,130 were granted to the plaintiff, John Lane, for an improvement in the manufacture of plows and cultivators; the invention consisting, the specification declares, "in constructing the mould-boards and shares of metal plates, having a center layer of iron, with a layer on both exAfter stating the advantages of the inventerior surfaceS of tion, and the method of manufacturing the compound plates, the specification closes with the following dischiimer and claim: "Since perfecting my invention, I have learned that compound bars of iron and cast-steel, constructed in a similar manner, were described as having been invented in England for the manufacture of edge tools, and therefore I do not claim the bars themselves as my ia:ventionj but, haVing thus fully described my invention, what 1 do claim is- the improvement herein described in the manufacture of plows and cultivators; that is to say, the making of them of metal plates, haVing a central layer of soft iron or steel, with exterior layers of cast-steel, substantially as and for the purposes described." The letters patent are made part of this finding. (2) On December 17,1866, Lane filed in the patent-office an application for letters patent for an "improvement in plates used in the manufacture of plows," the described method of manufacturing the same consisting in welding two layers of soft semi-steel on a central layer of tough, fibrous iron, heating the plate thus formed, and then casting on both sides of it highly carbonized molten steel, and rolling down the ingot to the proper thickness. The claim was this: ..As a new article of manufacture, plates for manufacturing plows, composed of layers of metal of the several qualities herein specified, arranged substantially as and fOl' the purposes described and set forth. 'J
LANE 11. PARE.
455
The application was rejected, and after amendments was agam rejected, and on August 27. 1867, was withdrawn. On April 11, 1867, Lane filed an application for" an irnprovement in cast-steel plows," the invention consisting"In making the mould-boards of cast-steel plows of layers of metal of different qualities, the face or wearing surface being composed of highly carbonized cast-steel. while there is secured thereto or combined therewith, in any suitable manner, a layer or layers of iron or soft wrought steel, forming a centerlining or back, which serves to toughen and strengthen the mouldboards." The original claim of this application was: A plow, when the mOUld-board thereof is composed of cast-steel, combined in any suitable manner with a toughening layer or layers, substantially as specUied, and for the purposes set forth." II
This application was rejected upon references, and after repeated amendments was still rejected. In the course of the proceedings the applicant addressed a communication to the commissioner of patents, in which he stated: !'FinalIy, I would add my claim is for a mould.board made of steel, with ironoonter. I do not claim the method of making this steel, though described in the specification. It is the result only-the mould-board-that I claim; and, if necessary, I would disclaim expressly everything except that."
In another communication to the commissioner the applicant said: "I do not claim the ingot; that Is not my invention; but I do claim final product,-the mould-board; that is my invention." The final claim was this: "I claim as new articles of manufacture, mOUld-boards for plows. when made in laminated plates, haVing a steel face and back, and a central toughening layer, substantially as specified." This application was finally rejected March 23, 1868. On September 26, 1867, Lane filed a third application, being the one under which the patent in suit, No. 82,130, was granted. Originally this application was for "an improvement in the manufacture of cultivator teeth," and the material, use, and mode of manufacture were thus described: "I take a plate of the proper thickness, and composed of a layer of cast-steel on one side and a layer of soft steel or wrought iron on the other, or of two layers of cast-steel, with the layer of soft steel or wrought iron between them, and cut it into blanks of the proper size to make the teeth, and then from these blanks I form the teeth by swaging, or in any other convenient way, and finally harden the cast-steel, if desired, in the usual manner." The first original claim was this: "The above-described blank for making cultivator teeth, composed of a layer or layers of cast-steel, combined with a layer or layers of wrought iron, soft steel, or other suitable tOllghening material." This application having been rejected,. Lane, on April 9, 1868, andressed to his attorney a letter, which was filed in the patent-office in the case, and in which he said:
456,
FEDERAr,. REPORTER,
vol. 49.
that to make plates ofcompopnd quality is not new, but I believe la", will allow me the claims in someabape that will be good for a tootb·.of .cast-steel face and back, combined with a tough layertbroiIghout the center, hardened; the tace and back being very hard, while the tough layer is soft, or softer than face and back. * * * Drop all claim to the unsharpened blank. and confine to the fiuished tooth; also confine, if you think best, to har.laned tooth. Itbink best." Lah.e's attorney then, on May 26, 1868, canceled the original specification and claims, and substituted the specification and Claim of the patent in suit, the petition for the allowance of this change, stating that the new application was "intended to be a substitute for both the previously filed applications; that on the plows being withdrawn for the purpose of having it embodied in this case." Eventually the patent in suit ,vas granted September 15, 1868. Exhibits A, B, and C, being copies of the file-wrappers and contents in the three above-recited appiic::ations, are 'made part of this finding. (3) The manufacture by the method set forth in Lane's patent of compound or soft center steel, having a central layer of iron, with an outer layer, on each face, of cast-steel, was made known and fully described in English letters patent No. 2,033, prout, dated January 19, 1795, granted to Arnold Wilde, for theinventiol1 of "making and manUfacturing of all sorts 'of plane irons, scythes, sickles, drawing-knives, hay-knives. and all other kinds of edge tools, from a preparation of cast-steel and iron, united and incorporated together by means of fire." And the use in the manufacture of plows of iron-backed steel, or two-ply cQmpound plates, composed of an iron back and steel face, as shown by United States letters patent No. 34,262, dated January 28, 1862, granted to William and United States letters patent No. 47,753, dated May 16, granted to Francis F. Smith, prout, was old at the date of Lane's invention.. (4) 10the of plows and cultivators, the old and customary was to cut the rolled metal plates into blanks, or pieces of suitable 'size and shape, and these pieces were first bent into proper form, and were:ihen, tempered or hardened,and finally were ground or polished, 'aud when finished were bolted in place. But, with the metal plates nsEidprior to Lari.e's invention, the tempering or hardening process was apt to warp the pieces out of' proper form. , (5) Th60bject of' Lane'sinvention was the production of plow mouldboards aDd shares and cultiV'ator teeth, which, after being .bent to the tfequired .forms, could be tempered or hardened without warping or change of form. To prevent this warping in the tempering or ing process is the distinctive and valuable feature of Lane's invention. This he accomplishes by the use of soft center or iron center steel, as it is called, or plates formed of an iron or soft semi-steel center layer between two steel faces or outer layers. Lane's invention soon came into ' very general use. (6) 'The plaintiffs established license fee was $5 per ton, and the defendants"books show the exact number of tons of· plow and cultivator shapes made and sold by them, as set forth in the next finding.
, LANE V· PARK.
457
(7) The defendants at the times and on the occasions mentioned in the declaration, between the grant of the plaintiff's'patent and the expiration thereof, were steel manufacturers at Pittsburgh, in the western district of Pennsylvania, and then and there, in the usual course of their business, manufactured and sold metal plates having a center layer of soft iron or steel with exterior layers of cast-steel, for use chiefly in the manufacture of plows and CUltivators, safes, and jail-bars; and the defendants, upon the order of the purchasers, cut these plates to pattern for plow moUld-boards, plow-shares, land-sides, and cultivator shovels, and also into such shapes and patterns for other purposes, as ordered by the purchasers. The blanks or pieces so cut to shape for plows and cultivators they shipped to their customers, manufacturers of plows and cultivators,in a flat, unbent, unpolished,and unhardened state. a. B. Whipple Gehr, and George W. Acklin, for W. Bakewell Bona, for defendants. I
ACHESON, Circuit Judge. Waiving the question whether the plaintiff'l! application of soft center steel, amaterial confessedly old, to the manU':' facture of plows and cultivators involved anything more than the exer.:. cise of good mechanical j\.ldgment, and assuming that his specification . disclosed a patentable invention, we proceed at once to the question of infringement. And here we have first to notice that the claim of the patent is so awkwardly expressed as to give rise' to controversy whether it is for the method of making plows and cultivators out of the described material, or for the product or manufacture made in the defined manner. The plaintiff takes the latter view, and We adopt it as the better opinion. . But what, as new articles of manufacture, does the claim cover? The plaintiff contends that it embraces the flat pieces of metal plate cut to pattern by the steel manufacturer upon the order of the purmere blanks out of which the mould-boards and plow-shares and the cultivator teeth are made by the person ordering the material. But assuredly these blanks are not in terms within the claim, which, as we have seen, is in these words: "The improvement herein described in the manufacture of plows and cultivators; that is to say, the making of them of metal plates, having a cl'l1trid layer of soft iron or steel, with exterior layers of cast.steel, SUbstantially as and for the purposes described."
According to the letter of the claim, the pronoun "them" plainly lates to the "plows and cultivators" previously mentioned. But, if we look beyond the claim itself, into the specification, we find nothing therein to countenance the broad construction upon which the plaintiff insists. The method 'of cutting the steel plates in prior use into pieces of proper size and form to make the mould-boards, plow-shares, and cultivator teeth is described as old, as is also the after-treatment of these pieces, namely, the shaping, tempering, grinding, and polishing thereof. It is shown that the difficulty sought to be overcome did not arise until after the blank pieces had been bent and. formed into mould-boards, plow-shares, and cultivator teeth; that it is in the still later process of ,.
458
J'EDERALl.UlPORTER,
tempering or these for.Q:led parts that the difficulty existed. these· Qompletely from warping during the processof temperilJgor hardening i,s.the very esse,nce of the described invention. The SfpecifiQation declares that 'fthe invention consists in constructing the mould-boards and shares of metal plates, having a central layer' oOron," etc. And again :u,By having the. steel on both sides of the iron, ,the mould-boards and shares. after being bent to the required formtdlan be tempered withont warping or changing their form." By reading of the specip9ation can the invention be held to exiatin the bare metal blanks cut from the admitte¢lly old soft center steeL plates. Again: we ha"e in his second application, which became :merged. in his ,third One, the plaintiff addressed the commismade of steel, sioner of patents thus: "My claim is for a, withlS,ron,center. I. ido notclahn. the. method of the steel. * * * It is the result only-themould-board-I cla.im; and, if necessary, I would disclaim expressly everything except that." Then he intentionally and l1ery· and abandoned his claim for theblllnk!! for making·,cultivatorteeth. T,he restricted claim. as finally formuIllteq by the plaiptiffandallowed by the, office, after repeated rejectionsof broader claim!!, is stri,ctly 1;>inding.upon the plaintiff, and he is pnwluded frominsistingupon", construction ",hichwould so broaden the claim as to take in, the mere flat metal blanks in their rough state. .·Lock Co., ,114 .l)., S. 63, 5 Stlp·. Ct. 1021; Shepard v. (hrrigat'l,l.16 U. S. Ct. Rep. 493. . . But the plaintiff furtPercontends that, iftpe patented .invention was notembodiE!d in the me411 so as.to cqnstitute a direct infringement QHheclaim of tpepatent, still the defenill,mts are liable, by reason of thE!ircontributory /tct inqutting the blanks, asjoint infringers with tbemanufacturers, who in making plows II;lld cultivators; and to sustain this position Wallace v. Jlolm68,.5 Fish. Pat. Cas. 37, is ,cited. But between that case and the one in hand there is no real analogy. In Wallace v. Holme8 the defendants made and sold the completed burner, which contained the distinguishing feature of the invention,and which was entirely useless without the lamp chimney; so that, as the court said, every sale of a finished burner was a proposal to the purchaser to supply the chimney, and every purchase was a consent that this should be done. Moreover, the acts of the defendants there were clearly indicative of the jntention to infringe, and actual concert with others to do so was a certain inference from the proofs. The case here is rather within of the case of Keystone Bridge Co. v. Pham:izlrlm Co., 5 Fish. Pat. Cas. 468, where, the patent being limited to the use:of the <,lesc1;ibed chorlljJin bridge strllctures, it was held by Judge lawfully make the chords, and Werj;l not;responsi1;>lefor thE! infringing act of: the bridge builders in using'thelill,'Now, right to mltnufacture s,oft center steel plates was o:pento.everybody,.and the mere cutting them, according1;()order,.intoconvelilient patterns or shapes, tosp.it the purposes of the. pIQw-:ll1.l1keJ' ormaQU{acturer of the cultivat.ors,. was no encroach-
SCOTT V. FRASEk.
459
ment upon the exclusive: rights Of the plaintiff. The defendants were not bound to inquire whether or not the purchasers from them were licensed by the plaintiff to use the invention; and, having done no wrong themselves, they are not answerable for the unlawful acts of others. In the facts of this case we discover no ground whatever for imputing infringement to the defendants. And nmv, February 11,1892, upon the facts found, the court finds in favor of the defendants.
SCOTT v.
FRASER.
(Circuit Court, D. Massachusetts. February 28, 1899.) P.&.TBl'M'! J'OB INVBNTlONS-PRIOR AaT-INFRINGBMBNT-WHIP-SocxBT CLA8PL
Letters patent No. 166,724 issued August 17,1875, to Erastus W. Scott, for an lmprovement in clasps for hollUngwhip-socketsto the dasbers of carriages, consist mainly "of a metallic band or screw-nut orfelDale screw in the band, a «:lampscrew, and a saddle provided witb an eye to receive the band. It HeM, tbat in view of tbe prior state of tbe art; and fact tbat all tbe elements of tbe combination are old, tbe patent must be strictly limited. to arrangement described, aud it fa not infringed by letters patent No. 428,679, iBBued Marcb 18, 18llO, to Daniel Fraser.
In Equity. Suit by Erastus W. Scott against Daniel Fraser for.infringement of patent. Bill dismissed. A. G. N. Vermilya, fo.r complainant. J. E. Abbott and E. p. Stocking, for defendant. WEBB, District Judge. This is a .suit for infringement of tetters patent No. 166,724, granted to the complainant for an improveruent in whip-socket clasps;dated August 17, 1875. The defense is denial of infrinKement, and of the validity of the patent. Complainant's'specification sets out: "Tht'clllsp in question ts to encompass a whip-socket firmly, and hol.d it in connection with the dasht'r of a carriage; and it mainly consists or is composed of a metallic band or scrl'W-nnt or female screw in the band, aclamu-' scrf'W, ·lind a saddle provided with an eye to receive the band, all as hereafter
-and continues with a description of the several parts. They are: A saddle, or seat, made concave on both its faces, to conform in a general way to the convexity of the socket and of the dash-rail, which are to rest upon it, cut out in the center,so that itbea:rs only on the edges; at one end! of the saddle is a loop or eye, by which a strap passing through it is constricted, and kept closer to the Whip-socket and rail, which are of different diameters; a flexible metallic strap. long enough to extend round both socket and dash-rail, with se-veral holes at one end, to adapt the length to ditl'erent sizes, and in the other end a: single hole, to allow the passage oCa; Screw, and' lips to be bentinandgrnsp the edges of a nutj a nut and a screwj-all which are shown in the drawings. For use.