Opinion
No. 46.
January 7, 1929.
Appeal from the District Court of the United States for the Southern District of New York.
Suit by R. Hoe Company, Incorporated, and another, against the Goss Printing Press Company. From a decree of dismissal, plaintiffs appeal. Reversed and remanded, with instructions.
Appeal from a decree of the District Court for the Southern District of New York, dismissing for noninfringement a bill in equity upon patent No. 1,117,980, issued on November 24, 1914, to R. Hoe Co., as assignee of A.H. Cruse. The claims now in suit are Nos. 1 to 6 inclusive, 11, and 24 to 31 inclusive.
The patented invention was for improvements in molds for casting stereotype plates. These molds are in two parts, a fixed semi-cylindrical upright member, the "cope," and a movable convex member, the "drag," which carries the matrix for the stereotype plate. The two members are brought together, so as to leave a space between them, which forms the mold into which the molten metal is poured to found the plate. After founding, it becomes necessary to move away the "drag," now carrying the plate, to a horizontal position, when it can be removed. Upon the face of the "cope" are horizontal grooves, which form ridges on the concave side of the plate, important in fitting it upon the press; these make necessary a short horizontal approach and withdrawal of the "drag" while parallel to the "cope." The "drag" is a heavy piece of metal, some 400 pounds or more in weight, which in the earlier art had to be moved into and out of position by the sheer lift of the workmen. In earlier efforts to avoid this, it had been provided with a counterweight (e.g., Stonemetz, 442,341), or had been hinged at a point near its center (Brooks, 351,040). Cruse improved upon these by mounting the "drag" upon two pairs of wheels or rollers, one pair at its lower end, and the other near its top, all four wheels outside its circumference. Each pair of wheels ran upon a pair of parallel tracks, which thus embraced the "drag" throughout its movement. The tracks for the upper set of wheels were nearly horizontal, descending, however, as they left the "cope," so that their outer ends were substantially lower than their inner. The other tracks rose sharply as they left the "cope," so that, although the inner ends were at its bottom, the outer were at the same level as the outer ends of the upper tracks.
The "drag," when horizontal and in its removed position, was therefore supported on the outer ends of each pair of tracks, and it was held in that position by a pair of pivoted hooks, which embraced the lower pair of wheels on either side. The patent declared that the wheels should be so disposed as in all positions in its course to maintain the "drag" in balance, so that a slight impress should be enough to start it from the horizontal and carry it forward by its own momentum. The upper pair of wheels sliding on their tracks raised the upper end, and the lower pair, quickly descending, dropped the lower end; by a combined sliding and swinging movement, the "drag" as a whole was brought into parallel with the "cope," though a short distance away, too far to make a proper mold. The final approach was a horizontal movement, which the ends of the lower tracks permitted by turning sharply to the horizontal; for a few inches both pairs of wheels rolled upon level tracks. The "drag" was moved through this distance and locked into engagement, by means of two pairs of locking members of the "cope," which engaged four studs or pins at the edges of the "drag." These locking members contained camming slots, so constructed that, as the pins engaged the lower sides of the slots, the locking members would rotate and force the "drag" into close connection, which could be further secured by a hand lever connected with the locking members by two shafts in journals, the shafts being in turn connected by a link. After the plate was founded, the same members forced the "drag" away from the "cope" through the same horizontal distance to the position where inversion could begin.
Of the fifteen claims now relied on, it is enough to set forth Nos. 3, 6, and 26.
"3. In a casting box, the combination with a part maintained in a substantially vertical position, of a movable part disconnected therefrom, and means for supporting and guiding said movable part so that it may be given a simultaneous sliding and swinging movement whereby it is caused to approach the upright part and to turn from a substantially horizontal to a substantially vertical position, said means being constructed and arranged so that the movable part is balanced in any position thereof, substantially as described."
"6. In a casting box, the combination with a part maintained in a substantially vertical position, of a movable part disconnected therefrom, means for supporting and guiding said movable part so that it may be given a simultaneous sliding and swinging movement whereby it is caused to approach the vertical part and to turn from a substantially horizontal to a substantially vertical position, said means being constructed and arranged so that the movable part is balanced for any position thereof, and devices for closing, opening and locking the part in its closed position, the movable part being brought within the range of action of said devices by the sliding and swinging movement, substantially as described."
"26. In a casting box, the combination with a part maintained in a substantially vertical position, of a movable part having suitable supporting means, a guide with which said means co-operate and along which the movable part is arranged to slide and upon which it turns from a substantially vertical to a substantially horizontal position, and means brought into operation after the movable part has reached its vertical position for moving it toward the vertical part and for moving it away from said part after pouring, substantially as described."
The defendant's casting box was in substance like the plaintiff's, except that one pair of wheels upon the "drag" and the tracks upon which they rolled were eliminated, and in their place was substituted a toggle joint. The end of one link of the toggle was fastened to the frame, and the end of the other to the base of the "drag" at a point in line with the remaining wheels. The track for the wheels was horizontal throughout its length, and, as the "drag" was pushed towards the "cope," the toggle inverted its upper end until at the finish it was vertical and parallel with the "cope." A locking mechanism similar to the plaintiff's effected at once the final horizontal approach, clamped the two members closely together, and withdrew the "drag" after the plate had been founded. The "drag" was not always in balance throughout its course; after an initial movement from the vertical, it was so hung that it would continue to the horizontal by the force of gravity. But it was nearly enough in balance as to require only a small force to move it forward to the "cope."
Cruse devised his "drag" in July, 1902, and embodied it in a drawing in September of that year. He added the clamping mechanism some time in 1903, and filed his application on January 6, 1904. On July 3, 1901, one W. Scott filed an application for patent upon a similar mold, which issued on September 19, 1905. In this the "drag" was mounted upon a rocker, balanced so that a slight force was alone enough to move it, but, like the defendant's "drag," in absolute balance only over a small part of its course. The path of its transit was the same as Cruse's, but it did not slide upon tracks, except at the very end; the final horizontal approach and locking of the two members being effected by the oversetting of a toggle pushing it from behind. The disclosure also presupposed that the whole movement was to be actuated by the toggle, although this was necessary only at the finish, because, being nearly balanced, the "drag" could be moved easily by hand through the whole of its rocking arc. Scott sold a machine to the New York Times in May, 1901, and two more in December. Between 200 and 300 have been sold since that time, against nearly 1,200 of Cruse's.
The method for advancing and withdrawing a platen to and from a bed, by means of two pairs of inclined tracks and a double set of wheels, was very old. In 1870 Gally, a prolific inventor in the printing art, disclosed it as applied to a printing platen advancing towards, and retreating from, its bed, and declared that the platen carrier was "perfectly balanced" throughout its movement. The experts disagreed about the truth of this last assertion, as well as about whether the movement of the carrier was merely "rocking," or whether it had the "sliding and swinging" motion of Cruse's "drag." Again, it was old to provide clamping means fastened on the "cope" to draw in the "drag" horizontally and clamp it fast to make a mold. Stonemetz disclosed such a detail in 1890, and Scott in 1897. The first was an almost exact replica of the defendant's means, except that it had no camming slots, and did not, therefore, move away the "drag" after the plate was founded. In the art of molding ingots, Reese in 1885 had disclosed somewhat similar devices.
The District Judge held that the defendant's device did not infringe. As to claims 1, 3, 5, and 6, he found that the "cope" and "drag" were not disconnected; as to all the claims, that they must be limited to the disclosure to avoid Scott's 1905 patent already described.
James J. Kennedy and Philip B. Philipp, both of New York City, for appellants.
John D. Morgan and Alan M. Johnson, both of New York City, for appellee.
Before MANTON, L. HAND, and AUGUSTUS N. HAND, Circuit Judges.
The claims in suit are for combinations of four main elements: The sliding swing; the balance; the locking means to draw on and secure the "drag"; the same means to push it away. Of these the most important is the first. Viewed merely as movement, Cruse discovered nothing new; his "drag" occupies the same series of positions in its course as Scott's; the whole body is translated substantially horizontally at the same time that it rotates on its own axis. It is a matter of small moment if in either case the center of gravity does not move in a strictly horizontal line. However this may effect the balance, the path of movement of each is too closely alike to be distinguished.
However, it seems to us that the phrase in the claims should be read to describe the means by which the movement is effected rather than the movement itself, and, if so, Cruse devised something new, as obviously he did. In this aspect the defendant's efforts to assimilate Scott's rocking movement to Cruse's miscarry, for it is plainly one thing to rock a box rigidly fastened to two wheels, which roll on tracks, and another to slide it upon tracks, eliminating the friction by means of wheels. Nothing turns upon the detail that these wheels rotate on axles fastened to the "drag"; the wheels might equally well have been roller bearings, unattached, but confined at the sides. If Scott stood alone in the art, we should therefore say that Cruse was a patentable improvement upon it, and that the defendant had taken something from him. But Scott does not stand alone, for we must not ignore Gally. This disclosure, though more than 30 years old in July, 1902, was in a closely allied, if not the identical, art; we cannot regard ordinary printing presses and stereotyping molds as substantially separate. It disclosed, moreover, precisely the same means as Cruse adopted to effect Scott's sliding swing, and it was not discovered during the 10 years that Cruse was in the office.
We do not forget the controversy as to whether Gally's platen carrier merely rocks, or whether it has the same motion as Cruse's "drag." We should hold, if it were necessary so to decide, that it described the same kind of path; that is to say, that the body of the carrier at once moves horizontally, or substantially so, while it rotates upon a point within itself. It may be that each point in it described the arc of a circle; but that, as we conceive it, is irrelevant. The means disclosed were adopted to effect the motion required, and were at hand. Whatever skill was required to change the form of the two converging pairs of tracks, so as to accomplish the necessary result, appears to us not beyond the range of sound mechanical skill.
The more troublesome question is whether the mere combination of Gally with Scott did not require invention, assuming that, once the idea suggested itself, the rest was simple. As is often the case, the notion of uniting two mechanical means may require more originality than its subsequent execution, and in all such cases we are without objective tests. Kirsch v. Mersereau Co., 6 F.2d 793 (C.C.A. 2). The only reliable evidence is from the history of the art. White v. Morton, 20 F.2d 311 (C.C.A. 2): how long it had to wait for the supposed invention, what efforts had been made before, how long the need had existed, how successful was the answer. When all is said, the decision must in the end at times seem arbitrary.
In the case at bar Scott appeared in May, 1901, and was a step far ahead of anything that had theretofore been devised. Cruse made his adaptation within little more than a year, during which no other efforts appear to have been made by others; this does not suggest that the change had proved difficult. Either form answered the purposes of the trade, and, though we assume that the greater sales of Cruse show that he had answered it better, he did no more than substitute an old element used for nearly the same purpose long before, for accomplishing the same result. We do not think that, with means which we are to suppose were always before him, it was invention to appropriate them as he did. Moreover, we are not faced with the presumption of validity in this respect because of the examiner's failure to find Gally as a reference; it is at least open to doubt whether, had Gally been discovered, the claims would have issued.
The other elements are easier to deal with. The balance was not new, in the only sense that that word is of importance. It is true that in Scott's "drag" the center of gravity was not always directly over the radius to which the track was tangent. Theoretically and literally, this put the "drag" as a whole out of balance; but the only important thing was that the member as a whole should be easy to move, and this is apparent from manipulation, quite independently of the declaration in the specifications. The same applies to the defendant's "drag," which is in literal equilibrium through as little of its course as Scott's; and, unless we read the words as requiring a practical equilibrium, the defendant does not incorporate this feature of the claims. Indeed, the actual embodiment of the plaintiff's "drag" is not itself in literal equilibrium throughout its whole course, as manipulation of it discloses.
The locking and clamping devices were also old as such. The claims do not contain their details as elements, except in so far as claim 26 incorporates them indirectly by providing that the devices shall withdraw the "drag" as well as bring it into contact. This last detail, so far as we can find, was a new idea, at least in this application, and, although the improvement is a small one, we see no reason why it should be denied patentability. If the defendant finds it trivial, it will be free to discontinue its use. Nor are we disposed to regard the locking features as a mere aggregation, when added to the others. Whatever that much used, if not abused, term may signify, it is apparent that the camming slots in this apparatus co-operate with the rest by throwing the "drag" away from the "cope" to a position where it may begin its rotation. Therefore we hold valid claim 26 of those now in suit.
Upon the issue of infringement we are not in agreement with the District Judge. While we think the claim is of small compass, the defendant's machine answers every element, both verbally and functionally. Nor do we see the pertinency of the cancellation of claim 15 in the office. We have repeatedly said that we will not look to the file wrapper for estoppels, except in case the patentee tries to expand his claim by omitting an element which leaves it identical with one which he has abandoned. Westinghouse Electric v. Condit Electrical Co. (C.C.A.) 194 F. 427, 430; Auto Pneumatic Co. v. Kindler Collins (C.C.A.) 247 F. 323, 328; Spalding v. Wanamaker (C.C.A.) 256 F. 530, 533, 534.
Decree reversed. Cause remanded, with instructions to enter a decree for the plaintiff on claim 26, to dismiss the bill as to claims 1 to 6, inclusive, 11, 24, 25, and 27 for invalidity, and to dismiss as to claims 28, 29, 30, and 31, on the ground that a decree as to these would be moot, in view of the decree on claim 26.