Ide v. Trorlicht, Duncker & Renard Carpet Co.

• Decision Date: 21 April 1902
• Docket Number: 1,646.
• Citation: 115 F. 137
• Parties: IDE et al. v. TRORLICHT, DUNCKER & RENARD CARPET CO. et al.
• Court: U.S. Court of Appeals — Eighth Circuit

115 F. 137

IDE et al. v. TRORLICHT, DUNCKER & RENARD CARPET CO. et al.

No. 1,646.

United States Court of Appeals, Eighth Circuit.

April 21, 1902

Syllabus by the Court.

A new combination of old elements, whereby an old result is attained in a more facile, economical, and efficient way, may be protected by a patent.

Where the advance toward perfection in an art consists of many intermediate steps, and several inventors form different combinations or improvements which score decided advances in the art and accomplish the desired result with varying degrees of success, each is entitled to his own combination so long as it differs from those of his competitors, and does not include theirs.

Clear evidence of an intention to dedicate an improvement to the public is indispensable to establish an abandonment under the patent law.

Where each of several applications of the same inventor which subsequently ripen into patents describes the entire machine and the inventions claimed in all the applications, but no one of the applications claims any invention claimed in any of the others, and they are all pending at the same time, the respective dates of the patents and of the filings of the applications therefor are immaterial, and the applications and patents cannot be used to anticipate each other.

A patentee dedicates to the public every combination and improvement apparent on the face of his specification which he does not point out and distinctly claim as his discovery or invention.

The insertion, in a reissued patent, of claims for inventions which were described, but which the patentee neither claimed nor intended to claim or to protect by the original patent is unauthorized by the acts of congress, and such claims are void.

Claims 3 and 4 of letters patent No. 397,293 are valid. Claims 3, 4 and 5 of reissued patent No. 11,730 are void.

Under ordinary circumstances a suit in equity will not be stayed before, and will be stayed after, the time fixed by the analogous statute of limitations at law. But if unusual conditions or extraordinary circumstances make it inequitable to allow the prosecution after a briefer, or to forbid its maintenance after a longer, period than that fixed by the statute, the chancellor will not be bound by it but will determine the extraordinary case in accordance with the equities which condition it.

Mere delay in bringing a suit for infringement, unaccompanied by such deceitful acts or silence of the patentee, and by such circumstances, as amount to an equitable estoppel, will not warrant the application of the doctrine of laches to such a suit within the time fixed by statute for the commencement of the analogous action at law.

Mere changes in the form of a device, or of some of the mechanical elements of a combination, will not avoid infringement, where the principle or mode of operation of the invention is adopted, except in those rare cases in which the form of the improvement or of the element changed is the distinguishing characteristic of the invention.

Where a suit for infringement is brought upon several patented claims, and the complainants succeed in obtaining relief upon some of the claims, but fail upon others, an equitable division of the costs should be made between the parties because the defendants are not justly liable for the cost of litigating the claims upon which the complainants were entitled to no relief.

This is an appeal from a decree which dismissed a bill for the infringement of claims 3, 4, and 5 of reissued letters patent No. 11,730, and claims 3 and 4 of letters patent No. 397,293. The former patent was for combinations of devices for the automatic oiling of certain stationary bearings of a horizontal engine, and the latter was for novel combinations of mechanical elements for the automatic lubrication of the bearing of the crosshead wristpin of such an engine. Letters patent No. 397,293 were issued to Albert L. Ide on February 5, 1889. On April 2, 1889, letters patent No. 400,682, the original of the reissued letters patent, were issued to Albert L. Ide for a lubricating device for steam engines. This patent contained three claims. Ide brought suit upon it for an infringement of the second and third claims. He failed because the circuit court of appeals of the Seventh circuit held that the combination described in the second claim was destitute of novelty, and that the third claim was so ambiguous that it was unintelligible. Chuse v. Ide, 89 F. 491, 496, 32 C.C.A. 260, 265. Thereupon the executors of the will of the patentee applied for, and obtained, the reissued letters patent No. 11,730, upon which this suit is based. This patent contains the three claims of the original patent and two more. Its second claim is the same as the second claim of the original patent. Its third claim describes the combination which Ide undoubtedly intended, but failed to describe in the third claim of the original patent and the fourth and fifth claims of the reissued patent cover combinations that were neither claimed nor intended to be claimed by Ide when he procured his original patent. The second claim was adjudged void for lack of novelty and invention in Chuse v. Ide, Supra. Its terms and legal effect are so similar to those of the third claim, which is here in suit, that it is set forth below with the claims which are to be considered, although the complainants seek no relief for its infringement in this case. The second, third, fourth, and fifth claims of the reissued patent are:

'(2) The combination, with a crank shaft and a crank disk, of an oil tank or basin beneath the disk, the side walls of which rise to a point above the lower edge of the disk, a housing or casing provided with an oil-receiving surface arranged in the same plane with the disk, a trough located within the housing in position to receive from the said oil-receiving surface fluid lubricant cast thereupon by the crank disk, a pipe leading from said trough to a bearing to be lubricated, and a valve in said passage, substantially as described.

'(3) The combination, with an engine crank shaft, a crank disk thereon, an oil tank or basin beneath the disk, a housing provided with an oil-receiving surface, and a bearing for the shaft provided with an oil cup or receptacle, a trough or receptacle located in position to receive from the surface of the housing lubricant cast upon the same by the disk, of a pipe communicating with said trough or receptacle and discharging into the oil cup upon the bearing, said oil cup being provided with an overflow pipe or passage leading into the housing, substantially as described.

'(4) In a self-lubricating steam engine, the combination with an engine crank shaft of a crank disk thereon, an oil tank or basin beneath the disk, a housing provided with an oil-receiving surface, a bearing for the shaft provided with an oil cup or receptacle, a trough or receptacle located in position to receive from the surface of the housing lubricant cast upon the same by the disk, a pipe or passage communicating with said trough or receptacle and discharging into the oil cup upon the bearing, said oil cup being provided with an overflow pipe or passage leading into the housing; an inclosed or tubular portion communicating with the housing and extending horizontally therefrom, a horizontally traveling crosshead located within the horizontal tubular or inclosed portion, and a connecting rod uniting the crank disk and crosshead, said disk serving to cast oil from the tank or basin beneath the disk into the said tubular or inclosed portion to lubricate working parts of the engine within said tubular or inclosed portion, a passage being provided for returning the oil from the tubular or inclosed portion to the basin beneath the disk, substantially as described.

'(5) In the self-lubricating steam engine, the combination with an engine crank shaft of a crank disk thereon, an oil tank or basin beneath the disk, a housing provided with an oil-receiving surface, a bearing for the shaft provided with an oil cup or receptacle, a trough or receptacle located in position to receive from the surface of the housing lubricant cast upon the same by the disk, a pipe or passage communicating with said trough or receptacle and discharging into the oil cup upon the bearing, said oil cup being provided with an overflow pipe or passage leading into the housing, an inclosed or tubular portion communicating with the housing and extending horizontally therefrom, a horizontally traveling crosshead located within the horizontal tubular or inclosed portion, a wrist pin carried by the crosshead, and a connecting rod uniting the crank disk with the wrist pin, said disk serving to cast oil from the tank or basin beneath the disk into the said tubular or inclosed portion, to lubricate working parts of the engine within said tubular or inclosed portion, a passage being provided in the crosshead for conveying oil cast into the interior of the said tubular portion to the wrist pin, a second passage being provided for returning the oil from the tubular or inclosed portion to the basin beneath the disk, substantially as described.'

The third and fourth claims of letters patent No. 397,293 read in this way:

'(3) The combination, with an engine crank shaft, a crank disk connecting rod, and crosshead, of a casing or housing surrounding the disk, connecting rod, and crosshead, and having an oil tank or basin beneath the disk, a wrist pin in the crosshead engaged with the connecting rod, and an oil cup upon the said connecting rod communicating with the bearing surface of the wrist pin, said oil cup being located in position to receive the lubricant thrown upon the surface of the crosshead by the crank...