Smith Griggs Manuf Co v. Sprague

• Decision Date: 14 November 1887
• Citation: 8 S.Ct. 122,123 U.S. 249,31 L.Ed. 141
• Parties: SMITH & GRIGGS MANUF'G CO. v. SPRAGUE, Adm'x, etc. 1
• Court: U.S. Supreme Court

8 S.Ct. 122

123 U.S. 249

31 L.Ed. 141

SMITH & GRIGGS MANUF'G CO. v. SPRAGUE, Adm'x, etc.¹

November 14, 1887.

Geo. E Terry and M. B. Philipp, for appellant.

C. E. Mitchell, for appellee.

MATTHEWS, J.

This is a bill in equity for an injunction and account based upon the alleged infringement by the appellant of letters patent No. 228,136, dated May 25, 1880, and letters patent No. 231,199, dated August 17, 1880, for improvements in machines for making buckle-levers, issued to Leonard A. Sprague, the appellee. The defenses relied on are: (1) A denial of the infringement alleged in respect to the fifth claim of patent No. 228,136, and the first and fourth claims of patent No. 231,199; (2) as to all the other claims of both, that a machine embodying them was in public use for more than two years prior to the application for the patents. The application for patent No. 228,136 was filed on November 11, 1879, while that for patent No. 231,199 was filed December 2, 1878; the two being divisions of an application based on the same model. The machines described in the two patents, it is admitted, are substantially the same in construction and operation, both patents being for different parts and combinations of a single machine. For the purposes of this case, therefore, the date of the application is to be taken as of December 2, 1878, being the earlier of the two.

The machine is for making levers of buckles used almost exclusively on 'arctic' overshoes. These levers are made from a single piece of brass, with slots through them near each end to fasten them to the strap of a shoe, and are bent by formers, and swaged by dies, so that they have what is termed a lip or bead, which bears upon the holding strap, two grooves within which lies the bar or pivot of the buckle, and two beads at the upper edge for a finish, and to prevent the strap from cutting when it is fast through the slots, and bears upon them when in use. There is no claim in these patents for the buckle-lever itself as a new article of manufacture; for which however, Sprague, the appellee, had a prior patent, dated May 27, 1862. The levers are made from a strip of metal by a succession of operations in the patented machine. The first step is to produce the slotted blank; the next, to bend it by doubling it upon itself into a U-shape; the next, to produce the central double bead forming the grooves; and the next, to produce the double beads between the slot and the edge of the lever. The machine is organized to feed a strip of sheet brass under punches which punch the slots in the blank, and then cut it from the strip; to feed this blank over a matrix, where it is bent into U-form; to feed it on to a mandrel, on which, by a pair of dies, it is partially formed, and then along that mandrel to a second pair of dies, where its form is completed. The machine is automatic, and, while these successive steps take place in the complete manufacture of a single lever, all the various steps in the process, with respect to successive levers, take place simultaneously. So that, as each lever is completely and finally formed on the mandrel, it is pushed from the mandrel by another to take its place in that stage of formation.

The first, second, third, fourth, and sixth claims of patent No. 288,136, and the second, third, and fifth claims of patent No. 231,199, are those in respect to which the alleged infringement is admitted, and as to which the defense of two years' prior public use is urged. These claims are as follows:

Of patent No. 228,136: '(1) In combination with the mandrel, M, provided at ITS LOWER EDGE WITH THE RIB, M, AND WITH THE SHORT RIBS, M², M², the dies, n, n', O, O, whereby, after the partially formed lever has been acted upon by dies, N, N', the rib, m, serves as a support or guide over which said lever may be moved to a proper position relative to dies, O, O, substantially as set forth. (2) In a machine for making buckle-levers, the combination of the mandrel, M, the dies, N, N', advanced on planes substantially at right angles to the planes of the partially formed buckle-lever, and the tongue, n², attached to the die, N, substantially as set forth. (3) In a machine for making buckle-levers, the combination with the mandrel, the punch which punches blanks from a continuous sheet of metal, and two or more dies which successively form the metal into the desired shape, of a carrier which moves a blank from the punches to the forming-dies, and advances the partially formed levers against the preceding lever, substantially as set forth. (4) In a machine for making buckle-levers, the combination, with the matrix, L, and folder, l², of the dies, N, N', the mandrel arranged to receive the blank from the matrix, and the carrier, substantially as set forth.' '(6) In a machine for making buckle-levers, the combination, with the folder, l², of the pusher-pin, c³, attached to and moving with the punch-stock, C, and a returning spring, which lifts the folder, substantially as set forth.'

Of patent No. 231,199: '(2) In a machine for making buckle-levers, the combination, with the die which punches blanks from a continuous sheet of metal, of two or more dies which successively form the metal into the desired shape, and a carrier which moves a blank from the punching-die to the forming-dies, and advances the partially formed lever against the preceding lever, substantially as set forth. (3) In a machine for making buckle-levers, the combination, with the mandrel, M, provided with the rib, m, of the dies, N, N', and a stop adapted to engage with the lower end of the lever, and determine the length of the bit, u, substantially as described.' '(5) The herein described method of manufacturing buckle-levers,—that is to say, by bending the blank into U-shape, then forming the bit, u, and seats, u², u³, and subsequently forming the grooves, u⁴, substantially as herein set forth.'

The claims in respect to which infringement is denied are as follows:

*Of patent No. 228,136: '(5) In a machine for making buckle-levers, the combination, with the mandrel, M, and dies, N, N', of the springs, N², N², to press the dies forward into proper position relative to the mandrel, substantially as set forth.'

Of patent No. 231,199: '(1) In a machine for making buckle-levers, the combination of the mandrel, M, provided with the ribs, m, m³, of the dies, N, N', O, O, and a support, which presses the part, u, of the lever against the rib, m, substantially as set forth.' '(4) In a machine for making buckle-levers, the combination, with the mandrel M, having rib, m, of the dies, N, N', and stops adapted to engage both ends of the partially formed lever, to regulate its position relative to the mandrel and dies, substantially as set forth.'

It will be observed that the claims in respect to which the infringement is denied do not embrace the whole invention claimed in the two patents. They cover only certain definite and specific combinations of parts of the mechanism. It is possible, therefore, that a defendant might be guilty of infringement in respect to all the other claims in the two patents, and yet not infringe the three claims specified above. That is to say, he might use a machine which embodied all the combinations except those specified in these three claims. These he might entirely omit without any substitute, or he might have a substitute for them so different as to amount to a separate invention, and therefore not mere equivalents for them. In the examination of the question, therefore, of the prior public use, for two years before the date of the application, of the invention as embodied in those claims in respect to which the infringement is admitted, we assume for the present that the machine used by the defendant is an infringement of that covered by the complainant's patents only so far as it is covered by them, excluding the three claims in respect to which the infringement is denied.

The testimony on the subject of the prior public use by the complainant is that from the fall of 1874 until the fall of 1877, and thus more than two years prior to December 2, 1878, the complainant had in use for the purpose of profit in his business, operated in his factory by his workmen for the production of arctic overshoe buckles, a machine which contained all the elements and combinations covered by the claims in the two patents in respect to which the defendant confesses infringement. This machine was practically successful, in that during the period of its use the complainant produced and sold about 50,000 gross of levers used on these shoe-buckles, which he sold to his customers in the market. It was a public use in the sense of the statute, and within the decisions of this court, inasmuch as it was used by the complainant in the regular conduct of his business, by workmen employed by him in its operation, and in the view of such part of the public as chose to resort to his establishment, either for the purpose of selling material for the manufacture, or of purchasing its product. It is claimed, however, and it was so decided by the circuit court, that this prior use of the machine in that form was not a public use, within the prohibition of the statute, so as to defeat the patent, because that use was experimental only, of an imperfect machine, embodying an incomplete invention, in order to enable the inventor to perfect it by improvements actually added, and to overcome defects developed by this use, which improvements are contained in the three additional claims, and which were added as parts of the invention within two years before the date of the application.

The matters under this head are stated by the learned judge of the circuit court, in his opinion contained in the record, as follows:

'The facts are that from 1862 to 1868 the patentee made another kind of buckle from those produced by this machine upon two or more different machines. Between 1868 and the...