168 F.2d 691 (2nd Cir. 1948), 222, Royal Typewriter Co. v. Remington Rand, Inc.

Docket Nº:222, 20895.
Citation:168 F.2d 691, 77 U.S.P.Q. 517
Case Date:May 21, 1948
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 691

168 F.2d 691 (2nd Cir. 1948)

77 U.S.P.Q. 517




Nos. 222, 20895.

United States Court of Appeals, Second Circuit.

May 21, 1948

William H. Davis, Davis, Hoxie & Faithfull, and George E. Faithfull, all of New York City, for plaintiff-appellee.

Edwin T. Bean, Bean, Brooks, Buckley & Bean and Conrad Christel, all of Buffalo, N.Y., and Rockwell & Bartholow, and Henry E. Rockwell, all of New Haven, Conn., for defendant-appellant.

Before L. HAND, SWAN and CLARK, Circuit Judges.

L. HAND, Circuit Judge.

Judge Smith's opinion in the district court has been published, 1 and states the disclosure in substance and the claims in full. We shall assume a familiarity with it in what we say and confine our discussion to the only issue in dispute- infringement. As a preliminary it is to be observed that the defendant concedes the claims in suit to be valid; a concession we shall accept, although the Supreme Court has said that, when the defendant challenges the validity of claims as well as their infringement, it is better practice to pass on their validity. 2 At first blush it might appear that the situation is the same when validity is conceded, because the reason why we should pass on that question, even though we can dispose of the suit otherwise, is so that invalid claims shall not remain in terrorem of the art. There is however this difficulty in so proceeding,

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when the defendant concedes the validity of the claims. He then puts in no evidence, nor does he seek to defeat them on the patentee's own presentation; and the court has therefore no adequate means to decide the issue. A decision would ordinarily sustain the claims, and would give them only added currency. On the other hand, in those cases in which they were not sustained, the patentee would not have had a fair chance to support them. 3

Coming then to the question of infringement, we are first to interpret the claims in the light of disclosure; and both the claims and the disclosure in the setting of the prior art. In these respects a patent is like any other legal instrument; but it is peculiar in this, that after all aids to interpretation have been exhausted, and the scope of the claims has been enlarged as far as the words can be stretched, on proper occasions courts make them cover more than their meaning will bear. If they applied the law with inexorable rigidity, they would never do this, but would remit the patentee to his remedy of re-issue, and that is exactly what they frequently do. Not always, however, for at times they resort to the 'doctrine of equivalents' to temper unsparing logic and prevent an infringer from stealing the benefit of the invention. No doubt, this is, strictly speaking, an anomaly; but it is one which courts have frankly faced and accepted almost from the beginning. 4 All patents are entitled to its benefit to an extent, measured on the one hand by their contribution to the art, and on the other by the degree to which it is necessary to depart from the meaning to reach a just result.

Although the defendant's 'margin regulator' does not verbally correspond throughout with the claims in suit, we think that the plaintiff has established infringement through the mediation of this doctrine. The disparity to be answered is double: the defendant's 'regulator' has not two 'trip bars' but one; its keys are not 'attached' directly to its single 'trip bar, ' but by a train of connected members, ending at the keyboard. The accepted rubric is that to be an 'equivalent' the infringement must attain 'substantially the same result in substantially the same way'; and the defendant's single 'trip bar' seems to us to fulfill both conditions. Indeed, as to result it is, not only 'substantially, ' but literally, identical, for it trips both 'oscillatory catches' by raising t/e detents from the rack, which is all that the two 'trip bars' do in the disclosure. Furthermore, although it does not do this in precisely the same way, the methods are 'substantially' alike. In the disclosure each 'trip bar' descends when its key is pressed, and impinges upon the end of the 'oscillatory catch' opposite to the detent; in the defendant's 'regulator' the single bar operates upon bell-cranks, pivoted on the catch to which the detents are fastened. When the 'trip-bar' descends, it depresses one of the bell-cranks, which extends away from the detent; and in so doing it operates almost exactly as does one 'trip bar' of the disclosure. When the 'trip bar' ascends, it raises the other bell-crank which extends towards the detent; and raises it as well. This is the only departure in operation, which results from making a single 'trip bar' do the service of two. In our judgment not only is it inconsequential, but the invention merits its allowance. True, Woodfine's was not a...

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