Adrian Wire Fence Co. v. United Fence Co.

• Decision Date: 04 May 1915
• Docket Number: 2530.
• Citation: 223 F. 342
• Parties: ADRIAN WIRE FENCE CO. v. UNITED FENCE CO.
• Court: U.S. Court of Appeals — Sixth Circuit

223 F. 342

ADRIAN WIRE FENCE CO. v. UNITED FENCE CO.

No. 2530.

United States Court of Appeals, Sixth Circuit.

May 4, 1915

Edward Rector, of Chicago, Ill., for appellant.

Walter H. Chamberlin, of Chicago, Ill., for appellee.

Before WARRINGTON, KNAPPEN, and DENISON, Circuit Judges.

WARRINGTON Circuit Judge.

This was a suit to enjoin alleged infringements of three patents and to recover the usual profits and damages. One of the patents was issued January 29, 1895, to Eugene L. Williams and John S. Williams jointly, and numbered 533,403; later through mesne assignments, the patent was transferred to the plaintiff; and the invention claimed is for an improvement in 'ties for wire structures.' The second patent was issued March 22, 1904, to George Sylvester Tiffany, assignor by mesne assignments, to the plaintiff, and numbered 755,187 the invention is in terms claimed to be an improvement in 'dies.' The third is alleged to have been issued to George S. Tiffany, assignor to the plaintiff, and numbered 774,210; and counsel for plaintiff dismissed the bill as to this patent, calling it the 'Tiffany tie patent.' The answer is in effect a denial of invention in or infringement of either of the two patents first mentioned. The court found that the first patent was not infringed, without passing upon its validity, and held that the second patent is invalid.

1. The Williams Patent. The prominent feature of this device is a wire tie designed to fasten the intersections of cross-wires. According to the claim in issue, one of the wires is bowed to receive the other at the intersecting points; while the specification and drawings show both wires are so bowed at these points. The use of the tie is not limited to any specified wire structure, but is extended generally to 'wire structures.' The infringement charged in the instant suit, however, concerns wire fencing; and the evidence, for the most part, relates to structures of that kind. The fences, as constructed under authority of plaintiff, consist of horizontal or strand wires and vertical stay wires, and both are oppositely bowed at the intersections and there fastened with this form of tie. The tie is made of a staple. The loop (or bend) of the staple engages the vertical wire horizontally at the upper end of its bow, with the legs passing over and engaging the strand wire at both ends of its bow, and the points turning to and bending in opposite directions partially around the vertical wire at the lower end of its bow. The tie so made is circular in form, having two bearings on one side of the vertical wire and two on the opposite side of the strand wire. The combination described in the specification and illustrated by drawings, is covered by two claims; both claims are in issue under the pleadings, but in the evidence and arguments only the first one is, and it is set out in the margin. ^[1] The staples used in making the ties and their relation to the cross-wires will be better understood by the drawings:

(Image Omitted)

The defense of previous invention is set up in the answer; and in view of the patents there referred to, it is urged that want of patentable novelty in the Williams patent plainly appears. It is therefore necessary to look into the prior art. Cross-wires with crimps or bows at their intersections appear in a number of patents earlier than the one in suit. For instance, Figs. 2 and 3 of Caldwell's patent upon wire fences (October 25, 1887, No. 372,060), show cross-wires with intersecting bows, which are the same as those of Figs. 4, 5 and 6 of the patent in suit; this is not apparent in Figs. 4 and 5, but the specification states that the bows of these wires are the same as those in Fig. 6. Both Leggett and Staples, the one in his patent spring bed bottom (August 19, 1890, No. 434,794), and the other in his patent spring support for upholstery (September 20, 1892, No. 482,908), show cross-wires with intersecting bows. Jones, in his patent on wire fences (November 1, 1887, No. 372,625), displays cross-wires with the strands bowed at the intersections; and Mitchell, in his patent on such fences (April 16, 1889, No. 401,450), illustrates his device by uprights which are bent to fit the strand wires at the points of crossing; while Hayden, in his patent on a wire-fastening device for metallic fence posts (April 20, 1886, No. 340,311), discloses bows in strand wires at his post fastenings.

It hardly need be said that the staples used by Williams differ in no material respect from the ordinary and well known commercial staple. It is true, as the specification states, 'the members of the staple are carried out of alignment with each other' (Fig. 2), so that when viewed in side elevation the contour of an inverted V appears (Fig. 3); yet it is urged that one of the advantages of the tie is that the commercial staple may be conveniently used in making it.

Caldwell used a 'clasp or staple' to fasten the vertical and horizontal wires at their intersecting points. It is stated in his specification:

'The method of uniting the longitudinal and vertical wires at their intersections (is) by means of a clasp or staple bent around the crimped portion of each wire.'

The clasp or staple was used by placing its bend diagonally across the bow of the strand wire and turning its ends in opposite directions around the vertical wire at the extremities of its bow. Thus, virtually the same kind of instruments (staples) were designed in the Caldwell patent and in the Williams patent, to fasten the intersections of the same sort of bowed wires, vertical and horizontal.

The Depew patent upon wire fencing (April 11, 1893, No. 495,029) described a 'clip that is normally provided with a re-entrant looped bend and elongated parallel legs' (practically a staple partially adapted for ultimate use), as 'a connecting clamp or tie' at the intersections of the cross-wires (Fig. 3). The bend of the clip was placed about the vertical wire immediately above the strand, with the curves of the legs engaging the strand and the ends projecting on both sides of the vertical wire where they were twisted together. And Mitchell used a wire clamp to effect his tie. This clamp was a staple, with the ends of its legs bent into hooks. The bend of the clamp engaged the iron upright, resting on the shoulder at the upper extremity of the bow, and the hooks held the strand wire (Fig. 3). This is called by one of the experts a 'suspension' tie, but its form would not seem to prevent clasping the cross-wires firmly.

In Biggs' patent upon pliers for building wire fences (January 2, 1894, No. 511,991), a staple is shown (Fig. 3), with its legs turned about midway of their length at right angles and in parallel lines. The bend of the staple was placed about the vertical wire, resting on the strand, and its projecting ends were turned around the strand (Fig. 2).

In the light of the earlier patents, and all of them have not been mentioned, we are of opinion that the Williams device is lacking in patentable invention. The elements of the combination and the result attained by it were old; and upon comparison of the means of attainment here with the old methods, we find no change indicating anything more than mechanical skill. The most that can be said of the means now in issue is that the staple is disposed about the intersection of the cross-wires in a manner differing in some respects from that shown by the earlier patents. It is remarkable that the basic contrivance used for making these various ties, and all for the same object, should have been the staple. True, a number of the earlier patents show the staple partially changed into the final form desired (though without destroying its identity as a staple), while Williams displays the staple in its primary as well as its changed form; and still in the Williams tie the teaching of the prior art is none the less apparent. In view, then, of the purpose common to all these patents, it cannot signify how the patentees placed the staples about the cross-wires at their junctions, whether, for example, in the manner shown by Caldwell or Depew, or by Williams; for such differences could only vary the application of the tying device or possibly add to the efficiency of the intersection. It results that the combination in issue was at best simply an extension of the original idea, a change in form, an improvement in degree; in short, an old production wrought in an old way-- since it was without material change in means. This is not invention. It is but another instance calling for the application of the principle reannounced by Mr. Justice Shiras in Market Street Railway Co. v. Rowley, 155 U.S. 621, 629, 15 Sup.Ct. 224, 228 (39 L.Ed. 284).

'The case is obviously within the principle, so often declared, that a mere carrying forward of the original thought, a change only in form, proportions, or degree, doing the same thing in the same way, by substantially the same means, with better results, is not such an invention as will sustain a patent. Roberts v. Ryer, 91 U.S. 150 (23 L.Ed. 267); Belden Manufacturing Co. v. Challenge Corn Planter Co., 152 U.S. 100 (14 Sup.Ct. 492, 38 L.Ed. 370).'

See Smith v. Nichols, 21 Wall. 112, 118, 22 L.Ed. 566; Burt v. Evory, 133 U.S. 349, 358, 10 Sup.Ct. 394, 33 L.Ed. 647; Grant v. Walter, 148 U.S. 547, 553, 13 Sup.Ct. 699, 37 L.Ed. 552; Galvin v. City of Grand Rapids, 115 F. 511, 517, 53 C.C.A. 165 (C.C.A. 6th Cir.); Soehner v. Favorite Stove & Range Co., 84 F 182, 187, 28 C.C.A. 317 (C.C.A. 6th Cir.); Torrey v. Hancock, 184 F. 61, 70, 107 C.C.A. 79 (C.C.A. 8th Cir.); and see Lane v. Welds, 99 F. 286, 290, 291, 39 C.C.A. 528 (C.C.A. 6th Cir.); Brown Hoisting & Conveying Mach. Co. v. King Bridge Co., 107 F. 498, 504, 46 C.C.A. 432 ...