Yancey v. Enright

Decision Date24 February 1916
Docket Number2779.
PartiesYANCEY v. ENRIGHT et al.
CourtU.S. Court of Appeals — Fifth Circuit

Rehearing Denied April 19, 1916.

John Dymond, Jr., and A. Giffen Levy, both of New Orleans, La. (E Lloyd Posey, of New Orleans, La., of counsel), for appellant.

John C Hollingsworth, of New Orleans, La. (Philip H. Mentz, of New Orleans, La., of counsel), for appellees.

Before PARDEE and WALKER, Circuit Judges, and GRUBB, District Judge.

GRUBB District Judge (after stating the facts as above).

The fourth claim of appellant's patent, numbered 919,109 expresses the idea of his invention in these words:

'In seining apparatus, the combination of means for converging and directing upwardly the lead lines of a seine, comprising a plurality of sets of suitably mounted closing and guiding rollers, said sets of rollers being spaced apart to allow of the passage of foreign matter apt to tangle in the web, adjacent to the lead lines.'

The novelty, if it exists, lies in a method of arranging and spacing the rollers, which help close and haul in the seine, which avoids the clogging of the machinery by foreign matter encountered by it, while the lead lines are passing the rollers, during the process of closing and hauling in the seine. Before the use of machines for closing and hauling seines in catching shrimp, the method had been for the fishermen to let the lead line pass under their feet, while they stood on the bed of the water. Aside from objections of discomfort to the fishermen, this method limited the catching of shrimp to waters so shallow as not to exceed the stature of a man. The purpose of closing machines was to overcome such objections and limitations. The appellant's patent 919,109 was not a pioneer in the art of seine fishing. A patent in 1895 in the art had been issued to Hommerberg, two to Lindsay in 1897, and three to the appellant, prior to the issuance of the one in suit, and an application for one had been made by Jackson, also before the issuance of the patent in suit, but abandoned. These constituted the prior art in April, 1909, when the patent, numbered 919,109, was issued to appellant. The aim of all was to avoid the necessity of closing and hauling in the seine by men standing on the bed of the water, and to permit it to be done from the surface of the water by a machine anchored on the bed of the water or supported and attached to the boat. None of the devices covered by any of the prior patents had been successful in practice, and for one and the same reason. In all of them, the free way, for the seine, in its passage, was limited to the diameter of the lead line, and while this was sufficient, in the absence of obstruction from foreign matter, it was found, in practice, that the stoppage of the machine by foreign matter, such as shells, seaweed, and folds of the net, was so frequent as to destroy the utility of the machine. The obstructions could only be removed by a descent to the bed of the water. In this state of the art, the appellant entered with the patented device involved in this litigation. Its aim was to avoid the clogging of the machine, and it accomplished this by providing an unrestricted free way for the passage of the lead line on one side, by having but a single-sided contact for it. The prior art furnished only a restricted free way of the width of the diameter of the lead line, if not expressly, by necessary implication at least, since theretofore the lead line had been kept confined only by contact on both sides of it, and would have become inoperative if the points of contact had been substantially wider apart than the diameter of the line. The appellant's idea, therefore, measured the difference between practical success and failure. The previous devices were proved valueless in practical seining. The appellant's device in suit accomplished the purpose of closing and raising the seine without requiring the fishermen to stand on the bed of the water while it was being done, and, while not perfect, was susceptible of commercial use and was, in fact, so used. We have no difficulty in agreeing with the court below that the appellant's patent numbered 919,109 was a valid one.

It is contended, however, that it was not a pioneer patent and was a combination patent, and for that reason the patentee was not entitled to the benefit of the doctrine of mechanical equivalents, and the appellees, using different means to bring about the same results, with their device, were not chargeable with infringement. It must be conceded that appellant's device, covered by patent numbered 919,109, was not the first in the art of machines for closing seines, and not in that sense a pioneer patent. It was, however, the first practical and successful seining machine used in the shrimp industry, and the first to obviate the fatal defect of the prior art, which consisted in the clogging of the machine by obstructions, while the seine was being closed and raised. It was a pioneer to the extent that it contained the first and vital element of unrestricted free way, which successfully prevented clogging, and first made the machine operative. The appellant is entitled to the benefit of all that is included in the discovery of a machine giving unrestricted free way, and we do not think he should be deprived of this benefit because the successful device is due to a combination of old elements. It is true that the appellant's machine has no new single element. The result is attained by a combination or plurality of rollers, the purpose of which is to coverage the lead lines and direct them upwards to the surface of the water. There is no new element in the rollers, and means of converging and directing the lead line upwards were then old in the art. The former combinations, however, were all handicapped by a restricted free way for the lead line, which in them passed between parallel rollers or their equivalents and were made operative only because of contact therewith on each side, with the inevitable result that all obstructions, while passing through this narrow space, stopped the process the machine was intended to accomplish and rendered it useless. The combination of the appellant, involved in this suit, added the feature, entirely new and unknown in the prior art, that it accomplished by a combination of sets of rollers the converging and upward directing result with a single or one-sided contact, which left an unrestricted free way for the passage of obstructions on the side on which there was no contact, and so permitted the passage of obstructions without clogging the machine. The sets of rollers were so arranged by appellant that the lead line, in converging and ascending, pressed only against the side on which there was contact, and was held in place and operative by this one-sided pressure against the rollers, as points of contact. Is the inventor of such a decided improvement in the art entitled to the protection of the doctrine of mechanical equivalents, though the result is accomplished by a combination of elements, all of which are old, and the patent is a secondary rather than a primary one in the art?

In the case of National Hollow Brakebeam Co. v. Interchangeable Brakebeam Co., 106 F. 693, 45 C.C.A. 544, the Circuit Court of Appeals for the Eighth Circuit said:

'One who invents and secures a patent for a machine or combination, which first performs a useful function, is thereby protected against all machines and combinations which perform the same function by equivalent mechanical devices; but one who merely makes and secures a patent for a slight improvement on an old device or combination, which performs the same function after as before the improvement, is protected against those only who use the very device or improvement he describes or mere colorable evasions thereof. In other words, the term 'mechanical equivalent,' when applied to the interpretation of a pioneer patent, has a broad and generous signification, while its meaning is very narrow and limited when it conditions the construction of a patent for a slight and almost immaterial improvement. Adams Electric R. Co. v. Lindell R. Co., 77 F. 432, 440, 23 C.C.A. 223, 231, 40 U.S.App. 482, 498; Stirrat v. Manufacturing Co., 61 F. 980, 981, 10 C.C.A. 216, 217, 27 U.S.App. 13, 42; McCormick v. Talcott, 20 How. 402, 405, 15 L.Ed. 930; Railway Co. v. Sayles, 97 U.S. 554, 556, 24 L.Ed. 1053; Brill v. Car Co., 90 F. 666, 33 C.C.A. 313, 62 U.S.App. 276.
'But the great majority of patents falls between these two extremes. They are neither for pioneer inventions nor for improvements so slight as to be almost immaterial. While they do not evidence the first or the last step in the progress of the art to which they relate, they often mark signal advances and protect useful improvements. The doctrine of mechanical equivalents conditions the construction of all these patents, and in determining questions concerning them the breadth of the signification of the term is proportioned in each case to the character of the advance or invention evidenced by the patent under consideration, and is so interpreted by the courts as to protect the inventor against piracy and the public against unauthorized
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