Fox Typewriter Co. v. Corona Typewriter Co.

• Citation: 282 F. 502
• Decision Date: 07 February 1922
• Docket Number: 3509,3528.
• Parties: FOX TYPEWRITER CO. v. CORONA TYPEWRITER CO. CORONA TYPEWRITER CO. v. FOX TYPEWRITER CO.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

282 F. 502

FOX TYPEWRITER CO. v. CORONA TYPEWRITER CO.

CORONA TYPEWRITER CO. v. FOX TYPEWRITER CO.

Nos. 3509, 3528.

United States Court of Appeals, Sixth Circuit.

February 7, 1922

On application for Rehearing, June 28, 1922.

On Application for Rehearing. [Copyrighted Material Omitted]

Theodore S. Kenyon and Alan D. Kenyon, both of New York City (William R. Davis, of New York City, on the brief), for Corona Typewriter Co.

Fred Chappell, of Kalamazoo, Mich. (Chappell & Earl, of Kalamazoo Mich., and George Clapperton, of Grand Rapids, Mich., on the brief), for Fox Typewriter Co.

Before KNAPPEN, DENISON, and DONAHUE, Circuit Judges.

DENISON Circuit Judge.

This was the usual infringement suit, brought in the court below by the Corona Company against the Fox Company, based upon 8 different patents for typewriters, combining the standard keyboard and type-bar construction, with the capacity for folding into small space, so as to be easily packed and carried. Under the 8 patents, 46 claims were specified and relied upon. Of these 27 were held valid and infringed; 12 valid, but not infringed; and 7 invalid. Both parties appealed, affecting 7 patents and 35 claims. The patents now involved are the following:

Rose, reissue 13,934, filed May 22, 1915, issued June 22, 1915, upon original 754,242, filed February 11, 1903, issued March 8, 1904; Rose, reissue 13,935, filed May 22, 1915, issued June 22, 1915, original 948,553, filed April 18, 1905, issued February 18, 1910; Hazen, 1,121,094, filed June 23, 1908, issued December 15, 1914; Hazen, 1,121,097, filed June 3, 1909, issued December 15, 1914 (upon a divisional application under last-named patent); Petermann, 1,064,372, filed April 3, 1911, issued June 10, 1913; Petermann, reissue 14,599, filed December 1, 1916, issued February 25, 1919, upon original 1,121,034, filed September 15, 1910, issued December 15, 1914; Latta, reissue 14,495, filed May 24, 1918, issued July 23, 1918, upon original 1,222,550, filed November 2, 1911, issued April 10, 1917. These different patents and their several claims involved will be considered consecutively, and without regard to which party succeeded below.

The first Rose reissue, No. 13,934, presents the broadest claim of invention, and one which has been the subject of much litigation. The original patent was before the Second Circuit Court of Appeals in Standard Typewriter Co. v. Standard Folding Typewriter Sales Co., 181 F. 500, 104 C.C.A. 248, on an appeal from an order granting a preliminary injunction. The order was sustained upon the theory that there was patentability at least in the method of folding, by which the carriage was made to overhang the keyboard, and this feature was used by the defendant. The case came on for final hearing before Judge Hand, who held that the claims were anticipated by the earlier Carmona patents. The decision of the Court of Appeals on the second appeal is found in 223 F. 779, 139 C.C.A. 599. Judge Hand's conclusion that the Carmona patent anticipated was upheld, and his decree affirmed. The owners of the Rose patent then surrendered it and procured a reissue. Their substantial ground was that the claims had been drawn in ignorance of the existence of the Carmona, and it was desired to confine them to Rose's invention as it could be distinguished from Carmona-- in other words, to narrow the claims, so that they would no longer be anticipated. This resulted in the reissue patent now in suit.

It is not necessary to quote the claims of the original and claim 28 of the reissue, which is the only one now in suit. It is enough to say that those claims of the original, which are of importance in this connection, were not limited to a typewriter having a universal or standard keyboard, but were broad enough to reach and include the very different keyboard of the Carmona. In this respect claim 28 of the reissue was narrowed. On the other hand, these claims of the original were limited to that particular type of shifting whereby the carriage was folded into overhanging relation to the keyboard. This limitation is omitted from claim 28 of the reissue, which is broad enough to reach any folding of the carriage into more compact relation with any other part of the typewriter. The defendant's structure does infringe the reissued claim; it would not have infringed any original claim. The patentee cannot point to one narrowing limitation in his reissued claim, and thereby hide a broadening in the same claim, when that broadening serves to bring within the monopoly a structure which otherwise would have been free; to say that the claim is narrowed is to state but a half truth; and when this broadening by reissue occurs, as it did here, 11 years after the issue of the original, the reissue is plainly insufficient as a basis for injunction against such a structure. Whether it would be invalid as against a structure not prejudiced by the broadening we need not decide. Plaintiff's argument is in effect that, because the original had a claim broadly to feature a in connection with limiting details and another claim broadly to feature b, joined with detailed limitations, it may have on reissue, after this delay, a claim broadly to a and b combined alone. As to this patent the bill must be dismissed. See Automotoneer Co. v. Porter (C.C.A. 6) 232 F. 456, 146 C.C.A. 450.

While the first Rose reissue, thus disposed of, pertains most broadly to the foldability of the structure, the second Rose reissue, No. 13,935, relates generally to the separable escapement mechanism. The carriage and platen, which are hinged to the upper part of the frame, carry a rack bar in connection with releasing dogs, which dogs are operated as an escapement to permit the step by step motion of the rack bar and the consequent progress of the platen carrying the paper. A chain of mechanism runs from the finger-operated key to these escapement dogs, whereby each depression of the key permits the rack bar to move one step. All this was old and common; but it was clear that, when the position of the carriage was changed by swinging it up on its hinged edge, this chain of mechanism must yield or break, and it must be so broken that it would be automatically restored when the carriage was dropped back into normal position. This is what is meant by the reference to the separable escapement mechanism. The claims of this patent, both of the original and the reissue, were broadly directed to this feature, and cover it in combination with any form of fold for the carriage. The claims now in suit were not materially broadened when reissued.

There has been much discussion as to whether Carmona disclosed a workable machine, so that it should be included in the prior art. Upon superficial inspection of the Carmona patent, it seems to involve all necessary separability, and that would be the inference from the decisions in the Second circuit, and the action of the patentee in surrendering the first Rose patent for reissue looks toward an admission that Carmona anticipated. On the hearing in the court below, the plaintiff presented a machine built in exact accordance with the Carmona specification and drawings, and satisfied the trial judge that it was inoperative. Defendant has presented another model, which is said to be built with only the aid of ordinary mechanical skill as applied to the Carmona specifications and drawings, and this may be operative. We do not think it necessary to go into this subject.

The specification and drawings of the first Rose patent did not disclose the details of the key-to-platen chain of mechanism. It says that the rack bar is to be operated by a suitable escapement mechanism, but that, as the mechanism does not form any part of the invention, it is not considered necessary to illustrate or describe it in detail. Since this separability is absolutely essential to make the Rose device work, the patent is either invalid because it does not disclose an operative structure, or else it must be taken as including and calling for any suitable and familiar means for providing this separability. The latter seems to us the more reasonable alternative, in view both of the face of the patent and the constant insistence by plaintiff that it was valid; and while the language of the claims does not literally include this element, it is not inconsistent with such inclusion. Each claim necessarily calls for a typewriter, having the carriage foldable, and still continuing to be an operative typewriter, and thereby necessarily requires that the escapement mechanism shall be separable. Any attempt to apply the claims to a structure which did not have that feature must fail. The patentee would have been the first to say that, of course, a suitable separable escapement was implied in his claims, and a contrary holding would have been very harsh and technical.

This conclusion is fortified by the fact that suitable separability in just such an escapement and for just such a general purpose was well known. The patent to Sholes of September 29, 1896, disclosed the same general key-to-platen chain as was shown by the second Rose patent. Sholes showed a carriage hinged at one side and which could be turned up out of normal position, thereby breaking the escapement mechanism, which was restored on the dropping of the carriage. This Sholes mechanism must be taken as typical of that 'suitable escapement' to which Rose refers. It could have been incorporated in the first Rose structure, and only in that or some equivalent way could the implied calls of the claims have been satisfied.

The result of this view is that the claim in suit of the first patent was for the combination of the folding feature with any separable escapement, and that the broad claims...