Kodel Electric & Mfg. Co. v. Warren Telechron Clock Co.

• Citation: 62 F.2d 692
• Decision Date: 16 January 1933
• Docket Number: No. 6190.,6190.
• Parties: KODEL ELECTRIC & MFG. CO. et al. v. WARREN TELECHRON CLOCK CO.
• Court: U.S. Court of Appeals — Sixth Circuit

62 F.2d 692 (1933)

KODEL ELECTRIC & MFG. CO. et al. v. WARREN TELECHRON CLOCK CO.

No. 6190.

Circuit Court of Appeals, Sixth Circuit.

January 16, 1933.

Samuel E. Darby, Jr., of New York City (Arthur H. Ewald, of Cincinnati, Ohio, and John S. Bradley, of New York City, on the brief), for appellants.

Charles Neave, of New York City (Taft, Stettinius & Hollister, of Cincinnati, Ohio, Alexander C. Neave, of New York City, Russell A. Warner, of Schenectady, N. Y., and Harold F. Watson, of New York City, on the brief), for appellee.

Before HICKS, HICKENLOOPER, and SIMONS, Circuit Judges.

HICKENLOOPER, Circuit Judge.

Defendant below appeals from a decree of validity and infringement of claims 8 and 9 of patent to Henry E. Warren, No. 1,502,494, issued July 22, 1924, for "Time-indicating Apparatus." Claim 8 is typical, and is printed in the margin.¹ The defendant asserts both invalidity of the claims in suit and non-infringement.

At the time of the application for the patent in suit, it was well known that synchronous motor clocks, operated by central station alternating current, would keep accurate time provided the current was kept uniformly at that cycle to which the clock motor was synchronized, but that, if the current supplied was supposed to be of the 60-cycle variety, using that cycle merely for purposes of illustration, and a 60-cycle clock motor was used, but the alternations of the current in fact exceeded 120 per second, or fell below that number, the clock would run faster or slower than complete accuracy demanded. The so-called systems of time distribution in which the alternations of the current were maintained at a substantially uniform rate over a given period of time by the use of a master clock, either through the mediation of the central station operator who compared a synchronous motor clock with an adjacent master clock and increased or decreased the speed of the generator, according to whether the electric clock was running slower or faster than the master clock (see patent to Warren, No. 1,283,431), or in which this speed of the generator was controlled by the use of a differential mechanism between the electric clock and the master clock (see patent to Poole, No. 1,310,372), were also old.

What Warren did in his patent in suit was to devise a single dial indicating mechanism by which variations from the normal or rated cycle of the current could be more accurately recorded and more instantly recognized by the station attendant. He did this by the use of the differential gearing of Poole, and the sole advantage disclosed by the specification is that "the station attendant, therefore, knows exactly what to do by merely looking at one scale and pointer, instead of by comparing two different pointers or clocks * * * and he either slows down the alternator 24 or speeds it up, as conditions require." This is said to have enabled accurate regulation and the even maintenance of the current at a given cycle far beyond what was possible theretofore; but the mode of operation of the clock system as a whole remained exactly as it had been.

It is unnecessary, in the present case, to pass upon the validity of the claims covering this indicating means as such, or to determine whether the exercise of invention was required in its conception, in view of Poole and that which was already old, the adjacent electric and master clocks serving substantially the same purpose. Except for the descriptive element of the claims in suit of "an one indicator at the central station having a single hand for indicating directly the departure of the alternations sent out by said central station from the time indicated by said master clock" the claims of earlier patents (such as claim 6 of the patent to Poole, supra) would read directly upon the combination claimed, and we are here and now concerned only with the validity of the claims to a system of time distribution having as one element this direct indicator. It may be conceded that the claims to the separate indicating means are valid. The question is simply whether, upon the improvement of this single indicating device the patentee was entitled to claim the system of time distribution in connection with which, inter alia, the device was useful and to be used.

In the present case we think this question must be answered in the negative. A patentable combination "is as much a unit in contemplation of law as a single or noncomposite instrument." Leeds & Catlin v. Victor Talking Machine Co., 213 U. S. 325, 332, 29 S. Ct. 503, 505, 53 L. Ed. 816. Invention in a combination patent lies in the concept of combining the several elements, whether they be old or new. By the same token, novelty in such a patent is to be found in the fact that the various elements are there for the first time associated in the combination unit, each performing its separate function and all co-operating in the production of the unitary result. If a later invention consist solely of the improvement of one of the devices theretofore forming a part of an old combination, which improvement enables that device to perform its separate function in a more efficient and useful manner, and thereby produces a better result in the operation of the whole or broader combination, but does this without change in mode of operation of that combination, the patentee of the improvement may have a patent which will cover his improvement; but he may not claim the broader combination, merely substituting his improved device for the means theretofore used to perform the same function although less perfectly, for the concept of this combination of means, regarded as a unit, was not his, and it was not new. The language of this court in Crown Cork & Seal Co. v. Sterling Cork & Seal Co. (C. C. A.) 217 F. 381, 385, is directly applicable to the present case: "* * * having had this conception in 1898 here 1916, the date of filing his application for patent No. 1,283,431 and having received a patent, he could not have another patent in 1899 here 1924 which would do more than cover the improvement which he then discovered."

We think that it should also be clear, upon careful consideration, that if the combination claimed as a "clock system" or a "system of time distribution" be thus considered as a unit in which the factor essential to time-keeping accuracy is the uniform maintenance of the rated cycle of the current, the means by which the current is kept at this uniform cycle, or the way in which the synchronous motor clock is constructed, forms no true part of the system claimed. These means, whether they consist of improvements in meter-indicators, the electric generator, the steam...