Automatic Pencil Sharpener Co. v. Boston Pencil Pointer Co., 1511.

• Decision Date: 21 February 1922
• Docket Number: 1511.
• Citation: 279 F. 40
• Parties: AUTOMATIC PENCIL SHARPENER CO. v. BOSTON PENCIL POINTER CO.
• Court: U.S. Court of Appeals — First Circuit

279 F. 40

AUTOMATIC PENCIL SHARPENER CO. v. BOSTON PENCIL POINTER CO.

No. 1511.

United States Court of Appeals, First Circuit.

February 21, 1922

Henry M. Huxley, of Chicago, Ill. (Sherman L. Whipple and Edward O Proctor, both of Boston, Mass., on the brief), for plaintiff in error.

E Clarkson Seward, of New York City, and Asa P. French, of Boston, Mass., for defendant in error.

Before BINGHAM, JOHNSON, and ANDERSON, Circuit Judges.

ANDERSON Circuit Judge.

This is an action at law to recover damages for the alleged infringement of Webster's patent, No. 640,846, dated January 9, 1900, for a pencil sharpener.

After a long trial before a jury, the court below ruled that as matter of law the plaintiff was not entitled to recover. The verdict was returned in the form of an alternative verdict the jury finding, subject to the court's ruling on the question of law, for the plaintiff in the sum of $16,670, but consenting to a verdict for the defendant if the court should rule that as matter of law the plaintiff was not entitled to a verdict.

In the view we take of the case, the proceedings as to the alternative verdict are of no present import. But we add that the alternative verdict method adopted at this trial is one making for efficiency and economy, is fully warranted by the Massachusetts statutes as to procedure, here applicable under the Conformity Act (Comp. St. Sec. 1537), and is consistent with recent federal legislation. See Acts Mass. 1915, c. 185 Sec. 1; Rev. Laws Mass., c. 173, Sec. 120; Bothwell v. Boston Elevated Ry., 215 Mass. 467, 476, 102 N.E. 665, L.R.A. 1917F, 167 Ann.Cas.

1914B, 275, and cases cited; 26 Harvard Law Review, 732; 31 Harvard Law Review, 685; Plews v. Burrage (C.C.A.) 274 F. 881.

The gist of the case is whether the issue presented as to infringement is one of law or of fact. The District Court held that, in view of the prior art and of the important testimony of the patentee, which was not before the court in the case of Automatic Pencil Sharpener Co. v. Stewart Mfg. Co., 249 F. 52, 161 C.C.A. 112, assuming every disputed fact to be found in favor of the plaintiff, the claim in suit was not entitled to a construction sufficiently broad to cover the defendant's machine.

It is not entirely easy to reconcile all the expressions of the Supreme Court on this question of when a patent infringement case presents a question of fact and when one of law only. In some of the earlier cases are fairly broad statements to the effect that questions of construction in the light of the prior art-- particularly when there is expert evidence-- as well as questions of infringement, are questions of fact. Cases illustrating this view are the following: Coupe v. Royer, 155 U.S. 565, 575, 577, 15 Sup.Ct. 199, 39 L.Ed. 263; Royer v. Shultz Belting Co., 135 U.S. 319, 10 Sup.Ct. 833, 34 L.Ed. 214; Keyes v. Grant, 118 U.S. 25, 6 Sup.Ct. 950, 30 L.Ed. 54; Tucker v. Spalding, 13 Wall. 453, 455, 20 L.Ed. 515; Bischoff v. Wethered, 9 Wall. 812, 815, 19 L.Ed. 829. See also Trustees, etc., v. Fountain, etc., Corp., 218 F. 642, 134 C.C.A. 663, where Judge Lacombe quotes from the chief authorities. Compare Heide v. Panoulias, 188 F. 914, 917, 110 C.C.A. 656.

On the other hand, the later cases stress the view that it is for the court to construe patents as written instruments, dealing with the prior art somewhat as the surrounding circumstances and status of the parties are dealt with in construing other contracts, and also, when expert evidence is not needed to explain terms of art, to determine the question of infringement as one of law.

The latest and most authoritative expression of the rule is found in the opinion by Mr. Justice White in Singer Mfg. Co. v. Cramer, 192 U.S. 265, 24 Sup.Ct. 291, 48 L.Ed. 437, where the learned justice says:

'As in each of the patents in question is apparent from the face of the instrument that extrinsic evidence is not needed to explain terms of art therein, or to apply the descriptions to the subject-matter, and as we are able from mere comparison to comprehend what are the inventions described in each patent and from such comparison to determine whether or not the Diehl device is an infringement upon that of Cramer, the question of infringement or no infringement is one of law and susceptible of determination on this writ of error. Heald v. Rice, 104 U.S. 737; Market Street Cable Ry. Co. v. Rowely, 155 U.S. 621, 625.'

In Brothers v. Lidgerwood Mfg. Co., 223 F. 359, 138 C.C.A. 460, Judge Lacombe states the rule as follows:

'It is well settled that when the validity of a patent is to be determined and its claim construed by reference to prior patents, about the dates and authenticity of which there is no controversy, the trial judge will usually construe those documents as he would other documents; his doing so does not invade the province of the jury. There may be exceptional cases, but this is not one of them. The first questions, therefore, for this court to determine, are whether, in view of the prior art patents, the one in suit is valid, and what is the scope of its claims.'

In Walker on Patents (5th Ed.) Sec. 536, it is said:

'The judge may direct the jury to return a verdict for the defendant, where it is entirely clear that the plaintiff cannot recover, but not otherwise. Such a direction may therefore be given, where want of novelty or want of invention is clearly shown by a prior patent, but not where that question is doubtful. And such a direction may be given where the question of infringement depends entirely upon the construction of the patent; and where that construction does not depend upon any doubtful question of the prior art.

'But where the question of infringement depends upon the construction of the patent, and that construction depends upon a doubtful question in the prior art, the latter question should be left to the jury; and the dependent question of infringement should also be left to the jury to decide.'

We think this case falls within the rule laid down by Mr. Justice White, and that the court below did not err in ordering a verdict for the defendant.

A brief consideration of the patent in suit, of the prior art, and of the defendant's device will, we think, suffice to show that there was no evidence that would warrant the jury in finding that claim 4 of the plaintiff's patent, the only claim in suit, was infringed by the defendant's device.

The plaintiff's patent describes a planetary pencil sharpener; that is, a sharpener in which the cutter, while being rotated on its own axis, is, with the block which holds the pencil against the cutter, rotated around the pencil. Pencil sharpeners of the planetary type are old. Plaintiff's patent, like other sharpeners, is merely for an alleged new combination with elements all, or nearly all old. It is plainly entitled to no...