Bone v. Commissioners of Marion County
| Decision Date | 15 December 1919 |
| Docket Number | No. 63,63 |
| Parties | BONE v. COMMISSIONERS OF MARION COUNTY |
| Court | U.S. Supreme Court |
Messrs. Clarence E. Mehlhope, of Chicago, Ill., and Arthur H. Ewald, of Cincinnati, Ohio, for petitioner.
Mr. V. H. Lockwood, of Indianapolis, Ind., for respondents.
Suit brought in the District Court of the United States for the District of Indiana to restrain the infringement of a patent for a retaining wall, which, to quote petitioner, is "a wall to prevent the material of an embankment or cut from sliding."
After issue joined and proofs submitted, the District Court (Anderson, J.,) entered a decree dismissing the bill for want of equity. The decree was affirmed by the Circuit Court of Appeals, to review which action this writ of certiorari was granted.
The bill in the case is in the conventional form and alleges invention, the issue of a patent numbered 705,732, and infringement by respondent. The prayer is for treble damages, an injunction, and accounting.
The answer of respondent is a serial denial of the allegations of the bill and avers anticipation of petitioner's device by prior patents and publications, in this and other countries.
This summary of the issues is enough for our purpose and we need only add preliminarily to their discussion that Bone's device has the sanction of a patent and a decision sustaining it by the District Court for the Northern District of Ohio and the Circuit Court of Appeals for the Sixth Circuit. The difference of decision in that circuit and the Seventh circuit is an important consideration and must be accounted for, which is best done by a display of the patent and the case.
First, as to the patent: It describes the invention as being one that——
'relates to improvements in retaining walls for abutments to bridges, * * * and such places as it is desired to retain earth or other matter permanently in place with its face at an angle nearer vertical than it would naturally repose when exposed to the action of the elements or gravity,' and 'consists principally of introducing into masonry of concrete, stone or brick a framework of steel or iron in such way that the whole wall is so much strengthened thereby that the volume of the masonry may be greatly reduced, and yet the height, base, and strength against overturning, bulging, or settling will still be ample.'
The following figure represents a cross-sectional view of the device—A representing the masonry, B the material retained, and B1 the earth on which the wall rests. The metal parts within A are indicated by the smaller letters.
[NOTE: MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE (GRAPHIC OR TABULAR MATERIAL)]
The patent does not insist upon that form of the masonry in all particulars. The base of the wall may be, it is said, 'varied to suit the circumstances'; it (the base) may extend to the rear rather than the front 'with proper proportions of metal * * * the form shown in the drawings being what might be called an inverted T, while those suggested would be in the form of an L or reversed L.'
The utility of the wall of these shapes is represented to be that it is 'not so liable to be overturned from the pressure of material behind it as would be a wall of the same height and area of section but having a rectangular, trapezoidal or triangular shaped section,' the latter shapes requiring more masonry. And it is said that the patented wall, 'having more base and less weight' than such other shapes, 'will rest more securely on a soft or yielding foundation, the weight of the material resting on the heel' causing the latter 'to press on the earth below, and thus cause friction to prevent the whole wall from sliding outward.' This is the especial effect of the patent, achieved by the wall of the shape described, and distinguishes it, is the contention, from the retaining walls of the prior art.
The patentee admits, however, that retaining walls had been 'constructed of concrete and steel, but none' to his 'knowledge' 'had been supported on their own base as' his, nor had 'any of them entirely inclosed the steel within the concrete,' nor had 'any of them used the weight of the material retained as a force to retain itself.'
Such, then, is the wall and the utility attributed to it. The combinations which may be made with it are set forth in 17 claims, of which 1, 3, 5, 16, and 17 are involved in the present action. Counsel for petitioner considers, however, that 1 and 17 are so far illustrative that the others need not be given. They are as follows:
So much for the device of the patent. How far was it new or how far was it anticipated?
Bone's idea was conceived in 1898, and his patent issued in 1902, upon an application made in 1899, but according to his counsel the value of the invention was not recognized 'until after the lapse of several years,' when he, Bone, brought a suit against the city of Akron, Ohio, in the District Court for the Northern District of Ohio, in vindication of the patent and in reparation for its infringement. He was given a decree which was affirmed by the Circuit Court of Appeals for the Sixth Circuit. 221 Fed. 944, 137 C. C. A. 514.
The District Court (Judge Day) gave a clear exposition of the patent, the relation of its metal parts1 to the masonry parts and their co-operating functions, and adjudged the patent valid and the wall of the city of Akron an infringement of it.
The Circuit Court of Appeals affirmed the decree. The court said that the record disclosed nothing which anticipated 'the substantial thought of the patent.' If it had done so, or, to quote the exact language of the court:
'If the prior art had shown a structure intended for a retaining wall, and having a heel such that the weight of the earth thereon would tend to keep the wall erect, it might be difficult to find invention in merely adding the form of reinforcement most suitable to create the desired tensile strength; but we find no such earlier structures.'2
On application for rehearing the court refused to direct the District Court to open the case to permit the defendant to put in proof regarding a German publication of 1894.
Those decisions confronted the District Court in the present suit and fortified the pretensions of the patent. They were attacked, however, as having been pronounced upon a different record and this conclusion was accepted by the District Court. The latter court found from the new evidence the existence of a structure upon the nonexistence of which the Circuit Court of Appeals for the Sixth Circuit based its conclusion. The District Court said that Bone was not the first to do the things he asserted he was the first to do, and that whatever the record in the Sixth Circuit might have shown, so far as the record before the court 'was concerned, the absolute converse of that proposition' had 'been demonstrated.'
The court, therefore, as we have said, dismissed the bill for want of equity.
The decree was affirmed by the Circuit Court of Appeals; indeed, the reasoning of the District Court was approved after painstaking consideration of the patent and an estimate of the anticipatory defenses; none of which the court said was introduced in the Akron Case, 'otherwise a different conclusion would have been reached,' adducing the opinion of the court. 249 Fed. 214, 161 C. C. A. 247. This being so, and there is no doubt it is so, the present case is relieved of the authority or persuasion of the Akron Case and it becomes necessary to consider the prior art and decide the extent and effect of its anticipation.
We have given a cross section of the device of the patent, showing its shape and strengthening 'metallic members,' and the patent informs of their co-operative function. We reproduce the device and set by its side the Marion county wall for comparison.
[NOTE: MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE (GRAPHIC OR TABULAR MATERIAL)]
If we may assign novelty to the Bone...
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