Brookfield v. Elmer Glassworks

• Decision Date: 16 September 1904
• Parties: BROOKFIELD et al. v. ELMER GLASSWORKS.
• Court: U.S. District Court — District of New Jersey

132 F. 312

BROOKFIELD et al. v. ELMER GLASSWORKS.

United States Circuit Court, D. New Jersey.

September 16, 1904

Kenyon & Kenyon and George W. Mills, Jr., for complainants.

Walter H. Bacon and Thomas Mackenzie, for defendant.

LANNING District Judge.

This is an application for a preliminary injunction to restrain the defendant from infringing patent No. 542,565, issued July 9 1895, to Seraphin Kribs, and by him assigned to William Brookfield, now deceased, of whose will the complainants are executors. The title of the complainants to the patent in question is not disputed, and its validity was established by a decree of this court rendered in the case of Brookfield v. Novelty Glass Manufacturing Company (C.C.) 124 F 551.

The patent is for certain improvements in a press for making glass screw-insulators for telegraph lines and the like. In the letters patent, 10 claims are set forth. The second and third claims only are involved in this litigation. They are as follows:

'(2) An actuating-rod provided with a detachable screw-plunger combined with a rotary spindle adapted to engage the screw-plunger, a mold, and a movable support for the mold, substantially as described. (3) An actuating-rod provided with a detachable screw-plunger, combined with a rotary spindle adapted to engage the screw-plunger, a mold, a movable support for the mold, and a lock for holding the support with the mold in operative position relatively to the actuating-rod and spindle, substantially as described.'

It will be observed that these claims relate to combinations of different elements, and not to the elements themselves. In Schumacher v. Cornell, 96 U.S. 549, 24 L.Ed. 676, it was said:

'A combination is always an entirety. In such cases the patentee cannot abandon a part and claim the rest, nor can he be permitted to prove that a part is useless, and therefore immaterial. He must stand by his claim as he has made it. It more or less than the whole of his ingredients are used by another, such party is not liable as an infringer, because he has not used the invention or discovery patented. With the change of the elements, the identity of the product disappears.'

And in Prouty v. Draper, 16 Pet. 336, 10 L.Ed. 985, which involved the question of an infringement of a patent issued for a combination of certain elements in the construction of a plow, the court said:

'None of the parts referred to are new, and none are claimed as new; nor is any portion of the combination, less than the whole, claimed as new, or stated to produce any given result. The end in view is proposed to be accomplished by the union of all, arranged and combined together in the manner described. And this combination, composed of all the parts mentioned in the specifications, and arranged with reference to each other and each other and to other parts of the plow, in the manner therein described, is stated to be the improvement, and is the thing patented. The use of any two of these parts only (there being three parts described in the letters patent), or of two combined with a third, which is substantially different in form, or in the manner of its arrangement and connection with the others, is therefore not the thing patented. It is not the same combination if it substantially differs from it in any of its parts.'

And in Water Meter Co. v. Desper, 101 U.S. 332, 25 L.Ed. 1024, it was said:

'It is a well-known doctrine of patent law that the claim of a combination is not infringed if any of the material parts of the combination are omitted. It is equally well known that if any one of the parts is only formally omitted, and is supplied by a mechanical equivalent performing the same office and producing the same result, the patent is infringed.'

With these rules before us, it becomes necessary to analyze the claims in the complainants' patent alleged to be infringed, and also the machine which is being operated by the defendant. In the second claim of the complainants' patent the elements are (1) an actuating-rod, and (2) a detachable screw-plunger with which the actuating-rod is provided, with which two elements are combined, (3) a rotary spindle adapted to engage the screw-plunger, (4) a mold, and (5) a movable support for the mold.

The proofs show that the defendant's machine has (1) an actuating-rod, and (2) a screw-plunger, with which two elements are combined (3) a mold, and (4) a movable support for the mold. The defendant insists that this machine is substantially different from that described in the complainants' patent in these respects: (1) That in the complainants' patent the screw-plunger is detachable from the actuating-rod, the screw-plunger during a part of the operative work of the machine being attached to the actuating-rod, and during another part being detached from it, while in the defendant's machine the screw-plunger is not at any time attached to the actuating-rod, and therefore is not detachable from it; and (2) that in the complainants' patent the rotary spindle is adapted to engage (that is, to be attached to) the screw-plunger, while in the defendant...