Computing Scale Co. v. Standard Computing Scale Co.

• Decision Date: 02 April 1912
• Docket Number: 2,192.
• Citation: 195 F. 508
• Parties: COMPUTING SCALE CO. v. STANDARD COMPUTING SCALE CO., Limited.
• Court: U.S. Court of Appeals — Sixth Circuit

195 F. 508

COMPUTING SCALE CO. v. STANDARD COMPUTING SCALE CO., Limited.

No. 2,192.

United States Court of Appeals, Sixth Circuit.

April 2, 1912

Suit on patent, No. 728,577, issued May 19, 1903, to the Computing Scale Company, as assignee of Jacob Hotsapillar, upon his application filed April 14, 1892. The case came on for final hearing before the Circuit Court, upon complainant's evidence, comprising only the patent, the defendant's structure, and the record of a Patent Office interference. The defendant had taken no evidence, but had produced, at the hearing, models to show the inoperativeness of the patent. The Circuit Court made the usual decree for complainant. On appeal this court did not consider the merits, but remanded with leave to both parties to take further proofs. 145 F 627, 76 C.C.A. 384. The defendant then took the testimony of witnesses, in connection with models and drawings, with the purpose of demonstrating its theory that the patent was void for lack of utility. Complainant cross-examined these witnesses, but took no expert or other oral testimony contradicting defendant's theory. The Circuit Court sustained this theory, and dismissed the bill, Complainant now appeals.

A computing scale comprises essentially, in addition to the general supporting frame, a platform to receive the article sold, a so-called value beam balanced upon the frame and containing price or other value gradations, and means for suspending the platform from the value beam. There is also a weighing or tare beam, adapted to indicate weight in the usual manner. The value beam is provided with a sliding counterweight or 'poise,' which, when it is adjusted so as to balance the suspended platform weight, will rest upon and indicate the price or value. Obviously the effect of this balancing poise will be modified by the distance between the fulcrum point of the balance beam and the point thereon from which the weighing platform is suspended; and a system of adjustment has been worked out by which the suspension point may be varied according to a scale of unit values marked on the value beam, with the result that the poise when balanced, will indicate the total price at the selected unit value. For example, the balance beam or a parallel attachment may be marked to indicate the price per pound varying from 5 cents at the point nearest the balance beam fulcrum, to 50 cents at the point furthest removed. Then, if an article weighing 5 pounds is suspended from the point marked 10, the balancing poise will indicate 50 cents as the total price at 10 cents per pound, while, if the same weight is suspended from the point marked 40, the poise, in order to balance, will have to be moved to the point where it indicates $2 as the total price. Prior to Hotsapillar's application, these general ideas were well understood and had been embodied in a considerable variety of efficient and successful computing scales. The lateral adjustment of the weight-carrying suspension point with reference to the balance beam fulcrum point had been accomplished in two distinct methods: First, by moving the weight-carrying platform and the suspending means laterally to and fro; and, second, by moving laterally in the main frame, the balance beam together with its fulcrum support. Each of these methods involved some difficulties of mechanics or of convenience. Hotsapillar conceived a third method, distinct from either of the others, and which, for the purpose of this opinion, we assume to have been entirely novel. His idea was to keep the platform and the balance beam both in permanent, fixed, lateral position, but to vary the suspension point by a sliding means forming a part of the connecting mechanism between balance beam and platform. The connection in former use had been in practical effect a straight rod, hanging free, and therefore vertically, from the suspension point, and at its lower end pivoted to the lever of the platform. Hotsapillar's idea was to substitute a T-shaped connector, pivoted at its lower end in the usual method to the platform lever, and forming by its upper, lateral extensions a guide along which would slide a block or loop connecting it with the value beam at any desired point. His general method of construction is shown in Fig. 1 of his drawing herewith reproduced, in which 12 is the vertical connecting rod, having the slotted T head 40, 44, and suspended from the slotted value beam 49, 51, by the sliding block and hook 58, 56, 57.

(Image Omitted)

It is defendant's theory that a device constructed in accordance with Hotsapillar's specifications and drawings has no utility, and this seems to be intended as the equivalent of saying that it would not be operative. Defendant is manufacturing under patents, one of which was granted to Francis C. Osborn, No. 793,606, upon an application filed January 26, 1899. This Osborn application was put into interference with the Hotsapillar application, upon issues in the language of the Hotsapillar claims as finally granted, and these issues were in due course determined in Hotsapillar's favor.

The first structure put upon the market appearing to involve this Hotsapillar conception was that of the defendant, built according to Osborn's pending application. Plaintiff's market structure first embodying this same conception appeared later, and embodied also what are called modifications or improvements of Hotsapillar's conception, made by Koehne, as shown by patent No. 790,794, issued May 23, 1905, upon application filed September 9, 1896, and Austin, as shown by patent No. 804,915, issued November 21, 1905, upon application filed March 19, 1897. Both the Koehne and Austin inventions belonged to complainant when it put this scale on the market.

Border Bowman (Staley & Bowman, on the brief), for appellant.

Edward N. Pagelsen, for appellee.

Before WARRINGTON, KNAPPEN, and DENISON, Circuit Judges.

DENISON Circuit Judge (after stating the facts as above).

The question which defendant pleaded as one of utility and argues as one of operativeness seems also to be one of reduction to practice. It is clear on this record that the only structure ever built by Hotsapillar himself was a model which did not give to one skilled in the art any instructions or suggestions beyond those contained in the specification and drawings. The question is, therefore, of that constructive reduction to practice by filing of the specification and drawings which the established rule makes the equivalent of the actual building of a machine; and the first question we meet is as to the true time of such constructive reduction. After the filing of his application in 1892, it was prosecuted through various rejections and amendments. In June, 1894, he filed a substitute specification and new drawings. These were accompanied by a new oath, and were accepted by the Patent Office. So far as the issues in this case are concerned, it makes no difference whether these substitute specifications and drawings are considered as a part of the original application or as a new application. We are therefore required to consider these 1894 drawings in determining whether Hotsapillar had made a complete invention.

The primary question is: To what extent must a device, built as shown in the drawings and specifications, be operative in order to support a conclusion that the conceived invention has been completely made? This question was quite fully considered by this court in an opinion by Judge (now Mr Justice) Lurton in Standard Cartridge Company v. Peters' Cartridge Company, 77 F. 630, 23 C.C.A. 367. He quotes from Loom Co. v. Higgins, 105 U.S. 586, 26 L.Ed. 1177, the illustration of an invention in some appurtenance of the steam engine which may be completely shown without describing other parts of the engine. He lays down the rules, also, as fully as contended for by the patentee here, that a completed invention is not negatived because the drawings are rude or imperfect, or because they are incomprehensible to one unacquainted with that class of machinery, or because they do not in all respects show the relation of the novel features to the old device nor describe precisely the mode of attachment nor with scientific exactness show other details of the combination. He concludes that the controlling question is whether 'the absent features are such as would be readily supplied by a mechanic familiar with the subject and without requiring further invention' (77 F. 647, 23 C.C.A. 383); and whether the mechanical questions left unsolved by the drawings were of such dignity as to require invention to carry into effect the idea indicated by the drawings (77 F. 652, 23 C.C.A. 388); and whether 'that which remained imperfect in...