Craig v. Michigan Lubricator Co.

• Decision Date: 14 January 1896
• Docket Number: 2,324.
• Citation: 72 F. 173
• Parties: CRAIG et al. v. MICHIGAN LUBRICATOR CO. et al.
• Court: U.S. District Court — Eastern District of Michigan

72 F. 173

CRAIG et al. v. MICHIGAN LUBRICATOR CO. et al.

No. 2,324.

United States Circuit Court, E.D. Michigan.

January 14, 1896

The bill of complaint in this cause is filed by Warren H. Craig and others against the Michigan Lubricator Company and Frank W. Marvin, as its president and individually, for an alleged infringement of claims 2, 4, 5, 6, and 7 of letters patent No. 398,583, dated February 26, 1889, and issued to Craig for 'improvements in sight-feed lubricators.' By stipulation, Max Nathan was made a party complainant, because of certain rights held by him under the patent.

1. CRAIG PATENT NO. 398,583-- LUBRICATORS.

This patent is clearly void for want of invention, in view of the state of the art and the limitations which the inventor has imposed upon himself in his specifications as to the nature and extent of his improvement.

2. CRAIG PATENT NO. 398,583-- C ONSTRUCTION OF THE PATENT.

The patent, if sustainable, must, under the proofs, be strictly construed, and limited to the precise construction shown.

3. CRAIG PATENT NO. 398,583-- LIMITATIONS BY PATENT OFFICE.

Craig, having accepted, without appeal, limitations and restrictions imposed upon his claim by the patent office while his application was there pending cannot now obtain by construction what the patent office repeatedly denied, nor can he evade his own limitations upon his claims. His patent cannot thus be enlarged.

4. CRAIG PATENT NO. 398,583-- C ONSTRUCTION OF CLAIMS.

In the light of the history of this application in the patent office, the phrase 'within the lines of the lubricator' and 'within the condenser' must be held merely equivalent expressions, which restricted Craig to the very arrangement of parts which his application described and delineated.

5. CRAIG PATENT NO. 398,583-- PRIOR USE AND SALE.

Craig's application was filed June 1, 1885. He testified that in March, 1883, he reduced his invention to practice, and operated it upon the Pillsbury engine, at Lawrence, under an agreement that, if satisfactory, it should be paid for by Pillsbury; that, after two or three weeks' use, it was altered, for the purpose of trying another experiment, and then, after proving satisfactory, was paid for by Pillsbury. Held that, 'under the proofs in this case, it is clear that there was such a public use and sale of the Craig lubricator as to avoid his patent.'

James H. Raymond, F. P. Fish, and Edmund Wetmore, for complainants.

John B. Corliss, George S. Payson, and George H. Lothrop, for defendants.

SWAN District Judge.

The proofs in the cause fail to establish any individual liability for the matters charged in the bill upon Mr. Marvin, the individual defendant, and it is practically conceded that is should be dismissed as to him.

The defenses to the charge of infringement are: (1) That the claims sued upon are invalid for want of novelty and invention, or are limited to the construction shown in the patent drawings, and admitted to be different from the defendants' construction; (2) that such claims are for nonpatentable aggregations; (3) that by limitation imposed by the patent office, and accepted by Craig without appeal, these claims are restricted to the construction shown in the patent drawings; (4) that a cup embodying Craig's alleged invention was publicly used and sold more than two years prior to his application; (5) that the defendants do not infringe.

The second of these defenses it is not necessary to discuss.

It is not claimed that the lubricator described in the letters patent is a pioneer invention, and it is clear that, in its general appearance and the principle of its operation, it strongly resembles, if it is not identical with, prior devices, for some of which Craig had obtained patents, and from several of which he had taken parts, and brought them into a combination which he claims is patentable. Lubricators of this general type have been so often the subject-matter of litigation within the last 20 years that it is unnecessary to enter into a full description of the patented and alleged infringing devices. The induct pipe, the educt pipe, the condenser, and oil reservoir, the sight-feed, the glass tube and observation chamber, and up-drop and down-drop, and an equalizing pipe connecting the steam delivery with the oil exit, are old. In this condition of the art, the first question is, has Craig added to it, either by a new and meritorious combination of familiar parts or the addition of a new feature to mechanism in use? Craig's departure from previous manufactures consists in locating the pipe which connects the steam inlet and oil exit within the condenser in a straight line between the two, instead of placing it outside of the lubricator, as in previous constructions. That this is the extent of his improvement under the letters patent sued upon is clear from their specification, which, after a general description of the device, states:

'The above-described lubricator is essentially like that exhibited in letters patent No. 277,464, dated May 15, 1883, and granted to me. I have made additions to it for the object or purposes hereinbefore mentioned; that is to say, I have provided the condenser with a pipe or conduit, p, to lead from it to the boiler, in order to conduct steam from the boiler into the condenser, such pipe having in it a stopcock, q.'

Seibert, in 1876, Baker, in 1880, Harvey, in 1881, and Holland, in 1882, employed this pipe externally for the same purpose. There could be no invention in this arrangement of parts, which, upon Craig's own admissions, constitutes the sole feature which distinguishes his last from former patented devices.

The prior patent to Craig is as effectual to avoid the latter as if issued to another. James v. Campbell, 104 U.S. 356; Roller-Mill Co. v. Coombs, 39 F. 25, 38. The patent sued upon seems to me clearly void for want of invention in view of the state of the art, and the limitation which the inventor has imposed upon himself in his specification as to the nature and extent of his improvement.

2. But the magnitude of the interests involved compels the consideration of other defenses presented, which, whatever opinion may be held of the patentability of Craig's improvement, equally avail, if valid, to repel the complainant's rights to relief. The patent, if sustainable, must, under the proofs, be strictly construed, and limited to the precise construction it shows. Craig filed his application June 1, 1885. It fully described his lubricator, stating that the 'oil is intercepted by the steam passing from the condenser downward through the pipe g therein. ' His first claim included 'a conduit to lead steam from the boiler into the condenser, and with a passage to lead steam into the oil-discharging conduit. ' This was in substance repeated in claims 2 and 3, which were held by the examiner to be alike, and for that reason were rejected. In this, he lays claim to the equalizing pipe. The alleged invention was held by the examiner, June 6, 1885, as anticipated in patent to Hodges & McCoy, of November 18, 1884, and the patent to Holland, of August 15, 1882. Then began a contest between Craig and the patent office, which waged until February 26, 1889, when his patent was issued, during which Craig amended his original claims no less than 14 times, in many instances canceling and recasting them entirely, and substituting wholly new matter for that discarded. The struggle on Craig's part was to maintain a broad claim for the equalizing pipe, and on the part of the examiners to keep him within the field of invention, and hold him to the device which he had described and illustrated. Again and again his amendments were rejected as unwarranted by his descriptions and drawings. Disclaiming the Holland lubricator (patent No. 262.774), he asked and obtained an interference with the Hodges & McCoy patent, of November, 1884. Upon the issue presented by this interference, the examiners in chief awarded priority to Hodges & McCoy, and their decision was affirmed on appeal by the acting commissioner, who, December 6, 1887, denied, after full argument, a motion for rehearing. That officer, however, May 19, 1888, granted a motion to reopen the case, and January 19, 1889, vacated his former decision, and declared priority of invention to be with Craig, and that he had not forfeited the same by public use, as claimed by his adversaries. During the four years of contention with the patent office, and upon the interference, from Craig's first application, June 1, 1885, to his final amendment, January 31, 1889, when he withdrew his entire specifications and claims, and substituted therefor an altogether new set, in which he made a last effort to obtain the permission of the patent office to locate the pipe g either within or without the condenser, as he might prefer, notwithstanding his persistent efforts to expand and vary his claims, Craig was rigorously held to a construction which described and located the pipe g as 'another conduit within and to lead steam from such condenser into the said oil-discharging conduit. ' This phraseology he varied in the second claim of his last specification by substituting for the words 'within * * * such condenser' the phrase 'another conduit wholly within the lines of the lubricator. ' In his persistence to enlarge his claims and depart from the construction set forth in his application, he had so involved the record in the patent office by ingeniously worded amplifications of his claims and contentions for alternative forms of construction, which were as persistently rejected, that the examiner notified him as early as January 19, 1886, that if he still persevered in inserting such objectionable matter, which had been so often rejected, his...