D'Arcy Spring Co. v. Marshall Ventilated Mattress Co.

• Decision Date: 07 January 1919
• Docket Number: 3192.
• Citation: 259 F. 236
• Parties: D'ARCY SPRING CO. et al. v. MARSHALL VENTILATED MATTRESS CO.
• Court: U.S. Court of Appeals — Sixth Circuit

259 F. 236

D'ARCY SPRING CO. et al. v. MARSHALL VENTILATED MATTRESS CO.

No. 3192.

United States Court of Appeals, Sixth Circuit.

January 7, 1919

Otis A Earl, of Kalamazoo, Mich., for appellants.

Taylor E. Brown, of Chicago, Ill., for appellee.

Before WARRINGTON, KNAPPEN, and DENISON, Circuit Judges.

DENISON Circuit Judge.

Patent No. 685,160 was issued October 22, 1901, to Marshall, and became the property of appellee, who was plaintiff below. It disclosed a mattress or other cushion having a suitable cover, and the resilient body of which was composed of a mass of vertical spiral springs; each spring being contained in a cylindrical pocket of fabric closed at the top and bottom and several of the pockets being fastened together at their sides, so that they constituted a strip or row of pockets. This was accomplished by taking two strips of fabric of suitable width and imposing one upon the other, or by folding longitudinally upon itself a strip twice as wide, and then stitching transversely at intervals across this double strip. Thus a row of pockets was created, and, after the springs were inserted therein, the ends were closed by whatever further stitching might be necessary. The single claim is:

'A mattress comprising a cover and a plurality of transversely extending strips of textile material arranged therein and stitched at intervals to form pockets having closed ends, the pockets of one strip alternating with those of the adjacent strip, and spiral springs arranged in said pockets substantially as described.'

The court below found validity and infringement, and the defendants bring this appeal.

We agree with the court below that the patent involves invention and should be sustained. A strip of fabric, thus transformed into a unitary series of pockets containing springs, was new and it has proved to have large commercial utility. Perhaps this utility and extensive use have developed from a method of business not described in the patent or anticipated by the patentee, viz. selling the prepared spring-containing strip as raw material suitable to be made up into a mattress or cushion; but this adaptability was inherent in the structure shown and described, and the patentee's lack of complete prevision is not important. Goshen Co. v. Bissell Co. (C.C.A. 6) 72 F. 67, 74, 19 C.C.A. 13.

We cannot give to the presence in the claim of the element, 'a cover,' the limiting effect which defendants attribute to it. The mattress cover shown in the drawing represented only the familiar environment or field provided for the operation of the mass of covered springs which represented the substance of the invention; and any of the varieties of cover found in the defendants' structures (when finished as intended) must be considered within the inventor's meaning, when he referred to a 'cover.'

The difficult question is presented by the clause of the claim which reads, 'the pockets of one strip alternating with those of the adjacent strip. ' Obviously, there are two ways in which these rows or strips of pockets may be assembled in order to make a quasi unitary support for a cushion top: They may be put together aligned, with pocket centers equidistant in both right-angled directions, or the second row may be moved longitudinally one-half the width of a pocket, and then each pocket will enter partially between two pockets of the first row. In the former case, the rows are wholly distinct from each other and are spaced in both directions the extreme width of the pocket; in the latter case, the pockets of one strip alternate with those of the adjacent strip and the strips have broken joints, or it may be said that the pockets are staggered and nested. The question is whether the finding of infringement should be confined to those structures which have the pockets thus staggered (defendants' first form), or whether those which have the pockets of the first class described (defendants' second form) are so fully the equivalent of the staggered style that they cannot escape. The trial court adopted the latter view.

The rule that an express limitation may not be disregarded and the rule that a form equivalent to a specified form also infringes often seem to come into conflict. There is no fixed formula by which this conflict can be settled, but it must be determined by finding the true meaning of 'equivalency' in the case to be decided. In a very fair sense and as to most of the functions involved, it is immaterial whether strips of pockets are arranged in alternate or opposite mutual relation. Considering the scope of the actual invention and of claims which might well have been formulated, there would be little difficulty in finding in defendants' second form the necessary equivalency upon which to predicate infringement, if it were not for the expressly stated requirement about the relative positions of the strips. We assume, as hereafter stated, that this requirement was not inserted under such circumstances as to estop the patentee from asserting his present theory. It follows that the case is to be treated as one of voluntary and unnecessary limitation.

It seems worth while to review briefly some of the controlling or leading cases upon each side of the subject and upon which the parties, respectively, rely. In Winans v. Denmead, 15 How. 341, 14 L.Ed. 717, a claim to the frustrum of a cone was held to include as an equivalent the frustrum of an octagonal pyramid. It is doubtful whether there was so much discrepancy between the letter of the claim and the defendant's form as has been thought, since a cone is a pyramid with an infinite number of sides, or, as recited in the opinion, 'a polygon of many sides would be equivalent to a circle'; but, passing by this feature of identity, it is clear that the difference was merely in form, and that, in operation and functions and effect, the two were identical. The difference in form did not stand for anything else, and a rule of equivalency so strict as to exclude from the monopoly one form and include the other would tend to raise doubt as to the existence of any patentable invention.

In Metallic Co. v. Brown (C.C.A. 8) 104 F. 345, 352, 43 C.C.A. 568, the claim called for an element located at the side of the horizontal roasting chamber, but the rule of equivalency served to bring within this claim a structure in which this element was underneath the chamber. Here, also, it may be noted that there was not even a literal inconsistency, since the word 'side' is often applied to the top and bottom sides as well as to the horizontal sides; but again there was no function whatever indicated by the location at the horizontal side as distinguished from the location underneath. There was no room to suppose that the inventor could have thought that the location he specified was material to his invention and thus no room to say that he intended to make it material. The conclusion was not to be escaped that the inventor used the term only because it was appropriate for the specific form which happened to be before him.

In Bundy Co. v. Detroit Co., 94 F. 524, 538, 36 C.C.A. 375, this court disregarded the superficial distinction between a key which is rotated and one which is pushed longitudinally. Here, again, there was nothing whatever new in the form or motion of the key; the inventor's forward step pertained to another feature of the mechanism and was to be operated equally well by either form of key. It was in effect held that the specific form of claim reference to an element which was not an inherent part of the new step, but only pertained to a working field therefor, would not be permitted to dominate except in the plainest case.

In Schieble Co. v. Clark (C.C.A. 6) 217 F. 760, 133 C.C.A. 490, the claim called for a driving shaft in combination with two pairs of running...