Fay v. Mason

• Citation: 120 F. 506
• Decision Date: 31 January 1903
• Docket Number: 139.
• Parties: FAY v. MASON et al.
• Court: U.S. District Court — Western District of New York

120 F. 506

FAY v. MASON et al.

No. 139.

United States Circuit Court, W.D. New York.

January 31, 1903

Macomber & Ellis, for complainant.

Frederick F. Church (A. Parker-Smith, of counsel), for defendants and intervener.

HAZEL District Judge.

The complainant is the inventor and patentee of a machine for smoothing edges of cuffs and collars. His original patent No. 560,819, granted April 13, 1897, was reissued May 17 1898, on application filed within four months after the issuance of the original patent. Its number is 11,664. On July 23, 1901, an improvement patent, No.678,949, was granted to complainant. The bill is in the usual form, and alleges conjoint infringement of both patents, and prays for an injunction and accounting. The defendants named in the title are mere users of the machine manufactured by the inventor W. H. Rickey, under patent No. 660,277, issued to him by the Patent Office October 23, 1900, nine months prior to the date of complainant's improvement patent, but subsequent to the filing of the application therefor. Infringement of claims 1, 2, 3, and 4 of the reissued patent, and of claims 2, 3, 4, 18, 21, 23, 24, 25, 26, 27, 31, and 33 of the improvement patent, is charged. The essential elements of the invention are concisely stated in claim 2 of the reissue, which reads as follows:

'(2) An ironing machine having a rotatable head, a circular groove in the head, and guide on the same plane as a side of the groove, forming a projecting wall to the latter, substantially as set forth'

The specification of the reissued patent says:

'An object of my invention is to greatly increase the convenience and facility of adjusting the edge of the collar in the groove, thus to increase the rapidity with which the work can be done. In this relation my invention comprises an ironing machine in which the rotating head has a peripheral groove, the lower wall of which is wider than the upper wall, and projects to form a step, rest, and guide for catching the cuff or collar, and guiding the edge thereof into the groove.'

Claim 2 of the improvement patent substantially embodies all the elements of the enumerated claims of the reissued patent, and an arrangement by which the ironing heads, varying in size and placed in two parallel lines, yield when the collar or cuff comes in contact, and move back into place when the article is withdrawn. The claim reads as follows:

'(2) An ironing machine comprising two or more grooved circular heads, adapted to iron the edge of a starched collar or cuff, and yielding supports for the heads, whereby the latter are permitted to follow the outline of said edge as the article bears thereon.'

The defenses interposed are many. They relate chiefly to the inoperativeness of the reissued patent, anticipation, expansion of claims, and noninfringement. No expert witnesses were sworn on the hearing by defendants to explain why any of the many patents, foreign and domestic, set out in the answer in anticipation of the reissued patent. Two only were offered in evidence by the defendants, a third finding its way into the record by stipulation. These patents are Burges' United States patent, No. 557,766, of April 7, 1896 (application filed October 26, 1895); Senkbeil German patent, No. 57,148, dated June 15, 1891; Gantenberg German patent, No. 77,219, dated October 10, 1894. It is submitted by the defendants that the analysis made by complainant's expert witnesses of these prior patents, and the inferences deducible from their testimony, convincingly disclose the inoperativeness of complainant's machine; that if the prior ironing machines in evidence are inoperative the complainant's machine, by comparison, is also practically incapable of successful operation; and, conversely, if the court decides that the complainant's machines are practically inoperative, then the patents are completely anticipated by the Senkbeil, Gantenberg, and Burges patents.

The defense of anticipation will first be considered. According to the views of the defendants, complainant's prima facie case discloses the invalidity of the reissued patent on two seemingly inconsistent theories. Its validity is challenged on the one hand because the testimony tends to establish the inoperativeness of the Gantenberg and Senkbeil patents cited in anticipation, and because the asserted differentiating features between those patents and the reissued patent do not prove operativeness in complainant's machine. This assertion requires an examination of the testimony offered by complainant to substantiate the practical utility of the machine for which the patent was granted. Before so doing, I will endeavor to make clear what the patentee claims for his invention. According to his view, a groove in an iron circular rotatable head designed to smooth the rough edges of cuffs and collars requires in its construction walls or sides slanting from the groove to the periphery, and conforming to the rounded shape of the collar or cuff edge. The specification of the reissued patent sets out that the rotatable ironing head by preference is cone-shaped, and is provided with steps having peripheral grooves, the lower walls of which are on a line with the next lower step. He does not, however, confine himself to that method of construction, and it appears by the proofs that several ironing rotatable heads having suitable grooves may be used alternately by the operator to facilitate the ironing. Any one of the curved grooves suitable for the work may be used, depending somewhat upon the roughness of the collar or cuff edge. The ironing head or series of heads described under patent No. 678,949, and improvement of the reissued patent, are supported from below a table or standard upon which they are mechanically attached. The slant of the grooves, as already pointed out, enables the operator to dexterously guide the collar or cuff to the rounded part and to thereby smooth its edge. In order to facilitate the ironing and successfully operate complainant's machine, it is essential that the grooves should be circular and accurately conform to the specification. Unless the groove guide or ledge described in the claims is present, the machine is not capable of practical operation. The testimony of the expert witnesses is altogether directed to the inoperativeness of the prior art and the practical utility of the machine described in the reissued patent. The proofs show that a V-shaped groove not only retards the ironing, but, on account of its conformation, tends to throw the article ironed out of the smoothing part of the groove, while a parallel or rectangular groove tends to roughen the side or edge of the cuff or collar ironed. Such a result obviously defeats the object of the patent, and renders the success of such grooves impracticable. It is unnecessary to decide whether the Burges patent is prior to that of complainant's invention, as I am satisfied by the evidence that it did not suggest the invention in suit. The machine is for folding a collar, and the groove there described has an edged disk which pressed the collar into the groove. It has no guide or ledge, and therefore would be unable to perform the functions of complainant's groove. Defendant's best reference, the Gantenberg patent, is for ironing edges of collars and cuffs. It has a rotatable head and circular groove. Clearly, this invention is first, and if practically operative must limit the scope of the claims in suit. The Senkbeil machine is a hand device, and has longitudinal fixed grooves, without a guide or ledge, and is only practicable for ironing articles of uniform thickness. Is either invention capable of successful practical operation? The expert witnesses, tow of whom are practical laundrymen, uniformly negative their operativeness. Through the absence of the guide or ledge to facilitate ironing, the Senkbeil and Gantenberg inventions are, according to the experts, incapable of successful practical operation. I am of the same opinion. The guide or ledge of the patent in suit serves a distinctive object, and undoubtedly is a valuable adjunct to the circular grooving of complainant's invention. That the grooving is circular, and that the patentee intended to describe a circular groove, does not admit of serious doubt. The defendant vigorously insists that a scrutiny of the cross-examination of the expert witness Leary discloses that the walls of the grooves shown in the reissued patent are parallel, and not slanting or flaring, and therefore the reissued patent comes directly within the scope of the Gantenberg patent. The witness, however, explains that the details of the drawings of Figs. 2 and 3 of the Fay reissued patent are of such a small scale that it was difficult for him to discern whether there was a slant of the outer wall to the groove or not. The proofs sufficiently show that the walls of the groove in complainant's invention were not parallel and that the grooves were circular in form. A separate and distinctive element, although a very small one, has made the Fay machine practical and useful. The defendants had it in their power to show by evidence that the groove without slanting walls was capable of practical usefulness. This they have failed to do. They prefer to rely on the inferences which they claim may be drawn from the testimony of complainant's witnesses, that if the Senkbeil and Gantenberg devices were inoperative the reissued patent must suffer the same fate. The uncontroverted evidence, however, does not warrant such inferences. The testimony is not susceptible of that interpretation. The specifications and drawings of the alleged anticipating foreign patents are not sufficiently clear to enable me to determine that the Senkbeil and Gantenberg...