Foxboro Co. v. Taylor Instrument Companies

• Citation: 157 F.2d 226
• Decision Date: 06 January 1947
• Docket Number: No. 188,Docket 19997.,188
• Parties: FOXBORO CO. v. TAYLOR INSTRUMENT COMPANIES.
• Court: U.S. Court of Appeals — Second Circuit

157 F.2d 226 (1946)

FOXBORO CO. v. TAYLOR INSTRUMENT COMPANIES.

No. 188, Docket 19997.

Circuit Court of Appeals, Second Circuit.

July 25, 1946.

Rehearing Denied September 12, 1946.

Writ of Certiorari Denied January 6, 1947.

Drury W. Cooper, of New York City, D. Clyde Jones, of Rochester, N. Y., and Drury W. Cooper, Jr., of New York City, for appellant.

Charles C. Ladd and Edward G. Curtis, both of New York City (Marshall M. Holcombe, Gordon K. Lister, and Blair, Curtis & Hayward, all of New York City, of counsel), for appellee.

Before L. HAND, SWAN, and CHASE, Circuit Judges.

Writ of Certiorari Denied January 6, 1947. See 67 S.Ct. 494.

L. HAND, Circuit Judge.

The defendant appeals from a judgment holding valid and infringed all claims but number eighteen of Reissue Patent No. 20,092, issued on September 1, 1936, to Clesson E. Mason, the original having been issued on February 14, 1933 (No. 1,897,135), upon an application filed on September 15, 1930. The district court discussed the case at length in a published opinion (Foxboro Company v. Taylor Instrument Companies, 58 F.Supp. 313), to which we refer for an account of the general nature of the invention, of the specifications and claims, and of the contentions of the parties. Assuming that the reader will be familiar with these, we find it necessary to consider only two questions: (1) Whether Mason forfeited his patent because of his failure to disclaim certain of his claims; and (2) whether the claims are invalid, because they do not describe any patentable advance over the art, as it had developed on September 15, 1930.

The answer to the first question depends upon the effect of Mason's disclaimer of claims two, three and five of the original patent on May 11, 1933, shortly after it issued. Claim one and claim four were retained, and claim four is precisely the same as claim two of the reissue. A different question would have arisen, had original claim four not been in the patent, and had Mason disclaimed claims two and three and then attempted to revive claim three, adding to it the new element by which original claim four was different from original claim three. Since, however, he carried original claim four into the reissue unchanged (as claim two), there never was a period during which he was not claiming the invention which it defined; and the question comes down to whether the disclaimer of original claim two and three demanded the disclaimer also of claim four. In Maytag Co. v. Hurley Machine Co., 307 U.S. 243, 59 S.Ct. 857, 83 L.Ed. 1264, the Supreme Court held that, when a patentee had disclaimed two claims which had been held invalid, but failed to disclaim a third which was not "definitely distinguishable" from the disclaimed claims, he forfeited his patent. It is true that Roberts, J., added (307 U.S. at page 245, 59 S.Ct. at page 859) that the owner of a patent, "by disclaiming those claims, has confessed that the patentee therein claimed `more than that of which he was the original or first inventor or discoverer'"; and the defendant argues that this confession must be considered a conclusive admission that the matter contained in original claims two and three was in the prior art, from which it would follow that the differentia of the original claim four from those claims must be enough to constitute invention. In the case of claim four the differentia was as follows: "Said chamber being adjustably movable as a whole and by said adjustment affecting movement and adjustment of one of said elements relative to the other." This language can only refer to the fact that bellows, "39," can be moved by means of the "frame, 45," so as to adjust the nozzle to the flapper; and that, the defendant argues, would not require invention. If the language quoted from Maytag Co. v. Hurley Machine Co., supra,¹ be read literally, this argument would not be without force; but a number of courts — beginning with Judge Archbald's decision in Manhattan General Construction Company v. Helios-Upton Co., C.C.1905, 135 F. 785, 802 — have decided that a disclaimer should not be taken as an admission by the patentee that the disclaimed matter was not patentable;² and we do not believe that the Supreme Court intended to overrule this doctrine. The consequence of so holding would be indeed severe, for it would result, whenever the patentee made any disclaimer, that he risked his whole patent except in so far as his remaining claims were patentably distinguishable from those disclaimed. In United Chromium, Inc., v. International Silver Co., supra,² 60 F.2d at pages 914, 915, we stated our reasons for thinking that by disclaimer a patentee does not so concede. We have tacitly assumed for argument that the doctrine of Maytag Co. v. Hurley Machine Co., supra,³ applies as much when a patentee voluntarily disclaims one claim, but fails to disclaim another which is not "definitely distinguishable," as when a court has declared a claim invalid. We do not, however, mean to express any opinion on that question.

We limit our consideration of the validity of the claims to those on which the plaintiff alone relies: reissue claims two, five, ten and thirteen. Of these four, two and ten are "proportioning" claims, and claims five and thirteen are "reset" claims. All these were in the original patent in substantially the same form that they appear when reissued; and the same indeed applies to all the first sixteen claims of the reissued patent. As to these we need not consider whether Mason showed adequate excuse for any reissue whatever, because, even though he did not, the surrender of the original patent, resulting from the acceptance of the reissue, did not invalidate any claims which he carried over into the reissue. For a time this was in some doubt (Eby v. King, 158 U.S. 366, 15 S.Ct. 972, 39 L.Ed. 1018), but the amendment to § 64, Title 35, U.S. C.A., in 1928, has now set the question at rest. Schenk v. United Aircraft Corp., D. C., 43 F.Supp. 679, 686. Although that amendment uses the word, "identical," we read this as "substantially identical," and the first sixteen reissued claims are substantially identical with their originals. Finally, we do not think that claims two, five, ten and thirteen are too vague to be valid. They are, indeed, stated with the turgidity customary in such documents, but it is possible to identify with sufficient certainty those parts of the disclosure to which they refer. We proceed therefore to consider their validity in the light of the art.

In November, 1924, Thomas Lindsay filed "complete specifications" for a patent which issued on May 28, 1925 (1925, Brit. Pat. 234,194), for a controlling apparatus of the same general class as Mason's. The single figure shown is for the control of the pressure in a steam pipe by means of a steam valve, operated by a pulley and weight which move it in one direction, and a piston and cylinder which move it in the opposite direction. We can see no patentable distinction between moving the valve in this way and attaching it to a diaphragm opposed by a spring; and indeed, Lindsay, who had described such a diaphragm in an earlier patent (1924 Brit.Pat. 218,370) incorporated this in his patent as an alternative (page 5, lines 37-41). The piston is moved against the weight by the pressure of a "non-compressible" fluid, introduced into the cylinder, whose waste from the cylinder allows the weight to pull the piston back. Control of the steam pressure is accomplished by tapping the main pipe by the lead, "35," to the bellows, "34," in a steam tight chamber. The compression of this bellows raises the "lever, 37," against the pressure of the "spring, 38," and at the end of this lever is the "cup, 31," which acts as a baffle for the nozzle, "23." So far as we can see, this is a precise analogue of Mason's flapper and Bourdon tube, except that Lindsay's regulating device — bellows, "34" with its spring, "38" — and his damping device — the bellows, "43" with its spring, "41" — act upon the flapper. The plaintiff sets great store on this distinction.

The "non-compressible fluid" which enters the piston comes into the control system by means of the "pipe, 13," which ends in the "valve, 14," which, when it is open, leads in turn through the "pipe, 11," to the cylinder, and when closed, permits the cylinder to waste the fluid. Branching from the "pipe, 13," before it reaches the "valve, 14," is the lead, "20," which ends in the "needle valve, 18," beyond which is the lead to one side of the "diaphragm, 16," the other side of the diaphragm being in contact with the stem of the "valve, 14." Beyond the "needle valve, 18," and, opposite to the lead into the diaphragm, the "pipe, 21," leads away and ends in the nozzle, "23," for which the "cup, 31" acts as a flapper. If we assume the "cup" to be sealing the nozzle, the pressure in the "pipe, 13," will be held by the "cup" and will pervade the whole system, having only two possible outlets: through the "valve, 14," when it is displaced, and through the nozzle, "23." The pressure upon the diaphragm, "16" when it becomes strong enough to overcome the resistance of a "spring, 15," will unseat the "valve, 14," and the fluid will pass into the cylinder through the "pipe, 11" and shift the control valve, "3." If the pressure in the steam pipe were to become strong enough to contract the bellows, "34," the "lever, 31," would rise and would open the nozzle, "23," and the system would return to its original position.

If the machine had done nothing more, the result would have been a series of corrective movements of the valve, "3," which would overcompensate: a phenomenon known in the art as "hunting." In order to prevent this and to damp the control proportionally to changes in the steam pressure in the main pipe, Lindsay added another set of elements. Leading out of the "pipe, 11," just as it feeds into the cylinder is a "pipe, 46," controlled by a needle valve, 47." This pipe...