Herman v. Youngstown Car Mfg. Co.

• Citation: 191 F. 579
• Decision Date: 07 November 1911
• Docket Number: 2,130.
• Parties: HERMAN v. YOUNGSTOWN CAR MFG. CO.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

191 F. 579

HERMAN v. YOUNGSTOWN CAR MFG. CO.

No. 2,130.

United States Court of Appeals, Sixth Circuit.

November 7, 1911

T. A Connolly and J. B. Connolly (Connolly Bros., on the brief) for appellant.

C. E Brock (Elwood O. Wagenhorst, on the brief), for appellee.

Before WARRINGTON, KNAPPEN, and DENISON, Circuit Judges.

DENISON Circuit Judge.

In the court below, Herman brought an infringement suit based upon three patents issued to him, being, respectively, No 721,041, dated February 17, 1903, No. 743,160, dated November 3, 1903, and No. 777,096, dated December 13, 1904; and all having reference to apparatus for making blue prints. The last-named patent, No. 777,096, was issued upon the application of earliest filing date, and contains the broadest claims. The Youngstown Company, the defendant, presented, by answer, the usual issues of validity and infringement. The court below dismissed the bill, on final hearing, on the merits, and complainant appealed.

The structures involved, both complainant's and defendant's, consist essentially of a frame, carrying an open-ended, vertical cylinder which has transparent sides surrounded by opaque wrappings. The negatives or tracings are placed in contact with the outside of the glass cylinder. The sensitized paper is placed next, and the wrappings are then applied so as to hold the tracings and the paper firmly in position. Then an electric light, suspended from the frame and hanging over the cylinder, is automatically lowered into the cylinder, resulting in printing the image upon the paper. After a predetermined time, the electric current is automatically cut out, thus ending the exposure, the lamp is manually raised from the cylinder, and the wrappings and prints are removed. This type of apparatus has proved very effective, and has, for all large uses, superseded the old plan of sun exposure in flat printing frames.

The first apparatus of this type is found in the German patent to Kratzenstein, published in 1890. He had the vertical glass cylinder and the hanging light to be lowered into it. The operation of raising and lowering was manual, and the illustrated lamp was not electric. British patent No. 569, of 1896, to Hall, described, in the provisional specification, an apparatus of this character in combination with an arc lamp to be passed inside of the cylinder for its entire length, with regulated motion controlled by a clock-work escapement; and by the complete specification and drawings it elaborated this idea, showing a pendulum and escapement permitting an electric light gradually to descend within the glass cylinder. Fullman, by United States application antedating, in its filing, Herman's application, showed a complete and elaborate apparatus of the Hall type, using the same pendulum and escapement movement, but containing an automatic cut-out for the light.

Herman's claimed broad invention and to which claims 12 and 13 (hereafter quoted) of patent 777,096 are directed, consisted in combining, with the glass cylinder and the vertically moving lamp, a hydraulic cylinder, for the purpose of controlling the downward motion of the light. To this end, he employed a closed, vertical cylindrical case containing a liquid, and having a moving piston carried on a hollow piston rod. Through the piston were comparatively large ports, closed on the upper side by ordinary flap valves. In the side of the hollow rod and above the piston was a comparatively small opening, the size of which could be regulated by a sliding valve filling the interior of the hollow rod, and operated longitudinally by a stem passing out through a threaded engagement at the upper end of the rod, and turned by an attached thumb nut or wheel. This piston could be lowered rapidly, the liquid passing easily and swiftly from the lower to the upper side of the piston. The same power would raise it slowly, because the passage of the liquid from the upper to the lower side of the piston must be through the small opening into the hollow rod; and obviously this speed could be regulated by the valve stem so as to vary the motion from its highest limit down to nothing. This hydraulic cylinder was attached to the frame, and the lamp-suspending cord was carried over a pulley to the upper end of the piston rod. The time of desired exposure being known, the valve in the hollow rod could be so adjusted that the downward movement of the lamp would occupy exactly this amount of time.

No anticipation of these claims, 12 and 13, is alleged, but it is said that there was no invention in substituting for the escapement of the Hall apparatus the hydraulic cylinder which was well known in other combinations for accomplishing analogous results; and, as the most analogous existing uses, we are pointed to resistance cylinders in a door check, in a hydraulic elevator, and in a block-signal operating device. These three instances undoubtedly show generally similar hydraulic cylinders, and the structure of the door check is closely similar; so that, in order to find any substantial validity in these claims, we must determine whether invention was involved in such adaptation as Herman made. Such a question is essentially one of fact, and, in its solution, we get little help from the decided cases. They lay down general rules which are familiar, but the application of these rules to specific facts depends upon the force which those facts carry to those who determine the issue. It is sufficient to call attention to three of the more recent decisions of this court upon the subject, and to the cases there cited. National Tube Co. v. Aiken, 163 F. 254, 258-263, 91 C.C.A. 114; Electric, etc., Co. v. Westinghouse, etc., Co., 171 F. 83, 92, 96 C.C.A. 187; Morgan, etc., Co. v. Alliance, etc., 176 F. 100, 108, 109, 100 C.C.A. 30.

The problem was to interpose against the weight of the falling lamp a resistance which should insure a steady, uniform motion of the lamp, at the same speed in all its parts, and with a smoothness which should not interfere with the perfection of the light, and with an environment such that the speed and length of exposure could be determined in advance, and could then be automatically regulated, and such that the electric current could be applied and controlled. In the door check the resulting control of the motion is uneven. The leverage, and, therefore, the power, vary in different parts of the swing; the apparatus is rough; approximate results are sufficient; and there is little delicacy in operation. The only substantial function is to check. The elevator involves a large structure and the manipulation of great power. Its motion is not steady, but varying. Its weight, and so the required resistance, vary constantly with its load. An elevator, which must move smoothly and automatically from top to bottom of the shaft without stop, would be useless. The railroad block-signal device does, it is true, provide for a continuous, regular, even motion, but the mechanism and the operation are rough, not delicate. The railroad signal post and the photo printing frame are in fields far away from each other. Considering these things, the chief difficulty which we have in finding invention results from the statements in Hall's complete specification in his patent of 1896 that: 'The lamp may be lowered into the cylinder E by hand, or a dash-pot, clock-work or other escapement, or any other suitable mechanical means may be adopted for controlling and regulating the motion of the lamp into the cylinder and for passing it from top to bottom thereof by gradual and continuous motion.'

The hydraulic cylinder of Herman is said to be a dash-pot, and, if so, the above extract tends to show that the substitution of cylinder for clock-work would occur to one skilled in the art. However, the hydraulic cylinder, as adapted by Herman, is much more than a mere dash-pot. This reference is, at the best, only a suggestion. Hall did not show any such construction in this patent, and the next year, in a succeeding patent, he abandoned even the idea. As a suggestion, it is a 'long shot.' (Judge, now Mr. Justice, Lurton, 163 Fed.at page 258, 91 C.C.A. 114.) Abel in 1898, and Shaw in 1899, obtained British patents upon this type of apparatus, and did not use a hydraulic cylinder or anything else that could be called a dash-pot. Fullman, also, in 1901, adhered to the clock-work, and Schildhauer in 1901 used an electric motor. The problems of construction involved in the application of the dash-pot idea might have seemed, to those who observed Hall's suggestion, to make it impracticable. Certainly no one adopted it, and Hall's abandonment of it in his next patent indicates that he did not regard it as important, and goes far to neutralize his first reference. Considering the vagueness of this suggestion, the modifications, and adjustments required for its application to this art, the fact that no one else in the intervening years attempted to make such application, the very considerable utility it appears to have and the burden resting on defendant to establish invalidity, we conclude that Herman is entitled to credit for more than skill, and that an invention existed.

The twelfth claim reads as follows:

'12. In a printing apparatus, the combination of a printing cylinder suitably mounted, an electric lamp, electrical connections with said lamp, a liquid cylinder, a hollow piston rod operating in said liquid cylinder, and means whereby the hollow piston rod is automatically raised by the counterbalance-weight of the lamp, substantially as described.'

This claim embodies the essential parts of the combination we have been discussing. It is criticised as a basis for an infringement decree, in two respects: (1) The printing cylinder of the...