Keystone Driller Co v. Northwest Engineering Corporation Same v. Harnischfeger Corporation Same v. Co 8212 133
| Citation | 79 L.Ed. 747,294 U.S. 42,55 S.Ct. 262 |
| Decision Date | 07 January 1935 |
| Docket Number | BUCYRUS-ERIE,Nos. 131,s. 131 |
| Parties | KEYSTONE DRILLER CO. v. NORTHWEST ENGINEERING CORPORATION. SAME v. HARNISCHFEGER CORPORATION. SAME v.CO. —133 |
| Court | United States Supreme Court |
Mr. Clarence P. Byrnes, of Pittsburgh, Pa., for petitioner.
Mr. Frank Parker Davis, of Chicago, Ill., for respondent.
The petitioner brought suit against each respondent in the District Court for Eastern Wisconsin, charging infringement of claim 4 of the Clutter patent, No. 1,317,431, claims 6 and 7 of the Wagner patent, No. 1,476,121, and claims 6 and 9 to 14, inclusive, of the Downie patent, No. 1,511,114. The suits were consolidated, and the court found that the claims were valid and infringed. The Circuit Court of Appeals concluded that none of the respondents' machines infringed claim 4 of the Clutter patent, and that the specified claims of the Wagner and Downie patents were invalid for lack of invention.1 By reason of asserted conflict of decision2 we granted certiorari.3
The patents in question relate to excavator attachments used in connection with a base carrying suitable machinery for operating the lines or cables controlling the attachments. As the machinery on the base is no part of the structure disclosed, it is not the subject of any of the patents.
Claim 4 of the patent is:
'In an excavating machine a pivoted boom, a scoop-carrying member pivotally connected therewith, a pulling member for elevating and lowering said boom, a pivotal means carried by the boom and connecting the pulling member therewith, and (with) said scoop-carrying member, a scoop connected with the scoop-carrying member and projecting toward the boom, and a pulling member connected with said scoop.'
In the patent drawing is shown a boom pivoted at its base, and a scoop-carrying member, often called a ditcher stick, pivoted to the outer end of the boom. On the boom near its outer end are two uprights, pivoted to the boom, which support a pulley. Two links extend from the axle of the pulley to the top of the ditcher stick, to which they are pivotally attached. The purpose of the contrivance is to raise and lower the boom and to advance or retract the scoop by taking up or slacking a cable passed through the pulley. A second cable, attached to the scoop, limits the outreach of the ditcher stick and pulls the scoop toward the base to fill it with earth. Thus by tension on the hoisting line the boom can be raised and the scoop held out beyond the end of the boom; by slacking on that line the boom can be lowered until the scoop comes into contact with the earth; by tension on the scoop line the scoop can be pulled against the earth until it is filled. By again taking up on the hoisting line the boom can be raised, the scoop extended, and placed in position for the discharge of its contents. The respondents found they could accomplish the same results by doing away with the links pivoted to the boom, carrying the pulley and the cross-links connecting the pulley with the stick. In some of their apparatus the line passes over pulleys in brackets rigidly mounted on the boom and is fastened to the upper end of the stick; in others a pulley is attached to a link pivoted to the top of the stick; and in still others the pulley is firmly fixed upon the end of the stick.
No claim of novelty is made for a pivoted boom, a ditcher stick pivoted on the end of the boom, or a scoop fastened to the bottom of the stick opening toward the base. The petitioner asserts that the invention consisted in the pivotal means carried by the boom and pivotally attached to it and to the ditcher stick; that this constituted a revolutionary improvement, which for the first time made in-digging excavators practicable for use in all sorts of material; that, as the patent is basic, it should be liberally construed and a large range of equivalents allowed. The respondents, on the other hand, say the invention is in a developed and crowded art, and both the prior art and the evolution of the claims in the Patent Office proceedings require a strict construction of the claim in suit. They assert that in those of their appliances wherein the pulley is held by immovable brackets on the boom there is no 'pivotal attachment' of the pulley to the boom, and in those wherein the pulley is linked to the upper end of the ditcher stick, or firmly affixed to it, they neither use a 'pivotal means' nor one 'carried by the boom.' The petitioner replies that any pivotal means comes within the claim; that the method shown in the drawing and described in the specifications is merely a preferred form of application; that a pulley is a pivotal means, and, since the ditcher stick is attached to the boom, if the pulley is affixed or linked to the stick, it is necessarily 'carried' by the boom. And as in each of the accused devices the respondents employ a pulley either fixed on the boom or the stick or linked to the latter, each employs pivotal means carried by the boom and pivotally connected with the boom and the stick.
We hold, in view of the prior art and of the file wrapper, the petitioner is not entitled to a broad reading of the claim. It is unnecessary to determine whether within the language used a pulley is 'a pivotal means,' or if attached only to the stick it is 'carried by the boom,' or whether a pulley so attached can properly be said to connect the pulling member, i.e., the cable, with the boom and the ditcher stick, since a reading of the terms employed as petitioner's position requires precludes patent ability, in view of the prior art, and, in addition, would be contrary to the limitation which the Patent Office file wrapper shows the applicant placed upon his asserted invention.
At the date of filing the application, excavators with pivoted booms, with ditcher sticks pivoted to the booms, with lines attached to the scoop and the ditcher stick, and with sheaves upon the boom and at the upper end of the stick, had been patented, and some had been used. Contrivances of these sorts, in which the same line or cable could be used to elevate the boom and to extend the lower end of the ditcher stick, had been in use and had been patented.4 Prior to Clutter, several excavating machines had embodied the device of attaching a pulley by a link to the top of the ditcher stick of the fixing of a pulley on the end of the stick.5
Clutter's application as shown by the file wrapper broadly claimed 'means for operating the other (upper) end of the pivotally attached member (ditcher stick) so as to adjust either scoop or boom, singly or together, at the will of the operator.' The claim was rejected on the earlier Cross and Fairbanks patents. All of the claims were canceled and new ones submitted, which included claims 3 and 4 of the patent. These two were alike in the use of the phrase 'a pivoted (or pivotal) means carried by the boom and connecting the pulling member therewith and with the scoop-carrying member.' In order to distinguish this construction from that of Cross or Fairbanks, the applicant's solicitor in a printed argument said:
Claims 3 and 4 so phrased were allowed, but the...
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