Krell, Auto Grand Piano Co. of America v. Story & Clark Co.

• Decision Date: 15 April 1913
• Docket Number: 1,968.
• Parties: KRELL AUTO GRAND PIANO CO. OF AMERICA v. STORY & CLARK CO. et al.
• Court: U.S. Court of Appeals — Seventh Circuit

207 F. 946

KRELL AUTO GRAND PIANO CO. OF AMERICA v. STORY & CLARK CO. et al.

No. 1,968.

United States Court of Appeals, Seventh Circuit.

April 15, 1913

[Copyrighted Material Omitted]

Russell Wiles and P. C. Dyrenforth, both of Chicago, Ill., and Joseph A. Minturn and Frank W. Woerner, both of Indianapolis, Ind for appellant.

Frank F. Reed and Edward S. Rogers, both of Chicago, Ill., for appellees.

Before BAKER and KOHLSAAT, Circuit Judges, and WRIGHT, District Judge.

BAKER Circuit Judge (after stating the facts as above).

I. Is the exhibited patent inevitably void by reason of facts within judicial notice?

In Lange v. McGuin, 177 F. 219, 101 C.C.A. 389, this court said:

'The office of a general demurrer to a bill is to test the legal sufficiency of the averments to state a good cause of action in equity. Of course, a demurrer may be addressed to a bill for infringement of a patent as well as to any other bill. And, though the bill be in due form and complete in all its parts, yet, if the exhibited patent be inevitably void either on its face or by reason of matters of universal knowledge, the demurrer should be sustained.

'Bills in patent causes and demurrers thereto are not so unique that they are exempt from the general principles and rules of equity pleading. And therein it is not the province of a demurrer to speak of matters beyond the bill. Of course, every bill is written against the background of common knowledge; and in that view a demurrer may be said to invite the chancellor to take judicial notice of the background. But if a bill, in and by its own averments, states a prima facie case, that case cannot properly be overthrown by the chancellor merely on the ground that he judicially knows of facts that would support an answer. His judicial knowledge must go farther, and be so broad and all-embracing that he can properly hold that no facts exist that would tend to controvert the supposed answer and support a replication and the bill. This is so because, if such facts exist, the complainant is entitled to a hearing where he can present and argue the facts, and such a hearing cannot be had on demurrer to the bill. ' ^[1] As a general formula it is said that courts will treat as evidence 'facts of universal notoriety,' 'facts that may be regarded as forming a part of the common knowledge of every person of ordinary understanding and intelligence'; and that for the purpose of 'refreshing the memory' reference may be made to 'standard publications.' Public libraries and museums are open to all. But is every book a standard publication? Is everything in a standard publication true? If true statements were somehow marked for immediate identification, would all of them be known to the person of ordinary understanding and intelligence? Is there nothing in accessible records and memorials that is rare, curious, not commonly known? But we find it unnecessary to inquire how far, if at all, appellees have been flattering the common knowledge, for, if every item be accepted as evidentiary, we are nevertheless unable to draw therefrom the finding of ultimate fact which, under the rule stated in Lange v. McGuin, would be necessary to defeat the patent.

Two classes of matters are brought forward, general publications and patents.

All that we learn from the words and pictures of the publications is that in ancient desks, cabinets, and casings of musical instruments it is common to find recesses concealed by covers that slide or are variously hinged. The precise and limited combination of the patent in suit is not found. This combination is restricted to a piano that can be played both manually and mechanically, and has to do with an instrument that in form and mechanism has wholly developed since the ancient cabinet makers were at work.

Eighteen patents are cited. Half of these, by reason of their dates, would be eliminated as evidence of a defense if appellant on rebuttal should carry Welin's date of invention back to the beginning of the two-year period prior to his application. That is, patents and other publications since July 20, 1902, may be overcome by evidence which, if it exists, cannot be noticed except from proofs duly introduced, and which judicial knowledge or foreknowledge cannot say is nonexistent.

Among those that antedate July 20, 1902, we find none that in terms or apparent scope is exactly anticipative of Welin's combination. So the question would be whether the disclosures were so suggestive of the new modifications and constructions of Welin that mechanics skilled in the art of building combination-pianos would, or could when called on, at once adopt the suggestions, or whether there still remained room in the art for the exercise of the inventive faculty in producing the Welin device. If these prior patents be taken as proving that common knowledge includes the facts, that, at the date of Welin's production, combination-pianos were old and that various attempts to improve the location and relation of parts had been made, they do not afford the special knowledge necessary to determine whether the paper attempts in fact advanced the practical art; whether the mechanical relations between the parts necessary for manual playing and the parts for mechanical playing rendered the Welin construction difficult, if not seemingly impossible; whether mechanics skilled in the practical art had long and vainly striven to achieve the Welin result; and whether, if all the evidence respecting the art, both paper and practical, left the presumptive validity of the patent wavering in the balance, the device filled a special need, met with prompt and great success, and was recognized as a meritorious invention by those specially skilled and interested in the art, either by their keeping away from the patent, or by their paying royalties for its use.

In this case no one thing among those of which we are asked to take judicial notice squarely anticipates Welin's combinations. Though all the elements may be old and may have been variously combined, a new combination of them may involve invention. Granting that appellees' showing and argument, in the absence of other evidence, might justify a finding that the defense of want of invention was sustained, we cannot find as a fact that judicial knowledge extends to the point of knowing that appellant can produce no competent and relevant evidence in support of the patent's presumptive validity and in antagonism of the inference of ultimate fact sought to be drawn from the evidence for the defense.

II. Are the claims void because elements have been aggregated and not patentally combined?

In the books the word 'aggregation' is used in different senses. Of one of these, Richards v. Chase Elevator Co., 158 U.S. 299, 15 Sup.Ct. 831, 39 L.Ed. 991, on petition for rehearing 159 U.S. 477, 16 Sup.Ct. 53, 40 L.Ed. 225, is a good illustration. There Richards brought together certain elements in order to 'do away with elevators, by securing the continuous and automatic transfer of grain from one car to another, weighing it in transit, and preserving the identity of each lot. ' On examination of the prior art it was found that each element was old. Invention, therefore, if present, lay in a new combination of old elements. But on analysis it appeared that Richards' combination 'resolves itself into the omission of the storage feature and a necessary incident thereto'; that is, Richards took an old combination and omitted one element and also its function. So with respect to neither the elements considered separately nor the combination viewed as an entity had Richards produced anything new. The implication, however, is that, if he had, a patentable combination might have been found. In other words, the claims, in and of themselves, independently of the prior art, did not show that the elements were incapable of coacting to produce a unitary result. If the word 'aggregation,' in the sense that a patent is 'void for lack of invention in view of the prior art,' is sought to be applied in this case, the inquiry reverts to the question of fact considered in the first part of this opinion.

In another sense (which, in the interest of accurate terminology, might well be taken as the exclusive sense) 'aggregation' means that the claims, in and of themselves, independently of the prior art, show that the elements are incapable of coacting to produce a unitary result. Illustrative of this is the case of Reckendorfer v. Faber, 92 U.S. 347, 23 L.Ed. 719. 'A handle in common, a joint handle, does not create a new or combined operation. ' In the instances of pencil and eraser, pencil and pen, corkscrew and knife blade, tooth pick and ear spoon, granting that each element is novel, the claims, in and of themselves, independently of the prior art, affirmatively disclose that a common handle cannot make any two or more of those elements coact to produce a unitary result, a combined operation.

Now, in Welin's device it is evident that the controlling levers C and the fall-board F have no immediate relation with each other. It is also manifest from the face of the patent that these elements are intended to coact through the mediation of the operator. That such coaction produces new and improved results appellant argues from the face of the patent and asserts can be established by evidence; but at this stage of the case it is enough, on the question of fact, to accept the presumption of utility arising from the grant.

There remains the question of law: Can a claim for a mechanism be saved from the doctrine of aggregation, as last defined where there is no direct coaction between the elements, and where the only coaction comes through the mediation of the operator (or, what seems...