Lemley v. Dobson-Evans Co.

• Citation: 243 F. 391
• Decision Date: 05 June 1917
• Docket Number: 2936.
• Parties: LEMLEY v. DOBSON-EVANS CO.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

243 F. 391

LEMLEY v. DOBSON-EVANS CO.

No. 2936.

United States Court of Appeals, Sixth Circuit.

June 5, 1917

Stuart C. Barnes, of Detroit, Mich., for appellant.

Chester C. Shepherd, of Columbus, Ohio, for appellee.

Before KNAPPEN and DENISON, Circuit Judges, and SANFORD, District judge.

DENISON Circuit Judge.

In a suit brought by the Dobson-Evans Company against Lemley based upon the first four claims of patent to Schade, No 819,461, May 1, 1906, for improvements in loose leaf binders the District Court thought claims 1, 2, and 4 were valid and infringed, and the usual interlocutory decree was entered. Lemley, the defendant below, brings this appeal. There were several earlier binders of the Schade type. They comprised two or more leaf-holding rings or eyes centrally divided into half rings and with the halves hinged together so that they were adapted to be opened and receive loose sheets with prepared punched holes and then to be closed, whereby the sheets were strung upon the rings. They also embodied a holding cover or plate, whereby the rings and their hinges were retained in proper relative position. The closest resemblance to Schade, in both form and function, is found in Pitt, two years earlier. See Irving-Pitt Co. v. Twinlock Co (D.C.) 220 F. 325; Id. (C.C.A. 2) 225 F. 1022, 140 C.C.A. 603; Irving-Pitt Co. v. Trussell (C.C.A. 2) 240 F. 730, . . . C.C.A. . . .; Irving-Pitt Co. v. Blackwell (C.C.A. 8) 238 F. 177, . . . C.C.A. . . . . See 240 F. 730, for drawing. Pitt provided a back plate of the desired length, and bent so as to form, in lateral cross-section, the arc of a circle with inturned lips. Within this back plate and under the retaining lips he put two rigid flat plates side by side, hinged together, so that the plates constituted hinge leaves, their combined width being slightly greater than the chord of the back plate arc. The back plate was made of resilient material, and the result was that the hinge between the two flat plates would form a toggle joint so that they would naturally fall into an obtuse angle, either above or below the line of the lips of the back plate, and be held there by the spring action of the back plate, and their motion in either direction would be limited by the back plate or its lips. To the two opposite hinged plates, Pitt fastened the lower ends of his half rings. When the upper meeting ends of the ring sections were forced apart, the toggle joint would spring into its upper position and the ring would be held open. When the ring sections were closed, the joint would spring into the lower position and hold them there. The resiliency of the back plate, yielding as the toggle-jointed back plates passed the horizontal plane, imparted to the ring sections this capacity to be held in either position in which they were placed. Schade adopted the Pitt structure, except that he substituted for each of Pitt's two flat toggle-jointed plates, to which ring sections were soldered or otherwise rigidly fastened, a continuous wire, the first part of which was held longitudinally and pivoted under one lip of the back plate, the second part of which was bent out into a lateral plane so as to go slightly past the center of the back plate and then back again to the edge of it, forming a hinge leaf, and the remaining part of which was then developed into a half ring in a plane approximately at right angles to the planes both of the first and second parts. When two of these wire sections were opposed and in suitable engagement provided at the point where they met, they constituted a toggle-joint operating like Pitt. This construction is shown in the drawing herewith reproduced and is recited in claim 1 shown in the margin. ^[1]

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It is not claimed that Schade is anticipated in the complete sense by the prior art, but the defense is that, in view of this art, the change made by him did not involve invention. Rightly to apprehend this art, further structures must be described. By an English patent, Lindner had shown a continuous wire half ring, leaf off-set and edge pivot of a form very close to Schade's corresponding parts; but the two leaf off-sets did not reach each other, and were held in one position by a sliding clamp instead of being held in alternative positions by a spring pressure. Blackmer and Robson also showed two wires, each developed into a half ring, and each containing an off-set portion like Schade. In this, as in Lindner, the two off-set portions did not touch each other, but, unlike Lindner and like Schade, the off-set portion served as a lever which, under spring pressure, held the ring open or closed. An encasing spring member formed an abutment against which this lever rested. Normally, it held the ring closed, and when the ring was forced open, the lever passed the point where the spring would throw it back and the spring held it open. McMillan, instead of using Pitt's flat plates, carried his ring sections themselves to the point of meeting where they were united with a hinge or pivot rod, and he so mounted them in the edges of the base plate that they constituted the spring pressed toggle-joint. The following selected figures from Lindner, Blackmer and Robson, and McMillan illustrate the description that has been given.

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BLACKMER AND ROBSON.

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McMILLAN.

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LINDNER.

The patent of McMillan is No. 794,536, and was issued July 11, 1905, on application filed October 13, 1904. The Blackmer and Robson patent was applied for April 28, 1904, and issued August 29, 1905, being No. 798,157. It is urged that these are not a part of the art prior to Schade whose application was filed January 17, 1905, after the filing of Blackmer and Robson and of McMillan, but before the issue of either. There is no evidence in the record as to the respective dates of invention, save that afforded by the usual printed copies of the three patents admitted by stipulation, and by the certified copy of the McMillan file wrapper and contents. While, in case of objection and insistence upon strict proof, it might be necessary to produce a copy of the Patent Office record in order to show the filing date, yet the practice of relying upon the date shown on the officially printed copy has now become so general that, in this circuit, the printed date is accepted as proof whenever objection is not made. Drewson v. Hartje Co., 131 F. 734, 738, 65 C.C.A. 548. We, therefore, assume that the filing dates of these patents are as above stated.

This court held, in Drewson v. Hartje Co., supra, 131 Fed.at page 739, 65 C.C.A. 548, that a patent, the filing date of which antedated the filing date of the patent in suit, was, prima facie, anticipatory; and we have repeatedly accepted and applied that rule (e.g., Electric Co. v. Westinghouse Co., 171 F. 83, 87, 96 C.C.A. 187; Jackson Co. v. Adler, May 18, 1917, 243 F. 386, . . . C.C.A. . . .; Twentieth Century Co. v. Loew Co., 243 F. 373, . . . C.C.A. . . ., May 8, 1917). To rely upon these cases would be sufficient; but the contrary proposition is urged upon us so often and is observed to such an extent in current decisions that it seems to deserve re-examination. The cases, found cited to support the claim that such a patent is not part of the prior art, are collected in the margin. ^[2] We are satisfied that the confusion arises out of a question of pleading, and has no foundation in matter of substance

The patent statute (R.S. Sec. 4920 (Comp. St. 1916, Sec. 9466)) catalogues five supposedly independent matters of defense, and requires the pleading of those which are to be relied upon. The separation is not analytically perfect; the last clause (b) of 'third' seems to belong to 'fifth,' and since the patentee could not possibly be the first inventor of something that, before his invention, had been patented to or described by another, the entire first clause (a) of 'third' seems quite unnecessary. However, we have to deal with the statute as it is. The two classes now material are:

'Third (a) that it (the invention) had been patented or described in some printed publication prior to his supposed invention or discovery thereof, or (b) more than two years prior to his application for a patent therefor. * * * 'Fourth. That he was not the original and first inventor or discoverer of any material and substantial part ^[3] of the thing patented.'

Since an invention is not 'patented' and the patent is not 'published' until issued, it is apparent that when a patent is pleaded under this third defense and the fourth defense is not involved, its application date is of no importance whatever. It is equally sure that where the tendered issue is whether the patentee was the first inventor (fourth defense) and it appears that another had made the invention, the date of that other's patent, or whether he ever had a patent, or whether the prior description was by printing or without, is immaterial; the date of his invention is the vital thing.

Under the familiar Patent Office rule, the filing of an allowable application is a constructive reduction to practice ^[4] and so there must be a presumption that the patentee had made his invention at the date of his filing. The cases where a substantial change in the invention is made pending the application are exceptional, and, of course, he who alleges an exception must prove it. ^[5] The existence of the presumption is worked out and declared, with perhaps unnecessary care, by the first Circuit Court of Appeals in Automatic Co. v. Pneumatic Co., 166 F. 288, 293, 92 C.C.A. 206. Hence, it assuredly follows that if a patent in suit was applied for January 15th, and there is nothing to carry the patentee's invention back of that date, and if a patent disclosing...