Lyon v. Boh

• Decision Date: 16 June 1924
• Citation: 1 F.2d 48
• Parties: LYON et al. v. BOH et al.
• Court: U.S. District Court — Southern District of New York

1 F.2d 48 (1924)

LYON et al. v. BOH et al.

District Court, S. D. New York.

June 16, 1924.

Drury W. Cooper and H. Frank Wiegand, both of New York City, for plaintiffs.

Frederick S. Duncan, of New York City, and Charles C. Bulkley, of Chicago, Ill., for defendants.

LEARNED HAND, District Judge.

As the case seems to me to turn on the question of infringement, I need not consider the validity of the patent. It will first be best to read the patent as it was granted, next to see what limitations, if any, were placed upon it in the proceedings in the Patent Office, and, finally, how far it may be extended under the doctrine of equivalents.

The specifications state that the invention "relates particularly to a motor vehicle buffer comprising opposed resilient parts or springs, each of which may comprise a transverse member and a longitudinal member, the transverse members overlapping and being secured together by detachable clips." Page 1, lines 14-20. At the outset I note the use of the word "may," which recurs throughout the specifications substantially to the entire exclusion of the indicative mood. Now a patent must show how the invention is to be practiced, and is valid only to the extent that it does. It is idle for a patentee later to insist that he occupied more room in the art than he disclosed, because his specifications were cast in the optional. Such equivocation will not avail to amplify what was described only as a possibility.

The only figures show two separate pieces of flat steel which overlap in front — i. e., "opposed resilient parts" — and are held together by clips. These are bent into loops to form the ends of the buffer, proper, and from the loops turn in a curve through 90 degrees, ending where they are fastened to the frame of the motor car. The specifications speak of the different sections of these pieces as separate members, being in that respect somewhat confusing. That part which engages the obstacle, and takes up the shock, is called the transverse member; that part which is at the end is the loop; that part which is set at 90 degrees to the transverse member is called the longitudinal or attaching member.

The description proceeds then to say: "The transverse members, 1, of the opposite parts of the buffer may overlap one another, * * * and they are preferably detachably, but rigidly held together by suitable connecting means." Page 1, lines 80-84. Again: "This detachable connecting means thus facilitates the relative transverse adjustment of the parts of the buffer, so as to make it readily applicable to vehicles having side frames, * * * which are located at different distances apart." Page 1, lines 91-96. Again: "The tightening of the clip as by the bolt 16 clamps the transverse members 1 in both a vertical and horizontal direction." Page 1, lines 105, 106; page 2, lines 1, 2. Again. "The overlapping transverse members which constitute the impact receiving portions in the front of the vehicle may be brought into alignment with each other and rigidly connected * * * and correspondingly stiffen and reinforce this part of the buffer." Page 2, lines 44-55. Again: The "laterally extending loop always extends outward a substantially fixed distance beyond the vehicle frame which is advantageous in many cases, and also, since the two elements of the buffer are symmetrical, the ends of its overlapping transverse members always project the same distance on opposite sides of the center of the buffer." Page 2, lines 58-66. Again: "The front portion of the buffer, because of the reinforcement secured by the overlapping of the connected transverse members, is very strong." Page 2, lines 85-88. Finally: "By making up this buffer of two tempered steel strips, its manufacture is greatly facilitated because of the smaller size of these parts and the greater ease of bending them, and particularly because these smaller units can be much more effectively and regularly hardened and tempered, with much less danger of warping a distortion, than if the buffer was made of one piece of spring steel. Page 2, lines 127-130; page 3, lines 1-6.

I have quoted so much of the specifications because it appears to me beyond any fair dispute that every one reading the description would understand that from top to bottom it was meant to cover only a buffer made of two pieces of steel, bent to form the right and left members of a jointed buffer, and that the adjustments were possible only because the buffer was split. What Lyon apparently supposed to be his invention was to secure adjustment while retaining a constant distance between the end of the buffer and the outside of the wheel, by using longitudinal bends and a split buffer, and also to strengthen his front by overlapping the ends of the transverse members.

I now turn to the claims. The case is the common one of needless elaboration of distinctions which are verbal and details which are trivial. It is absurd to apply in all such cases the rule that claims must at any cost be treated as patentably differentiated. Courts have descanted upon the abuse again and again, but the antlike persistency of solicitors has overcome, and I suppose will continue to overcome, the patience of examiners, and there is apparently always but one outcome.

The first six claims are for two separate steel spring strips, and in that regard follow the express disclosure. Claims 7 and 8 are for overlapping members, or a pair of transverse members. Claims 10, 11, 12, and 13 are for spring members, each with a transverse impact, and a longitudinal attaching section. Claim 15 requires the attaching means to be integral with the loops, and to extend rearwardly. Claims 16 and 17 call for two springs which overlap. If, therefore, the claims in suit, 9, 14, and 18, are for a single steel spring reinforced in front by a separate member, and without any longitudinal attaching section, they are egregious in this galaxy. I shall take them up in detail to try to see what they fairly mean.

Claim 9 is for a buffer comprising "transversely extending impact members and open ended lateral loops, connected attaching members, * * * connecting means connecting said impact receiving members, * * * and means providing lateral adjustment of said attaching members." The plaintiffs argue that in Grotenhuis & Pancoast's patent, the alleged infringement, the means providing for lateral adjustment of the attaching members are the brackets, 5, which hold the rear bar to the frame. But the claim says that the attaching members must be themselves laterally adjustable. It is not an adjustment of these members to slip the brackets longitudinally along the bar, which is the only adjustment possible in the infringement. The phrase "attaching member" refers, not to the clamps, but to the longitudinal section of the continuous strips. Page 1, lines 26, 27, 75, 76; page 2, lines 16, 20, 31, 32, 36, 37, 74, 78, 79, 83. They can only be laterally adjusted if they are two. The straight rear bar is never laterally adjusted to different widths of frame. Thus, even if read literally, the claim is not infringed. Read on the specifications, as it should be, it is even less so.

Claim 14 is for a "spring having a transversely extending member and a rearwardly extending attaching member." So far, the use of the singular shows that the draughtsman had in mind only one-half of the buffer. Then it proceeds: "Said transversely extending member being arranged adjacent another transversely extending spring member," to be secured to it. If the second transverse member was not the same as the first, if it had no attaching member as one section, the whole buffer would hang in the air on one side. The first transverse member has but one perpendicular or longitudinal leg; the second must have one as well, just as disclosed.

Claim 18 does not mention a divided spring, and is particularly vague, but at its end it literally contradicts the possibility of single spring as much as claim 9, because it specifies that the "attaching members" must be "relatively adjustable" to fit frames or different width. "Relative" adjustment is even clearer than the language of claim 9. Rearwardly extending legs cannot be relatively adjustable, if the spring is continuous.

I have been over the language of these claims literally, because I think that literalism is the best chance of the plaintiffs. The conclusion is that both specifications and claims read upon the diagrams, and upon nothing else. Lyon supposed that he had an invention made up of two connected springs. They were to be adjustable to different frames, because they were split. Some advantages resulted from this: First, that they were more reliable in manufacture; second, that the distance between the outer side of each wheel and the end of the guard was constant, no matter what the width of the frame. If he had any idea that a single reinforced spring buffer was an invention or a form of his invention, he gave no indication of it from one end of his patent to another.

Before considering what latitude he is entitled to under the doctrine of equivalents, it is necessary to consider how far the proceedings in the Patent Office estop him from any such expansion. A patent is peculiar among solemn written unilateral contracts in this: That there are cases when although the promise of the promisor — i. e., the claims — do not, read them how we will, cover another machine, yet if they do so in function and means, the court will disregard the language...