Moon-Hopkins Billing Mach. Co. v. Dalton Adding Mach. Co.

• Decision Date: 16 October 1916
• Docket Number: 4560.
• Citation: 236 F. 936
• Parties: MOON-HOPKINS BILLING MACH. CO. et al. v. DALTON ADDING MACH. Co. et al. [1]
• Court: U.S. Court of Appeals — Eighth Circuit

236 F. 936

MOON-HOPKINS BILLING MACH. CO. et al. v. DALTON ADDING MACH. Co. et al. ^[1]

No. 4560.

United States Court of Appeals, Eighth Circuit.

October 16, 1916

Frederick R. Cornwall, of St. Louis, Mo., for appellants.

Thomas A. Banning, of Chicago, Ill. (Rippey & Kingsland, of St Louis, Mo., and Samuel W. Banning, Thomas A. Banning, Jr. and Ephraim Banning, all of Chicago, Ill., on the brief), for appellees.

Before HOOK, Circuit Judge, and REED and BOOTH, District Judges.

HOOK Circuit Judge.

This is a suit by the Dalton Adding Machine Company and the Addograph Manufacturing Company against the Moon-Hopkins Billing Machine Company and John C. Moon and Hubert Hopkins, its president and vice president, for infringement of patent No 1,039,130, dated September 24, 1912, for a new and useful improvement in adding and writing machines. The plaintiffs were awarded a decree of injunction upon final hearing ((D.C.) 223 F. 51), and the defendants appealed. There are two questions in the case: (1) Whether defendants are estopped from questioning the patent in suit and if so the extent of the estoppel; (2) whether defendants infringe.

The question of estoppel arises in this way: Hubert Hopkins, one of the defendants, assigned his application upon which the patent in suit was issued to the plaintiff Addograph Company, in which he was interested. Soon afterwards he severed his connection with that company and participated in the organization of defendant the Moon-Hopkins Company. The latter commenced the manufacture of the machine held to infringe. Hopkins' application for the benefit of the Addograph Company, his assignee, was filed January 24, 1903. The patent was not granted until September 12, 1912. The efforts to secure the patent during the nine years intervening were conducted by counsel for the Addograph Company. Hopkins' application as first filed contained 62 claims; the patent finally granted contained 284. As against the assertion of estoppel defendants say the claims in Hopkins' original application are not the claims of the patent issued, and that the latter are not justified by the disclosures of the former. We shall not go into this, but shall assume that the defendants, corporate and individual, are estopped from contesting the validity of the patent in suit.

The estoppel, however, does not preclude the defense of noninfringement, nor as a necessary corollary does it prevent defendants from insisting that the patent be put in its proper category, and its meaning and scope scrutinized accordingly. As was said by the Circuit Court of Appeals of the Sixth Circuit in Noonan v. Chester Park, etc., 39 C.C.A. 426, 99 F. 90:

'But this estoppel, for manifest reasons, does not prevent him from denying infringement. To determine such an issue, it is admissible to show the state of the art involved, that the court may see what the thing was which was assigned, and thus determine the primary or secondary character of the patent assigned, and the extent to which the doctrine of equivalents may be invoked against an infringer. The court will not assume against an assignor, and in favor of his assignee, anything more than that the invention presented a sufficient degree of utility and novelty to justify the issuance of the patent assigned, and will apply to the patent the same rule of construction, with this limitation, which would be applicable between the patentee and a stranger.'

In Johnson Furnace, etc., Co. v. Western Furnace Co., 102 C.C.A. 267, 178 F. 819, we applied the rule of estoppel to a person who was not an assignor, but had negotiated the assignment and participated in the consideration. Upon examination of the file wrapper and contents in the Patent Office, we found that the applicant had modified his claim to get it by, and held the plaintiffs were limited to the precise structure described, and were not entitled to a broad interpretation to cover structures made according to the claims rejected.

The right of a patentee to the mechanical equivalents of his structure or device is proportioned to the position of his invention in the art to which it relates. If the invention is a pioneer or primary one, his right is broad and comprehensive; if but for a slight improvement, it is correspondingly narrow. Between the two extremes the measure of equivalents varies accordingly. This rule is fundamental in the patent law. The plaintiffs' patented combination is far from being a pioneer. The field was largely occupied by Burroughs, Sandherr, Chamberlain, Helmick, and others; and the protracted, difficult effort to secure a patent on the Hopkins application, and the many changes made to conform to adverse rulings of the Patent Office, disclosed in the 400 pages of file wrapper and contents, show the very narrow character of the patent finally issued. That it is entitled to any substantial range of mechanical equivalents is quite inadmissible. It is settled that, when an applicant for a patent inserts limitations and restrictions to comply with rulings of the Patent...