New York Scaffolding Co. v. Liebel-Binney Const Co.

• Decision Date: 03 July 1917
• Docket Number: 2205.
• Citation: 243 F. 577
• Parties: NEW YORK SCAFFOLDING CO. v. LIEBEL-BINNEY CONST. CO.
• Court: U.S. Court of Appeals — Third Circuit

243 F. 577

NEW YORK SCAFFOLDING CO. v. LIEBEL-BINNEY CONST. CO.

No. 2205.

United States Court of Appeals, Third Circuit.

July 3, 1917

Appeal from the District Court of the United States for the Western District of Pennsylvania; Charles P. Orr, Judge.

C. P Goepel, of New York City, and Clarence P. Byrnes, of Pittsburgh, Pa., for appellant.

Wallace R. Lane, Robert H. Parkinson, and George Mankle, all of Chicago, Ill., for appellee.

The following is the opinion of ORR, District Judge:

This is an ordinary patent suit in which United States patent No 959,008, for 'scaffold-supporting means,' issued May 24, 1910, to E. H. Henderson is involved. The defenses are that the patent is invalid for want of invention and that, if the patent be valid, yet defendant has not infringed. The claims of the patent in issue here were in issue in certain other litigation brought by the plaintiff herein against one Whitney in the District Court of the United States for the District of Nebraska. The result in that litigation was that the Court of Appeals of the Eighth Circuit, by a divided court, reversed the court below and adjudged the claims 1 and 3 of the patent valid. This present case has been under consideration for some time in the hope that this court would reach the same conclusion that was reached by the Circuit Court of Appeals of the Eighth Circuit. New York Scaffolding Co. v. Whitney, 224 F. 452, 140 C.C.A. 138. The rule of comity does not demand that a judge of another court shall 'abdicate his individual judgment, but only that deference shall be paid to the judgments of other co-ordinate tribunals. ' Mast, Foos & Co. v. Stover Manufacturing Co., 177 U.S. 485-489, 20 Sup.Ct. 708, 710 (44 L.Ed. 856).

The necessity of scaffolding in all building operations of magnitude has ever been apparent. Originally, scaffolding was made to rest upon the ground and was increased in height as the building of the structure demanded. The expense of scaffolding necessarily increased with the height of the scaffolds. The natural result was that when the builder could drop his scaffolding from the top of the building with less expense than would be required to raise it from the ground he naturally did so. So with respect to the exterior decoration of a building, when the painter's ladders were not long enough to reach to the height required, the painter devised means by which he could sustain a platform, or as it is often called, a painter's stage or boat, from the roof of the building. The painting of a vessel's hull at sea involved necessarily the dropping of a platform or a plank from some supports made to rest upon or above the deck. The swinging of a boat from the davits would suggest a means by which the painter's stage used in the painting of a vessel could be swung. To those who are accustomed to observe, it is a matter of common knowledge that many men use different means to accomplish the result at which they may all aim; but it is also observed that men in the same art will oftentimes use the same means to accomplish the end sought, although there may have been great distance between them and no communication.

Utility is often urged as an important factor in determining patentability, but utility must be connected with invention in order to have weight in such determination. Having found that there was no invention in the Henderson device, a consideration of its utility is of slight value, yet the extent to which the plaintiff uses the device of the Henderson patent, if it be less in degree than the extent to which other devices controlled by it, intended to accomplish the same purpose are used, some light, though little, may be thrown upon the question of novelty, which is also a material element of patentability.

The plaintiff is not a manufacturer of devices, but is the holder and owner of patents under which licenses have been granted to the Patent Scaffolding Company, which constructs or causes others to construct the devices alleged to be covered by the patents. The practice of the Patent Scaffolding Company is not to sell the devices, but to rent them to contractors who may require the use of scaffolding in the erection of tall buildings. By judicious advertising and by permitting contractors to have the devices for the necessary period, at less than what it would cost to construct them, the Patent Scaffolding Company has created a large business, and the plaintiff receives substantial returns under the licenses granted by it.

The facts as revealed by the testimony negative the suggestion that there is anything novel in the device of the patent in suit. The demand created for the device is not the result of its novelty combined with utility, but of the business methods of the Patent Scaffolding Company.

We find from the specifications of the patent what Henderson desired to attain as expressed in the following language: 'My invention relates to an improved means for supporting scaffolds used in connection with the construction of buildings and their repair. Scaffolds for this purpose are preferably of the swinging type supported by cables from outriggers temporarily secured to the upper part of the building. It has been the practice in the past to associate hoisting means with the cables at the outriggers and in some cases it has been proposed to use such hoisting means in connection with the cables on the scaffold to adjust the height as required in connection with the work. My invention relates to an improved form of hoisting mechanism carried by the scaffold for securing the same to the cables, the upper ends of which are connected to outriggers, generally temporary in character, secured to the upper portion of the building.'

It is to be noticed in that language that Henderson recognized the prior use of scaffolds of the swinging type, supported by cables from outriggers, and that he recognized the use of the hoisting means in connection with the cables on the scaffold to adjust the height as required in connection with the work. Henderson did not have to say, what every one knew, that as part of a scaffold floor, pieces were used extending between and resting upon cross-beams called putlogs.

In considering the claims in suit, we find that, in addition to these various elements, Henderson claimed a combination with U-shaped bars in which the crossbeams or putlogs are laid, upon which the floor pieces are sustained. The claims are as follows:

Claim 1: 'A scaffold consisting in the combination of crossbeams, floor pieces extending between such beams, and a hoisting device associated with each end of each beam, each hoisting device consisting of a continuous U-shaped metal bar extending around the under side of and upward from the associated beam, and a hoisting drum rotatably supported by the side members of such bar.'

Claim 3: 'A scaffold consisting of a plurality of U-shaped bars arranged in pairs, a crossbeam laid in and extending between each pair of such U-shaped bars, a floor laid upon said crossbeam, a drum rotatably supported between the upwardly extending side members for each of said U-shaped bars, and means for controlling the rotation of said drum.'

The support of the hoisting device by the side members of the metal bar is found in United States patent to Murray, 854,959, dated May 28, 1907. In the United States patent to Bowyer and Casperson, No. 382,252, under date of May 1, 1888, is found a painter's stage in which there is a continuous metal bar extending around the under side of and upwardly holding one end of the plank upon which the painter rests. A similar one must be at the other end. The plank rests upon the lower part of that bar, just as the crossbeam rests upon the lower part of the U-shaped bar called for in the patent in suit. The plank, of course, is not large enough to afford support for bricks or mortar, but if that plank support, as called for in the Bowyer and Casperson patent, be placed at right angles to the building and used as a putlog, and a similar plank resting in the same way be used as another putlog, upon which floor pieces can be placed, the arrangement would be the same as contemplated by Henderson in the patent in suit, so far as the resting of the beam upon the metal which forms the base of the U-shaped bar. The erection of outriggers for the support of the Bowyer and Casperson devices, arranged as suggested, would accomplish the same result as the device of Henderson and just as satisfactorily.

This court is not unmindful of the difficulty of ascertaining what is and what is not invention. In every case of a rearrangement of old parts it is urged that, because such rearrangement seems simple and natural, the court must avoid falling into the error of holding that there is no invention. It is insisted that the device under consideration would be found in prior patents and publications, if it were so simple to the men who claimed invention as appears after the patent has been granted. The argument is good where the patented device has filled a long-felt want and has immediately leaped into favor upon its own merits; but it is not sound where the device is one which has become widely used by reason of extensive advertising and reasonable charge for its use. It is a matter of observation that of recent years patents have been multiplied beyond precedent and not in proportion to the increased population. Many of them, which have each very slight variations from the other, are found in the same art. In many suits brought upon such patents it has developed that the method of the patent has been a shop practice for years or that the device of the patent has been used by artisans to accomplish the result which the...