New York Scaffolding Co v. Const Co

• Decision Date: 08 November 1920
• Docket Number: LIEBEL-BINNEY,No. 22,22
• Citation: 254 U.S. 24,41 S.Ct. 18,65 L.Ed. 112
• Parties: NEW YORK SCAFFOLDING CO. v. CONST. CO
• Court: U.S. Supreme Court

254 U.S. 24

41 S.Ct. 18

65 L.Ed. 112

NEW YORK SCAFFOLDING CO.

v LIEBEL-BINNEY CONST. CO.

No. 22.

Argued Oct. 7 and 8, 1920.

Decided Nov. 8, 1920.

Messrs. Frederick P. Fish, of Boston, Mass., and Frank Chase Somes and C. P. Goepel, both of New York City, for petitioner.

Messrs. Robert H. Parkinson, and Wallace R. Lane, both of Chicago, Ill., for respondent.

Mr. Justice McKENNA delivered the opinion of the Court.

Suit for infringement by the Construction Company of a patent dated May 10, 1910, and numbered 959,008, for new and useful improvements in 'scaffold-supporting means,' granted to Elias H. Henderson. Petitioner is assignee of the patent.

An injunction was prayed, accounting of profits, and damages.

The patent is in the usual form, but a special manner of use of the invention is alleged. It is alleged that, since the acquisition of the patent, petitioner has been largely engaged in different cities of the United States in putting the invention into practice, and the manner thereof has been to construct and lease for use to builders and others, at a specified royalty or price per week, the scaffolds embodying the invention—petitioner retaining the ownership of and title to the scaffolds; they being returned to petitioner upon the completion by the lessees of the work for which the scaffolds had been required.

The answer of the Construction Company directly put in issue certain of the allegations of the petition. It admitted, however, the use of scaffolds which it purchased from the Eclipse Scaffolding Company of Omaha, Neb., but alleged that such scaffolds did not contain or embody the invention protected by patent No. 959,008, in any way or manner.

It is also alleged that petitioner, some time prior to February 21, 1914, brought suit in equity in the United States District Court for the District of Nebraska, against one Egbert Whitney, predecessor in title of the Eclipse Scaffolding Company, to the scaffolds sold by the latter company to the Construction Company, in which suit infringement of patent No. 959,008 was alleged.

In that suit a patent of one William J. Murray was pleaded, but the Scaffolding Company withdrew its case as to that patent, and relied on claims 1 and 3 of the patent to Henderson, and the court decreed that the claims were void for want of invention, and it is alleged that the Construction Company 'is entitled to the protection of said decree.'

On the issues thus made by bill and answer proofs were taken, and the court decreed against the patent, saying in its opinion that——

'The Henderson patent has not supplanted others, nor has the influence of its owner been exerted to that end. It barely represents a step in the art. It does not disclose invention.'

And further:

'In View of the conclusion reached by this court that claims 1 and 3 of the patent in suit are invalid, it is unnecessary to do more than touch upon the matter of infringement. The evidence of infringement is meager, and yet, if the claims of patent in suit were to be held valid, with a range of equivalents, infringement would be found.' 243 Fed. 577, 156 C. C. A. 275.

The decree was affirmed by the Circuit Court of Appeals. 243 Fed. 577, 156 C. C. A. 275.

The Construction Company pleaded in defense, as we have said, the decree of the District Court of Nebraska in the suit of petitioner against Egbert Whitney; but that decree was reversed by the Circuit Court of Appeals. 224 Fed. 452, 140 C. C. A. 138. The reversal and the opinion of the Circuit Court of Appeals thereon are much relied on in this suit, and we may say constituted the inducement to issue certiorari. It is seemingly antithetical to the opinion and judgment under review, and the Circuit Court of Appeals for the Third Circuit felt and expressed the embarrassment of 'disturbing the force of a decision of a court of co-ordinate jurisdiction,' 'formed upon precisely the same issue and upon substantially the same facts.' The court, however, felt constrained to an 'opposite judgment,' and decided that Henderson made but 'formal changes' in the prior art, which involved no invention, and affirmed the decree of the District Court.

Necessarily for an estimate of Henderson's patent we must consider the prior art. It is detailed by witnesses, explained by counsel, and illustrated. Specific descriptions are not necessary. We may refer to our own observation of the first forms of scaffolding. To quote District Judge Orr:

'Originally, scaffolding was made to rest upon the ground and was increased in height as the building of the structure demanded.'

The first forms of scaffolding which constituted the prior art are described by a witness as——

'the thrust-out scaffold, the pull scaffold, the timber scaffold; that they were built right up to the front of the building.'

In 1900, he testified:

'A new device came on the market, or a new structure, and in place of building up from the ground, they hung a rigid iron frame from the upper stories of the building; that could be used on three or four stories sometimes. It was heavy, inconvenient to handle, and did not meet with very great success, although it did seem an improvement over the old poles. Then there came another form of scaffolding, which was a suspended wire platform scaffold, suspending the wires from the top of the building. * * * Then there came the Cavanagh overhead scaffolding machine. * * * That machine became fairly well used, after being introduced, and was apparently a great improvement over any other. Then Murray came in the market with his platform machine; a machine operated from the platform, the fastening of the wire that supported the platform being from above, the wire being secured to the outriggers from the upper part of the building. Then the Henderson machine, supported by cables from the upper part of the building, and similar in a great many respects, except that the machines were placed in the opposite position, enabling you to make a scaffold any width, which would seem to be the latest.'

The Murray patent, therefore, is the step in the prior art preceding that made by Henderson, and a comparison of the latter's patent with it, the Murray patent, is imediately indicated.

Murray describes his invention to be of 'new and useful improvements in adjustable...