New York Scaffolding Co. v. Whitney

• Decision Date: 12 May 1915
• Docket Number: 4215.
• Citation: 224 F. 452
• Parties: NEW YORK SCAFFOLDING CO. v. WHITNEY. [1]
• Court: U.S. Court of Appeals — Eighth Circuit

224 F. 452

NEW YORK SCAFFOLDING CO. v. WHITNEY. ^[1]

No. 4215.

United States Court of Appeals, Eighth Circuit.

May 12, 1915

Syllabus by the Court.

A new combination of old mechanical elements, whereby a new and useful result is secured, or an old result is attained in a more facile, economical, and efficient way, may be protected by a patent as securely as a new machine or composition of matter.

The simplicity of a combination or machine is no bar to its patentability.

If those skilled in the mechanical arts have failed after repeated efforts to discover a certain new and useful combination or improvement, it may be safely inferred that he who makes the discovery is entitled to protection as an inventor.

Where the advance toward the thing sought is gradual, and several inventors independently form several combinations, which accomplish the general result with varying degrees of operative success, each is entitled to his own combination as long as it differs from those of his competitors and does not include theirs.

It is not necessary, in order to escape the defense of an aggregation of elements and to insure the patentability of a combination of old elements, that each element should, in addition to performing its own function, modify the function performed by one or more of the others.

It is sufficient, if there is a new combination of old mechanical elements, and if the elements thus combined are capable of producing a novel and useful result, or an old result in a more facile, economical, or efficient way.

A new combination of old mechanical elements, wherein, by a different location of one or more of the elements, a new and useful result is attained, or an old result is produced in a better way, is patentable.

Patentability of combinations of old elements as dependent on results attained, see note to National Tube Co. v. Aiken, 91 C.C.A. 123.)

Contributory infringement is the intentional aiding of one person by another in the unlawful making, selling, or using of a third person's patented invention.

One who makes or sells one or more elements of a patented combination, with the intention or for the purpose of bringing about its or their use in an infringing combination is guilty of contributory infringement, and is equally liable with him who in fact organizes and uses the complete combination.

One who makes and sells articles which are only adapted to be used in a patented combination will be presumed to intend the natural consequences of his act. He will be presumed to intend that they shall be used in the combination patented.

For other definitions, see Words and Phrases, First and Second Series, Contributory Infringement.)

Claims 1 and 3 of letters patent No. 959,008, for an improved scaffold supporting means, issued on May 24, 1910, to Henderson, secure useful and patentable combinations.

One who makes and sells such hoisting devices and frames therefor as are portrayed in figure 1 in the patent to Whitney, No 998,270, issued July 18, 1911, with the knowledge that they have been used, and the intention that they shall be used, in combinations with cross pieces and floor pieces of scaffolds such as are described in claims 1 and 3 in patent No. 959,008, issued May 24, 1910, to Henderson, is guilty of contributory infringement of those claims.

While a patentee, who acquiesces in the rejection of his claim, and abandons it on references cited in the Patent Office, and accepts a patent on an amended claim, is thereby estopped from maintaining that the latter claim covers the combination shown in the references, and that it has the breadth of the abandoned claim that was rejected, that is the limit of the estoppel. One who does not abandon, but insists upon and sustains, his claim, is not estopped; and one who acquiesces in the rejection of his claim because it is said to be anticipated by other patents or references is not thereby estopped from claiming and securing by an amended claim every novel and useful improvement that is not described in those references.

Paul Bakewell, of St. Louis, Mo., and C. P. Goepel, of New York City, for appellant.

James A. Carr, of St. Louis, Mo. (T. Percy Carr, of St. Louis, Mo., on the brief), for appellee.

Before SANBORN and SMITH, Circuit Judges, and TRIEBER, District Judge.

SANBORN Circuit Judge.

The New York Scaffolding Company, the owner of letters patent No. 959,008, for an improved scaffolding supporting means, issued May 24, 1910, to E. H. Henderson, on an application filed June 19, 1909, brought a suit against Egbert Whitney for contributory infringement of claims 1 and 3 of its patent by the manufacture and sale of the hoisting device and the frame thereof described in the patent to Whitney issued July 18, 1911, on an application filed January 28, 1911. There was a decree for the defendant in the court below, which this appeal challenges. The defenses were, first, invalidity of Henderson's patent on account of (a) anticipation; (b) lack of invention; (c) aggregation, rather than patentable combination; and, second, noninfringement.

Several patents were introduced in evidence to prove anticipation, but it is unnecessary to consider more than two, the patent No. 382,252, to Bowyer and Casperson, for an improvement in painter's stages, issued May 1, 1888, and the patent to William J. Murray, for an improvement in adjustable scaffolds, issued May 28, 1907, for, if neither of these anticipates, there is none that does. The desideratum sought by Henderson was a simple, economical, and efficient hoisting device and the frame therefor to enable workmen constructing large buildings to raise and lower the scaffolds on which they were working from their stations thereon, so constructed and combined with the cross pieces and floor pieces of the scaffold that the hoisting device and frame would not obstruct any portion of the platform of the scaffold, and that the combination of the hoisting device and its frame with the cross pieces and the floor pieces should be detachable without removing rivets or fastenings of cross pieces to the frame, or of the floor pieces to the cross pieces, to the end that the combination could be easily and quickly knocked down, removed, and set up again in another place. The principle and the method of combining the mechanical elements by which he reached the result he sought was to locate a hoisting frame, carrying a drum and a shaft gearing therewith operated by a detachable crank, broadside to the wall of the building at the end of each cross piece, so that neither the frame nor its hoisting device, nor the crank, would obstruct any portion of the scaffold when the crank was not in use, to support the cross pieces bearing the floor pieces on the lower ends of the frames, without fastening them thereto, so that they could be removed and replaced without removing or replacing rivets or fastenings.

The means he devised to effectuate the principle of his combination were these: To a drum, borne by the sides of the frame of each hoisting device, a cable, depending from the overhanging portion of an outrigger fastened on the top, or on some other high portion of the building, was attached. The frame of the hoisting device was preferably formed by bending a piece of bar iron into the form of the letter U, the lower end of which passed around and supported one end of a cross piece without being fastened thereto. Supported in and extending between the upwardly extended ends of the frame he placed a round bar, which formed the support of the drum to which the cable was fastened. On one end of the drum was a gear wheel, which meshed with a pinion revolubly supported in and between the upwardly extended arms of the frame. This shaft was squared at its ends, so that the crank could be placed on either end without fastening it there, and could be used to drive the pinion and the drum and to raise or lower the scaffold, and then could be removed, without removing any fastening, in order to avoid any obstruction thereby of the platform of the scaffold. The upper ends of the frame were securely held in place by means of a bolt which extended through and between them. One of these frames, with its hoisting device, was placed at each end of each cross piece, and thus at least four of them were necessary to support and operate a scaffold, and as many more could be used as the size of the building and the extent of the work demanded. The claims in suit are:

'1. A scaffold consisting in the combination of cross beams, 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.'

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

The device patented to Bowyer and Casperson is a painter's stage, consisting of the combination of a plank, each end of which is supported by a bar secured to the lower ends of the vertical sides of a frame which carries a drum and a shaft operated by a crank and bearing a pinion meshing with gearing on the drum, to which a cable or rope, depending through pulleys and other familiar devices from a hook on the top of the cornice of a building, is attached. By the use of two of these frames and the hoisting devices, painters, by turning the cranks, could operate...