Permo, Inc. v. Hudson-Ross, Inc.

• Decision Date: 19 January 1950
• Docket Number: No. 9875.,9875.
• Citation: Permo, Inc. v. Hudson-Ross, Inc., 179 F.2d 386 (7th Cir. 1950)
• Parties: PERMO, Inc., et al. v. HUDSON-ROSS, Inc., et al.
• Court: U.S. Court of Appeals — Seventh Circuit

179 F.2d 386 (1950)

PERMO, Inc., et al. v.HUDSON-ROSS, Inc., et al.

No. 9875.

United States Court of Appeals Seventh Circuit.

January 19, 1950.

Clarence J. Loftus, William E. Lucas, Chicago, Ill., for appellant.

Ephraim Banning, III, Chicago, Ill., George I. Haight, Edward A. Haight, Chicago, Ill., John W. Hofeldt, Chicago, Ill., Carl E. Hoppe, San Francisco, Cal., for appellees.

Before MAJOR, Chief Judge, KERNER, and DUFFY, Circuit Judges.

DUFFY, Circuit Judge.

This is a suit for patent infringement.PlaintiffAstatic Corporation is the owner and plaintiffPermo, Inc., the exclusive licensee of Semple Patent 2,325,343 covering a phonograph needle, issued July 27, 1943, on application filed January 28, 1942.DefendantM. A. Miller Manufacturing Co. manufactures the accused needles and defendantHudson-Ross, Inc., has sold some.Only Claim 1 of the patent is here in issue.The district court held Claim 1 invalid, but infringed if valid.

Claim 1 is broadly stated; it calls for four elements: "A record engaging stylus (needle) for a phonograph reproducing mechanism comprising in combination a rigid shank adapted to be secured to the mechanism, a flexible member rigidly secured to said shank, a pointed record groove engaging element carried by said flexible member, and (a) foot on the lower end of said shank adapted to engage the record upon flexing of said flexible member."In prosecuting the patent in suit in the Patent Office Claim 1 of the application was rejected as being "fully met" by Hasbrouck 2,280,763.The claim rejected was substantially identical with the preamble and the first three elements of the claim here in issue.The present Claim 1 was Claim 2, as originally filed.

Plaintiffs say that the patent in suit is directed to a phonograph needle per se for the conventional type phonograph which necessarily employed a transducer or pickup secured to a hinged tone arm.Such tone arm was adapted to be raised and lowered vertically with respect to the phonograph record.The transducer or pickup carried by the free or swinging end of the tone arm contained a needle chuck in which needles are readily placed and replaced by turning a thumb screw.

Plaintiffs claim that the old conventional needle was not shockproof and that a careless dropping of the tone arm would damage not only the needle but the phonograph record as well.Plaintiffs say that the problem was to conceive and provide a readily replaceable, self-contained phonograph needle which itself would be shockproof and would automatically return all parts, including the playing point and the tone arm, to normal playing position after dissipation of the excessive vertical pressure.This has been accomplished, so plaintiffs claim, by the needle covered by the patent in suit.

Boiled down to its essentials, the four elements of plaintiffs' needle are (1) a rigid shank, the upper end of which is to be secured in the phonograph pick-up head, (2) a flexible member secured to the shank, (3) a record engaging element carried by the flexible member, and (4) a foot at the lower end of the shank.From the description in the patent we obtain the following information.The shank is flattened on the upper end where the set screw bears against it to hold it in position.The shank is made of cold rolled steel or other tough material.While the angle between the shank and the vertical depends upon the construction of the stylus holder, it is normally 21.5°.The shank has an annular groove above the base of the foot.The flexible member is made of piano wire and is secured in the groove in the shank.It extends generally parallel above the middle of the foot and is then bent upward to provide a horizontal end portion.The flexible member is stiff enough to transmit the vibrations without appreciable loss in amplitude, yet yieldable enough to permit the foot to touch the record when more than four ounces of pressure are applied to the shank.The record engaging element is preferably a gem or semi-precious stone, such as a sapphire embedded in brass.It is soldered or otherwise secured to the flexible member.The foot is formed by flattening and bending the lower end of the shank.The record engaging element is positioned immediately in front of the foot.A suggested angle between the axis of the shank and the axis of the foot is 43°.The specification suggests the possibility of variations in three of the four elements contained in Claim 1.In view of these possible variations, examples of which are given, Semple specifically advises those in the art, "The above specifically described embodiment of the invention should be considered as illustrative only.* * * Reference should therefore be had to the appended claims in determining the scope of the invention."In spite of Semple's admonition of referring to the claims to determine the scope of the patent, plaintiffs here insist that both the specification and the drawings must be examined and extensively applied in order to limit the broad scope of the claim in issue.

The introductory phrase to Claim 1 is, "A record engaging stylus for a phonograph reproducing mechanism comprising in combination * * *."By referring to the specification and drawings the plaintiffs say that this means a phonograph needle for a conventional type phonograph including the stacked record type.The first element of the claim reads, "A rigid shank adapted to be secured to the mechanism," and plaintiffs add, "Whose socket in the pick-up is arranged at a substantial angle from the vertical."The second element reads, "A flexible member rigidly secured to said shank," and plaintiffs supplement, "At a substantial distance above the record engaging portion of the rigid * * * foot, and extending downwardly at a substantial angle."The third element of the claim is, "A pointed record groove engaging element carried by said flexible member," and plaintiffs say this merely means the tip.As to this one element plaintiffs do not refer to the specification, for therein is described, and the drawings disclose, a jewel point embedded in brass.The last element of the claim reads, "(a) foot on the lower end of said shank adapted to engage the record upon flexing of said flexible member," and plaintiffs say that the accused device, which is simply a nylon sleeve or elbow at the lower end of the shank, is covered by the foot described in the claim.Plaintiffs say that Semple's positioning of the foot co-axially with the body member (10) is strategic.A glance at plaintiffs' patent drawing will show that Semple's foot (12) is not co-axial with the shank body.The most obvious feature of the Semple foot or bumper is that it is angularly disposed with reference to the shank.

It is of course well established that a claim of a patent should be read in connection with the disclosure of the specification and drawings.Schriber-Schroth Co. v. Cleveland Trust Co. et al., 311 U.S. 211, 217, 61 S.Ct. 235, 85 L.Ed. 132;Highway Appliances Co. v. American Concrete Expansion Joint Co., 7 Cir., 93 F.2d 113, 117.However, the specification and drawings should be considered for the purpose of better understanding the meaning of the claim, and not for the purpose of changing it or making it different from what it is.Howe Machine Co. v. National Needle Co., 134 U.S. 388, 10 S.Ct. 570, 33 L.Ed. 963.Drawings may be referred to in order to explain but not to vary the meaning of a claim.Elgin Co-operative Butter-Tub Co. v. Creamery Pkg. Mfg. Co., 7 Cir., 80 F. 293.The owner of a patent may not distort a claim and use it as a nose of wax.¹

Claims of a patent may incorporate the specification and drawings by reference, Snow v. Lake Shore and Michigan Southern Ry. Co., 121 U.S. 617, 630, 7 S. Ct. 1343, 30 L.Ed. 1004, and courts will give effect to such a direction by the patentee.Charles Peckat Mfg. Co., et al. v. Jacobs, etc., 7 Cir., 178 F.2d 794;Seymour v. Osborne, 11 Wall. 516, 78 U.S. 516, 20 L.Ed. 33.But in the latter case, the Court said, 11 Wall. page 547, "Omit the words `substantially as described' or `substantially as set forth' and the question presented would be a very different one."Claim 1 of the patent in suit contained no such reference.But plaintiffs insist that the words "substantially as described" must be implied.But here the...