Reece Button-Hole Mach Co. v. Globe Button-Hole Mach Co., 72.

• Decision Date: 20 April 1894
• Docket Number: 72.
• Citation: 61 F. 958
• Parties: REECE BUTTON-HOLE MA. CO. v. GLOBE BUTTON-HOLE MA. CO. et al.
• Court: U.S. Court of Appeals — First Circuit

61 F. 958

REECE BUTTON-HOLE MA. CO. v. GLOBE BUTTON-HOLE MA. CO. et al.

No. 72.

United States Court of Appeals, First Circuit.

April 20, 1894

Appeal from the Circuit Court of the United States for the District of Massachusetts.

Lange &amp Roberts and Fish, Richardson & Storrow, for appellant.

Clarke & Raymond, Chauncey Smith, and Charles E. Mitchell, for appellees.

Before COLT and PUTNAM, Circuit Judges, and NELSON, District Judge.

PUTNAM Circuit Judge.

The bill in this case was framed with reference to two patents but one was withdrawn before the hearing in the court below, so that all we now have to consider are claims 5, 11, 12, 13, and 18 of No. 240,546, issued to John Reece, April 26, 1881. The main question relates to the proposition that this patent can in no event cover a machine of which the frame is stationary and the plate moves. It grows out of the fact that in the specifications and claims are many expressions indicating that the frame moves and the plate is fixed. A part of the preamble is as follows:

'This invention relates to sewing machines for stitching buttonholes, and is an improvement upon that class of the said machines wherein the stitching mechanism is made to travel first along one side of the buttonhole slit, then about the eye, and along the other side of the slit.'

The fifth claim also contains the following: 'Whereby the needle bar, by the movements imparted to it longitudinally and laterally of a buttonhole by the said frame, is caused to travel backward. ' Other expressions of like character appear, with more or less positiveness and fullness, in nearly all the other claims, and in various parts of the specifications; and nowhere throughout the patent is found any indicating that the frame might be fixed and the plate movable.

Theoretically, an inventor, in taking out a patent under the statutes of the United States, subtracts and adds nothing from or to his actual invention. The proceedings recognize his incipient ownership, and theoretically they constitute only a division of time, by which there is carved out of the entire estate a holding for a period of years for the inventor, and the fee is left to the public. Thus his patent is not at all akin to the king's grant, which must be expressed 'ex speciali gratia, certa scientia, et mero motu regis,' or be interpreted against the subject who receives it. Except for the provisions which, for public interests, require in a patent a description and claim, the same unrestricted rules of the common law would protect an inventor's statute right as are relied on to support a trade-mark or business good will. Nevertheless, with reference to patents, the courts are necessarily subject to the restraints arising from the incorporation into them of the description and claim which the statutes require. In interpreting these, however, the rule must be accepted that it is to be presumed the inventor did not intend to split up his invention. This is only an application of the ordinary rule of interpretation that transactions are to be construed in the light of all the circumstances and of the apparent purposes of the parties to them. Specifications and claims have not yet fallen into such settled forms as to enable the courts to construe them, in any considerable part, with such certainty as they construe many words and phrases in formal instruments at the common law; but, on the whole, the entire subject-matter must be taken together for effectuating the true purpose of the transaction, as contracts and wills, which are so frequently drawn informally, are usually construed. The ordinary rule that if by a literal construction an instrument would be rendered frivolous and ineffectual, and its apparent object frustrated, a different exposition will be applied if it can be supported by anything in it, requires that words which relate to what may be held nonessentials, however much multiplied, shall not be permitted unnecessarily to control the sense. For the most part, such words are merely illustrative, or are used through inadvertence. On the other hand, it is true that words and phrases which might have been omitted on the presumption that they relate to nonessentials, may be introduced in such direct and positive manner as to leave the courts no option except to regard them as affecting the objects and limitations of the instrument in question. Especially may this be so when words which otherwise might be regarded as unimportant are introduced by the way of amendment. This is a common rule, which perhaps has been illustrated more frequently with marine insurance policies than elsewhere. There is no doubt that if into an instrument which has been prepared and submitted additional words are subsequently introduced by mutual consent, greater effect may sometimes be attributed to such words than otherwise would be given them; for they then become the immediate language selected by the parties, and may be assumed to have been especially within their intention. The leading rule which we have given has been constantly restated by the text writers and the courts as having full application to patents. They make use of such expressions as 'ut res magis valeat quam pereat;' that 'a patent should be construed in a liberal spirit, sustaining the just claims of the inventor;' that the titles by which patents are held 'should not be overthrown upon doubts or objections, capable of a reasonable and just solution in favor of their validity;' that 'in construing a patent the court will remember that the specification and claims are often unskillfully drawn;' and that 'the claim shall be construed, if possible, to sustain the patentee's right to all that he has invented. ' It is true the general rules we have stated include the subordinate principle, which applies everywhere, that they are not to be 'carried so far as to exclude what is in the patent, or to interpolate anything which it does not contain. ' It is impossible, however, to carry this to the extent of applying to patents as fully as it is applied to instruments in general, the maxim, 'Enumeratio unius exclusio alterius.' With the aid of the doctrine of equivalents, the courts are constantly engrafting on specifications and claims what they do not contain in the same sense in which the letter of ordinary instruments is required to contain matter on which the parties rely. To extend, in disregard of this fact, the rule against interpolations to any particular case, requires either that the patent relate to such mere matters of form or detail that the specifications and claims be so phrased as in fact to contain a clearly intended exclusion, or the equivalent thereof. In the opinion of the court, the ingenious presentation of the defense in this case overlooks this last principle. The defense claims, that, on account of the numerous expressions to which we have referred, the patentee was limited to machines in which the frame travels and the plate remains at rest. It must be conceded that, taking these specifications and the claims as a whole, they show that Reece had present in his own mind, at the time of his application, a machine with a movable frame and a fixed plate. But, if this is all there is of it, and if this is sufficient to establish the defense, the question arises, where does the doctrine of equivalents come in?

The most important parts of the case at bar are within the four corners of the principles we have stated. The court has no doubt that Reece was the inventor of nearly everything, if not everything, demanded by the Reece Buttonhole Machine Company in the case at bar, and was entitled to a patent therefor; and the question is whether, by reason of the peculiar phraseology of his specifications and claims as first drawn, or by reason of the making of certain amendments during the progress of his application through the patent office, Reece, notwithstanding the rules of interpretation entitle him to a favorable construction, has limited himself to a mechanism in which the frame travels; or whether, if he has thus expressed the literal terms of his patent, he has further so limited himself as to deprive himself of the benefit of the law of equivalents with reference to a machine in all respects a copy of his actual invention as shown in his patent, except as to the nonessential characteristic that the frame remains at rest, and motion is given to the plate. There may be reasons for finding that Reece was the inventor of the entire machine, with numerous functions, in somewhat the same way in which Morley was such inventor, as determined in Sewing Mach. Co. v. Lancaster, 129 U.S. 263, 9 Sup.Ct. 299. It is, however, so clear that Reece's claims do not cover the machine as a whole, but only various parts of it, that all the propositions made in his behalf having a different aspect fail to assist us. Yet Reece was clearly far in advance of those who preceded him, and entitled to the full benefit of whatever may be deduced from that fact.

In Manufacturing Co. v. Adams, 151 U.S. 139, 144, 14 Sup.Ct. 295, the court said:

'But when, in a class of machines so widely used as those in question, it is made to appear that at last, after repeated and futile attempts, a machine has been contrived which accomplishes the result desired, and when the patent office has granted a patent to the successful inventor, the court should not be ready to adopt a narrow or astute construction, fatal to the grant.'

This applies directly to the facts of the case at bar. In Miller v. Manufacturing Co., 151 U.S. 186, 14 Sup.Ct. 310, the court, in laying down the latest, and, to our thinking, the best, expression of the rule touching so-called 'pioneer patents,' used the following language:

'The range of

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