Rollman Mfg. Co. v. Universal Hardware Works

• Decision Date: 01 August 1913
• Docket Number: 633.
• Citation: 207 F. 97
• Parties: ROLLMAN MFG. CO. v. UNIVERSAL HARDWARE WORKS.
• Court: U.S. District Court — Eastern District of Pennsylvania

207 F. 97

ROLLMAN MFG. CO. v. UNIVERSAL HARDWARE WORKS.

No. 633.

United States District Court, E.D. Pennsylvania.

August 1, 1913

John A Coyle and William H. Keller, both of Lancaster, Pa., and Archibald Cox, of New York City, for complainant.

John A Hipple, of Lancaster, Pa., Henry P. Brown, of Philadelphia Pa., and George L. Wheelock, of New York City, for defendant.

THOMPSON District Judge.

This is a suit brought to restrain the infringement of letters patent No. 686,139 for a cherry stoning machine. Michael A. Rollman who was the inventor, filed his application January 21, 1901, and letters patent were issued November 5, 1901. By assignment dated October 26, 1900, Rollman had assigned to the Rollman Manufacturing Company, a limited liability partnership composed of himself, H. C. Schock, and Clarence Schock, as copartners, all of his patentable devices, and on January 26, 1901, he specifically assigned his rights under the application for the patent in suit and in the letters patent to be granted thereon to the Rollman Manufacturing Company. On May 31, 1906, Rollman assigned to Harry C. Schock and Clarence Schock his interest in the Rollman Manufacturing Company, including all of his right or ownership individually and as a member of the company in all patents, together with the right to use the name 'Rollman' in connection with such devices and inventions as might be manufactured and sold by the partnership or the members thereof, and, in consideration of the assignment, the other partners paid him the sum of $1,000 and agreed to indemnify him against any indebtedness of the company upon which he might be liable at the time of the transfer. The cherry seeder made by the complainant under the patent was known and sold under the name of 'Rollman' and the business in the cherry seeders became a profitable one.

The defendant is a Pennsylvania corporation chartered March 27, 1912. The incorporators were Michael A. Rollman, the patentee under the patent in suit, subscriber to one share; his wife, Elizabeth E. Rollman, subscriber to one share; and his father-in-law, Henry S. Garber, subscriber to eight shares. Michael A. Rollman is the president of the corporation and the active manager of its business in which he is assisted by his wife. Henry S. Garber takes no part in the business of the company. The defendant, the Universal Hardware Works, manufactures and sells the cherry seeder claimed to be an infringement under the name of the 'New Standard' and has stamped upon it the name 'M. A. Rollman.'

The claims in suit, as set out in the complainant's record, are conveniently stated as follows:

'Claim 8 claims: 'In a seeding machine (1) a seed-extracting knife; (2) a suitable frame in which to reciprocate said knife and (3) means carried by the knife to pick up the pulp; and (4) a stripper plate obliquely disposed in the path of the pulp whereby said plate will deflect the pulp laterally as and for the purpose set forth.'

'Claim 9 claims: 'In a cherry-seeding machine (1) a suitable frame; (2) a plunger carrying (3) a knife reciprocatingly mounted in said frame; (4) said knife being provided with means to pick up the cherry pulp (5) in combination with additional means (a) carried by the standard and (b) obliquely disposed in the path of the knife adapted to strip the pulp therefrom and deflect it laterally as and for the purpose set forth.'

'Claim 10 claims: 'The combination in a cherry-seeding machine of (1) a plunger; (2) a standard forming a support and guide for said plunger; and (3) a stripper plate supported by the standard at an angle oblique to the line of movement of the plunger as set forth.'

'Claim 13 claims: 'In a seeding machine (1) a standard having a pulp stripper disposed at an oblique angle to the plane of the standard (2) and a plunger reciprocatingly mounted in said standard (3) and means to hold the plunger against rotation as set forth."

The complainant's cherry seeder is constructed in accordance with the drawings accompanying the patent in suit. The defendant's machine is admitted to possess all of the elements covered by these claims. In construction, however, the machines differ in that the complainant's plunger is made to reciprocate by means of a spring, while that of the defendant reciprocates by means of a crank and cam.

The remaining difference between the two machines is that in the complainant's machine the frame in which the plunger and knife reciprocate is constructed at an incline to the vertical of about 30 degrees, while that of the defendant's machine is constructed horizontally. There appears to be no substantial dispute that, except for the inclined position and action of the complainant's seeder and the horizontal position and action of the defendant's seeder, the various parts of the respective machines are equivalents and the functions performed thereby are identical.

The complainant contends that the claims upon which the suit is based are to be construed as broadly as they read and, if so, include the horizontal position of the frame and horizontal action of the plunger and knife. The defendant contends that the claims in suit are to be construed in the light of the specifications pointing out the patentee's preferred construction and in view of the prior art of which it has introduced proof; as otherwise these claims are invalidated by the prior art and that reading the claims thus in view of the prior art, they must be limited to a construction and operation inclined to the vertical and do not include the horizontal construction and operation shown in the defendant's seeder. The complainant objects to evidence of the prior art to limit the claims upon the ground that the defendant, the Universal Hardware Works, is bound by the estoppel which would apply to Michael A. Rollman, the patentee and assignor of the patent. The defendant contends that, even if the corporation is estopped, that estoppel does not prevent the introduction and consideration of evidence of the prior art to limit the claims in suit. The defendant's position is that, in view of the prior art, the only novelty in the complainant's patent is the standard inclined to the vertical with a horizontal stripper plate at an angle oblique to the line of movement of the reciprocating plunger and knife. It is perfectly apparent that, in the language of the claims in suit, there is no limitation of the invention to any angle of the frame and line of movement of the plunger and knife. The opinion of the defendant's expert is that, if the claims are read as they stand, they are anticipated by the prior art; but, if there is read into them a limitation from the specification to an inclined frame or standard, 'then, of course, the prior art does not show such a construction,' but then the defendant's machine does not infringe because its frame or standard is horizontal.

From an examination of the specification and other claims in the patent in suit, I think it is conclusively shown that such a construction cannot by the terms of the specification be put upon the claims in suit. For example, as pointed out by complainant's counsel, claim 3 is limited to 'a machine comprising an inclined U-shaped standard, a plunger reciprocatingly mounted in said standard and disposed in the same plane of inclination therewith,' while the claims in suit call for a frame or standard irrespective of its inclination. The inclined standard is referred to in the specification as being the patentee's preferred construction over a vertical standard; the object being by means of the inclination of the standard to have the pulp of the cherry carried, while impaled upon the barbed end of the knife, to a point at or beyond a perpendicular drawn from the outward edge of the hopper where the pulp would not drop back into the hopper containing the unstoned cherries, but, by being carried as described and given a lateral motion by contact with the inclined stripper plate, the pulp would be thrown into a proper receptacle outside the machine. The drawing accompanying the application for patent shows this preferred construction. The specification says:

'The inclination, therefore, of the standard 8 is not a mere incidence of the disposition of the hopper section 5 but possesses a functional importance of great value, and I therefore wish to secure in this application said combination and construction of parts, together with substitutes and equivalents. * * * It will be understood that various modifications may be made in the construction without departing from the spirit or scope of my invention.'

Under the ordinary rule of interpretation, the limitation which is expressed in claim 3 and in the specification cannot be read into claims 8, 9, 10, and 13.

'Where a patent contains specific claims for the one form of structure described in the specification and shown in the drawing and also broad and general claims, the latter are not to be so limited as to make them a mere repetition of the specific claims. ' General Electric Co. v. E. H. Freeman Electric Co. (C.C.) 190 F. 34.

'Where a limitation expressly in some of the claims of a patent is omitted from others, it cannot be read into them to avoid a charge of infringement. ' Diamond Match Co. v. Ruby Match Co. (C.C.) 127 F. 341; Boyer v. Keller Tool Co., 127 F. 130, 62 C.C.A. 244; Ryder v. Schlichter, 126 F. 487, 61 C.C.A. 469; Wilson v. McCormick Co., 92 F. 167, 34 C.C.A. 280; Metallic Extraction Co. v. Brown, 110 F. 665, 49 C.C.A. 147.

As to the defendant's contention that the claims of the patent are no broader than the details of the patentee's preferred construction described in the specification, it is difficult to see upon what ground this proposition is based. In...