Sanders v. Hancock

• Decision Date: 02 February 1904
• Docket Number: 1,238.
• Citation: 128 F. 424
• Parties: SANDERS v. HANCOCK.
• Court: U.S. Court of Appeals — Sixth Circuit

128 F. 424

SANDERS v. HANCOCK.

No. 1,238.

United States Court of Appeals, Sixth Circuit.

February 2, 1904

This appellee, Hancock, brought this suit in equity, complaining of the infringement by the appellant, Sanders, of three several patents, one of them being patent No. 556,972, dated March 24, 1896, issued to Keating as assignee of Hardy, and subsequently assigned by Keating to the complainant; another being patent No. 643,499, dated February 13, 1900, issued to the complainant; and the third, being patent No. 692,655 dated February 4, 1902, also issued to the complainant; and praying for an injunction and for profits and damages resulting from the alleged infringement. All of the patents above mentioned were for inventions of 'improvements in rotary disc plows.' The defendant answered the bill denying that the several persons who were alleged to have invented the improvements for which the respective patents were granted were in fact the original inventors thereof, and he also denied infringement of any of said patents. The judge of the Circuit Court awarded a preliminary injunction pendente lite. The complainant filed a replication. Proofs were taken, and, the cause having been brought on for hearing, the court dismissed the bill as to patent No 643,499, but decreed for the complainant in respect to the second claim of patent No. 556,972, and all of the claims, of which there were seven, of patent No. 692,655, awarding a perpetual injunction, and the recovery of profits and damages, for the ascertainment of which a reference to the master was ordered. Thereupon the defendant appealed.

The following opinions were filed in the Circuit Court by CLARK District Judge, the first on motion for preliminary injunction, May 2, 1902:

'In disposing of the question now before the court it is not permissible or desirable that any extended discussion of the issues presented should be entered upon. On the contrary, it has often been ruled that the court, from the very nature of the proceedings should examine the case only far enough to ascertain whether the plaintiff has an apparent title to protection, and the court is not expected to enter into inquiry concerning difficult questions of law, or the weight and value of conflicting evidence. 3 Robinson on Patents, Secs. 1173-1210; Wise v. Grand Avenue Ry. Co. (C.C.) 33 F. 277, and cases there cited.

'It may be useful to restate here certain general principles which apply on the heading for a preliminary injunction, and some of which apply as well on final adjudication. It is well settled that a mere conception or idea of a desirable function or result, resting in the mind, which might be obtained by a machine or device, is not invention, either for the purpose of obtaining a monopoly, or for the purpose of making the defense of prior invention. Invention, in the legal sense, must involve a practical, successful, operative device. Rubber Tip Pencil Co. v. Howard, 20 Wall. 498, 22 L.Ed. 410; 1 Robinson on Patents, Sec. 335; Knapp v. Morss, 150 U.S. 221, 14 Sup.Ct. 81, 37 L.Ed. 1059; 2 Greenleaf on Evidence (16th Ed.) Sec. 495, and cases cited. It must be a perfected invention, and either put to practical use or be clearly capable of such use, and the novelty of an invention is not negatived by a prior useless process or thing. Walker on Patents (3d Ed.) Sec. 65. Nor is anticipation made out by a device which might, by slight modification, be made to perform the same function, if the prior invention were not designed by its maker nor adapted to actual use for the performance of such function. Topliff v. Topliff et al., 145 U.S. 156, 12 Sup.Ct. 825, 36 L.Ed. 658; Krementz v. The S. Cottle Co., 148 U.S. 556, 13 Sup.Ct. 719, 37 L.Ed. 558; Clough v. Barker, 106 U.S. 166, 1 Sup.Ct. 188, 27 L.Ed. 134. And of course the prior invention, when relied upon as anticipating, must be a complete, operative instrument, and the burden to show this is on defendant. 2 Greenleaf on Evidence (16th Ed.) Secs. 501-503, and notes. Another well-settled proposition is that even in a combination patent infringement is well-established whenever the alleged infringing device accomplishes the same result, and substantially in the same way. Cantrell et al. v. Wallick, 117 U.S. 689, 6 Sup.Ct. 970, 29 L.Ed. 1017; Rowell et al. v. Lindsay et al., 113 U.S. 97, 5 Sup.Ct. 507, 28 L.Ed. 906; Machine Company v. Murphy, 97 U.S. 120, 24 L.Ed. 935. And mere colorable and immaterial difference in the mechanical arrangement and adjustment, or difference in the form of parts of the structure, or methods of fastening or bolting such forms together, does not avoid infringement, as omitting an element, so long as the same result is obtained, and substantially in the same way. Morey v. Lockwood, 8 Wall. 230, 19 L.Ed. 339; Winans v. Denmead; 15 How. 330, 14 L.Ed. 717; Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 18 Sup.Ct. 707, 42 L.Ed. 1136; Walker on Patents, Secs. 350-353, 363-368, and illustrative cases. Nor for similar reasons will an immaterial addition avoid infringement. Walker on Patents, Sec. 347. And no rearrangement or transposition of the parts or substitution of one thing for another avoid infringement, so long as the fact remains that the same result is worked out in practically the same way. Walker on Patents, Secs. 348-350.

'Attention may, I think, be called to the now well-established doctrine or the recent cases in regard to combination patents, which put those inventions on a different footing from what the tendency of the reasoning of the older cases put them. The older cases are well calculated to create the impression that a combination patent must in all cases receive a narrow construction, and that such an invention is hardly entitled to the benefit of the doctrine of equivalents. It has been demonstrated, and particularly in recent years, that patents which satisfy in the highest degree the requirements of the public and a growing and complex business establishment such as ours, are not limited to the class called the primary or pioneer patents, but include combination patents. Indeed, the practical utility, and the change from failure to success, is shown in the highest degree in combination patents, and in view of this a more liberal attitude is now shown towards such patents. In the case of Brammer v. Schroeder, 106 F. 918, 920,-921, 46 C.C.A. 41, the result of the more modern cases is restated by Judge Sanborn in the following language: ' One who invents and secures a patent for a machine or combination which first performs a useful function is thereby protected against all machines and combinations which perform the same function by equivalent mechanical devices. * * * In other words, the term mechanical equivalent, when applied to the interpretation of a pioneer patent, has a broad and generous signification. This general rule of law, like every other principle of jurisprudence, applies equally to all patents, whether for combinations, machines, or combinations of matter. If, however, one invents and secures a patent for a new combination of old mechanical elements, which first performs a useful function, he is protected against all machines and combinations which perform the same function by equivalent mechanical devices, to the same extent and in the same way as one who invents and patents a machine or composition of matter of like primary character. The doctrine of mechanical equivalents is governed by the same rules, and has the same application, when infringement of a patent for a combination is in question as when the issue is over the infringement of a patent for any other invention. Imhaeuser v. Buerk, 101 U.S. 647, 653, 25 L.Ed. 945; Griswold v. Harker, 62 F. 389, 391, 10 C.C.A. 435, 437, 27 U.S.App. 122, 150; Thomson v. Bank, 53 F. 250, 253, 3 C.C.A. 518, 521, 10 U.S.App. 500, 509; Seymour v. Osborne, 11 Wall. 516, 542, 548, 20 L.Ed. 33; Rees v. Gould, 15 Wall. 187, 189, 21 L.Ed. 39; Fay v. Cordesman, 109 U.S. 408, 420, 3 Sup.Ct. 236 27 L.Ed. 979; Watermeter Co. v. Desper, 101 U.S. 332, 25 L.Ed. 1024; Gage v. Herring, 107 U.S. 640, 2 Sup.Ct. 819, 27 L.Ed. 601; Machine Co. v. Murphy, 97 U.S. 120, 24 L.Ed. 935; National Cash Register Co. v. American Cash Register Co., 53 F. 367, 373, 3 C.C.A. 559, 565, 3 U.S.App. 340, 357; Belding Mfg. Co. v. Challenge Corn Planter Co., 152 U.S. 100, 14 Sup.Ct. 492, 38 L.Ed. 370.'

'And in the case of Keystone Manufacturing Company v Adams, 151 U.S. 139, 14 Sup.Ct. 295, 38 L.Ed. 103, Mr. Justice Shiras, speaking for the court said: 'Where the patented invention consists of an improvement of machines previously existing, it is not always easy to point out what it is that distinguishes a new and successful machine from an old and ineffectual one. 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 courts should not be ready to adopt a narrow or astute construction fatal to the grant.' And so in the case of Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 18 Sup.Ct. 707, 42 L.Ed. 1136, Mr. Justice Brown, speaking for the court, said: 'The fact that this invention was first in the line of those which resulted in placing it within the power of an engineer, running a long train to stop in about half the time and half the distance within which any similar train had stopped, is certainly deserving of recognition, and entitles the patent to a liberality of construction which would not be accorded to an ordinary improvement upon prior devices.' And in another of these Westinghouse cases, namely, Westinghouse Air-Brake Co....