Shepherd v. Deitsch

• Decision Date: 09 March 1905
• Citation: 138 F. 83
• Parties: SHEPHERD v. DEITSCH et al.
• Court: U.S. District Court — Southern District of New York

138 F. 83

SHEPHERD v. DEITSCH et al.

United States Circuit Court, S.D. New York.

March 9, 1905

Briesen & Knauth and Arthur v. Briesen (Hans v. Briesen, of counsel) for complainant.

Joseph L. Levy, for defendants.

HAZEL District Judge.

This suit is brought by the patentee upon a bill which alleges infringement of United States letters patent No. 601,405 issued March 29, 1898, to Robert B. Shepherd, which relates to brushes wherein the back is reticulated, or perforated the openings or slots extending through the back of the brush between the bristles substantially at right angles to the plane of the back, 'so that the brush may be readily cleaned and maintained in a clean condition. ' The defenses are anticipation, noninfringement, and nonjoinder of necessary party complainant.

The first point for decision is whether the Celluloid Company, an alleged exclusive licensee, is an indispensable party complainant. Upon the expiration of the original license to that company, which was for a term of three years, and which did not in terms transfer the right to its successors or assigns, a supplemental agreement was made between the patentee and the licensee, which in effect not only modified and qualified the earlier agreement, but also expressly reserved to the patentee the right to license one other person, firm, or corporation to make and sell tooth and nail brushes under the patent in suit. The supplemental agreement contains no provision which prohibits the complainant, within the reserve power, to license a firm or corporation of which he was a member or stockholder. Moreover, the original license and the license to the Martin & Bowne Company obliged the complainant to promptly prosecute infringers of the said patent. Neither of these instruments conveyed any title to the patent. Under these circumstances no exclusive monopoly was granted, but a mere personal license to manufacture and vend the patented article. Oliver v. Rumford Chemical Works, 109 U.S. 75, 3 Sup.Ct. 61, 27 L.Ed. 862; Gayler v. Wilder, 10 How. 477, 13 L.Ed. 504; Troy Iron and Nail Factory v. Corning, 14 How. 193, 14 L.Ed. 383; Waterman v. McKenzie, 138 U.S. 255, 11 Sup.Ct. 334, 34 L.Ed. 923; Kilburn v. Holmes, 121 F. 750, 58 C.C.A. 116; Hapgood v. Hewitt, 119 U.S. 226, 7 Sup.Ct. 193, 30 L.Ed. 369. It follows that the suit was not improperly brought in the name of the complainant.

The single claim of the patent is in the following words:

'A brush having a reticulated back, the openings in which extend between the bristles, said openings being of the greatest diameter at the rear of the brush and decreasing in diameter to the face thereof, whereby the most material is provided at the face of bristle-receiving side of the brush back.'

The crucial question is whether a restricted interpretation must be given to the words 'decreasing in diameter to the face thereof,' found therein. At the outset in may be briefly stated that the scope of the claim depends upon the character of the invention and the prior state of the art. Admittedly, the field of invention is limited, and the patent is narrow. Brushes having reticulated or perforated backs, the openings extending through between the bristles to the face thereof, were not new at the date of the invention in suit, as may be seen from an inspection of the patents to Ashburner (No. 381,749, dated April 24, 1888), Osborn (No. 457,007, dated August 4, 1891), Maloney (No. 557,844, dated April 7, 1896), British patent to Bidwell & Young (No. 5,948, dated March 21, 1895), British patent to Pedder (No. 2,450, dated August 28, 1867), and British patent to Ashburner (No. 7,467, dated April 8, 1896). The specification of the patent in suit states:

'Heretofore in brushes of this character it has been customary to make each of the openings in the back in the form of a frustum of a cone, with the base of the frusto-conical openings next to the bristles, and the narrowest part of the openings at the rear, or to make the openings of the same extend (extent) throughout, from the face to the back of the brush back. Great difficulty has been experienced with brushes made in this manner, inasmuch as the least material is provided where the bristles are mounted and where the most material and strength are required. Furthermore, by constructing a brush back with openings in the manner hereinbefore described, it has been found impracticable to mount the bristles near the edge of the brush, so that they will project outwardly from a longitudinal median line, as is illustrated in the drawings.'

As will be seen, the primary object of the patentee was to provide means for cleaning the bristles and to strengthen the base of the brush back, to attain which the slots between the rows of bristles have the greatest diameter or width at the rear and the narrowest at the face or bristle-bearing side of the brush back. When the lateral walls or slots are tapered to the face of the brush back, as described, the structure manifestly is provided with pyramidal bases to triangular bars, which enable their adaptation and use for mounting the bristles. Not only are larger spaces furnished in which to mount the bristles, but the task or projecting them in an oblique direction at the edge of the brush is facilitated. By these means a strong and efficient open back brush is produced. Neither tooth brushes nor hair brushes, the class to which the article in controversy belongs, are specifically mentioned in the patent.

In the manufacture of tooth brushes the complainant has departed from the strict letter of his claim. Instead of gradually tapering the lateral walls of the slots to the face or bristle-bearing side of the brush back, the inclination is a short distance only towards, and not actually to, the face thereof. In explanation of this modification, it is shown in the record that, because of the thickness of the brush back and the narrowness of the bars, it is necessary to bevel the openings or slots at the rear of the brush, without, however actually lessening the diameter of the openings to the bristle side. The deviation from the claim concededly does not alter the functions of the brush, and therefore its materially is questionable. This modified form of brush back is also the structure adopted by defendants. the defendants contend that the elemental claim, in view of the state of the art and the specification and drawings of the patent, precludes the modification indicated. They insist that as the slots or openings of their tooth brush do not actually decrease in diameter to the bristle end, and because no more material is there provided than at other points between the front and the back, they do not infringe. Is defendant's structure an evasion of the patent in suit, or must the claim be limited to the specific construction shown? Counsel for defendants urges that the language of the claim, namely, 'decrease in diameter to the face thereof ' must be strictly interpreted to mean a continuous slant to the face of the brush back. This interpretation is thought to be too technical, and a more...