Singer Mfg. Co. v. Cramer

• Decision Date: 13 May 1901
• Docket Number: 638.
• Citation: 109 F. 652
• Parties: SINGER MFG. CO. v. CRAMER.
• Court: U.S. Court of Appeals — Ninth Circuit

109 F. 652

SINGER MFG. CO. v. CRAMER.

No. 638.

United States Court of Appeals, Ninth Circuit.

May 13, 1901

Chas K. Offield and Wheaton & Kalloch, for plaintiff in error.

John H Miller, for defendant in error.

Before GILBERT and ROSS, Circuit Judges, and HAWLEY, District Judge.

GILBERT Circuit Judge.

Herman Cramer, the defendant in error, brought an action at law against the Singer Manufacturing Company, the plaintiff in error, for an infringement of the first claim of letters patent No. 271,426, of date January 30, 1883, for a new and improved sewing-machine treadle. The machines which were manufactured by the Singer Manufacturing Company, and which it was alleged infringed upon the Cramer patent, were made under letters patent No. 306,469, issued October 14, 1884, to Phillip Diehl, for 'sewing-machine stand and treadle.' Claim 1 of the Cramer patent reads as follows:

'The vertical double brace joining the legs of the two ends of a sewing machine, provided with holes through its lower extremities to serve as bearings, in combination with a treadle provided with trunnions fitted to oscillate in said bearings, substantially as specified.'

The specification described the treadle as provided with two trunnions cast as a solid portion thereof, and extending from its sides into loopholes in the vertical double brace, the trunnions being sharpened to an edge or corner along their lower sides, and the lower end of the loopholes being hollowed to an angle more obtuse than the edge of the trunnion, to serve as bearings for the same, and to permit the rocking motion common to treadles. The inventor proceeded to say: 'I am aware that sewing-machine treadles have before been provided with V-shaped bearings, and I do not claim the same as my invention. ' The case was tried before a jury, who found for the defendant in error, and assessed his damages at $12,456. Much of the discussion which is found in the voluminous briefs for the plaintiff in error pertains more properly to the merits of the controversy, the construction of the patent, and the weight of the evidence which was introduced before the jury, and would be more directly applicable to the case if this were an equity suit and were here on appeal. It must be borne in mind that the case comes to us by writ of error to review a judgment rendered upon the verdict of a jury, which can be reviewed only according to the principles of the common law and in the particulars to which error is assigned. Our attention must not be diverted from the questions whether the trial court erred in its rulings upon the evidence, or in giving or refusing instructions to the jury, or in refusing to take the case from the jury upon the ground which was stated in the motion therefor.

One of the assignments of error principally relied on by the plaintiff in error is that the court refused to give a peremptory instruction to the jury at the close of the evidence to find for the defendant. This instruction was asked upon the ground that 'no infringement had been shown.' Whether or not it was error to refuse the instruction depends upon whether there was any evidence whatever of infringement, which, if credited by the jury, would have justified their verdict. It is contended on behalf of the plaintiff in error that the claim of the patent which is sued upon calls for a combination of elements, all of which were old, and that the court could plainly see from an inspection of the Diehl patent that is omitted substantial features of the patent upon which the action was brought. We find in the record evidence which went to the jury tending to show that the essential and important feature of claim 1 of the Creamer patent was the location of the treadle supports in the vertical cross brace which connected the legs or side pieces of the machine, and that such location in the cross brace was new with the Cramer invention. There was also evidence tending to show that by so locating the treadle a better alignment of the treadle could be kept and maintained, and that the tendency of the machine in operation to loosen the joints which hold its legs in position, thereby displacing the treadle, was overcome. The evidence was that theretofore the treadle had been mounted in the legs or side pieces of the machine, or on a cross rod connecting the legs, but never before had been inserted in the vertical cross brace. In addition to other evidence of the utility of the plaintiff's invention and of its novelty was the evidence afforded by the admissions and declarations of the plaintiff in error. It was shown that shortly after obtaining his patent, on February 8, 1883, Cramer submitted to that corporation the claims of his invention, and endeavored to sell it his patent. In the following year Diehl, who was an employee of the Singer Company, obtained his patent upon his device, which also places the bearings of the treadle in the vertical cross brace. The advantage of this construction of treadles under the Diehl patent was promptly published to the world by the Singer Company. Its catalogue of 1885 exhibits cuts of machines with the treadles hung in the vertical cross brace and thus refers to them: 'The balance wheel and treadle have their bearings entirely independent of the stand (or legs), thereby assuring a correct adjustment and easy action. ' This device prevents the 'binding' which so often follows a slight displacement of the supports of the machine, a difficulty rarely appreciated, except by a skilled mechanic, which hitherto had been considered impossible to remedy. In another circular is shown a cut of a machine containing the treadle mounted in a vertical brace, accompanied with these words: 'It also shows the new (patented) and light-running stand, upon which all our family machines are mounted, with band wheel and treadle entirely supported within the brace, insuring accurate adjustment and ease of operation. ' In its catalogue of 1889 the company said: 'this bearings being entirely within the brace, the adjustment is not affected by any strain which may be put upon the stand.'

But it is contended that, inasmuch as the claim of the Cramer patent is for a combination of elements, all of which were old, the patent is not entitled to the doctrine of equivalents, but must be confined to the form which is presented in the claim and specifications. It is urged that the Diehl patent presents material variations from those forms,-- so material as to avoid the charge of infringement. It is said that the Diehl patent uses point-center bearings instead of knife-edged bearings with trunnions, which are essential features of the Cramer patent. The trunnions in the Cramer patent are projections upon the sides of the treadle in its axis, and their purpose is to afford the knife-edged bearings upon which the treadle turns. In the Diehl patent there are no such projections, and the treadle at the point of axis turns upon point-center bearings,-- that is to say, upon pointed screws which are inserted through holes in the vertical cross braces, and are set in holes countersunk in the treadle. There was evidence before the jury that these screws in the Diehl patent, upon which the treadle turned, were the mechanical equivalents of the knife-edged bearings and trunnions of the Cramer patent, and that by inserting the screws through the cross brace in the Diehl device the same result was secured by a reverse method that was secured in the Cramer device. If the evidence was true that Cramer was the first to present a new and useful combination by mounting his treadle in the vertical cross brace, thereby obtaining the advantages which some of the witnesses testified to, he was undoubtedly entitled to the protection of that combination, and to the exclusive right to mount a treadle in the cross brace, no matter what the form of the bearings of the treadle might be. This view is fully sustained by the general doctrine of the decisions. Winans v. Denmead, 15 How. 330, 14 L.Ed. 717; Ives v. Hamilton, 92 U.S. 426, 23 L.Ed. 494; Machine Co. v. Murphy, 97 U.S. 120, 24 L.Ed. 935; Hoyt v. Horne, 145 U.S. 308, 12 Sup.Ct. 922, 36 L.R.A. 713.

It is earnestly contended that, inasmuch as the claim of the Cramer patent calls for a 'treadle provided with trunnions,' the trunnions are made an essential feature of the construction of the treadle, and that there can be no infringement by the use of a treadle which has no trunnions. We do not think, however, that the court should have taken the case from the jury upon that ground. In order to mount the Cramer treadle in the vertical cross brace upon knife-edged bearings, it was absolutely necessary that it be provided with trunnions or the equivalent thereof. The trunnions in this case are the knife edges of the bearings, no more and no less. There could be no such bearings without the projections, by whatever name they may be called. If the patentee was entitled to the doctrine of mechanical equivalents, and to the protection of the right to mount his treadle in the vertical cross brace with bearings, whether knife-edged or point-center, his right certainly is not affected or diminished by the use of the words 'provided with trunnions,' as found in his claim, provided that the jury found, as they may have done from the evidence, that the one element of his combination, which consisted in mounting the treadle in the cross brace, was new, and that the bearings used in the Diehl patent were the mechanical equivalent of his bearings.

It is contended that the court erred in excluding certain evidence which was offered concerning the alleged complicity of the Singer Company with a prior action prosecuted by the defendant in error against an agent of the company. That action had...