Union Typewriter Co. v. L. C. Smith & Bros.

• Decision Date: 10 September 1909
• Citation: 173 F. 288
• Parties: UNION TYPEWRITER CO. v. L. C. SMITH & BROS.
• Court: U.S. District Court — Western District of Pennsylvania

173 F. 288

UNION TYPEWRITER CO. v. L. C. SMITH & BROS.

United States Circuit Court, W.D. Pennsylvania.

September 10, 1909

Clarence P. Byrnes and Henry D. Donnelly, for complainant.

James A. Watson and Livingston Gifford, for defendants.

ARCHBALD District Judge (specially assigned) (specially assigned).

The patent in suit is for a so-called 'visible' typewriter, in which the printing is at all times able to be seen by the operator, without stopping the work or moving any part. This is a desirable feature, and may well be taken as characteristic of the coming machine, if not indeed, indispensable to it. Accompanying this, the machine of the patent has a single bank of keys, with type bars carrying different type-- upper and lower case letters different marks of punctuation, numerals, and the like-- the segmental frame in which they are mounted being made to shift vertically in order to bring the one or the other character to the printing point. It is the vertical shifting of this frame that dominates the device; a single keyboard with two-character type bars and a front stroke, with resulting visibility, being thereby secured.

The defendants manufacture a typewriter which also has two-letter type bars, pivoted concentrically on a segmental frame, which is shifted vertically to bring the different characters to the printing point. The only distinction from the machine of the patent, taking it as it reads, consists of the 'hitch up' between the key lever and type bars, which in the complainant's machine is direct, both keyboard and type bars being carried on a pivoted frame or cradle, by the rocking of which, without breaking the connection, the shifting of the type-bar frame is brought about; while in the defendants' machine the connection is by links permitting the keyboard to remain stationary, the type-bar frame alone being moved.

The patent was issued to James D. Daugherty August 23, 1892, on an application filed March 8 of the same year; the invention going back, as it is said, to some time in 1883. There are two claims relied on, as follows:

'37. In a typewriter, the combination, with a series of individual pivoted type bars carrying two or more type, of a vertically-shifting frame for sustaining said bars and suitable means for shifting said frame to bring either of the type in proper position to make an impression.

'38. In a typewriter, the combination, with a series of type bars provided with two or more type, of a vertically-shifting frame for sustaining said type bars concentrically, a series of key levers connected with said type bars, and a series of keys for operating said levers.'

The only difference between these claims is that in the last the type bars are concentrically sustained. Taking them broadly as they read, they cover every machine in which, with the other elements involved, there is a vertical shifting of the type-bar frame; and according to this, without more, the defendants infringe. It is only as they are restricted to the particular character of structure specified in the patent in which this idea is utilized that they do not. It is on the construction, therefore, to be given to them, the patent being valid, that the case turns.

There is nothing to anticipate the patent, whatever its construction, in the prior art. With all the variety which there appears, there is no device to in any way correspond. The idea of visibility, no doubt, was not new. There was a crude attempt at it in the Horton, which was applied for as early as March, 1882, as well as in the Brooks of the same year, to say nothing of the Fitch (1886), the Prouty and Hynes (1887- 1888), ^[1A] the Grundy (1887-1889), the Sholes (1889-1891), and the Copeland (1887-1892), which followed on. Neither was it new to shift the type-bar frame, to bring the upper or lower character to the printing point. The usual shifting was of the platen or roller, against which the type bars strike, as in the Brooks (1875-1878), the Jenne (1879-1897), and the Sholes (1889-1891). But the shifting of the type segment as an alternative is suggested in the Brooks, which is the original two-letter type-bar machine, only it is so undeveloped as to be of little account. It definitely appears in the Wagner (1885), the Fitch (1886), the Unz (1887-1896), the Scudder (1886-1891), the Copeland (1887-1892), and the second Wagner (1888-1889). But in each of these the shifting is horizontal, and not vertical, an important distinction, as upon it the visibility of the writing, as well as the other advantages residing in the present invention, are worked out.

Nor can it be successfully maintained that it involved nothing patentable to transfer the shifting from the platen to the type-bar segment, or to change the direction to up and down. Invention has often been predicated upon less; and the highly beneficial results thereby secured fully justify its recognition here. It may not be entitled to any extended scope. Union Writing Machine Company v. Domestic Sewing Machine Company, 109 F. 85, 48 C.C.A. 244. It is not as though Daugherty originated the visible idea. That, by suggestion at least, was already in the art, although it must be conceded that he was the first to give it practical shape. And so, possibly, was the shifting of the type-bar segment, although that depends on how far the invention is able to be carried back. It is tied up also, to a certain extent, to the concrete expression of it which we have. And it may be doubtful whether the inventor had any conception of it outside of the rocking cradle, carrying keyboard and type bars, which he devised, except as in one of his patents he shifts the platen vertically instead. But, allowing all that is so said, there can be no question as to the novelty and inventive character of that for which the device, all things considered, is entitled to stand.

It is immaterial, in view of this, to inquire just when the invention was conceived, or at what date there was a reduction to practice, or whether due diligence was used, of which considerable evidence has been given, and which has been extensively discussed. These are important in interference proceedings, or where an issue as to priority between different inventors for the same invention is raised, but not where there is a mere comparison with other patents to determine the novelty of the device. Nor are the dates of the applications of alleged anticipating references of any account in such a case. A patent takes rank as a publication, negativing novelty, only when it comes out. Bates v. Coe, 98 U.S. 31, 25 L.Ed. 68; Diamond Drill Co. v. Kelly (C.C.) 120 F. 282; Eck v. Kutz (C.C.) 132 F. 758, 764. A mere application has no such effect. The case of Automatic Weighing Machine Co. v. Pneumatic Scale Co. (C.C.A.) 166 F. 288, was one of priority of invention, and is not in point. It does not matter, therefore, how far in complete form the invention here is carried back. There is no question that it was in the mind of the inventor, in its essential features, as early as 1885, which, except the Brooks, the Horton, and the Wagner, which are of no consequence in this connection, is earlier than anything to which reference has been made. Indeed, so far as appears, it would be new and unanticipated at whatever time it came in. The validity of the patent, having regard to its general features, must therefore be sustained. The construction of the particular claims in controversy is the only question; and that depends upon consideration to be now discussed.

The first appearance of the invention in the Patent Office was by application filed November 15, 1889, which may thus be regarded as expressive of the original conception of it, of which those coming after are merely variant forms. This was held by the examiner to have been anticipated by certain references, and not to be mechanically operative; and acquiescing in this view, on June 13, 1890, it was formally withdrawn. Having meantime perfected his ideas, and remedied what was wanting, the inventor, on May 2, 1890, filed a new application, which, after sundry rejections and amendments, was finally made the subject of interference proceedings, June 22, 1891, with the application of Arthur W. Street, as to two claims, which were held to be included in two of Street's. Before this, however, on June 9, 1891, certain other claims which had been allowed were canceled and made the subject of a divisional application, on which a patent, No. 457,258, was granted August 4, 1891. There is no particular significance in this patent, except as it is a part of the history of the proceedings of the Patent Office, and except, also, as it disclaims the pivoted shifting frame carrying the type bars shown in the others. Neither is there, to the patent for an improvement on both of these, which was applied for September 1, 1891, and granted July 12, 1892, as No. 478,925, save only that it provides for a vertical shifting of the platen, in place of the type bars. Meanwhile, in the interference proceedings, Daugherty, in his preliminary statement, having declared that he conceived the idea of shifting the type bars, instead of the carriage, as early as 1880, and his invention as a completed whole in the first part of 1885, while Street was only able to carry back his inventive conception to the spring of 1889, Street dropped out; and Daugherty, having gone on to a hearing and proved his contentions, was duly adjudged priority of invention January 21, 1892, and on March 15, 1892, patent No. 470,990 was issued to him accordingly. A week before this, on March 8, 1892, the patent in suit was applied for; and into this, by way of amendment, on June 23 following, claims 37 and 38, which are the subject of controversy were brought in; the...