Wagner v. Meccano, Limited

• Decision Date: 16 November 1917
• Docket Number: 3014.,2977
• Citation: 246 F. 603
• Parties: WAGNER et al. v. MECCANO LIMITED.
• Court: U.S. Court of Appeals — Sixth Circuit

246 F. 603

WAGNER et al. v. MECCANO LIMITED.

Nos. 2977, 3014.

United States Court of Appeals, Sixth Circuit.

November 16, 1917

On Rehearing, January 14, 1918.

H. A Toulmin and H. A. Toulmin, Jr., both of Dayton, Ohio, for appellants.

Healy Ferris & McAvoy, of Cincinnati, Ohio (Reeve Lewis and Ralph L. Scott, both of New York City, Wm. B. Kerkam, of Washington, D.C., and Mauro, Cameron, Lewis & Massie, of New York City, of counsel), for appellee.

Before WARRINGTON and KNAPPEN, Circuit Judges, and SANFORD, District judge.

WARRINGTON Circuit Judge.

The Meccano Limited, a British corporation, is engaged in the manufacture and sale of outfits which are adapted to ready and repeated assembling of parts into a variety of mechanical toys; and with each main outfit it supplies a manual of instructions and illustrations for use in building the toys. The corporation brought suit in the court below against Francis A. Wagner, trading as the American Mechanical Toy Company, and against the Strobel & Wilken Company, charging defendants with acts of unfair competition consisting, in effect, of sales of outfits substantially identical in parts and in appearance, shape, and dimensions with those of plaintiff, and accompanied by manuals of instructions in which defendants copied, counterfeited, and simulated the appearance and arrangement, illustrations and language, of plaintiff's manuals, particularly those on which copyright registrations had been secured; also with acts of infringement of plaintiff's copyrights, consisting in substance of copying and counterfeiting plaintiff's Meccano Royal Book of Instructions, No. 291,375, June 22 1911, and Meccano Manual of Instructions, No. 294,670, August 14, 1911; and also with infringement of plaintiff's certain letters-patent. The defendants answered, admitting that Wagner, under the trade-name mentioned, manufactures outfits known as the 'American Model Builder,' and that he and his codefendant sell such outfits accompanied by manuals of instructions, alleging that by reason of anticipation and the prior art the patent sued on is void, and denying the allegations of unfair competition and of infringement alike of the copyrights and patent in suit; and by counterclaim they sought damages against plaintiff for alleged unfair competition on its part. The case was heard below on its merits, and decree was rendered in favor of Meccano Limited on all the issues, save only as to one feature of certain of the patent claims, with the usual order of injunction and accounting; and the counterclaim was dismissed. Defendants appealed, and will hereafter be referred to as appellants. Subsequently, and before the statement of evidence had been settled in the court below and so before the transcript had been filed in this court, appellants obtained an order here empowering the court below, if it should deem proper, to reopen the case and to receive further evidence, including an alleged newly discovered anticipation of the patent in suit. Later, appellants moved the trial court to certify to this court a request to dismiss the appeal and remand the record, and, upon the granting of such request, to reopen the case, vacate the injunction and decree, and allow a hearing upon the alleged newly discovered evidence. The trial judge regarded the evidence as insufficient to warrant a change of his previously expressed views of the case, and so denied the motion. Appeal was also taken from this order.

The opinion below is reported in (D.C.) 234 F. 912, and the facts presented before the first appeal are there considered. We approve the court's conclusions upon the issues joined, except the one in relation to the patent in suit. This patent, No. 1,079,245, was issued by the United States to Frank Hornby, a British subject, November 18, 1913, and on the same day was assigned by him to Meccano Limited. The title selected to indicate the nature and design of the claimed invention is 'Perforated Plate,' and in the specification the patentee states that he had 'invented certain new and useful improvements in perforated plates. ' He further states:

'This invention relates to improved elements, and combinations of such elements with other elements or parts, to be used in the construction of toys or working models of machinery, structures, or similar mechanisms.'

The specification also, in effect, states that there was then an existing system for making up toys from 'perforated elements, embodying also the use of gear wheels, pulleys, spindles, and the like,' ^[1] that the various members were adapted to be assembled and mounted in these perforated parts and connected by bolts and nuts, and that it had been found desirable, in order to secure greater rigidity in the structures and to avoid the use of many small strengthening strips, 'to provide perforated flanged plates and angle brackets. ' And thereupon the specification states:

'The present invention relates to certain forms of perforated sheet metal elements for use as aforesaid. In all the forms the plates having perforated flanges, preferably integral, are an essential feature of the invention.'

The perforated plates so referred to are illustrated by accompanying drawings; there are two of these plates, Fig. 1 showing in perspective a 'sector shaped plate,' its width tapering toward one end, and Fig. 4 a 'rectangular shaped plate.' They consist of sheet metal with apparently integral flanges along their sides and at right angles to the bodies of the plates. The body of the rectangular plate has several rows of perforations equally spaced both ways, and each flange a single row, equally spaced and disposed lengthwise of the flange. The body of the sector plate has a single row of perforations extending lengthwise and in the center of the plate, with a similar row transversely disposed near each of its ends, and each flange has a similar row disposed lengthwise-- all uniformly spaced. There are still other drawings representing a number of different toys which may be built up by associating one or both of these plates with perforated metal strips, perforated angle brackets, clips, wheels, and ropes, and by suitably disposing the parts and fastening them with bolts and nuts. It is to be inferred from the specification and certain of the claims, that the parts thus named, other than the plates, are but a portion of 'standard parts' which may be used in combination with the plates. However, no specific parts except only the plates are called for by any of the claims; and hence the standard parts may be safely eliminated from the consideration of the patent except as an undefined class adapted to toy building in combination with the plates. Thus the two plates and their qualities are controlling features as respects the question of patentable invention. There are ten claims, and all are in issue. The first eight are each limited to a metal flanged plate containing perforations and, except 7 and 8, 'adapted for use in the attachment of other parts,' while 9 and 10 are combination claims each embracing a perforated plate with a 'plurality of other perforated mechanical elements. ' The differences in claims may, for the purpose of this opinion, be fairly illustrated by claims 1, 7, 8, and 10, which are copied in the margin. ^[2] It is to be observed that some of the claims are broader than others; as, for instance, claims 1 and 10 do not call for any perforations at all in the body portions of their respective plates, though they do in the flanges, while claims 7 and 8 call for perforations in both the body portions and the flanges of their several plates. It is also to be remembered that the object of the perforations is to adapt the plates for use in attachment of other and well-known parts. We have then two simple channel plates whose perforations were predetermined by other and standard perforated elements, also a previously known, if not an old, plan of building up toy structures by the use of perforated elements, in connection with gear wheels, pulleys, spindles, etc., and also a declared purpose to use these perforated channel plates as a means to diminish the number of parts and 'to produce greater rigidity in the structures.'

We thus come to the question whether there is any disclosure amounting to patentable invention. There are a number of reasons why we think there is not. In the first place, the manual copyrighted by the Meccano Limited in 1910 shows perforated rectangular plates with integral, though solid flanges, one of them having also an attached perforated flange (called in the manual an angle bar or girder); and these disclosures were regarded by the learned trial judge as anticipating the patent 'so far as the language of the claims is applicable to the rectangular plate' (D.C.) 234 F. 924, 925. The manual was a prior 'printed publication' within the meaning of section 4886, Rev. Stat. U.S. (Comp. St. 1916, Sec. 9430); and its effect upon the patent in suit is in principle the same as if the manual had been put out by a stranger. James v. Campbell, 104 U.S. 356, 382, 26 L.Ed. 786; Schieble Toy Novelty Co. v. Clark, 217 F. 760, 766, 133 C.C.A. 490 (C.C.A. 6). Further, as pointed out in the opinion below, the rectangular plate in issue finds close analogy in the perforated rectangular blocks shown in the patent to Quackenbush, September 25, 1877, No. 195, 689. That patent, it is true, was for an improvement in wooden toy-building blocks associated with wheels, spindles, and the like; but the idea of a change from wood to metal in adapting old elements to other structures in order as here to make them more rigid is well within the scope of mechanical skill (Wise Soda Fountain Co. v. Bishop-Babcock-Becker, 240 F. 733, 736, 153 C.C.A. 531 and...