West v. Premier Register Table Co., 2195.

• Decision Date: 30 July 1928
• Docket Number: No. 2195.,2195.
• Citation: 27 F.2d 653
• Parties: WEST et al. v. PREMIER REGISTER TABLE CO.
• Court: U.S. Court of Appeals — First Circuit

27 F.2d 653 (1928)

WEST et al. v. PREMIER REGISTER TABLE CO.

No. 2195.

Circuit Court of Appeals, First Circuit.

July 30, 1928.

George K. Woodworth, of Boston, Mass., for appellants.

Frederick L. Emery and Edward H. Palmer, both of Boston, Mass. (Everett S. Emery and Emery, Booth, Janney & Varney, all of Boston, Mass., on the brief), for appellee.

Before BINGHAM and JOHNSON, Circuit Judges, and LOWELL, District Judge.

JOHNSON, Circuit Judge.

This is an appeal in a patent case from an interlocutory decree of the District Court of the United States for the District of Massachusetts. For the sake of convenience the parties will be designated as they were in the court below.

In the complainant's bill infringement was charged of letters patent No. 1,343,600, issued to the plaintiff as the assignee of Elbert L. West and the defendant James West upon their application, filed May 16, 1919, for an improvement in printers' tables adapted for inspecting proof sheets, to determine the alinement thereof. In the application the invention is thus described:

"The invention consists in a printer's table equipped with a transparent top, preferably of glass, with illuminating means, such as electric lamps, thereunder, the top of said table being equipped with sheet alining and clamping means, and also preferably with an alining bar or ruler that is mounted and connected for adjustment toward and away from the base of the table, with provision for holding the same always parallel with the table base."

It is stated that it is "adapted for inspecting proof sheets to determine the alinement thereof, such as large sheets, on which are arranged series of printed units, such as a number of pages of a book, which are to be printed simultaneously, and which it is required to arrange in precise alinement with one another, so that, when cut and trimmed, the marginal edges of all the pages will be uniform."

On January 14, 1920, the above-named applicants assigned all their interest in the said invention to the Premier Register Table Company, a corporation organized under the laws of the commonwealth of Massachusetts, which was properly recorded in the United States Patent Office on May 19, 1920.

The alleged infringing patent, No. 1,601,461, was issued on September 28, 1926, to the National Printers' Supply Company, a corporation organized under the laws of Massachusetts, upon the application of the defendant James West, filed June 10, 1925.

The National Printers' Supply Company was organized by the defendant West. He is its principal stockholder, and has acted as president and treasurer or assistant treasurer since its organization.

Under this patent a printer's table is being manufactured by the defendant Wade, upon the order of the National Printers' Supply Company.

The object of the tables described in both patents is the same, and they are strikingly similar in all their physical aspects, except that in the patent in suit the glass plate at the top of the table has a straight edge bar at its base, and a sheet which is placed upon it is secured by means of clamps at the base. The alleged infringing table is provided with stops at the base of the top, which are in exact alinement, and, instead of clamps, fingers are provided for holding the sheet.

In the patent in suit the transverse alining bar is held in exact parallelism with the alining edge of the base by means of wires annexed to each end of the bar and passing over pulleys at each corner of the top, crossing each other at the center, so that the movement of the bar at one end in any direction causes a like movement of the other end in the same direction, preserving the parallelism of the bar at all times with the alining edge of the base. This same object is accomplished in the alleged infringing patent by means of gears and racks at the sides of the top.

The patent was issued for a combination of what are conceded to be elements old in the prior patented art. These are a transparent top, means for projecting light upward therethrough, an alining edge at one side of the top, sheet-clamping means, and an alining bar mounted for movement transversely across the table, with means for preserving the alinement of the bar with the alining edge.

The patent was allowed on the ground that the combination was novel, useful, and patentable, not because any of the particular elements were new or patentable.

The Supreme Court, in Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 266 U. S. 342, 45 S. Ct. 117, 69 L. Ed. 316, held that an assignor of a patent right is estopped "to attack the utility, novelty, or validity of a patented invention, which he has assigned or granted, as against any one claiming the right under his assignment or grant." It also held that the assignor could introduce evidence of the prior art to show the scope of the patent, or in other words what was assigned, and quoted with approval the opinion of Justice Lurton, when Circuit Judge, in Noonan v. Chester Park Athletic Club Co. (C. C. A.) 99 F. 90, 91, in which he states the law thus:

"It seems to be well settled that the assignor of a patent is estopped from saying his patent is void for want of novelty or utility, or because anticipated by prior inventions. But this estoppel, for manifest reasons, does not prevent him from denying infringement. To determine such an issue, it is admissible to show the state of the art involved, that the court may see what the thing was which was assigned, and thus determine the primary or secondary character of the patent assigned, and the extent to which the doctrine of equivalents may be invoked against an infringer. The court will not assume against an assignor, and in favor of his assignee, anything more than that the invention presented a sufficient degree of utility and novelty to justify the issuance of the patent assigned, and will apply to the patent the same rule of construction, with this limitation, which would be applicable between the patentee and a stranger."

Chief Justice Taft, who wrote the opinion in Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., supra, said also:

"Of course, the state of the art cannot be used to destroy the patent and defeat the grant, because the assignor is estopped to do this. But the state of the art may be used to construe and narrow the claims of the patent, conceding their validity. The distinction may be a nice one, but seems to be workable."

See, also, in this circuit, Ball & Socket Fastener Co. v. Ball Glove Fastening Co. (C. C. A.) 58 F. 818; Babcock v. Clarkson (C. C. A.) 63 F. 607; Martin & Hill Cash Carrier Co. v. Martin (C. C. A.) 67 F. 786, 787.

None of the patents introduced in evidence as showing the prior art contained a combination of all of the elements of the patent in suit. Those connected with the printer's art show the use of transparent tops and alining edges with means for clamping the sheet upon the top, and others connected with the art of drawing show the means employed for preserving the parallelism of the transverse bar, so as to insure the exact parallelism of lines, but no one patent discloses an invention which comprises all the elements in combination shown in the patent in suit.

It is well settled that the...