Wilkins Shoe-Button Fastener Co. v. Webb

• Decision Date: 04 October 1898
• Citation: 89 F. 982
• Parties: WILKINS SHOE-BUTTON FASTENER CO. v. WEBB et al.
• Court: U.S. District Court — Northern District of Ohio

89 F. 982

WILKINS SHOE-BUTTON FASTENER CO. v. WEBB et al.

United States Circuit Court, N.D. Ohio, Western Division.

October 4, 1898

Frank Higley, for complainant.

Almon Hall, for defendants.

HAMMOND J.

The plaintiff company is the owner of a patent dated October 31 1892, No. 266,941, for a button fastener, and also of another patent dated June 10, 1890, No. 429,828, for a holder for button fasteners. The bill is filed for an infringement of both these patents, and, on argument, it is conceded that there has been infringement if the patents are valid.

Single Patent for Two Inventions.

There is a defense made of multifariousness which was overruled on demurrer. This is also somewhat connected with the defense that patent No. 429,828 is bad on its face because it covers two separate and distinct devices. That patent specifies and claims, not only the device for holding the fasteners, but also one for packing them on this holder, not at all involved in this suit. This defense is, in substance that the grant of the patent by the patent office is multifarious, and the contention is that it is therefore invalid. The leading case on this subject is that of Hogg v Emerson, twice reported, once in 6 How. 436, and subsequently in 11 How. 587. I do not find that it has ever been cited by the supreme court, though often in other courts, except to the point that the specifications and the whole language of the patent must be looked to in the interpretation of its claims of invention. Le Roy v. Tatham, 14 How. 156 179; Mitchell v. Tilghman, 19 Wall. 388; Rob. Pat. Sec. 742. In that case it was originally ruled, as reported in 6 How., that it is a well-established exception, to the general rule that distinct inventions may not be covered by one grant of a patent, that 'patents may be united if two or more, included in one set of letters, relate to a like subject, or are in their nature or operation connected together. ' Page 483. This was emphasized on the second hearing, as reported in 11 How., where the court is at pains to suggest a doubt as to the correctness of the primary rule that two inventions cannot be included in the same patent, however distinct they be; quoting from Mr. Justice Story in Wyeth v. Stone, 1 Story, 273, 288, Fed. Cas. No. 18,107, that, to render separate patents necessary, the inventions must be 'wholly independent of each other, and distinct inventions for unconnected objects, as one to spin cotton and another to make paper. ' Mr. Justice Story had before the case of Wyeth v. Stone, supra, enforced the primary rule in Barrett v. Hall, 1 Mason, 447, Fed. Cas. No. 1,047, and in Moody v. Fiske, 2 Mason, 112, Fed. Cas. No. 9,745; but he carefully explained and qualified the rule of those cases in Wyeth v. Stone, which qualification was approved by the supreme court, after he left that bench, in Hogg v. Emerson, supra. I have carefully examined these cases, and must say that that we have in hand is very much like that of Barrett v. Hall, supra, where the rule of two patents seems to have been favored; but it is none the less like Wyeth v. Stone, supra, and evidently the great judge, whose authority is almost absolute in the later case, desired to get away from the ruling of the former case. He says pertinently that 'it is impossible to use any general language in cases of this sort, standing almost upon the metaphysics of the law, without some danger of its being found susceptible of an interpretation beyond that which was in the mind of the court. ' Taking the two cases together, approved as they have been by the supreme court, and they establish that where the thing patented embraces various and distinct improvements or inventions having no common connection with each other, nor any common purpose, the party must take out separate patents. If the patentee has invented certain machines, which are capable of a distinct operation, and has also invented a combination of these machines to produce a connected result, the same patent cannot at once be for the combination and each of the improved machines; for the inventions are as distinct as if the subjects were entirely different. And, if the patent could be construed as a patent for each of the machines severally as well as for the combination, then it would be void, because two separate inventions cannot be patented in one patent. But if the patent be a patent for each machine, as a distinct and independent invention, but for the same common purpose and auxiliary to the same common end, no just objection can be made to it if covered by one patent. 'Here,' says the opinion from which I am abstracting these rules and their distinctions, 'there are two machines, each of which is or may be justly auxiliary to produce the same general result, and each is applied to the same common purpose. Why, then, may not each be deemed a part or improvement of the same invention? ' If there be two different machines, distinct from each other, each of which would accomplish the same end, each equally useful and equally new, but one preferable, it may be, to the other, they may go under one patent. And, a fortiori, this rule would seem to be applicable where each of the machines is but an invention conducing to the accomplishment of one and the same general end. But if we take the case in another view, and consider the patent as a patent not for each machine separately, but for them conjointly, or in the aggregate, as conducing to the same common end, if each machine is new they may both be united in one patent. If they may be so united, and were both new, then it is not necessary that there should be a violation of the patent throughout. It is sufficient if any one of the invented machine or improvements is wrongfully used. 30 Fed.Cas., 729 (No. 18,107).

I dwell upon these cases because they represent the law of the supreme court on this important point, as it was declared more than 50 years ago, and seemingly has scarcely been touched upon since by that tribunal, certainly not departed from or modified, so far as I can discover from the cases, subsequently. But, incidentally noticing the point, I should say, from this reading of them, that, to make a patent invalid because of duplicity or double invention, the two things patented should be not only independent in objective results,-- one to spin cotton and another to make paper, as these opinions illustrate the matter. There must be a total disconnection between the two, subjectively and objectively, if it may be so expressed.

Finding illustrations in the inventions involved in these cases, that of Barrett v. Hall, Fed. Cas. No. 1,047, was a new and useful improvement for dyeing and finishing all kinds of silken goods,-- one a reel on which to spirally wind and secure the silk and put it into the dye; the other a frame for the purpose of extending and finishing the silk after it is dyed. The suit was for the infringement by the use of the reel only. The disunion of the two in form and purpose was relied on as a ground of granting a new trial. That of the Wyeth Case, Fed. Cas. No. 18,107, was for a new and useful improvement in the manner of cutting ice, together with the machinery and apparatus therefor. To effect the purpose of cutting ice, there were both a cutter and a saw. The saw had been abandoned by the patentee as unnecessary or superfluous, and only the cutter was used by the infringer. The patent was held not to be invalid, because double, and to have been infringed by the use of the cutter alone. The patent in Hogg v. Emerson, supra, was thought by counsel and the dissenting judges to cover three distinct 'things patented.' It was for 'certain improvements in the steam engine, and in the mode of propelling therewith either vessels on the water or carriages on the land. ' Mr. Justice Catron in his dissenting opinion describes the three things patented as--First, 'a piston and shaft which turn a wheel without employing a crank'; second, 'a paddle to a wheel propelling machinery or a vessel of any kind in the water'; and, third, 'in applying the power of the shaft to turning a capstan by means of a cog wheel.' He thought the paddle wheel not covered by the patent, but, if so, the patent was invalid because it comprehended three distinct inventions, disconnected from each other. Three other judges agreed with him in the dissent. But the court, speaking through Mr. Justice Woodbury, held that they were 'connected in their design and operation. They all relate to the propelling of carriages and vessels by steam, and only differ, as they must, on water from what they are on land; a paddle wheel being necessary on the former, and not on the latter, and one being used on the former which is likewise claimed to be an improved one. All are a part of one combination used on the water, and differing only as the parts must when used to propel in a different element.' 11 How. 605. The common object is found in an improvement for propulsion by steam.

In Evans v. Eaton, 3 Wheat. 454, 506, Mr. Chief Justice Marshall, speaking of a patent for a new and useful improvement in the art of manufacturing flour by means of several machines, consisting of an improved elevator, an improved conveyor, and improved hopper boy, an improved drill, and an improved kiln drier, construes the instrument as a grant of the general result of the whole machinery and of the improvement in each machine. He suggests the doubt which is the foundation of the doctrine of this primary rule on this subject, whether, under the general patent law, improvements on different machines could regularly be comprehended in the same patent, so as to give a right to the exclusive use of the several machines separately as well as the exclusive use of those machines in...