Williams Calk Co. v. Neverslip Mfg. Co.

• Decision Date: 14 February 1905
• Citation: 136 F. 210
• Parties: WILLIAMS CALK CO. v. NEVERSLIP MFG. CO.
• Court: U.S. District Court — Middle District of Pennsylvania

136 F. 210

WILLIAMS CALK CO. v. NEVERSLIP MFG. CO.

United States Circuit Court, M.D. Pennsylvania.

February 14, 1905

Hervey S. Knight and Beers & Grambs, for complainant.

Archibald Cox and Walter Briggs, for defendant.

ARCHBALD District Judge.

It is to be regretted that the inventor did not at the outstart, as he did later, take out a mechanical, instead of a design patent for his horseshoe calk; for it certainly is in its useful features that the whole value of the invention resides, and not in its pleasing configuration to the eye whatever that may contribute to it; and, the contrary being the fact, I do not see how, all thing considered, either patent can be sustained. So far as the mechanical patent is concerned, everything to be found in it is portrayed in the design patent, which thus stands as an anticipation, the same as though granted to another person, except as the one was applied for within two years after the other issued, and was to the same inventor. This was expressly decided by decided by Judge Wheeler in Cary Mfg. Co. v. Neal (C.C.) 90 F. 725, where he observed:

'It is said that an inventor of a machine or manufacture may have a patent for the thing and another for the design of the thing; but the description of the thing would show the design, and an inventor cannot have a valid patent applied for two years later, for that which is described in a prior patent to himself, any more than in one to another.'

Conceding however, that the mechanical patent is saved from being anticipated by the design patent in the present instance, because, although it was not granted until January 22, 1901, it was applied for December 28, 1899, which was within two years of the date of the design patent, which was December 13,1898, it is nevertheless difficult to see how the two can stand together, so as to escape the charge of double patenting. A person cannot, of course, take out two patents for the same invention (James v. Campbell, 104 U.S. 356, 26 L.Ed. 786; Mosler Safe Co. v. Mosler, 127 U.S. 354, 8 Sup.Ct. 1148, 32 L.Ed. 182; McCreary v. Pennsylvania Canal Co., 141 U.S. 459, 12 Sup.Ct. 40, 35 L.Ed. 817; Miller v. Eagle Mfg. Co., 151 U.S. 186, 14 Supt.Ct. 310, 38 L.Ed. 121); the reason being that the power to create a monopoly is exhausted by the first patent, and that a new and later patent for the same invention would operate to extend or prolong the monopoly beyond the period allowed by law (Odiorne v. Amesbury Nail Manufactory, 2 Mason, 28, Fed. Cas. No. 10,430). It does not detract from this that one is for a design and the other for a mechanical device, where, as here, the two are indistinguishable in their characteristics, and manifestly the outcome of one and the same inventive idea. It is true that the opposite view was expressed in Collender v. Griffith (C.C.) 2 Fed. 206, where a mechanical patent, taken out more than two years after a design patent, was sustained, even though the structure in both was the same; it being held that the purposes of the two patents were different, one being for the shape and the other for the objection, nor did it prevent a contrary ruling from being made in Cary Mfg. Co. v. Neal (C.C.) 90 F. 725, already referred to, in the same court. Even if the case can be likened to process and product, each of which may, under some circumstances, be separately patented (Thomas v. Electric Porcelain Mfg. Co. (C.C.) 111 F. 923), it is to be observed that even there there is no unrestricted right (Mosler Safe Co. v. Mosler, 127 U.S. 354, 8 Sup.Ct. 1148, 32 L.Ed. 182). And where, as here, the whole value of that which is the subject of the design patent is to be found, as already pointed out, in is useful, and not in its artistic, features, the proof of which is shown in the attempt to have it extend to both, a subsequent mechanical patent, the purposes of which, without any new inventive idea, is simply to protect the useful part of the same invention, certainly presents a case of double patenting, which cannot be sustained. It is true that in the present instance, as we shall presently see, the design patent is itself invalid, not being within the purview of the law; but that does not change the result. Not only has the patentee, by means of it, enjoyed a nominal, and until now an apparently unquestioned monopoly, with all the benefits accruing therefrom, but ti was not open to him to set himself right for a mistake which he had made in the character of the patent by taking out another and different one for substantially the same thing. Whether this could have been accomplished by a surrender and reissue I will not undertake to say.

These observations, however, are somewhat obiter, for, giving the mechanical patent its full force, it is clear that the defendants do not infringe. The single claim is for--

'A horseshoe calk constructed with an attaching screw-shank, a square base, radial blades having vertical flattened beveled edges, vertical straight sides, and rounded, beveled, outwardly-tapering knife-edge lower ends providing a conoidal-shaped tread, and arching recesses between the blades beneath the square base, the widening of the inner ends of the blades to form the arching recesses preventing the calk from becoming completely worn down so as to leave a wrench-hold.'

These features are shown in the following diagrams:

(Image Omitted)

The object to be attained as stated by the inventor is 'to provide an article * * * which may be forged from high-grade calk steel, which will be more effective and durable in use, will avoid liability of turning the animal's ankles, will maintain its advantageous features until practically worn out, and when worn out will still be in a condition to permit convenient removal without taking off the shoe. ' Assuming that a calk of this form is possessed of the advantages claimed for it, and that the exact combination is not to be found in the prior art, almost every feature of it, taken by itself, undoubtedly is. It was not new, for instance, to attach the calk to the shoe by a screw shank; this-- if not, indeed, an obvious arrangement-- being shown in some nine different previous patents from the Jorey (1859) down. Neither was it new to have a square base (Jorey, Chase, Lesueur, Hall and Petzold), nor radial cruciform blades (Chase, O'Neill, De Pass) having vertical straight sides (Chase, De Pass), nor arching recesses between the blades (O'Neill, Mason, De Pass, De Sales), nor even a conoidal-shaped tread (Mason). Radial blades, with vertical sides, and somewhat rounded knife edge lower ends, are also shown in a design patent issued to the same inventor in 1896; while the form of calk (Exhibit 5) put our and sold by him in the spring of 1897-- which was one of the steps, as he says, leading up to the present device-- has every feature that is now relied upon except the rounding of the lower edges by which a conoidal-shaped tread is produced. In addition to this, a calk with a conoidal tread (Exhibit 11) has been manufactured by the Neverslip Company, defendants, for nearly 20 years. With this record against the inventor, it is a matter of some doubt just what point of patentable novelty he is entitled to claim. But without stopping to definitely determine that question, it is clear that the invention is of exceedingly limited range; and that, restricting it as we must, the defendants, as already stated, do not infringe.

(Image Omitted)

It is true that there are many points of similarity in the defendants' calks. A screw shank, for instance, is employed, in conjunction with a square base (Exhibit 20) although in the later forms (Exhibit 10, Exhibit A) this is modified into one with rounded corners. There are also radial blades, having vertical, flattened, beveled edges, and, to a certain limited extent, rounded, beveled, outwardly tapering, lower ends, providing a conoidal-shaped initial tread. Some forms also show arching recesses between the blades, although in others these recesses have a somewhat square shoulder; but, whether one or the other, the widening of the inner ends of the blades, by which the particular form is produced, has the effect claimed in the patent of preventing the calk from becoming worn down so but that a suitable and safe wrench-hold is...