[24] NEW YORK SCAFFOLDING COM- some old and well-known function, the PANY, Petitioner, result is not a patentable combination, but an aggregation of elements. V. InLIEBEL-BINNEY CONSTRUCTION COM- deed, the multiplicity of elements may PANY. (See S. C. Reporter's ed. 24-32.) Patents - invention prior art. The claim of the Henderson patent, No. 959.008, for improvements in scaffold supporting means, discloses no invention, since the changes therein made in a device described in an earlier patent are simply mechanical, easy to discern and as easy to make, incidental entirely to the main idea of the earlier patentee, which was, as declared by him, to provide a scaffold that would "permit of adjustment at any height during the construction of a building or the repairing thereof," one which might "be readily moved from one position to another by the workmen without interfering materially with the work being performed," and one "in which different supports are employed," and "in which the shifting from one set of supports to another set" might "be accomplished without interfering in any degree with the workmen thereon, or their work." [For other cases, see Patents, V. b, 9, in Digest Sup. Ct. 1908.] [No. 22.] go on indefinitely without creating a patentable combination, unless by their collocation a new result be produced. Richards v. Chase Elevator Co. 158 U. S. 299, 39 L. ed. 991, 15 Sup. Ct. Rep. 931, 159 U. S. 477, 40 L. ed. 225, 11 Sup. Ct. Rep. 53; Hailes v. Van Wormer, 20 Wall. 353, 22 L. ed. 241; Heald v. Rice, 104 U. S. 737, 26 L. ed. 910; Atlantic Works v. Brady, 107 U. S. 192, 27 L. ed. 438, 2 Sup. Ct. Rep. 225; Slawson v. Grand Street P. P. & F. R. Co. 107 U. S. 649, 27 L. ed. 576, 2 Sup. Ct.. Rep. 563; Hall v. Macneale, 107 Ù. S. 90, 27 L. ed. 367, 2 Sup. Ct. Rep. 73; Pennsylvania R. Co. v. Locomotive Engine Safety Truck Co. 110 U. S. 490, 28 L. ed. 222, 4 Sup. Ct. Rep. 220; Morris v. McMillin, 112 U. S. 244, 28 L. ed. 702, 5 Sup. Ct. Rep. 218; Thompson V. Boisselier, 114 U. S. 1, 11, 29 L. ed. 76, 79, 5 Sup. Ct. Rep. 1042; Crescent Brewing Co. v. Gottfried, 128 U. S. 158, 32 L. ed. 390, 9 Sup. Ct. Rep. 83; Aron v. Manhattan R. Co. 132 U. S. 88, 33 L. ed. 274, 10 Sup. Ct. Rep. 24; Consolidated Roller Mill Co. v. Walker, 138 U. S. 124, 34 L. ed. 920, 11 Sup. Ct. Argued October 7 and 8, 1920. Decided No Rep. 292; Pope Mfg. Co. v. Gormully vember 8, 1920. ON N WRIT of Certiorari to the United States Circuit Court of Appeals for the Third Circuit to review a decree which affirmed a decree of the District & J. Mfg. Co. 144 U. S. 254, 259, 260, 36 L. ed. 426, 427, 428, 12 Sup. Ct. Rep. 643; Duer v. Corbin Cabinet Lock Co. 149 U. S. 216, 222, 224, 37 L. ed. 707, 709, 710, 13 Sup. Ct. Rep. 850; Knapp v. Morss, 150 U. S. 221, 37 L. ed. 1059, Court for the Western District of Penn-14 Sup. Ct. Rep. 81; Cimiotti Unhairing sylvania, dismissing the bill in a patent infringement suit. Affirmed. See same case below, 156 C. C. A. 275, 243 Fed. 577. The facts are stated in the opinion. Mr. Frederick P. Fish argued the cause, and Messrs. C. P. Goepel, R. W. Hardie, and F. C. Somes filed a brief for petitioner. Messrs. Robert H. Parkinson and Wallace R. Lane argued the cause and filed a brief for respondent: So long as each element performs Note. On patentability of inventions -see notes to Evans v. Eaton, 4 L. ed. U. S. 433; Corning v. Burden, 14 L. ed. U. S. 683; Thompson v. Boisselier, 29 L. ed. U. S. 76; Grant v. Walter, 37 L. ed. U. S. 533; Wollensak v. Sargent, 38 L. ed. U. S. 138; Market Street Cable R. Co. v. Rowley, 39 L. ed. U. S. -285; and Dashiell v. Grosvenor, 40 L. ed. U. S. 1025. Co. v. American Fur Ref. Co. 198 U. S. 399, 416, 49 L. ed. 1100, 1108, 25 Sup. Ct. Rep. 697; Computing Scale Co. v. Automatic Scale Co. 204 U. S. 609, 51 L. ed. 645, 27 Sup. Ct. Rep. 307; New York Belting & Packing Co. v. Sierer, 86 C. C. A. 79, 158 Fed. 819; Brill v. Washington R. & Electric Co. 215 U. S. 527, 54 L. ed. 311, 30 Sup. Ct. Rep. 177; Railroad Supply Co. v. Elyria Iron & Steel Co. 244 U. S. 285, 61 L. ed. 1136, 37 Sup. Ct. Rep. 502; Johnson Co. 247 U. S. 426, 62 L. ed. Grinnell Washing Mach. Co. v. E. E. 1196, 38 Sup. Ct. Rep. 547. Nor is it invention to combine old devices in a new article without producing a distinctly different result by reason of their co-operation. The mere association in one article of manufacture, or one machine, of features selected from different prior devices, which only contribute their several advantages in the one article, unaffected in their oper ation by the presence of others, does thereof has been to construct and lease not constitute a new result within this requirement. for use to builders and others at a specified royalty or price per week, the scaffolds embodying the invention, petitioner retaining the ownership of and title to the scaffolds, they being returned to petitioner upon the completion by the lessees of the work for which the scaffolds had been required. Thatcher Heating Co. v. Burtis, 121 U. S. 286, 30 L. ed. 942, 7 Sup. Ct. Rep. 1034; Burt v. Evory, 133 U. S. 349, 359, 33 L. ed. 647, 651, 10 Sup. Ct. Rep. 394; Florsheim v. Schilling, 137 U. S. 64, 34 L. ed. 574, 11 Sup. Ct. Rep. 20; Busell Trimmer Co. v. Stevens, 137 U. S. 423, The answer of the Construction Com435, 34 L. ed. 719, 724, 11 Sup. Ct. Rep. pany directly put in issue certain of the 150; Belding Mfg. Co. v. Challenge Corn allegations of the petition. It admitted, Planter Co. 152 U. S. 100, 38 L. ed. 370, however, the use of scaffolds which it 14 Sup. Ct. Rep. 492; Wright v. Yueng-purchased from the Eclipse Scaffolding ling, 155 U. S. 47, 53, 54, 39 L. ed. 64, 66, | Company of Omaha, Nebraska, but al67, 15 Sup. Ct. Rep. 1. New applications of expedients familiar to artisans, where they serve only their customary purpose in a new association, do not constitute invention. Ryan v. Hard, 145 U. S. 241, 36 L. ed. 691, 12 Sup. Ct. Rep. 919; Grant v. Walter, 148 U. S. 547, 37 L. ed. 552, 13 Sup. Ct. Rep. 699; Market Street Cable R. Co. v. Rowley, 155 U. S. 621, 39 L. ed. 284, 15 Sup. Ct. Rep. 224; Mast, F. & Co. v. Stover Mfg. Co. 177 U. S. 485, 44 L. ed. 856, 20 Sup. Ct. Rep. 708. Neither utility nor extensive use nor general adoption can impart patentability to such use of ordinary mechanical expedients in new connections as falls fairly within the province of the artisan. McClain v. Ortmayer, 141 U. S. 419, 429, 35 L. ed. 800, 804, 12 Sup. Ct. Rep. 76; Duer v. Corbin Cabinet Lock Co. 149 U. S. 216, 223, 224, 37 L. ed. 707, 709, 710, 13 Sup. Ct. Rep. 850; Mast, F. & Co. v. Stover Mfg. Co. 177 U. S. 485, 493, 44 L. ed. 856, 860, 20 Sup. Ct. Rep. 708. Messrs. Robert H. Parkinson, Wallace R. Lane, and George Mankle filed a separate brief for respondent. Mr. Justice McKenna delivered the opinion of the court: Suit for infringement by the Construction Company of a patent dated May 10, 1910, and numbered 959,008, for new and useful improvements in "scaffold supporting [25] means," granted to Elias H. Henderson. Petitioner is assignee of the patent. An injunction was prayed, accounting of profits, and damages. The patent is in the usual form, but a special manner of use of the invention is alleged. It is alleged that since the acquisition of the patent, petitioner has been largely engaged in different cities of the United States in putting the invention into practice, and the manner leged that such scaffolds did not contain or embody the invention protected by patent No. 959,008, in any way or man ner. It is also alleged that petitioner, sometime prior to February 21, 1914, brought suit in equity in the United States district court for the district of Nebraska, against one Egbert Whitney, predecessor in title of the Eclipse Scaffolding Company to the scaffolds sold by the latter company to the Construction Company, in which suit infringement of patent No. 959,008 was alleged. In that suit a patent of one William J. Murray was pleaded, but the Scaffolding Company withdrew its case as to that patent, and relied on claims 1 and 3 of the patent to Henderson, and the court decreed that the claims were void for want of invention, and it is alleged that the Construction Company "is entitled to the protection of said decree." [26] On the issues thus made by bill and answer proofs were taken and the court decreed against the patent, saying in its opinion that "the Henderson patent has not supplanted others, nor has the influence of its owner been exerted to that end. It barely represents a step in the art. It does not disclose invention." And further: "In view of the conclusion reached by this court that claims 1 and 3 of the patent in said suit are invalid, it is unnecessary to do more than touch upon the matter of infringement. The evidence of infringement is meager, and yet, if the claims of patent in suit were to be held valid, with a range of equivalents, infringement would found.” Fed.. The decree was affirmed by the circuit court of appeals. 156 C. C. A. 275, 243 Fed. 577. be The Construction Company pleaded in defense, as we have said, the decree of the district court of Nebraska in the suit of petitioner against Egbert Whitney, but that decree was reversed by the circuit court of appeals (140 C. Č. A. 138, The Murray patent, therefore, is the step in the prior art preceding that made by Henderson, and a comparison of the latter's patent with it, the Murray patent, is immediately indicated. 224 Fed. 452). The reversal and the, in a great many respects, except that opinion of the circuit court of appeals the machines were placed in the opposite thereon are much relied on in this suit, position, enabling you to make a scafand, we may say, constituted the induce- fold any width, which would seem to be ment to issue certiorari. It is seemingly the latest." antithetical to the opinion and judgment under review, and the circuit court of appeals for the third circuit felt and expressed the embarrassment of "disturbing the force of a decision of a court of co-ordinate jurisdiction," "formed upon precisely the same issue and upon substantially the same facts." The court, however, felt constrained to an "opposite judgment," and decided that Henderson made but "formal changes" in the prior art, which involved no invention, and affirmed the decree of the district court. adapted to detachably engage said bar and rigidly support the platform therefrom, whereby the platform may be connected to one bar by the raising means, and raised to a level to engage the supporting means with said bar, and may then remain supported by said bar while the other bar is placed at a higher level, and the raising means secured to the latter, the bars thus becoming alternately points of raising support and of rigid support for the platforms." Murray describes his invention to be of "new and useful improvements in adjustable scaffolds." The object of it, he said, was to provide such a scaffold as would [28] "permit of adjustment at any height during the construction of a building or the repair thereof." And he claimed: "The combination with two bars having means for detachably seNecessarily for an estimate of Hen- curing them to a building, of a platform, derson's patent we must consider the frames on said platform carrying means prior art. It is detailed by witnesses, operable from the platform, and having explained by counsel, and illustrated. connections adapted to be connected to Specific descriptions are not necessary. one of said bars for raising the platform, We may refer to our own observation and supporting means on said frames exof the first forms of scaffolding. To tending above the said bar when the quote [27] District Judge Orr: "Orig- platform has been fully raised, and inally, scaffolding was made to rest upon the ground, and was increased in height as the building of the structure demanded." The first forms of scaffolding which constituted the prior art are described by a witness as "the thrust-out scaffold, the pull scaffold, the timber scaffold; that they were built right up to the front of the building." In 1900, he testified, "a new device came on the market, or a new structure, and in place of building up from the ground, they hung a rigid iron frame from the upper stories of the building. That could be used on three Henderson describes his invention as or four stories sometimes. It was heavy, "certain new and improved scaffold supinconvenient to handle, and did not meet porting means," and further says it rewith very great success, although it did lates "to an improved means for supseem an improvement over the old poles. porting scaffolds used in connection with Then there came another form of scaf- the construction of buildings and their folding which was a suspended wire plat- repair." In other words, the patent is, form scaffold, suspending the wires from as the Murray patent is, for improvethe top of the building. Then ment of scaffold supporting means. And there came the Cavanagh overhead the details given by Murray, or necesscaffolding machine. sarily implied by him, and the inevitable adjuncts "of cross beam and floor piece," are made elements in the combinations claimed in three claims. There is a change from the Murray hoisting device, and it is described to consist "of a continuous U-shaped metal bar extending around the underside of and upward from the associated beam, . ." The continuity of metal is the novel element asserted. Counsel emphasize it, not so much for itself, as for what it permits. It permits, according to counsel, a That machine became fairly well used, after being introduced, and was apparently a great improvement over any other. Then Murray came in the market with his platform machine; a machine operated from the platform, the fastening of the wire that supported the platform being from above, the wire being secured to the outriggers from the upper part of the building. Then the Henderson machine, supported by cables from the upper part of the building, and similar The following is the illustrative diagram of the claim: [See p. 115]. "hinged or loose-jointed connection be- platform temporarily on one set of outtween the putlog (called in the claims riggers while the cables were being ad'cross beams') and the [29] frames that justed to a higher set of outriggers. That support the putlog and the hoisting is all Murray did, and that was embodied mechanism;" and counsel say that this is in the one claim of the patent, and that a "separate and distinct entity from the is what Henderson did not do. Murelements of the Murray patent, differing ray, on the other hand, never suggested in structure, function, and result pro- the idea of making a hinge or flexible duced." And of this it is insisted there connection between the putlogs and their was no suggestion in the Murray patent, supporting frames." The utility of this it containing but a single claim and a construction is the final assertion, and single idea-"the idea of supporting the that the continuity of metal of the stirscaffold to outriggers by means of auxil- rup adds strength, and the loose-jointed iary bars or rods" so that the platform connection of the putlogs with it gives or scaffold, by the lengthening of the "flexibility longitudinally and transversecables, can be raised to a greater height ly of the platform," and "enables the than before. In other words, the asser-operator to raise the scaffold machines tion is that Murray invented nothing one at a time, allowing the putlogs to and saw nothing in his device but means tip or hinge over the support of the Uof raising the scaffold; and, to use coun- frame, leaving the machine to stand erect sel's word, all other "functions" were at all times." The advantage of this is [30] beyond his vision. Or again, and emphasized in various ways, and the conto bring out clearly counsel's contention, struction, it is insisted, quoting the pat"Henderson did not do what Murray did.ent, "secures the greatest possible Murray provided means for supporting a amount of security." first hand or second,-his or those of his counsel,-must be subjected to the test and estimate of the prior art; and, so subjecting them, we can discern no exercise of invention. The changes were simply mechanical, easy to discern, and as easy to make; incidental entirely to the main idea of Murray, which was, as was declared by him, to provide a scaffold that would "permit of adjustment at any height during the construction of a building or the repairing thereof,"-a scaffold which might "be readily moved from one [32] position to another by the workmen thereon without interfering materially with the work being performed;" and one "in which different supports are employed," and "in which the shifting from one set of supports to another set" might "be accomplished without interfering in any degree with the workmen thereon, or their work." A glance at the diagram which we have given will show that he accomplished his purpose, and the way he accomplished it; a glance at the diagram we have given of the Henderson device will show that it is a substantial imitation of Murray's scaffold, the variations being only mechanical. The chief difficulty we have found in the case is the plausibility of the arguments of counsel, and that it secured the assent of the Circuit Court of Appeals for the Eighth Circuit and other courts, and strength from such assent. Decree affirmed. rangement of the hoisting device parallel to a building, instead of at right angles [31] to it, as in the Murray patent, gives more room to the working masons and mechanics, and therefore contributes to their security. This advantage was asserted in the patent; the others were not, nor displayed or counted on. They, however, may be conceded. The fact of nondisplay in the patent, while it does not militate against his claims for the advantages, causes surprise, at least, considering the emphasis that is now put upon them, and the as- NEW YORK SCAFFOLDING COMPANY, sertion that they distinguish and make superior his mechanisms to all that preceded them. However, we may concede to counsel, for the sake of the argument, all of the uses and excellences of the patent, even though not discerned by Henderson; but his pretensions, whether at Petitioner, V. CHAIN BELT COMPANY and Egbert (See S. C. Reporter's ed. 32-38.) This case is governed by the decision 1"1. A scaffold consisting in the com- Note.-On patentability of inventions bination of cross beams, floor pieces extend--see notes to Evans v. Eaton, 4 L. ed. ing between such beams, and a hoisting de- U. S. 433; Corning v. Burden, 14 L. ed. vice associated with each end of each beam, U. S. 683; Thompson v. Boisselier, 29 each hoisting device consisting of a con tinuous U-shaped metal bar extending L. ed. U. S. 76; Grant v. Walter, 37 L. around the underside of and upward from ed. U. S. 553; Wollensak v. Sargent & the associated beam, and a hoisting drum rotatably supported by the side members of such bar." Co. 38 L. ed. U. S. 138; Market Street "3. A scaffold consisting of a plurality of U-shaped bars arranged in pairs, a cross beam laid in and extending between each 1 Death of Egbert Whitney, one of the pair of such U-shaped bars, a floor laid up-respondents in the above entitled cause, on said cross beam, a drum rotatably sup- suggested, and appearance of George R. Dorted between the upwardly extending side" Whitney as administrator of the estate of members of each of said U-shaped bars, and Egbert Whitney, deceased, as a party remeans of controlling the rotation of said spondent, filed and entered October 15, 1919, drum." on motion of counsel for the respondents. |