Sidebilder
PDF
ePub

Townsend's decision, examined the matter with care, and found patent No. 471,982 invalid. New Departure Bell Co. v. Hardware Specialty Co. (C. C.) 69 Fed. 152. That decision was not disturbed on appeal. The court of appeals for this circuit, in reaching its conclusions upon the invalidity of No. 471,982, relied largely upon the Bennett (British) patent (2,425). The court says that the appearance of that patent in the English archives, years in advance of Rockwell's application, prevented him under our laws from obtaining a patent for practically the same thing; but that, nevertheless, he might have exercised some inventive genius himself, since there was no evidence that the British patent and the model representing it had not lain dormant in the British patent office until unearthed as an anticipatory device in the Bevins Case, and therefore it was probable that it had not crept into, and become a generally known part of, the bellmaker's art.

The line of reasoning which persuaded Judge Townsend to sustain. the validity of patent 471,982 may have been, briefly stated, of this general character: The combination was a base plate, striker bar, lever, spring, and gong, so related to each other as to operate in a certain way and produce a certain result, viz., to work an alarm when attached to bicycles; but, to accomplish this, other mechanism for rotating the striker bar was essential, and so a geared pivoted lever is connected with a spring and a revoluble striker, and extends beyond the base plate, so that it can be worked by the thumb and finger while the hand grasps the handle bar. Pressing the thumb piece causes the striker bar to whirl in one direction. When that pressure is removed, the spring causes it to whirl in the opposite direction. He finds the spring in the Allen and Goulden patent. He finds other elements in different patents, but does not discover all the elements in any one patent, and some of them were adapted to other purposes. He found the closest approach in the Bennett patent. That had a revoluble striker bar, spring actuated in one direction, and lever combined with a horizontal movable rod; but its purpose was different, and, for that reason, it did not anticipate, and, after discussing the subject clearly and exhaustively, he sustained the validity of the patent. It is not easy to escape the conclusion that the controlling thought which clinched the matter was the conviction that Rockwell was entitled to an inventor's reward. The Bennett patent had slept for many years in the English archives. Earnest efforts had been made, by many inventors, to supply the demand which had sprung up in the market for a satisfactory bell; and, until Rockwell came along, no one had produced an article with that profusion of good qualities which made his bell useful and available. Bennett's call bell was in existence. it would have suggested, to any one skilled in the bellmaker's art, the combination which Rockwell had found, why did it for so long a period escape attention? When the demand was so urgent for a new device, how could the adaptation of old and well-known principles and devices. of the same general character to a new use be overlooked? Ergo, there must have been invention,-very little perchance, but still inventive genius was there present. The court of appeals may have appreciated that point of view. At any rate, no novelty or invention was found in the bicycle bell patent.

If

If there was no invention in reorganizing bell mechanism into a bicycle bell by the use of well-known means, how can there be invention in using well-known means to reorganize a bicycle bell into a door bell? The effect produced by pressing a lever with a springactuated return motion is found in the Allen and Goulden patent of 1890, as well as in the British patent. The turn button, furnishing motive power through a central shaft, is found in the Allen and Goulden patent of 1891. These changes were, then, obvious in the same art when Rockwell applied for his two patents. If a revoluble striker bar is centrally mounted with reference to the gong, and means for communicating motion is furnished through the pinion, it can be done with what was old in the bellmaking art; and it is evident that free rotary motion must ensue, unlimited so long as the power is applied, and dependent upon the direction in which it is exercised. Lugs were old and necessary to such a construction. All changes from the then known art have been declared by the court to be merely colorable in the case of the restricted method; and it seems fairly obvious that, if the situation is so in the one case, it must obtain in the other.

Has the complainant received any aid or comfort from Judge Townsend in his treatment of the patent now in suit when he decided the Bevins Case? Without question Judge Townsend would have given the subject much more critical examination, had he not been satisfied that the Bevins Bros. device was not an infringement of 471,983. I quote from pages 864 and 865 of 64 Fed.:

"The single claim of patent No. 471,983 is as follows: 'In bell mechanism, the combination, with a frame and gong and lug upon the gong, of a centrally pivoted pinion loosely mounted on a central post on the frame, and having an arm upon one side, strikers upon the arm, and mechanism for communicating motion to it through the pinion, substantially as set forth.' The object of the invention was 'to produce an improved bell, that can be operated without the use of springs of any kind, and can be caused to emit a continuous ringing sound resembling that of an electric bell.' Complainant's exhibit 'Complainant's Door Bell,' constructed in accordance with the specifications of said patent, shows a knob, with a square shank, secured within an escutcheon on the outside of an object, such as a door, and connected with a spindle on the inside of such door. Upon this spindle is a cogwheel, by which motion is communicated to a centrally mounted revoluble striker arm carrying loosely pivoted strikers. There is also a gong provided with a lug. The device may be operated in either direction by a turn of the knob. It will be seen that this construction shows the loosely pivoted strikers claimed in patent No. 456,062, and the centrally mounted revoluble striker arm described, but not claimed, in patent No. 471,982, and substitutes, for the lever and spring therein claimed, mechanism which dispenses with said spring device. Similar mechanism, similarly operated, is shown in patent No. 460,347, granted to Allen & Goulden, April 14, 1891, for door bells. The Bennett patent for door bells, already considered, shows such a centrally mounted revoluble striker arm. The spring, however, in the Bennett device, prevents its being operated in either direction at will. The striker arm of the said Allen & Goulden patent may be revolved in either direction at will, but it is not centrally mounted. The state of the art, therefore, requires that the patentee be limited to the precise construction described and claimed, and which includes the free rotary movement of the striker arm in either direction, and the mechanism for communicating such motion to the striker through the pinion. The defendant's device cannot be rotated in either direction at will; it is only adapted to bicycle bells; it is operated by means of a lever and spring device copied from that claimed in patent No. 471,982;

and, except for its adaptation to a bicycle bell by the infringement of 471,982, it more nearly resembles the Bennett device than that of complainant. Patent No. 471,983 is intended for and is adapted to stationary bells to be used on doors. It is specially designed so as to dispense with the necessity of using the device claimed in No. 471,982. Westinghouse Air Brake Co. v. New York Air Brake Co. (C. C.) 59 Fed. 581, 607. Various suggestions are made in support of the claim of novelty in the centrally pivoted swinging arm. Thus it is said that the arm must extend almost across the inside of the gong, and be adapted to swing around its entire diameter. But the Bennett patent shows the arm swinging around the entire diameter of the gong, and it surely would not require invention to duplicate said arm by extending it in the same way on the opposite side. The Bennett strikers, it is true, are different; but the specific striker described in this patent is not, and could not be, therein claimed, because it had been already described and claimed in 456,062. The fact that the arms are differently mounted does not affect the practical identity in construction and similarity in function and operation."

His treatment of the patent in suit, comparatively meager as it is, throws a strong side light upon the present contention, and it is perhaps fair to assume that he would have found it invalid, had he been aided by the reasoning of the circuit court of appeals. He found the loosely pivoted strikers in one device, and the centrally mounted. revoluble striker arm in another, but could not find in any of them the free rotary movement of the striker arm in either direction and the mechanism for communicating such motion to the striker arm through the pinion.

Whatever view he might now hold on that subject, even that shred of novelty and evidence of inventive skill is most neatly and artistically stripped from the patent in suit by the appearance in the prior art of the Gregory device, shown in letters patent No. 168,391, dated October 5, 1875. Here is found a striker arm centrally located with reference to the gong, with capacity for free rotation in either direction by means of the pinion. Complainant's expert concedes that the Gregory device can be used so that the spindle carrying the clappers can be freely turned in either direction to any extent. That being so, it is an easy matter to put the Gregory door alarm on one side of a door, and, putting the crank lever on the opposite side, cause the clappers to whirl in either direction on the spindle at will. Only two slight modifications appear and they are confessedly immaterial. It was not necessary for the defendant to plead the Gregory patent in anticipation. The complainant seems to admit that it may be examined as illustrating the state of the prior art. If the matter had come to my personal attention, unaided by expert or counsel, it would have been proper for me to use whatever information that patent affords in drawing my conclusions as to the validity of the patent in suit.

The objections to the surrebuttal testimony fall to the ground of their own weight, since these conclusions are in no wise affected by the Lynch or Wells patents. The complainant has not been harmed, so far as can be seen, by any irregularities or improprieties, if any there be, which it is urged so strenuously that the defendant committed.

Let the complaint be dismissed.

COOK V. STERLING ELECTRIC CO. et al.

(Circuit Court, D. Indiana. October 30, 1902.)

No. 10,084.

1. PATENTS-SALE OF INVENTION BEFORE PATENT-VALIDITY OF ORAL AGREE

MENT.

An oral agreement for the sale of an invention, founded on a sufficient consideration, made pending an application for a patent,, is valid in equity, and constitutes a good defense to a suit in equity for infringement, brought by the inventor against the purchaser after the issuance of a patent.

2. EQUITY PLEADING-SETTING DOWN PLEA For Argument.

By setting a plea down for argument without replication, a complainant waives any objection to the plea in form or substance, which can only be taken by exceptions, and admits the truth of all facts stated therein which are well pleaded, however inconsistent with or contradictory of the allegations of the bill.

In Equity. On argument of plea.

Stuart, Hammond & Sims and Charles C. Bulkley, for complainant John F. McHugh and Charles A. Brown, for defendants.

BAKER, District Judge. On April 19, 1902, Frank B. Cook, complainant herein, filed his bill against the Sterling Electric Company et al., in which he alleges that he was the first and original inventor of a certain new and useful improvement in telephone switch boards, and that on January 16, 1900, letters patent No. 641,373 were duly granted to him therefor. He further alleges that the defendants unlawfully and without his license have made, used, and sold sundry specimens of the apparatus covered by his patent, and are threatening to continue so to do, to his great wrong and injury; and he asks for an injunction restraining the defendants from making, using, or selling the invention covered by his patent, and for damages. The application for the patent was filed in the patent office on February 8, 1898. The defendants have filed a plea to the whole bill, which, omitting the caption and formal parts, is as follows:

"That prior to any of the acts complained of in said bill the complainant herein, on or about the 3d day of October, 1899, and prior to the issuance of said patent, made with the Sterling Electric Company, defendant herein, an oral agreement purporting to grant thereby to said Sterling Electric Company, and to its officers and directors in its behalf, the exclusive right to make, use, and sell, and to license others to make, use, and sell, various improvements, among which was the improvement in telephone switch boards described in United States letters patent No. 641,373, for the full term of the life of the said patent throughout the United States, in consideration of four hundred shares of the capital stock of said Sterling Electric Company, of the value of $40,000, and $8,000 in cash, which was paid to said complainant. That since the making of said oral agreement said complainant, Frank B. Cook, has repeatedly stated orally and in writing to these defendants and to others that the corporation defendant and the individual defendants, who are officers and directors of said corporation, in its behalf, have been authorized and exclusively licensed to make, use, and sell, and to license others to make, use, and sell, the apparatus described and claimed in said letters patent throughout the United States, by him, the said Frank B. Cook, the patentee

of said patent, during the entire life of said patent,-all of which statements these defendants aver to be true, and they plead said license to the said complainant's bill, and pray judgment."

The plea has been set down for argument by the complainant, who insists that the same does not state facts sufficient to constitute a bar or defense to his bill. The various contentions of the complainant are reducible to the single proposition that the oral agreement of sale set up in the plea is void at law, and that, being void at law, it must be regarded as void in equity; or, stated in other words, that an oral agreement for the sale of an invention, made after application for a patent and before it is granted, is invalid, both at law and in equity, when pleaded as a bar or defense to a bill by the patentee for infringement. The court entertains no doubt that an oral agreement for the sale of an invention, founded on a sufficient consideration, made pending an application for a patent, is valid in equity, and constitutes a good defense to a suit brought by such inventor after he has obtained a patent for the invention. The inventor of a new and useful improvement acquires thereby no exclusive right to it until he obtains a patent. The exclusive right is created by the patent, and no suit can be maintained by the inventor against any one for using it before the patent is obtained. But the inventor of a new and useful improvement is vested by law with an inchoate right to its exclusive use, which he may perfect and make absolute by proceeding in the manner which the law requires. Cook possessed this inchoate right at the time the oral agreement of sale was made. The invention had then been made, and an application was pending to obtain a patent. This inchoate right to the exclusive use of the invention was a property right, and the subject of bargain and sale, unless forbidden by the statute. statute (section 4898, Rev. St. U. S.) does not prohibit such bargain and sale. It applies solely to the assignment, conveyance, or grant of a patent, or an interest therein, and not to the sale of the invention before the issuance of a patent. The statute does not profess to deal with the invention until the inchoate right to its exclusive use has been perfected and made absolute by the obtaining of a patent. Before the patent is granted, the sale of the inchoate right to the exclusive use of an invention is governed by the general principles of the law relating to bargains and sales. The case of Gayler v. Wilder, 10 How. 477, 13 L. Ed. 504, decides that the inchoate right to an invention may be sold and assigned before a patent therefor has been granted. In that case, it is true, the assignment was in writing, but, unless a right of property existed in the invention before the patent was issued, the assignment would have been invalid for want of a subject-matter on which it could operate. In this country, where the principle of the patent laws is recognized, where an invention is regarded as property which may be set apart for a person's own exclusive use, why is it not assignable without an enabling statute? What reason can be assigned why an invention, which is regarded as property, shall not be transferable, like other property, there being nothing in the statute to prohibit it? In my opinion, it can be done. An oral assignment or sale of an invention before the issuance of a patent therefor is valid, and invests the purchaser with the equitable

« ForrigeFortsett »