CHRISTIE v. SEYBOLD, 55 F. 69

TAFT, Circuit Judge, (after stating the facts.) The questions arising in this case, covered by the assignments in error, are two: First, does Christie’s invention or device show, “in a power press, a platen detachably connected with the power-driving mechanism and provided with a counterbalancing weight?” and, second, if it does, which one of the two, Seybold or Christie, was the first or true inventor, within the meaning of the patent laws?

It is contended by appellant that it was too late for the complainant to raise the question, in the court helow, whether Christie’s device includes “a platen detachably connected with the power-driving mechanism,” because it was not raised in the interference proceeding in the patent office. It is said he is thereby es-topped to make it. We do not'concur in this view.

The interference issue is drawn up. by the patent-office examiners, and the interference is declared, before either party has access to the specifications of the other, and the claims made with respect to the issue are submitted before the specifications are disclosed. Subsequently, perhaps, the question might be raised, but we do not think that a failure to raise it in the patent office prevents its being brought to the attention of the court in a proceeding like this by independent bill.

The fact, if it be a fact, that the invention of one of the parties does not include the issue declared in the interference, is apparent on the record. In one of the two cases considered by the supreme court under this

section it was held that the court of its own motion must declare that the issuable device in the interference proceeding was not patentable for want of invention, and could therefore dismiss the hill, although the question had not been raised either in the patent office or by the parties in the court below or in the supreme court. Hill v. Wooster, 132 U. S. 693, 10 Sup. Ct. Rep. 228. We do not see why the court has not the same power with reference to the present question.

The fact, if it be a fact, that Seybold did not raise it in the patent office, may, of course, affect the weight of his present objection, but it has no force as an estoppel. Coming now to the question whether the Christie device embodies that which is described by the issue framed in the interference proceedings, we find that the issue was adopted by the patent office from the language of the first claim of Christie’s patent, and the question, presented is really whether Christie’» specifications entitle him to bis first claim.

In Ms specifications Christie says: “My invention refers to an, improvement in a press especially adapted for bookbinders.

It relates more especially 10 a press platen which is made iletac-habii* iron) iho power-driving mocbanism and suspended by the counterpoise weight Tlie object of my invention is to provide ready means for raising and lowering a press platen by band, without baying to manipulate (lie power-driving mechanism, iho various features oí which will be set forth in the description oí: ¡he accompanying drawings. * * * I preferably employ a rack bar and pinion driven by a ratchet lever to obtain power for compressing the platen, as it is rapidly and easily manipulated.

The power is conveyed as follows: 13 representa the teeth of the rack bar, which engage with pinion, 'M, mounted upon shaft, 15, winch is journaled in ears of brackens, 1(>. * '' On iho opposite side of ihe ratchet wheels 1 provide a duplex holding pawl, 31, which engages with ihe respective ratchet wheels. This pawl is nominally held in engagement with the ratchet teeth by moan» of ihe spring, 28, which presses them up, and they are held out of engagement by" the wedge. 2!), which is operated by the lever, 30.

When lever, 30, is du-^reKicd. the wedge, 29, is raised rip, and the spring, 28, presses the navi. 31, into engagement with the teeth of the ratchet wheal. When said lever is raised up, if pulls the wedge, 29, down in between the holding pawl 31, and the rear edge of ihe rack bar, 6, which prevente the engagement oí ihe holding pawl, 31, with ihe teeth of the ratchet wheels. When lever, 18. siaiuis in hs normal position (shown in figures 2 and 4) the pawls are also in disengagement with the ratchet driving wheels.

The press platen, 5, is therefore free to move up and down by extraneous means, so as to bo adjusted to any desired height Sl * ° The above driving mechanism, with the shipping and unshipping connections, is ihe preferred form ot" construction, but I do not limit myself to said means, except where they are maria special features of claims herein; but the importance oí sustaining the phi ron by counterbalance weight, and having it readily doiachable from the driving mechanism, so as to be raised independent thereof, is the special feature of invention, 15 0 The principal object to be accomplished by the above-described invention Sh the ready aírangeiiieni; of the press platen by hand, without manipulating ¡he same by the power lifling and depressing mechanism, — as, for instance, in a bookbinding or other similar use, the rapid operation of the press is a very important fe?lure*, and Is accomplished by means to disengage the platen from the power-driving mechanism and suspending it by a counterpoise weight, allowing it to be readily raised or lowered, as the case may bo; and the wlil'in-riesoiibecl mechanism I believe to he the best, and is claimed herein as of my invention.” Then follow the claims, the first of which is: “in a power press, the platen, 5. detachably connected with the poworciriving' mechanism and counterbalanced by the weight, to hold the same in any adjusted position, substantially aa .specified.” The court: below held that the power-driving mechanism consisted of the lever, the pawls, the ratchet wheels, the pinion, and the rack bar; and that as the ratchet wheel and pinion were fixed in their relation to the rack bar, and the rack bar was fixed to the platen, the power-driving mechanism was not detachably connected with the platen.

We think this construction too narrow. The expert for the complainant below testified that he had never heard the expression “detachably connected with,” but that in this view it must mean that all the mechanism used to transmit the pressure to the platen should be capable of being detached from the platen.

The patent office took the expression from the specifications and claim of Christie, and it is only fair, therefore, in construing the meaning of the term, if ambiguous, to look into Christie’s specifications to see what, in fact, is meant by the term “detachably connected with the power-driving mechanism.” Of course Christie’s specifications cannot be used for this purpose, if by so doing we are taken out of the Seybold invention, but if the issue framed by the patent office, by a fair construction, will include a feature present in both inventions, then it is the duty of the court to lean to that construction rather than to give it a strict and narrow one which will describe something present only in one.

We are very clear that the two inventions have a common feature, viz. the easy elevation and lowering of the platen, secured by a counterbalancing weight and a device for the disengagement of the platen from the power-pressure mechanism and consequent independence thereof. The amount of power required to compress the bundle makes necessary a somewhat cumbersome and slow action in the power-pressure mechanism. The object of both inventions is to temporarily free the platen from connection with the slowly-acting mechanism while the bundle is being put in the press.

A device which unships the machinery conveying the great pressure power to the platen, so as to permit a free movement of the platen unrestrained by its connection with that machinery, makes the connection between the platen and the power-driving mechanism “detachable,” within the meaning of Christie’s specifications and the issue framed in this case by the patent office.

It may be true that in a certain sense the pinion and the ratchet wheels and the rack bar are part of the power-driving mechanism when in action, though our impression is that, as the power is applied first on the lever, the machinery conveying the power to tire platen beyond the lever is power-transmitting mechanism, and that the lever and pawl only may be properly called the “power-driving mechanism.” But, whichever is the correct view, it is certain that, as soon as the pawls and lever which communicate the power to the ratchet wheels are unshipped, the ratchet wheels and the pinion are free to move without opposing any obstruction whatever to the easy up and down movement of the platen.

When thus detached they are certainly no part of the power-driving mechanism. The result is exactly the same as if they were removed from their connection with the rack bar, because they make no resistance to the movement of the rack bar and platen. The specifications do not liinit Christie to this one mode of applying the power, but the lever, pawl, and ratchet are described by him as the preferable mode. There are many well-known equivalents, and were at the time of this invention, of this power-driving mechanism, notably the screw described in Seybold’s invention.

For these reasons we are unable to agree with the learned judge below in respect to the ground upon which he placed his decision. We are therefore brought to consider the question which, in the view he took of the case, he did not find it necessary to pass upon,— that ia, wlxo was tlie first and true inventor of tliat feature wMcli we have found to be common, to the two devices, and which, is here the subject of controversy?

The patent statutes have always required such particularity of description in the applications for a patent us !o leave no doubt that in the eye of the Jaw he is the first and true inventor who first reduces the conception of a new invention, or discovery to practical and operative form. In Bedford v. Hunt, 1 Mason, 302-304, Mr.

Justice Story said: “Tlie first inventor w!lo lias put the invention into practice, and lie only, is emitted to a patent.” And again, on page 305, lie says: “The intent oí the statute was to guard against defeating patents fey the Heeling up of a prior invention which, had never been reduced to practice.

If it wore The mere speculation o" a philosopher or a mechanician, which had never f»»en tried by the test of experience, and never put into actual operation by hún, tlie law would not deprive a subsequent invt nlor, who had employed his labors and his ‘clients in putting it into practice, of the reward due to hin ingenuity and enterprise.” So in Agawam Co. v. Jordan, 7 Wall. 583, Mr.

Justice Clifford states the rule as follows: “The setiled rule of law is tlmr whoever first perfects a machine is entitled to a patent, mid is the real inventor, although oiiiesr. may have previously had the Mea, and made some experiments towards putting it in practice, lie it; the inventor, and is entitled to the patent, who first brought the machine to perfection, and made it capable of useful operation.” So in Whitely v. Swayne, 7 Wall. 685, 687, Mr.

Justice Nelson said: "He is the first inventor and entitled to the patent who, being an original ííHcoverer, has first perfected and adapted the invention to actual use.” This is the general rule, and had no exception under the statutes in xorce down to the act of July 4, 1836, (5 St. p. 117.) The fifteenth

section of that act, in specifying Ihe defenses which a defendant might set up in an action for infringement, permitted him to plead that the patentee “had surreptitiously and unjustly obtained the patent for that which was in fact invented or discovered by another who was using reasonable diligence in adapting and perfecting’ the same.” The effect of the change made by ihe act of 1836 was considered by Mr. Justice Story in the case of Reed v. Cutter, 1 Story, 590, where, referring to the words “was using reasonable diligence in adapting and perfecting his invention,” h.e said: “These latter words were copied from the fifteenth

section of the act of 1836, c. 357, and constitute a qualification of the preceding language of ihatsection; so that an inventor who has first actually perfected his invention will not be deemed to have surreptitiously or unjustly obtained a patent for that which was in fact first invent edhy another, unless the latter was at that time using reasonable diligence in adapting and perfecting the same.

And this I take to be clearly the law; for he is the first inventor in the sense of the act, and entitled to a patent for his invention, who has first adapted and perfected the same to use; and until the invention is so perfected and adapted for use it is not pa 1 entable.

An imperfect and incomplete invention, existing in nacre theory or in intellectual, notion, or in uncertain experiments, and not actually reduced to practice, and embodied in some distinct machinery, apparatus, manufacture, or composition of matter, is not, and indeed cannot be, patentable under our patent acts, since it is utterly impossible, under such circumstances, to comply with the fundamental requisites of those acts.

In a race of diligence between two independent inventors, he who first reduces his invention to a fixed, positive, and practical form would seem to be entitled to a priority of right to a patent therefor. Woodcock v. Parker, 1 Gall. 438. The clause now under consideration seems to qualify that right by providing that in- such case he' who invents first shall have the prior right, if he is using reasonable diligence in adapting and perfecting the same, although the second inventor has, in fact, first perfected the same, and reduced the same to practice in a positive form.

It thus gives full effect to the well-known maxim that he has the better right who is prior in point of time, namely, in making the discovery or invention.” Reed v. Cutter is a leading case, and has been followed by Mr. Justice Clifford in White v. Allen, 2 Cliff. 224, 2 Fish. Pat. Cas. 440, and in later cases.

It is obvious from the foregoing that the man who first reduces an invention to practice is prima facie the first and true inventor, but that the man.who first conceives, and, in a mental sense, first invents, a machine, art, or composition of matter, may date bis patentable invention back to the time of its conception, if be connects the conception with its reduction to practice by reasonable diligence on bis part, so that they are substantially one continuous act.

The burden is on the second reducer to practice to show the prior conception, and to establish the connection between that conception and bis reduction to practice by proof of due diligence. It has sometimes been held, in the decisions in the patent office, that the necessity for diligence on the part of the first conceiver does not arise until the date of the second conception; but this, we think, cannot be supported on principle. The diligence of the first reducer to practice is necessarily immaterial.

It is not a race of diligence between the two inventors in the sense that the right to the patent is to be determined by comparing the diligence of the twOj because the first reducer to practice, no matter what bis diligence or want of it, is prior in right unless the first conceiver was using reasonable diligence at the time of the second conception and the first reduction to practice.

The language of the statute, (section 4920,) in the use of the imperfect tense, "was using reasonable diligence,” shows the legislative intent to confer a prior right on a first conceiver in a case where, after his mental act of invention, and pending his diligent reduction to practice, another inventor enters the field and perfects the invention before his rival. The reasonable diligence of the first conceiver must be pending at the time of the second conception, and must therefore be prior to it.

Reasonable diligence by the first conceiver, beginning when his rival enters the field, could only carry his invention hack to the date of the second conception, and in the race from that time the second conceiver must win because of his first reduction to practice. See Rob. Pat. §§ 384-886; Millward v. Barnes, 11 O. G. 1060. The elaborate opinion of the commissioner of patents, Mr. Mitchell, in the interference proceeding between Christie and Seybold, reported in 54 O. G. 957, cites all the authorities, and is quite convincing on this point. We fully concur therein.

As Christie reduced the invention to practice nearly a year before SeyboldV, press was made, the burden is on Seybold to show that from the time of bis original conception, which antedated that of Christie, he was using reasonable diligence in adapting and perfecting his idea .to practical use. Has he sustained that burden? It is quite clear to us that he has not. The question of reasonable diligence in any case depends, of course, upon all the circumstances.

A complicated invention, requiring many experiments and much study to give it practical form, would reasonably delay a reduction to practice after the first conception for a greater length of time than where the idea and the machine embodying it were of a simple character. Bradford v. Corbin, 6 O. G. 223. Then, too, the sickness of the inventor, Ms poverty, and Ms engagement in other inventions of a similar kind are all circumstances which may affect the question of reasonable diligence. Bee Webster v. Carpet Co., 5 O. G. 522; Cox v. Griggs, 1 Biss. 362, 2 Fish. Pat. Cas. 174; Munger v. Connell, 1 O.

G. 491; Proctor v. Ackroyd, 6 O. G. 603; Cushman v. Parham, 9 O. G. 1108. Tn this case, Seybold’s first conception was in October, 1885, and he did not reduce his machine to practical form until April, 1889, three years and a half later. He made a rough sketch in January, 1886, which he subsequently lost. In October, 1888, three years after his first conception, he had working drawings made, and six months later a press was manufactured.

His excuse for Ms delay is that until the spring oí 1889 he could not afford to buy she necessary tools for the manufacture of the press, and, if lie had been able to do so, his shop was not large enough to permit the use of them.

He does not say, however, that he had not the means to hare the press made; at some other shop, where Hie proper tools were To be had, but’, on the contrary, intimates that he might have done so, but for the fact that there would have been no profit for him to sell in achines made by others according to Ms invention, blow, we do not think this a good excuse for failing to make at least one machine, in accordance with his conception.

It is as much as to say that in his view Iris new conception, when reduced to practice, would not have sufficient value and utility to bring him any return commensurate with the outlay required to reduce it to practice, and in consequence he indefinitely postponed putting it into practical form until circumstances should change. This is a temporary abandonment of the idea, (White v. Allen, 2 Cliff. 224,) and is not the due diligence which entitles him to the favor of the public, for whose benefit, primarily, the patent laws were enacted, (Wright v. Postel, 44 Fed.

Rep. 352.) It can hardly be claimed that the rough sketch made by Seybold of his proposed press in January, 1886, was a reduction to practice. It has been held in many cases that drawings, much more complete than the one here testified to, are not reductions to practice, as against a subsequent conceiver who first made an actual. operative machine. Reeves v. Bridge Co., 5 Fish. Pat. Cas. 456; Lubricator Manuf'g Co. v. Renchard, 9 Fed. Rep. 293, (opinion by Mr. Justice Matthews;) Drill Co. v. Simpson, 29 Fed. Rep. 288; Ellithorpe v. Robertson, 4 Blatchf. 307; Draper v. Mills Corp., 13 O. G. 276; Odell v.

Stout, 22 Fed. Rep. 159. Further objection to reversing the decree is made on behalf of appellee on the ground that Christie was not the true inventor of the machine for which he obtained the patent. It is said that Christian Keck, who was in Ms employ, was the real inventor. We do not see how this is a subject which can be here investigated. The question here (section 4915, Rev. St.) is only whether Seybold was the first and true inventor.

It is certain that some one reduced the invention Jo practice before Seybold did, and, if that is so, Seybold is not the first and true inventor, unless he was using reasonable diligence to adapt and perfect his conception; and we have found that he was not doing this. If Christie’s patent is void because he was not the first and true inventor, and Keck was, that would not entitle Seybold to a patent. The commissioner of patents did not consider the question, and we think he acted rightly in tMs respect.. On the whole case we find, therefore, that Seybold is not the true and first inventor.

The decree of the court below is reversed, with instructions to dismiss the bill at the costs of the complainant.