COLUMBUS WATCH CO. et al. v. ROBBINS et al., 64 F. 384

TAFT, Circuit Judge (after stating the facts). It may be well, before discussing the questions raised upon this appeal to make a few general remarks concerning the subject-matter under examination. In stem-winding or keyless watches, the mainspring is wound and the hands are set by the rotation of the shaft or stem arbor which extends from the outside of the case, through the hollow stem, into the movement of the watch.

The rotating force applied to the stem arbor by the action of the fingers of the operator upon its exterior head or crown is communicated to the winding wheel or to the setting wheel by an intermediate device of varying form in different patents, which is generally called the “winding and hand-setting train.” It • is usual, in all watch-movement. patents, for the stem arbor to carry at its winding end a clutch or pinion which communicates the rotating motion of the stem arbor to the wheels of the winding and hand-setting train with which it engages.

That the rotation of the stem arbor should at one time wind the mainspring, and at another set the hands, the train must be shifted so that its wheels shall at one time engage with the winding wheel, and at another with the hand-setting wheel, at the will of the operator of the watch. There are three well-known forms of the winding and hand-setting train in the art: one is the yoke, another is the breguet key or clutch, and the third is the rising and falling pinion. Of these we have, in this case, to do only with the yoke form of train.

That is a pivoted, edgewise swinging plate in the movement of the watch, carrying one wheel, centered upon the pivot of the plate, not varia-Me in pohioa. and constantly in gear with the pinion or dutch at the oik! of the stem arbor. The plate also carries one and sometimes two wheels constantly in gear with its center wheel, and shifting by a movement of the plate into and out of gear with the winding wheel or the setting wheel.

By this means the rotating movement oí the stem arbor is communicated, through its terminal pinion, to the eenier wheel of the yoke, and from that wheel io the terminal shifting wheel or wheels carried by the yoke, and from them to the winding wheel or the setting wheel as engagement is had with either. Tin» mechanism by which the operator, at will, quickly and easily shifts the yoke from one engagement to the other*, varies in different watches, and many patents have been issued for *meh devices.

Generally, they may be divided into two classes, in one of which the yoke is shifted by the outward and inward move-meat of the arbor in the stem, while in the other ¡.he shifting is brought about by the outward and inward movement of a finger bar or piece which extends, no! through (he stem, but through the side of the case.

Watches having a device of the former class are caked “stem or pendilni sei a\ a lobes.” Those having a device of the latter class are called “lever’set watches.” If is obvious ihat. when the watch is in the poclcefc the engagement of the train should be with 1he winding wheel, rather- than with the .suiting wheel, because, if ¡lie engagement is with (he setting wheel, any accidental rotation of the crown of the si era arbor would change the hands, and destroy the time-keeping qualities of the watch, whereas such accidental' disturbance, resulting in a. slight winding of the mainspring, would be of no injury whatever.

It is also evident that the stem arbor is more likely io be disturbed accidentally when it is pulled out than when its crown is close to the ooier end of the stem. For this reason, in watches which are stein or pendant set, Hie inward movement of the stem arbor is generally made to produce the engagement of the winding wheel, while the outward movement brings about the engagement with the selling or dial wheels.

The usual method, before Hie Church invention, by which engagement with the dial wheels was pv<4uced through the outward movement of the stem arbor, was io fasten the rieui arbor to the movement, so that the shifting could be effected by the direct pull of the arbor. The result of this arrangement was that Hie movement could not be removal from tine cave without also releasing the shan arbor.

This was objeef jenable, because watch movements are made separably from their cane, and it Jb? of great trade advantage to have the movement capable of easy separation from the case, so that one movement may fit in a great number of cases, and a case be useful for any number of movements. The ready interchangeability of movements and cases is one of the well-known objects sought for by inventors in the watchmaking field, and this, as he stsit.es in his patent, was the chief object of Church's invention.

To describe Church’s patent in a general way, It has a stem arbor which reaches but a short distance into the movement, and is not connected with the movement by hook or pin, or in any other way that prevents its quick and easy separation from the movement when that is to be taken from the case. The winding and hand-setting train or yoke is arranged in the movement with a spring, which, when uncontrolled by force applied through the stem arbor, keeps the yoke in constant engagement with the dial or setting wheels.

The stem arbor is prolonged into the movement by a hollow winding arbor into which the square end of the stem arbor fits. The winding arbor ends in a pinion with a hollow center, through which, by means of a loosely-fitted and sliding stud moving in the .hollow center, the pressure applied by the fingers to the stem arbor at its crown is communicated to a lever journaled in the movement of the watch, and thereby the train is shifted into engagement with the winding wheel, and the action of the spring tending to maintain the setting engagement is overcome.

In this way, when the stem arbor is pressed into the movement of the watch, and held there as it is held by a jaw spring in- the stem itself,, the winding engagement is brought about; but when the stem arbor is pulled out the spring in the movement is allowed to have full force, and the engagement with the setting wheels is restored. This latter engagement is called by the inventor the “normal engagement,” by which he means that it is the engagement produced by the automatic operation of the movement itself, when not affected by extraneous pressure through the stem arbor.

With this arrangement the shifting function of the stem arbor is performed wholly by pressure in its in-thrust, and no pulling force is exerted through it. Thus, it is possible to dispense altogether with any positive connection between the stem arbor and the movement of the watch, while the intermediate device or movable stud makes it possible to have a short stem arbor, reaching but a little distance into the movement, and capable of being so withdrawn that the movement itself can be lifted out of the watch, or replaced in .it, by a slight tilting.

It is contended on behalf of the appellants that the Church patent has no novelty in it whatever, because every feature of it is old. It is quite true that the stem arbor which is used in the Church patent was the invention of Colby. It is also true that the winding and hand-setting train used by Church was a common form, well known to the art.

It is also true that in the Wheeler patent of March 1, 1.881, the same winding and hand-setting train is shown in normal engagement with the dial wheels, and that the winding engagement in the Wheeler patent is brought about by extraneous force aj)plied to the movement to overcome the effect of the spring, and thus produce the normal engagement with the setting wheels. It is also true that the intermediate loose or sliding device may have been suggested by the analogous use of such, an intermediate device in the patent of J. D.

Brez, of July 20, 1875, where it was used to communicate pressure from the stem arbor to the spring holding and releasing the hinged case of the watch. But notwithstanding the fact that all the parts are old, in the sense that each of them may be found in previous patents, the combination of parts in the Church patent brings about a new result, and involves patentable invention. Colby, the inventor of the stem arbor, disclosed no method by which it could be used in a stem or pendant set watch.

His specifications and drawings indicated that the stem arbor was to be used only to wind the wheels of the movement after ¡he yoke or train has been shifted by some other agent than the stem arbor. The Wheeler patent, having the normal engagement of the train with the dial wheels, was a lever-set watch, in which the stem arbor played no port in shifting the yoke into either engagement. Except in a case win-re the stem arbor is to be the means of shifting the yoke or train, the normal engagement with the setting wheel has little or no significance.

Ir is the normal engagement with the setting wheel that makes it possible to have a stem arbor disconnected from the train, and performing its only functions by pressure, and not by a, poll. Church’s object, as already stated, was to secure, in a watch in which the stem arbor imparted to the watch movement both the wheel-winding and the train-shifting motion, such a relation between the stem arbor and the movement as to make it possible easily to rake the movement out of the case without disturbing 1he stern a: ¡Kir. To do this, it is necessary to have a short stem arbor, and one disconnected from die movement.

Church was the first to discover and utilize the fact that the normal setting engagement made possible a shifting stem arbor, having no positive connection with the movement. lie was able to keep his arbor short hv using the intermediate device, borrowed, it may he, from the Brez patent, and applied to a different use. We are very clear that the arrangement of all these elements to secure the object stated involved patentable invention of a high order. No patent, of all those which we have had occasion to examine, shows the combination of elements just recited.

It is said that the Church patent is nothing but a combination of the Wheeler patent with the Colby stem arbor, which any mechanic of skill could have arranged for practical operation. Drawings and a model have been submitted, showing how easy if is to unite tin; Colby stem arbor with the Wheeler patent. In our view, this is but wisdom after the fact. We cannot concur in the view that, even if it were known that a combination of the Wheeler patent with the Colby stem arbor would have an advantageous result, mere mechanical skill would enable one to make the combination.

The combination shown in the drawings and model submitted is a combination suggested by the Church patent, and which, but for the Church patent, would seem much more difficult than it now does. More than this, it involved patentable invention to see that a union of the elements of the Wheeler patent with those of the Colby x>atent would have a beneficial result. The only patent disclosed in the record for a watch movement in which the winding and shifting are both done by the stem arbor, and in which the movement may be removed from the case without disturbing the stem arbor, is the patent granted to N.

Woerd, February 6, 1883, a description and drawing of which appear in the statement of the case. The Woerd patent accomplishes the same general result as that sought and accomplished by Church, but the result is not reached in the same way. In the Woerd patent, a lever which structurally is a part of the movement is removed from the movement, and fixed in the side of the case.

One end of this lever is permanently connected with the stem arbor, while the other end, without any positive connection with the yoke, presses against an arm of the yoke, and shifts it into the setting engagement, against the operation of a spring, which, when the pressure of the lever is withdrawn, restores the winding engagement. The lever is moved by the outward pull of the stem arbor. There is therefore no normal engagement with the setting wheels in this-patent, as in the Church patent.

Another difference is in the awkward construction, by which a piece which is structurally part of the movement is pivoted in the side of the case, permanently connected with the stem arbor, and separated from the movement. It can be seen at a glance 'that the manufacture of a case with such a lever in the side of it would be much less simple and easy than where it has nothing but the short stem arbor. It is a clumsy arrangement, and is not an anticipation of, or a suggestion of, the novel features of Church’s patent, already alluded to.

Church did not discover the fact that a stem arbor having no positive connection with the train or movement in a stem-set watch would greatly facilitate the interchangeability of movements and cases, and the easy removal of a movement from the case. That was self-evident, and was not patentable. Woerd tried one method by which the stem arbor should not be connected with the movement, and yet have at the same time a shifting and a winding function.

Church devised another and different and a better way of reaching the same result For these reasons,- we are of the opinion that Church’s invention was not anticipated by any of the patents disclosed in the record, and that the combination of old elements involved patentable invention, for which he was, under the law, entitled to the monopoly.

The strongest evidence .that the Church invention is a useful one is the fact that to-day considerably more than half of all the watches that are manufactured in the United States with open faces are made under.it, and embody the combination of elements which is set forth in its specifications. This fact is- said to- lose significance because the owners of the Church patent, the Waltham and Elgin Watch” Companies, are able to control the business of watch-case making and watch making to such an extent, by their enormous output, as to foist upon the public, and compel the purchase of, a poor device.

We must assume that the two companies referred to, with the large resources at their command in purchasing patents and using them, would exercise ordinary business discretion, and would be guided by the demands of the public for the best watch movement, and must hold that, no matter how large the control or business of the two companies which own this patent is, that its very extensive use is strong evidential weight of its useful character.

There has been much discussion oil the briefs and in the arguments ató to whether it was not a useful feature of the Cl lurch patent that the setting engagement was made by the operation of the spring gently, and with no danger of injuring- the delicate dial wheels, instead of by a direct pull of the stein arbor, said to be likely to break the points of the wheels in a faulty intermeshing.

We do not find it necessary to consider this question, because, in our opinion, without respect to the possible benefit from this arrangement, the Church patent has not been anticipated by any other, in the ease and simplicity with which is accomplished by it the chief object of the inventor, namely, the ready interchangeability of movements and eases. This is a sufficient ground for sustaining the patent, and we need lock for no o-tlier.

But it is said that the claims of the reissued Church patent arc. void because they seek to appropriate results or functions, rather than means or devices for accomplishing results. Unless the claims are to be restricted by construction, this criticism is a just one.

The inventor, in his first claim, seeks to monopolize a train “adapted” to be placed in engagement with the winding or setting wheels by the longitudinal movement of a stem arbor having no positive connection with the train. la this to be construed to claim lor the patentee the right to keep all others from using a train which is in any way adapted to engage with the winding or sidling wheels by the in and out movement of a stem arbor not having positive connection with the train? We think not.

The only adaptation capable of appropriation by the inventor is that which Is shown in the specifications and drawings of Ids patent, and this is the necessary limiting effect of the words, “substantially as and for the purpose specified.” In this way the court may sustain the validity of the claims, as it is its duty to do when possible.

In the Corn-Planter Case, 23 Wall. 181/225, 226, one of the claims was as follows: “What I claim under this patent is a seed-planting machine wherein the seed-dropping mechanism is operated By hand or by an attendant, in contradistinction from mechanical dropping, the mounting oí said attendant upon the machine in such a position that he may readily see the previously made marks upon the ground, and operate the dropping mechanism to conform thereto, substantially as heroin set forth.” Beferring to this clsihn, Mr.

Justice Bradley, speaking for the court, says: “The first of these claims, if construed simply as claiming the placing of the seed dropper on the machine, would probably be void, as claiming a mere result, irrespective of the means by which it is accomplished. But, if construed as claiming the accomplishment of the result by substantially the means described in the specification, it is free from that objection; and wo ought to give a favorable construction, so as to sustain the patent, if it can fairly be done.

By reading the claim in connection with the final qualifying clause, thus, ‘the mounting of said attendant upon the machine,’ etc., ‘substantially as herein set forth,’ the fair construction would seem to include the means and manner of placing him upon the machine.” Construing the claims in the Church patent in the light of the Corn-Planter Decision, it is evident that they must be limited to the particular mechanism set forth in the specifications for accomplishing the result or securing the adaptation referred to in the claim.

The objection that the reissued patent is void for unduly enlarging the claims of the original patent cannot be sustained. The sixth claim of the reissue is quite the same as the second claim of the original. They are both for a combination of the following elements:

(1) The winding and hand-setting train normally in engagement with the setting wheels, as set forth.

(2) The stem arbor or key, having no positive connection with the train, as set forth.

(3) The intermediate loose or sliding device for communicating the force of the in-thrust of the arbor to the train, by which the train is shifted into the winding engagement, as set forth. The change in the reissue from the words “loose or sliding device” to “intermediate” device is not to be construed as widening the scope of the claim.

If, in any alleged infringement, that which communicates the stem arbor’s in-thrust to the train is not a loose or sliding device, or its manifest and well-known mechanical equivalent, it certainly is not an intermediate device, “substantially as and for the purpose set forth” in the specifications and drawings of the patent.

It is not necessary to examine closely the other claims of the reissued patent, to see whether they unduly expand the scope of the monopoly of the reissued patent beyond that of the original, because a construction of them in the light of the specifications and drawings, and the history of the art, requires either that they should be rejected as invalid, or treated as combination claims with the same elements as those contained in the sixth claim given above. We come now to the question whether the defendants’ watch movement is an infringement of the Church patent.

A description and a drawing of the defendants’ watch movement appear in the statement of the case. It is a movement in which the stem arbor to be used discharges the double function of winding the wheels of the movement, and of shifting the engagement from the setting to the winding wheels. It is a movement in which the normal engagement is with the dial wheels. This is denied by counsel for the appellants, but it certainly is true that whenever the pressure of the stem arbor is removed the force of a spring in the movement itself will produce engagement of the yoke or train with the dial wheels.

That is the normal engagement, in the sense of the Church patent. The winding and hand-setting train in the defendants’ “movement is somewhat different from that of the Church patent; but Church, in his specifications, expressly states that the intermediate device for shifting the engagement may be in all the well-known forms of intermediate mechanism, and that his invention is not limited to the particular device shown. It is conceded that the yoke of the defendants’ movement is a very old form, and may be found in the English patent of Nicole of 1844.

The device by which the pressure of the short stem arbor is continued into the movement, and made to effect the shifting of the yoke, differs somewhat, in the defendants’ movement, from that of the Church patent. The loose or sliding stud of tbe Church movement, by which the pressure of the stem arbor is communicated to the lever shifting the yoke;, is present in the defendants' movement.

It slides within the hollow center of the terminal piuion of the winding- arbor far enough to permit the short stem arbor to act upon it, and differs only from the stud in the Church movement in the fact that its lower end is fixed to the lever upon which the pressure of the stem arbor is to be exerted. This difference does not in any way change the operation of the stud, either in mode or result. In the Church device, the lever, acted upon by the stem arbor through the sliding stud, directly shifts the yoke.

In the defendants’ movement, the lever moves a pin that shifts a cam lever which locks out me spring holding the yoke in engagement-with the setting wheels, and thus allows a weaker spring to shift the yoke into winding engagement. We do not think that the interposition of a cam lever and a spring between the lever upon which the stem arbor directly acts and the yoke to be shifted changes in any way the elements of the combination present iu the Church patent which are also found in the defendants’ movement.

The use of two springs, one weaker than the other, to produce alternately (he two engagements by locking out the stronger spring, was old. It is shown iu the Wheeler patent, and others prior to tbe Church patent. It was therefore one of the mechanical equivalents that; Church intended his patent should cover, and he used language in his specifications apt for the purpose.

The stem arbor having no positive connection with the movement, the normal engagement of (lie winding and hand-setting- train with the dial wheels, the intermediate device working in and through the hollow center of the winding arbor and its terminal pinion, by which pressure upon the short stem arbor is enabled to bring about tbe shifting of the yoke, are all present in the defend aids’ movement, operating in the same way, and accomplishing the same result as in the Church movement. Element for element, the combinations are the same, and the infringement is manifest'.

The conclusion we have reached with reference to the validity of the Church patent, and the infringement by the defendants, is fully sustained by the decision of Ihe circuit court of appeals for the Seventh circuit in the case of Watch Co. v. Robbins, 3 C. C. A. 42, 52 Fed. 215. The decree delow awarded a perpetual injunction against the infringement by the defendants, and referred the case to the master to determine the damages. That decree was appealed from, under the seventh

section of the court of appeals act, as an interlocutory order granting an injunction; and the point ivas mooted whether we should examine the record as upon an appeal from a final decree, or only examine the question whether the court below had exercised proper discretion in the issuing of an interlocutory injunction. It was decided that we could not hear and finally determine the merits of the controversy as to the validity of the patent and its infringement. 6 U. S. App. 275, 3 C. C. A. 103, 52 Fed. 337.

In looking into the record, however, to determine whether tbe discretion of the circuit court was properly exercised, we have found ourselves obliged to consider the validity of the patent, and its infringement, with the conclusion above stated. As the patent is valid, and it was infringed by the defendants, the court necessarily exercised proper discretion in granting the injunction appealed from, and its decree is affirmed.