DUEBER WATCH-CASE MANUF'G CO. et al. v. ROBBINS et al., 75 F. 17

TAFT, Circuit Judge (after stating the facts). The decree of the circuit court must be reversed for two reasons: First, because the Colby patent, in view of the state of the art, did not involve patentable invention; Second, even if the Colby patent can be sustained, its scope is so narrow, in view of prior inventions, that the defendants’ device is not an infringement.

The object of Colby’s device was to permit the movement of a stem-winding watch to be lifted out of the case, and freed from the stem arbor or key, by withdrawing the key from its connection with the movement back into the stem, and so securing it in both its outer and inner positions in the stem that it could not be moved from either to the other without an effort. The outer and inner positions of the key were secured by spring latches.

The spring latches were effected by a spring attached either to the inside of the stem,-or to the key, the ends or shoulders of which took into or struck against annular grooves or shoulders on the other piece. It was old in the art to permit the movement of the stem-winding watch to be removed from the case by withdrawing the key back into the stem. This is shown in the Fitch patent issued October 28, 1879. It has the ordinary stem and stem arbor. The stem arbor projects into the movement, and engages the winding arbor.

A spiral spring, working between a shoulder on the inner end of the stem arbor and the inner end of the pendant or stem, holds the stem arbor in engagement with the winding arbor. When the movement is to be removed, and it is desired to retract the stem arbor, the owner or operator pulls the crown of the stem arbor outward, overcomes the force of the spiral or helical spring, and withdraws the stem arbor into the stem sufficiently to permit the lifting of the movement out of the case.

A similar patent granted to Fitch, with the helical spring placed inside the stem, instead of inside the case, was an earlier patent by the same inventor. The Fitch patent, it will be observed, had not the spring-latch feature of the Colby patent. The spiral spring operated merely to hold the stem arbor, by the constant force of the spring, in operation with the winding arbor; and the spring pressure had to be overcome by the operator, and continuously overcome, while the stem remained retracted.

The Fitch patent does show, however, the retraction of the stem from one position to another for the purpose of releasing the movement, and it uses as an agent in maintaining one of the two positions a spiral or helical spring. It presents the same short stem arbor that we find in the Colby patent. The Lehman patent is for a stem-winding and stem-setting watch; that is, a watch in which the key in the stem extends into the movement, and may be adjusted. either to wind or to set the watch by its longitudinal movement in 1 he stem.

In order to maintain the key in the inner and outer positions in the stem, two annular grooves on the key are provided at its inner end within the case, and a spring latch which is secured in the movement takes into one or the other of these annular grooves, and holds the stem arbor in position either for winding or setting. The spring, like that in the Oolby patent, is strong enough to hold the stem in position against any movement of the crown, except by special effort.

The Lehman patent thus shows the spring latch inside of the case used upon the stem arbor to secure the inner and outer positions of the stem arbor against anything but special effort. The Lehman patent, however, does not provide for an easy removal of the movement from the case by retraction of the stem arbor. The Yager patent, invented in 1862, is a. French patent for a stem winding and setting watch, in which the movement may be easily taken out of the case by a retraction of the stem. The inner end of the key or stem arbor, reaching beyond the stem inwardly, has two annular grooves.

Inside the outer rim of the case is a split spring, which embrace's the end of the stem arbor. As the stem arbor is pulled outwardly this spring takes into one annular groove of the arbor, and as the arbor is pressed inwardly it takes into the other, and thus secareis a stationary position of the stem arbor, permits its rotation in either position, and prevents its disturbance except by special effort.

There is no difference between the spring latch of the Yager patent, and the; functions which it performs, and those which 1 he spring latch in the Oolby patent performs, except that the spring latch of the Oolby patent is located inside of the stem, instead of being inside the case. We thus find in the prior art the use of the spring latch upon the stem for the exact purpose which Oolby had in mind, namely, of securing the stem in two different positions, — the inner and outer positions, — from either of which the arbor could not be moved to the other position without special effort.

Even if it required invention to change the location of the spring latch from its position inside the case, as shown in the Yager and Lehman patents, to one inside the stem, as in Oolby’s device, that change was also suggested in the prior art. It is found in the Fisher & Lucas patent. That was a patent of June 26, 1877. It was not for either a stem-winding or a stem-setting watch. It was a so-called key-winding watch, but the stem of the watch was used as the place in which to hold the key.

When the key was to be used as such, it was removed entirely from the stem, and applied as an ordinary key in an old-style watch. When not thus used, the key fitted into the stem, and while in the stem operated as a push pin against the spring which held the case shut, and thus was used to open the case. The key had a crown like that of the stem arbor of a stem-winding watch. The stem did not open into the case of the watch, and the key did not reach through the side of the case into the movement, as in stem-winding watches.

The key was secured in the stem by springs attached to the key, which had annular grooves in them, into which the projecting outer ends of the stem took, and prevented the key from being- remoYed from the stem except by a pull. This showed the use of the spring latch inside the stem to secure the key in a position from which it could not be moved except by special effort. It showed the spring latch operating between the stem and the stem arbor or key. Although the capacity of the key for rotation in the stem was not utilized in the Fisher & Lucas patent, it plainly had such capacity.

It is true, the key was not used as a key while in its position inside of the stem, but it occupied the place where the ordinary stem arbor is; and, so far as the function of-retaining the key in one position from which it could not be moved except by special effort, the spring and the groove, or, in other words, the spring latch, of the Fisher' & Lucas patent, discharged the same function as the spring latch of the Colby patent. The Colby patent is a mere duplication of the same device, in the same place, for the same general purpose.

By putting the Fisher & Lucas patent alongside the Lehman and Yager and the Fitch patents, one finds every element of the Colby patent discharging the same function without accomplishing any new result. The Colby device is possibly a neater form, and works in a smoother way, but this is all. It is questionable whether, without reference to the prior art, the use of a latch spring to hold yieldingly a shaft inside of a cylinder in two different positions at different times would involve patentable invention.

Certainly it does not involve patentable invention, when we find the suggestions of every feature of it in the prior patents already referred to. The fact that for a time the defendant was a licensee of the Colby patent cannot, of course, estop the defendant from disputing its validity in a suit for infringements charged to have taken place after the license was withdrawn. Such a fact, in a doubtful case, might have considerable evidential force as an admission of the validity of the patent by the licensee. Here, however, we do not have a case involving doubt.

More than this, the license embraced the Fitch and the Fisher & .Lucas patents, and the admission contained in the act of accepting the license thereby loses much of its weight. Another ground relied upon, and strenuously pressed on the court, for holding that the Colby patent involves' invention, is the fact that it has gone into very general use. The Colby device is used chiefly in stem winding and setting watches, and not in a stem-winding watch, for which it was invented. It is used in connection with movements made under the Church patent, which we had to consider in the case of Watch Co. v. Robbins, 22 U.

S. App. 601, 12 C. C. A. 174, 64 Fed. 384. The in and out movement of the stem arbor of the Colby patent was, when united with the Church patent, readily adapted to shift the winding and hand-setting train from one engagement to the other; and, as the patents were owned by the same persons, the Colby device came to be largely used with the Church movement. Its extensive use is due rather to the meritorious character of the Church invention, than to the fact that it has supplied along-felt want in the field of watchmaking.

Extensive use is only an element to be considered in a case where patentability and invention are doubtful. Where, as here, the extended use can be attributed to something other than the mere novelty of the device, it loses its evidential force. 2. Even if the Colby device is to be sustained as valid, the prior art is so close to it that its scope must be narrowly limited. The defendants’ device does not contain a spring attached either to the stem or to the key.

It is attached to a hollow nut or threaded cylinder, which moves with the rotation of the key, and saves the grinding of the spring ends in the annular grooves, or against the annular shoulders, and performs the same function in a somewhat different way. Unquestionably, if the Colby patent could be held to be a pioneer patent, and one requiring a broad construction, we should hold that the latch spring contained in the Colby patent is seen in the defendants’ device.

But the Colby patent must be limited to the particular form shown, and in this view there is a distinguishing difference in that the spring in the defendants’ device is not attached to either the key or the stem. It is held in position inside of the stem in a different way, — a way which enabled the inventor to prevent the friction of the spring end against the stem or the stem arbor during the rotation of the stem arbor. This is enough to escape infringement. The learned judge at the circuit held otherwise.

An examination of his opinion satisfies us that he gave much too wide a scope to the object and the result of the Colby patent, and that the benefits which he pointed out are due wholly to its connection with the Church movement in a stem winding and setting watch. Of course, Colby would be entitled to any benefit which might come from the use of his device in a stem-set watch, although he might never have contemplated its use in such a watch.

But the argument that his device must have novelty and invention in it because of its extensive use must fail when it is seen that the extended use finds its explanation in the novelty and utility of the Church movement, with which it is sold, and not in anything either novel or strange in the mechanism of the Colby stem. The decree is reversed, at the cost of the appellees, with instructions to dismiss the bill.