MILWAUKEE CARVING CO. v. BRUNSWICK-BALKE COLLENDER CO., 126 F. 171

SEAMAN, District Judge (after stating the facts as above). The appellant’s bill alleges ownership and infringement of two letters patent, Nos. 443,802 and 447,796, both issued to Thomas E. Smith and. Paul W. Post, as inventors, and the answer raises the issue of title..

Evidence of title rests on an instrument purporting to be made by the patentees, bearing date February 6, 1888, and recorded in the Patent Office February 24, 1888, which is not printed in the transcript of record, but is referred to and expressly offered as testimony on behalf of the appellant, and a copy appears subsequently certified from the court below. No objection is made in respect of title to’ the first mentioned, No. 443,802, but the appellant’s title to letters patent No. 447,796 is challenged.

We are of opinion- that no sufficient title appears to sustain the bill for infringement of the latter patent. The purported assignment referred to grants “exclusive right to manufacture, use and sell or lease to be used the carving machines for which said Smith and Post have lately applied for letters patent,” under application of October 3, 1887, serial number 251,296, which describes only the application on which No. 443,802 issued.

The application for No. 447,796 was filed April 9, 1888, and the patent was issued March 10, 1891, both dates being subsequent to this grant; but the assignors “further agree and bind themselves that in case they shall by invention or purchase become the owners of any invention in or improvement upon carving machines,” or for analogous purposes, “they will transfer and assign a like exclusive right,” and the intention is stated “to confer on the Milwaukee Carving Company the exclusive right” to use any carving machine for which the assignors “have procured or may procure any patent rights whatever.” While the terms of this agreement in reference to subsequent “invention in or improvement upon carving machines” are probably applicable to the device shown in patent No. 447,796, and may be enforceable between the parties, as authorized in Littlefield v.

Perry, 21 Wall. 205, 226, 22 L. Ed. 577, it is plain that such agreement is executory only, and not an assignment, within the statute, so that no legal title is conferred. The subject-matter was not then in being, was incapable of sale and delivery, and, however binding the contract was upon the inventors to grant the right or title in their subsequent invention, it is not a legal assignment, and, at the utmost, confers' upon the appellant a mere equity, with the legal title in the patentees. 2 Robinson on Patents, § 771; Curtis on Patents (4th Ed.) §§ 171, 172; Regan Vapor Engine Co. v.

Pacific Gas Engine Co., 49 Fed. 68, 1 C. C. A. 169. Suit by an assignee for infringement is authorized only when the assignment is complete within the statutory requirement. Waterman v. Mackensie, 138 U. S. 252, 256, 11 Sup. Ct. 334, 34 L. Ed. 923, and cases reviewed; Pope Mfg. Co. v. Gormully Mfg. Co., 144 U. S. 248, 251, 12 Sup. Ct. 641, 36 L. Ed. 423. The rights of the patentees cannot be adjudicated in their absence, and the claimant of an equitable title or interest cannot maintain suit for infringement upon such title alone. 3 Robinson on Patents, § 1099, and cases cited; Stimpson v.

Rogers, 4 Blatchf. 333, Fed. Cas. No. 13,457. The bill rests, therefore, upon the primary patent, No. 443,802. This patent embodies the combination under which the appellant makes a useful carving machine for duplicating carvings from a model, and has achieved success in the sale of rights to use the machines. The questions arising are not materially simplified by thus eliminating the subsequent patent, No. 447,796, from the issue of infringement.

The appellee’s machine is made in conformity with another and later patent, accomplishes like results by combining old elements, and the main controversy is whether the combination so employed infringes the combination of old elements shown in patent No. 443,802. While the defense of anticipation is set up against this patent, and some 57 prior patents, domestic and foreign, are introduced in its support, no patent or publication appears showing the same combination of elements or adaptability for like results.

The nearest approach to the combination is found in certain foreign patents cited by the expert on behalf of the appellee, namely, Hawkin’s English patent, No. 2,735, dated in 1803, on “machinery for writing, painting, drawing, ruling lines,” etc.; Robertson’s (1837) English patent, No. 7,363, on “machine for sculpturing marble, stone, and other substances”; Conte’s (1845) English patent, No. 10,850, for “carving machine”; and Ra Maire’s (1852) French patent, No. 8,266, for “sculpturing stone, marble, wood, and other materials.” These patents are of value as examples of the prior art, both in carving machines and for analogous purposes, for

interpretation of the claims; but for the present purpose it is sufficient to remark that neither embodies the combination shown in patent No. 443,802, leaving the distinctions to be pointed out when the scope of invention is considered. So in reference to the numerous other patents introduced — from the field of wood carving and the various fields of working in or engraving on wood, metals, stone, and glass — while many machines appear for wood carving, including devices for duplicating carvings, none shows the combination embodied in the present patent, nor identity in the results of the united elements.

The elements appear severally in one or another of such prior patents, but are not all united in either. These patents furnish evidence of the prior state of the art, but do not deprive the new combination of patentable novelty. Parks v. Booth, 102 U. S. 96, 103, 26 L. Ed. 54.

Nor are the claims in question subject to the objection urged on behalf of the appellee that it is “a mere collocation or aggregation of old elements,” as it is plain that .the several elements are brought into co-operation and thus “perform additional functions and accomplish additional results,” forming a true combination. 1 Robinson on Patents, § 155. Impressed with the undoubted merit of the Smith and Post .invention, the question whether it is infringed by the appellee’s machine, made under Rochman’s later patent (No. 571,535), has presented difficulty in its solution.

The rule is well settled, however, that the grant of a subsequent patent raises a legal presumption of patentable difference from the earlier invention (Miller v. Eagle Manufacturing Co., 151 U. S. 186, 208, 14 Sup. Ct. 310, 38 L. Ed. 121; Kokomo Fence Machine Co. v. Kitselman, 189 U. S. 8, 23, 23 Sup. Ct. 521, 47 L. Ed. 689), and we are convinced as well that substantial difference in the combinations is established as matter of fact.

It is true, as stated by one of the experts, that both machines are “founded on the scheme of tools and tracer carried in a freely moving articulated frame, so that the tools and tracer can be moved freely in every direction, and the tools duplicate the motions of the tracer; and on driving mechanism for imparting motion to the tools; and on the model and stock carried in a sliding work-holder; and on pivoted vibrating frames and jointed parallelograms as a means for permitting the desired freedom of motion.” But these features individually are not novel — as they appear in numerous prior patents — and therefore not patentable, except as employed in a new combination.

Both machines duplicate carvings from' a model by means of a tracer and cutting tools which are SO' mounted and connected “that the cutting tools will duplicate every motion of the tracer, however slight or whatever its direction.” The appellant’s tracer and cutting tools operate vertically, so that the model is placed on the work table under the tracer, and the blanks to be carved are placed under the cutting tools, while the appellee’s tracer and tools operate horizontally, and the model and blanks correspondingly occupy a vertical plane — a change which is not merely colorable, but due to a difference in the system of parallel motion, and having distinct advantages in operation.

The mechanism of each provides parallel motion, “so that as the tracer is passed over the model, and brought into contact with each point of its surface, the cutting tool will cut away from the blank all surplus material, thus leaving a duplicate of the model.” Both accomplish undercutting through free tilting movement of the tools— though differing in the means and degree of such tilting operation— and this feature of undercutting constitutes the distinct advance in the art made by the Smith and Post device over all prior carving machines. The appellant’s (Smith and Post) means to this end are (

i) two parallel motions of the link or pantograph construction, one controlling the horizontal movement of the tools, while the other controls their perpendicular movement; and (2) the gimbal-joint connection of tools and tool carriage, whereby the cutting tool has free movement independent of the carriage movement. Also, “for imparting motion to the cutting tool,” revolving at great speed, a flexible shaft is used, thereby permitting the tool to respond to the movements of the tracer without interference.

The appellee’s (Uochman) machine, on the other hand, has a .parallel motion device of the well-known elbow-joint or door system, and does not have the two distinctive horizontal and vertical motions of the appellant’s device, nor its essential element of a gimbal-joint connection; and, instead of the flexible shaft, the appellee uses a belt-and-pulley device to revolve the cutting tool. Thus both machines, generally speaking, present a combination of old elements for like purpose.

Both utilize the parallel motion idea of means for duplicating carvings, and both achieve the new carving machine result of undercutting. Upholding the prior patent, however, as disclosing useful invention for this important achievement, establishes therein no monopoly in the result, nor in the use severally to that end of well-known elements which enter into the combination.

The patent is granted for the combination, as “the particular means devised by the inventor by which that result is attained,” and the patentee is entitled to protection against any use of the same combination of elements, combined in the same way, so that each element performs the same function, or against substantially the same use with deviations which are merely colorable. But each ■of these well-known elements remains open to the use of the subsequent inventor for a different combination for like results. Electric Signal Co. v. Hall Signal Co., 114 U. S. 87, 96, 5 Sup. Ct. 1069, 29 L. Ed. 96.

The question whether the later device of Eochman infringes that of Smith and Post depends for its solution upon the scope of invention in the earlier patent. The distinctions and the general rules applicable thereto are stated in McCormick v. Talcott, 20 How. 402, 405, 15 L. Ed. 930, and uniformly upheld, namely: The original inventor of a machine may treat as infringers all makers of machines “operating on the same principle and performing the same functions by analogous means or equivalent combinations, even though the infringing machine may be an improvement of the original, and patentable as such.

But if the invention claimed be itself but an improvement on a known machine by a mere change of form or combination of parts, the patentee cannot treat another as an infringer who has improved the original machine by use of a different form or combination performing the same function. The inventor of the first improvement cannot invoke the doctrine of equivalents to suppress all other improvements which are not mere colorable invasions of the first.” So in one of the latest decisions upon the subject (Kokomo Fence Machine Co. v. Kitselman, 189 U. S. 8, 19, 23 Sup. Ct. 521, 47 L.

Ed. 689) this limitation of the monopoly is applied to an improvement of conceded value, on the ground that it was not within the definition of a pioneer patent, and it was thereupon held that the “claims must be limited in their scope to the actual combination of essential parts as shown, and cannot be construed to cover other combinations of elements of different construction and arrangement.” The changes made by Lochman in the mechanism' were apparently designed by way of improvement in certain directions, and are not without practical advantage in some particulars, so that they must be treated as substantial, and not mere colorable evasions of the patent device.

By substituting the door system of parallel motion, in connection with a bar which carries the tools and a device aptly described as a parallel ruler arrangement, both parallelism and free tilting of the tools are attained, thus dispensing with the appellant’s gimbaljoint connection for such tilting, and allowing use of the belt-and-pulley device instead of the flexible shaft. The range of undercutting is enlarged, and the vertical structure and belt provision have less liability to interfere with the operator than the other form.

The fact of countervailing advantages claimed in the appellant’s structure cannot affect this view of the differences as substantial, and that a new combination is produced which does not actionably invade the prior one, unless the prior invention is broad enough to monopolize the field of analogous means or elements. On reference to the prior art for the measure of the Smith and Post conception, numerous patents in evidence, both foreign and domestic, disclose like parallel motion means for like duplicating purposes.

The early foreign patents of Hawkins, Robertson, Conte, and Ea Maire (mentioned in discussing the defense of anticipation) are sufficient examples for present consideration: (1) in the Hawkins (English) patent, issued in 1803, the machine is for duplicating writing and drawings.

Two parallel motions are shown, and the pens or points are connected and jointed so that they work in unison, inclining in various directions and angles, and readily simulate the motions given by the operator of the appellant’s machine through the tracer to the cutting tools, though neither cutting tool, nor mechanism for its use, is shown.

A purported model of this device was introduced on behalf of appellee, with the explanation that it was supplied with tool and tracer, instead of pens, and “a movable illustrative adjunct” consisting of “a driving pulley connected with the tool by a typefying flexible shaft.” As remarked in Topliff v. Topliff, 145 U. S. 156, 161, 12 Sup. Ct. 825, 36 L.

Ed. 658, upon the issue of validity: “It is not sufficient to constitute an anticipation that the device relied upon might hy modification be made to accomplish the-function performed by the patent in question, if it were not designed hy its maker, nor adapted nor actually used for the performance of such functions.” Nevertheless the means thus shown must be considered as entering into the prior art. .

(2) The Robertson (English) patent of 1837' shows two devices for carving and sculpturing with parallelogram machines giving parallel motions to tracer and cutter — one with the tools “rigidly mounted in the outer end of the parallelogram-,” and “not capable of angular motion with reference” thereto, but their presentation to the work is “provided for by angularly adjusting the work' table”; and the other has the tool and tracer “carried by a subsidiary parallelogram which may itself rock on pivots, 4, 4, so as to take up various angles to the main supporting frame”; or, otherwise stated, the tool-carrying frame is hinged to swing for this purpose like a door, and then locked in position for the work, this frame being a link work, capable of lateral movement, while a fore and aft movement is given by the swing of the whole device or of the tool-carrying frame when unlocked.

It does not, however, meet the provisions of the patent in suit for free movement and undercutting, as the tools are rigid.

(3) Conte’s (English) patent of 1845, and

(4) La Maire’s (French) patent of 1852,' are for sculpturing and' carving machines, and are closely allied in their structure, each following the Robertson method of parallelograms, with the tool-carrying frame hinged, but neither provides for complete movement of tracer and tool for undercutting and like requirements. These old devices plainly point the way for the main scheme and elements of the combinations in suit, to maintain the tracer and tools in parallelism for duplicating carvings.

The Hawkins provisions for two parallel motions are closely followed in the Smith and Post device, while that of Lochman adopts another system, resembling the devices of Robertson and Conte, though it adheres to the scheme of Hawkins for the support and guidance of the cutting tools. Surely the adoption of these means from the prior art by one improver in the long line of carving mahines cannot exclude the other improver in the same line from the use of the same or analogous elements in a combination “of different construction and arrangement” (Kokomo Fence Machine Co. v.

Ketselman, supra), whereby a new machine is produced, which may (in the language of appellant’s brief) “undercut to a degree not attainable by the concrete embodiment of appellant’s device shown in its commercial machines.” Passing to the tool-tilting mechanism of the Smith and Post patent, we are convinced that they added to the structures shown in the English patents and prior art, and brought to their combination an essential element in the jointed connection of the tool with the tool carriage, giving them free movement apart from that of the carriage, whereby they duplicate exactly the movements of the tracer, and are at the same time firmly held to their work, thus carving the blank at any desired angle, either for face work or undercutting^ and reproducing varied and delicate designs with accuracy and speed beyond all prior achievements in the art, and that for the new use of this well-known gimbal-joint factor in such combination, which contributed largely to the success of the new machine, the owners of the patent are entitled to protection.

We are also satisfied that the gimbal-joint feature is not only an essential element of that combination, but that it is made indispensable therein by the special feature of rigid attachment of the tool-carriage rod, J, to the means of parallel motion —a departure from the device of Hawkins — so that the tools could not otherwise have their universal tilting operation.

The appellee’s mechanism, however, returns to that of Hawkins in the provision of a rocking tool carriage, namely, an upright rocking-bar connecting the ends of the parallel motion, thus rocking in a horizontal plane, while the tool holders are mounted to> rock in a vertical plane, but without the use of a gimbal-joint which is inapplicable to such structure. By this arrangement of the parts the desired tilting of the cutting tools in all directions — the function of the gimbal-joint — is achieved.

If the device so adopted could be construed as a mechanical equivalent for the gimbal-joint element in any combination patent, the appellant’s patent for an improvement would not authorize such construction to cover this return to the prior art.

We are of opinion, therefore, that the appellee’s machine is thereby differentiated as another combination which does not invade that of the appellant; and this view is strengthened by the apparent advantages of the appellee’s means in wider range of tilting, and in adaptability to the belt-and-pulley device for rotating the cutters — a feature which remains for consideration.

On behalf of the appellant it is contended that the belt-and-pulley device of the appellee is the plain mechanical equivalent of the flex-* ible shaft adopted by the former, and that, in any view, it infringes the particular claims in suit, which describe this element as a “flexible power transmitter,” or as “mechanism for imparting motion to the cutting tool.” Doubtless either of these general terms in the claims referred to may include the belt-and-pulley in their generic sense, but it does not follow that the patent is entitled to a broad construction in conformity with these broad claims.

The patent specifies a flexible shaft, with the explanation: “We adopt the device of a flexible shaft as shown and described herein in lieu of a single belt or other power transmitter which does not permit the free movement of the cutting tool from back to front and side to side of the work table without interfering with the motion of the cutting tool.

The necessary speed, of rotation imparted to the tool is very great.” It further states that “a directly connected single belt such as has been heretofore commonly used in carving machines cannot be used' in our machine.” The belt-and-pulley device of the Lochman machine is not the one “commonly used” for imparting motion, but is provided with ingenious guiding means, so that no interference arises to or from its operation, and it is perfectly adapted to its purpose in this machine.

The experiment made upon the argument to demonstrate that this device was equally adapted to use in the appellant’s combination was ingenious, but futile. It is true that the device was made experimentally operative, but for that purpose the appellant’s tool holder was reconstructed to provide two combined yokes (horizontal and vertical), and guide pulleys were mounted on the parallel motion devices to carry the belt over them.

That it was not adapted to such use without material changes of and additions to the appellant’s structure wTas manifest, nor did it satisfactorily appear that the belt so arranged would serve for practical operation. In other words, the entire mechanism of the appellant’s structure is adapted to the use of a flexible shaft as the power transmitter, and, as stated in the patent, “a directly connected single belt * * * cannot be used” therein.

Unless the form of flexible shaft known as the “tumbling-shaft” could be utilized for the purpose, no equivalent for the form specified in the patent is called to our attention which appears to be adaptable to such structure. Certainly the belt-and-pulley device of the appellee’s patent is not fairly adaptable. The ruling in Hoffheins v. Russell, 107 U. S. 132, 147, 1 Sup. Ct. 570, 27 L. Ed. 332, is in point, and decisive against the equivalency of these elements in the two combinations involved in the present controversy.

So considered, the various contentions in the argument over the limitations imposed by the references to a belt-and-pulley transmitter in the specifications of the prior patent do not call for discussion. . Referring to each device as an entirety, the appellant contends that' the Smith and Post machine can be turned over on its side, and thus become operative in a horizontal plane, alike with that of Loch-man, without changes or addition of parts, so that “its various parts then assume the same location with relation to each other” shown in the Lochman machine.

That the mechanism can be operated in this way to a limited extent is true, but it is equally obvious that the structure is designed for vertical operation of the cutters, and, without reconstruction, cannot be made practically operative for horizontal cutters. The function of the parallel motions and other parts would be disturbed, and serious interference with operator and work would be inevitable. The case in this respect is fairly within the doctrine of Wicke v. Ostrum, 103 U. S. 461, 469, 26 L. Ed. 409, and we find no merit in the appellant’s contention.

We are constrained, therefore, to the opinion that the appellant’s patent, No. 443,802, is not infringed by the machine in controversy, and that its title under patent No. 447,796 does not appear. As the decree of the circuit court dismissing the bill conforms to this view, it is affirmed.