CHICAGO WOODEN WARE CO. et al. v. MILLER LADDER CO.; MILLER LADDER CO. v. CHICAGO WOODEN WARE CO. et al., 133 F. 541

BAKER, Circuit Judge. Motion to dismiss the cross-appeal. A year before the decree now appealed from was entered, the court enjoined defendants pendente lite from continuing to infringe the second claim of the first patent and the four claims of the second patent. From that temporary injunction, indisputably interlocutory, defendants might have prosecuted an appeal under

section 7 of the Court of Appeals act; and on such an appeal the sole question would have been whether the court had improvidently entered the injunctional order. Adam v. Folger, 120 Fed. 260, 56 C. C. A. 540. But since the act of June 6, 1900, c. 803, 31 Stat. 660 [U. S. Comp. St. 1901, p. 550], repealed the amendment of 1895 (2 Supp. Rev. St. p. 376), complainant could not have taken an appeal or a cross-appeal from the court’s refusal to enter a pendente lite injunction with respect to claim 1 of the first patent. Columbia Wire Co. v. Boyce, 104 Fed. 172, 44 C. C. A. 588.

The decree now under consideration was entered after both parties had taken and submitted full proofs on the issues joined (and there is no suggestion from either side that anything further in the way of pleading or proof could be added).

It adjudged that complainant’s title was good, that claim 1 of the first patent was void, that claim 2 of the first patent and the four claims of the second patent were valid, and that defendants’ device infringed all the valid claims; and it decreed that defendants, as to the future, should perpetually refrain from infringing the second patent, and as to the past should pay complainant all damages suffered by reason of the infringement of the claims held valid in both patents, the amount of such damages to be determined thereafter on a master’s report.

A decree of this character in a patent suit is customarily called interlocutory. If it were in truth final, as was the decree in the land suit of Forgay v. Conrad, 6 How. 201, 12 L. Ed. 404, complainant’s right to a cross-appeal could not be successfully questioned. If it were in truth interlocutory in the sense and to the extent that the decree awarding the temporary injunction was interlocutory, complainant’s lack of right to a cross-appeal would be indisputable.

But whether the calling of a decree that adjudges title, validity and invalidity of claims, infringement, and liability therefor, and awards a perpetual injunction, a temporary decree that is to stand only until a final decree on the merits can be rendered, is or is not a misnomer, a virtual contradiction involving both inaccuracy of terminology and misapprehension of substance (as was debated at large by Judges Showalter and Woods pro and con in Standard Elevator Co. v. Crane Elevator Co., 76 Fed. 767, 22 C. C. A. 549), is a question that became moot, we think, by the Supreme Court’s decision in Smith v.

Vulcan Iron Works, 165 U. S. 518, 17 Sup. Ct. 407, 41 L. Ed. 810, wherein it was held that on an appeal from a decree like this the appellate tribunal, with all the pleadings and all the evidence before it for an independent hearing, had “authority to consider and decide the case upon its merits,” to the end that the parties might be saved the time, trouble, and expense that would be involved in carrying on further litigation in the Circuit Court in a way that was contrary to the views of the Court of Appeals on the ultimate merits.

Here defendants present a complete record, containing all the pleadings and proofs. They do not attack merely the injunction respecting the second patent, and that on the ground that it was temporary and improvidently issued; but they contend that, as to the five claims of the two patents held valid, the ultimate merits of the questions of validity and infringement are in their favor.

If we were not authorized now to consider and decide the merits with respect to claim 1 of the first patent, which was included in the pleadings and proofs and held invalid, the result would be that the Circuit Court would proceed with the accounting on a basis that does not accord with our views of the ultimate merits, and a new accounting would have to be taken after a subsequent appeal to this court. Motion overruled. The first Miller patent.

Miller’s idea was this: It would be a good thing to have a trestle whose four legs are inseparably pivoted and coupled in such a manner that they may be folded into a compact form, convenient for a workman to carry from place to place. The prior art discloses quite a variety of trestles and tables. Some have the legs separately attached to the top; some have two of the legs attached to the top and coupled to each other in a way to permit the pair to be folded under the top; some have detachable legs coupled in independent pairs.

None has the four legs detachable from the top and pivotally coupled in such a way that the closing together of one pair closes the other and brings the four into one compact, connected bundle. Nor was Miller’s result accomplished by substituting one man’s thought as a

part in another man’s scheme. The device was wholly novel, performing a function never before performed, achieving at once an extensive demand and a successful use; and the invention, small in character though it seem, is therefore entitled to a primary rank. Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 561, 18 Sup. Ct. 707, 42 L. Ed. 1136.

The argument against the validity of claim 1 is this, as we understand it: A trestle, according to the lexicographers, is a support “consisting of three or four legs secured to a top piece.” The claim calls for “a trestle consisting of four legs coupled and pivoted as shown.” This is not a trestle; the legs cannot be used as a trestle without a top piece; the claim, by defining a trestle as consisting of four legs, expressly excludes a top piece, and is therefore void, because it calls for an inoperative device.

But if, by any possibility, a top piece can be inferred, it is only the one shown in the drawing and description and covered by claim 2; and claim 1 is therefore void as a duplication. It will be observed that claim 2 calls for the combination of “a trestle consisting of two pairs of legs pivoted together as shown,” and “a support having mortises on its sides and near its ends,” being the support shown in the drawing and description. In both claims it is evident that Miller differed with Webster and others as to the definition of a trestle.

But for all that he should not be deprived of protection in his invention, any more than for mistakes in orthography provided he did not misspell beyond recognition of the sense. In these claims we think the meaning is as recognizable as if they had read:

(1) In a trestle, four legs pivoted and coupled as shown; (2) a trestle consisting of the combination of the four legs of claim 1 and the particular top piece as shown. Thus construed, and in the light of the prior art as stated, claim 2 is unquestionably good. Claim 1 is also good, unless it would be impossible for a skilled mechanic to use the four legs in connection with any known top piece except Miller’s. The legs will not stand alone and support any considerable weight.

The crossed legs will spread unless (to revert to Webster) they be “secured to a top piece.” A skilled mechanic could certainly secure the legs to any kind of a top piece by nails or screws, and, if the top piece were not then detachable with sufficient readiness to suit him, he might use holes in or stops upon the top piece. In this aspect of it, the validity of claim 1 is fully sustained, we believe, by the decisions in Webster Loom Co. v. Higgins, 105 U. S. 580, 26 L. Ed. 1177; Deering v. Winona Harvester Works, 155 U. S. 286, 302, 15 Sup. Ct. 118, 39 L. Ed. 153; Hancock Inspirator Co. v. Jenks (C.

C.) 21 Fed. 911; Rapid Service Store Ry. Co. v. Taylor (C. C.) 43 Fed. 251; Western Telephone Mfg. Co. v. American Electric Telephone Co. (C. C. A.) 131 Fed. 75. The second Miller patent is for improvements upon the first. The new idea was to adopt a top piece of such a form, with relation to the legs of the first patent, that it could be permanently and pivotally secured to the legs in a way that would make the whole trestle a unit foldable into a compact, connected bundle. In carrying out the idea it was found necessary to modify the coupling of the legs of the first patent.

Just as the first patent showed a new and distinct step beyond anything in the prior art, so the second, we think, evinced progress beyond the first. And in view of the utility and success of the improvement we are unwilling to deny to it the quality of invention. Infringement. The similarities are so obtrusive that it is difficult to see and appreciate the alleged differences. The purpose is the same. The result is the same. To obtain the result (so far as Miller went), defendants employ Miller’s means identically in the main, substantially in minors.

The differences that are appreciable relate to improvements upon Miller’s device, which are claimed in Howard’s patent. Improvement, of course, is no justification of a trespass. On the appeal the decree is affirmed; on the cross-appeal the decree is reversed, with instructions to proceed consentaneously hereto