LUDWIGS v. PAYSON MFG. CO.; PAYSON MFG. CO. v. LUDWIGS, 206 F. 60

BAKER, Circuit Judge (after stating the facts as above). 1. Patents that show locking levers operable in a horizontal plane need not be reviewed, for if the Thompson British patent, No. 2060 of 1876, with a lever moving in a vertical plane, as does Payson’s lever, neither anticipates the Payson combination nor teaches the mechanic how to modify and reconstruct the Thompson into the Payson device, certainly those others do not. Thompson’s figures 1 and 2 are here reproduced: •Wjpsi . Fif.-S.

Construction and intended operation are thus described in the specification : “I form the fastener in two parts, one of which is fixed to the lower bar of the upper sash, and the other to the upper bar of the lower sash, as heretofore. I form one part thereof with a hinged lever, the knuckle of which is formed with flat sides which by the aid of a spring d, act to keep the said lever either in a vertical or horizontal position.

The outer end of the said lever is formed with a slot, o', which is so arranged as to permit a sliding catch, e, on the other part of the fastener to pass therethrough when the lever is pressed down into a horizontal position, then by sliding the said catch it is caused to pass over the metal at the end of the slot and thereby securely hold the two parts together. The lever is formed to act in combination with a projection or fulcrum on the other part of the fastener in such manner as to ensure the proper closing of the sashes by the simple depression of the lever.

If desired the sliding catch may be made self-acting (by means of the spring,

g) to lock the parts together.” It seems quite clear to us that Thompson had no conception of a device in which the pulling forward or pushing backward of a lever in a vertical plane would lock or unlock the sashes “without any secondary or additional movement, or locking device.” He relied upon the lever' and the opposing flange only to bring the sashes together laterally, and to his sliding catch he wholly ascribed the function of locking. So the Thompson patent is not an anticipation; and this virtually is confessed by Ludwigs’ reliance on Thompson modified by omitting the catch.

But the modified Thompson structure is not a part of the prior art. Topliff v. Topliff, 145 U. S. 156, 161, 12 Sup. Ct. 825, 36 L. Ed. 658. It has been produced in the light of Payson’s teachings. It is a subsequent art brought into being in the endeavor to defeat Payson. If, however, the sliding catch be omitted, what results? A locking device in which the locking function is lost with the removal of the locking element.

For a glance at the drawings will show, what was demonstrated by tests of the model in court, that the pivot on which the lever is hinged and the top of the opposing flange on which the lever bears are so nearly in a horizontal line that a slight effort is effective to throw off the lever -and raise the sash; while in the Payson lock the lever and the opposing flange are designedly so formed, and the pivot and flange are so nearly in a vertical line, that the practical art has been given what Payson promised, “a lock that can be securely fastened by merely pulling forward a locking arm without any secondary or additional movement or locking device.” If the mechanics of the case left any doubt, it should be resolved in favor of invention by reason of the lock’s filling a special need, its success in commerce, the general acquiescence of the trade, and the tribute of Ludwigs’ faithful imitation. 2.

Counsel for Ludwigs cite several cases in support of their contention that under no circumstances can damages from unfair competition be lawfully included in patent litigation between citizens of the same state. Illinois Watch-Case Co. v. Elgin National Watch Co., 94 Fed. 667, 35 C. C. A. 237; Keasby & Mattison Co. v. Philip Carey Mfg. Co. (C. C.) 113 Fed. 432; King v. Inlander (C. C.) 133 Fed. 416; Cushman v. Atlantis Fountain Pen Co. (C. C.) 164 Fed. 94; Mecky v. Grabowski (C. C.) 177 Fed. 591; Johnston v. Brass, Goods Mfg. Co. (D. C.) 201 Fed. 368.

Whether or not such damages are cognizable if two separate and distinct matters or transactions are offered for investigation, or if, one matter alone being in evidence, the patent fails, we need not consider. For here the patent is found to be valid and infringed. Evidence of sales to prove infringement of the mechanical principles of the .patent establishes also that Ludwigs unlawfully took the livery of Payson in order to make the sales.

Under such circumstances (whether the compactness for cheapness of manufacture and the ornamental form are within the protection of the claims or not) a federal court of equity in granting relief 'for the infringement of the mechanism ought not to remit the complainant to another forum to mete out the damages which necessarily appear in proving the infringement and which, though in one aspect arising from frattd in trade, in a fairer aspect are - aggravations of the infringement. Globe-Wernicke Co. v. Fred Macy Co. (C. C. A. 6th Circuit) 119 Fed. 696, 56 C. C. A. 304; Adam v. Folger (C. C.

A. 7th Circuit) 120 Fed. 260, 56 C. C. A. 540; Woods Sons Co. v. Valley Iron Works (C. C.) 166 Fed. 770; Onondaga Indian Wigwam Co. v. Ka-Noo-No Indian Mfg. Co. (C. C.) 182 Fed. 832; Ross v. Geer Co. (C. C.) 188 Fed. 731; Saxlehner v. Eisner & Mendelsohn Co., 179 U. S. 19, 21 Sup. Ct. 7, 45 L. Ed. 60; Siler v. Louisville, etc., R. Co., 213 U. S. 175, 29 Sup. Ct. 451, 53 L. Ed. 753. Consequently Ludwigs should respond fully for his wrongful conduct as shown in this record.

In addition to being enjoined, he should be held to account, first, for the profits he has made by his infringement; second, for any additional profits Payson Company would have made if it had filled the orders for which Ludwigs supplied spurious locks; and, third, for any further damage Payson Company may have suffered in reputation and loss of trade resulting from the appearance of the spurious goods in the market. Though the decree as entered respecting unfair competition must be modified, it is evident that Ludwigs gains nothing by his appeal.

So the costs thereof, as well as of Payson Company’s appeal, should be taxed against him. The decree-is vacated and the Cause remanded, with the direction to enter a decree in favor of Payson Company in consonance with this opinion.